For the last few years, defendants in trade secrets and other commercial litigation claims have used the previous version of Texas’s anti-SLAAP statute the Texas Citizens Participation Act (TCPA) as a defense to those claims.  Langley v. Insgroup, Inc., No. 14-19-00127-CV, 2020 WL 1679625 (Tex. App.–Houston [14th Dist.] Apr. 7, 2020, no pet. h.) is another example of this strategy.  In Langley, an insurance salesman left his employer to work for a competitor.  The former employer accused the salesman of violating his non-compete agreement, tortious interference with the employer’s contracted clients, breach of fiduciary duty, and violation of the Texas Uniform Trade Secret Act.  The new employer was also a defendant to several of those causes of action. Continue Reading TCPA’s Commercial Speech Exemption Applies to Employer’s Claims Against Former Employee

Courts will not enforce non-compete provisions in employment contracts when the employer breached the employment contract, too.  That is the lesson of Insgroup, Inc. v. Langley, No. 14-18-01071-CV, 2020 WL 1679401 (Tex. App.-Houston [14th Dist.] Apr. 7, 2020, no pet. h.).  Continue Reading Employer’s Breach of Agreement Containing Non-Compete Provision Results in Court’s Denial of Request to Enforce Non-Compete Provision

 “Empire Records” (1995), A conversation between Ethan Embry (“Mark”) and Rory Cochrane (“Lucas”):

Mark: Oh! I’ve decided I’m going to start a band.

Lucas:  Really?  [Leaning in], the first thing you need, is a name.  Then you’ll know what kind of band you’ve got.

Mark: Yeah. I know.  I know.  I was kinda thinking about, umm, “Marc”.  What do you think of that?

Lucas:  Is that with a “C” or with a “K”?

Mark: Well, my name is with [checking his nametag], a “K”, so I was thinking maybe my band could be with a “C”.  So that way, its kinda like that psychedelic, you know, trip thing.

So Mark, in an effort to know what type of band he has, goes to the Trademark Electronic Search System and conducts a search of *Ma{“r”1:2}{“ckqxh”1:2}*[bi,ti] in International Classes 009 (downloadable music sound recordings) and 041 (Live performances by a musical group).  He believes the results to be promising and decides to move forward with his trademark application. Continue Reading Bona Fide Intent to Use as Applied to “Empire Records” (1995)

Congratulations to my colleague Angelique McCall.  She recently published two articles on Amazon’s Neutral Patent Evaluation in The Tipsheet, the newsletter of the Intellectual Property Section of the Texas State Bar.  You can also find the articles on IP Watchdog.  Continue Reading Navigating Amazon’s Neutral Patent Evaluation in Real Life

In the first Spiderman movie of the superhero era in which we still find ourselves, J. Jonah Jameson believed he thought of a catchy title for the bad guy.  To his assistant, he then said the following declarative: “Call the patent office, copyright the name “Green Goblin.” I want a quarter every time someone says it!”

This line demonstrates a mistake made by many, and it isn’t simply that the Library of Congress rather than the United States Patent and Trademark Office registers copyrights.  Instead, it illuminates a general misconception that through intellectual property protection, a common phrase can become the exclusive right of one individual or entity.  We see this belief personified in trademarks, when an individual or entity seeks to register a common—and arguably public—phrase.  Were such a registration to issue, the holder would have a legal presumption of ownership of the phrase and the exclusive right to use the phrase throughout the United States and any U.S. territory on or in connection with the goods/services listed in its trademark registration certificate.

A search of the USPTO’s Trademark Electronic Search System (TESS) reveals that the mark “BLACK LIVES MATTER” has been applied for thirty times.  The Office received its first of these applications in January 2015, and its most recent less than ten days ago.  Similarly, the mark “I CAN’T BREATHE” was first applied for in December 2014.  See U.S. Trademark Application No. 86479784.  Since May 29, 2020, the same phrase or slight alterations thereof have been applied for more than ten additional times, while applicants have applied to register the term “ALL LIVES MATTER” or iterations thereof eighteen times.

Unfortunately for the owners of these applications, all of whom have paid a filing fee of at least $225 USD—and in many instances more—most of the applications are unlikely to register.  Here is why . . .

Continue Reading Save Your Money: You Can’t Register that Social Movement Phrase

Recently, trade secrets lawyer Patrick J. Huston sent me a copy of his new work The Law of Trade Secrets Under the Uniform Trade Secret Act.  I appreciated receiving this work, which is a comprehensive overview of trade secrets law under the Uniform Trade Secrets Act.  Continue Reading The Law of Trade Secrets Under the Uniform Trade Secrets Act

While fans of the country music band Lady Antebellum have long abbreviated the band’s name for convenience, the band announced on June 11, 2020 that it would be officially changing its name to “Lady A.”  Merriam Webster defines “antebellum” as “existing before a war, especially existing before the American Civil War.”  And while the band’s motivations for the name change seem pure, the name change itself created ripples in the trademark and entertainment world that should have been anticipated and could have been avoided.

Continue Reading Ladies A– Lessons Learned from “A” Name Change

In June 2020, the San Antonio Court of Appeals issued its opinion in Title Source, Inc. v. HouseCanary, Inc., No. 04-19-00044-CV, 2020 WL 2858866 (Tex. App.–San Antonio June 3, 2020, no pet. h.), reversing and remanding for new trial a $740 million judgment in favor of HouseCanary on its Texas Uniform Trade Secrets Act (TUTSA) and fraud claims against Title Source. Continue Reading Crafting The Jury Charge in Trade Secrets Cases — Lessons from Title Source v. HouseCanary

In 2018, the First Court of Appeals issued its opinion in Gaskamp v. WSP USA, Inc., No. 01-18-00079-CV, 2018 WL 6695810 (Tex. App.—Houston [1st Dist.] Dec. 20, 2018, no pet.), which involves the application of Texas’s anti-SLAPP statute the Texas Citizen Participation Act (TCPA) to a trade secrets case.  The Court’s opinion determined that the TCPA applied to such claims and reversed the trial court’s decision in part.  Recently, though, the Court reconsidered its opinion en banc and determined that the TCPA did not apply to the claims.  Gaskamp v. WSP USA, Inc., No. 01-18-00079-CV, 2020 WL 826729 (Tex. App.–Houston [1st Dist.] Feb. 20, 2020, no pet. h.). Continue Reading Houston’s First Court of Appeals Reverses Itself on the Application of the TCPA to Trade Secret Claims

Beginning with the Texas Supreme Court decisions in Lippincott v. Whisenhunt, 462 S.W.3d 507 (Tex. 2015) and ExxonMobil Pipeline Co. v. Coleman, 512 S.W.3d 895 (Tex. 2017) and continuing with the Austin Court of Appeals 2017 decision in Elite Auto Body LLC, d/b/a Precision Auto Body v. Autocraft Bodywerks, Inc., Texas courts had taken the position that Texas’s anti-SLAAP statute the Texas Citizens Participation Act (TCPA) had almost unlimited application to commercial litigation cases such as those involving misappropriation of trade secrets. Beginning in 2019, though, certain courts of appeal have begun to reject or limit those holdings. Continue Reading Dallas Court of Appeals Continues its Efforts to Restrict the Application of the TCPA