To maintain its protection under Texas law, how do you keep a trade secret, secret?

Under §134A of the Texas Civil Practice and Remedies Code, also known as the Texas Uniform Trade Secrets Act or TUTSA, a trade secret is:

“Information [that] derives independent economic value, actual or potential, from not being generally known to, and not being readily ascertainable through proper means by, another person who can obtain economic value from the disclosure or use of the information.”

To protect a trade secret, TUTSA also specifies that the owner must take reasonable measures to keep the information hidden from others.

What Are “Reasonable Measures” to Maintain a Trade Secret?

“Business owners have a duty to protect their trade secrets," explains Hendershot Cowart's Managing Partner Trey Hendershot. "If an owner doesn’t take steps to protect the information, it’s not a trade secret.”

Here are some examples of reasonable measures to protect and maintain your trade secrets:

• Asking employees, customers, and vendors with access to confidential information to sign a confidentiality or non-disclosure agreement (NDA)
• Training employees on how to handle trade secrets; specifically addressing the handling and confidentiality of trade secrets in the employee handbook
• Take care with transmitting or sharing information electronically. If you use Zoom or other web conferencing applications, require passwords for participants and take other precautions.
• Conducting closing interviews to remind employees of their legal obligations to protect trade secrets
• Make sure departing employees return information and company-owned devices, and delete sensitive information from personal devices
• Labeling information as “proprietary and confidential”
• Storing physical information securely, i.e., requiring security badges to access file rooms
• Storing digital information securely, i.e., saving to a password-protected server
• Limiting access to information on a “need-to-know basis”
• Tracking and recording which employees have access to a trade secret

To maintain a trade secret, you must keep the secret with as few people as possible and take steps to protect it in both physical and digital spheres.

Which Actions May Invalidate Consideration of Information as a Trade Secret?

Something as simple as revealing information in the wrong place at the wrong time could invalidate its consideration as a trade secret. If you publicly disclose the information (unintentionally or on purpose), it is no longer a trade secret, and Texas courts look down on carelessness.

Consider these examples; some taken directly from previous court cases:

• If others can “reverse engineer” your trade secret or discover the secret through research, it can be disqualified as a trade secret.
• If an employee refuses to sign a confidentiality agreement and you share the information anyway, the court may find your measures were not reasonable.
• If neither your employee handbook, employee training, nor employment agreements address the protection of confidential information, it may be a challenge to convince the courts that you made reasonable efforts to protect it.

TUTSA only allows plaintiffs to file lawsuits when trade secrets were acquired through improper means, used or disclosed without consent, or otherwise misappropriated.

Can You Sue Over a Trade Secret?

Yes. You can ask the courts to issue an order (called an injunction) to stop a former employee, vendor, or customer from using your confidential information, and you can sue for damages. First, you must prove that the information in question was a trade secret – and that you took steps to protect it.

In Texas, courts usually consider the following questions when determining whether information constitutes a trade secret:

• How extensively is the information known outside of the business?
• How extensively is the information known within the business (among employees and others involved in the business)?
• What measures did the business take to guard the secrecy of the information?
• How valuable is the information to the business and its competitors?
• How difficult or expensive was developing the information?
• How easy was it for others to acquire or duplicate the information?

What Are Some Examples of Trade Secrets?

Common trade secrets include:

• Client lists
• Financial data
• Patents
• Prototypes
• Patterns
• Codes
• Methods
• Techniques
• Formulas
• Scientific, technical, or engineering information

If someone misuses your valuable, well-protected trade secret, you can ask the courts for injunctive relief and sue for damages. Of course, you will not only have to prove that your information was a trade secret, but you will also have to prove the misappropriation of that secret.