IN THE COURT OF APPEALS OF TENNESSEE

AT NASHVILLE

May 19, 2015 Session

JULIAN HINSON, D/B/A TRIVIA TIME V. THOM O’ROURKE

Appeal from the Chancery Court for Davidson County

No. 12-993-III Ellen H. Lyle, Chancellor

No. M2014-00361-COA-R3-CV – Filed August 25, 2015

Plaintiff, a sole proprietor of an entertainment business featuring trivia and bingo games, 

filed this action to enforce an Independent Contractor Agreement, a Noncompetition 

Agreement, and a Contractor Confidentiality Agreement and for violation of the 

Tennessee Uniform Trade Secrets Act. The defendant asserted that the covenant not to

compete was unenforceable and that none of the information provided to him by Plaintiff 

constituted trade secrets or confidential information. The trial court dismissed all claims 

finding the covenant not to compete was unenforceable and that none of the information 

qualified as a trade secret. Following the dismissal of the claims, the defendant filed a 

motion for attorney‟s fees pursuant to the Trade Secrets Act. The trial court denied the 

motion finding that the claim under the Trade Secrets Act was not brought in bad faith. 

Both parties appeal. We affirm the trial court in all respects. 

Tenn. R. App. P. 3 Appeal as of Right; Judgment of the Chancery Court Affirmed

FRANK G. CLEMENT, JR., P.J., M.S., delivered the opinion of the Court, in which ANDY D.

BENNETT and RICHARD H. DINKINS, JJ., joined.

James G. King, Nashville, Tennessee, for the appellant, Julian Hinson d/b/a Trivia Time.

Christopher W. Cardwell and Matthew B. Haskell, Nashville, Tennessee, for the 

appellee, Thom O‟Rourke.

OPINION

Julian Hinson (“Plaintiff”) is the sole proprietor of Trivia Time, a business that 

conducts live entertainment events including trivia and bingo games that are hosted by 

“trained staff” at restaurants, bars, and other venues. Prior to their training, Plaintiff‟s

staff, who are referred to as “DJs,” were required to enter into three agreements: a 

Contractor Noncompetition Agreement, an Independent Contractor Agreement, and a 
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Contractor Confidentiality Agreement. The noncompete agreement prohibits the DJ from 

“directly or indirectly conducting activity that is competitive with any of the activities 

Contractor conducted for Trivia Time,” and extends for three years from the date of 

termination. The other agreements prohibit revealing and using Trivia Time‟s alleged 

trade secrets and confidential information. 

In 2009, Tom O‟Rourke (“Defendant”) entered into all of the three agreements 

with Plaintiff and began working as an independent contractor hosting trivia games in 

Nashville venues. As for training, Plaintiff educated Defendant on how Trivia Time 

conducts trivia games through one-on-one meetings and on-the-job training. Plaintiff 

provided Defendant with a written script to be read to the audience during trivia games, 

but the remainder of the information was provided orally. The information included how 

to keep score, microphone training, use of music, methods used with the audience to 

heighten entertainment, and handling enforcement of the rules. Defendant worked for 

Plaintiff until October 26, 2011. Upon terminating his association with Trivia Time, 

Defendant began hosting and conducting trivia and bingo games under the name 

“Bartainment” in restaurants, bars, and venues that had been prior clients of Trivia Time. 

On April 5, 2012, Plaintiff sent Defendant a cease-and-desist letter. When 

Defendant did not comply, Plaintiff filed suit against Defendant for breach of contract 

and violation of the Tennessee Uniform Trade Secrets Act (“Trade Secrets Act” or “the 

Act”) for allegedly revealing and misappropriating trade secrets. 

During a pretrial conference, the parties agreed that the trial court should 

determine issues of law pursuant to a Rule 56 of the Tennessee Rules of Civil Procedure 

proceeding, particularly regarding the issue of whether Trivia Time has a legitimate 

protectable business interest that justifies the restraints on competition provided in the 

parties‟ noncompete agreement. Pursuant to Rule 56, each party filed briefs and 

Statements of Undisputed Material Facts with additional exhibits. Notably, Plaintiff filed 

an affidavit containing an attached document titled “Confidential Methods and The 

Process By Which We Convey Our Trade Secrets.” In this document, Plaintiff identified 

what he believed were the trade secrets at issue in this case. 

After a hearing, the trial court entered an order dismissing Plaintiff‟s complaint as 

a matter of law for failure to establish essential elements of each of his claims.

Specifically, the trial court found the noncompete agreement to be unenforceable because 

Defendant was not privy to confidential information or trade secrets and received no 

specialized training; therefore, Plaintiff did not have a legitimate protectable business 

interest that warranted a noncompete agreement. In so finding, the trial court determined 

that most of Plaintiff‟s information purporting to be trade secrets was readily 

ascertainable because it was frequently demonstrated to the public. Moreover, the trial 

court found that the Trade Secrets Act had not been violated because Plaintiff did not 
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prove the existence of a trade secret as defined by the statute, and the remaining 

agreements had not been breached.

After the order dismissing all of Plaintiff‟s claims was entered, Defendant filed a 

Motion for Attorney‟s Fees pursuant to Tenn. Code Ann. § 47-25-1705, which provides 

that if a claim of misappropriation of trade secrets is made in bad faith, attorney‟s fees 

may be awarded to the prevailing party. The court denied Defendant‟s motion, finding 

that the claim was plausible and that it was not brought in bad faith.

Both parties appeal. Plaintiff contends that his company can demonstrate a 

legitimate business interest that warrants restraint on competition because he provided 

specialized training and trade secrets to Defendant during the course of his employment 

with Trivia Time. He also contends that Defendant violated the Trade Secrets Act by 

misappropriating confidential information and trade secrets. Defendant contends that the 

trial court erred in failing to award him attorney‟s fees because remembered information 

and readily ascertainable information broadcast in public cannot be a trade secret as a 

matter of law, and, therefore, Plaintiff pursued his Trade Secrets Act claim in bad faith. 

We shall address each issue in turn.

ANALYSIS

The issues were resolved in the trial court upon summary judgment. Summary 

judgment is appropriate when a party establishes that there is no genuine issue as to any 

material fact and that a judgment may be rendered as a matter of law. Tenn. R. Civ. P. 

56.04; Stovall v. Clarke, 113 S.W.3d 715, 721 (Tenn. 2003). The material facts with 

respect to the issues raised on this appeal are not in dispute; accordingly, our review is de 

novo on the record with no presumption of correctness as to the trial court‟s conclusions 

of law. See Tenn. R. App. P. 13(d); BellSouth Adver. & Publ’g Co. v. Johnson, 100 

S.W.3d 202, 205 (Tenn. 2003).

I. NONCOMPETE AGREEMENT

Generally, covenants not to compete are disfavored in Tennessee but will be 

enforced if “they are deemed reasonable under the particular circumstances.” Allright 

Auto Parks, Inc. v. Berry, 409 S.W.2d 361, 363 (Tenn. 1966); see Baker v. Hooper, 50 

S.W.3d 463, 469 (Tenn. Ct. App. 2001). The factors that are relevant in determining 

whether a covenant not to compete is reasonable include “the consideration supporting 

the agreements; the threatened danger to the employer in the absence of such an 

agreement; the economic hardship imposed on the employee by such a covenant; and 

whether or not such a covenant should be inimical to public interest.” Allright Auto 

Parks, 409 S.W.2d at 363.
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In considering the relevant factors, “a threshold question is whether the employer 

has a legitimate business interest, i.e., one that is properly protectable by a noncompetition covenant.” Vantage Tech., LLC v. Cross, 17 S.W.3d 637, 644 (Tenn. Ct. 

App. 1999). “There is no legitimate interest in protection from competition, only from 

unfair competition.” Girtman & Assoc., Inc. v. St. Amour, No. M2005-00936-COA-R3-

CV, 2007 WL 1241255, at *6 (Tenn. Ct. App. Apr. 27, 2007) (citing Murfreesboro Med. 

Clinic, P.A. v. Udom, 166 S.W.3d 674, 678 (Tenn. 2005) (emphasis added). 

Thus, we must determine whether the employer in this case has a legitimate 

business interest that is protectable by the noncompete agreement at issue. If the 

employer has such a legitimate business interest, we must then analyze whether the 

noncompete agreement is reasonable and enforceable under the circumstances of this 

case. If the employer does not have a legitimate business interest, then the noncompete

agreement is unenforceable under Tennessee law. See Corbin v. Tom Lange Co., No. 

M2002-01162-COA-R3-CV, 2003 WL 22843167, at *6 (Tenn. Ct. App. Dec. 1, 2003).

In order to establish a protectable business interest, the employer must show 

“special facts present over and above ordinary competition.” Hasty v. Rent–A–Driver, 

Inc., 671 S.W.2d 471, 473 (Tenn. 1984). These facts must be such that without the 

covenant, the employee would gain an unfair advantage in future competition with the 

employer. Id. Considerations in determining whether an employee would have such an 

unfair advantage include (1) whether the employer provided the employee with 

specialized training; (2) whether the employee is given access to trade or business secrets 

or other confidential information; and (3) whether the employee had such repeated 

contact with the employer‟s customers that the customers would tend to see the employee 

as the “face” of the company. See id.; Vantage, 17 S.W.3d at 644. These considerations 

may operate individually or in tandem to give rise to a properly protectable business 

interest. Vantage, 17 S.W.3d at 644. Here, Plaintiff asserts that Defendant was given 

specialized training, access to trade secrets, and that Defendant was the “face” of Trivia 

Time to its customers.

As to training, an employer does not have a protectable interest in the general 

knowledge and skill of an employee. Hasty, 671 S.W.2d at 473. The court must 

distinguish between “the general skills and knowledge of the trade and information that is 

peculiar to the employer‟s business.” Selox, Inc. v. Ford, 675 S.W.2d 474, 476 (Tenn. 

1984) (quoting Restatement (Second) of Contracts § 188 cmt. g). They must determine 

“whether the skill acquired as a result of that training is sufficiently special as to make a 

competing use of it by the employee unfair.” Vantage, 17 S.W.3d at 645.

An employer has a legitimate business interest in keeping its former employees 

from using the former employer‟s trade secrets or other confidential information in 

competition against the former employer. Id. (citing Hasty, 671 S.W.2d at 473). Our 

courts have stated that a trade secret consists of any formula, process, pattern, device, or 
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compilation of information that is used in one‟s business to gain an advantage over 

competitors who do not use it. Hickory Specialties, Inc. v. B & L Labs., Inc., 592 S.W.2d 

583, 586 (Tenn. Ct. App. 1979). The subject matter of a trade secret must be secret and 

not well known or easily ascertainable. Id. at 587. 1 Confidential information, like trade 

secrets, does not include information that is generally available in the trade or easily 

available from sources other than the employer, such as customer lists, knowledge of the 

buying habits and needs of particular clients, pricing information, and profit and loss 

statements. Amarr Co. v. Depew, C/A No. 03A01-9511-CH-00412, 1996 WL 600330, 

*4-5 (Tenn. Ct. App. Oct. 16, 1996); see also Vantage, 17 S.W.3d at 645.

Further, an employer may have a legitimate protectable interest in the relationships 

between its employees and its customers when the customer associates the employer‟s 

business with the employee due to the employee‟s repeated contacts with the customer. 

See Hasty, 671 S.W.2d at 473; see also Vantage, 17 S.W.3d at 645. In the customer‟s 

eyes, the employee must become the “face” of the employer. Vantage, 17 S.W.3d at 645. 

Plaintiff contends that the noncompete agreement is enforceable because 

Defendant received specialized training, access to trade secrets, and because he was the 

“face” of the company to its customers. It is undisputed that Defendant‟s training 

consisted of some one-on-one meetings and on-the-job training in which Plaintiff 

provided Defendant with oral information to teach the way that Trivia Time conducts 

trivia games. In fact, Plaintiff admits that the only written material provided to Defendant 

included a script to explain the game to the audience. It is further undisputed that the 

information provided to Defendant during training included scorekeeping, microphone 

training, use of music, handling the enforcement of the rules, and methods and tricks used 

 

1

In 2000, the General Assembly passed the Uniform Trade Secrets Act, which includes a 

statutory definition for “trade secret” that we will discuss in greater detail later in this opinion. See Tenn. 

Code Ann. § 47-25-1702(4). Although the Act “displaces conflicting tort, restitutionary, and other law of 

this state providing civil remedies for misappropriation of a trade secret,” it does not preempt claims 

based on “[c]ontractual remedies, whether or not based upon misappropriation of a trade secret . . . .” See 

Tenn. Code Ann. § 47-25-1708(a)-(b). Accordingly, Plaintiff‟s claims related to the violation of the 

noncompete agreement are not preempted by the Act because they are based on a contractual remedy. See 

id.; see also Douglas F. Halijan, The Past, Present, and Future of Trade Secrets Law in Tennessee: A 

Practitioner’s Guide Following the Enactment of the Uniform Trade Secrets Act, 32 U. Mem. L. Rev. 1, 

33 (2001) (arguing that, based on the language of Tenn. Code Ann. § 47-25-1708(b), “misappropriation 

under the [Act] is a completely separate and independent cause of action from a claim to enforce a 

covenant not to compete in the employment context . . . .”). Although the claims related to the 

noncompete agreement are not preempted by the Act, the question remains whether the statutory 

definition of “trade secret” has displaced the common law definition with respect to claims that are not 

brought under the Act. We do not have to answer that question here because both the statutory and 

common law definitions are very similar, and information that is “generally known” or “readily 

ascertainable by proper means” does not qualify as a “trade secret” under either of them. See Tenn. Code 

Ann. § 47-25-1702(4)(A); Hickory Specialties, Inc. v. B & L Labs., Inc., 592 S.W.2d 583, 586 (Tenn. Ct. 

App. 1979).‟
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with the audience to heighten entertainment value through humor and suspense. He 

submits that some of this information could be easily ascertained by the audience, but 

asserts that his company‟s methods for heightening entertainment and enforcement of the 

rules could not. Plaintiff contends that this information constitutes trade secrets and 

establishes that he provided specialized training. 

The trial court concluded, based upon the undisputed facts, that Plaintiff failed to 

demonstrate the essential element of the existence of unfair competition. Specifically, the 

trial court found that “[m]ost of Plaintiff‟s information, including the purported trade 

secret methods of heightening entertainment, is not difficult to acquire and is readily 

ascertainable as it is used, stated and demonstrated publicly to audiences and could be 

duplicated by anyone who repeatedly attended and observed the events.” The trial court 

further found that “[m]uch of the information and training are general DJ skills and 

knowledge of this industry and other audience interactive industries, including the 

purported trade secret methods used with the audience.” In fact, Plaintiff acknowledged 

that training for general trivia hosting is widely available through other sources, including 

online, and that the information provided to his staff is repeatedly demonstrated in front 

of a live audience. He further acknowledged that some of this information could be easily 

ascertained by the audience, including, inter alia, the game‟s material and format, 

questions read out loud, and music played. 

As we noted above, specialized training cannot include general skills and 

knowledge of the trade, Selox, Inc., 675 S.W.2d at 476, and trade secrets cannot be easily 

ascertainable or generally available in the trade, Hickory Specialties, Inc., 592 S.W.2d at 

586. See Tenn. Code Ann. § 47-25-1702(4). Thus, it is significant that the information 

Plaintiff provided to Defendant is frequently demonstrated to the public, that the 

information could be easily ascertained by the public, and that trivia host training is 

available through other sources. Therefore, the record supports the trial court‟s 

conclusion that Defendant did not receive specialized training or gain access to trade 

secrets.

The trial court also found that Plaintiff failed to present evidence that Defendant 

had special relationships with Trivia Time‟s customers. In his brief, Plaintiff merely 

states that Defendant provided services at various venues while working for Trivia Time, 

and that he began hosting his own trivia games at several of these locations; however, 

there is no evidence in the record to support a finding that Defendant was the “face” of 

Plaintiff‟s business in any respect.

For the above reasons, we affirm the trial court‟s ruling that the noncompetition 

agreement is unenforceable.

II. TENNESSEE UNIFORM TRADE SECRETS ACT
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In 2000, Tennessee enacted the Trade Secrets Act which “preempts and displaces 

conflicting or inconsistent common law in Tennessee regarding the misappropriation of 

trade secrets.” Douglas F. Halijan, The Past, Present, and Future of Trade Secrets Law in 

Tennessee: A Practitioner’s Guide Following the Enactment of the Uniform Trade 

Secrets Act, 32 U. Mem. L. Rev. 1, 5 (2001) (citing Tenn. Code Ann. § 47-25-1708(a) 

(Supp. 2000)). The Act provides that a plaintiff may obtain an injunction and/or an award 

of damages for misappropriation of a “trade secret” as defined by the Act. Tenn. Code 

Ann. § 47-25-1703 and § 47-25-1704. The term “trade secret” has a statutory definition 

that is similar to the common law definition: 

[I]nformation, without regard to form, including, but not limited to, 

technical, nontechnical or financial data, a formula, pattern, compilation, 

program, device, method, technique, process, or plan that:

(A) Derives independent economic value, actual or potential, from 

not being generally known to, and not being readily ascertainable by proper 

means by other persons who can obtain economic value from its disclosure 

or use; and

(B) Is the subject of efforts that are reasonable under the 

circumstances to maintain its secrecy

Tenn. Code Ann. § 47-25-1702(4) (2001). The General Assembly adopted a broader 

definition of “trade secrets” than that found in the national uniform act. Specifically, 

“Tennessee‟s definition of „trade secret‟ includes any information „without regard to 

form, including, but not limited to, technical, nontechnical or financial data.‟” Halijan, 

supra, at 21. Thus, Tennessee‟s definition of a “trade secret” under the Act is more 

expansive than the standard version of the Uniform Trade Secret Act, and it “is 

sufficiently broad to include information which at common law would have been 

considered confidential information.” Id. at 14. 

The trial court found that the information provided to Defendant did not include 

“trade secrets” as defined by the Act because the information is readily ascertainable 

since it is demonstrated in front of a public audience, and the information is general 

knowledge known within the industry. Based on this determination, the trial court ruled 

that “there has been no violation of use or dissemination of confidential information 

and/or trade secrets precluded by . . . the Tennessee Uniform Trade Secrets Act.” We 

affirm this ruling.

III. ATTORNEY‟S FEES UNDER THE TENNESSEE TRADE SECRETS ACT

Defendant filed a motion to recover the attorney‟s fees he incurred in defending 

the claims brought pursuant to the Tennessee Trade Secrets Act, specifically Tenn. Code 
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Ann. § 47-25-1705. The Act states that “the court may award reasonable attorney‟s fees 

to the prevailing party” if a claim of misappropriation of trade secrets is made in bad

faith. Tenn. Code Ann. § 47-25-1705 (emphasis added). The trial court found that the 

claim was not brought in bad faith and denied the motion for fees. Defendant contends 

this was error, maintaining that Plaintiff recklessly pursued this claim in bad faith 

because neither easily ascertainable information nor remembered information can be 

considered a trade secret under Tennessee law.

The trial court found that the record did not establish either a bad motive or a 

complete lack of evidentiary proof. Specifically, the trial court found that “a reasonable 

inference from the record is that Plaintiff believed that the evidence was plausible to 

support a trade secrets violation,” and that Plaintiff provided evidence that he believed 

established the existence of trade secrets, acknowledging the fact that Plaintiff filed a 

document providing a detailed explanation of the evidence he believed were trade secrets. 

While Defendant disagreed, contending that that the information was not confidential and 

merely amounted to remembered information that could not be a trade secret, the trial 

court found that a disagreement on the law does not constitute bad faith. 

In finding that the claim was not brought in bad faith, the trial court analyzed the 

particular facts of this case under a two-part test adopted by several federal district courts, 

which is outlined as follows in Wyndham Vacation Resorts, Inc. v. Wesley Fin. Grp., 

LLC, No. 3:12-CV-559, 2013 WL 785938, at *11 (M.D. Tenn. Feb. 28, 2013):

An award of attorneys‟ fees and expenses under this section requires a 

finding of subjective bad faith. Tennessee has not defined “bad faith” under 

the attorneys‟ fees provision, but “other States have concluded . . . that bad 

faith „requires objective speciousness of the plaintiff‟s claim . . . and . . . 

subjective bad faith in bringing or maintaining the claim.‟” Degussa 

Admixtures, Inc. v. Burnett, 277 Fed. Appx. 530, 534 (6th Cir. 2008) 

(affirming the district court‟s award of attorneys‟ fees to the prevailing 

party when the plaintiff failed to establish more than the existence of 

generalized trade secrets and the employee‟s knowledge of them); see also 

Dana Ltd. v. Am. Axle & Mfg. Holdings, Inc., No. 110CV450, 2012 WL 

2524008, at *9 (W.D. Mich. June 29, 2012) (“„[a] party alleging trade 

secret misappropriation must particularize and identify the purportedly 

misappropriated trade secrets with specificity.‟”). But see McKesson 

Medical–Surgical, Inc. v. Micro Bio–Medics, Inc., 266 F.Supp.2d 590, 597 

(E.D. Mich. 2003) (denying defendant‟s request for attorneys‟ fees because 

no clear evidence that Plaintiffs took action for improper purposes 

amounting to bad faith).

The trial court also analyzed other jurisdictions that have adopted the attorney‟s 

fee provision of the Uniform Trade Secrets Act, and found that all of the cases discussing 
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“bad faith” fell into two broad categories: (1) cases where the bad faith was evidenced by 

a bad motive; and (2) cases where the bad faith was evidenced by a complete lack of 

evidentiary proof from the party suing under the Uniform Trade Secrets Act. The trial 

court concluded that the record did not establish either a bad motive or a complete lack of 

evidentiary proof. Specifically, the trial court found that “a reasonable inference from the 

record is that Plaintiff believed that the evidence was plausible to support a trade secrets 

violation,” and that Plaintiff provided evidence that he believed established the existence 

of trade secrets.

This court recently defined “bad faith” as it applies to a Trade Secrets Act claim, 

finding that “[b]ad faith is defined [by Black‟s Law Dictionary] as „dishonesty of belief 

or purpose,‟” and that a claim brought under the Act that is “plausible” is not considered 

to have been brought in bad faith for the purpose of awarding attorney‟s fees under the 

statute. Dominion Enterprises v. Dataium, LLC, No. M2012-02385-COA-R3-CV, 2013 

WL 6858266, at *13-14 (Tenn. Ct. App. Dec. 27, 2013) (Trial court denied an award of 

attorney‟s fees, finding that “though the claim was not strong, it was plausible.”). The 

trial court here considered the relevant and undisputed facts, finding no sufficient basis of 

“bad faith” in this case to support an award of attorney‟s fees pursuant to the Act. 

Moreover, the court acknowledged that the dispute between the parties hinged upon the 

legal significance of the information identified by Plaintiff and whether it could constitute 

a trade secret under Tennessee law, and the trial court found that a dispute as to the law in 

this case did not amount to bad faith. 

For the foregoing reasons, we affirm the trial court‟s decision to deny Defendant‟s

motion to award attorney‟s fees pursuant to Tenn. Code Ann. § 47-25-1705.

IN CONCLUSION

The judgment of the trial court is affirmed in all respects, and this matter is 

remanded with costs of appeal assessed equally against Julian Hinson and Tom 

O‟Rourke.

______________________________

FRANK G. CLEMENT, JR., JUDGE