📄 Confidentiality & IP Assignment Breach Demand Letters
Enforce NDA obligations and IP assignment clauses against former employees and contractors
Nondisclosure Agreements (NDAs): Contract Law Baseline

NDAs define and protect confidential information through contract law. Key elements:

Element What It Covers
Definition of Confidential Information What qualifies (e.g., customer lists, pricing, processes, source code, business plans)
Permitted use Usually "solely to perform services under the Agreement" or specific work
Restrictions on disclosure Cannot share with third parties without consent; must protect with reasonable security
Duration How long obligations last (typically 2–5 years post-termination, or indefinite for trade secrets)
Exceptions Publicly available info, independently developed, lawfully obtained from third parties
Remedies Injunctive relief, damages, attorneys' fees (if contract permits)
💡 Overlap with Trade Secret Law: Breach of an NDA can be both breach of contract and trade secret misappropriation under CUTSA/DTSA if the information qualifies as a trade secret. Assert both claims to maximize remedies.
IP Assignment Agreements: Ownership of Work Product

IP assignment clauses transfer ownership of inventions, creative works, and other intellectual property from the creator to the company:

Type of IP Default Ownership Rule How Assignments Override Default
Copyright (creative works) Contractors: Creator owns unless written assignment or narrow work-made-for-hire
Employees: Employer owns if created within scope of employment		 Written assignment clause: "hereby assigns all rights" or "will assign" (self-executing vs. requires follow-up)
Patents (inventions) Inventor owns, even if employee/contractor Pre-invention assignment agreements; must be in writing and signed before invention created
Trade secrets Employer/company owns if subject to confidentiality duties NDA + employment agreement typically sufficient
Trademarks Company that uses mark in commerce owns it Assignment of goodwill and mark if created by contractor
⚠️ California Labor Code § 2870 Limitation: California law prohibits employers from requiring employees to assign inventions developed entirely on their own time, with their own resources, and unrelated to the employer's business. Your IP assignment clause must include a § 2870 carve-out notice, or it may be unenforceable as to those inventions.
Work Made for Hire (Copyright)

Under 17 U.S.C. § 101, a "work made for hire" is owned by the employer/commissioning party from creation. Two categories:

  1. Employee works: Work created by an employee within the scope of employment is automatically a work made for hire—no written agreement required (though recommended)
  2. Specially commissioned works (contractors): Work created by an independent contractor is a work made for hire only if:
    • There is a written agreement signed by both parties stating it's a work made for hire, AND
    • The work falls into one of nine narrow categories (e.g., contribution to collective work, audiovisual work, translation, test, instructional material)

If you don't meet the work-made-for-hire requirements for a contractor, you must have a written assignment to own the copyright.

Common Breach Scenarios
Breach Type Example
NDA breach: Unauthorized disclosure Former employee shares confidential client lists, pricing, or source code with new employer
NDA breach: Unauthorized use Contractor uses your proprietary templates, processes, or datasets in work for a competitor
IP assignment breach: Refusal to assign Contractor completes project but refuses to sign deliverable assignment or claims they own the work
IP assignment breach: Unauthorized use of assigned IP Former employee uses source code, designs, or creative assets they assigned to you in their new business
Portfolio abuse Contractor displays your confidential work in their portfolio without permission or proper redaction
Step 1: Identify the Specific Violation

Document exactly how the NDA or IP assignment was breached:

  • Unauthorized sharing: Email, cloud sharing, GitHub repos, portfolio websites showing your confidential work
  • Unauthorized use: Competitor/new employer using your templates, code, datasets, or processes
  • Public disclosure: Confidential information posted on social media, blogs, or conference presentations
  • Refusal to assign: Contractor won't sign assignment paperwork or claims ownership of deliverables
  • Unauthorized commercial exploitation: Selling or licensing IP that was assigned to you
Step 2: Review the Agreement Language

Pull the exact contract provisions to determine what was promised:

Clause Type What to Look For
Confidential Information definition Is the information at issue explicitly listed? Does it fall under a catch-all like "business information"?
Permitted use restrictions "Solely for the purpose of [performing services]" vs. broader language
Duration of NDA obligations How long do secrecy duties last? Is there a specific term or "perpetual for trade secrets"?
IP assignment language "Hereby assigns" (self-executing) vs. "will assign" (requires follow-up signature)
Work-made-for-hire clause Does contract explicitly state work is WMFH? (Critical for contractors)
Moral rights waiver Did contractor waive attribution and integrity rights under 17 U.S.C. § 106A?
Portfolio/publicity rights Did you reserve right to use work in portfolio? With what restrictions (e.g., redaction, approval)?
🔍 "Hereby Assigns" vs. "Will Assign": If the contract says "Employee hereby assigns all rights," the assignment is self-executing—you already own the IP. If it says "Employee will assign," you need the employee to sign a separate assignment document. If they refuse, you may need court-ordered specific performance.
Step 3: Gather Evidence of the Breach
Evidence Type Examples
Public disclosure Screenshots of portfolio websites, GitHub repos, LinkedIn posts, conference slides showing your confidential work
Third-party reports Clients or partners reporting they were approached with confidential information
Comparative analysis Side-by-side showing competitor's work is identical or substantially similar to yours
Forensic evidence System logs showing files were copied, emailed, or uploaded before departure
Correspondence Emails where contractor refuses to sign assignment or claims ownership
Step 4: Assess Defenses and Weaknesses

Anticipate how the other side might defend:

  • "The information isn't confidential": It's public, generally known, or you didn't mark it as confidential
  • "I developed it independently": I created similar work on my own before/after our relationship
  • "The NDA is overbroad": It defines confidential information so broadly it functions as a noncompete (California issue)
  • "You didn't assign it properly": The assignment clause was ambiguous or I fall under California Labor Code § 2870 exception
  • "I have portfolio rights": My contract allowed me to showcase the work
  • "You waived your rights": You knew I was using it and didn't object for months/years (laches)

Evaluate your evidence and agreement language against these defenses before sending the demand letter.

Interpreting NDA Scope

Courts interpret NDAs based on the specific definition of "Confidential Information" in the contract:

NDA Language Scope Enforceability
Specific enumeration
"Customer lists, pricing, source code, and product roadmaps"		 Narrow—only listed categories protected ✅ Highly enforceable; clear what's protected
Catch-all with examples
"All business information including but not limited to..."		 Broader, but guided by examples ✅ Generally enforceable if reasonable
Overbroad catch-all
"Any information related to the business"		 Extremely broad—could cover general knowledge ⚠️ May be void in California as disguised noncompete
Trade secret standard
"Information qualifying as trade secrets under CUTSA"		 Tied to statutory definition of trade secret ✅ Enforceable; protects only true trade secrets
⚠️ California Overbreadth Concern: If your NDA defines confidential information so broadly that it prevents the employee/contractor from using general industry knowledge or skills, California courts may void it under § 16600 as a restraint on trade. Focus enforcement on actual trade secrets, not general knowledge.
Interpreting IP Assignment Language
Contract Language Legal Effect Action Required
"Employee hereby assigns" Present-tense, self-executing assignment—you already own the IP No further signature needed; can demand cessation of unauthorized use immediately
"Employee will assign" Promise to assign in future—creates contractual duty but IP hasn't transferred yet Must demand they sign a formal assignment document; may need court order for specific performance
"Work made for hire" If valid WMFH under 17 U.S.C. § 101, you own from moment of creation No assignment needed; but verify it meets statutory requirements (employee status or narrow categories for contractors)
Silent on IP ownership Default rules apply: contractor owns copyright; you may have implied license Much weaker position; may negotiate retroactive assignment or license
Reservation of Rights and Carve-Outs

Check if the agreement includes any rights the contractor reserved:

  • Portfolio use: "Contractor may use deliverables in portfolio for self-promotional purposes, subject to Company approval"
  • Open-source carve-outs: "Assignment does not apply to open-source components or libraries"
  • Generic know-how: "Nothing in this Agreement restricts Contractor's use of general skills, knowledge, and experience"
  • Pre-existing IP: "Contractor retains ownership of pre-existing works and grants Company a license to use them in deliverables"

If the contractor's use falls within a valid carve-out, your demand may fail. Carefully review these provisions before asserting breach.

💡 California Labor Code § 2870 Notice: If you're enforcing an employee IP assignment in California, verify the agreement includes the required § 2870 notice explaining that inventions developed entirely on the employee's own time, with their own resources, and unrelated to your business are excluded. Without this notice, the clause may be unenforceable.
Essential Elements of NDA Breach Demand Letter
  1. Identify the NDA: Reference the specific agreement (date, parties, title)
  2. Cite specific provisions: Quote the confidentiality definition and use restrictions
  3. Describe the breach: Specific acts (e.g., "You posted our client list on your website on [date]")
  4. Demand immediate cessation: Stop all use and disclosure
  5. Demand removal/destruction: Take down public displays, delete copies, certify deletion
  6. Demand disclosure: Identify all recipients of confidential information
  7. Consequences: Injunctive relief, damages, attorneys' fees (if contract permits)
  8. Deadline: Typically 5–10 days depending on urgency
Sample NDA Breach Demand Letter

Dear [Former Employee/Contractor]:

I represent [Company] regarding your breach of the Confidentiality Agreement you signed on [date] (the "NDA").

Under Section [X] of the NDA, you agreed that "Confidential Information" includes [quote definition], and that you would not disclose or use such information except as necessary to perform services under the Agreement. You further agreed that these obligations survive termination of your engagement.

Our investigation reveals that you have breached the NDA in the following ways:

  • On [date], you posted [description of confidential information] to your public portfolio website at [URL];
  • You shared [Company]'s proprietary [templates/code/process documents] with your new employer, [Name], as evidenced by [specific evidence]; and
  • You disclosed [specific confidential information] to [third party] in violation of your secrecy obligations.

DEMANDS:

You must immediately:

  1. Cease all use and disclosure of [Company]'s Confidential Information;
  2. Remove all Confidential Information from your website, portfolio, and any public repositories (GitHub, etc.);
  3. Return or destroy all Confidential Information in your possession and certify in writing that you have done so;
  4. Identify all individuals and entities to whom you disclosed Confidential Information; and
  5. Respond to this letter within 7 days with proof of compliance.

If you fail to comply, [Company] will seek injunctive relief and monetary damages for breach of contract, and will pursue all remedies available under the NDA and applicable law, including [if contract permits] recovery of attorneys' fees and costs.

Sincerely,
[Attorney Name]

Essential Elements of IP Assignment Breach Demand Letter
  1. Identify the agreement and IP assignment clause: Quote the exact language ("hereby assigns all rights...")
  2. Describe the assigned IP: Specific deliverables, inventions, or creative works
  3. Describe the breach: Unauthorized use, refusal to sign assignment, commercial exploitation, portfolio display
  4. Demand cessation: Stop using, selling, licensing, or displaying the IP
  5. Demand assignment execution (if "will assign" language): Sign and return formal assignment within X days
  6. Demand accounting: Identify all uses, sales, licenses, or displays of the IP
  7. Consequences: Copyright infringement suit, specific performance, damages, injunction
Sample IP Assignment Breach Demand Letter

Dear [Contractor]:

I represent [Company] regarding your unauthorized use of intellectual property that you assigned to [Company] under our [Agreement Type] dated [date].

Section [X] of the Agreement states: "Contractor hereby assigns to Company all right, title, and interest in and to all work product, deliverables, inventions, and intellectual property created during the performance of services under this Agreement."

Pursuant to this clause, [Company] owns all rights to [describe IP: software, designs, creative works, etc.] that you developed under the Agreement. Despite this, you are currently:

  • Displaying [Company]'s proprietary [designs/code/creative assets] in your public portfolio at [URL];
  • Using [Company]'s [software/templates/processes] in work you are performing for [Competitor/New Client]; and/or
  • Licensing or selling [describe IP] to third parties without authorization.

DEMANDS:

  1. Immediately cease all use, display, sale, and licensing of the IP assigned to [Company];
  2. Remove all [Company] IP from your portfolio, website, GitHub, and any other public or private repositories;
  3. Provide a full accounting of all uses, sales, or licenses of the IP since termination of the Agreement;
  4. Return all copies and derivative works based on [Company]'s IP; and
  5. [If applicable:] Execute the attached formal Assignment of Rights within 7 days.

Failure to comply will result in [Company] filing suit for copyright infringement, breach of contract, and specific performance, seeking injunctive relief, statutory damages, actual damages, disgorgement of profits, and attorneys' fees.

Sincerely,
[Attorney Name]

✅ Attach Evidence: Include screenshots, URLs, side-by-side comparisons, and copies of the relevant contract provisions as exhibits to strengthen your demand and demonstrate you have proof.
Remedies for NDA Breach
Remedy Description Availability
Injunctive relief Court order requiring cessation of use/disclosure and removal of materials Available for ongoing or threatened breaches; requires showing irreparable harm
Actual damages Lost profits, lost business value, harm to competitive position Available but often hard to quantify
Unjust enrichment Disgorgement of profits defendant made from misuse Available if you can trace profits to the confidential information
Liquidated damages Pre-agreed damages amount specified in NDA Enforceable if reasonable estimate of actual harm (not a penalty)
Attorneys' fees Recovery of legal fees and costs Only if NDA includes fee-shifting clause
Remedies for IP Assignment Breach
Remedy Description Notes
Specific performance Court order requiring contractor to sign assignment documents Available for "will assign" clauses; not needed for "hereby assigns"
Injunction against use Prohibit contractor from using, selling, or displaying the IP Available for ongoing infringement
Copyright infringement damages Actual damages + profits, or statutory damages ($750–$30,000 per work, up to $150,000 if willful) If work was registered within 3 months of publication or before infringement
Accounting and disgorgement Require defendant to disclose all profits from unauthorized use and disgorge them Available in equity
Destruction of infringing copies Court-ordered destruction of unauthorized copies and derivatives 17 U.S.C. § 503
💡 Copyright Registration Matters: If you registered the copyright before the infringement (or within 3 months of publication), you can recover statutory damages and attorneys' fees. Without registration, you're limited to actual damages and profits, which are harder to prove.
Negotiated Resolutions

Most NDA and IP disputes settle without litigation. Common settlement structures:

  • Takedown and release: Contractor removes materials from portfolio/website; you release past breach claims
  • Retroactive license: Instead of forcing assignment, negotiate a license on reasonable terms (royalty, limited scope)
  • Carve-out for portfolio use: Allow contractor to display redacted/anonymized versions of work for self-promotion
  • Partial assignment: Contractor assigns core IP but retains rights to use generic components or derivative works
  • Monetary settlement: Contractor pays lump sum to settle infringement and breach claims; mutual release
  • Standstill: Contractor agrees not to use IP for competitors for defined period; you agree not to sue for past use
Practical Considerations
Factor Considerations
Relationship preservation Do you want to work with this contractor again? Is the industry small and reputational damage a concern?
Cost vs. benefit Is the IP valuable enough to justify litigation costs ($50k–$200k+)?
Publicity risk Will litigation expose confidential information in public filings or attract negative press?
Enforceability uncertainty If your NDA is overbroad or your IP assignment is ambiguous, settlement may be safer than risking an adverse ruling
✅ Settlement Sweetener: Offer to provide a neutral reference letter or agree not to disparage the contractor in exchange for quick compliance. This makes settlement more attractive and avoids drawn-out disputes.
How I Can Help

I represent companies in enforcing NDAs and IP assignment agreements against former employees and contractors. I handle demand letters, negotiation, injunctive relief, and full breach-of-contract and copyright infringement litigation.

Services Offered
  • Agreement review and enforcement analysis: Assess whether your NDA and IP clauses are enforceable and what remedies are available
  • Evidence gathering: Document breaches through screenshots, forensic investigation, and third-party discovery
  • Demand letter drafting: Professional cease-and-desist letters citing specific contract provisions and legal violations
  • Injunctive relief: File for TROs and preliminary injunctions to stop ongoing use/disclosure
  • Copyright registration and infringement actions: Register copyrights and file DMCA takedowns or federal infringement suits
  • Settlement negotiation: Secure takedowns, assignments, licenses, or monetary settlements without litigation
My Approach
  1. Surgical contract analysis: I review your agreements to identify exactly what was promised, what constitutes breach, and what remedies you can pursue.
  2. Evidence-driven demands: I gather screenshots, forensic evidence, and third-party reports to build an airtight case before sending the demand letter.
  3. Calibrated pressure: I tailor the tone and demands to your goals—aggressive cease-and-desist for bad actors, cooperative resolution offers for valued contractors.
  4. California compliance: I ensure NDA enforcement doesn't violate § 16600 by focusing on trade secrets, not general competition.
  5. Quick resolution focus: Most NDA/IP disputes can be resolved with a well-drafted demand letter and brief negotiation, avoiding costly litigation.
📄 Former Employee or Contractor Breached Your NDA?

Contact me for a consultation. I'll review your agreement, assess the breach, and draft a demand letter to stop the violation and secure compliance.

Email: owner@terms.law
Frequently Asked Questions
No—if the information is now publicly available through no fault of yours, it's no longer confidential and the NDA no longer protects it. However, if the contractor caused it to become public by breaching the NDA, you can still sue for damages resulting from that breach.
This is a factual dispute. You'll need to show the work was created during the contract term, using your resources, or is substantially similar to what they created for you. Forensic evidence (timestamps, version control logs, identical code/design elements) is critical to rebut independent development claims.
It depends on the contract. If you have a clear IP assignment or work-made-for-hire clause with no portfolio carve-out, yes—you can demand they remove it. If the contract allows portfolio use (common for creative contractors), you may only be able to require redaction or anonymization of confidential details.
If your contract says they "will assign," you can sue for specific performance—a court order requiring them to sign. If it says "hereby assigns," the assignment is already complete and no signature is needed (though a confirmatory assignment is helpful). In either case, you can also pursue injunctive relief to stop unauthorized use.
For contract breaches, only if your agreement includes a fee-shifting clause. For copyright infringement, you can recover fees if the work was registered before the infringement (or within 3 months of publication). Otherwise, each side bears their own fees under the "American Rule."
No—§ 2870 applies only to employees, not independent contractors. However, general contract law principles still apply: you can only assign IP that the contractor actually created for you or agreed to assign. You cannot claim ownership of work they created entirely on their own time, with their own resources, for unrelated purposes.