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The 50th Anniversary of E.I. DuPont deNemours &Co. v. Christopher
Lynda J. Oswald
July 20, 2020 will mark the fiftieth anniversary of E.I. DuPont deNemours & Co. v. Christopher, the famed industrial espionage case in which, as the court so colorfully phrased it, “an airplane [was] the cloak and a camera the dagger.”[1]
Christopher has become a mainstay in textbooks, scholarly commentary and treatises – it has, in fact, been cited over 400 times by secondary sources, usually described by adjectives such as “classic,” “well-known,” “notable,” “celebrated,” “leading,” or “canonical.” It appears as a prominent example of trade secret misappropriation through “improper means” of access in both the Restatement (Second) of Torts and the Restatement (Third) of Unfair Competition, and has been cited by over sixty courts.
Yet, half a century later, we have not seen another published trade secret misappropriation case like Christopher in which the defendants were liable despite having broken no law and having breached no contract or confidential relationship. Why does this aged case continue to exercise such great influence over modern trade secret doctrine?
The Christopher Facts and Decision
In March, 1969, an undisclosed client hired Rolfe and Gary Christopher, father and son, to fly over a DuPont chemical plant under construction in Beaumont, Texas to take aerial photographs. DuPont had taken appropriate steps to shield the plant’s trade secret components at the ground level, but some trade secrets were inevitably exposed from the air during the construction process. When the Christophers refused to reveal their client’s name, DuPont sued them for trade secret misappropriation, claiming they had photographed a highly confidential and valuable unpatented process for producing methanol.
The case came before the U.S. Court of Appeals for the Fifth Circuit on diversity jurisdiction, where the court had to apply Texas law in a case of first impression. The Christophers argued that their actions were lawful as they had “conducted all of their activities in public airspace, violated no government aviation standard, did not breach any confidential relationship, and did not engage in any fraudulent or illegal conduct.”[2] In the absence of illegal conduct or a contractual breach, they contended, there could be no misappropriation of a trade secret.
The Fifth Circuit disagreed, noting that Section 757 of the Restatement of Torts (1939) prohibits acquisition of a trade secret by “improper means.” According to comment (f) to Section 757, “improper means” include not only illegal acts, such as theft, but also acts such as “fraudulent misrepresentations to induce disclosure, tapping of telephone wires, eavesdropping or other espionage.”[3] While the drafters of the Restatement found it impossible to list all types of improper means, they noted that “[i]n general, they are means which fall below the generally accepted standards of commercial morality and reasonable conduct.”[4]
The court viewed the Christophers’ actions as falling below commercial morality norms, stating that “our ethos has never given moral sanction to piracy.”[5] Although “improper means” is a nuanced term and difficult to define, the court maintained that “one of its commandants does say ‘thou shall not appropriate a trade secret through deviousness under circumstances in which countervailing defenses are not reasonably available.’”[6] A trade secret owner might be required to build standard physical barriers to shield its secrets from prying eyes, but it need not “guard against the unanticipated, the undetectable, or the unpreventable methods of espionage now available.”[7]
Here, DuPont had taken reasonable steps to conceal its secret; the Christophers’ efforts to obtain that secret for a third party through aerial surveillance and photography were manifestly improper. As the court put it, “[t]o require DuPont to put a roof over the unfinished plant to guard its secret would impose an enormous expense to prevent nothing more than a school boy’s trick.”[8] The court’s decision fell squarely within trade secret law’s traditional concern of balancing the interests of free competition against the need for safeguarding incentives for innovation: “Our tolerance of the espionage game must cease when the protections required to prevent another's spying cost so much that the spirit of inventiveness is dampened.”[9]
Ultimately, the parties jointly moved for dismissal on remand, with the identity of the competitor who hired the Christophers still unrevealed.
The Continuing Impact of Christopher
Christopher is unique in trade secret case law. Fifty years later, no other published opinion has addressed the same type of exceptional facts where the misappropriation flowed from actions that were neither illegal nor in breach of contract or a confidential relationship.
Nonetheless, the short but eloquent opinion in Christopher remains an important precedent for courts and practitioners faced with a trade secret misappropriation claim. It provides an effective framework for analyzing cutting-edge misappropriation cases where black letter law may not provide an answer. Even if the competitive behavior at issue is not technically unlawful or in breach of contract, it nonetheless may give rise to liability if it is contrary to public policy imperatives of fair trade or below generally accepted commercial or societal norms.
The improper means of trade secret access in Christopher were made possible by the combination of airplanes and photographic equipment that would allow the capture of images that were adequately shielded at eye level. Today, the improper means might arise from more technologically sophisticated measures, such as the use of drones and long-range telephoto lens to sneak pictures through skyscraper windows, but the principle remains the same. Findings of misappropriation need not be wedded to clear cut violations of law or contract, but can be based on policy arguments and underlying considerations of fairness.