The New York Times highlighted the recent opinion of the Third Circuit in Bimbo Bakeries v. Botticella, upholding a preliminary injunction against a former senior employee of Bimbo Bakeries and keeping him from assuming a position at rival baker Hostess. The former employee, Botticella, was accused of misappropriation of trade secrets. The injunction was issued and upheld on the ground that there is a substantial likelihood that he would divulge secrets regarding the production of Thomas’ English muffins, one of Bimbo’s flagship products, and specifically regarding the genesis of Thomas’ famous “nooks and crannies” texture.
The case itself is moderately interesting. The Third Circuit goes to some pains to distinguish its analysis from application of the “inevitable disclosure” doctrine of trade secrets law. The employee, his former employer, and the initial acquisition of the trade secrets all took place in California, which takes a (dim) view of non-competition law that differs considerably from the more conventional view taken in Pennsylvania. Out on the West Coast, aggressive trade secret cases and enthusiastic claims of “inevitable disclosure” are sometimes viewed as work-arounds for the limits that California places on enforcement of covenants not to compete. In the Third Circuit, the court seems to go out of its way to describe this case in conventional terms. Botticella clearly had access to the plaintiff’s secret process, and his explanations of his activities just before his left his employer (he was copying files in order to practice his computer skills!) were just lousy. Moreover, according to the opinion, Botticella’s employment contract did not include a non-compete — and it specified that PA law would govern its enforcement. Botticella’s new job with Hostess would have placed him in Texas.
The case is noteworthy for IP teachers, however, and perhaps even for IP theorists, because it involves the news that English muffins are surprisingly difficult to reverse engineer. For many years, IP lawyers and scholars have used the “secret” formula for Coca-Cola as the paradigmatic case of a trade secret: an innovation that is highly valuable and protectable under the law, despite being inherent in a widely-consumed product, without being disclosed via the patent system. The Coke formula maintains its trade secret status and its value, we say, because of the high difficulty of reverse engineering that particular cola. But I’ve always understood that the Coca-Cola formula is not truly so difficult to reverse engineer, even if we don’t see Coca-Cola clones on the market. Coke’s power really lies in its branding, not in its chemistry.
With Thomas’, we now have an extremely public example of something where reverse engineering of a consumer foodstuff has been tried — and has failed. How could something that looks so funny, taste so good? Only a tiny handful of people know, and can know. Now that’s a trade secret.
Who knew? I am reminded of the film Duplicity, with Julia Roberts and Clive Owen as corporate spies and Paul Giamatti and Tom Wilkinson as the corporate barons dueling over access to a secret formula. No bakers in that one, though.
The whole affair makes me hungry.
Bonus video: A 1983 Thomas’ TV commercial.