Texas’s New Law on Trade Secrets

Prior to the
enactment of the Texas Uniform Trade Secrets Act (“TUTSA”), misappropriation of
trade secrets was a common-law cause of action, often brought by trade secret
owners against individuals who had taken trade secrets and were using or
disclosing the trade secrets to the detriment of the owner. Trade secret
litigation can be expensive, and under the common law, there was no way for a
plaintiff to recover attorney’s fees. However, there was a way around that
Enter Texas’
civil theft statute, known as the Texas Theft Liability Act. The civil theft
statute allows an individual to file a civil lawsuit for several different
types of theft, such as theft of property or theft of services. Prior to
September 1, 2013, it also allowed an individual or business to file a lawsuit
for theft of trade secrets.
A key feature of
the civil theft statute is that it allows a court to award attorney’s fees to
the prevailing party. There are no special requirements, other than that the
party prevail. Thus, attorneys representing plaintiffs claiming
misappropriation of trade secrets would bring two claims in one lawsuit:  a claim for misappropriation of trade secrets,
and a second claim for civil theft.  By
filing the civil theft claim, a plaintiff stood a chance of recovering their
attorney’s fees if they won the lawsuit.
TUTSA amended
the Texas Theft Liability Act, and eliminated theft of trade secrets as a basis
for bringing a civil theft lawsuit. Thus, after September 1, 2013, it is no
longer possible to bring a civil theft lawsuit in conjunction with a
misappropriation of trade secrets case; TUTSA is now the sole remedy in Texas
for misappropriation of a trade secret.
TUTSA does allow
for attorney’s fees to be recovered, but only in limited circumstances. TUTSA provides
that a court may award attorney’s fees to a prevailing party in situations
where a lawsuit is brought in “bad faith,” or where a plaintiff proves “willful
and malicious misappropriation” by a defendant. While not as broad as the
relief provided for by the civil theft statute, TUTSA does appear to recognize
that in some circumstances it is unjust to deny a prevailing party the
possibility of recouping its attorney’s fees.

As the TUTSA is
still in its infancy and has yet to be litigated in many cases, it is important
for both Plaintiffs and Defendants in trade secret litigation to be on the
cutting edge of legal developments. 
Hiring a lawyer who specializes in this area of law is critical for
either early success (in the form of prosecuting or defending both Temporary
Restraining Orders and Temporary Injunctions) and for success at trial.