You can’t take him anywhere: Five Minute Law goes to a cocktail party
[COVID-19 update: Five Minute Law goes to a Zoom hangout]
Hi, I’m Zach Wolfe.
Good to meet you Zach, I’m Travis Austin. So what do you do?
I’m a lawyer. I do business litigation.
Oh, my cousin’s a lawyer. I think he does corporate law. What kind of litigation do you do?
Mostly non-compete and trade secrets cases.
Trade secrets? That sounds interesting. Like patents?
Not really. [Wolfe pauses to think about whether he can explain without sounding pedantic.] Actually, a patent is kind of the opposite of a trade secret.
Oh, I didn’t know that.
Yeah, like if you file a patent on some new technology you invented, the patent filing makes it public to the world.
Ok, I see. So if you keep the technology inside the company, it can be a trade secret?
So is that the kind of trade secret litigation you do?
Well, not that much. [Wolfe pauses again to decide whether to explain or change the subject to something less boring.] Most of my trade secret cases involve things like customer lists and prices.
Really? I didn’t think prices were trade secrets.
[Wolfe smiles, sensing an opportunity] They can be. I actually just wrote a blog post about that.
Oh, you have a blog? . . . [now all is lost]
A typical price undercutting scenario
So what’s the answer? Are prices really trade secrets?
It depends. Let’s consider a hypothetical.
Paula Payne Windows orders windows from manufacturers and sells them to residential and commercial builders. The profit is the spread between the cost of buying and shipping the windows and the price charged to the customer.
Dawn Davis is the most experienced sales person at Paula Payne Windows. One day Dawn meets the owner of Real Cheap Windows for margaritas. A month later, Dawn suddenly announces to Paula Payne—these announcements are always “sudden”—that she’s leaving the company to go to work for Real Cheap.
And here’s the hard part for Paula Payne: Dawn never signed any non-compete. In fact, she never even signed a routine confidentiality agreement. “When Dawn started, our whole company was just a little office with three phones and some computers,” the founder of Paula Payne Windows explains. “The last thing I was thinking about was legal documents.”
A few weeks later, it becomes obvious that Dawn’s customers have stopped placing orders with Paula Payne. And that’s not all. Paula Payne discovers that the day before leaving, Dawn emailed herself an Excel spreadsheet containing all of her sales for the previous 90 days, including (1) the name of the customer contact, (2) the window model numbers, (3) the price paid to the manufacturer, (4) the shipping cost, and (5) the price charged to the customer.
Paula Payne Windows sues Dawn Davis and Real Cheap, claiming misappropriation of Paula Payne’s trade secrets under the federal Defend Trade Secrets Act and the state Uniform Trade Secrets Act.
Specifically, Paula Payne claims that after joining Real Cheap, Dawn started selling to her previous customers at prices slightly lower than what customers were paying Paula Payne. “Dawn Davis is using the confidential pricing information in the spreadsheet to undercut Plaintiff and steal its customers,” Paula Payne alleges.
This is the common “price undercutting” theory in trade secrets litigation. It is common because while not every company has secret technology or a “secret sauce,” every business has customers and prices.
So, even if a company doesn’t require its employees to sign non-competes, the company can use trade secret law to try to stop a departing employee from competing, as long as it has customers and prices that are arguably confidential.
When are prices trade secrets?
Returning to the initial question, is that kind of information actually a trade secret?
Like any kind of information, prices charged to customers can be trade secrets, if:
(1) the price information has “independent economic value”
(2) the prices are not “readily ascertainable” by competitors
(3) the company took “reasonable measures” to keep the prices secret
These are the three essential elements of a “trade secret” under both the Texas and federal statutes. Like any type of information, price information that meets these elements can be a trade secret.
But prices are not just any kind of information. Price competition is at the core of the free competition the law should encourage. We want businesses to “undercut” their competitors on price. We just don’t want them to use another company’s trade secrets to do it.
So it’s important for judges to hold companies to their burden of proving their price information meets the three elements needed for trade secret protection.
Let’s apply this to the Paula Payne Windows case. Paula Payne would argue that the detailed price information in the spreadsheet has “independent economic value” because Dawn can use it to undercut Paula Payne.
But Paula Payne Windows also has to prove the price information is “not readily ascertainable.” In this case, the spreadsheet contains prices charged to Paula Payne and prices charge by Paula Payne. Is it really that hard for a competitor to find out those prices?
To show the information is not a trade secret, Dawn’s lawyer will want to establish that:
– Paula Payne Windows has no agreements with the window manufacturers requiring the manufacturer prices to be kept confidential
– Prices charged by the manufacturers are available in industry publications, on the Internet, or simply by asking the manufacturer
– Paula Payne Windows has no agreements with its own customers requiring its prices to be kept confidential
– Paula Payne’s customers are willing to tell other window companies how much Paula Payne is charging them
These questions go to the heart of the elements of a trade secret. If Paula Payne doesn’t require its customers to sign confidentiality agreements, has it really taken “reasonable measures” to keep the prices secret? If manufacturers and customers are willing to disclose their prices, isn’t the information “readily ascertainable”?
Companies always want to say their prices are highly confidential and valuable, but that claim often doesn’t hold up to scrutiny.
And that’s not the only problem with the price undercutting theory.
Causation rears its ugly head
Let’s say Paula Payne Windows persuades a judge or a jury that the pricing information is a trade secret. That’s not the end of the story. Paula Payne also needs to prove that Dawn Davis used the information to make the sales to the customers. In other words, Paula Payne still has to prove causation.
Ah, causation. The bane of plaintiff’s lawyers everywhere.
You see, it’s not enough to prove the price information was a trade secret and that Dawn Davis sold windows to Paula Payne’s customers. Paula Payne must prove it was Davis’s use of the information—and not something else—that caused Paula Payne to lose the sales. See eCommission Solutions, LLC v. CTS Holdings Inc., No. 18-1672-cv, 2019 WL 2261457, at *2 (2d Cir. May 28, 2019) (while misuse of customer list can be unfair competition, there was no evidence that use of pricing info and customer list caused the plaintiff’s loss of customers).
This requires a counterfactual: imagine that Dawn Davis never took the spreadsheet with the prices. Would she have still made the sales?
To prove Dawn would have made the sales anyway, her lawyer will want to show:
– Dawn has longstanding personal relationships with her customers
– Dawn could have undercut Paula Payne Windows simply by asking the customers what Paula Payne Windows was charging them
– Price is not the only factor for the customers, or even the most important factor
– The customers ordered from Dawn because of their personal relationships
– Prices change daily or weekly, making the numbers in the spreadsheet quickly obsolete
– Dawn didn’t even look at the spreadsheet in making the sales
– In short, Dawn would have made the sales even if she hadn’t taken the spreadsheet.
Proving these points could negate the causation element of Paula Payne’s trade secrets claim.
Wait a minute, you might say. This isn’t fair. Dawn Davis developed goodwill with her customers on Paula Payne’s dime. That goodwill belongs to Paula Payne. Dawn shouldn’t be allowed to exploit it for the benefit of a competitor.
You would have a point. But goodwill is not a trade secret. See Am. Mortgage & Equity Consultants, Inc. v. Bowersock, No. 1:19-CV-492-RP, 2019 WL 2250170, at *5 (W.D. Tex. May 24, 2019) (customer relationships are not trade secrets). And there is really only one legal mechanism to protect goodwill: an enforceable non-compete.
But if there isn’t a non-compete, and the employee takes confidential information about the company’s prices, how do you sort out whether the employee made the sales because she had the price information, or because she had relationships with the customers?
Ask me next time you see me at a party.
Zach Wolfe (firstname.lastname@example.org) is a Texas trial lawyer who handles non-compete and trade secret litigation at his firm Fleckman & McGlynn, PLLC. Follow @zachwolfelaw on Instagram to keep up with his latest shenanigans.
These are his opinions, not the opinions of his firm or clients, so don’t cite part of this post against him in an actual case. Every case is different, so don’t rely on this post as legal advice for your case.
 See Fox v. Tropical Warehouses, Inc., 121 S.W.3d 853, 859 (Tex. App.—Fort Worth 2003, no pet.) (a pre-TUTSA case citing price lists and customer lists as information entitled to trade secret protection until trial); T-N-T Motorsports, Inc. v. Hennessey Motorsports, Inc., 965 S.W.2d 18, 24 (Tex. App.—Houston [1st Dist.] 1998, pet dism’d) (same). See also SP Midtown, Ltd. v. Urban Storage, L.P., No. 14-07-00717-CV, 2008 WL 1991747, at *6 (Tex. App.—Houston [14th Dist.] May 8, 2008, pet. denied) (mem. op.) (evidence that customer and price information would allow competitors to slightly undercut plaintiff’s prices and take its business raised a fact issue on whether the information was a trade secret); In re Desa Heating, L.L.C., No. 2-06-088-CV, 2006 WL 1713489, at *2 (Tex. App.—Fort Worth June 22, 2006, orig. proceeding) (mem. op.) (affidavit testimony that competitors could use financial information to undercut company’s pricing to obtain its customers, while “somewhat conclusory and lacking in detail,” was sufficient to establish that information was entitled to trade secret protection in discovery).