John F. Marsh, Member

John F. Marsh
Direct
T 614.229.3230
F 614.221.0479
Columbus Office
T 614.221.3155
F 614.221.0479

As the Co-Chair of the Firm’s litigation group, John’s commercial litigation practice concentrates on trade secrets and the enforcement of restrictive covenants throughout the United States.  John is listed in the 2016- 2023 editions of The Best Lawyers of America for Litigation – Intellectual Property and in the 2009-2021 and 2023 editions of Ohio Super Lawyers. John was also named 2022 Lawyer of the Year for Litigation – Intellectual Property in Columbus, Ohio by The Best Lawyers of America.  John is AV® Preeminent™ Rated by Martindale-Hubbell, its highest available rating for legal ability and professional ethics.  He has been quoted on trade secret law and restrictive covenant issues by BloombergThe Wall Street Journal, Wired, The National Law JournalInside Counsel, Law360, and Managing IP; and his blog, “The Trade Secret Litigator” (www.tradesecretlitigator.com), has been cited by publications including The Wall Street Journal

As the Chair of the American Intellectual Property Law Association’s Trade Secret Law Committee, John was actively involved in providing comments and supporting the Defend Trade Secrets Act, the federal statute that The Wall Street Journal called the “most significant expansion” of federal IP law in 70 years.

Noteworthy Experience

John’s practice focuses on emergency litigation and trials regarding trade secrets, restrictive covenants, intellectual property and trademarks, preserving funds pending final judgment, and enforcing other commercial agreements. John’s representative experience includes:

  • Advising and representing clients, ranging from Fortune 500 companies to individuals, in trade secret and restrictive covenant disputes throughout the United States.
  • Advising and representing departing employees for on boarding to new employers, including disputes over confidentiality obligations and restrictive covenants.
  • Advising and representing financial firms, insurers, manufacturers, media companies, and software and technology firms in disputes over confidentiality agreements and restrictive covenants with former employees and business partners.
  • Successfully represented employer at trial and through appeal to the Ohio Supreme Court to enforce IP ownership provision protecting employer’s critical metal processing technology.
  • Represented lender in extensive injunctive, bankruptcy and receivership proceedings that resulted in a judgment of more than $10 million against the guarantors of loan.
  • Represented financial institution in extensive injunctive, evidentiary and appellate proceedings that thwarted a white-collar fraud ring’s attempts to convert $18 million in bank assets.
  • Represented securities firm in mass exodus of 42 financial analysts, sales representatives and other former employees who formed a competitor, in extensive state court injunctive proceedings and related arbitration proceedings.

Publications & Speaking Engagements

  • The Trade Secret Litigator Blog
  • Fairly Competing Podcast
  • One-Hour Noncompetes Crash Course: From Soup to Nuts, Practical Law Institute (September 2022)
  • It is 10:00 PM. Do You Know Where Your Company's Crown Jewels Are? Does Someone Else? Trade Secrets as an Information Asset, Managing Electronic Records Conference, Indianapolis, IN (May 2022)
  • The Interplay of Trade Secret Protection and Ownership Invention Provisions, Intellectual Property Owners Association, Trade Secrets Committee (March 2022)
  • Annual Review – Trade Secrets, American Intellectual Property Law Association, Washington, D.C. (October 2021)
  • Level-Setting:  A Crash Course in Noncompetes and Other Restrictive Covenants, From Soup to Nuts, Practical Law Institute (September 2021)
  • Protecting Trade Secrets throughout the Employment Life Cycle, The Sedona Conference, Trade Secrets Working Group (May 2021)
  • Trade Secret Roundtable on Developments and Emerging Issues, NERA Economic Consulting (April 2021)
  • The State of Trade Secret Law in 2020:  How the Defend Trade Secrets Act, State Restrict Covenant Legislation and the Federal Trade Commission Are Shaping the Law, All Ohio Institute on Intellectual Property (October 2020)
  • Protecting Trade Secrets throughout the Employment Life Cycle, The Sedona Conference, Trade Secrets Working Group (October 2020)
  • Arbitration and Jury Trials in Trade Secret Disputes, American Intellectual Property Law Association, Trade Secret Summit (August 2020)
  • Advanced Issues in Noncompete Matters, Practical Law Institute, San Francisco, CA (January 2020)
  • Protecting Trade Secrets throughout the Employment Life Cycle, The Sedona Conference, Trade Secrets Working Group, Charlotte, NC (November 2019)
  • Legislative Roundtable on Trade Secret and Noncompete Law, American Intellectual Property Law Association, Trade Secret Summit New York, NY (March 2019)
  • Protecting Trade Secrets in the Employment Life Cycle, The Sedona Conference, Trade Secrets Working Group, Los Angeles, CA (November 2018)
  • The #MeToo Movement and Non-Disclosure Agreements, American Inns of Court, Columbus, OH (May 2018)
  • Waymo v. Uber: Lessons Learned, American Intellectual Property Law Association, Trade Secrets Summit, San Diego, CA (March 2018)
  • Identification of Trade Secrets, The Sedona Conference, Trade Secrets Working Group, Scottsdale, AZ (December 2017)
  • Year in Review: Trade Secrets Law, American Intellectual Property Law Association, Annual Meeting, Washington, D.C. (October 2017)
  • What Driverless Cars, Solar Panels and Tapping Robots Can Teach Us About Trade Secrets Law, All Ohio Institute on Intellectual Properly Conference, Cincinnati and Cleveland, OH (September 2017)
  • The Defend Trade Secrets Act After One Year:  Its Impact on Trade Secret Law in the U.S. and Abroad, Columbus Intellectual Property Law Association, Columbus, OH (June 2017)
  • The Defend Trade Secrets Act Update:  A Primer on Key Passages and Recent Developments, Business Law Conference, Ohio State Bar Association, Columbus, OH (May 2017)
  • The Defend Trade Secrets Act Update: Columbus Intellectual Property Law Association, Columbus, OH (June 2017)
  • The Defend Trade Secrets Act: The First Year and Future Challenges, 19th Annual Symposium on Intellectual Property Law and Policy, University of Akron (March 2017)
  • The Defend Trade Secrets Act:  The Search for Uniformity and Understanding, 2017 CLE International’s Defend Trade Secrets Act Conference, Denver, CO (February 2017)
  • Learning About Competitors Lawfully:  A Survey of Reverse Engineering Cases and Practical Tips, Practicing Law Institute, New York, NY (November 2016) and San Francisco, CA (December 2016)
  • The Defend Trade Secrets Act and Other Legal Developments in Trade Secret Law, Columbus Intellectual Property Law Association, Columbus, OH (June 2016)
  • The Defend Trade Secrets Act:  What You Need to Know, American Intellectual Property Law Association, Webinar (May 2016)
  • Trade Secret Protection Best Practices: Hiring Competitors' Employees and Protecting the Company When Competitors Hire Yours, American Bar Association, Webinar (March 2016)
  • An Update on the Defend Trade Secrets Act Legislation, American Intellectual Property Law Association, La Quinta, CA (January 2016)
  • Litigating Trade Secrets Cases, Ohio State Bar Association, Columbus, OH (September 2015)
  • Current Developments in Non-Competition Agreements, Ohio State Bar Association, Columbus, OH (May 2014)
  • Criminal Enforcement of Trade Secrets, Practicing Law Institute, San Francisco, CA (February 2014)
  • Trade Secret Law Mid-Year Review: Greater Emphasis from the Obama Administration, New Federal and State Legislation and Noteworthy Federal and State Cases, American Intellectual Property Law Association, Seattle, WA (May 2013)
  • Protecting and Maintaining Trade Secrets and Confidential Information in the Age of Social Media and Cloud Computing, California State Bar Association, San Diego, CA (November 2012)
  • Trade Secrets:  Another Big Year in Trade Secret and Non-Compete Law:  A Recap of Major Decisions, Legislation and Trends in Ohio and Nationally in 2012, Ohio State Bar Association, Columbus, OH (August 2012)
  • Drafting and Enforcing Covenants Not to Compete in the Present Economy:  Noteworthy Legal Developments and Practical Pointers, Ohio State Bar Association, Columbus, OH (May 2012)
  • The Penitent Litigant:  Strategies for Dealing with Contempt, Discovery and Spoliation of Evidence Violations in Trade Secret Litigation, American Intellectual Property Law Association, Washington, D.C. (October 2011)
  • Tips for Drafting Winning Intellectual Property Briefs, Practicing Law Institute, Webinar (2011)
  • Protecting Trade Secrets in the Post-WikiLeaks Era, American Intellectual Property Law Association, San Francisco, CA (May 2011)
  • Trade Secrets and Non-Compete Boot Camp, Ohio State Bar Association, Cincinnati, Cleveland and Columbus, OH (Summer 2010)
  • Litigating the Trade Secrets Case, Columbus Intellectual Property Law Association, Columbus, OH (2010)
  • Protecting Trade Secrets in the Post-WikiLeaks Era, Ohio State Bar Association, Cincinnati, Columbus and Cleveland, OH (Summers 2010 and 2011)
  • Trade Secrets v. Patent Protection:  Which Protection is Best for Your IP?, Columbus Intellectual Property Law Association, Columbus, OH (Spring 2009)
  • Litigating the Trade Secrets and Non-Compete Dispute in the Present Economy, Ohio State Bar Association, Columbus, OH (Summer 2009)
  • Current Developments Regarding Non-Compete and Non-Disclosure Agreements in Ohio, Ohio State Bar Association, Columbus, OH (May 2009)
  • Using Litigation to Protect Your Client’s Trade Secrets, Ohio State Bar Association, Columbus, OH (Summer 2008)
  • Speed Kills:  The Use of Injunctions in Commercial Disputes, Ohio State Bar Association, Columbus, OH (2006 and 2007)

Professional Recognition

  • Peer Review Rated AV in Martindale Hubbell
  • 2022 Lawyer of the Year for Litigation – Intellectual Property in Columbus, Ohio, Best Lawyers of America
  • Best Lawyers of America (Litigation – Intellectual Property), 2018 to 2022
  • Ohio Super Lawyers, 2007 to 2021
  • Chair for Committee of the Year 2019, Professional Programs Committee, American Intellectual Property Association
  • Chair for Committee of the Year 2015, Trade Secret Law Committee, American Intellectual Property Association

Affiliations and Civic Involvement

  • The Sedona Conference, Trade Secrets Working Group (2017 to present)
  • Trade Secret Law Committee, Chair and Vice Chair, American Intellectual Property Law Association (2012-2016)
  • Professional Programs Committee, Chair and Vice Chair, American Intellectual Property Law Association (2017 – 2020)
  • Chair, American Bar Association’s TRO, Preliminary and Permanent Injunction Sub-Committee (2008)
  • Judicial Screening Committee, Columbus Bar Association (2012 to present)
  • Member, Ohio State Bar Association, Intellectual Property and Litigation Sections
  • United Way Central Ohio Big Brothers and Big Sisters (1995 -2005)
  • Central Ohio Alzheimer’s Association
  • Jobs for Columbus Graduates (1995-2000)

Education

  • Vanderbilt Law School (J.D., 1989), Associate Editor, Vanderbilt Law Review
  • John Carroll University (B.A., 1986, cum laude)

Bar Admissions

  • Ohio (1995)
  • New York (1990)
  • United States Court of Appeals for the Sixth Circuit (2004)
  • United States District Court for the Southern District of Ohio (1996)
  • United States District Court for the Northern District of Ohio (2003)
  • United States District Court for the Eastern District of New York (1990)
  • United States District Court for the Southern District of New York (1990)
  • United States District Court for the Eastern District of Michigan (2014)