IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 13-11297

c/w No. 14-10365

MARSHALL HUNN, Agent of Hunn Designs, 

 Plaintiff – Appellant,

v.

DAN WILSON HOMES, INCORPORATED; DAN WILSON; BEN J. LACK, 

 Defendants – Appellees.

Appeals from the United States District Court

for the Northern District of Texas

Before DAVIS and ELROD, Circuit Judges.*

JENNIFER WALKER ELROD, Circuit Judge:

Appellee Ben Lack, who was employed as a draftsman at Appellant 

Marshall Hunn’s architectural design firm, resigned from his position while in 

the middle of a project for Hunn’s client, Appellee Dan Wilson Homes. After 

Lack resigned from Hunn’s employ, Dan Wilson hired Lack to complete the 

project. Hunn, alleging that Lack and Wilson secretly agreed to this 

arrangement in advance—i.e., that Lack and Wilson secretly agreed to cut 

Hunn out of the business relationship—brought numerous claims against Lack 

 

* This opinion is being entered by a quorum of this court pursuant to 28 U.S.C. Section 

46(d).

United States Court of Appeals

Fifth Circuit

FILED

June 15, 2015

Lyle W. Cayce

Clerk

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and Wilson. The district court granted summary judgment to Lack and Wilson 

on many of the claims and, after a bench trial, ruled in favor of Lack and Wilson 

on the remaining claims. Because the district court did not clearly err in 

finding that Lack and Wilson never made the alleged secret agreement, and 

because Hunn’s legal theories lack merit, we AFFIRM.

I.

Dan Wilson is the owner and president of Dan Wilson Homes, Inc., which 

is a custom home construction company.1 As relevant here, Wilson contracted 

with Hunn Designs, an architectural design firm owned by Marshall Hunn, to 

produce plans for four custom homes.2 Wilson hired Hunn’s firm because he 

wanted the plans to be drafted by Ben Lack, who was employed on an at-will 

basis by Hunn.3

Wilson and Hunn agreed to a fee amount of $1.25 per square foot of airconditioned living space for plans drafted by Lack. Wilson made clear to Hunn 

that Wilson would be directing the design work as requested by his 

clients/homeowners and would not need any pre-designed plans from Hunn. 

Hunn’s responsibilities were to provide quality plans in a timely manner for 

Dan Wilson Homes to use to build the custom homes. Lack was to draft the 

plans as directed by Wilson and the homeowners. Wilson’s responsibility 

under the parties’ agreement was to pay for the plans. 

 

1 The facts recounted here are the facts as found by the district court, some of which 

are disputed by Hunn.

2 We refer to these four plans as the Jeffers plan, the Winder/McGee plan, the Brown 

plan (after the last names of the clients), and the Showcase plan (which was a plan designed 

for an annual local builders’ showcase event).

3 The parties’ arguments do not distinguish between the individuals and their 

businesses; accordingly, we use “Wilson” and “Dan Wilson Homes” interchangeably, and we 

do the same with “Hunn” and “Hunn Designs.”

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Lack was the only Hunn employee who worked on the four custom plans 

for Dan Wilson Homes, and Lack served as a representative for Hunn Designs

at weekly meetings with Wilson and the homeowners. At these weekly 

meetings, Lack delivered paper copies of the plans to Wilson and the 

homeowners. After Lack commenced work on all four of the plans—but before 

he completed any of the plans—Lack decided to resign from his position at 

Hunn Designs. On October 5, 2011, Lack informed Hunn of his desire to 

resign. Hunn and his wife initially feared that Lack had agreed to work inhouse for Dan Wilson Homes, but the next day, Lack told Wilson that he had 

no job offer from Dan Wilson Homes. Hunn, upon hearing that Lack did not 

have an offer from Wilson, asked Lack to take the weekend to consider his 

options, and Lack continued to work for Hunn on that day and also the next 

day (Friday) from the office and home.

During this period, Lack believed that even if he gave official notice of 

his intent to resign from his employment with Hunn, he would be expected and

permitted to continue working for two more weeks before his employment 

ended. Thus, Lack believed and intended that he would be able to complete 

the Wilson projects during his remaining two weeks of employment with Hunn. 

Indeed, Lack notified Wilson that he was considering resigning, but assured 

Wilson that he (i.e., Lack) intended to complete the drafting of Wilson’s plans 

(as an employee of Hunn’s).

Over the weekend, and still under the impression that he would be 

allowed to continue working at Hunn Designs on the projects he had been 

assigned, Lack requested by email that a friend of his convert some of the 

Wilson project (virtual) files from the 2008 version of AutoCAD to the 2006 

version. This conversion was required because Lack maintained his own copy 

of AutoCAD software on his home computer in the 2006 version and the version 

at Hunn’s offices was the 2008 version. Hunn permitted draftsmen to take 

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files home because draftsmen often worked on projects on their own home 

computers as well as on the work computers contained in Hunn’s office. Hunn 

does not dispute that Lack had permission to work on the files at home and 

was expected to do so in order to ensure timely completion of projects.

After an exchange between Lack and the Hunns on the morning of 

Monday, October 10, 2011, relating to Lack’s decision about whether he would 

remain employed at Hunn Designs, Lack was asked to discontinue 

employment immediately. The Hunns asked Lack to return the Dan Wilson 

Home project (physical) files, which were at Lack’s house. The Hunns did not 

ask Lack to return the AutoCAD (virtual) files. Lack retrieved the physical 

files and then cleaned out his office and left Hunn Designs.

When Lack’s employment with Hunn ended, the home plans at issue 

were not yet completed. At that time, the Winder/McGee and Brown plans 

were approximately 90–95 percent complete, the Jeffers plan was 

approximately 30–40 percent complete, and the Showcase plan was only at the 

hand-sketch stage. At the time Lack’s employment ended, Wilson had physical 

drafts of all four plans in the same stage of completion as those Lack 

maintained on his computer. Nothing new had been added to the plans 

between the time when Lack delivered the latest version of the plans to Wilson 

and the day when Lack resigned.

Upon learning that Lack was no longer employed with Hunn, Wilson 

asked Hunn who would be completing the custom home plans and when the 

completion could be expected. Hunn, who was angry with Wilson for what he 

perceived as a secret plan between Wilson and Lack for Lack to become 

employed by Dan Wilson Homes, informed Wilson that he (i.e., Hunn) did not 

know when he could complete the plans because he was busy on other projects. 

The Hunns also suggested that the draft plans were their property and that 

Wilson would violate copyright laws if he used the copies of the plans he had 

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in his possession to complete the homes for his clients. Wilson proposed several 

ideas to Hunn about how the plans could timely be completed, including: (1) 

bringing the drafts in their then-current states of completion to Hunn to 

complete; (2) Hunn employing Lack a short time more so that Lack could finish 

the plans; (3) offering to pay for the percentage of completion in which the 

drafts stood in relation to the fully completed contract amount; and (4) offering 

to have the plans finished and then brought back to Hunn so that Hunn could 

copyright them to alleviate Hunn’s contentions about asserted copyright 

claims. Hunn, however, rejected all of the ideas. Mrs. Hunn informed Wilson 

that he should hire an attorney, and the Hunns’ attorney sent a letter to Wilson 

that included a statement that “the ability of Hunn to complete the existing 

designs” had been impaired. Hunn later applied for copyright protection on 

the plans, even though he had never before registered or applied for copyrights 

on any other set of home plans.

Wilson, after failing to convince Hunn to accept one of his proposals and 

receiving the letter from the Hunns’ attorney, asked Lack to complete the 

plans. At the time Wilson asked Lack to complete the plans, Wilson was 

unaware of any non-compete clause Lack may have entered into with Hunn. 

Both Wilson and Lack believed that the plans were the property of the 

homeowners because the designs were based on the homeowners’ ideas and 

concepts. Lack completed the four plans for Wilson, using the (virtual) files 

his friend had converted to the 2006 version of AutoCAD.

Wilson tendered payment to Hunn on a pro-rated basis for the work that 

Lack had performed while still employed by Hunn. After Hunn refused to 

accept the payment, Wilson tendered payment in the full contract amount, 

which included work that had not ever been performed by Hunn. Hunn again 

refused to accept payment. Instead, on May 24, 2012, Hunn filed suit in the 

Northern District of Texas against Wilson, Dan Wilson Homes, and Lack, 

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alleging, inter alia, that Wilson and Lack secretly agreed that Lack would leave 

Hunn’s employ, misappropriate Hunn’s property, and steal Hunn’s business. 

Hunn’s second amended complaint contains eight causes of action: (i) copyright 

infringement under 17 U.S.C. § 101 et seq., against all Appellees; (ii) false 

designation of origin under 15 U.S.C. § 1125 (Lanham Act), against all 

Appellees; (iii) breach of contract, against Dan Wilson and Dan Wilson Homes; 

(iv) breach of fiduciary duty, against all Appellees; (v) breach of covenant not 

to solicit customers, against Ben Lack; (vi) tortious interference, against Dan 

Wilson and Dan Wilson Homes; (vii) computer fraud and abuse under 18 

U.S.C. § 1030(g), against all Appellees; and (viii) conspiracy, against all 

Appellees.

The district court granted summary judgment for Dan Wilson and Dan 

Wilson Homes on Hunn’s Lanham Act claim, breach of fiduciary duty claim, 

tortious interference claim, computer fraud and abuse claim, and conspiracy 

claim. The district court granted summary judgment for Lack on Hunn’s 

Lanham Act claim, computer fraud and abuse claim, breach of covenant not to 

compete claim, and conspiracy claim. Hunn appealed from the summary 

judgment order on his breach of fiduciary duty claim against Dan Wilson and 

Dan Wilson Homes, his computer fraud and abuse claim against Lack, his 

breach of covenant not to compete claim against Lack, and his Lanham Act 

claims against all Appellees. While the appeal was pending, the district court 

held a bench trial on the remaining claims. After the bench trial, the district 

court entered a judgment in favor of Appellees on all counts4 and also awarded 

attorney’s fees to Appellees. Hunn appealed from the judgment on his breach 

of fiduciary duty claim against Lack, his copyright infringement claim against 

 

4 Dan Wilson and Dan Wilson Homes asserted counterclaims against Hunn for 

copyright misuse and copyright infringement, on which the district court ruled in Hunn’s 

favor. Wilson did not appeal from this portion of the judgment.

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all Appellees, his breach of contract claim against Dan Wilson and Dan Wilson 

Homes, and on the attorney’s fees award. We consolidated the two appeals.

II.

A.

We begin with Hunn’s claims for breach of contract against Dan Wilson 

and Dan Wilson Homes. “The elements of a claim for breach of contract are: 

(1) the existence of a valid contract; (2) performance or tendered performance 

by the plaintiff; (3) breach of the contract by the defendant; and (4) damages to 

the plaintiff resulting from that breach.” Foley v. Daniel, 346 S.W.3d 687, 690 

(Tex. App.—El Paso 2009, no pet.). After trial, the district court ruled in favor 

of Appellees on this claim, for several reasons. First, Wilson did not breach the 

contract because his only duty under the contract was to pay the agreed-upon 

sum, and Wilson tendered that sum to Hunn. Second, Wilson’s obligation to 

pay arose only after Hunn performed his contractual obligation of delivering a 

completed plan, which Hunn not only failed to do, but refused to do. Third, 

Wilson was excused from performance by Hunn’s anticipatory breach of the 

contract, which was evident from “Hunn’s statement to Wilson that he did not 

know when he could get to the plans to finish them, the lecture from Mrs. Hunn 

directed at Wilson, and the letter received by Wilson from Hunn’s attorney.”

On appeal, Hunn disputes the district court’s finding that Wilson and 

Lack did not enter into a “secret agreement” whereby Lack would resign from 

Hunn Designs and begin to work directly for Wilson. Hunn claims that Lack 

and Wilson reached an “agreement during Lack’s employment with Hunn” 

and that the evidence “permit[s] no other plausible explanation.” According to 

Hunn, this secret agreement “precluded Hunn from performing the [HunnWilson] agreement, from meeting with Wilson’s clients, and from completing 

the [Hunn-Wilson] agreement.” We review the district court’s factual findings 

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for clear error. Arete Partners, L.P. v. Gunnerman, 594 F.3d 390, 394 (5th Cir. 

2010).

The district court’s finding that no “secret agreement” existed was not 

clearly erroneous. Wilson testified that he did not want Lack to resign from 

Hunn’s employ, that he did not offer Lack a job at Dan Wilson Homes, and that 

he never promised to hire Lack to finish the four plans at issue in this case 

while Lack was still an employee of Hunn’s. Likewise, Lack testified that he 

and Wilson never agreed to work together after Lack resigned and that, at the 

time Lack resigned, he did not have a job offer from Wilson. The district court 

found Lack’s testimony to be credible on this specific point. See, e.g., Orduna 

S.A. v. Zen–Noh Grain Corp., 913 F.2d 1149, 1154 (5th Cir. 1990) (“The 

credibility determination of witnesses . . . is peculiarly within the province of 

the district court.”). In light of this credible testimony, the district court’s 

finding was not clearly erroneous.

Hunn points to two pieces of evidence that he claims undermine the 

district court’s finding. First, he cites two trial exhibits showing that Lack 

invoiced Wilson on October 18, 2011 for work Lack did on the Showcase plan. 

Hunn argues that Lack’s completion of the Showcase plan just seven days after 

resigning from Hunn’s employ establishes that Lack and Wilson had a prior 

agreement and, therefore, that their testimony was not credible. We disagree

that the timing of the project’s completing compels this conclusion. While the 

fast turn-around on the project is evidence from which a factfinder could have

drawn an inference that a prior agreement existed, the district court did not 

clearly err by drawing a different inference based on the testimony and other 

evidence. 

Second, Hunn claims that Lack admitted in his deposition that he and 

Wilson reached a prior agreement. The deposition testimony in question is as 

follows:

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Q: [When you sent the AutoCAD files to have them converted to 

the 2006 version], you at that time had an agreement or 

understanding with Dan Wilson that you would continue to work 

and finish the drawings?

A: Yes. I would, yes.

Q: And he agreed to that?

A: I believe so, yes.

. . .

Q: So you felt you were free to take those CAD drawings and finish 

them?

A: They were due monies for work completed, yes. So, as it was 

agreed that between me and Mr. Wilson that they would be paid 

for the work that they . . . had done on those plans . . . .

Q: So you had an understanding before you even left Hunn Designs 

that they would be paid at the rate of $1.25 or whatever the rate 

was?

A: Yeah, whatever their invoiced rate was.

Neither of these exchanges compel the conclusion that a prior agreement 

existed. The first exchange is consistent with the conclusion, reached by the 

district court, that Lack agreed to finish the drawings as an employee of 

Hunn’s. Indeed, when Hunn’s attorney questioned Lack during trial about this 

exchange, Lack explained that he believed he would be permitted to work for 

Hunn for two weeks after tendering his resignation (i.e., after giving his “twoweek notice”). Accordingly, when Wilson expressed concern about whether 

Lack would be able to finish the plans, Lack assured Wilson that he intended 

to finish the plans in his final two weeks of employment. The district court 

credited this version of events, explicitly finding that “Lack’s statement 

referring to an agreement to complete the plans for Wilson related directly to 

Lack’s belief that he would be able to do so while still employed by Hunn and 

after giving his two weeks’ notice.” The second exchange also is consistent with 

the district court’s finding that Lack agreed to finish the drawings as an 

employee of Hunn’s. During the exchange, Lack, using the pronoun “they,” 

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agrees that Hunn Designs was entitled to payment for the plans. Thus, this 

exchange actually cuts against Hunn’s theory of the case, which is that Lack 

had agreed to finish the plans for his own personal financial gain. In any event, 

it does not appear that this deposition exchange was introduced at trial. See 

generally Fed. R. Civ. P. 32 (setting forth requirements for using deposition 

testimony at trial).

Hunn has not shown that the district court clearly erred in rejecting 

Hunn’s claim that Lack and Wilson “entered into a secret plan to steal Lack 

away from Hunn for employment by Dan Wilson Homes.” Accordingly, we will 

not disturb the district court’s ruling in favor of Appellees on Hunn’s breach of 

contract claim.

B.

We now turn to Hunn’s claim that Lack breached his fiduciary duties by 

disclosing confidential information (i.e., the unfinished plans) to Wilson and 

that Wilson knowingly participated in Lack’s breach. “The elements of a 

breach of fiduciary duty claim are: (1) a fiduciary relationship must exist 

between the plaintiff and defendant; (2) the defendant must have breached his 

fiduciary duty to the plaintiff; and (3) the defendant’s breach must result in 

injury to the plaintiff or benefit to the defendant.” Graham Mortg. Corp. v. 

Hall, 307 S.W.3d 472, 479 (Tex. App.—Dallas 2010, no pet.). Fiduciary duties 

generally terminate at the end of an employment relationship, but an “agent 

has a duty after the termination of the agency not to use or to disclose to third 

persons . . . trade secrets . . . or other similar confidential matters . . . .” NCH 

Corp. v. Broyles, 749 F.2d 247, 254 (5th Cir. 1985) (second and third alterations

in original) (internal quotation marks omitted). “[W]here a third party 

knowingly participates in the breach of duty of a fiduciary, such third party 

becomes a joint tortfeasor with the fiduciary and is liable as such.” Kinzbach 

Tool Co. v. Corbett-Wallace Corp., 160 S.W.2d 509, 514 (Tex. 1942).

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After trial, the district court ruled that Lack did not breach any fiduciary 

duties to Hunn because Lack’s fiduciary relationship to Hunn “ended upon the 

termination of his employment” and because, after his employment ended, 

Lack “did not disclose trade secrets or confidential information.” The district 

court acknowledged that Lack finished the plans for Wilson by using the 

AutoCAD files he had created while working for Hunn.5 However, the district 

court found that the plans in the AutoCAD files were the same as the physical 

copies of the plans that “already been disseminated by Hunn Designs, by way 

of its agent Lack and with full knowledge of Hunn himself, to Wilson and the 

homeowners.” Because the AutoCAD plans Lack used to complete the project 

for Wilson had already been delivered to Wilson, the district court found that 

“the partially completed plans (whether paper or electronic) were not 

maintained as confidential information.” Cf. Furr’s, Inc. v. United Specialty 

Adver. Co., 385 S.W.2d 456, 459 (Tex. Civ. App.—El Paso 1964, writ ref’d n.r.e.) 

(“The owner of the secret . . . will lose his secret by its disclosure . . . .”).

On appeal, Hunn cites Taco Cabana International, Inc. v. Two Pesos, 

Inc., 932 F.2d 1113 (5th Cir. 1991), for the proposition that a limited disclosure 

of architectural plans does not extinguish their secrecy. However, Taco 

Cabana stands only for the proposition that disclosure of confidential 

information to a particular person does not extinguish the information’s 

confidentiality as to other people. Id. at 1124. Here, on the other hand, the 

party to whom the paper plans were disclosed (i.e., Wilson) is the same party 

to whom the virtual plans were later disclosed. Information that has already 

been disclosed to a party cannot be confidential as to that same party. See 

 

5 Hunn stresses Lack’s admission that Lack, after he left Hunn’s employ, used the 

AutoCAD files he had originally created while working for Hunn. This fact does not appear 

to be disputed by anyone, and the district court did not find otherwise.

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Phillips v. Frey, 20 F.3d 623, 630 (5th Cir. 1994) (“[I]t is not improper to obtain 

knowledge of a process where the holder of the alleged trade secret voluntarily 

discloses it . . . .”); Metallurgical Indus. Inc. v. Fourtek, Inc., 790 F.2d 1195, 

1200 (5th Cir. 1986) (“[A] substantial element of secrecy must exist, so that 

except by the use of improper means, there would be difficulty in acquiring the 

information.” (internal quotation marks omitted)). Thus, Hunn can only 

prevail if the different forms of the plans (virtual and physical) differed in a

meaningful way, and if the district court clearly erred by finding that they did 

not.

Hunn insists that the virtual plans were meaningfully different from the 

physical plans because the AutoCAD plans were “kept under lock, key, and 

password.” However, keeping one copy of the plans under lock, key, and 

password does not change the nature or substance of the plans. If Wilson 

already possessed identical plans, it is of no consequence that another copy of 

the same plans was locked up somewhere else. The distinction between the 

virtual plans and the physical plans only is a meaningful one if the former 

contain additional information not available to (i.e., kept confidential from) 

Wilson. Cf. Greenberg v. Nat’l Geographic Soc’y, 533 F.3d 1244, 1257 (11th Cir. 

2008) (noting, in the copyright context, “that a difference in form is not the 

same as a difference in substance”). Hunn, in his briefing to us, does not cite 

any evidence of relevant differences between the two formats, nor does he cite 

any evidence that the virtual files contained information or metadata that the 

physical files did not. His failure to cite any such evidence is determinative. 

See Messer v. Meno, 130 F.3d 130, 135 (5th Cir. 1997) ( “TEA’s failure to cite . . .

the record not only waives this complaint on appeal but demonstrates the lack 

of evidence in the agency’s favor.”).

In any event, our independent review of the trial testimony reveals only 

a snippet of testimony by Hunn about AutoCAD’s “layers” feature, which 

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allows the drafter to “separate elements of a drawing.” Hunn testified that the 

layers feature can be beneficial, “[i]f your AutoCAD is set up that way,” because 

“[y]ou can turn those layers on and off to display [only] the information that 

you would like to display.” Even if this feature were enough to make a 

difference,6 there is no evidence that the AutoCAD files in this case were “set 

up that way” or that Lack utilized layers in drafting the four plans at issue 

here. Nor did Hunn testify that the AutoCAD files in this case contained 

hidden layers that were not visible on the physical plans delivered to Wilson. 

Without any evidence on the point, we cannot just assume that the AutoCAD 

files were substantively different from the physical files, and we certainly 

cannot say that the district court clearly erred by finding that they were the 

same. See, e.g., Planned Parenthood of Greater Tex. Surgical Health Servs. v. 

Abbott, 748 F.3d 583, 604 (5th Cir. 2014) (“Courts . . . must base decisions on 

facts, not hypothesis and speculation.”).

Moreover, even assuming arguendo that the manipulability of AutoCAD 

files could make the files “confidential,” the record contains conflicting 

evidence about whether AutoCAD files are, in fact, easier to manipulate than 

handwritten files. Lack testified that “[i]t’s easier to make changes to a 

floorplan in handwritten form, in a hand sketch, than it is on the AutoCAD. I 

know that sounds backwards, but it’s actually easier to make changes in a 

hand sketch than it is on the AutoCAD system until you get down toward the 

end of the plans.” Hunn, on the other hand, testified: “Changes are a lot easier 

to make on the AutoCAD program versus hand drawing. . . . [I]f you have an 

architectural drawing that is done in pencil, changes require you to make a lot 

of erasures to clear off the old and then update the new, and you have to 

 

6 The fact that layers permit a user to view the plans differently does not change the 

substance of what is being viewed, just as using a magnifying glass to read fine print does 

not change the substance of what is printed.

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coordinate that with all the other drawings. So you really have to manipulate 

hand drawings extensively to get the final product you want.” In light of the 

conflicting testimony, as well as the district court’s credibility determinations, 

we cannot say that the district court clearly erred in its finding that the virtual 

files contained the same information as the paper files, and that Lack did not 

disclose confidential information when he shared the AutoCAD plans with 

Wilson, who already possessed the same plans in physical form. 

Because Lack did not violate any fiduciary duty, Wilson could not have 

knowingly participated in Lack’s breach of fiduciary duty.7 Accordingly, the 

district court properly ruled in favor of Lack on Count IV of Hunn’s complaint.

C.

Hunn contends that Lack violated the Computer Fraud and Abuse Act, 

18 U.S.C. § 1030, by using his work computer to transfer the AutoCAD files to 

his home computer with the intent of using those files for his personal benefit. 

The district court granted summary judgment to Lack on this claim, and we

find no error. As an initial matter, Hunn never explains which subsection of 

§ 1030 he alleges Lack violated. Compare, e.g., § 1030(a)(2)(C) (“Whoever 

intentionally accesses a computer without authorization or exceeds authorized 

access, and thereby obtains information from any protected computer . . . .”), 

with § 1030(a)(4) (“Whoever[,] knowingly and with intent to defraud, accesses 

a protected computer without authorization, or exceeds authorized access, and 

by means of such conduct furthers the intended fraud and obtains anything of 

 

7 The claims against Dan Wilson and Dan Wilson Homes fail for an additional,

independent reason. Those claims turn on the existence of a covert agreement between Lack 

and Wilson for Lack to terminate his employment with Hunn and to compete against Hunn 

while working for Wilson. However, as we have explained, the district court explicitly found 

that “Lack did not collude, plan, conspire, or otherwise secretively further an undertaking 

with Wilson to leave Hunn’s employment and become an employee of Dan Wilson Homes . . . .” 

As noted above, this finding was not clearly erroneous.

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value . . . .”). In any event, Hunn’s claim necessarily fails because Lack did not 

“exceed[] authorized access” to Hunn’s computers. Hunn concedes that Lack, 

while employed by Hunn, had permission to send AutoCAD files to his home 

computer and to work on plans while at home. When Lack sent the AutoCAD 

files to his friend for conversion to the 2006 version of AutoCAD, Lack was still 

employed by Hunn and, according to the district court, was “still under the 

impression that he would be allowed to continue working at Hunn Designs on 

the projects he had been assigned.”8 In addition, the district court found that 

Lack’s “intentions in converting the files on October 9 were not for the purpose 

of leaving his employment with Hunn.” These findings were not clearly 

erroneous. See Orduna, 913 F.2d at 1154 (“The credibility determination of 

witnesses . . . is peculiarly within the province of the district court.”). Thus, 

because Lack did not exceed authorized access, he did not violate the Computer 

Fraud and Abuse Act.

D.

Hunn alleged that Lack violated a non-compete clause in Lack’s at-will 

employment agreement. The non-compete clause provides:

In the event you leave or are separated from Hunn Designs’ 

employment, you agree not to solicit, either directly or indirectly, 

business from, or undertake with any customers serviced by you 

while in the employ of Hunn Designs, or any other Hunn Designs’ 

customers for a period of two years thereafter.

According to Hunn, Lack violated this clause when he agreed to complete the 

plans for Wilson. The district court granted summary judgment to Lack on 

this claim because, in the district court’s view, the non-compete clause was 

unenforceable. “The enforceability of a covenant not to compete is a question 

 

8 There is no allegation that Lack accessed Hunn’s computers after Lack’s employment 

with Hunn ended.

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of law,” Mann Frankfort Stein & Lipp Advisors, Inc. v. Fielding, 289 S.W.3d 

844, 848 (Tex. 2009), and we review the district court’s summary judgment 

ruling de novo, see Arete Partners, 594 F.3d at 394.

The enforceability of non-compete clauses is governed by the Texas 

Covenants Not to Compete Act. See Marsh USA Inc. v. Cook, 354 S.W.3d 764, 

768 (Tex. 2011) (“Covenants that place limits on former employees’ 

professional mobility or restrict their solicitation of the former employers’ 

customers and employees are restraints on trade and are governed by the 

Act.”). In relevant part, the Act provides that “a covenant not to compete is 

enforceable if it is ancillary to or part of an otherwise enforceable agreement 

at the time the agreement is made.” Tex. Bus. & Com. Code § 15.50(a). 

The requirement of an “otherwise enforceable agreement” is satisfied 

when the covenant is ancillary to or part of an agreement which contains 

mutual, nonillusory promises. Marsh, 354 S.W.3d at 773. “The covenant 

cannot be a stand-alone promise from the employee lacking any new 

consideration from the employer.” Alex Sheshunoff Mgmt. Servs., L.P. v. 

Johnson, 209 S.W.3d 644, 651 (Tex. 2006). A contract for at-will employment, 

standing alone, does not satisfy the requirement of an “otherwise enforceable 

agreement” because the promise of continued employment in an at-will 

contract is illusory—neither the employer or employee is bound in any way. 

See Fielding, 289 S.W.3d at 849. Because Lack was an at-will employee, the

employment agreement itself does not constitute an “otherwise enforceable 

agreement.”

Hunn attempts to avoid this result by relying on a line of Texas cases 

holding that an employer’s promise to provide an employee with confidential 

information, paired with an employee’s promise not to disclose that 

confidential information, may serve as an “enforceable agreement” supporting 

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a non-compete covenant. This principle has been the subject of numerous 

recent Texas Supreme Court opinions, which we briefly will summarize here.

In Light v. Centel Cellular Co. of Tex., 883 S.W.2d 642, 644 (Tex. 1994), 

abrogated by Marsh, 354 S.W.3d 764, the Texas Supreme Court explained that 

an at-will employment agreement, standing alone, could not be an “otherwise 

enforceable agreement.” The court acknowledged that “[a]t-will employees 

may contract with their employers on any matter except those which would 

limit the ability of either employer or employee to terminate the employment 

at will.” Id. For example, the court explained, an employee could promise “not 

to disclose an employer’s trade secrets and other proprietary information,” and 

the employer could promise to provide that information during the employee’s 

employment. Id. at 645 n.6. Such a promise by the employer would initially

be illusory because “the employer could fire the employee and escape the 

obligation to perform.” Id. “If, however, the employer accepts the employee’s 

offer by [disclosing trade secrets], a unilateral contract is created in which the 

employee is now bound by [his] promise.” Id. However, the Light court

suggested that such an agreement still would not support a non-compete 

covenant because it would not be “an ‘otherwise enforceable agreement at the 

time the agreement is made’ as required by § 15.50.” Id. (emphasis added) 

(quoting Tex. Bus. & Comm. Code § 15.50(a)).

Alex Sheshunoff, 209 S.W.3d 644, presented the very situation about 

which the Light court hypothesized. In Alex Sheshunoff, the Texas Supreme 

Court reaffirmed “Light’s recitation of basic contract law in footnote six that 

‘[i]f only one promise is illusory, a unilateral contract can still be formed; the 

non-illusory promise can serve as an offer, which the promisor who made the 

illusory promise can accept by performance.’” Id. at 650 (alteration in original) 

(quoting Light, 883 S.W.2d at 645 n.6). However, the court departed from 

Light’s dictum “that a unilateral contract can never meet the requirements of 

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the Act because such a contract is not immediately enforceable when made.” 

Id. at 651. Instead, the court held that the “covenant need only be ‘ancillary to 

or part of’ the agreement at the time the agreement is made. Accordingly, a 

unilateral contract formed when the employer performs a promise that was 

illusory when made can satisfy the requirements of the Act.” Id. at 651 

(quoting § 15.50(a)). Because the employer had explicitly promised to provide 

the employee with confidential information, the employee had explicitly 

promised not to disclose the confidential information, and the employer 

actually had provided the employee with the confidential information, id. at 

647, the non-compete covenant was ancillary to an “otherwise enforceable 

agreement.”

In Fielding, 289 S.W.3d 844, the Texas Supreme Court again addressed

the enforceability of non-compete covenants. In Fielding, like in Sheshunoff, 

the employee expressly promised not to disclose any confidential information. 

Id. at 850. However, unlike in Sheshunoff, the employer never expressly 

promised to provide the employee with confidential information. Id. The 

Texas Supreme Court held that the lack of an express promise by the employer 

was not determinative; rather, it held that “[w]hen the nature of the work the 

employee is hired to perform requires confidential information to be provided,

. . . the employer impliedly promises confidential information will be provided.” 

Id. Or, put differently, “when it is clear that performance expressly promised 

by one party is such that it cannot be accomplished until a second party has 

first performed, the law will deem the second party to have impliedly promised 

to perform the necessary action.” Id. at 851 (emphasis added). Applying this 

rule to the facts of the case, the court held that the non-compete covenant was 

enforceable because the employee promised not to disclose confidential 

information and his work as a certified public accountant “necessarily involved 

the provision of confidential information by [his employer].” Id. Accordingly, 

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“the parties . . . formed an ‘otherwise enforceable agreement’ as contemplated 

by section 15.50 when [the employer] performed its illusory [and implied]

promise by actually providing confidential information.”9

Hunn can find no refuge in this line of cases because neither he nor Lack 

made an express promise regarding confidential information. As the district 

court aptly recognized:

Here, neither the employer, Hunn, expressly promised to provide 

confidential information, nor did Lack, the employee, expressly 

promise not to disclose confidential information. This very 

important distinction cannot be missed. The rulings in the two 

cases relied upon by Hunn, as just discussed, clearly had one party 

or the other making express promises regarding confidential 

information, thereby implying a contract to the other party. Here, 

that clearly did not occur.

The employment agreement is devoid of any reference to the topic of 

confidential information; thus, Fielding’s holding—that when an employee 

expressly promises not to disclose confidential information, an employer 

impliedly promises to provide that confidential information—is inapposite 

here. Lack never expressly promised not to disclose confidential information, 

so there was no corresponding implied promise to provide confidential 

information—and therefore, there was no agreement regarding confidential 

information. In the absence of such an agreement, the non-compete covenant 

fails because there was no “otherwise enforceable agreement” to which it was 

connected.

 

9 Yet another case in this series, Marsh USA Inc. v. Cook, 354 S.W.3d 764 (Tex. 2011), 

adopted an expansive definition of the statutory phrase “ancillary to or part of,” overruling 

the narrow definition that was given to that phrase in Light v. Centel Cellular Co. of Texas, 

883 S.W.2d 642 (Tex. 1994). Here, we need not reach the question of whether the noncompete covenant satisfies the “ancillary to or part of” requirement, nor do we need to 

consider whether Hunn actually provided Lack with access to confidential information.

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In response to this point, Hunn argues that a promise not to disclose 

confidential information would have been “redundant and unnecessary 

because, as a matter of state law, . . . Lack had that obligation without a written 

contract or express promise.” This argument is a non-starter. The question is 

not whether Lack had a duty, enforceable in tort, not to disclose confidential 

information. The question is whether the parties entered into an enforceable 

contract to which the non-compete covenant was ancillary. Absent such a 

contract, the non-compete agreement was not ancillary to any “otherwise 

enforceable agreement” and is thus invalid. Accordingly, the district court 

appropriately granted summary judgment to Lack.

E.

Hunn further alleged that Appellees, by using the four plans to complete 

the houses, infringed the copyrights Hunn obtained on the partial plans Lack 

had drawn while still employed by Hunn. “To prevail on a copyright 

infringement claim, a plaintiff must show (1) ownership of a valid copyright 

and (2) unauthorized copying.” Peel & Co., Inc. v. Rug Mkt., 238 F.3d 391, 394 

(5th Cir. 2001). “The existence of a license authorizing the use of copyrighted 

material is an affirmative defense to an allegation of infringement.” Baisden v. 

I’m Ready Prods., Inc., 693 F.3d 491, 499 (5th Cir. 2012) (internal quotation 

marks omitted).

After trial, the district court ruled in favor of Appellees on this claim 

because it found that “[a]n implied license existed for the use of the draft plans 

at issue.” According to the district court, “[a]s was often the industry practice 

in the Lubbock area by home builders and draftsmen or architects, the intent 

of the parties here was to grant an implied license for the use of . . . the plans 

later copyrighted by Hunn to build the Winder/McGee, Jeffers, Brown, and 

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Showcase homes.”10 The district court based its conclusion, in part, on the fact 

that the homeowners themselves “essentially came up with their design ideas 

and sought to have those self-designed homes built [after their ideas were] 

placed into the drafting stage. . . . Under Hunn’s theory of the case, he had the 

power to stop the homeowners from building their self-designed dream homes 

based on his assertions to Wilson of copyright.”11

On appeal, Hunn argues that the district court erred in finding the 

existence of an implied license. Hunn asserts that “[n]o known prior case has 

concluded that a license results from the delivery of drafts” and that the 

district court’s “conclusion of the existence of an implied license was clearly 

erroneous.” Contrary to Hunn’s assertion, several cases have found implied 

licenses in circumstances similar to those in this case. For example, in I.A.E., 

Inc. v. Shaver, 74 F.3d 768 (7th Cir. 1996), an architect named Shaver prepared 

and delivered a preliminary design for an airport project. Id. at 771. After 

receiving the preliminary design, the contractor elected to hire another 

architect to complete the design. Id. Shaver sued, claiming, among other 

things, that he had not granted the airport a license to use his drawings “in 

any way that it wished,” but rather only to use the drawings in completing the 

project with Shaver as the architect. Id. at 773. The Seventh Circuit affirmed 

summary judgment against Shaver because “Shaver created an implied 

 

10 The district court also stated: “Hunn Designs’ conduct and practice of allowing Lack 

to take copies of the updated plans each week to the homeowners and Wilson demonstrate 

an agreed understanding between Wilson and Hunn of a continuing license to use the home 

plans to build the homes for which they were created.” 

11 In the alternative, the district court found that three copyrighted plans were not 

“substantially similar” to the plans used to build the Winder/McGee, Jeffers, and Showcase 

homes, and that Wilson had his own copyright on the plans for the Green home. Accordingly, 

the district court ruled that even if there was no license, there still was no infringement. In 

light of our determination that Wilson had an implied license to use the copyrighted plans, 

we need not review the district court’s determination that the plans were not “substantially 

similar.”

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nonexclusive license to use his schematic design drawings in the Airport 

Project,” and his “contention that he never intended to grant a license for the 

use of his drawings past the drafting stage unless he was the continuing 

architect is simply not supported by the record.” Id. at 777–78. Likewise, 

Hunn created an implied nonexclusive license when he delivered (through his 

agent, Lack) plans for the four custom homes without any “written or orally 

communicated restrictions about limits on Dan Wilson’s ability to use the 

delivered drawings.” Cf. Effects Associates, Inc. v. Cohen, 908 F.2d 555, 558 

(9th Cir. 1990) (“[Plaintiff] created a work at defendant’s request and handed 

it over, intending that defendant copy and distribute it. . . . Accordingly, we 

conclude that [Plaintiff] impliedly granted nonexclusive licenses to 

[Defendant] . . . .”).

Hunn next argues that, even if he granted a license to Wilson to use the 

draft plans, he did not grant a license for Wilson to use the plans in the 

AutoCAD format. This argument fails for at least two reasons. First, as we 

have explained, the AutoCAD files contained the same plans as the physical 

files for which Wilson had an implied license. Second, Hunn did not copyright 

the AutoCAD files; he copyrighted plans that he printed out from the AutoCAD 

program.12 Thus, the plans for which he received copyrights were identical—

in both substance and form—to the plans that Wilson already had in his 

possession and for which he had an implied license. Accordingly, we find no 

reversible error with respect to the copyright claim.

 

12 At trial, the following exchange took place during re-cross-examination of Hunn:

Counsel for Wilson: You didn’t actually sen[d] the AutoCAD program up to 

the copyright office and say, “Copyright, this is electronic data,” did you?

Hunn: No.

Counsel for Wilson: You just hit “Print,” and that's what came out of it? 

Hunn: [Yes].

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F.

Hunn alleged that all Appellees violated the Lanham Act, 15 U.S.C. 

§ 1125(a), which prohibits, inter alia, “false designations of origin” that are 

“likely to cause confusion.” Hunn pursued this claim as a “reverse passing off” 

claim, meaning that Hunn alleged that Appellees were passing off Hunn’s 

product as their own. See Johnson v. Jones, 149 F.3d 494, 504 (6th Cir. 1998) 

(“[T]he typical case of deliberate ‘passing off’ involves a defendant’s passing off 

his own product as that of the plaintiff. This, however, is the quintessential 

‘reverse passing off’; here, the defendant is deliberately passing off the 

plaintiff’s product as his own.”). Hunn’s claim is based on his allegation that 

Wilson submitted the finished plans to the City of Lubbock without any 

statement on the plans indicating that portions of the work were completed 

during Lack’s employment with Hunn. 

In the district court, Hunn argued that the elements of a Lanham Act 

claim for false designation of origin are: “(1) the false designation must have a 

substantial economic effect on interstate commerce; and (2) the false 

designation must create a likelihood of confusion.” (Emphasis added). The 

district court granted summary judgment for defendants on this claim because 

Hunn did not submit any summary judgment evidence that the drawings 

submitted to the City of Lubbock had a “substantial economic effect on 

interstate commerce.” 

On appeal, Hunn changes his tune and argues that “15 U.S.C. § 1125 

does not require a ‘substantial effect’ on commerce.” We highly doubt that 

Hunn may raise this argument on appeal, given that he advanced the contrary 

argument in the district court. But even assuming arguendo that he can, he is 

incorrect; the statute does require that the allegedly false designation enter 

into and/or have an effect on interstate commerce. See, e.g., King v. Ames, 179 

F.3d 370, 373–74 (5th Cir. 1999) (“Persons bringing an action pursuant to this 

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provision must demonstrate that . . . the defendants caused their products to 

enter interstate commerce . . . .”); Roho, Inc. v. Marquis, 902 F.2d 356, 358 (5th 

Cir. 1990) (noting that a “reverse palming off” claim requires proof of “a use of 

false designation of origin and false representation in interstate commerce”). 

Hunn does not cite to any evidence in the record that these plans—which were 

created by Lubbock businesses to build homes in Lubbock and were submitted 

to the City of Lubbock—affected or entered into interstate commerce. 

Accordingly, the district court correctly determined that Hunn’s Lanham Act 

claim fails.

G.

Finally, Hunn appeals from the district court’s award of attorney’s fees 

to Wilson and Lack for prevailing in their defense against a copyright 

infringement claim. See 17 U.S.C. § 505; see also Galiano v. Harrah’s 

Operating Co., 416 F.3d 411, 422–23 (5th Cir. 2005) (“The Copyright Act 

provides that ‘in its discretion’ a district court may ‘award a reasonable 

attorney’s fee to the prevailing party as part of the costs.’” (quoting 17 U.S.C. 

§ 505)). We review a district court’s award of attorney’s fees under the 

Copyright Act for abuse of discretion. Galiano, 416 F.3d at 423. 

“[A]n award of attorney’s fees to the prevailing party in a copyright 

action is the rule rather than the exception and should be awarded routinely.” 

Virgin Records Am., Inc. v. Thompson, 512 F.3d 724, 726 (5th Cir. 2008)

(internal quotation marks omitted). In Fogerty v. Fantasy, Inc., 510 U.S. 517, 

534–35 (1994), the Supreme Court listed several non-exclusive factors that a 

court may consider in exercising its discretion: “frivolousness, motivation, 

objective unreasonableness (both in the factual and in the legal components of 

the case) and the need in particular circumstances to advance considerations 

of compensation and deterrence.” 510 U.S. at 534 n.19 (internal quotation 

marks omitted). Although these factors are useful, we have “rejected the idea 

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that district courts are bound to apply verbatim the factors listed [in Fogerty].” 

Compaq Computer Corp. v. Ergonome Inc., 387 F.3d 403, 412 (5th Cir. 2004). 

Indeed, we have affirmed an award of attorney’s fees where, as here, the 

district court applied the factors from Johnson v. Georgia Highway Express, 

Inc., 488 F.2d 714 (5th Cir. 1974), instead of the factors from Fogerty. See 

Hogan Sys., Inc. v. Cybresource Int’l, Inc., 158 F.3d 319, 325 (5th Cir. 1998).

We find no abuse of discretion in this case. The district court’s order

regarding attorney’s fees is materially identical to the district court’s order in 

Bridgmon v. Array Sys. Corp., 325 F.3d 572, 578 (5th Cir. 2003), in which we 

upheld a fee award and stated: “The court cited and, we are confident, applied 

the relevant authorities, and it explicitly stated that its award promotes the 

purposes of the Copyright Act and is reasonable.” Although the district court 

in this case did not explicitly state that the award “promotes the purposes of 

the Copyright Act,” its extensive analysis of the copyright issues in its findings 

of fact and conclusions of law make clear that it considered the parties’ 

motivations, reasonableness, and the need to advance considerations of 

compensation and deterrence. Moreover, in our judgment, “there were 

sufficient grounds supporting the district court’s exercise of its discretion to 

award attorneys’ fees.” Hogan, 158 F.3d at 326. Because the district court 

cited and applied the relevant authorities, and because Hunn has “offered 

nothing on appeal to compel a conclusion that the district court abused its 

discretion,” Creations Unlimited, Inc. v. McCain, 112 F.3d 814, 817 (5th Cir. 

1997), the district court did not abuse its discretion by awarding attorney’s 

fees.

AFFIRMED.

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