Affirmed in part, Reversed and Modified; Opinion Filed August 21, 2014.




                                            S   In The
                                 Court of Appeals
                          Fifth District of Texas at Dallas
                                        No. 05-13-00854-CV

                HALLIBURTON ENERGY SERVICES, INC., Appellant
                                   V.
           AXIS TECHNOLOGIES, LLC AND BRIAN WILKINSON, Appellees

                        On Appeal from the 95th Judicial District Court
                                    Dallas County, Texas
                            Trial Court Cause No. DC-11-00267-D

                                             OPINION
                             Before Justices Fillmore, Evans, and Lewis
                                     Opinion by Justice Evans
        In this trade secret misappropriation case, Halliburton Energy Services, Inc. appeals from

the trial court’s refusal to award it a permanent perpetual injunction against Axis Technologies,

LLC and Brian Wilkinson after the jury found in favor of Halliburton on all its claims.

Halliburton further challenges the trial court’s failure to render a declaratory judgment in its

favor on the issue of ownership of the property made the subject of the suit. We conclude the

trial court erred in failing to award Halliburton all the relief it requested.

                                           FACTUAL BACKGROUND

        Halliburton Energy Services, Inc. designs, manufactures, and sells products related to oil

and gas exploration and production. Among the products made and sold by Halliburton are

wellbore plugging devices. Brian Wilkinson worked for Halliburton from 1998 to 2008 in the

business unit principally responsible for the design and manufacturing of the company’s
wellbore plugs. As a technician in that unit, Wilkinson was given access to highly confidential

trade secret information including engineering drawings, materials specifications, and vendor

information.

       Wilkinson signed a contract entitled “Patent Agreement of Halliburton Company” as part

of his employment with the company. Under the Patent Agreement, Wilkinson agreed that,

during and after the term of his employment with the company, he would not “use for himself or

others, or divulge to others any secret or confidential information, knowledge, or data of

Halliburton, obtained as a result of his employment.” In addition, Wilkinson agreed to disclose

and assign the rights to anything he invented, in whole or in part, during his employment that

related to company business.       Finally, Wilkinson agreed to deliver to Halliburton “all

memoranda, notes, records, drawings or other documents made or compiled by him or made

available to him while employed by [Halliburton] concerning any process, apparatus, or product

manufactured, used, developed, investigated, or considered by [Halliburton]” upon termination

of employment as “[Halliburton’s] property.”

       Three months before Wilkinson left his employment with the company, he began taking

company documents and using the company’s confidential trade secret information to design and

begin production of wellbore plugs for Axis Technologies, LLC. Halliburton presented evidence

that Wilkinson continued to obtain confidential information from another Halliburton employee

after he left the company and, within three weeks after leaving, Wilkinson hosted a commercial

demonstration of a wellbore plug he developed for Axis. Axis ultimately sold over 1,300

wellbore plugs resulting in estimated revenues of $2.1 million and profits exceeding $500,000.

       Halliburton brought this suit in January 2011 alleging claims against Wilkinson and Axis

for misappropriation of trade secrets and breach of contract arising out of “a product or series of

products known as the Axis ‘BLACK’ Bridge/Frac Plug” which Halliburton alleged Wilkinson

                                               –2–
manufactured and marketed through Axis.         Halliburton later added a claim for breach of

fiduciary duty. Halliburton sought monetary damages and attorney’s fees as well as equitable

relief including a permanent injunction, declaratory judgment, and constructive trust. A jury

unanimously found in favor of Halliburton on all its claims and awarded damages in the amount

of $521,360 against Axis and $191,940.51 against Wilkinson. Halliburton filed a motion for

judgment on the verdict in which it sought, in addition to judgment on the verdict for the

monetary relief, both declaratory and injunctive relief under which Wilkinson and Axis would be

permanently enjoined from using Halliburton’s trade secrets and would be required to deliver to

Halliburton all designs and other related materials that served as the basis for the wellbore plugs

and component parts built by Wilkinson.

       The trial court held a hearing on Halliburton’s motion and signed a judgment on August

6, 2012 awarding monetary damages in the amount found by the jury. The judgment also

contained a permanent injunction prohibiting Wilkinson and Axis from disclosing Halliburton’s

trade secrets and ordered Wilkinson and Axis to turn over all hard copies of documents, data, and

information related to the wellbore plugs. With respect to use of the trade secrets, however, the

judgment only enjoined Wilkinson and Axis for a period of ten months. The court did not render

any declaratory relief.   Halliburton filed a motion seeking to modify and supplement the

judgment contending the ten month injunction provided inadequate relief and that it was entitled

to a declaratory judgment as to its ownership of the wellbore plug designs. Halliburton further

requested that Wilkinson and Axis be ordered to turn over and delete all electronic files

containing information related to the plugs. On May 23, 2013, the trial court signed a second

final judgment extending the duration of the injunction on Wilkinson and Axis’s use of the trade

secrets until November 2013 and adding an order that they provide Halliburton with copies of all




                                               –3–
electronically stored or maintained information related to the plugs.      Other than these two

modifications, the judgment was unchanged. Halliburton then filed this appeal.

                                               ANALYSIS

A. Injunctive Relief for Trade Secret Misappropriation

       In Halliburton’s first issue on appeal, it contends the trial court erred in limiting the

injunction on appellees’ use of the misappropriated trade secrets to only eighteen months from

the date of the jury’s verdict. Halliburton argues that only a permanent perpetual injunction will

remove the competitive advantage gained by appellees and provide Halliburton with complete

relief from the consequences of the misappropriation.

       1. Standard of Review

       We review the trial court’s grant or refusal of a permanent injunction to determine

whether it clearly abused its discretion. Priest v. Tex. Animal Health Comm’n, 780 S.W.2d 874,

875 (Tex. App.—Dallas 1989, no writ). The trial court abuses its discretion when it acts

arbitrarily and unreasonably, without reference to guiding rules or principles, or misapplies the

law to the established facts of the case. Triantaphyllis v. Gamble, 93 S.W.3d 398, 402 (Tex.

App.—Houston [14th Dist.] 2002, pet. denied). A trial court’s clear failure to analyze and apply

the law correctly constitutes an abuse of discretion. See Webb v. Glenbrook Owners Ass’n, Inc.,

298 S.W.3d 374, 380 (Tex. App.—Dallas 2009, no pet.).

       2. Established Facts

       Neither Wilkinson nor Axis appealed from the trial court’s judgment. Accordingly, the

following facts, as found by the jury based on the jury instructions, must be taken as established

by the evidence:




                                               –4–
        (i) Wilkinson and Axis made unauthorized use of Halliburton’s trade secrets. 1

        (ii) The trade secrets that Wilkinson and Axis misappropriated gave them an
        opportunity to obtain an advantage over competitors who did not know or use the
        misappropriated material.

        (iii) The misappropriated trade secrets did not involve matters of public
        knowledge, readily available, or of general knowledge in the industry at the time
        of the misappropriation.

        (iv) The misappropriated trade secrets involved a “substantial element” of
        secrecy that Halliburton took reasonable measures to protect.

        (v) Wilkinson and Axis’s use of the misappropriated trade secrets was more than
        slight and their designs cannot be said to have been derived from other sources.

        (vi) Wilkinson failed to comply with his fiduciary duty to Halliburton and Axis
        knowingly participated in Wilkinson’s breach of fiduciary duty.

    1
      Factual determinations (i)–(v) above are from the jury’s answers of “yes” to both parts of Question 1 in the
jury charge which asked whether Wilkinson or Axis had misappropriated Halliburton’s trade secrets. The question
instructed the jury as follows:
                 “Trade secret” means any process, compilation of information, formula, pattern, or
        device that gives a business an opportunity to obtain an advantage over competitors who do not
        know or use it. In order to be a “trade secret,” there must be a substantial element of, though not
        absolute, secrecy and a party must take reasonable measures to protect the secrecy of its trade
        secrets. Matters of public knowledge, readily available, or of general knowledge in an industry at
        the time of the alleged misappropriation arc not “trade secrets.” A “trade secret” need not be
        novel or unique and it may consist of a combination of simple and otherwise known components.
        The fact that a trade secret can be discovered by experimentation and other lawful means does not
        deprive its owner of protection from those acquiring it by improper means. The personal
        efficiency, inventiveness, skills and experience that an employee develops through work belong to
        the employee, not the former employer; however, trade secrets developed by the employee in the
        course and scope of his employment, and trade secrets disclosed to the employee by the employer,
        are the property of the employer, not the employee.
                Misappropriation of a trade secret does not require that defendant use the secret in exactly
        the form in which defendant received it; however, it must be substantially derived therefrom. A
        defendant may be liable even if he uses it with modifications or improvements upon it effected by
        his own efforts. Liability is avoided when the contribution of the trade secret is slight and the
        defendant’s process can he said to have been derived from the other sources.
                  A “confidential relationship” is a relationship where one party reposes confidence and
        special trust in another and is justified in placing such trust and confidence in the other party. The
        relationship is based upon fair dealing and good faith, rather than legal obligation. The question is
        whether the recipient of the information knew or should have known that the information was a
        trade secret and that disclosure was made in confidence.
                 “Improper means” are means that fall below the generally accepted standards of
        commercial morality and reasonable conduct. The mere fact that knowledge of a product might be
        acquired through lawful means such as inspection, experimentation, and analysis does not
        preclude protection from those who would secure the knowledge by unfair means.




                                                        –5–
       (vii) Wilkinson failed to comply with the Patent Agreement.

With these findings, the issues of the existence of Halliburton’s trade secrets and appellees’

wrongdoing with respect to those secrets were resolved in Halliburton’s favor. The findings are

binding on this Court. See Solares v. Solares, 232 S.W.3d 873, 880 (Tex. App.—Dallas 2007,

no pet.) (citing Exxon Corp. v. Tyra, 127 S.W.3d 12, 16 (Tex. App.—Tyler 2003, pet. denied));

see also Bianco v. Globus Med., Inc., No. 2:12-CV-00147-WCB, 2014 WL 2980740, at *4 (E.D.

Tex. July 2, 2014) (evidence inconsistent with jury findings cannot be considered in court’s

determination of propriety of equitable relief granted). Our review of this issue is limited,

therefore, to determining whether the trial court acted arbitrarily and unreasonably or incorrectly

applied the law to the facts as found by the jury when the trial court declined to enjoin appellees

perpetually from using the misappropriated trade secrets.

       3. Applicable Law

       The appropriateness of granting injunctive relief against those who have misappropriated

trade secrets has long been recognized. See Hyde Corp. v. Huffines, 314 S.W.2d 763 (Tex.

1958); Elcor Chem. Corp. v. Agri-Sul, Inc., 494 S.W.2d 204 (Tex. App.—Dallas 1973, writ ref’d

n.r.e.). The scope of the injunctive relief “must, of necessity, be full and complete so that those

who have acted wrongfully and have breached their fiduciary relationship, as well as those who

willfully and knowingly aided them in doing so, will be effectively denied the benefits and

profits flowing from the wrongdoing.” Elcor, 494 S.W.2d at 212. The purpose of an injunction

is to remove the advantage created by the misappropriation. See Bryan v. Kershaw, 366 F.2d

497, 502 (5th. Cir. 1966). Although an injunction should ordinarily operate as a corrective rather

than a punitive measure, if a choice must be made between the possible punitive operation of an

injunction and the failure to provide adequate protection of a recognized legal right, we must

follow the course that provides adequate protection because “the undoubted tendency of the law


                                               –6–
has been to recognize and enforce higher standards of commercial morality in the business

world.” Hyde, 314 S.W.2d at 773.

       Historically, the “usual equitable order” in a trade secret misappropriation case is a

perpetual injunction against the wrongdoer. See id. at 780–81. Appellees contend that the trend

has been away from perpetual injunctions in favor of more limited “lead time” injunctions. After

reviewing the relevant case law, however, we discern no such trend. See Molex, Inc. v. Nolen,

759 F.2d 474, 477 (5th Cir. 1985). Instead, there has merely been a recognition that a defendant

may, in some cases, provide sufficient proof to show that an injunction of lesser duration than a

perpetual injunction is adequate. See Research Equip. Co. Inc. v. C. H. Galloway & Scientific

Cages, Inc., 485 S.W.2d 953, 956 (Tex. App.—Waco 1972, no writ). For example, where a

defendant shows at trial that the trade secrets at issue could be reverse engineered by someone

with no background in the business or the confidential information was publically disclosed after

the misappropriation, a trial court has discretion to grant a limited time injunction. Id. (ninety-

day injunction upheld where design and construction of product was “based on familiar

mechanical means and principles that are quite obvious to and easy to imitate by any reasonably

experienced craftsman that might see one.”). But the overriding concern remains the protection

of the plaintiff’s recognized legal rights. See Hyde, 314 S.W.2d at 773. The burden is on the

defendant to show that an injunction for a period of time less than perpetual would be sufficient

to achieve that end. Id. at 776.

       4. Appropriate Injunctive Relief

       The trade secrets claimed by Halliburton in this case involve, among other things, the

results of certain tests done to develop its wellbore plugs as well as the use of a specific alloy, the

plugs’ dimensions, tolerances, heat treatment specifications, and their materials specifications.

Appellees contend they presented ample evidence at trial, including patent applications and

                                                 –7–
expired patents, demonstrating the “common and public nature of the information that

Halliburton sought to protect.” The jury rejected this and similar arguments made by appellees

at trial when the jury found in favor of Halliburton and awarded Halliburton the full amount of

monetary damages it sought. In doing so, the jury necessarily found that Halliburton’s claimed

trade secrets did not involve matters of public knowledge, readily available, or of general

knowledge in the industry at the time of the misappropriation. 2                    Furthermore, although

Halliburton obtained patents covering many aspects of its plug designs, Halliburton did not claim

that any of the information contained in its patents was a trade secret.

        Appellees also point to the testimony of several witnesses that discussed the feasibility of

reverse engineering the plugs based on the information provided by the patents and an

examination of the plugs themselves. The witness testimony on which appellees rely shows that

a similar or workable plug could be reverse engineered within six months to a year. However,

appellees point to no evidence demonstrating that wellbore plugs identical to those sold by

Halliburton, and incorporating the multiple aspects for which Halliburton claimed trade secret

protection, could be developed without extensive and costly research and experimentation. It is

undisputed that appellees never attempted to reverse engineer the plugs at issue, but instead

relied on the information they misappropriated from Halliburton to develop their plugs.

        Appellees rely heavily on the Fifth Circuit’s opinion in Bryan v. Kershaw to support their

argument that a trend exists in granting limited time injunctions and such an injunction is proper

in this case. See Bryan, 366 F.2d at 503. This reliance is misplaced. Although the court in

Bryan upheld a limited time injunction against use of the trade secrets, the opinion does not

    2
       Appellees presented evidence and argument to the jury that aspects of the wellbore plugs were not trade
secrets because the technology was publicly available, and based on that, argued that various components of
Halliburton’s claimed damages should be rejected. The jury instruction encompassed these issues. See supra note
1. The jury’s finding of misappropriation of trade secrets and award of the full amount of damages sought by
Halliburton amounts to a rejection of appellees’ arguments and evidence about these matters.


                                                     –8–
address whether a perpetual injunction was required to provide the plaintiffs with adequate

protection of their legal rights because this issue was not raised. Id. Although the plaintiff in

Bryan challenged the time limit placed on the injunction, the challenge was based solely on the

procedural ground that a limited duration injunction was not supported by the pleadings. Id. The

Fifth Circuit affirmed the injunction stating that the less restrictive rules of pleading in federal

court applied. Id. at 504. The Bryan opinion focused primarily on the use of injunctive relief in

general to remove the competitive advantage gained through misappropriation. 3 The court found

particular guidance in the Texas Supreme Court’s opinion in K & G Oil Tool & Service Co. v. G

& G Fishing Tool Service, 314 S.W.2d 782 (Tex. 1958).

         In K & G Oil Tool, the supreme court stated that a defendant should not be allowed to

gain information through a breach of confidence and “escape the efforts of inspection and

analysis” necessary to produce a duplicate product. K & G Oil Tool, 314 S.W.2d at 788 (quoting

HARRY D. NIMS, THE LAW OF UNFAIR COMPETITION AND TRADE MARKS § 148 (3d ed. 1929)).

Quoting a sixth circuit opinion, the supreme court further stated that “[t]he mere fact that the

means by which a discovery is made are obvious . . . cannot . . . advantage the competitor who

by unfair means, or as the beneficiary of a broken faith, obtains the desired knowledge without

himself paying the price in labor, money, or machines expended by the discoverer.” Id. (quoting

A.O. Smith Corp. v. Petroleum Iron Works Co., 73 F.2d 531, 538 (6th Cir. 1934)). The court

made it clear in the opinion that injunctions are intended to correct more than just the lead time

gained through misappropriation. They are intended to prevent a party from unfairly profiting

from another’s expense of time and resources. In many cases, a limited time injunction will not


    3
       Appellees also point to the case of Gonzales v. Zamora, 791 S.W.2d 258 (Tex. App.—Corpus Christi 1990, no
writ), to support their assertion of a trend in granting limited time injunctions and the sufficiency of such relief. As
with Bryan, however, the issue of whether a perpetual injunction was necessary to afford the plaintiff complete relief
was neither raised nor addressed. Id.


                                                         –9–
achieve the latter. An injunction of limited duration merely delays the use of misappropriated

trade secrets. It does not prevent the defendant from enjoying the results of the plaintiff’s

investment without the necessity of a similar investment on his part.

       In some cases, a product incorporating trade secrets may be a “simple device, widely

circulated, the construction of which [is] ascertainable at a glance.” Id. at 788. In such cases, a

limited duration or “lead time” injunction may be sufficient to remove the competitive advantage

gained by the misappropriation. This was the circumstance presented in Research Equipment

Co., Inc. v. C.H. Galloway & Scientific Cages, Inc. In Galloway, an employee of a company that

manufactured aluminum animal cages established a competing business using misappropriated

trade secrets. Galloway, 485 S.W.2d at 954. The court affirmed the trial court’s granting of a

limited time injunction stating that the design and construction of the cages were based on

obvious and easily imitated mechanical principles involving only a routine application of

common skills and equipment. Id. at 956. In addition, the court noted that the plaintiff often

furnished prospective purchasers with copies of drawings and plans for the cages and the market

for the product was well-defined. Id. Because, under the facts of the case, no complex research

or reverse engineering was required to develop an identical product with identical clientele,

delaying the defendant’s ability to market the product was all that was necessary to put him in

the same position as other prospective sellers employing legitimate competitive means.

       The same analysis applies when trade secret information becomes public and loses its

trade secret status. Once trade secret information becomes available to the general public, a

party that has been enjoined from using the information due to misappropriation may apply to

have the injunction terminated. See TEX. CIV. PRAC. & REM. CODE ANN. § 134A.003 (West

2013). The court may choose to continue the injunction for an additional reasonable period of

time, however, to eliminate any commercial advantage derived from the misappropriation such

                                              –10–
as possessing the trade secrets before other potential competitors. Id. Again, the injunction is

intended to eliminate a wrongfully gained competitive advantage and put the defendant in the

same position as other prospective sellers.

       As stated above, the burden is on the defendant to show at trial that an injunction for a

period of time less than perpetual will be adequate to protect the rights of the injured plaintiff.

See Hyde, 314 S.W.2d at 775-76. Here, appellees made no showing that a delay in their ability

to use the misappropriated information is all that is required to remove the competitive advantage

they received from their wrongdoing. To the contrary, the evidence shows that extensive time

and resources would be required to develop products similar to those being sold by Halliburton.

Based on the instructions in the jury charge, the jury necessarily found that Halliburton’s trade

secrets did not involve matters of public knowledge, readily available, or of general knowledge

in the industry; the trade secrets were not available to the public; and the incorporation of the

trade secrets into the plugs made by appellees was more than slight and not derived from other

sources. Appellees cannot be allowed to bypass the expense of research and development that

would be required of every other competitor by simply waiting out the injunction period.

       Appellees assert that a perpetual injunction would prevent them from ever designing

wellbore plugs again and would stifle legitimate competition. This argument is without merit.

Nothing prevents appellees from employing their own resources to develop and market a

competing wellbore plug. Even Halliburton concedes that appellees would be free to resume

making plugs while subject to a perpetual injunction so long as they do not employ Halliburton’s

trade secrets in the process. The only restriction on appellees is that they must stand in the same

position as other legitimate competitors that do not have access to the protected information.

       We conclude the trial court abused its discretion in refusing to grant Halliburton a

perpetual injunction against appellees. The law is clear that injunctive relief for trade secret

                                               –11–
misappropriation must be sufficient to protect the plaintiff’s legal rights and remove the

competitive advantage obtained through the misappropriation. See Elcor, 494 S.W.2d at 212.

Appellees failed to show that anything less than a perpetual injunction would serve those

purposes.

       In addition to challenging the time limit on the injunction, Halliburton also contends the

language of the injunction granted by the trial court is impermissibly vague and allows appellees

to determine the extent to which they are enjoined. The portions of the injunction at issue read

as follows:

              It is further ORDERED, ADJUDGED, and DECREED that
       Defendants Axis Technologies, LLC, and Brian Wilkinson, their officers, agents,
       employees, attorneys, and all persons in active concert or participation with them
       who receive actual notice of this Final Judgment are hereby enjoined:

                                               ...

               c. Now and for a period of 10 months hereafter, from manufacturing,
       marketing, delivering, selling, offering for sale, or announcing the actual or
       anticipated availability of any wellbore plugging device which Wilkinson and
       Axis Technologies have marketed or sold or currently market and sell as the Axis
       “BLACK” plug, to the extent that said plugging device is based upon or utilizes,
       in whole or in part, HESI’s confidential or trade secret information relating to
       (i) the design, manufacture, and placement of specialized components of HESI
       wellbore plugging devices (i.e., HESI frac plugs, bridge plugs and packers);
       (ii) engineering and test information for HESI wellbore plugging devices or the
       components thereof; (iii) the specific material properties, alloys, and compositions
       used in the manufacture of HESI wellbore plugging devices and components
       thereof; and (iv) any other information related to HESI’s wellbore plugging
       devices that HESI owns and treats as secret or confidential, or that is based upon
       or utilizes processes, designs or materials that Wilkinson conceived, devised, or
       invented, in whole or in part, while he was a HESI employee, but did not disclose
       or assign to HESI (including any enhancements, modifications, or derivations of
       any of the processes, machines, manufactures, or composition of matter of those
       that Wilkinson conceived, devised, or invented, in whole or in part, while he was
       a HESI employee); and

             d. Now and for a period of 10 months hereafter, from designing,
       manufacturing, selling or offering for sale—or assisting in designing,
       manufacturing, selling or offering for sale—any wellbore plugging device
       (namely, frac plugs, bridge plugs and packers), whether for the benefit of
       Defendants or for any other party, that is based upon or utilizes, in whole or in
                                              –12–
        part, HESI’s confidential or trade secret information relating to (i) the design,
        manufacture, and placement of specialized components of HESI wellbore
        plugging devices (i.e., HESI frac plugs, bridge plugs and packers);
        (ii) engineering and test information for HESI wellbore plugging devices or the
        components thereof; (iii) the specific material properties, alloys, and compositions
        used in the manufacture of HESI wellbore plugging devices and components
        thereof; and (iv) any other information related to HESI’s wellbore plugging
        devices that HESI owns and treats as secret or confidential, or that Wilkinson
        conceived, devised, or invented, in whole or in part, while he was a HESI
        employee, but did not disclose or assign to HESI (including any enhancements,
        modifications, or derivations of any of the processes, machines, manufactures, or
        composition of matter of those that Wilkinson conceived, devised, or invented, in
        whole or in part, while he was a HESI employee).

The specific wording about which Halliburton complains enjoins appellees from manufacturing,

marketing, and selling their wellbore plug device “to the extent that said plugging device is based

upon or utilizes, in whole or in part, [Halliburton’s] confidential or trade secret information . . . .”

Halliburton contends that this language impermissibly allows appellees to determine whether and

to what extent the plug they developed is based on the misappropriated trade secrets.

        “An injunction must be as definite, clear, and precise as possible and, when practicable, it

should inform the defendant of the acts he is restrained from doing without calling on him for

inferences or conclusions about which persons might well differ and without leaving anything

for further hearing.” Webb, 298 S.W.3d at 384. Paragraph “d” of the injunction does not contain

the “extent to” language and clearly enjoins appellees from designing, manufacturing, selling, or

offering to sell “any wellbore plugging device . . . that is based upon or utilizes, in whole or in

part,” Halliburton’s trade secrets. The jury found, and appellees have not challenged the finding,

that the design of appellees’ wellbore plug was derived from Halliburton’s trade secrets and not

derived from other sources.        Accordingly, paragraph “d” enjoins appellees from further

manufacturing or selling the plug in its entirety. Because paragraph “d” applies to all wellbore

plugs that could be manufactured by appellees based upon or utilizing Halliburton’s trade secret

information, including the plug that is the subject of paragraph “c,” the “to the extent that”


                                                 –13–
language in paragraph “c” is confusing at best and, at worst, conflicts with paragraph “d.” For

purposes of clarity, therefore, we conclude paragraph “c” of the injunction should be modified to

strike the “to the extent that” qualifier as indicated in the conclusion paragraph of this opinion.

We resolve Halliburton’s first issue in its favor.

B. Declaratory Judgment

       In its second issue, Halliburton contends the trial court erred in failing to render a

declaratory judgment that Halliburton is the owner of the plug designs and other related

documents Wilkinson created while employed by Halliburton.             Halliburton argues this is

necessary to enforce Halliburton’s contractual rights to ownership of the work done by

Wilkinson during his employment with the company.

       The contract signed by Wilkinson obligated him to turn over at the termination of his

employment “all memoranda, notes, records, drawings or other documents made or compiled by

[Wilkinson] or made available to him while employed by [Halliburton] concerning any process,

apparatus, or product manufactured, used, developed, investigated, or considered by

[Halliburton].” The contract deemed all such material to be Halliburton’s property. The jury

found that Wilkinson breached the contract and Halliburton was awarded the full amount of

damages requested based on the breach. Halliburton contends that, absent a declaration of its

contractual rights to the plug designs and other related documents created by, or made available

to, Wilkinson during his employment with Halliburton, the controversy of ownership of those

materials remains unresolved.

       A declaratory judgment is a remedial measure that determines the rights of the parties and

affords relief from uncertainty with respect to rights, status, and legal relations. See Ysasaga v.

Nationwide Mut. Ins. Co., 279 S.W.3d 858, 863 (Tex. App.—Dallas 2009, pet. denied). Where

the undisputed evidence shows a party’s entitlement to declaratory relief, it is error for the trial

                                                –14–
court not to grant the relief requested. See Cont’l Homes of Tex., L.P. v. City of San Antonio, 275

S.W.3d 9, 21 (Tex. App.—San Antonio 2008, pet. denied).              The trial court may refuse a

declaratory judgment only where judgment would not remove the uncertainty giving rise to the

proceedings. See Scurlock Permian Corp. v. Brazos Cnty., 869 S.W.2d 478, 486 (Tex. App.—

Houston [1st Dist.] 1993, writ denied). Where a party has violated a confidence and breached a

contract, “the injured party is entitled to full relief, both legal and equitable, unless there exists

some compelling reason of public policy or practicability which directs the withholding of such

relief.” See K & G Oil Tool, 314 S.W.2d at 601–02.

       Wilkinson admitted at trial, and does not dispute on appeal, that he created the designs

for the wellbore plug manufactured by Axis while he was an employee of Halliburton.

Wilkinson further admitted that he did not turn over his designs and the related materials when

he left his employment. Under the terms of the contract, all materials created by Wilkinson

during his employment with Halliburton concerning products developed or manufactured by the

company are the company’s property and he was required to turn those materials over to the

company when his employment terminated.

       Appellees focus on the second paragraph of the contract which requires Wilkinson to

assign “his entire right, title, and interest in and to all inventions which relate to [Halliburton]’s

business” to Halliburton. Appellees argue that, because there is no jury finding that Wilkinson’s

plug designs were “inventions,” Halliburton is not entitled to a declaratory judgment of

ownership. But the sixth paragraph of the contract, which requires Wilkinson to turn over all

“memoranda, notes, records, drawings or other documents” as Halliburton’s property makes no

reference to “inventions.”     Halliburton contends that the materials for which it seeks a

declaration of ownership are encompassed by the sixth paragraph. Because the sixth paragraph




                                                –15–
does not require that the materials relate to an “invention,” a jury finding on that issue was not

required for Halliburton to be entitled to the declaratory relief it seeks.

         Appellees contend that granting Halliburton the requested declaratory relief in addition to

the money damages awarded would amount to a double recovery for breach of the contract. We

disagree. A double recovery exists when a plaintiff is awarded more than one recovery for the

same injury. See Waite Hill Servs., Inc. v. World Class Metal Works, Inc., 959 S.W.2d 182, 184

(Tex. 1998). A monetary award that compensates a plaintiff for past damages combined with

relief to prevent future damages does not constitute a double recovery. See Marin Real Estate

Partners, L.P. v. Vogt, 373 S.W.3d 57, 76–77 (Tex. App.—San Antonio 2011, no pet.). In this

case, the monetary award to Halliburton was for past damages suffered as a result of Wilkinson’s

breach. The requested declaratory judgment is intended to prevent future damages caused by

Wilkinson’s continued refusal to recognize Halliburton’s ownership of the designs and other

related documents created during the term of his employment. Because the evidence and the

terms of the contract show that those materials are Halliburton’s property and a declaratory

judgment to that effect would afford relief from future uncertainty regarding the legal rights to

that property, we conclude the trial court erred in refusing to grant Halliburton a declaratory

judgment.

         In addition to the declaration of ownership of the materials, Halliburton requests an order

compelling appellees to destroy all electronic copies of the materials as a necessary corollary to

the declaratory relief. Appellees contend that this request is essentially an attempt to obtain

further injunctive relief and, therefore, Halliburton must show that the trial court abused its

discretion in refusing to grant the request. 4


    4
      We note that Halliburton consistently pleaded its request for declaratory judgment relief within its request for
injunctive relief.


                                                       –16–
         A declaration of exclusive ownership of the property at issue would be illusory if

appellees were permitted to retain copies. Although the trial court’s judgment orders appellees

to turn over all copies of the materials, its failure to order appellees to destroy its electronic

copies effectively denies Halliburton its contractual right to exclusive ownership. Because the

evidence showed Halliburton had a contractual right to exclusive ownership of the property, the

trial court abused its discretion in failing to order appellees to destroy all electronic copies of the

materials in their possession. We resolve Halliburton’s second issue in its favor.

                                                   CONCLUSION

         Based on the forgoing, we reverse the portion of the trial court’s judgment denying

Halliburton’s requests for injunctive and declaratory relief. We modify the trial court’s judgment

as follows:

                  (1) The paragraph immediately preceding paragraph “a” on page 2 of the final

         judgment is modified to state: “It is further ORDERED, ADJUDGED, and DECREED

         that Defendants Axis Technologies, LLC, and Brian Wilkinson, their officers, agents,

         employees, attorneys, and all persons in active concert or participation with them who

         receive actual notice of this Final Judgment are hereby permanently enjoined:”

                  (2) Paragraph “c” of the injunction 5 is modified to state: “Now and forever

         hereafter, from manufacturing, marketing, delivering, selling, offering for sale, or

         announcing the actual or anticipated availability of any wellbore plugging device which

         Wilkinson and Axis Technologies have marketed or sold or currently market and sell as

         the Axis “BLACK” plug proven at trial to be based upon or utilize, in whole or in part,


    5
       Although Halliburton requested this court to remand to the trial court with instructions to issue an injunction,
our modification of the judgment will obviate the need for remand and, accordingly, we render judgment. See TEX.
R. APP. P. 43.3(a); see also Elcor, 494 S.W.2d at 214 (rendering judgment of modified injunction in trade secrets
case).


                                                        –17–
HESI’s confidential or trade secret information relating to (i) the design, manufacture,

and placement of specialized components of HESI wellbore plugging devices (i.e., HESI

frac plugs, bridge plugs and packers); (ii) engineering and test information for HESI

wellbore plugging devices or the components thereof; (iii) the specific material

properties, alloys, and compositions used in the manufacture of HESI wellbore plugging

devices and components thereof; and (iv) any other information related to HESI’s

wellbore plugging devices that HESI owns and treats as secret or confidential, or that is

based upon or utilizes processes, designs or materials that Wilkinson conceived, devised,

or invented, in whole or in part, while he was a HESI employee, but did not disclose or

assign to HESI (including any enhancements, modifications, or derivations of any of the

processes, machines, manufactures, or composition of matter of those that Wilkinson

conceived, devised, or invented, in whole or in part, while he was a HESI employee);”

       (3) Paragraph “d” of the injunction is modified to state: “Now and forever

hereafter, from designing, manufacturing, marketing, selling or offering for sale—or

assisting in designing, manufacturing, selling or offering for sale—any wellbore plugging

device (namely, frac plugs, bridge plugs and packers), whether for the benefit of

Defendants or for any other party, that is based upon or utilizes, in whole or in part,

HESI’s confidential or trade secret information relating to (i) the design, manufacture,

and placement of specialized components of HESI wellbore plugging devices (i.e., HESI

frac plugs, bridge plugs and packers); (ii) engineering and test information for HESI

wellbore plugging devices or the components thereof; (iii) the specific material

properties, alloys, and compositions used in the manufacture of HESI wellbore plugging

devices and components thereof; and (iv) any other information related to HESI’s

wellbore plugging devices that HESI owns and treats as secret or confidential, or that

                                      –18–
Wilkinson conceived, devised, or invented, in whole or in part, while he was a HESI

employee, but did not disclose or assign to HESI (including any enhancements,

modifications, or derivations of any of the processes, machines, manufactures, or

composition of matter of those that Wilkinson conceived, devised, or invented, in whole

or in part, while he was a HESI employee).”;

        (4) Paragraph “a” beginning on page 5 of the judgment is modified to read “It is

further ORDERED, ADJUDGED, and DECREED that Plaintiff HESI is the owner of

all designs and other related documents made or compiled by Defendant Brian

Wilkinson, or made available to him while employed by HESI, and Defendants Axis

Technologies, LLC and Brian Wilkinson shall, within 21 days of this Final Judgment: a.

Deliver to HESI or make available for collection by HESI, all hard and electronic copies

of all documents, data, and information related to the development, design, and sale of

Axis wellbore plugs, including but not limited to plugs that Defendants have marketed as

the Axis “BLACK” plug, to the extent that said documents, data, and information contain

or utilize, in whole or in part, HESI’s confidential or trade secret information or

processes, designs or materials that Wilkinson conceived, devised, or invented, in whole

or in part, while he was a HESI employee, but did not disclose or assign to HESI

(including any enhancements, modifications, or derivations of any of the processes,

machines, manufactures, or composition of matter of those that Wilkinson conceived,

devised, or invented, in whole or in part, while he was a HESI employee). No later than

the day of such turnover, Defendants Axis Technologies, LLC and Brian Wilkinson shall

destroy all electronic copies still in either of their possession.”




                                         –19–
As modified, the trial court’s judgment is affirmed.




                                                   /David Evans/
                                                   DAVID EVANS
                                                   JUSTICE
130854F.P05




                                              –20–
                                      S
                              Court of Appeals
                       Fifth District of Texas at Dallas
                                     JUDGMENT

HALLIBURTON ENERGY SERVICES,                       On Appeal from the 95th Judicial District
INC., Appellant                                    Court, Dallas County, Texas
                                                   Trial Court Cause No. DC-11-00267-D.
No. 05-13-00854-CV        V.                       Opinion delivered by Justice Evans.
                                                   Justices Fillmore and Lewis participating.
AXIS TECHNOLOGIES, LLC AND
BRIAN WILKINSON, Appellees

    In accordance with this Court’s opinion of this date, the judgment of the trial court is
REVERSED IN PART and MODIFIED as follows:
            (1) The paragraph immediately preceding paragraph “a” on page 2 of the final
    judgment is modified to state: “It is further ORDERED, ADJUDGED, and DECREED
    that Defendants Axis Technologies, LLC, and Brian Wilkinson, their officers, agents,
    employees, attorneys, and all persons in active concert or participation with them who
    receive actual notice of this Final Judgment are hereby permanently enjoined:”
            (2) Paragraph “c” of the injunction is modified to state: “Now and forever
    hereafter, from manufacturing, marketing, delivering, selling, offering for sale, or
    announcing the actual or anticipated availability of any wellbore plugging device which
    Wilkinson and Axis Technologies have marketed or sold or currently market and sell as
    the Axis “BLACK” plug proven at trial to be based upon or utilize, in whole or in part,
    HESI’s confidential or trade secret information relating to (i) the design, manufacture,
    and placement of specialized components of HESI wellbore plugging devices (i.e., HESI
    frac plugs, bridge plugs and packers); (ii) engineering and test information for HESI
    wellbore plugging devices or the components thereof; (iii) the specific material
    properties, alloys, and compositions used in the manufacture of HESI wellbore plugging
    devices and components thereof; and (iv) any other information related to HESI’s
    wellbore plugging devices that HESI owns and treats as secret or confidential, or that is
    based upon or utilizes processes, designs or materials that Wilkinson conceived, devised,
    or invented, in whole or in part, while he was a HESI employee, but did not disclose or
    assign to HESI (including any enhancements, modifications, or derivations of any of the
    processes, machines, manufactures, or composition of matter of those that Wilkinson
    conceived, devised, or invented, in whole or in part, while he was a HESI employee);”
            (3) Paragraph “d” of the injunction is modified to state: “Now and forever
    hereafter, from designing, manufacturing, marketing, selling or offering for sale—or
    assisting in designing, manufacturing, selling or offering for sale—any wellbore plugging
                                            –21–
       device (namely, frac plugs, bridge plugs and packers), whether for the benefit of
       Defendants or for any other party, that is based upon or utilizes, in whole or in part,
       HESI’s confidential or trade secret information relating to (i) the design, manufacture,
       and placement of specialized components of HESI wellbore plugging devices (i.e., HESI
       frac plugs, bridge plugs and packers); (ii) engineering and test information for HESI
       wellbore plugging devices or the components thereof; (iii) the specific material
       properties, alloys, and compositions used in the manufacture of HESI wellbore plugging
       devices and components thereof; and (iv) any other information related to HESI’s
       wellbore plugging devices that HESI owns and treats as secret or confidential, or that
       Wilkinson conceived, devised, or invented, in whole or in part, while he was a HESI
       employee, but did not disclose or assign to HESI (including any enhancements,
       modifications, or derivations of any of the processes, machines, manufactures, or
       composition of matter of those that Wilkinson conceived, devised, or invented, in whole
       or in part, while he was a HESI employee).”;
               (4) Paragraph “a” beginning on page 5 of the judgment is modified to read “It is
       further ORDERED, ADJUDGED, and DECREED that Plaintiff HESI is the owner of
       all designs and other related documents made or compiled by Defendant Brian
       Wilkinson, or made available to him while employed by HESI, and Defendants Axis
       Technologies, LLC and Brian Wilkinson shall, within 21 days of this Final Judgment: a.
       Deliver to HESI or make available for collection by HESI, all hard and electronic copies
       of all documents, data, and information related to the development, design, and sale of
       Axis wellbore plugs, including but not limited to plugs that Defendants have marketed as
       the Axis “BLACK” plug, to the extent that said documents, data, and information contain
       or utilize, in whole or in part, HESI’s confidential or trade secret information or
       processes, designs or materials that Wilkinson conceived, devised, or invented, in whole
       or in part, while he was a HESI employee, but did not disclose or assign to HESI
       (including any enhancements, modifications, or derivations of any of the processes,
       machines, manufactures, or composition of matter of those that Wilkinson conceived,
       devised, or invented, in whole or in part, while he was a HESI employee). No later than
       the day of such turnover, Defendants Axis Technologies, LLC and Brian Wilkinson shall
       destroy all electronic copies still in either of their possession.”

It is ORDERED that, as modified, the judgment of the trial court is AFFIRMED.

        It is ORDERED that appellant HALLIBURTON ENERGY SERVICES, INC. recover its
costs of this appeal from appellees AXIS TECHNOLOGIES, LLC AND BRIAN WILKINSON.


Judgment entered this 21st day of August, 2014.




                                            –22–
