The Eastern District of Virginia has issued multiple opinions addressing the Texas Uniform Trade Secret (TUTSA) in Steves & Sons, Inc. v. JELD-WEN, Inc., No. 3:16CV545, 2018 WL 6272893 (E.D. Va. Nov. 30, 2018). Its latest opinion addressed whether plaintiff was entitled to both reasonable royalty damages and a permanent injunction following trial. Defendant argued that allowing both would constitute an impermissible double recovery. Surprisingly, the Court agreed.
Continue Reading Eastern District of Virginia Holds that Plaintiff’s Reasonable Royalty Testimony Precludes a Permanent Injunction

TexasBarCLE‘s 32nd Annual Advanced Intellectual Property Law seminar is February 27-March 1, 2019.  There are three great days of CLE:

I will be presenting on the 2018 Trade Secrets Update on day 2.  Continue Reading Brackett & Ellis to Present the 2018 Trade Secrets Update at TexasBarCLE’s 32nd Annual Advanced Intellectual Property Law Course

In Thoroughbred Ventures, LLC v. Disman, No. 4:18-CV-00318, 2018 WL 3752852 (E.D. Tex. Aug. 8, 2018), plaintiff Thoroughbred Ventures sued its former manager Disman, alleging that Disman breached his employment agreement, which provided that all client contact and background information belonged to Thoroughbred and constituted “Confidential Information” and a trade secret of Thoroughbred. Continue Reading Employer Not Entitled to an Injunction Prohibiting Former Employee from Using Customer Information Committed to Memory

Eagle Oil & Gas Co. v. Shale Exploration, LLC, 549 S.W.3d 256 (Tex. App.—Houston [1st Dist.] 2018, pet., pet. dismissed) involves the familiar situation where a plaintiff sues for both breach of a confidentiality agreement and for misappropriation of trade secrets. Defendant asserted that plaintiff was limited to a breach of contract claim because the misappropriation claim was barred by the economic loss rule, which bars a recovery in tort for economic losses caused by a breach of contract if the losses are due to the failure to fulfill a contractual obligation. Continue Reading The Economic Loss Rule Does Not Prohibit a Plaintiff from Asserting Both Breach of Contract and Common Law Misappropriation of Trade Secrets Claims

If you make your living from selling or performing your original works of authorship, it is good practice to register that work of authorship with the United States Copyright Office.  Registration creates a public record of your ownership, and if done within 3 months of publication or prior to infringement, it gives the author the right to seek statutory damages and attorneys’ fees from an infringer in a lawsuit.  Most importantly, though, registration is prerequisite to bringing a copyright infringement lawsuit in federal court.

Many authors, however, don’t bother to register their works until after an infringement occurs.  Continue Reading Do You Have to Register Your Copyright Before Filing Suit? The US Supreme Court Will Soon Decide.

 

When a business severs ties with one of its affiliates, it can be difficult to retrieve and erase all the trade secret information provided to the affiliate. That problem was on display in the franchise context in Stockade Companies, LLC v. Kelly Restaurant Group., LLC, No. 1:17-CV-143-RP, 2017 WL 4640443 (W.D. Tex. Oct. 16, 2017), which involved a franchisor accusing its former franchisee of misappropriating its “buffet system” in its restaurants. Continue Reading If You Own a Trade Secret, You Probably Shouldn’t Throw It Away in a Dumpster

Generally, there are three primary types of damages of damages in a trade secrets case: (1) lost profits, (2) defendant’s profits, and (3) a reasonable royalty. The Federal Circuit in Texas Advanced Optoelectronic Sols., Inc. v. Renesas Elecs. Am., Inc., No. 2016-2121, 2018 WL 2011463 (Fed. Cir. May 1, 2018) explores who—the judge or the jury—can award defendant’s profits. Continue Reading Federal Circuit Determines That Profit Disgorgement is a Matter Exclusively for the Court, Not the Jury

O’Connor’s Texas Causes of Action is one of the preeminent sources for information on Texas causes of action and defenses.  In the latest edition’s chapter on Trade Secret–Statutory Misappropriation, the authors of Texas Causes of Action cite two articles written by Brackett & Ellis attorneys Joe Cleveland and Heath Coffman.  The articles, which help explain the elements and defenses for a trade secret misappropriation claim under the Texas Uniform Trade Secret Act (TUTSA), are: Continue Reading Brackett & Ellis Attorneys Cited in O’Connor’s Texas Causes of Action

Under Texas law, the one-satisfaction rule states that a plaintiff is entitled to only one recovery for any damages suffered because of a particular injury. In TMRJ Holdings, Inc. v. Inhance Techs., LLC, No. 01-16-00849-CV, 2018 WL 326421 (Tex. App.—Houston [1st Dist.] Jan. 9, 2018, no pet. h.), a misappropriation of trade secrets case, defendant argued that plaintiff’s judgment against it for a $4 million reasonable royalty and a permanent injunction violated the one satisfaction rule because the calculation of a reasonable royalty contemplated the future of the misappropriated technology. Continue Reading Houston Court of Appeals Holds that an Award of a Reasonable Royalty and Permanent Injunction Does Not Violate the One-Satisfaction Rule

In my previous posts, I have discussed the varying standards for injunctive relief under the Texas Uniform Trade Secret Act (TUTSA). Some courts have required showings of irreparable harm. The Southern District of Texas, however, does not. Continue Reading Southern District of Texas Does Not Require Irreparable Harm for Modification of Temporary Injunction