ATTORNEYS AT LAW
James D. McNairy
Jim’s practice spans a variety of employment and business litigation matters. He leads the firm’s Trade Secrets and Employee Mobility practice. Jim specializes in the protection and enforcement of intellectual property rights, including matters involving trade secret, non-compete, computer fraud, unfair competition, and related business tort claims. He has represented Fortune 500 companies in some of their most challenging and significant engagements in these areas. He also provides advice to clients concerning best practices for protecting and enforcing intellectual property rights and addressing restrictive covenants in employment-related agreements and business transactions.
Jim has extensive employment litigation experience that includes defending employers against single and multi-plaintiff claims for discrimination, retaliation and harassment, as well as against high exposure wage and hour class action claims arising under the California Labor Code and the FLSA.
Jim’s intellectual property and business litigation practice focuses on complex matters involving, among other things: trade secret misappropriation; copyright infringement; breach of contract; fraud; insurance bad faith; franchise, dealer and distribution disputes; business torts; false advertising; discriminatory pricing; and commercial loan enforcement (enforcement of loan guarantees and judicial foreclosure). He has represented clients in state and federal courts, including jury trials and appellate matters, and in alternative dispute resolution (arbitrations and mediations).
Representative matters include working for privately held and publicly traded entities in the technology, semiconductor, nanotechnology, healthcare, banking, mortgage, financial services, insurance, exotic performance automobile, wholesale commercial goods, coatings, broadcast and internet media, retail consumer products, foods, food service and construction industries.
Jim authored Chapter 9 of Trade Secret Litigation & Protection: A Practice Guide to the DTSA and CUTSA (4th Ed. 2022), a widely referenced 26-chapter trade secrets treatise. Chapter 9 addresses important aspects of trade secret litigation, including the expansive preemptive scope of the CUTSA and related strategic considerations when drafting and defending against claims for misappropriation of trade secrets. Jim was a contributing editor to the Third Edition of this same treatise (2014). From 2012-2015, Jim served as a member of the Executive Committee of the State Bar of California’s Intellectual Property Law Section.
Clients look to us to solve difficult problems. ‘Good enough’ doesn’t cut it. We look for creative solutions to achieve client goals through hard work and exceptional lawyering at the best possible value.
“I primarily am a litigator focusing on three areas of law: employment, protection of intellectual property and business disputes (often those that relate to competition and employee mobility issues). I help clients avoid litigation, but when litigation arises or becomes necessary, I help them win. To do so, I partner with clients to understand and then efficiently execute their objectives.”
When I am not working hard on behalf of clients, you will find me enjoying time with my family or in the mountains near water, ideally on a remote trout stream in the Sierra Nevada.
Trade Secret/Non-compete/Computer Fraud Litigation
- Multiple matters in state and federal courts representing plaintiffs seeking to protect trade secrets from unauthorized possession, use or disclosure. I have never failed to obtain injunctive relief from the court after initiating suit to help prevent the unauthorized disclosure or use of client trade secrets, including in matters involving senior executives from some of the world’s largest publicly traded and privately held companies. Several such suits also involved claims under the federal Computer Fraud and Abuse Act and/or California Penal Code Section 502.
- Multiple matters in multiple states in state and federal courts seeking to enforce or invalidate restrictive covenants in employment-related agreements.
- Single and multi-plaintiff claims: Successfully resolved through summary judgment/adjudication and nominal settlements multiple single plaintiff and multi-plaintiff lawsuits asserting claims for wrongful termination, discrimination, retaliation, whistle-blower retaliation, sexual harassment, failure to accommodate, breach of employment contract, fraud, tortious interference, defamation, inducement to relocate and wage and hour violations.
- Wage and hour class actions: Obtained dismissal of putative class representative’s claims via summary judgment; successfully opposed motions for class certification; managed multiple matters including federal multi-district litigation to reach favorable resolutions on behalf of clients; significant experience in negotiated resolutions of class complaints, including via Pick-Up Stix campaigns.
- Represented one of the Sacramento region’s largest independent surgical specialty groups in a shareholder dispute where, after a three week trial (arbitration evidentiary hearing), the client prevailed on all claims and was awarded its attorneys’ fees and costs.
- Represented leading national furniture manufacturer in federal court concerning breach of contract and related business torts in a dealer distribution lawsuit. Case favorably resolved in client’s favor after extensive discovery and motion practice.
- Represented national insurer in case originally pleaded as a class action pertaining to whole life insurance policies. After obtaining dismissal of class allegations, the case favorably resolved in the client’s favor after the parties impaneled a jury at trial.
- Represented home care franchisor in federal court concerning breach of contract, copyright infringement and related business torts claims brought by software vendor. Case favorably resolved in client’s favor
- Represented national bank in multi-million dollar commercial loan enforcement action. Obtained summary judgment in the bank’s favor.
Data Privacy Compliance
- Counseled clients on compliance with the California Consumer Privacy Act (CCPA) and related privacy laws, including assisting with compliance audits, establishing and implementing compliance plans, and drafting data privacy and related policies.
Quoted, “New Labor Code Section Helps Ensure California Workers Are Governed By California Law,” SHRM (October 27, 2016)
Co-Author, “New California Law May Preclude Use of Forum-Selection Clauses to Enforce Non-Compete Agreements in Employment Contracts,” Blog (October 10, 2016)
Co-Author, “We Traced The Trade Secret Leak … It’s Coming From Inside The Business,” Blog (August 3, 2016)
“Facebook, Inc. v. Power Ventures, Inc.: Shotgun-Toting Borrowers of Jewelry From Bank Safe Deposit Boxes and the CFAA. Wait. What?,” Blog (July 19, 2016)
Co-Author, “No Microscope Needed to See Why This Non-Compete Is Unenforceable,” Blog (May 10, 2016)
Quoted, “Companies now have federal remedy to protect trade secrets,”Compliance Week (May 24, 2016)
Co-Author, “2014 Trade Secrets Webinar Series Year in Review,” (December 17, 2014)
“Enforcing Non-Compete Agreements in the Pharmaceutical Industry,” Client Alert (June 18, 2014)
“SunPower Corp. v. SolarCity Corp.: Creating More Questions Regarding the Scope of Trade Secret Supersession in California,” New Matter Volume 38, Number 3 (Fall 2013)
“New Ninth Circuit Case Acknowledges Trade Secrets Exception to Business and Professions Code Section 16600,” Westlaw, Cyberspace Lawyer (November 2008)
“California Supreme Court Rejects the Ninth Circuit’s Narrow Restraint Exception to California’s Prohibition on Employee Noncompetition Agreements,” Bloomberg Law Reports, Vol. 2, No. 34 (August 25, 2008)
University of the Pacific, McGeorge School of Law: Graduated with Distinction
Witkin Awards for Excellence in Legal Writing and Research, Patent Law and Administrative Law
University of the Pacific, McGeorge School of Law: Dean’s List
Law Review Board of Editors
Associate Articles Editor, The Transnational Lawyer, 2002-2003
Law Review Staff Writer, The Transnational Lawyer, 2001-2002
Recognized as a 2016-2022 Super Lawyer, Intellectual Property Litigation, and separately, a 2016-2017 Best Lawyer, in the area of Trade Secrets Law
Sacramento Business Journal Best of the Bar
Sacramento Magazine Top Lawyer
“Latest Developments in Trade Secret Law and Employee Mobility,” IP Institute, California Lawyers Association (November 13, 2020)
“Employment Law Year in Review,” Boutin Jones Inc., Presenter, non-competes and trade secrets (January 23, 2020)
“Employment Law Year in Review,” Boutin Jones Inc., Presenter, non-competes and trade secrets (January 24, 2019)
“Employment Law Year in Review,” Boutin Jones Inc., Presenter, non-competes and trade secrets (January 18, 2018)
“The Defend Trade Secrets Act of 2016: Securing Your Trade Secrets,” Webinar, presented by The Knowledge Group (January 27, 2017)
“Proving-Up Trade Secret Misappropriation: Best Practices and Tales from the Trenches,” Webinar (December 13, 2016)
“Trade Secrets, Restrictive Covenants, and the NLRB: Can They Peacefully Coexist?,” Webinar (May 10, 2016)
Moderator and Presenter, “Reasonable Secrecy Measures and Criminal Prosecution of Trade Secret Misappropriation.” 40th Annual IP Institute (November 13, 2015)
Speaker, “How & Why California is Different When it Comes to Trade Secrets and Non-Competes,” Webinar (June 23, 2015)
Speaker, “Trade Secret Protection Best Practices: Hiring Competitors’ Employees and Protecting the Company When Competitors Hire Yours,” In-Person Briefings, San Francisco, Los Angeles, and Palo Alto (November-December 2014)
Speaker, “Hot Topics in California Trade Secrets Law,” 39th Annual Intellectual Property Institute Celebrating Creativity, presented by the State Bar of California (November 6-7, 2014)
“How & Why California is Different When it Comes to Trade Secrets and Non-Competes,” Webinar (October 28, 2014)
“What You Need to Know About the Recent Cases/Developments in Trade Secret, Non-Compete, and Computer Fraud Law,” 2013 National Year in Review Webinar (March 6, 2014)
“The Trade Secrets of Trade Secrets,” State Bar of California 38th Annual Intellectual Property Institute (November 7, 2013)
“Advanced Labor & Employment Law Conference For In-House Counsel: Social Media & Trade Secrets,” (September 26, 2013)
“How & Why California is Different When it Comes to Trade Secrets and Non-Competes,” (September 24, 2013)
“Trade Secrets and Cybersecurity: What Every Attorney Should Know,” Bridgeport Continuing Education. Los Angeles, CA (May 17, 2013)
“How the America Invents Act Increases the Importance of Trade Secrets,” Webinar (April 16, 2013)
“Q&A With Jim McNairy,” Law 360, New York (April 10, 2013)
“Trade Secrets in the Telecommunications Industry,” Webinar (February 20, 2013)
“2012 California Year in Review Webinar: What You Need to Know About the Recent Developments in Trade Secret, Non-Compete, and Computer Fraud Law,” Webinar (December 18, 2012)
“Obtaining Injunctive Relief In Trade Secrets Cases,” 37th Annual Intellectual Property Institute (November 8, 2012)
“Hyperthreats Alert – Risk Management in 2012,” The Knowledge Congress Webcast Series (September 12, 2012)
“Protecting Your Trade Secrets in the Financial Services Industry,” Webinar (May 22, 2012)
“Key Considerations Regarding Trade Secrets and Non-Competes in Business Transactions,” Webinar (November 30, 2011)
“Why Every Lawyer Should Know More About Trade Secret Law,” 36th Annual Intellectual Property Institute IP in the West, Dana Point, CA (November 10-12, 2011)
“Choosing The Right IP Protection: Patent, Trade Secret, or Both,” webinar (October 6, 2011)
“E-Discovery Considerations for IP Litigation,” Masters Series, San Francisco (September 14, 2011)
“Trading Secrets: How to Adequately Protect Trade Secrets and Balance Employee Rights in California Intellectual Property Section,” 2011 State Bar Section Cyber Institute (January 25, 2011)
“Franchise and Dealer Relations: Protecting Your Trade Secrets and Brand,” Webinar (July 28, 2010)
“Trade Secret Litigation and Protection in California,” Webinar (May 19, 2010)
“Trade Secret Protection and Litigation,” 2010 Cyber Institute, Intellectual Property Law Section of the State Bar of California (April 8, 2010)
“Dowell v. Biosense Webster, Inc.,” Intellectual Property Law Section of the State Bar of California (February 2010)
“K.C. Multimedia, Inc. v. Bank of America Technology & Operations, Inc., et al.,” Intellectual Property Law Section of the State Bar of California (March 2009)
“Asset Marketing Systems, Inc. v. Gagnon,” Intellectual Property Law Section of the State Bar of California (September 2008)