Nineteen eighty nine, the number . . .
A big anniversary is coming at the end of the summer. Yes, August 1 will be the 38th anniversary of the debut broadcast of MTV, which kicked off with “Video Killed the Radio Star.”
But I’m talking about a different anniversary: the 30th anniversary of the Texas non-compete statute, which became effective just a few weeks later on August 28, 1989.
That was a long time ago. The #1 song that week was “Right Here Waiting” by Richard Marx. I was probably sweating through summer marching band practice at Crockett High School in south Austin, Texas. With no cell phone, no email, and no social media.
It was not long before the statute was amended—in 1993—but otherwise the statute has remained the same for 30 years.
Since that time, the Texas non-compete statute has traveled a long and winding road through the Texas courts. I won’t bore you with the details, but in those 30 years there have been hundreds of Texas appellate opinions applying the statute, including at least a dozen opinions from the Texas Supreme Court. Plus opinions by federal courts applying the Texas statute.
With so many judges writing so many opinions, you would think that any big questions about application of the Texas non-compete statute would be answered by now.
But you would be wrong.
It is surprising how many fundamental questions about Texas non-compete law remain unanswered today. I talked about some of these at a presentation a few years ago called “Advanced Non-Competes: What You Don’t Know You Don’t Know Can Hurt You.”
To celebrate the upcoming 30th anniversary, I’m revisiting that topic. It will be like an MTV countdown, but with non-competes, and less spandex. I’ll pick the most important unanswered questions of Texas non-compete law, explain each one, and look at how some recent court decisions have tried to answer them.
To kick this off, I’m starting with perhaps the most basic unanswered question: to enforce a non-compete against a departing employee, does the employer have to prove that the information it provided to the employee was actually confidential?
And the subsidiary question: how “confidential” or valuable does that confidential information need to be?
But first, let’s back up a bit to put these questions in context. The Texas non-compete statute has two requirements. First, the non-compete has to be “ancillary to an otherwise enforceable agreement.” Second, the non-compete has to be reasonable.
For now, let’s put aside the whole “reasonableness” question and focus on the “ancillary” requirement. What does it mean for a non-compete to be ancillary to an otherwise enforceable agreement?
The Texas Supreme Court has told us one way this “ancillary” requirement can be satisfied: an employer can tie a non-compete to a confidentiality agreement with an employee.
An agreement to provide the employee specialized training can also satisfy this requirement. That’s why my form, the Plain-Language Non-Compete, contains both an agreement to provide confidential information and an agreement to provide specialized training.
But a confidentiality agreement is still the most common way Texas employers try to satisfy the ancillary requirement. There are thousands of Texas non-competes written this way. The employer agrees to provide the employee with confidential information in connection with the employee’s work, and the employee agrees to a non-compete.
Is it enough for the employer to say these magic words? If the agreement says the employee will receive confidential information, is the non-compete enforceable? And what if the employment is at-will, as in 99% of cases? Is there really an “otherwise enforceable agreement” if the employer can fire the employee five minutes after she signs the agreement? Would the employee still be bound by the non-compete?
Texas courts struggled with questions like this for over two decades, but the Texas Supreme Court finally decided to make things simpler in a case called Alex Sheshunoff Management Services, L.P. v. Johnson, 209 S.W.3d 644 (Tex. 2006).
The Sheshunoff court solved the problem this way: a non-compete is ancillary to an otherwise enforceable agreement if the employer agrees to provide the employee with confidential information and the employer later provides the confidential information. The non-compete becomes enforceable not at the moment the employee signs the non-compete, but at the moment the employee receives the confidential information.
So, if the employer provided confidential information, the ancillary requirement is satisfied, and the non-compete is potentially enforceable (if it’s reasonable). If the employer did not provide confidential information, the ancillary requirement is not satisfied, and the non-compete is unenforceable.
Of course, it’s usually not that simple. You might occasionally get a case where, say, the employee signed a non-compete but quit a few days later, without receiving any information. But in the vast majority of cases the employee received some information from the employer that is at least arguably confidential. It may be as simple as learning the company’s prices, the identity of the company’s customers, and information about the customers.
This is where the rubber meets the road. Is the ancillary requirement satisfied when the employee simply received the same kind of basic information that employees always receive?
This is the unanswered question, and there are two views.
The employer’s argument focuses on a short but important sentence from the Sheshunoff opinion. Addressing the “ancillary to an otherwise enforceable agreement” element of the statute, the Sheshunoff court said:
Concerns that have driven disputes over whether a covenant is ancillary to an otherwise enforceable agreement—such as the amount of information an employee has received, its importance, its true degree of confidentiality, and the time period over which it is received—are better addressed in determining whether and to what extent a restraint on competition is justified.
Id. at 655-56.
Let me translate. The court is saying let’s not sweat the details about the confidential information when we’re applying the “ancillary” requirement of the statute. We can worry about the details when we apply the second requirement of the statute, reasonableness.
So, for example, if the employee only received a tiny bit of information, or if the information was not highly confidential, the court can consider that in determining whether the scope of the non-compete is reasonable.
The implication is that the amount of information, its importance, and its “true degree of confidentiality” don’t make a difference to whether the non-compete is “ancillary to an otherwise enforceable agreement.” One could interpret Sheshunoff to mean that, for the purpose of the ancillary requirement, it’s enough to show that the employee received a little bit of confidential information, and the information doesn’t have to be that confidential, or even important.
The trouble with this interpretation is that it threatens to render the statute’s “ancillary” requirement effectively meaningless. That brings me to the employee’s argument.
It don’t mean nothin’
In practice, the employee will almost always receive information that the employer claims is confidential. Let’s take a typical sales position. A sales person is always going to receive information about who her customers are, how much they pay, and what they buy. Usually you can’t get all that information just by Googling it. But it’s not the secret formula to Coke, either. The sales person could probably put together the same information using a web browser and a telephone.
The employee’s argument is that it’s not enough to show the employee received information that the employer can plausibly argue was confidential. The employer has to prove the information provided to the employee was actually confidential. This simply follows from Sheshunoff’s requirement that the employer prove that it performed its promise to provide the confidential information.
It cannot be enough, this argument says, for the employer merely to recite the “magic words” in the agreement and then say that the information is confidential. That would make the ancillary requirement virtually meaningless, and we should not assume the legislature included the ancillary requirement for no reason.
In other words, the requirement of providing confidential information must have some teeth to it.
This was the view of the federal district court in the recent case Miner, Ltd. v. Anguiano, No. EP-19-CV-00082-FM, 2019 WL 2290562, at *9 (W.D. Tex. May 29, 2019). The employer argued that the employee, an account executive, was privy to confidential information because the confidential information was required for the work to be performed. At the preliminary injunction hearing, the employer said “the confidential information includes things like business strategy, where are we going, pricing information, margins.”
That sounds like plausibly confidential information. But the court was not having it. “Plaintiff has not persuaded this court that this case involved the dissemination of ‘confidential information.’”
The district court cited DeSantis v. Wackenhut Corp., 793 S.W.2d 670 (Tex. 1990), where “the Texas Supreme Court rejected the plaintiff’s claim that its supposed confidential information—the identity of their customers, pricing policies, cost factors, and bidding strategies—was protectable under the confidentiality agreement.” The court in Wackenhut explained that the plaintiff “failed to show that its customers could not readily be identified by someone outside its employ, that such knowledge carried some competitive advantage, or that its customers’ needs could not be ascertained simply by inquiry addressed to those customers themselves.”
Applying Wackenhut, the federal district court found that the employer had failed to make a strong enough case that the information it provided the employee was truly confidential:
Like Wackenhut, Plaintiff has not shown its business practices, pricing, margin, or strategy were uniquely developed or not readily accessible. Furthermore, Plaintiff’s alleged “confidential information” is vague at best. Plaintiff struggles to identify and expand upon the alleged confidential information. The court will not infer a fact into existence. The Employment Agreement lacks consideration and is unenforceable.
Finding the non-compete unenforceable, the court in Miner, Ltd. v. Anguiano declined to issue a preliminary injunction to enforce it. (The court granted a preliminary injunction on other grounds.)
The quoted section from Miner suggests that application of the “ancillary” requirement in Texas non-compete litigation still raises a fundamental question: how confidential is “confidential”?
The Sheshunoff opinion said don’t worry too much about the “importance” or “true degree of confidentiality” of the information at issue. But Miner suggests that Texas judges are not going to assume the information is confidential just because the employer says it is. At least not until the Texas Supreme Court says they have to.
Like Richard Marx said, I’ll be right here waiting.
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.
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.