## Facts

- BP Chemicals Ltd. (BP), a British corporation, claimed confidential information relating to a methanol carbonylation process used to produce acetic acid.
- BP’s predecessor (Monsanto) had provided acetic-acid plant design information in 1980 to a Taiwanese licensee, China Petrochemical Development Corporation (CPDC), which BP contended was subject to secrecy obligations.
- Formosa Chemical & Fibre Corp. (FCFC), a Taiwanese corporation affiliated with the Formosa Plastics Group, planned construction of an acetic-acid plant in Taiwan and sought vendors to fabricate equipment abroad for delivery to Taiwan.
- FCFC prepared bid packages containing technical specifications for fabrication work; Formosa Plastics purchasers delivered those packages in Taiwan to Taiwan-based agents for foreign firms.
- Joseph Oat Corporation (JOC), a Pennsylvania corporation with its principal place of business in New Jersey, bid on the work through this Taiwan-centered process and submitted the winning bid.
- Contract negotiations occurred in Taiwan, but performance included JOC fabricating vessels and related equipment in New Jersey for shipment to FCFC in Taiwan; FCFC and JOC communicated frequently about the work.
- BP suspected FCFC’s bid specifications were derived from BP’s confidential information allegedly taken in Taiwan from CPDC and then incorporated into the bid packages sent to U.S. fabricators, including JOC.
- BP sued FCFC and JOC in the District of New Jersey, asserting claims under New Jersey trade-secret misappropriation law and also invoking Lanham Act § 44(b) and (h) and Articles 2 and 10bis of the Paris Convention.
- FCFC moved to dismiss for lack of personal jurisdiction. The district court postponed a decision until after an extended preliminary-injunction hearing.
- The district court denied FCFC’s jurisdiction motion and issued a preliminary injunction aimed at preventing export of the JOC-fabricated equipment, with a fixed duration (30 months).
- FCFC and JOC appealed, arguing in part that the district court used the wrong substantive law and should have applied Taiwanese law to the trade-secret questions centered in Taiwan.

## Issues

1. Whether the District of New Jersey could exercise specific personal jurisdiction over FCFC consistent with due process based on FCFC’s contracting for, and directing, fabrication work performed in New Jersey.
2. Whether New Jersey or Taiwanese law governed the core trade-secret questions, including whether BP’s information maintained in Taiwan qualified for protection and whether FCFC wrongfully acquired it in Taiwan.
3. Whether Lanham Act § 44 and the Paris Convention supplied an independent substantive basis for relief beyond otherwise applicable domestic unfair-competition or trade-secret law.
4. Whether the preliminary injunction barring export of the New Jersey-fabricated equipment could stand given the district court’s choice-of-law approach.

## Decision

- The Third Circuit held that New Jersey could exercise specific personal jurisdiction over FCFC based on FCFC’s forum-connected conduct tied to the fabrication contract and related contacts.
- The court held that Taiwanese law, not New Jersey law, governed the central trade-secret issues tied to information kept in Taiwan and alleged acquisition in Taiwan.
- The court rejected BP’s attempt to treat Lanham Act § 44 and the Paris Convention as creating new substantive unfair-competition or trade-secret rights in this setting.
- Because the district court’s likelihood-of-success analysis rested on applying New Jersey trade-secret law to foreign-centered conduct, the Third Circuit vacated the preliminary injunction and remanded for further proceedings under the proper legal framework.

## Legal Principles

- Specific personal jurisdiction may exist where a foreign defendant purposefully directs activity to the forum, including entering a contract calling for performance in the forum and maintaining sustained communications connected to that performance, and the litigation arises out of those forum-related acts.
- In a multijurisdiction trade-secret dispute, choice-of-law analysis focuses on the location of the key events and relationships for the misappropriation claim; when secrecy and alleged acquisition are centered abroad, foreign law may govern those core questions even if later use affects U.S. actors.
- A preliminary injunction requires, among other elements, a showing of likelihood of success on the merits; when a court applies the wrong substantive law to evaluate that likelihood, injunctive relief cannot be sustained.
- Lanham Act § 44 and the Paris Convention function primarily as national-treatment and procedural access provisions; they do not, by themselves, create additional substantive causes of action for trade-secret misappropriation beyond rights supplied by governing domestic law.

## Conclusion

The Third Circuit ruled that FCFC’s forum-connected conduct supported specific personal jurisdiction in New Jersey, but it vacated the preliminary injunction because the district court evaluated BP’s probability of success under New Jersey trade-secret law even though Taiwanese law governed the core questions of trade-secret status and misappropriation occurring in Taiwan; the court also held that Lanham Act § 44 and the Paris Convention did not supply an independent substantive basis to avoid the choice-of-law result, and it remanded for further proceedings.


BP Chemicals v. Formosa Chemical & Fibre Corp., 229 F.3d 254 (2000)