United States District Court, N.D. Texas, Dallas Division
MEMORANDUM OPINION AND ORDER
J. BOYLE, UNITED STATES DISTRICT JUDGE
intellectual-property dispute arises between competitors in
the team-building industry. Defendant Robert Jackson worked
for Plaintiff The Leadership Institute (TLI), but now he
works for Defendant Magnovo Training Group (Magnovo).
Jackson's departure from TLI triggered this controversy
because TLI and its owner, Plaintiff Doug Staneart, believe
Jackson absconded with vital trade secrets and that Jackson
and Magnovo are using TLI's federally registered
trademarks. Jackson and Magnovo respond that Staneart and TLI
have abused the legal process, defamed Jackson, and infringed
Magnovo's federally registered copyrights, and they ask
the Court to cancel TLI's trademarks. Robert
Jackson seeks partial summary judgment on the
plaintiffs' claims against him, and the plaintiffs seek
partial summary judgment on the defendants' equitable
defenses and counterclaims. The Court DENIES
Jackson's motion for partial summary judgment (Doc. 180)
and GRANTS in part and
DENIES in part the plaintiffs' motion
for partial summary judgment (Doc. 177).
Staneart created TLI, which, since 2002, has been in the
business of organizing corporate charity events and
conducting corporate-leadership, team-building, and
public-speaking seminars. Doc. 30, Fourth Am. Compl.,
¶¶ 29-30. For example, TLI conducts build-a-bike
events-to which businesses pay to send their employees for
the opportunity to work together to build bicycles that are
donated to charity. Id. at ¶¶ 30-32. The
experience simultaneously promotes team work and charitable
giving. Id. at ¶ 31.
registered “Build-A-Bike” and
“BUILD-A-BIKE” as service marks with the United
States Patent and Trademark Office (USPTO) and subsequently
assigned the build-a-bike marks to TLI. Id. at
¶¶ 32-34. The USPTO put the marks on the
Supplemental Register on November 18, 2008, Doc. 179-2,
App'x to Pls.' Mot. Partial Summ. J., Ex. 1, 47, and
on the Principal Register on June 3, 2014. Id. at 49.
The plaintiffs have attempted to protect their trademark
rights by sending cease-and-desist letters, Doc. 179-12,
App'x to Pls.' Mot. Partial Summ. J., Ex. 11, 226,
271; Doc. 30, Fourth Am. Compl., ¶ 89, and by recovering
internet domain names resembling the build-a-bike marks, Doc.
179-10, App'x to Pls.' Mot. Partial Summ. J., Ex. 9.
TLI also filed a lawsuit alleging trademark infringement
against a company TLI thought was using the build-a-bike
marks. Doc. 186-23, App'x to Defs.' Summ. J. Resp.,
plaintiffs claim also to have spent substantial time, labor,
and money in the development of trade secrets-namely,
customer lists. Doc. 30, Fourth Am. Compl., ¶¶
39-41. On TLI's customer lists are over 400 Fortune 500
companies and contacts at those companies the plaintiffs say
are “extremely difficult and costly to identify.”
Id. at ¶¶ 42-43. TLI keeps its customer
lists secret by storing them on a password-protected internal
system. Id. at ¶ 46. Only employees with a
specific need can access TLI's customer list, and
TLI's employees and independent contractors agree to
non-compete clauses prohibiting them from using TLI's
customer lists within fifteen months after they leave TLI.
Id. at ¶¶ 47-48.
Jackson began to teach seminars for TLI in December 2006 as
an independent contractor. Doc. 30, Fourth Am. Compl., ¶
52. Between then and January 2009, Jackson conducted
public-speaking seminars for TLI and became TLI's Vice
President of Instruction. Id. But in January 2009,
TLI terminated its relationship with Jackson because it
believed Jackson was operating a company called
Magnovo in direct competition with TLI.
Id. at ¶ 54. Jackson nonetheless returned in
September, October, and November 2010, asking to rejoin TLI
as an independent contractor. Id. at ¶¶
55-57. In November 2010, Staneart offered Jackson the
opportunity to conduct a TLI seminar. Id. at ¶
57. Jackson agreed to become an independent contractor, and
the plaintiffs allege that he signed an
independent-contractor agreement that stated
Any client list developed through advertising or marketing
from TLI, the course materials and instructional techniques
used, and the goodwill generated by this client list and
instruction materials and techniques are the intellectual
property of TLI. So by approving to the terms of this
agreement, you also agree not to use the client list
developed by you while working as an agent of TLI, or client
lists developed by other TLI instructors, to compete with TLI
for a period of 18 months after the termination of this
Id. at ¶¶ 58-60. Jackson claims he never
signed this agreement. Doc. 180, Robert Jackson's Mot.
Partial Summ. J., ¶ 5.
plaintiffs allege that Jackson wronged them in various ways
after he signed the agreement but before he left TLI in
August 2013-a time period during which Jackson could access
TLI's customer lists. Doc. 188-5, App'x to Pls.'
Summ. J. Resp., Ex. D, 33-34. While under agreement with TLI,
Jackson solicited TLI's customers for business and
invoiced them for seminars he would teach in August 2013
after leaving TLI. Doc. 188-6, App'x to Pls.' Summ.
J. Resp., Ex. E, 56, 66-69, 82, 88, 90, 92. According to TLI,
Jackson even emailed Colette Martin, who also left TLI for
Magnovo, a compilation of TLI's customer-contact
information. Doc. 188-2, App'x to Pls.' Summ. J.
Resp., Ex. A.
denies the plaintiffs' allegations. He says he never
copied, downloaded, or used TLI's customer or pricing
information to compete with TLI while under agreement with
TLI. Doc. 151, App'x to Robert Jackson's Mot. Partial
Summ. J., 2. Rather, Jackson says Magnovo developed websites
and invested in search-engine optimization to gain clients.
Id. at 4. Regarding Novartis and Royal Caribbean,
Jackson admits to agreeing to do presentations for them while
he was still under agreement with TLI but says the companies
came to him; he claims not to have actively sought speaking
engagements with them while he was with TLI. Id. at
2-4. Jackson claims also that his friend Bert Von Mitendorf
introduced him to Larry Pimental, who worked for cruise lines
including Royal Caribbean, and that Pimental asked Jackson to
provide workshops to the cruise lines. Id. Jackson
also complains that statements Staneart made to others,
including Colette Martin, regarding Jackson's alleged use
of TLI's trade secrets defamed him. Doc. 186-1, App'x
to Robert Jackson's Mot. Partial Summ. J., 3-4.
also claims to have some intellectual property of its own and
says the plaintiffs have infringed it. Doc. 131, Defs.'
First Am. Answer, Defenses, & Countercls., ¶¶
268-75. Magnovo has registered copyrights pertaining to the
Bicycle-Team-Building-Events.com website and “Magnovo
Photo 1.” Doc. 186-24, App'x to Defs.' Summ. J.
Resp., Ex. X, 254. The defendants allege that the plaintiffs
have caused TLI's websites to “frame”
Magnovo's Bicycle-Team-Building-Events.com website, which
means the plaintiffs caused Magnovo's website to appear
within and under the plaintiffs' registered domain names.
Id. at 255. The defendants accuse the plaintiffs
also of fraudulently applying to register
“Magnovo” as a trademark. Doc. 186-16, App'x
to Defs.' Summ. J. Resp., Ex. P., 115-16. But after the
defendants challenged the plaintiffs' application, the
plaintiffs withdrew it. Doc. 186-4, App'x to Defs.'
Summ. J. Resp., Ex. D., 59-60.
September 2013, the plaintiffs sued the defendants in Texas
state court. Doc. 179-16, App'x to Pls.' Mot. Partial
Summ. J., Ex. 16, 323-24. But in May 2014, the plaintiffs
nonsuited their state-court action. Id. at
335-36. Subsequently, on October 2, 2014, the plaintiffs
filed this lawsuit. Doc. 1, Compl. In the plaintiffs'
Fourth Amended Complaint, filed on August 8, 2016, the
plaintiffs accuse the defendants of 1) infringing a federally
registered service mark under 15 U.S.C. § 1114(1); 2)
statutory infringement and false designation of origin under
15 U.S.C. § 1125; 3) violating the Anticybersquatting
Consumer Protection Act, specifically 15 U.S.C. §
1125(d); 4) unfairly competing with the plaintiffs under 15
U.S.C. § 1125(a); 5)trademark infringement under Texas
law; 6) unfair competition under Texas law; 7) unjust
enrichment under Texas law; and 8) false advertising under
Texas law. Doc. 130, Fourth Am. Compl., ¶¶ 104-94.
And the plaintiffs accuse Jackson under Texas law of 1)
unfair competition by misappropriation; 2) misappropriating
trade secrets; 3) breach of contract; and 4) tortious
interference with prospective business relations.
April 21, 2017, the defendants filed their First Amended
Answer, Defenses, and Counterclaims in which they generally
denied the plaintiffs' factual allegations and raised
numerous legal and equitable defenses. Doc. 131, Defs.'
First Am. Answer, Defenses, & Countercls. The defendants
also counterclaimed that the plaintiffs committed 1) abuse of
process, 2) tortious interference with business relations, 3)
defamation, and 4) federal copyright infringement.
Id. at ¶¶ 230-74. The defendants also ask
the Court to cancel TLI's federally registered marks and
for attorney fees. Id. at ¶¶
parties on both sides have defensively moved for partial
summary judgment. Jackson asks the Court to grant him summary
judgment on the plaintiffs' state-law claims against him.
Doc. 180, Jackson's Mot. Partial Summ. J. And the
plaintiffs ask the Court to grant summary judgement in their
favor on the defendants' counterclaims and equitable
defenses. Doc. 177, Pls.' Mot. Partial. Summ. J.. The
plaintiffs' federal claims against the defendants are not
the subject of either of the motions before the Court.
must grant summary judgment “if the movant shows that
there is no genuine dispute as to any material fact and the
movant is entitled to judgment as a matter of law.”
Fed.R.Civ.P. 56(a). A dispute “is ‘genuine'
if the evidence is sufficient for a reasonable jury to return
a verdict for the non-moving party.” Burrell v. Dr.
Pepper/Seven Up Bottling Grp., 482 F.3d 408, 411 (5th
Cir. 2007). And a fact “is ‘material' if its
resolution could affect the outcome of the action.”
summary-judgment movant bears the burden of proving that no
genuine issue of material fact exists. Latimer v.
Smithkline & French Labs., 919 F.2d 301, 303 (5th
Cir. 1990). So the movant must identify “those portions
of the pleadings, depositions, answers to interrogatories,
and admissions on file, together with affidavits, if any,
which it believes demonstrate the absence of a genuine issue
of material fact.” Celotex Corp. v. Catrett,
477 U.S. 317, 323 (1986) (internal quotation marks omitted).
Once the movant has produced evidence on an element or claim
or alleged the non- movant has no evidence, the non-movant
must “identify specific evidence in the record”
and “articulate the precise manner in which that
evidence supports [its] claim” to show that a fact
issue exists. Ragas v. Tenn. Gas Pipeline Co., 136
F.3d 455, 458 (5th Cir. 1998). And although the Court views
evidence in the light most favorable to the non-movant when
determining whether a genuine issue exists, Munoz v.
Orr, 200 F.3d 291, 302 (5th Cir. 2000), mere
“metaphysical doubt as to material facts, ”
“conclusory allegations, ” “unsubstantiated
assertions, ” or a mere “scintilla of
evidence” will not save a non-movant from summary
judgment, Little v. Liquid Air Corp., 37 F.3d 1069,
1075 (5th Cir. 1994) (per curiam)(internal citations and
quotation marks omitted).
Robert Jackson's Motion for Partial Summary Judgment
on the Plaintiffs' State-Law Claims Against
plaintiffs claim that by using TLI's customer lists and
pricing information to compete with TLI, Jackson committed
1. Unfair competition by misappropriation;
2. Misappropriation of trade secrets;
3. Breach of contract; and
4. Tortious interference with prospective business
Doc. 130, Fourth Am. Compl., ¶¶ 138-82.
his motion for summary judgment, Jackson claims the
plaintiffs have failed to present evidence that Jackson used
TLI's customer list, Doc. 182, Jackson's Mot. Partial
Summ J. Br., ¶¶ 26-36, and he presents as
summary-judgment evidence his own sworn declaration in which
he denies that he used TLI's customer lists and claims to
have developed Magnovo's business with TLI's clients
via personal relationships, websites, and search engine
optimization. Doc. 181, App'x to Jackson's
Mot. Partial Summ. J., ¶¶ 6-12.
their part, the plaintiffs respond with summary-judgment
evidence that they claim creates a fact issue regarding
whether Jackson used TLI's customer list. The plaintiffs
have attached to their motion evidence that
• Colette Martin, a Magnovo colleague of Jackson's
who also left TLI, testified that, while Jackson was a TLI
independent contractor, he had access to TLI's customer
list, customer-contact information, pricing list, training
materials, and other confidential information, Doc. 188-5,
App'x to Pls.' Summ. J. Resp., Ex. D, 33-34;
• while Jackson was a TLI independent contractor,
Jackson arranged to conduct seminars for at least three of
TLI's customers-Novartis Consumer health, Inc., Royal
Caribbean Cruise Line, and StatOil Gulf Services-after
leaving TLI, Doc. 188-6, App'x to Pls.' Summ. J.
Resp., Ex. E, 45, 56-62, 66-69, 88-90, 92;
• two of the customers to which Jackson presented
seminars shortly after leaving TLI are on TLI's
customer-list excerpt, Doc. 188-14, App'x to Pls.'
Summ. J. Resp., Ex. M, 310;
• after leaving TLI, Jackson emailed Colette Martin a
list of his contacts, Doc. 188-2, App'x to Pls.'
Summ. J. Resp., Ex., A, all of which are on TLI's
customer list, Doc. 188-14, App'x to Pls.' Summ. J.
Resp., Ex. M;
• all of the customer contacts on the disclosed excerpt
of TLI's list, Doc. 188-13, App'x to Pls.' Summ.
J. Resp., Ex. L, appear also on Magnovo's customer list,
Doc. 188-14, App'x to Pls.' Summ. J. Resp., Ex.
• on both TLI's and Magnovo's customer lists,
one customer entry lists the individual contact only as
Rachel, and on both TLI's list, Doc. 188-13, App'x to
Pls.' Summ. J. Resp., Ex. L, 293, and Magnovo's list,
Doc. 188-14, App'x to Pls.' Summ. J. Resp., Ex. M.,
309, the entry lacks a last name for Rachel; and
• proposals Jackson produced, Doc. 188-12, App'x to
Pls.' Summ. J. Resp., Ex. K, reveal that Jackson sent 500
proposals to over 200 companies on the plaintiffs'
customer list, Doc. 188- ...