October 20, 2014

MEMBER SPOTLIGHT: An Interview with Professor Sharon K. Sandeen

Sharon K. Sandeen is a Professor at Hamline University School of Law in St. Paul, Minnesota, and a recognized expert on trade secret law, having co-written the first casebook on trade secret law in the United States, Cases and Materials in Trade Secret Law. She's also the co-author of Trade Secret Law in a Nutshell.

Prior to beginning her teaching career, she practiced law for 15 years in Sacramento, California, specializing in intellectual property litigation.

Professor Sandeen received a Bachelor of Arts degree from UC Berkeley, her Juris Doctorate from the University of Pacific, McGeorge School of Law, and an LL.M. from UC Berkeley School of Law (Boalt Hall). She is the immediate past Chair of the IP Committee and the incoming Chair of the Publications Board of the Business Law Section of the American Bar Association.

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Welcome Professor Sharon Sandeen. I read that your first ambition was to be a jockey. So, what happened to that dream and how did you decide to become a lawyer?

When I was little, I loved horses, so I thought I’ll be a jockey. But reality set in as I got older and bigger. Also, I didn’t have the means to get into horseback riding as much as I wanted. My next dream was to become a forest ranger. I liked the outdoors – hiking and backpacking. During my last year in high school, I went to a career day and I learned about becoming a lawyer and politics. After that, I got involved in local politics and that led me to become a lawyer. 

What did you do in politics?

My first exposure to politics was in 1976 when I was still in high school. My local assemblyman was one of the first legislators to endorse Jimmy Carter, so my first experience in politics was to work on a Jimmy Carter for President event before the California primary. After graduating from high school, I started working in my local assemblyman’s office as a legislative assistant, helping with constituent phone calls. 

You’re a first generation college graduate and lawyer, and you worked your way through college and law school. How did you balance it all? What were the different jobs that you did?

The first two years of college, I went to Cal State Hayward, which is now Cal State East Bay. That saved money on tuition and I could live at home. Then I transferred to Berkeley and also commuted from home. I had a lot of odd jobs during college: bookkeeper, gardening, unloading and loading trucks for UPS. I also worked at my dad’s plumbing company and on several political campaigns. Following my graduation from college, I went to work for the California Legislature in Sacramento and I attended law school at night while working full-time during the day. The last year of law school, I got a job clerking with several law firms. 

After reading Twenty Years at Hull-House and The Grapes of Wrath, you realized that each book told the story of one side of your family. Can you elaborate?

It’s kind of embarrassing to admit that I didn’t make that connection until years after I read those books. As an adult I started asking my family, how did we end up in California since both my mother and father were born in the Midwest? 

With respect to one side of the family, in the early ’30s, my grandfather was a farmer in northeastern South Dakota. It was essentially the Grapes of Wrath story where the barn burned down, there was a drought, they couldn’t grow anything, they didn’t have a livelihood. So, my grandparents took off for the West Coast with their five children and settled in Oakland where my grandfather became a carpenter. Fortunately, they were better off than the families depicted in the Grapes of Wrath because they were able to keep the farm. 

With regard to the other side, the only reason I figured this out is my grandmother, who is Italian, used to talk about growing up in Chicago on Bunker Street. One day I went to the Hull House and I looked at one of their old maps and saw Bunker Street. It was then that I realized that my Italian immigrant side of the family came to United States in the late 1800s, which is what the Addams book is about. 

You’re an internationally recognized expert on trade secret law. What initially drew you to this area of law?

When I was in law school, I didn’t take one intellectual property law course. After graduating, I went to work at the largest law firm in Sacramento and did general business litigation. Soon after joining the firm, my brother, who is very entrepreneurial and an inventor, had one of his products knocked-off by another company. We had to sue, and I got very interested in intellectual property law. This was the late ’80s and IP was not as big as it is today, but I told my firm that I wanted to develop a specialty in that area. 

Because I’m not a scientist, I couldn’t focus on patent law. So I focused on copyright, trademarks, and trade secrets. When I decided to leave practice and become a law professor, I went back to school at Berkeley to get my LL.M. and I decided to focus on trade secret law because there wasn’t a lot of scholarship in the area. 

What do you see as the most pressing issues in trade secret law today?

As I delved into trade secret law, I thought a lot of the cases were wrongly decided. My theory was that there wasn’t a lot written about the theory, purpose, and evolution of trade secret law. A central concern of mine is that a lot of people do not understand that, as with patent and copyright, there are very important limits on the scope of trade secret protection. I’m trying to educate people about those limits.

Have you seen progress?

There’s definitely been progress, because there’s been a lot more scholarship in the area. There is a group of scholars, we call ourselves Trade Secret Scholars, who regularly meet. As a result, I think the understanding of trade secret law has improved over the past 12 years, but there are still misunderstandings, particularly among businesspeople who tend to have an expansive view of trade secret protection. 

You recently wrote about storing information in the cloud and its relationship to trade secret law. Can you briefly tell us what you discovered?

There is a very well established principle under trade secret law that I call the “third-party doctrine of trade secrecy.” The central point is this: if you have information that constitutes your trade secret and you give it to another person, you waive trade secret protection unless there’s a confidentiality agreement between the trade secret owner and the person who’s receiving the information. 

So, if you upload trade secret information to the cloud are you waiving your trade secret protection? I think there are risks associated with that activity. Generally speaking, cloud service providers are not willing to promise confidentiality or privacy with respect to stuff uploaded to the cloud. 

I want to move onto copyright law. There’s a movement to change U.S. copyright laws which some say make it hard to access and share work online. Can you comment?

I think you’re probably referring to Professor Pamela Samuelson’s work and the recent formation of the Authors’ Alliance, which I belong to. The way I like to describe what’s going on – and it doesn’t just apply to copyright, but also to trade secrets – is that now that we live in the Information Age, everyone is beginning to realize the value of information. If you can collect information, there may be an opportunity to resell it or tie advertising to it to make money. 

So, there’s a land grab of information going on. The concern is that we need to have balance. We have to make sure that information isn’t tied up too much. In that regard, much of the history of the United States, dating back to the formation of the country, has been about increasing the diffusion of knowledge. We’ve seen it in the funding of public schools, public universities, and public libraries. All these efforts are designed to increase the knowledge of the citizenry on the theory that if we have an educated populace, they will be more productive and more entrepreneurial, leading to greater economic development. If we tie up information too much, we risk economic and personal development. 

Whether the law needs to be changed is another question. A lot of people would say we have existing principles of law that are designed to protect these ideals. They just need to be applied better and recognized more frequently by the court and by litigants. 

I’m going to switch gears. You’ve been teaching since 1996 and currently teach at Hamline University School of Law. What do you enjoy most about teaching?

Helping students to learn the law and legal processes. My goal is to make sure that by the time my students graduate, they have the knowledge and skills to be successful lawyers. 

Do you have a favorite class to teach?

I like all the classes I teach. Mostly I teach intellectual property courses, which are taken by second and third-year law students. But I have also taught the first-year Torts course. What I love about teaching Torts is that I get to help build a foundation of knowledge for future learning. 

How has law school changed over the time period since you’ve been teaching?

In my opinion, it hasn’t changed enough, but I think it is starting to change more. One way it has changed, since I went to law school in the ’80s, is that the demographics are different. There are more women and people of color. Also, there are more students with a variety of undergraduate degrees. I think this has ramifications for legal education and it ties into what you were asking me earlier about my background. 

You take somebody like me, first generation college graduate and first lawyer in her family. I didn’t have a lot of people in my world who could serve as role models about what it means to be a lawyer, or even what the legal system is. In the past, a lot of people who went to law school had some exposure to the law either through family members or some other way. They may have had a degree in legal studies or political science. We have students who don’t have any of that. 

The legal profession is changing, too. That requires law schools to change their methods of education. The big movement now is for experiential learning: trying to get students ready to practice on the theory that when they graduate, they’re not going to have a mentor. For instance, at Hamline we have practicums where we put students into internships with different lawyers in different types of legal settings in order for them to get exposure to the practice of law. 

The other thing we’re doing at Hamline, and I think it’s unique, is what I call a structured experiential learning class or lab where the student doesn’t necessarily have to go offsite or represent clients, but we walk the students through a particular business negotiation or a particular litigation practice. In this way, they don’t just learn the law, but they learn the steps to use to solve the problems presented by their clients. 

I’ve read that in your first history class, that you took as an undergraduate at UC Berkeley – a class on the Reconstruction Era – no mention was ever made of women. Have you made it a point to emphasize the role of women in law?

I do try to emphasize the role of women in law. When we’re reading a case or I’m talking about a case and a pioneering woman or female judge is involved, I always point that out.

You recently served as the Chair of the IP Committee of this Business Law Section of the ABA. What has been the value of your involvement with this Section?

A lot of intellectual property lawyers join the IP Section of the ABA. I chose to join the Business Law Section and that was very conscious on my part. The members of the Business Law Section look at IP issues from all different directions. I get to learn about IP issues as they are emerging in business, rather than waiting to see them hit the press. I’ve also found the members accessible and friendly. 

You currently serve as the Vice Chair of the Publications Board of the Business Law Section of the ABA. What’s been the value of this experience?

I will be the Chair in September. For those people who aren’t familiar with the Publications Board of the Business Law Section, we’re responsible for all the books that the Business Law Section publishes. The value of the experience is that the Publication Board has the opportunity to publish books that enable lawyers to do their jobs better and more efficiently. For instance, I was editor for The IP Desk Book for Business Lawyers. The book is a guide to the various IP issues that arise in different business transactions. So if you’re an attorney doing Wills and Trusts, or a real estate deal, or a franchising deal, you can pick up the book and quickly figure out what IP issues might arise. 

Would you encourage younger lawyers to get involved in that section?

Getting involved in the ABA or any other bar group is very, very important for young lawyers, not only for the networking benefits but for the educational benefits. 

What are your interests outside of the law?

My general interest is I like to learn and discover new things. I travel, hike, go to art exhibits and theater, and so forth. The Twin Cities is amazing. It’s an interesting combination between the small town feel of Sacramento where I lived and worked for 20 years and a vibrant urban environment like the Bay Area where I grew up.

What are you currently working on? Is there something we should watch for?

Elizabeth Rowe and I are writing a book on international trade secret protection to be published by Edward Elgar. We’re not just talking about the law of other countries. We are also developing a guideline or approach that attorneys should take in trying to understand the trade secret laws of other countries. 

I’m also working on an article about recent changes to patent law and its intersection with trade secret law. I have a working theory that one of the purposes behind the recent changes to the patent law was to increase the ability of companies to protect patentable inventions through trade secret law. What I predict, depending on how that new law is interpreted, is that many more companies will start protecting their information as trade secrets instead of patenting it. If they’re successful, then there is going to be more information tied-up because the disclosure goals of patent law will not apply. 

Thank you so much for your time.