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Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 1 of 70
M -l LLC,
Plaintiff,
V. C IVIL A CT IO N N O .4:09-cv-1552
CH A D LEE ST ELLY ET A L .,
D efendants.
M EM O M ND U M A N D O RD ER
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Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 2 of 70
notto competeduring theirem ploym entatM -I. Pursuantto these and otheragreem ents,
Stelly and Squyres ar eed to m aintain contidential a1l of M -l's trade secrets and
proprietary inform ation both during em plom entand afterward,and also ap eed notto
support of wellbore cleanout equipm ent. Stelly and Squyres prom oted tools to M -I
thatitçlprovided and entrusted''to Stelly and Squyres extensive trade secret and other
and M -l gave Knobloch access to confidential inform ation, including tool draw ings,
2
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when hisem ploym entwith M -1ended. M -laversthat,within one month ofleaving his
agreem ents, including trade secret am eem ents, covenants not to com pete, and
Act, TEX. CIV. PRAC. & REM. CODE ANN. jj 134.001-134.005 (Vernon 2005);
conspiracy;unfair competition by m isappropriation;violations of the Computer Fraud
andAbuseAct,18U.S.C.j1030,
.and conversion.
D efendants have filed a m otion to dism iss M -l's claim s,arguing thatthey failto
state a claim upon which relief can be granted. They have also filed a m otion for
summary judgment, arguing that M -l's state tort claims are preempted by federal
Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 4 of 70
they are unreasonable restraints of trade. Last, Defendants have filed a m otion for
protection,arguing that M -l has not m ade the requisite showing of necessity to obtain
state facts in supportofM -l's three tortious interference claim s,and fails to state m ore
A . LegalStandard
A courtm ay dism iss a complaintfor ûtfailure to state a claim upon which relief
plaintiffs grounds for entitlem ent to relief- including factual allegations that when
assum ed to be true çraise a right to relief above the speculative 1evel.''' Cuvillier v.
4
#d'
.uM% l$..t 'â
the reasonable inference thatthe defendant is liable for the m isconduct alleged.'' 1d.
forth m ore than lçlabels and conclusions,and a form ulaic recitation ofthe elem entsof a
causeofactionwillnotdo.''Twombly,550U.S.at555(citationomitted).
W hen considering a Rule 12(b)(6)motion to dismiss,a courtmusttûacceptthe
complaint's well-pleaded facts astrue and view them in the lightmostfavorable to the
valid claim when viewed in the light most favorable to the plaintiff. The court m ust
accept w ell-pleaded facts as true, but legal conclusions are not entitled to the sam e
assumptionoftruth.Iqbal,129S.Ct.at1950(citationomitted).Butthecourtshouldnot
Allstrain to tind inferencesfavorableto theplaintiffs'''or'saccepticonclusory allegations,
Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 6 of 70
legally cor izable claim . United States cx rel.Riley v.St.Luke's EpiscopalH osp.,355
F.3d370,376(5th Cir.2004).
B . A nalysis
M -1 am ended its complaint. The live pleading is M -l's Second Am ended Com plaint
(Doc.No.355).TheCourtwillapplythemotiontodismisstothelivepleading.
1. W aiver
12(b)(6) arguments, because the rule Stexpressly mandates'' that a motion brought
pursuantto the rule tllshallbemadebeforepleading.''' (P1.M -1LLC'SResp.to Defs.'
M ot.toDismissforFailuretoStateaClaim PursuanttoFRCP 12(b)(6)& M ot.forLeave
to FileAm.Compl.,Doc.No.113,at2 (quoting FED.R.CIV.P.12(b)(6).) Because
Defendants already filed responsive pleadings to M -l's originalcomplaint,M -Iargues
that they m ay not now oppose an am ended com plaint. D efendants respond that their
thatcomplaint'svalidityunderRule12(b)(6).''(Defs.'ReplytoP1.'sResp.toTheirJoint
Mot.toDismissforFailuretoStateaClaim,Doc.No.180,!(2.)
DefendantsrelyonBromheld v.McBurney in arguingthattheirmotion to dismiss
is tim ely. In that case,the defendants m oved to dism iss plaintiff s original com plaint.
deficiencies. The plaintiff did so,and defendants tiled a second motion to dismiss.
Plaintiff responded that the defendants motion should be denied, because only one
challengeitsvalidityunderRule12(b)(6).
Though Bromfeld supports Defendants' general argument that an amended
complaint grants defendants the opportunity to challenge its validity anew under Rule
12(b)(6),thecircumstancesofthecasesaredifferent.ThedefendantsinBromheldnever
answered theoriginalcomplaint. Instead,they challenged both the originaland am ended
trade secrets claim . U nder Texas law ,the elem ents of m isappropriation oftrade secrets
reports,scrap reports,jobproposalsandprocedures,salesforecasts,jobtracker,customer
preferences, tool research and developments and project information,'' and other
contidentialinformation.(Doc.No.355,! 11;seealsoid.!(19.) M -lfurtherallegesthat
Defendantsinduced Stelly to misappropriateM -l'stechnology and trade secretsforusein
W ES'Sbusinessoperations,and that:
2The Courtis aware thatthere is considerable controversy over this allegation, because M -Iinitially
submitted,and subsequently withdrew,evidencesupporting itsclaimsthatStelly haddownloaded material
from his M -Ilaptop onto an externalhard drive. (See Aff.in Supp.ofM -ILLC'SEm ergency M ot.for
Prelim.Inj..Doc.No.14.!!I12-13;M-1LLC'SNoticeofW ithdrawalofPortionsofKeith Pope'sAff.,
Doc.No.81.) AsDefendantsacknowledge,however,itistheCourt'staskatthisstageto consideronlythe
pleadingsin its12(b)(6)determination.Thus.itmustignoreb0thfavorableand detrimentalevidencethat
existoutside thepleadings,and focuson the factualallegationsin M -l'scomplaintonly. M-Icontinuesto
assertthatStelly downloaded sensitiveM -lmaterialbeforeleavinghisjob,and forthepumosesofthis
m otion,theCourtisboundto accepttheseallegationsastrue.
Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 10 of 70
and technologies related to fourteen tools constim te trade secrets,that D efendants took
the inform ation in violation oftheirconfidentiality agreem ents,and haveused itto build
able to collect evidence of the allegedly unlawful behavior to m ore fully supportits
claim s. O fcourse,in the finalcalculus,itm ay notbe able to prove its allegations and the
relief above the speculative 1evel,'''thereby sufficiently stating its claim .Cuvillier v.
10
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loss. Specialtiestp
/M cx.Inc.v.Mastedbods USA,2010W L 2488031,at*9 (S.D.Tex.
June 14,2010)(citingA11Am.Te1.,lnc.v.USLD Commc'
ns,Inc.,291S.W .3d 518,531
(Tex.App.- FortW orth 2009,pet.deniedl). Defendantsargue thatthere are tçno facts
identifying the contracts allegedly interfered with, how the alleged interference
above,the reader m ight gather that M -l had business relationships w ith at least seven
differentbusinesses that have since been solicited by,or entered into ap eements for
services with,W ES. Sim ilarly,a reader may sunnise thatM -lhas provided wellbore
cleanout tools to BP and m aintained som e sortof expectation to do the sam e on the
w ith contractclaim .
Second,the Courtfinds that M -lhas failed to adequately plead the proxim ate
breach, for example by offering better term s or other incentives, for tort liability to
projects. Nowhere does M -I set forth facts that allege any kind of interference or
persuasion of a party to breach any existing contracts with M -1. There are no facts
Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 13 of 70
induce com panies to breach their contracts. M -l has therefore failed to plead adequately
com panies.
Ito amend itscom plaint. GreatPlains TrustCo.v.M organ Stanley Dean X //cr tf Co.,
the defects are incurable of the plaintiffs advise the courtthat they are unwilling or
resultoftheconduct'
,and (4)theplaintiffsuffered actualharm ordamagesasaresultof
the defendant'sinterference. Specialties of M ex.Inc.v.M asteyoods USA,2010 W L
2488031,at*10 (S.D.Tex.June 14,2010). Defendants argue thatM -l's claim fails
because M -l failsto setforth facts showing ûsthe reasonable probability thatM -lwould
13
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have entered into a business relationship w ith third persons, independently tortious or
M -I counters that itçthas produced docum ents''during discovery Gçshow ing thatit
project.(Doc.No.113,!at10.)TheCourtmaynotlooktodocumentsnotreferencedor
includedin thepleadingswhen considering aRule12(b)(6)motiontodismiss. Collinsv.
M organStanleyDean Witter,224F.3d496,499 (5th Cir.2000).Accordingly,itisofno
m omentthatM -Iwasable to provide factualsupportforits claim outside thepleadings.
The pum ose of a motion to dism iss for failure to state a claim is to ensure that
D efendants have notice ofthe precise claim s againstthem . Providing piecem ealfactual
claim falls shortof the Rule 12(b)(6)pleading standard. M -l fails to set forth any
allegationsestablishing a reasonable probability thatitw ould have entered into a business
relationship. The closest it comes is its averment that it lshas provided (wlellbore
14
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with a conscious desire to prevent the relationship from occurring, or knew the
w ith a consciousdesire to cause,orw ith the certain know ledge that,itw as preventing M -
l's specific business relationship from fonning. For these reasons, M -l's tortious
Count Six alleges tortious interference w ith M -l's em ploym ent contracts. The
15
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adequately pled pursuant to D efendants' argum ent that a11 tortious interference claim s
M -Iidentifiesseveralcontractsasthesubjectofthisinterferenceclaim,including
the M -lTrade SecretA m eem entand CovenantN otto Com pete,M -IEm ployee lnvention
and Confidential Inform ation Av eem ent, GCS and SPS Confidentiality Av eem ents,
Third,in order to prove proxim ate dam age,M -lhas pled that ççKnobloch and
W ES induced each of aforem entioned em ployees and possibly others to quit M -l for
Defendants do not provide specific argum ents for dism issal of each of the
rem aining claim s,butinstead aver generally thatçithe rem aining 10 claim s are no m ore
than conclusions,which are notentitled to the assumption oftnzth and are unsupported
appropriationoftradesecretsunderTexasPenalCodej31.05,which isrequiredinorder
to supportM -l's Texas TheftLiability A ct claim . Section 31.05 provides that a person
comm its an offense if,withoutthe owner's consent,he knowingly steals a trade secret,
makes a copy ofan article representing a trade secret,or com municates ortransm its a
Code,w hich in turn supportsM -l's Texas TheftLiability A ctclaim . The Courtoverrules
Defendants'objectionsonthispoint.
b. Unfair com petition
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Defendants aver thatGlthe com plaintis silent on factsto show the creation of M -l'strade
or none of the expense incurred by plaintiffin the creation of the product;and (3)
commercialdam age to plaintiff Cable Elecs.,Inc.v.N Am.Cable Equip.,Inc.,2010
information (including tool drawings, designs, sales forecasts, tool research and
development,marketstrategies,etc.j Thisinformation isM -l'sinstimtionalknowledge
and history ofits wellbore cleanouttoolbusiness. Itis the productof many years of
amounts of tim e and m oney to create this inform ation and develop it. M -l spent a
Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 19 of 70
SPS/GCS'S and M -l's institutional know ledge and history of its w ellbore cleanout tool
information and keep it secret. M -l em ploys engineers and designers to research and
develop these tool designs. These desir ers and engineers take years to research and
tools.'' (1d.!22.) The Courtfinds thatthese averments are sufticientto plead the
elem ent of expended tim e,labor,skill,and money. Though M -l's allegations are not
Count Eleven alleges violations under the Com puter Fraud and Abuse Act
(::CFAA''), 18 U.S.C. j 1030. The CFAA prohibits, among other conduct, the
unauthorized accessto a tlûprotected com puter'forthepum osesofobtaining infonnation,
(1d.!f!80-81-)
The CFAA is a crim inal statute, but civil actions are authorized for som e
20
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conductinvolves1ofthefactorssetforthin subclauses(1),(11),(111),(IV),
or(V)ofsubsection(c)(4)(A)(i).
Theonlysubclausepotentially applicablehereissubclause(1),whichcoversttlossto 1or
more persons during any l-year period ...aggregating atleast$5,000 in value.''4 18
U.S.C.j1030(c)(4)(A)(i)(1).TheCFAA definesttloss''asfollows:
(T)heterm çsloss''meansanyreasonablecostto any victim,including the
costof responding to an offense,conducting a dnm age assessm ent,and
restoring thedata,pror am,system ,orinform ation toitscondition priorto
the offense,and any revenue lost,cost incurred,or other consequential
damagesincurred because ofintem zption ofservice.
have notalleged thatany lossm eetsthe statutory monetary sum of$5,000. In addition,
case law has consistently intem reted the loss provision to encom pass only the costs
ln sum ,M -l's CCPA claim failsbecause M -Idoes notallege any facts show ing at
21
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because they do not put forth facts that allow the Court to m ake an inference that
Defendants are liable for any misconductunder the CCPA . Iqbal, 129 S.Ct.at 1949
111. M O TIO N FO R SU M M A RY JU D G M EN T
Law,Doc.No.181,at1.)
A . LegalStandard
make credibility determ inations orweigh the evidence. Reeves v.Sanderson Plumbing
1. C opyrightpreem ption
Knobloch and W ES m ove to dism iss ûtM -l's tort claim s based on wrongful
determinewhetheritfallstwithinthesubjectmatterofcopyright.'''Daboub,42 F.3d at
289. Second,the cause of action is ttexmnined to detennine if itprotects rights that are
copyright.f#.
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copying rather than tool draw ing copying is im portant, M -I argues,because tools are
usefularticlesthatdonotqualifyforcopyrightprotection undertheCopyrightAct.
N either party, however, disputes the other's argum ent regarding what is
from which they can be perceived, reproduced, or otherwise com municated, either
directly orwith the aid ofa m achine ordevice.'' ltthen providesa listofcategoriesof
technical drawings, including architecmral plans.'' Several courts have found that
25
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matterofcopyright)(quotingSchuchart& Assocs.v.Solos'
czw Cor#.,540F.Supp.928,
943 (W .D.Tex.1982)). M -l'stooldesir s,drawings,and specificationsfallwithin the
subjectmatterofcopyright.
Sim ilarly,Knobloch and W ES do notdispute thatthe tools them selves do not
undertheCopyrightActissubjecttoalluseftzlarticle''exception'
.
(Tlhe desir of a useful article, as defined in this section, shall be
consideredapictorial,graphic,orsculpturalwork onlyitland only to the
extent that, such design incorporates pictorial, F aphic, or sculptural
featuresthatcan beidentified separately from ,and arecapable ofexisting
independentlyof,theutilitarian aspectsofthe article.
Giventhatthepartiesagreethatthedrawingsofthetoolsaresubjecttocopyright,
butthetoolsthem selvesare not,thequestion forthisCourtto decide iswhetherthe claim
in question concerns the drawings or tools. After a review of the Second Amended
26
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1çM -l's tool desir s and technology are proprietary information used by M -I in its
thesubjectmatterofcopyright.Thetirstprongofthetestismet.
Next,the Courtm ustconsiderwhetherthe claim protectsrightsequivalentto any
to federalcopyrightclaim where the core of the state 1aw theory ofrecovery speaks to
wrongful copying. Daboub v. Gibbons,42 F.3d 285,289 (5th Cir. 1995). This
examination requires a tteomparison ofthe nature ofthe rights protected under federal
copyright1aw with the nature ofthe state rights''asserted by a claim ant. AlcatelUSA,
Inc.v.DG1Techs.,Inc,166F.3d772,787(5thCir.1999). ltthesetwosetsofrightsare
ûtdetermined to be çequivalent,'then the state 1aw cause ofaction ispreem pted.'' Id. A
distribution,ordisplay infringesit.'''RecursionSoftwareInc.v.InteractiveIntelligence,
Inc,425F.Supp.2d756,764(N.D.Tex.2006).
TheFilh Circuitttevaluatelsqtheequivalency ofrightsunderwhatiscommonly
referred to as the textra elem ent'test.'' A lcatel, 166 F.3d at 772. U nder this test,ifthe
action and copyrightlaw ,then the state rightisconsidered equivalentto copyright. Id.
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claim s. The claim s include com mon 1aw m isappropriation of trade secrets,tortious
business relations, tortious interference with M -l's employm ent contract, breach of
W ES and Knobloch argue thatthe ûlcore theory''of M -l's state 1aw tortclaim s is
that Defendants wrongfully copied M -l's tool designs through its drawings,desir s,
units. M -l argues that its state tort claim s are not equivalentto copyright law claim s,
because each cause of action ûûrequires at least one additional elem ent not found in
docum ents. Knobloch and W ES counter that M -I has drawn a distinction without a
28
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difference, arguing that to çsmake a tool from a desir is to reproduce the design,''
PartialSumm.J.asaM atterofLaw,Doc.No.211,!J4.)
The Courtdoesnotbelievethatthe elem entofuse ofthecopyrighted drawingsto
make tools constitutes qualitatively differentbehavior from the elements foran action
license it to defendant so they could use the same design for their own aircrah.
defendantforconversionandunjustenrichment,anddefendantarguedthatcopyright1aw
preem pted these state claim s. The courtdisagreed,stating'
.
obtaining a valuable govelmm entprivilege. The Courttinds the case inapposite to the
factspresented here. ln the instantcase,dow nloading the draw ings alone does constitute
29
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courtfound thatplaintiffhad framed its state claims so thatthe m ere actofcopying the
legalrights,and are therefore atleastpartially preem pted. A tleastsom e ofthe claim s,at
not include qualitatively different elem ents than the elem ents for an action under the
the story ofM -l's former employees downloading and taking with them tooldrawings,
30
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them e of the allegations contained in the com plaint is one of the theft of M -l's tool
drawings.
court analyzed a similar preemption question and determined that copyright 1aw
preem pted plaintiffs conversion and tortious interference claim s. There, two of the
They had previously entered into em ploym entagreem ents with the employer,prom ising
that they would not take or use plaintiff s documents. Plaintiff sued its former
them tobuildttçidenticallyvirtual'''floorplans.688F.Supp.289,291(E.D.Tex.1988).
The court found that plaintiffs conversion claim was preem pted by copyright law,
because as plaintiff had fram ed its conversion claim , the m ere act of copying the
interference claim ,the courtfound itpreempted to the extentthatthe claim com plained
that plaintiff had lllost benefits flowing from its exclusive rights to the architectural
plans-''Id.
tortclaim sto determ ine whetherthe rightstherein are equivalentto,and thuspreem pted
by,federalcopyrightlaw .
31
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Defendants alleged that the unfair trade practices claim was preem pted by federal
copyright law. The FiAh Circuit dism issed the defendants' argum ent,holding that,
copying addressed by federal copyright law. See 1 M ELVILLE B.N IMMER & DAVID
hence,arenotpreempted.'')
This Court's own precedent also establishes that the breach of a confidential
relationship provides the necessary additional elem ent that m akes a state tort claim
Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 34 of 70
qualitatively different from a federal copyright claim . See, e.g.,Baisden v.1'm Ready
argued that proof of his state 1aw claim for unfair competition requires proof of an
confidenceaspartofacommercialrelationship ....'').Courtsnationwidehavereached
the sam e conclusion. See,e.g.,Stromback v.New Line Cinema,384 F.3d 283,303-04
(6th Cir. 2004) (noting that 1$a considerable number of cases have held that
m isappropriation oftrade secrets claims are notpreem pted because they require proofof
used it to prom ote his ow n interests,such breach of confidentiality w ould be the extra
elem entto a copyrightinfringem entclaim . The claim ,therefore,w ould notbe preem pted
be preem pted because the plaintiffm ustprove the existence and breach ofa contidential
at issue satisfies the textra elem ent' test generally employed by courts in perfonning
gliability)....Because(plaintiffs)clam fortradesecretmisappropriationrequiresproof
ofabreach oftrustorconfidence,gcopyrightlawjdoesnotpreemptthec1aim.'');Gates
Rubber Co.v.Bando Chem.Indus.,Ltd.,9 F.3d 823,848 (10th Cir.1993)(tiBecause
gplaintiffsjclaim fortrade secretmisappropriation underthe Colorado Uniform Trade
Secrets Actrequiresproofofabreach oftrustorconfidence- proofthatisnotrequired
under the CopyrightAct- lplaintiffs) state 1aw claims are notpreempted by federal
law.'');ComputerAssocs.1nt'l,Inc.v.Altai,Inc.,982F.2d693,717(2dCir.1992)(tThe
defendant'sbreach ofduty is the gravam en of...trade secretclaim s,and suppliesthe
ttextra elem ent''that qualitatively distinguishes such trade secret causes of action from
35
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exclusive rightof a copyrightow ner under the CopyrightA ct,but only prohibits certain
federalcopyright1aw.'')(citationsomitted).
W ES and Knobloch'scitations to the contrary do notsway this Court's opinion.
First,W ES and Knobloch do notanalyze each state tol4 claim elem entby element,but
instead aver generally that the ûicore theory'' of all of M -l's state tort claim s is that
Defendants comm itted wrongful copying. Defendants fail to proffer any argum ent
citations to case 1aw refer the Court to cases that either do not actually decide the
Copyright Act,''but concluding that llgwqhether those arguments would have been
persuasive ...need ...notbe decided,''because defendants failed to remove the case
M -l's custom er contracts. lsTexas 1aw protects existing contracts from interference by
appear to target very different conduct. N evertheless, m any courts tind tortious
interference claim s to be preem pted where the defendant has allegedly destroyed the
elem ent that establishes qualitatively different conduct than that of copyright
infringem ent. lnstead,the additional intent elem ents required in tortious interference
claim s go lim erely to the scope of the right,''and do not tûehange the nature of the
lim it the scope of the copyright infdngem ent claim without altering its fundam ental
m erely m eans that the tortious interference claim is narrow er than a copylight
infringementclaim'')(citationsomitted).
Based on this case law, the Court holds that, to the extent M -l's tortious
interference claim s are based on M -llosing benetits flowing from its exclusive rightto
the extent the tortious interference claim s relate to other than the benefits lost from
exclusiveenjoymentoftooldrawingsandothercopyrightablematerial,however,theyare
notpreem pted.6
m aterial to M -l's tortious interference claim s. A breach of duty or trust does not
constimte a necessary elem ent for tortious interference, and courts have found such
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independent unlawful act,from the Court's reading ofthe complaint,is the unlawful
copying ofM -l's originaltooldrawings and designs. CountFive is preem pted to the
employment contracts. The elem ents of tortious interference with contract are
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material. The Court tinds that this claim fails the extra elem ent test and thus is
preempted.A1lotherallegationsunderthiscauseofaction sunive.
Knobloch. The Fihh Circuitis clear thatsuch a claim suw ives copyrightpreemption.
See Daboub v. Gibbons, 42 F.3d 285, 290-91 (5th Cir. 1995) (finding copyright
preemption whereplaintiffiûfailed to allegeorproduceevidence oflany elem ent,such as
tdifferentin kind from a copyrightinfringem entclaim ,'then his state law claim s are not
Count Eight alleges violations under the Texas Theft Liability Act,TEX.CIV.
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secretsthatfallwithinthesubjectmatterofcopyright.ltisnotpreempted astomaterials
notfallingwithinthesubjectmatterofcopyright.
g. C onspiracy
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constitute qualitatively different conductwhere the elem ent of intent only goes to an
intent to form an aveem ent to copy and use M -l's copyrightable trade secrets and
Defendants.Theelementsofunfaircompetitionbymisappropriationare:(1)thecreation
by plaintiffofa productthrough extensivetime,labor,skill,and money;(2)the useof
thatproductby defendantin competition with plaintiff,thereby giving the defendant a
equity' thatgoes into creating a work.'' Alcatel USA, 166 F.3d 772,788 (5th Cir.
1999). Nevertheless,theFihh Circuithasfound thattherightsprotected underthelaws
can be equivalent. 1d. ln Alcatel, the basis of plaintiff s unfair com petition by
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used these m aterials to prepare derivative w orks, and distributed these works in
waspreem pted by copyrightlaw. The Fihh Circuitagreed. 166 F.3d at789. ltfound
thatthe plaintiff had tlfailed to dem onstrate the presence of any elem ent that renders
and m oney''nor the requirement that defendant use the product in com petition with
be preem pted by federalcopyright 1aw to the extent the claim is based on M -l's tool
designs. From the Court's reading ofM -l's complaint,Defendants'use of M -l's tool
desir s appearsto form the bulk ofthisCount. N evertheless,the claim survives to the
i. Conver:ion
M -l's last tort claim alleges that Defendants have comm itted conversion. The
elementsofconversionunderTexaslaw areasfollows:(1)theplaintiffowned,hadlegal
possession of,orwasentitled to possession oftheproperty;(2)the defendantassumed
and exercised dominion and controloverthe property in an unlawfuland unauthorized
manner,to the exclusion of and inconsistentwith the plaintiffs rights;and (3) the
defendantrefused the plaintiffs dem and for the return of the property. City Bank v.
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Circuitcited with approvalsources which noted thatpreem ption does occur where the
claim is therefore preempted to the extent it covers tool drawings,desir s,and other
m aterial.
Agreem ent are unenforceable under Texas law. W ES and Knobloch assert that the
of lim itation on geop aphic area or scope of activity lim itation. N ext, they aver that a
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The Texas Business and Comm erce Code govem s the enforceability of
of law for this Court. Gallagher H ealthcare Ins.x% rv.ç.v. Vogelsang,--- S.W .3d ---,
againstrestraints oftrade and the hardships resulting from interference with a person's
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pleads:
Employm entAgreem ent. In its briefing,M -l affirm s this,arguing that they have not
The Courtnow turnsto the covenantnotto compete located in the Emplom ent
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Ameementoratanytimeforsix(6)monthssubsequenttothetennination
ofEmployee'semploymentforanyreason (exceptasprovidedin Section
5uponterminationwithoutcause),directlyorindirectly,individuallyoras
an agent,employee,owner,manager,consultantor representative ofany
entity, in any geographic area where Employer does business or is
authorized todo business:
ofan otherwise enforceable agreem entatthe tim e itwasm ade. Thus,the Courtturnsto
is reasonable and does notim pose a greater restraint than is necessary to protect M -l's
business interest.
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engaging in the ttRestricted Business'' w ith any of the em ployer's com petitors.
unenforceable.(Doc.No.181,!29.)
Second,Knobloch and W ES argue thatthe covenant's restriction on soliciting
contains no reasonable geographic lim itation. The limitation in the covenant forbids
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scope ofactivity limitations are reasonable given K nobloch's position as a high level
reasonableness of the covenantnotto com pete by considering the com bination ofthe
tim e,geographic,and scope of activity lim itations together,rather than apart. M -linsists
thatthe covenantnotto com pete's geographicaland scope of activity lim itations should
The Court considers M -l's first countem oint- that the relevant employer is
The Em plom ent A p eem ent, which contains the covenant not to com pete at
issue,definesçtGlobalCompletionServices,lnc.''astheemployer.(Doc.No.181,Ex.2,
at1.) M -1explainsthatGlobalCompletion Serviceschanged itsname to SPS when it
wasacquiredbyM -1.(Doc.No.195,!32.) M-1arguesthatthecovenantnottocompete
relatesto SPS/GCS businessneeds,ratherthan M -l'sbusinessneeds. The Courtagrees.
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businessneeds.
is SPS/G CS, M -I is nevertheless seeking dnm ages based on M -l's ow n lost profits,
compete. lfM -1prevails on this claim ,it mustsubmit evidence showing the loss to
wide exclusion,''which they assertisim perm issible underTexas case law. M -1argues
work in the oiltield displacem ent tools or services industry for six m onths, is not
Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 52 of 70
in or have an interest in any business that sold insurance policies or engaged in the
another com pany. Before the tive-year term had ended, the em ployee leh his
em plom ent and began working with another insurance agency in the sanae county.
unlimited asto tim e,extended to customerswith whom the employee had no association,
and because the employerhad notshown thatthe lim itationswere necessary to protectits
goodwillorbusinessinterests.f#.at85.
The com bination of factors presented in Stroman convinces the Courtthat the
case is readily distinguishable. First, as the Stroman court noted,the covenant not to
com pete in thatcase restricted the employee's ability to work in the insurance business
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com pete does notbarhim from working in the oiland gas industry altogether. AsM -I
notes,Knobloch could work in other senrice sectors within that industzy particularly
given hisengineeringbackground.
Zt Energy Grp.lnthatcase,theemployeeworkedforemployerastheVicePresidentof
Pipelines and Energy M arketing. The relevant covenant not to compete in that case
prohibited the employee from engaging in competitive business in Canada orthe United
thathew asrestricted from working forany oiland gascompany in N orth Am erica. The
employer disav eed, and subm itted evidence to show the court that it lim ited its
involving oilfield displacem enttools or services or any other businesses then conducted
gas, but instead restricts Knobloch from working for a com petitor within the oi1
senices to the oi1 and gas industry, and W ES and Knobloch do not refute that
The Courtnow turns to Knobloch's and W ES'S argum entthat the covenant is
unenforceable because itcontains no reasonable geop aphic lim itation. Texas courts
e.g.,Goodin v.Joll? 257 S.W .3d 341,352 (Tex.App.- Forth W orth 2008,no pet.)
(citing casesl;Zep Mfg.Co.v.Harthcock,824 S.W .2d 654,660-61 (Tex.App.- Dallas
1992,nopet.) CtA reasonablegeographicscopeisgenerallyconsidered tobetheterritory
in which the employee worked for the employer.'' TranspetfectTranslations,Inc.
Leslie,594 F.Supp.2(1742,754(S.D.Tex.2009)(citingHarthcock,824 S.W .2dat660).
W ES and Knobloch rely on Goodin v.Jolfffoïtheirargumentthatthecovenant
should failbecause itfails to setforth a reasonable geographic lim itation. Goodin is
inapposite. The covenantin thatcase failed to include ûûany lim itation asto geop aphic
scope whatsoever.'' 257 S.W .3d at 352. By contrast, Knobloch's covenant not to
Case 4:09-cv-01552 Document 376 Filed in TXSD on 08/17/10 Page 55 of 70
com pete prevents him from com peting Ktin any geographic area''w here SPS/G CS does
submitted evidence showing that SPS/GCS did business in North Am erican, South
throughout this tenitory. He testitied that his territory covered North Am erica, the
Caribbean,andpartsofSouthAmerica.(Knobloch Dep.95:17-96:12.)
ltlNqon-competecovenantswithrestrictionscovering awidegeovaphicareamay
bereasonable ifthey are limited in scope to a tirm 's currentorprospective clients such
reaching to the outerlim its ofa restriction. However,the Courtis satisfied that,given
Knobloch'sextensivejobresponsibilities,hisposition inuppermanagementatSPS/GCS,
and the fact thathis actualterritory did span the Am edcas,the geographic restriction
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custom ers fora period ofsix months. A customer isdetined as an entity thatconducts
who t4m ight reasonably be expected to conduct business'' with SPS/GCS because
indirectly,withoutçsany lim itation asto geom aphic scopewhatsoeven'' 257 S.W .3d 341,
competing indirectly with their form er em ployer without any geographic limitations,
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The Courtfinds m ore troubling Knobloch and W ES'S central argum entin this
whom Knobloch had no contact. Texas courts have struck down such covenants as
iA ibited departing partners 9om engaging accounting services for clients who were
thatthe covenantnotto com pete w as reasonably nanow to protecta com pany's business
interest or goodwill. So, for exam ple, courts have held that covenants with no
restdcts the em ployee from contacting form er custom ers w ith whom the em ployee dealt
Tllree im portant factors bring the Court to this conclusion. First, the short six-m onth
duration ofthe covenantnotto competeim posesa lim ited burden on Knobloch. During
outside the wellbore completion industly to work in that industry but outside of the
Am ericas,ornotto work and launch acom peting businesssixm onthslater. The Courtis
industry,al1of those optionsremained open to him when he leh his em ploym entwith
SPS/GCS.
The second factor is the upper m anagem ent position held by Knobloch at
intem ationally, fonnulated com pany grow th strategies, and discussed product
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involvem ent in the com pany's gowth and developm ent, the Court believes that
business interests in this case involve notjust preserving a client bases but also
m aintainingtrade secretsand othersensitive inform ation. Therestriction on a11custom er
and isthereforeenforceable.
applied in Texas state courts,when a party seeking protection has established that the
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ordered discovery to proceed along a certain schedule,due to the sensitive nature ofthe
to includediscoveryofa11mattersçsexclusiveoftradesecrets.'' (Disc.Hr'gTr.33,Nov.
24,2009.) Aherthetirstphase,theDefendantswouldbeallowedtodeposecertain M -I
engineersin orderto obtain m ore detailasto thetradesecrettheû atissue. Following the
depositions,the case wasto proceed to a second round ofdiscovery where t4trade secret
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Despite M -l's protests that the frst phase of discovery had not yet been
producesensitiveinformation.AûeradjudicatingalargenumberofdisputesinApriland
M ay,theCourtstayed thecasein orderto decide thepending dispositivem otions.
A . Analysis
Defendants,in som e ways,m ake a pitch for a question already decided. They
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secretinformationundercertaincircumstances.Rule26(c)(1)provides'
.
A party or any person from whom discovery is soughtm ay move for a
protective order in the court where the action is pending--or as an
alternative on m attersrelating to a deposition,in the courtforthe district
where the deposition willbe taken....The courtm ay,for good cause,
issue an order to protect a party or person &om annoyance,
embarrassment,oppression,or undue burden or expense,including .. .
requiring thatatrade secretorotherconfidentialresearch,development,or
comm ercialinform ation notbe revealed orberevealed only in a specified
W ay ....
'
It is ûtwell settled that there is no absolute privilege for trade secrets and similar
distinguished from stereotyped and conclusory statem ents.''' Sanchez v.Proper# &
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dem onstrate that its disclosure would cause an identifiable, sir iticant hann.''' f#.
(quotingStoneConnection,Inc.v.Simpson,2008W L 1927033,at*1(E.D.Tex.Apr.28,
2008)).
If the party seeking protection establishes thatthe information sought is both
party to çtestablish thatthe inform ation issuo ciently relevantand necessary''to itscase
MILLER & RICHARD L.M ARCUS,FEDERAL PRACTICE AND PROCEDURE j2043 (2d ed.
1994).Kççltiswithinthesounddiscretion ofthetrialcourttodecidewhethertradesecrets
are relevantand whethertheneed outweighstheharm ofdisclosure.Likewise,ifthetrade
theirdisclosure by m eans ofa protective order are also a m atter within the trialcourt's
trade secrets include sensitive inform ation such as tool drawings, engineering data,
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action against Defendants in this suit. Their core allegation is that Defendants
secrets, and now seeks discovery in order to support those claim s with evidence.
were stolen,and needs evidence to bolster its claim . Specifically,the third elementof
trade secret. ln order to prove this element, M -l must establish that W ES'S tools
ineorporate M -l's design features. lndeed, M -l has submitted aftidavits from two
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Scotland engineers exposed the frivolity of M -l's claim s. Although all deponents
was able to point to specific design features that were unique to M -I before W ES
type, tool m atedal,bolts,and other dimensions, designs, and m echanism s that they
strongly believe W ES copied from M -I. From the Court's review of the testim ony,it
believes that the testim ony was specific and supported by the engineers' technical
necessarytofairlyadjudicateitsmisappropriation oftradesecretsclaim.
The Courtdoes notfinding convincing Defendants'citation to case 1aw on trade
thateither a design or manufacturing defectprevented the belts ofthe failed tire from
chem ical fonnula for w hat is known at t'skim stockr''in order to prove its claim . 979
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formula was a trade secretprotected by Rule 507. The Texas Suprem e Courtreviewed
that plaintiffs had no other skim stock formulas with which to compare defendant's
formula. ln other words,the evidence did notshow thatproduction ofthe skim stock
formulawould allow plaintiffto establish thatthe failed tirew asdefective. The formula
defective in som e way,plaintiffs would notbe able to show thatby comparing the
formula to others. In this case, by contrast, Defendants' tool drawings and other
drawingsreflectexactl
y the tinalmanufactured productisirrelevantl;f'urthermore,M -I
m ay compare Defendants' trade secrets to its own to establish whether Defendants'
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requiresthem to show thatDefendantshave actually incom orated trade secrets into their
own competitive products,without exam ining Defendants' tool drawings and other
has undertaken, this is sim ply a m ore circuitous w ay of obtaining the m aterials from
could assertthetradesecretprivilege.
Rather, it is clear that M -1 will need to produce its own tool drawings and other
Court is satisfied that, with both parties disclosing the m aterial at the heart of their
ALAN W RIGHT,A RTHUR R. M ILLER & RICHARD L.M ARCUS,FEDERAL PRACTICE AND
rare.''Fc#.OpenMarketComm.oftheFed.Resen'es'
ys'.v.Merrill,443 U.S.340:363
n.24 (1979). éûM ore commonly,the trialcourtwillentera protective orderrestricting
disclosuretocounsel,ortotheparties.''f#.(intemalcitationsomitted).Defendantshave
failed to citeto any federalcasesthatprohibited trade secretdisclosure outdght. lndeed,
from the Court's own research, it is clear that such action is exceedingly rare.
D efendants have failed to set forth com pelling reasons for why this m aterial should be
entirely exempt from discovery. The Court finds that the material is relevant and
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The Courtwillconvene the parties to discuss how the tenns of the currentprotective
order m ay be m odified. Given the sensitive namre of the inform ation,the Court is
infonnation disclosed.
frustrated with the filing ofthislawsuit. Defendantshave repeatedly argued to the Court
that this is a sham law suitbroughtby a large com oration seeking to extinguish a sm all
arguments and accusations. It is the Court's task to adjudicate this case neutrally.
HavingfoundnobasisforRule 12(b)(6)orRule56dismissaloftheentiresuit,theCourt
m ustallow this litigation to proceed. Ithasconcluded that,in orderto try these claim s,
both sidesmustproduce trade secretm aterial. The m erits ofM -l'sclaims can form no
bound to do,is monitorthe pleadings and evidentiary standards to ensure thatthe case
V. C O NC LU SIO N
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Defendants'motion forpartialsummaryjudgment(Doc.No.181)isgrantedinpartand
denied in part. Counts Four,Five, Six,Eight,Nine,Ten,and Tw elve are preem pted to
the extent they are based on M -l's tool draw ings and other copyrightable m atedal.
forprotection(Doc.No.300)isdenied.
M -lmustfile an amended complaintwithin twenty (20)daysofthedate ofthis
Orderthatreflecttherulingsherein.
IT IS SO O R D ERED .
<
SIGNEDatHouston,Texas,onthisthe/ 7dayofAugust,2010.
KEIT .E LISON
UN ITED STA TES D ISTRICT JU D GE
70