Marshall Hunn v. Dan Wilson Homes, Incorporated, e
789 F.3d 573
5th Cir.2015Background
- Lack, a draftsman employed by Hunn Designs, resigned mid-project on October 5, 2011, while working on four Dan Wilson Homes plans.
- Wilson (Dan Wilson Homes) hired Lack to complete the plans after Lack's resignation, believing plans were homeowners’ property and with Lack intending to finish them within a two-week notice period.
- Hunn claimed Lack and Wilson secretly agreed for Lack to leave Hunn and work for Wilson, alleging multiple claims including copyright infringement and fiduciary breaches.
- The district court granted summary judgment on several counts and, after a bench trial, ruled in favor of Appellees on remaining claims; the district court also awarded attorney’s fees to Appellees.
- Hunn appeals on breach of fiduciary duty against Lack? and others, as well as copyright breach and Lanham Act claims; the panel affirms.
- Key issue at trial included whether a secret agreement existed, whether Lack breached fiduciary duties by sharing plans, and whether an implied license allowed use of plans for construction.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Breach of contract: existence of secret agreement | Hunn asserts Lack and Wilson had a pre-resignation pact to work together. | Lack and Wilson deny any secret agreement; Lack intended to finish plans while still at Hunn, with no job offer from Wilson. | No clear error; no secret agreement found; district court’s finding affirmed. |
| Breach of fiduciary duty by Lack | Lack disclosed unfinished plans to Wilson, breaching fiduciary duties; Wilson knowingly participated. | No fiduciary breach since duties ended at quit and no confidential information was disclosed. | No fiduciary breach; district court did not clearly err; Lack not liable, Wilson not liable. |
| Computer Fraud and Abuse Act | Lack copied files to home computer to benefit personally. | Lack did not exceed authorized access; files were transferred during employment and for project purposes. | No CFAA violation; district court affirmed summary judgment for Lack. |
| Non-compete enforceability | At-will promise plus confidential information implied an enforceable non-compete. | No otherwise enforceable agreement; at-will contract insufficient; relied on Texas Covenants Not to Compete Act. | Non-compete unenforceable; district court's grant of summary judgment for Lack affirmed. |
| Copyright infringement and implied license | Hunn owns copyrights on plans; defendants infringed by using plans. | Implied license existed allowing use for building four homes; files identical to physical copies; AutoCAD formats irrelevant. | Implied license existed; no infringement proven; district court affirmed copyright-related ruling. |
Key Cases Cited
- Arete Partners, L.P. v. Gunnerman, 594 F.3d 390 (5th Cir. 2010) (fact-finder credibility and clear-error standard on district court findings)
- Graham Mortg. Corp. v. Hall, 307 S.W.3d 472 (Tex. App.—Dallas 2010) (elements of breach of fiduciary duty)
- Light v. Centel Cellular Co. of Tex., 883 S.W.2d 642 (Tex. 1994) (ancillary-implied promises to support non-compete; later abrogated by Marsh)
- Alex Sheshunoff Mgmt. Servs., L.P. v. Johnson, 209 S.W.3d 644 (Tex. 2006) (covenant not to compete ancillary to enforceable agreement when employer provides confidential information)
- Fielding v. Marsh & Co., 289 S.W.3d 844 (Tex. 2009) (implied promises when performance requires confidential information)
- Marsh USA Inc. v. Cook, 354 S.W.3d 764 (Tex. 2011) (expansive definition of 'ancillary to or part of' in non-compete context)
- I.A.E., Inc. v. Shaver, 74 F.3d 768 (7th Cir. 1996) (implied nonexclusive license to use drawings in project)
- Phillips v. Frey, 20 F.3d 623 (5th Cir. 1994) (ownership and licensing considerations in copyright contexts)
- Galiano v. Harrah’s Operating Co., 416 F.3d 411 (5th Cir. 2005) (attorney’s fee awards under Copyright Act review of district court discretion)