IP Law Daily, TRADE SECRETS—D. Wyo.: Jury must decide issues between competing legal training providers, (Sep 23, 2022)

By Brian Craig, J.D.

Genuine issues of material fact prevent granting summary judgment on misappropriation of trade secrets and copyright infringement claims asserted by the legal training provider.

The federal district court in Wyoming has concluded that a jury must decide whether a legal training program provider misappropriated trade secrets and infringed copyrights owned by a competing legal training program provider. In denying a motion for summary judgment, the court found that genuine issues of material fact exist concerning claims for misappropriation of trade secrets and copyright infringement asserted by The Trial Lawyers College, a nonprofit legal training program, against famed trial lawyer Gerry Spencer and a splinter legal training group he formed (The Trial Lawyers College v. Gerry Spences Trial Lawyers College at Thunderhead Ranch, September 22, 2022, Carson, J.).

The Trial Lawyers College is a nonprofit corporation that provides training programs to lawyers. Legendary trial lawyer Gerry Spence founded The Trial Lawyers College (“the College”). The College began operating in 1994 at the Thunderhead Ranch in Dubois, Wyoming. The College owns two federal trademark registrations: the “Trial Lawyers College” word mark and a design mark. The College also copyrighted a trial skills outline.

A dispute arose among board members of the College. Spence and another board member formed a new group, Gerry Spences Trial Lawyers College at the Thunderhead Ranch. The College sued the competing legal training provider, Spence, and other defendants (“the Spence defendants”) alleging trademark infringement, misappropriation of trade secrets, copyright infringement, civil conspiracy, and related claims. The College alleges that the Spence defendants misappropriated trade secrets by accessing and misusing confidential and proprietary computer files. The College further alleges the Spence defendants infringed copyrighted materials, including the trial skills outline. In 2020, the district court granted a preliminary injunction in favor of the College barring use of trademarks owned by the College. In January 2022, the U.S. Court of Appeals for the Tenth Circuit affirmed the entry of a preliminary injunction but narrowed the scope of the preliminary injunction. The Spence defendants then filed a motion for summary judgment on the claims for misappropriation of trade secrets, copyright infringement, damages, and civil conspiracy.

Misappropriation of trade secrets. The court concluded that genuine issues of material fact bar summary judgment on the misappropriation of trade secrets claims. The College asserted claims under both the federal Defend Trade Secrets Act and the Wyoming Uniform Trade Secrets Act. The College alleges that the defendants misappropriated trade secrets by accessing and misusing confidential and proprietary computer files, including alumni information. The Spencer defendants argued that they generally know and can readily attain the contact information for the alumni because they knew and taught them. The College countered that the defendants could not have created a list of every name in the database because the database contains nearly 5,500 names and the alumni spreadsheet contained around 1,800 graduates. The College also asserts that it uses the compiled data to communicate with groups of alumni and target its outreach for donations and future programs and classes. The court concluded that these factual issues prevent granting summary judgment on the trade secrets claims.

Copyright infringement. Next, the court concluded that material factual issues bar summary judgment on the copyright infringement claim involving the skills outline. The College presented evidence of owning a registered copyright for the skills outline. The defendants argued that the College cannot identify who prepared the outline and was not a “work made for hire” or based on original work. The College presented evidence that the defendants used the copyrighted skills outline while promoting its competing training program and circulated the copyrighted materials before a presentation at a continuing legal education seminar. Again, the court found that this conflicting evidence creates a factual issue requiring a trial.

Damages and civil conspiracy. Additionally, the court found that genuine issues of material fact bar summary judgment on damages and the civil conspiracy claim. The court previously denied the defendants’ motion to exclude the College’s expert. The expert’s assumptions in calculations may give rise to objections at trial and go to the weight of the evidence. The court also denied the motion for summary judgment on the civil conspiracy claim. The Spence defendants argued that conspiracy requires an underlying tort as an element. But the Spence defendants did not move for summary judgment on the trademark infringement claim—an intentional tort. Thus, sufficient evidence exists to create a genuine dispute of material fact on the civil conspiracy claim. Accordingly, the court denied the motion for summary judgment.

The Case is No. 1:20-cv-80-JMC.

Attorneys: Christopher K. Ralston (Phelps Dunbar LLP) for Trial Lawyers College. Beth Kushner (Von Briesen & Roper SC) for Gerry Spences Trial Lawyers College at Thunderhead Ranch and Gerry Spence Method at Thunderhead Ranch, Inc.

Companies: Trial Lawyers College; Gerry Spences Trial Lawyers College at Thunderhead Ranch; Gerry Spence Method at Thunderhead Ranch, Inc.

Cases: Copyright TradeSecrets WyomingNews GCNNews