Last week, the Texas Supreme Court provided its first opinion interpreting the Texas Uniform Trade Secrets Act in a case involving an issue that often causes discomfort to lawyers on both sides of the “v” in trade secret misappropriation cases: how much of their trade secrets do plaintiffs have to disclose to enable the defendant to adequately defend itself? The opinion inIn re M-I L.L.C. d/b/a M-I Swaco, 2016 WL 2981342 (Tex., May 20, 2016) demonstrates this tension. In that case, the Texas Supreme Court, on a petition for a writ of mandamus, held that the trial court abused its discretion by (i) refusing to exclude the defendant’s designated representative from the courtroom during a hearing where the plaintiff’s trade secrets would be disclosed; and (ii) ordering the production of an affidavit containing the plaintiff’s trade secrets without first conducting an in camera review.
The plaintiff in the case, M-I Swaco (“Swaco”), and the defendant, National Oilwell Varco (“NOV”), are competitors who provide equipment and services to the oil and gas industry. In the action, Swaco alleges that one of its former employees accepted a position at NOV in breach of a non-compete agreement, and that he knew, and would inevitably disclose, Swaco’s trade secrets. At a hearing on Swaco’s application for a temporary injunction, the trial court rejected, on due process grounds, Swaco’s request for the exclusion from the courtroom of NOV’s designated representative during Swaco’s testimony concerning its trade secrets.
While the trial court granted the request for a recess to permit Swaco to file a writ of mandamus challenging this decision, the trial court also ordered Swaco to submit an affidavit setting forth the alleged trade secrets as part of its offer of proof. Swaco complied, and while the appellate court rejected NOV’s attempts to access the affidavit, the trial court was not so protective. Instead, the trial court granted NOV’s motion to compel, ordering the affidavit disclosed without first reviewing it. Swaco petitioned for a writ of mandamus, challenging both the refusal to exclude NOV’s designated representative and the disclosure of the affidavit. The Texas Supreme Court found that both were an abuse of the trial court’s discretion, for which there was no adequate remedy at law court litigation.
The Texas Supreme Court first found that the trial court failed to conduct the balancing test required by the Due Process Clause, which pits the presumption in favor of allowing the defendant to participate in the proceedings against the degree of relative harm the plaintiff would face if its trade secrets were disclosed. The trial court incorrectly assumed that the due process right to be present at a civil trial was absolute, concluding that “[Swaco] sued them. They stay, period.” Instead, the Texas Supreme Court reiterated that the right to be present is qualified.
The Texas Supreme Court also rejected the trial court’s absolutist position in its analysis of NOV’s remaining arguments. It found that (i) any right of public access under the Texas Constitution’s “open courts” provision would be similarly qualified; and (ii) other Texas Rules of Civil Procedure must be interpreted in a way consistent with the Trade Secrets Act.
Finally, the Texas Supreme Court found that the trial court had an obligation to review the affidavit allegedly containing Swaco’s trade secrets before ordering it disclosed, to determine what protective procedures, if any, were necessary to protect Swaco’s interests.
For litigants, the opinion provides a useful framework for determining whether, and to what extent, trade secrets must be disclosed during court proceedings in cases where those trade secrets are central to the claims presented. As explained in Swaco, trial courts should consider the following:
While the rejection of a per se rule may add a layer of complexity and expense to an already-costly trade secrets dispute, requiring the courts to conduct a balancing test could provide the parties with an early assessment of the strengths and weaknesses of their case, which ultimately may save them time and expense in the long run.
In 2012 the California Legislature amended the judicial remedies aspect of the Brown Act “Opening Meetings” Law. That amendment added section 54960.2 to the Government Code to require that a party seeking a judicial remedy for a past action of a legislative body alleged to be in violation of the Brown Act must first submit to that body a cease and desist letter. If the legislative body responds with an unconditional commitment to cease and desist from, and not repeat, the alleged violation, then a judicial remedy is foreclosed. In other words, the cease and desist letter is a pre-requisite to initiating a judicial action to stop or prevent past violations of the Act.
The City Council of San Diego regularly meets on Mondays and Tuesdays in a two-day regular meeting, which the City considered to be a single meeting. Pursuant to a city ordinance, only one non-agenda public comment period, required by the Brown Act, was afforded — on Tuesday mornings. Without providing a cease and desist letter, the Center for Local Government Accountability brought suit against the City asserting its single, non-agenda public comment practice violated the Brown Act. After the action was filed, the City changed course and adopted an ordinance providing for non-agenda public comment periods on both Mondays and Tuesdays.
The City demurred to the complaint, first asserting that the Center had failed to satisfy the cease and desist letter requirement of section 54960.2, and second that the complaint was moot, as the City had changed its ordinance to provide for two public comment periods — one each day. The trial court sustained the demurrer, dismissed the action and the Center appealed.
The Court of Appeal, in a decision issued in Center for Local Government Accountability v. City of San Diego on May 31, reversed the trial court order. First, the appellate court found that the cease and desist letter requirement applied only to actions seeking a remedy solely for a past action of a legislative body. (The trial court had concluded that it applied to both past actions and future threatened actions.) The appellate court found that the Center’s complaint was focused on the one non-agenda comment period ordinance and practice, which extended to all council meetings, including those in the future. Therefore, the complaint sought a remedy for future threatened actions and the cease and desist letter requirement did not apply.
Finally, the court rejected the City’s contention that the enactment of the new ordinance providing for a non-agenda public comment period on both days of the Council’s meetings rendered the lawsuit moot. The court noted that the City continued to insist that its two-day meeting regime was in fact one continuous meeting, rather than two separate meetings, and refused to concede that its prior practice of a single non-agenda public comment period violated the Brown Act. (One of the conditions of the “unconditional commitment” to cease and desist is a confession that the Act had been violated.) Reasoning that the City could easily resurrect its prior ordinance, the court allowed the Center to return to the trial court, amend its complaint, and seek a judicial determination that the one non-agenda comment period practice violated the Brown Act.
This case illustrates the risks of Brown Act litigation for legislative bodies. Indeed, the City here appears to have lost the battle and lost the war, and will most likely be tagged with the Center’s attorney’s fees, as well as costs, which the appellate court ordered it to pay.