DETAILED TABLE OF CONTENTS
CHAPTER 1
TRADE SECRET MISAPPROPRIATION
Synopsis
§ 1.01 Definition of Trade Secret
§ 1.02 Elements of a Trade Secret
[1] Overview
[2] Secrecy
[a] In General
[b] Substantial Element of Secrecy
(i) General Requirement
(ii) Effect of Patent Law on Asserted Trade Secret
(iii) Effect of Copyright Law on Asserted Trade Secret
(iv) Absolute Secrecy Not Required
[c] Not Readily Discoverable by Fair Means
[d] Reasonable Steps Owner Must Take to Protect Trade Secret
[e] Factors Considered by Courts
[f] Novelty Not Required for Secrecy
[3] Used in Trade or Business
[4] Gives Owner Competitive Advantage
§ 1.03 Subject Matter of Trade Secrets
[1] Overview
[2] Scope of Protection
[3] Technical Information
[a] Formulas for Chemical Compounds
[b] Processes and Technical Procedures
[c] Machines Used in Business
[d] Molds
[e] Blueprints and Drawings
[f] Product Designs and Information
[g] Technical Specifications
[h] Computer Software
[i] Information on What Not to Do
[j] Other Technical Information
[4] Commercial Information
[a] When Customer Lists Are Protected
[b] When Customer Lists Are Not Protected
[c] Other Commercial Information
§ 1.04 Ownership Rights to Trade Secrets Resulting from Employment
Relationship
§ 1.05 Cause of Action for Misappropriation of Trade Secret
[1] Overview of Required Elements
[2] Elements of Cause of Action for Misappropriation of Trade
Secret
[a] Existence of Trade Secret
[b] Improper Acquisition
(i) General Principles
(ii) Use of Information Acquired in Employment Relationships
(iii) Improper Discovery of Trade Secret
[c] Unauthorized Use of Trade Secret
§ 1.06 Basis for Civil Liability for Misappropriation of Trade Secret
[1] Introduction
[2] Breach of Confidential or Fiduciary Relationship
[a] Existence of Relationship
(i) In General
(ii) Employment Relationship
[b] Protection Afforded Trade Secrets Based on Relationship
[3] Express Contract
[4] Implied Contract
[5] Unfair Competition
[6] Conspiracy
[7] Third-Party Derivative Liability
[8] Texas Theft Liability Act
§ 1.07 Other Grounds for Liability Based on Confidential Information
[1] Idea Submission
[2] Common-Law Misappropriation
[3] Criminal Liability
§ 1.08 Remedies for Misappropriation of Trade Secret
[1] Injunctive Relief
[a] Availability of Injunctive Relief in General
[b] Temporary Restraining Orders
[c] Temporary or Preliminary Injunctions
[d] Permanent Injunctions
[2] Damages
[a] In General
[b] Defendant’s Profits
[c] Plaintiff’s Lost Profits
[d] Reasonable Royalty
[e] Exemplary Damages
[f] Claims Based on Multiple Causes of Action
[3] Attorney’s Fees
§ 1.09 Defenses to Misappropriation of Trade Secrets Claims
[1] Statute of Limitations
[2] Independent Development
[3] Preemption
[4] Equitable Defenses
[a] Unclean Hands
[b] Laches
§ 1.10 Protecting Trade Secrets during Litigation
[1] In General
[2] Clarification of Tex. R. Civ. P. Rule 76a in General Tire Inc. v. Kepple
[3] Qualified Privilege for Trade Secrets
§ 1.11 Sources
[1] Statutes
[2] Rules
[3] Law Review Articles
[4] Treatises and Texts
CHAPTER 2
TRADEMARK INFRINGEMENT
AND UNFAIR COMPETITION
Synopsis
§ 2.01 Overview of Trademarks and Unfair Competition
[1] Rights Protected by the Law of Trademarks and Unfair Competition
[a] Purpose of Law of Trademarks and Unfair Competition
[b] Trademark
[c] Service Mark
[d] Trade Names
[e] Trade Dress and Product Configuration
[2] Distinctiveness of Trademarks
[a] What Is Protectable
[b] Fanciful
[c] Arbitrary
[d] Suggestive
[e] Descriptive
(i) Overview
(ii) Surnames
(iii) Geographically Descriptive Terms
(iv) Secondary Meaning
[A] Defined
[B] Evidence of Secondary Meaning
[f] Generic
[3] Distinctiveness of Trade Dress and Functionality
[a] Distinctiveness of Trade Dress
[b] Functionality Doctrine
(i) Purpose of Functionality Doctrine
(ii) Combination of Features
[4] The Relationship between State and Federal Law
[a] Overview
[b] Lanham Act
[c] Texas Trademark Act
[d] Texas Common Law
§ 2.02 Creation, Ownership, and Transfer of Trademark Rights
[1] Overview
[2] Use in Commerce
[3] Assignment, Transfer, and Licensing of Trademarks
[a] Method of Assignment
[b] Recording Assignments
[c] Transfer by Operation of Law or Implication
[d] Licensing of Trademarks
§ 2.03 Registration of Trademarks
[1] Federal Registration
[a] Effect and Benefits
[b] Procedure
[2] Texas Registration
[a] Effect and Benefits
[b] Procedure
[3] Status of Unregistered Marks
[a] Under Federal Law
[b] Under State Law
§ 2.04 Infringement of Trademark Rights
[1] Infringement in General
[2] Likelihood of Confusion
[3] Factors in Judging Likelihood of Confusion
[a] Strength of the Mark
[b] Similarity of Marks
[c] Similarity of Goods and Services
[d] Channels of Trade and Identity of Retail Outlets and Purchasers
[e] Advertising Media
[f] Defendant’s Intent
[g] Actual Confusion
[h] Degree of Care Exercised by Customers
[4] Trademark Infringement
[a] Under the Lanham Act
[b] Under Texas Trademark Act
[c] Common-Law Trademark Infringement
[d] Counterfeiting
§ 2.05 Unfair Competition
[1] Under the Lanham Act
[2] Texas Common Law
[a] Unfair Competition Defined
[b] Elements of Cause of Action for Unfair Competition
[c] Common-Law Trademark Infringement
[d] Passing Off
§ 2.06 Dilution and Injury to Business Reputation
[1] Federal Dilution
[2] Dilution under Texas Law
§ 2.07 Anti-Cybersquatting Consumer Protection Act
§ 2.08 Other Bases for Liability
[1] Vicarious Liability
[2] Criminal Liability
§ 2.09 Procedural Considerations
[1] Subject Matter Jurisdiction
[a] Federal Court Jurisdiction of Lanham-Act Claims
[b] Pendent and Ancillary Jurisdiction for Federal and State-Law Claims
[c] Federal Diversity Jurisdiction
[d] Removal of State and Federal Claims to Federal Court
[e] State Court Jurisdiction
[2] Personal Jurisdiction
[3] Venue
[a] Federal Venue Statutes
[b] Texas Venue Statutes
[4] Miscellaneous Procedural Issues
[a] Right to Jury Trial
[b] Choice of Law
[c] Standing
§ 2.10 Remedies
[1] Damages
[a] Importance of Damages
[b] Lanham Act
(i) Availability of Damages
(ii) Measuring Defendant’s Profits
(iii) Actual Damages
(iv) Costs of the Action
(v) Statutory Damages
(vi) Enhanced Damages
[c] Texas Trademark Act
[d] Common Law
(i) Actual Damages
(ii) Exemplary Damages
[2] Injunctive Relief
[a] Availability of Injunctive Relief
[b] Effective Area of Injunction
[c] Temporary Restraining Orders
[d] Preliminary and Temporary Injunctions
[e] Permanent Injunctions
[f] Other Types of Injunctive Relief
[3] Cancellation of Registrations
[a] Federal Registrations
[b] State Registrations
[4] Transfer of Domain Names
[5] Attorney’s Fees
[a] Federal Actions
[b] State Actions
§ 2.11 Defenses to Trademark-Infringement and Unfair-Competition Claims
[1] Statute of Limitations
[2] Lack of Distinctiveness
[3] Prior Use
[4] Geographically Remote Use
[5] Fair Use and Nominative Use
[a] Fair Use
[b] Nominative Use
[6] Equitable Defenses
[a] Overview
[b] Laches
(i) Definition and Elements
(ii) Measuring Delay
(iii) Measuring Prejudice
(iv) Effect of Laches
[c] Acquiescence
[d] Unclean Hands
[7] Fraudulent Procurement of Registration
[8] Abandonment
[a] Abandonment Defined
[b] Intent Not to Abandon Compared to Intent to Resume Use
[c] Termination of Business
[d] Assignment without Transfer of Goodwill
[e] Generic Status or Loss of Significance
[9] First Amendment
[10] Parody
[11] Exhaustion/First Sale
[12] Effect of Incorporation, Filing Assumed Name, or Approval by State Agency
[13] Antitrust and Misuse
§ 2.12 Sources
[1] Statutes
[2] Rules
[3] Law Reviews and Periodicals
[4] Text References
CHAPTER 3
COPYRIGHT
Synopsis
§ 3.01 The Nature of Copyright
[1] The Rights of the Copyright Owner
[a] The Reproduction Right
[b] The Distribution Right
[c] The Adaptation Right
[d] The Public-Performance Right
[e] The Public-Display Right
[f] The Digital-Performance Right
[2] Subject Matter of Copyright
[a] Ideas versus Expression
[b] Types of Copyrightable Works
(i) Literary works
(ii) Musical works including accompanying words
(iii) Dramatic works including any accompanying music
(iv) Pantomimes and choreographic works
(v) Pictorial, graphic, and sculptural works
(vi) Motion pictures and other audiovisual works
(vii) Sound recordings
(viii) Architectural works
[3] Requirements of Copyright
[a] Fixation
[b] Originality
(i) In General
(ii) Originality in Compilations and Collective Works
(iii) Duration of Copyright
(iv) Notice
§ 3.02 Sources of Copyright Law
[1] Federal Protection of Copyrightable Works
[2] Federal Preemption of State-Law Claims
§ 3.03 Ownership and Transfer of Copyright
[1] Ownership
[a] Author as Owner of Copyright
[b] Works Prepared by Employees Acting within the Scope of Employment
[c] Commissioned Works
[d] Rights of Party Who Pays for or Commissions but Does Not Own the Copyright in the Work
[e] Joint Ownership and Joint Works
[f] Ownership in Contributions to Collective Works
[2] Transfer of Interests in Copyright
[a] Statute of Frauds
[b] Termination of Transfers and Licenses
§ 3.04 Registration
[1] In General
[2] Effect of Registration
[3] Registration as a Prerequisite to an Infringement Action
[4] Effect of Registration Date on Remedies
§ 3.05 Infringement
[1] In General
[2] Proving Ownership
[3] Proving Copying
[4] Literal versus Non-literal Infringement
[5] Abstraction-Filtration-Comparison Analysis
[6] Vicarious Liability and Contributory Infringement
[7] Criminal Penalties
§ 3.06 Remedies
[1] Damages
[a] Actual Damages Plus the Infringer’s Profits
[b] Statutory Damages
[c] Increased Statutory Damages for Willful Infringement
[d] Prejudgment Interest
[2] Equitable Relief
[a] In General
[b] Temporary Restraining Orders
[c] Preliminary Injunctions
[d] Permanent Injunctions
[e] Attorney’s Fees
§ 3.07 Defenses
[1] Statute of Limitations
[2] Independent Development
[3] Laches and Estoppel
[4] Unclean Hands
[5] Inequitable Conduct in Prosecuting the Copyright Application
[6] Useful Articles
[7] Express and Implied Licenses
[8] Copyright Misuse
[9] Fair Use
[10] Lack of Originality: Scènes à Faire and Merger
[11] Limitations on the Copyright Owner’s Rights
[12] De Minimis Infringement
§ 3.08 Procedural Considerations
[1] Federal-Court Jurisdiction over Copyright Claims
[2] Supplemental Jurisdiction for Federal- and State-Law Claims
[3] Removal to Federal Court
[4] Personal Jurisdiction
[5] Federal-Court Venue Statutes
[6] Right to Jury Trial in Copyright Cases
[7] Standing
§ 3.09 Statutes and Rules
[1] Statutes
[2] Rules
[3] Law Reviews and Periodicals
[4] Text References
CHAPTER 4
MISAPPROPRIATION AND RELATED TORTS
Synopsis
§ 4.01 Introduction
§ 4.02 Common-Law Misappropriation
[1] Historical Background
[2] Recognition of the Tort in Texas
[3] Elements of Common-Law Misappropriation
[4] Remedies for Common-Law Misappropriation
[a] Injunctive Relief
[b] Damages
[5] Defenses
[a] Limitations
[b] Federal Preemption
§ 4.03 Misappropriation of Ideas or Intellectual Property
§ 4.04 Misappropriation of Name and Likeness; Right of Publicity
§ 4.05 Conversion of Intellectual-Property Rights
§ 4.06 Sources
[1] Statutes
[2] Law Review Articles
[3] Treatises and Texts
CHAPTER 5
FALSE ADVERTISING
Synopsis
§ 5.01 Introduction
§ 5.02 False Advertising under the Lanham Act
[1] Lanham Act § 43(a)(1)(B)
[a] Elements of a False Advertising Claim Brought under § 43(a)(1)(B)
[2] Lanham Act § 43(a)(1)(A)
[3] Standing
[4] Specific Conduct Found Actionable
[5] Remedies
[a] Equitable Relief
[b] Damages
[c] Attorney’s Fees
[6] Defenses
[a] Puffery
[b] Truth
[c] Statute of Limitations
§ 5.03 False Advertising under Texas Law
[1] Texas Common Law
[2] Business Disparagement
[3] Texas Deceptive Trade Practices Act
[4] Criminal Liability
[5] Injury to Business Reputation
§ 5.04 Sources
[1] Statutes
[2] Treatises and Texts
CHAPTER 6
RESTRICTIVE COVENANTS
Synopsis
§ 6.01 Introduction
§ 6.02 Types of Restrictive Covenants
[1] Employee Post-Employment Covenants
[2] Non-Solicitation or No-Hire Covenants
[3] Sale-of-Business Covenants
[4] Covenants in Franchise Agreements
[5] Covenants in Settlement and Severance Agreements
[6] Covenants Involving Forfeitures and Penalties
[7] Non-Disclosure Agreements
[8] Covenants Restricting the Practice of Medicine and Law
§ 6.03 Historical Background
[1] The Common-Law Era
[2] Hill v. Mobile Auto Trim and Its Aftermath
[3] The 1989 Legislative Response: The Texas Covenants Not to Compete Act
[4] The 1993 Amendments and Light v. Centel Cellular Co.
§ 6.04 Elements of a Cause of Action for Breach of a Restrictive Covenant
[1] Ancillary to or Part of a Separate Enforceable Agreement
[a] Consideration Must Give Rise to Promisee’s Interest in Restraining Promisor from Competing
[b] Covenant Must Be Designed to Enforce Promisor’s Consideration or Return Promise in Separate Agreement
[c] Separate Enforceable Agreement
[2] Made at Time When Separate Agreement Enforceable
[3] Reasonable Limitations
[a] Time
[b] Territory
[c] Scope of Activity
[4] Restraint No Greater Than Necessary to Protect Employer’s Interest
[5] Assignability of Covenants
[6] Choice-of-Law
§ 6.05 Remedies
[1] Injunctive Relief
[a] Temporary Restraining Orders
[b] Temporary or Preliminary Injunctions
[c] Permanent Injunctions
[d] Reformation
[2] Actual Damages
[a] Lost Profits
[b] Liquidated Damages
[c] Exemplary Damages
[3] Attorney’s Fees and Costs
§ 6.06 Defenses
[1] Promisee’s Breach of Contract
[2] Unclean Hands
[3] Unenforceability
[4] Limitations
[5] Common Calling
[6] Antitrust Violations
§ 6.07 Related Causes of Action
[1] Trade-Secret Misappropriation
[2] Tortious Interference
[3] Breach of Fiduciary Duty
§ 6.08 Sources
[1] Statutes
[2] Law Review Articles
[3] Treatises and Texts
