## Facts

- Frank Herbert McClain, Jr. worked for Didrickson Associates, Inc., repairing circuit boards used in General Electric (GE) gas turbines.
- Didrickson kept a library of circuit diagrams (“backsheets”) in locked file cabinets within a secured building; employees used them in repair work.
- GE had released the backsheets in Didrickson’s library into the public domain.
- While employed, McClain wrote handwritten notes and summaries (“set-up sheets”) on backsheets to aid testing and repairs.
- McClain had no confidentiality agreement, noncompete agreement, or work-product assignment agreement with Didrickson.
- After leaving to start his own business, McClain took about 100 backsheets containing his annotations; he later returned them after Didrickson requested their return.
- The State prosecuted McClain for theft of trade secrets, asserting that the backsheets and/or McClain’s annotations were trade secrets owned by Didrickson.
- A jury convicted McClain and imposed a prison sentence.

## Issues

1. Whether the backsheets constituted trade secrets when their content had been placed in the public domain.
2. Whether McClain’s annotations on the backsheets constituted trade secrets owned by Didrickson, despite no assignment agreement and no evidence McClain was hired to invent.
3. Whether the evidence was legally sufficient to prove theft of a trade secret owned by another.
4. Whether the appellate court had jurisdiction to review the trial court’s bond-revocation ruling.

## Decision

- The court reversed the conviction and rendered a judgment of acquittal.
- The backsheets were not trade secrets because their content was in the public domain.
- The State failed to prove that any trade secret in McClain’s annotations was owned by Didrickson rather than by McClain.
- The bond-revocation complaint was dismissed for lack of appellate jurisdiction.

## Legal Principles

- Information in the public domain cannot qualify as a trade secret, even if a party restricts physical access to copies of that information.
- Reasonable secrecy measures are necessary for trade-secret protection but cannot create secrecy where the information is publicly available.
- Criminal theft of trade secrets requires proof beyond a reasonable doubt that (1) a trade secret exists and (2) it is owned by someone other than the defendant.
- In the absence of an agreement assigning employee-created work product (and where the employee is not hired to invent), the employee may own the improvement; the employer may have only a nonexclusive shop right to use it.

## Conclusion

The appellate court set aside the theft-of-trade-secrets conviction because the alleged secret information was public and, in any event, the State did not prove that Didrickson owned McClain’s employment-created annotations; with essential elements unproven, the proper remedy was acquittal.


McClain v. State, 269 S.W.3d 191 (Tex. App.—Texarkana 2008)