Court of Appeals of Texas, Fourth District, San Antonio
Original Mandamus Proceeding 
Sitting: Sandee Bryan Marion, Chief Justice, Karen Angelini,
Justice Patricia O. Alvarez, Justice.
Patricia O. Alvarez, Justice.
FOR WRIT OF MANDAMUS CONDITIONALLY GRANTED
trial court signed a "Protective Order of
Confidentiality" submitted by the plaintiffs below/real
parties in interest here (hereinafter, the plaintiffs).
Cooper Tire & Rubber Company, the relator, filed a
petition for writ of mandamus complaining about the trial
court's entry of the plaintiffs' order, as opposed to
a proposed protective order submitted by Cooper Tire. We
conditionally grant Cooper Tire's petition.
plaintiffs were involved in an automobile accident, which
they contend was caused by the defective design and
manufacture by Cooper Tire of the tires on the
plaintiffs' vehicle. Plaintiffs allege the tires are
Sierradial A/S Plus, size 265/75R16 tires. Plaintiffs served
Cooper Tire with requests for admissions, interrogatories,
and production of documents. Cooper Tire objected to the
discovery based on the trade secret privilege. Both sides
submitted proposed protective orders. After the parties
attempted, but failed, to reach an agreement on the terms of
the protective order, the trial court signed the protective
order submitted by the plaintiffs. Cooper Tire filed a
petition for writ of mandamus, to which the plaintiffs
responded and Cooper Tire replied.
Tire asserts the protective order signed by the trial court
fails to provide adequate protections to maintain the secrecy
of its trade secrets and confidential information. More
specifically, Cooper Tire contends the order allows
plaintiffs to reveal Cooper Tire's confidential and trade
secret information to any witness without a showing that the
disclosure is relevant and necessary to a fair adjudication
of plaintiffs' claims and even if that witness refuses to
agree to maintain secrecy. Cooper Tire also asserts the order
permits the wide-spread dissemination and use of its
confidential information and trade secrets at the discretion
of plaintiffs' counsel, without a showing of relevance
and necessity. Finally, Cooper Tire complains about several
"procedural traps" it contends make protecting its
trade secrets more difficult.
plaintiffs respond to each of these arguments in turn, but,
as a preliminary matter, they also assert Cooper Tire has an
adequate remedy via an interlocutory appeal, and the petition
for writ of mandamus is not ripe for review because the trial
court has not yet compelled discovery. We address the
plaintiffs' preliminary arguments first.
OF MANDAMUS RELIEF
obtain mandamus relief, a relator generally must show both
that the trial court clearly abused its discretion and that
the relator has no adequate remedy by appeal. In re
Prudential Ins. Co. of Am., 148 S.W.3d 124, 135 (Tex.
2004) (orig. proceeding). A trial court clearly abuses its
discretion if it reaches a decision so arbitrary and
unreasonable as to amount to a clear and prejudicial error of
law, or if the trial court clearly fails to analyze the law
correctly or apply the law correctly to the facts. In re
Cerberus Capital Mgmt. L.P., 164 S.W.3d 379, 382 (Tex.
2005) (orig. proceeding) (per curiam). No adequate appellate
remedy exists if a trial court orders a party to produce
privileged trade secrets absent a showing of necessity.
In re Bass, 113 S.W.3d 735, 745 (Tex. 2003) (orig.
Tire asserts the trial court abused its discretion because
the protective order (1) permits dissemination of protected
materials to witnesses without a showing of necessity and who
refuse to agree to be bound by the protective order, and (2)
allows plaintiffs' attorneys to disseminate Cooper
Tire's trade secrets to third parties who have not
established a viable exception to the trade secret privilege.
plaintiffs assert Cooper Tire has an adequate remedy through
an interlocutory appeal via Texas Rule of Civil Procedure
76a, which sets the procedure for sealing court records. That
Any order (or portion of an order or judgment) relating to
sealing or unsealing court records shall be deemed to be
severed from the case and a final judgment which may be
appealed by any party or intervenor who participated in the
hearing preceding issuance of such order. The appellate court
may abate the appeal and order the trial court to direct that
further public notice be given, or to hold further hearings,
or to make additional findings.
Tex. R. Civ. P. 76a(8).
not agree with plaintiffs' argument that Cooper Tire may
raise its complaints in an interlocutory appeal under Rule
76a(8) because this case involves the scope of a protective
order and not a sealing order.
next assert this court does not have jurisdiction to consider
the scope of the protective order because no discovery has
yet been compelled. We disagree. Several appellate courts
have considered the scope of protective orders. See
Garcia v. Peeples, 734 S.W.2d 343, 345-47 (Tex. 1987)
(orig. proceeding) (considering whether trial court abused
its discretion by issuing the protective order, by failing to
modify the order, and by not prohibiting GMC from enforcing
several protective orders issued by courts in other states);
Am. Honda Motor Co., Inc. v. Dibrell, 736 S.W.2d
257, 258 (Tex. App.-Austin 1987, orig. proceeding) ("In
this mandamus proceeding, Honda requests this Court to order
Judge Dibrell to vacate or modify his order to deny
plaintiffs the right to disseminate discovered material to
anyone not connected with this action or in the alternative
to require the limitations requested by Honda in lieu of
paragraph nine."); In re State Farm Lloyds,
09-03-311 CV, 2003 WL 22149155, at *1 (Tex. App.-Beaumont
Sept. 18, 2003, orig. proceeding) (per curiam) (mem. op.)
(relator asked appellate court "to vacate a protective
order and to issue a different protective order that
restricts the use and disclosure of certain privileged
documents to the specific case before the trial court");
see also In re Cont'l Gen. Tire, Inc., 979
S.W.2d 609, 613 (Tex. 1998) (orig. proceeding) ("The
issue there was not whether trade secret documents should be
produced, but rather the scope of the protective order
accompanying the production.").
we conclude this court is not required to wait for the trial
court to compel discovery before determining whether this
protective order adequately protects the information sought.
Accordingly, we next address Cooper Tire's arguments.
BURDEN TO PROVE NECESSITY
Tire argues the trial court's protective order allows the
plaintiffs to obtain trade secret information without
satisfying their burden as set forth in Continental
General Tire. Cooper Tire contends it "has been
willing to agree that disclosure is relevant and necessary as
to certain persons, but Plaintiffs wish to expand that
group." Cooper Tire appears to argue that a party
seeking disclosure of trade secrets must satisfy their burden
on a witness-by-witness basis.
Rule of Evidence 507 provides a privilege entitling a party
to refuse to disclose its trade secrets "if the
allowance of the privilege will not tend to conceal fraud or
otherwise work injustice." Tex. R. Evid. 507(a);
Cont'l Gen. Tire, 979 S.W.2d at 610. Under Rule
507, the party resisting discovery of trade secrets must
first establish the information sought constitutes a trade
secret. Cont'l Gen. Tire, 979 S.W.2d at 610,
613. Once the party resisting discovery establishes the
information is a trade secret, the burden shifts to the
requesting party to establish the information is
"necessary for a fair adjudication of its claims."
Id. If the requesting party meets that burden, the
court should compel disclosure of the information subject to
an appropriate protective order. Id. at 613.
However, "[t]hat a trial court has ordered the parties
to enter into a protective order with respect to trade secret
information does not dispense with the requesting party's
burden to establish the necessity for the discovery of the
trade secret information to fairly adjudicate a claim or
defense." In re Hewlett Packard, 212 S.W.3d
356, 364 (Tex. App.-Austin 2006, orig. proceeding).
Tire contends the protective order in this case allows
plaintiffs' attorney to bypass the above test for all
witnesses plaintiffs choose to designate. According to Cooper
Tire, the plaintiffs in this case must "demonstrate with
specificity exactly how the lack of the information will
impair the presentation of the case on the merits to the
point that an unjust result is a real, rather than a merely
possible threat." See In re Bridgestone/Firestone,
Inc., 106 S.W.3d 730, 733 (Tex. 2003) (orig.
proceeding). We do not interpret the order as allowing the
plaintiffs to automatically obtain documents designated as
trade secrets. The protective order contains two provisions:
(1) a "Designation" provision that states how a
party may designate a document or a portion of a document as
a "Protectible Document, " and (2) a
"Challenge Designation" provision that sets forth
how a party may challenge the other party's designation.
"Challenge Designation" section places the burden
on the parties to resolve a dispute over how a document is
designated or obtain a ruling from the trial court resolving
the dispute. But, the burden to obtain a court ruling in the
absence of an agreement is placed on the party seeking
confidential treatment of its material. Pursuant to the
protective order, that party bears the burden to show
"good cause" exists "for confidential
treatment pursuant to" Federal Rule of Civil Procedure
26(c). In other words, here, Cooper Tire bears the burden to
obtain a hearing and show "good cause" under
Federal Rule 26(c) if the plaintiffs challenge Cooper
Tire's designation. However, the order does not place any
burden on the plaintiffs as the party seeking disclosure, nor
does the order expressly state the shifting burdens
annunciated in Continental General Tire.
Nevertheless, although the protective order neither expressly
places a burden on the plaintiffs who seek disclosure nor
requires application of the Continental General Tire
test, it does not expressly allow plaintiffs to automatically
obtain documents designated as trade secrets.
conclude that, although the protective order does not
expressly state the Continental General Tire test,
the order does not-as argued by Cooper Tire-allow plaintiffs
to obtain protected documents without meeting their
Continental General Tire burden. In other words, if
relator objects to disclosing protected documents, all
parties must satisfy their burden at a later hearing before
the trial court. See Hewlett Packard, 212 S.W.3d at
364 (holding, "[t]hat a trial court has ordered the
parties to enter into a protective order with respect to
trade secret information does not dispense with the