Trade Secret Settlement Letter

Negotiate resolution of misappropriation claims, secure return of materials, and establish ongoing confidentiality protections

Settlement & Resolution California CUTSA

Settling Trade Secret Disputes

Trade secret litigation is expensive, unpredictable, and can expose sensitive business information through discovery. Settlement often serves both parties' interests—the trade secret owner gains certainty and stops ongoing harm, while the alleged misappropriator avoids the risk of injunctions, damages, and attorneys' fee awards.

Benefits of Settlement:
  • Immediate cessation of misappropriation (faster than litigation)
  • Confidential resolution protects business reputation
  • Avoids expensive discovery and expert costs
  • Certainty of outcome vs. litigation risk
  • Opportunity for enhanced protections through agreement

When to Propose Settlement

After Demand Letter

If defendant responds constructively to your initial demand, settlement discussions may resolve the matter without court involvement. The demand letter establishes your leverage.

After TRO/Preliminary Injunction

If you've obtained injunctive relief, defendant faces ongoing court supervision. This is often an optimal settlement moment—you've demonstrated strength but avoided trial costs.

During Discovery

As discovery reveals the scope of misappropriation (or defenses), both parties gain information to value the case. Mediation at this stage is common.

Before Trial

As trial approaches and costs mount, settlement pressure increases. Courts often require settlement conferences. Most trade secret cases settle before trial.

Types of Settlement Communications

1. Settlement Demand Letter

Sent by the trade secret owner proposing specific terms to resolve the dispute. Typically includes:

  • Summary of claims and evidence (to establish leverage)
  • Proposed monetary payment
  • Required injunctive relief (cease use, return materials)
  • Deadline for response

2. Settlement Offer (Rule 998 / CCP 998)

Formal statutory offer under California Code of Civil Procedure § 998. If defendant rejects and plaintiff obtains a more favorable judgment, defendant pays plaintiff's post-offer costs and expert fees. Creates powerful settlement pressure.

3. Mutual Settlement Proposal

Exchange of term sheets leading to a negotiated settlement agreement. Often facilitated through mediator or direct counsel-to-counsel negotiation.

Evidence Rule 408 Protection: Under California Evidence Code § 1152, settlement negotiations and offers are generally inadmissible to prove liability. This encourages candid settlement discussions. However, mark all settlement communications "CONFIDENTIAL - FOR SETTLEMENT PURPOSES ONLY - EVIDENCE CODE § 1152" to maximize protection.

Settlement Letter Strategy

Goals of an Effective Settlement Letter

  • Demonstrate strength: Show you can prove your case if litigation continues
  • Quantify exposure: Make defendant understand the financial risk of losing
  • Offer resolution: Provide a clear path to ending the dispute
  • Create urgency: Set deadlines to prevent indefinite delay
  • Preserve flexibility: Leave room for negotiation on key terms
  • Protect confidentiality: Keep terms private to preserve business relationships

Leverage Points to Emphasize

Leverage Factor How to Present
Strong evidence of misappropriation Reference specific documents, data access logs, or witness statements (without full disclosure)
Willfulness (enhances damages) Emphasize that defendant knew or should have known information was confidential
Mandatory attorneys' fees Civil Code § 3426.4 requires fee award for willful misappropriation—this adds substantially to defendant's exposure
Injunction impact If defendant's business depends on the trade secrets, injunction could be devastating
Reputational harm Public litigation could damage defendant's professional reputation and future employment
Criminal referral possibility Penal Code § 499c makes trade secret theft a crime; mention without threatening
Tone Matters: Settlement letters should be firm but professional. Avoid inflammatory language that could harden positions. The goal is resolution, not escalation. Present your case strength as facts, not threats.

Essential Settlement Terms

A comprehensive trade secret settlement agreement should address multiple issues beyond just monetary payment. These terms protect against future misappropriation and provide enforcement mechanisms.

Monetary Terms

Lump Sum Payment

One-time payment to resolve all claims. Most common structure. Typically paid at signing or within 30 days.

Considerations: Tax treatment, payment security, default provisions

Structured Payments

Installment payments over time. Used when defendant cannot pay lump sum or when ongoing compliance is needed.

Considerations: Security/collateral, acceleration on default, interest

Royalty/License

If defendant will continue using information (with permission), ongoing royalty payments may be appropriate.

Considerations: Audit rights, minimum payments, term limits

Attorneys' Fees

Separate payment for legal costs incurred. May be included in lump sum or itemized separately.

Considerations: Fee documentation, caps, timing

Injunctive Terms

Cease Use Provisions

  • Immediate cessation: Defendant stops all use of trade secrets upon signing
  • Specific identification: Define exactly what information is covered
  • Derivative works: Prohibition extends to products developed using trade secrets
  • Third-party disclosure: Prohibition on sharing with others
  • Duration: Typically perpetual or until information becomes public

Return of Materials

  • Physical documents: Return all originals and copies
  • Electronic files: Delete from all devices, cloud storage, email
  • Certification: Sworn statement confirming complete return/deletion
  • Forensic verification: Right to inspect devices to confirm deletion
  • Third-party materials: Obligation to retrieve from anyone defendant shared with

Employment Restrictions (California-Compliant)

Remember: California Business & Professions Code § 16600 voids non-compete agreements. Settlement terms cannot impose broad employment restrictions. Permissible provisions include:

  • Role limitations: Defendant agrees not to work on specific competing projects that would require use of trade secrets
  • Information barriers: If defendant works for competitor, agreement to implement ethical walls
  • Notification: Defendant agrees to notify plaintiff of future employment in competing companies
  • Customer restrictions: Limited non-solicitation of specific customers (if tied to trade secrets, not general non-compete)
Avoid Unenforceable Terms: Do not include broad non-compete provisions—they will be void under § 16600 and could invalidate other settlement terms. Focus on protecting specific trade secrets, not restricting employment generally.

Compliance and Enforcement Terms

Audit Rights

Right to inspect defendant's devices/systems to verify compliance. Typically limited to reasonable cause and frequency.

Liquidated Damages

Pre-agreed damages for future violations. Must be reasonable estimate of harm, not a penalty.

Consent to Injunction

Defendant agrees that breach justifies immediate injunctive relief without further proof of irreparable harm.

Fee Shifting

Prevailing party in enforcement action recovers attorneys' fees. Creates deterrent against breach.

Standard Settlement Provisions

Provision Purpose
Mutual Release Both parties release claims arising from the dispute (carve out for breach of settlement)
Confidentiality of Settlement Terms remain confidential; parties may disclose only that dispute was resolved
No Admission Settlement is not admission of liability by either party
Dismissal with Prejudice If lawsuit filed, it will be dismissed with prejudice upon performance
Governing Law California law governs interpretation and enforcement
Jurisdiction Consent to jurisdiction for enforcement actions (often specific California county)
Integration Agreement is complete; no other representations or agreements exist

Valuing Trade Secret Claims

Determining the right settlement number requires analyzing potential damages, litigation costs, and the probability of various outcomes. This section helps you develop a settlement range.

Damages Under CUTSA

Civil Code § 3426.3: Damages can include both (a) actual loss caused by misappropriation and (b) unjust enrichment not taken into account in computing actual loss. In lieu of these, the court may impose a reasonable royalty. If willful and malicious, exemplary damages up to twice the damages awarded may be added.

1. Actual Loss (Your Damages)

Lost profits you would have earned but for the misappropriation:

  • Lost sales: Revenue lost to defendant's competing use
  • Price erosion: Reduced prices due to increased competition
  • R&D costs: Investment in developing the trade secret (head start theory)
  • Business value: Diminished company valuation due to lost competitive advantage

2. Unjust Enrichment (Defendant's Gain)

Profits defendant earned using your trade secrets:

  • Revenue attributable to misappropriation: Sales enabled by trade secrets
  • Cost savings: R&D costs defendant avoided by stealing vs. developing
  • Market position: Competitive advantages gained

Note: You can recover both actual loss AND unjust enrichment to the extent they don't overlap.

3. Reasonable Royalty

What a willing licensor and licensee would have agreed to for authorized use:

  • Industry licensing norms
  • Value of the trade secret to defendant's business
  • Alternatives available to defendant
  • Comparable license agreements

4. Exemplary Damages (2x Multiplier)

For willful and malicious misappropriation, court may award up to double actual damages:

  • Defendant knew information was confidential
  • Defendant deliberately circumvented security
  • Defendant continued use after demand letter
  • Evidence of bad faith or intentional wrongdoing

Litigation Cost Analysis

Phase Typical Cost Range Duration
Pre-suit investigation & demand $5,000 - $25,000 1-4 weeks
TRO/Preliminary injunction $25,000 - $100,000 1-3 months
Discovery (documents, depositions) $75,000 - $300,000+ 6-12 months
Expert witnesses $50,000 - $200,000+ Ongoing
Summary judgment $50,000 - $150,000 2-4 months
Trial preparation & trial $150,000 - $500,000+ 2-6 months
Total through trial $350,000 - $1,000,000+ 18-36 months
Fee Recovery: If you prove willful misappropriation, defendant pays your attorneys' fees under § 3426.4. This is a powerful settlement lever—defendant's exposure includes not just damages but your legal costs. Emphasize this in settlement discussions.

Settlement Range Calculator

Developing Your Settlement Range

Consider these factors to establish minimum, target, and maximum settlement positions:

Factor Questions to Answer
Floor (walk-away point) What's the minimum you would accept vs. proceeding to trial? Factor in litigation costs, time, and risk of losing.
Target What recovery reflects fair compensation given evidence strength and likely damages? This is your realistic goal.
Opening demand What number allows negotiating room to reach your target? Typically 30-50% above target, supported by damages analysis.
Probability of prevailing How strong is your case? 80%+ = strong leverage. 50-60% = significant uncertainty.
Defendant's ability to pay Can defendant actually pay? Individual vs. company? Insurance coverage? A judgment you can't collect is worthless.

Sample Settlement Valuation

Example Analysis

Scenario: Former sales director took customer database and pricing information to competitor.

Damages Component Estimated Range
Lost profits (customers lost to competitor) $150,000 - $300,000
Unjust enrichment (competitor's gain) $100,000 - $200,000
R&D value of customer database $50,000 - $100,000
Base damages range $300,000 - $600,000
Exemplary damages (2x if willful) $600,000 - $1,200,000
Estimated attorneys' fees through trial $200,000 - $400,000
Total exposure to defendant $800,000 - $1,600,000

Settlement analysis:

  • Probability of proving willfulness: ~70%
  • Risk-adjusted damages: $560,000 - $1,120,000
  • Litigation cost savings (both sides): $400,000 - $800,000
  • Reasonable settlement range: $250,000 - $500,000

Sample Settlement Letters

Sample 1: Settlement Demand Letter (Pre-Litigation)

[ATTORNEY LETTERHEAD] CONFIDENTIAL - FOR SETTLEMENT PURPOSES ONLY CALIFORNIA EVIDENCE CODE § 1152 [DATE] VIA EMAIL AND CERTIFIED MAIL [DEFENDANT NAME OR COUNSEL] [ADDRESS] Re: Settlement Proposal - [CLIENT NAME] Trade Secret Claims Dear [Mr./Ms. NAME]: As you know, this firm represents [CLIENT NAME] ("[CLIENT]") in connection with the misappropriation of trade secrets by [DEFENDANT NAME]. We previously sent a demand letter dated [DATE] outlining our client's claims. [CLIENT] is prepared to resolve this matter without litigation if [DEFENDANT] agrees to the terms outlined below. This letter constitutes a settlement communication protected by California Evidence Code § 1152 and is made without prejudice to any of [CLIENT]'s claims or defenses. SUMMARY OF CLAIMS The facts supporting [CLIENT]'s claims are set forth in our prior demand letter. In brief: • [DEFENDANT] [DESCRIBE KEY CONDUCT][CLIENT] has evidence that [DESCRIBE EVIDENCE] • This conduct constitutes misappropriation under Civil Code § 3426 DAMAGES EXPOSURE Based on our analysis, [DEFENDANT]'s total exposure if this matter proceeds to trial includes: Actual damages (lost profits/head start): $[AMOUNT] - $[AMOUNT] Unjust enrichment: $[AMOUNT] - $[AMOUNT] Exemplary damages (2x for willful conduct): $[AMOUNT] - $[AMOUNT] Attorneys' fees (mandatory if willful): $[AMOUNT] - $[AMOUNT] ───────────────────────────────────────────────────────────────── TOTAL POTENTIAL EXPOSURE: $[AMOUNT] - $[AMOUNT] Given the strength of [CLIENT]'s evidence of willful misappropriation, the risk of enhanced damages and fee shifting is substantial. SETTLEMENT PROPOSAL To resolve all claims without litigation, [CLIENT] proposes the following terms: 1. PAYMENT: [DEFENDANT] shall pay [CLIENT] the sum of $[AMOUNT], payable within [30/60] days of executing a settlement agreement. 2. CEASE AND DESIST: [DEFENDANT] shall immediately and permanently cease all use of [CLIENT]'s trade secrets and confidential information. 3. RETURN OF MATERIALS: Within [14] days, [DEFENDANT] shall return all documents, files, and materials containing [CLIENT]'s confidential information and provide a sworn certification of complete deletion. 4. FORENSIC VERIFICATION: [DEFENDANT] shall permit a mutually agreed forensic expert to verify complete deletion from all devices and accounts. 5. ENHANCED CONFIDENTIALITY: [DEFENDANT] shall execute an enhanced confidentiality agreement with liquidated damages for future violations. 6. MUTUAL RELEASE: Upon performance, parties shall exchange mutual releases of all claims arising from this dispute. 7. CONFIDENTIALITY OF SETTLEMENT: Terms of settlement shall remain confidential, with both parties permitted to state only that the dispute has been resolved. RESPONSE DEADLINE This proposal shall remain open for [14] days from the date of this letter. If we do not receive a substantive response by [DATE], [CLIENT] will proceed to file suit without further notice. Please note that this proposal reflects a significant discount from [CLIENT]'s total damages exposure in recognition of the value of early resolution. If litigation becomes necessary, [CLIENT] will seek the full measure of damages and fees available under law. We look forward to your response. Very truly yours, [ATTORNEY NAME] [FIRM NAME]

Sample 2: CCP 998 Settlement Offer (During Litigation)

[ATTORNEY LETTERHEAD] [DATE] VIA PERSONAL SERVICE [DEFENSE COUNSEL NAME] [FIRM NAME] [ADDRESS] Re: [CLIENT] v. [DEFENDANT] Case No. [CASE NUMBER] STATUTORY OFFER TO COMPROMISE PURSUANT TO CCP § 998 Dear [COUNSEL]: Pursuant to California Code of Civil Procedure Section 998, plaintiff [CLIENT NAME] hereby offers to allow judgment to be entered against defendant [DEFENDANT NAME] as follows: OFFER Defendant shall pay to Plaintiff the sum of [DOLLAR AMOUNT] ($[NUMERICAL AMOUNT]) in full settlement of all claims asserted in the above-referenced action. TERMS This offer includes: 1. Judgment in favor of Plaintiff and against Defendant in the amount of $[AMOUNT]; 2. Entry of a permanent injunction in the form attached hereto as Exhibit A, enjoining Defendant from any further use of Plaintiff's trade secrets; 3. Defendant's compliance with the Return of Materials provisions set forth in Exhibit B; 4. Dismissal with prejudice of all claims and cross-claims between the parties; 5. Each party to bear its own attorneys' fees and costs incurred through the date of this offer. STATUTORY CONSEQUENCES OF NON-ACCEPTANCE Pursuant to CCP § 998(c)(1), if this offer is not accepted and Plaintiff obtains a more favorable judgment, Defendant shall not recover its costs and shall pay Plaintiff's costs from the time of the offer. Additionally, pursuant to CCP § 998(d), Plaintiff shall be entitled to recover its reasonable expert witness fees incurred after the date of this offer. ACCEPTANCE DEADLINE Pursuant to CCP § 998(b), this offer shall remain open for thirty (30) days from the date of service, or until trial, whichever occurs first. If not accepted within this period, this offer shall be deemed withdrawn. To accept this offer, please sign and return the enclosed Acceptance form. Very truly yours, [ATTORNEY NAME] [FIRM NAME] Enclosures: Exhibit A - Proposed Permanent Injunction Exhibit B - Return of Materials Protocol Acceptance Form

Sample 3: Settlement Acceptance / Counter-Proposal

[ATTORNEY LETTERHEAD] CONFIDENTIAL - FOR SETTLEMENT PURPOSES ONLY CALIFORNIA EVIDENCE CODE § 1152 [DATE] VIA EMAIL [OPPOSING COUNSEL] [FIRM NAME] [EMAIL] Re: Settlement - [CASE NAME/DISPUTE] Dear [COUNSEL]: Thank you for your settlement proposal dated [DATE]. We have reviewed it with our client and respond as follows. ACCEPTED TERMS Our client is prepared to accept the following terms as proposed: • Permanent cease and desist from use of [CLIENT]'s trade secrets • Return of all materials within 14 days with sworn certification • Forensic verification by mutually agreed expert • Mutual release of all claims • Confidentiality of settlement terms COUNTER-PROPOSAL ON MONETARY TERMS Your proposal seeks $[AMOUNT]. While our client disputes liability, in the interest of resolution and avoiding further litigation costs, our client offers $[COUNTER AMOUNT], payable as follows: • $[AMOUNT] upon execution of settlement agreement • $[AMOUNT] within 60 days • $[AMOUNT] within 120 days This offer reflects our client's good faith assessment of litigation risk and the value both parties place on early resolution. MODIFIED TERMS We request the following modifications to the proposed non-monetary terms: 1. Enhanced Confidentiality Agreement: We agree to execute an enhanced NDA, but the liquidated damages provision should be capped at $[AMOUNT] per violation rather than unlimited. 2. Forensic Verification: The expert should be selected from an agreed list of three vendors, with costs shared equally. 3. No Admission: The settlement agreement must expressly state that it constitutes no admission of liability by our client. PROPOSED TIMELINE If these terms are acceptable, we propose the following schedule: • Settlement agreement draft exchanged by [DATE] • Agreement executed by [DATE] • Initial payment and material return by [DATE] • Forensic verification completed by [DATE] Please let us know if your client is amenable to these terms, or if you would like to schedule a call to discuss further. This counter-proposal remains open until [DATE]. Very truly yours, [ATTORNEY NAME]
Next Steps After Agreement: Once terms are agreed, prepare a comprehensive Settlement Agreement covering all negotiated terms, mutual releases, compliance procedures, and enforcement mechanisms. Consider whether to file a stipulated judgment or consent injunction for court enforcement.

Frequently Asked Questions

Should I demand a specific dollar amount or leave it open? +

In most cases, make a specific demand. Benefits include:

  • Anchoring effect: Your number sets the negotiation framework
  • Shows preparation: A specific, justified number demonstrates you've analyzed damages
  • Forces response: Defendant must engage with your number or propose alternative

Exception: If you're uncertain about damages or want to hear defendant's opening position first, you might describe the "substantial" damages exposure without a specific number and invite a proposal.

What if the defendant can't afford to pay? +

A judgment you can't collect is worthless. Consider:

  • Payment plans: Structured payments over time
  • Reduced amount: Something is better than nothing
  • Non-monetary terms: Emphasize injunctive relief, return of materials
  • Insurance: Check if defendant has E&O or D&O coverage
  • Employer liability: If individual took secrets to new employer, pursue the company

Get financial disclosures before finalizing settlement. Consider requiring security (personal guarantee, lien, etc.) for payment obligations.

How do I verify the defendant actually deleted everything? +

Multiple verification mechanisms:

  • Sworn declaration: Require under penalty of perjury certification
  • Forensic examination: Third-party expert examines devices
  • Cloud audit: Access to verify deletion from cloud accounts
  • Device inventory: List all devices that ever contained the information
  • Third-party certification: Anyone defendant shared with must also certify

Include consequences for false certification (breach of agreement, perjury exposure, liquidated damages).

Should I include a non-disparagement clause? +

Often yes, but be aware of limitations:

  • Mutual: Non-disparagement should apply to both parties
  • Scope: Define what statements are prohibited
  • Exceptions: Must allow truthful statements in legal proceedings, regulatory inquiries, etc.
  • Employee context: Cannot restrict employees from discussing wages, working conditions (NLRA protected activity)

Consider whether you want to limit statements about the dispute or broader statements about the parties. The former is more enforceable.

What is a CCP 998 offer and when should I use it? +

CCP § 998 is a powerful settlement tool available once litigation has begun:

  • How it works: Formal written offer that stays open 30 days
  • Consequence of rejection: If you beat your offer at trial, defendant pays your post-offer costs AND expert witness fees
  • When to use: After you have enough discovery to make a reasonable offer, typically mid-litigation
  • Strategic value: Creates pressure to settle; shifts risk of trial to defendant

Make sure your 998 offer is reasonable—courts won't shift costs if the offer was a token amount made in bad faith.

Can settlement terms be kept confidential? +

Yes, with limitations:

  • Private settlements: Parties can agree to confidentiality; this is standard
  • Court filings: If case was filed, dismissal is public but terms need not be disclosed
  • Exceptions: May need to disclose in future litigation, regulatory proceedings, or SEC filings (public companies)
  • Carve-outs: Standard confidentiality provisions allow disclosure to attorneys, accountants, family, and as required by law

Include liquidated damages for breach of confidentiality to give the provision teeth.

Do I need the settlement agreement court-approved? +

Not required, but consider these options:

  • Private agreement only: Simpler, faster, more confidential—but enforcement requires new lawsuit
  • Stipulated judgment: Court enters judgment per agreed terms; can be enforced through contempt if violated
  • Consent injunction: Court-ordered injunction by agreement; violations are contempt
  • Retain jurisdiction: Court retains jurisdiction to enforce settlement terms

For ongoing injunctive obligations, court approval provides stronger enforcement. For simple payment-and-release settlements, private agreement is usually sufficient.

What if defendant breaches the settlement agreement? +

Your remedies depend on how the settlement was structured:

  • Private agreement: Sue for breach of contract; seek specific performance and damages
  • Stipulated judgment: Move to enforce judgment; contempt proceedings for violations
  • Consent injunction: Move for contempt; sanctions for violation of court order
  • Liquidated damages: If included, collect agreed amount per violation
  • Fee shifting: If agreement includes prevailing party fees, recover enforcement costs

Draft your settlement agreement with enforcement in mind. Include consent to jurisdiction, fee shifting, and specific remedies for breach.

Settlement Value Calculator

Estimate a reasonable settlement range for trade secret misappropriation claims under California CUTSA. This calculator helps develop negotiating positions by analyzing damages, litigation costs, and probability of success.

Settlement Analysis

Base Damages (higher of loss or enrichment): $0
Exemplary Damages (2x if willful): $0
Attorney Fees (if willful): $0
Maximum Exposure to Defendant: $0
Risk-Adjusted Value: $0
Your Litigation Costs Saved: $0
Recommended Settlement Range: $0
Disclaimer: This calculator provides rough estimates for settlement planning only. Actual settlement value depends on evidence strength, specific case facts, defendant's resources, injunctive relief value (not calculated here), and negotiation dynamics. Risk adjustments are inherently subjective. Consult with a trade secret attorney before making settlement decisions.

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