Creedon PLLC Associate Charles Wallace Secures Criminal Sentence 20% Below Guidelines Range

Creedon PLLC associate Charles Wallace marked his first appearance in the United States District Court for the Northern District of Texas by securing a sentence 20% below the lowest federal guidelines range for his client. The defendant, a Houston man facing up to 40 years for his role in a robbery conspiracy, had a number of significant factors in his case which weighed in favor of a lesser sentence. Focusing in on key moments in our client’s life, and clearly explaining how such influences explain the defendant’s role in the conspiracy, Charles successfully argued that a lower sentence would provide greater opportunities for long-term benefit both to our client and his community.

James Creedon, managing attorney for Creedon PLLC, was particularly impressed by how Charles used his extensive background in theater in his presentation of the sentencing argument. “Charles has performed before thousands of people, but a hearing in federal court can be stressful regardless of your background. His articulate and emotional plea for our client made all the difference, and I was proud to hear District Judge Ed Kinkeade commend him for his efforts.”

Creedon PLLC focuses on representing our business clients in intellectual property matters, transactional work, and litigation, but we believe strongly in providing assistance to those in our community most in need. With multiple attorneys on the Northern District of Texas Criminal Justice Act Panel, our firm represents indigent defendants in seeking fair sentences and long-term opportunities to make the most of their lives.

Creedon PLLC
“Don’t Rush to Failure” — Why Company Policies Come First

I am often asked to update a company’s handbooks, contracts, and policies, or to prepare these important documents when none existed. Unfortunately, the first test of the enforceability and utility of these writings comes at the worst possible time for the employer – when needed to justify and support a termination or, even worse, in litigation. When a company is just starting out, there are so many moving pieces to get the business off the ground that, by necessity or inattention, the documents dictating important relationships go by the wayside. Sometimes new business owners will resort to short cuts like searching the internet for something that seems to fit. However, it is often unclear where the language in these documents came from, which state and federal laws apply, and whether the document takes account of changes in authorities such as statutes or administrative regulations. Regrettably, the business owner will generally only discover these issues when the documents become critically important – too late in the game.

Careful preparation of your contracts and policies allows you to think through these questions proactively. For example, one way of drafting may dictate where any litigation occurs – preferably in your preferred courts – whereas another leaves room for the other side to choose where and how to bring a case. With that in mind, here are some points to keep in mind:

  1. CONSIDER INCLUDING VENUE AND FORUM PROVISIONS IN YOUR CONTRACTS AND USING ARBITRATION AGREEMENTS FOR YOUR EMPLOYEES. Including a dispute resolution process in your employee agreements affords you notice before things get out of hand, and can solidify your position by allowing you to determine when, how, and where matters get brought before a court. Additionally, language requiring notice of claims, or requiring that you have the opportunity to cure any alleged issues, can potentially save a relationship before things become irreconcilable. 

  2. INCLUDE NOTICE AND OPPORTUNITY TO CURE PROVISIONS IN YOUR CONTRACTS WITH VENDORS AND BUSINESS AFFILIATES. Similarly, with regard to your vendors and other contracted parties, a robust dispute resolution process can require not only advance notice, but resolution opportunity steps before launching into costly litigation. Advance notice can allow you to get in front of potentially problematic terminations. A jury waiver or arbitration clause can be imposed to lessen the damages potential of a jury verdict, and place decisions in the hands of a former judge or attorney who may be better able to understand the legal issues involved. 

  3. CAREFULLY REVIEW THE CLAUSES IN YOUR EMPLOYEE HANDBOOK. Your company handbooks is your employee’s first experience with understanding how you want to run your business. How lenient do you want to be with absenteeism, or is it critical to your business that your employees show up on time and provide advance notice of absences? Do you want to pay out unused vacation when an employee quits? Do you want the option to withhold pay if an employee leaves owing money? What kind of disciplinary policies do you want to implement? These very important questions can be addressed in a well written and considered handbook. From a practical perspective, these policies will come into play when you terminate an employee and they seek unemployment. The availability of unemployment benefits for a terminated employee can depend on whether there was a policy in place to address the conduct at issue, and whether you provided warnings prior to the termination. Therefore, to manage your unemployment claims, it is important to address in writing conduct that will constitute grounds for termination. It is also important that the employee understand those grounds in order to adjust conduct accordingly.

In the bustle of starting or scaling a business, remember the phrase “don’t rush to failure.” Careful planning at the early stages may pay dividends for years to come, providing a solid foundation on which to build your vision.

Mary Harokopus
Music Law for PRO's
 Photo by  NeONBRAND  on  Unsplash .

Photo by NeONBRAND on Unsplash.

Most everyone has attended a live music concert at one point or another (if you haven’t, you’re really missing out on a significant facet of life — get out more), but almost no one is lame enough to simultaneously consider the legal implications of what they are watching (notice I said “almost” no one). I have been attending live music concerts, theatrical and dance performances, and other “gigs” since a very early age, and I have always been fascinated by the creativity required in putting together a show. How much of the musical performance, however, really belongs to the performers (or group, company, etc.), and how much of it was taken? Moreover, how much of another’s work is allowed to be performed without permission, if at all?

I became an attorney, in part, to learn the answer to these types of questions inherent in the entertainment industry. Much to my dissatisfaction, I learned that the answer is largely “it depends” — any attorney can tell you that. However, the question of “what material is a band allowed to perform” can be answered with relative certainty, especially when it comes to a band playing another artist’s song publicly.

First, some context:

In the music industry, there are two different types of copyrights: (1) Musical Works and (2) Sound Recordings. A musical work, or simply, a “song,” is both the lyrics and music that make up the written musical composition itself. A sound recording, on the other hand, is a work made up of recorded sound. The owner of a Musical Work copyright often owns both the copyright in the song itself and the copyright in the Sound Recording of that same song (if one exists). 

Among the exclusive rights granted to copyright owners in the music industry is the right to publicly perform the song (see 17 U.S.C. §106(4)) and to perform the sound recording of the song through digital transmission (see 17 U.S.C. §106(6)). For example, if a guitarist plays the all-too-familiar guitar riff to Led Zeppelin’s “Stairway To Heaven” in a public place without permission, that infringes on the band’s Musical Work copyright. Similarly, playing the band’s original recording of the song off a CD or audio track in public would infringe on the band’s Sound Recording copyright. This is where the Performance Rights Organizations (“PROs”) come in.

A PRO, like the American Society of Composers, Authors, and Publishers (“ASCAP”) and Broadcast Music, Inc. (“BMI”), licenses the public performance rights of their songwriter, composer, and producer members to users such as restaurants, bars, and radio stations. These “blanket licenses” give licensees access to a PRO’s full database of songs without licensees having to procure individual licenses from each member of a PRO and without rights holders having to solicit individual licenses to potential customers. Generally, a band does not need a license to perform a cover song live because it is the club, restaurant, or concert venue’s responsibility to obtain the necessary public performance licenses from the PROs. This does not mean, however, that the band is completely insulated from liability when publicly performing others’ songs.. 

Although it is the audience’s job to enjoy the musical performance, show, or concert (or in my case, to spend half my time considering the legality of what I am witnessing), it is the band’s job to make sure its performance is compliant with laws meant to protect artists from infringing and “free-riding” on others’ work. With respect to the everyday garage band, live musician, or recording artist, here are some helpful notes that may help one avoid a potential lawsuit from infringing on another’s public performance rights: 

  1. Play your own material. I can’t stress this enough — this is, by far, the safest (but not always the most fun) way to insulate yourself from copyright infringement liability. You can’t infringe on your own copyrights, so create away, and play to your heart’s content (then make sure other bands aren’t using your material).

  2. Check whether the performance venue secured PRO licensing. If a venue has opted not to buy any music performance licenses from any PROs, then it might tell you that you cannot play any other band’s material (“cover” songs). In this case, try to respect this request and refer back to Note 1 above. When in doubt, ask!

  3. If necessary, purchase your own PRO license. If your show is largely comprised of others’ material, and if the venue you are performing at does not have a license, it is best practice to check with the applicable PRO to see whether they require you to purchase your own license. 

These three steps only speak to performing others’ material in full and does not contemplate other types of use such as sampling, parody, and other fair use. Copyright is a complex and specialized area of the law, so it is best to revel in your own creativity and avoid using another’s work. Or consult the PROs.

Charles Wallace
Standing “To Sue” and Standing “To Be Heard” — On the Texas Association of Business v. City of Austin Standing Analysis

While everyone focuses on the merits of the plaintiffs’ claims in Texas Association of Business v. City of Austin and argue over the constitutionality of the City of Austin’s paid-sick-leave ordinance and the scope of the preemption doctrine, the headline issue should be whether the State of Texas has standing as a plaintiff intervenor to sue the City of Austin. (I’ll explain why in a moment. *hint: It has something to do with the advisory-opinion prohibition.) The Austin Court of Appeals held the state did, in fact, have standing to intervene as a plaintiff and seek affirmative relief against the City of Austin. But the court’s opinion on the standing issue lacks adequate legal analysis and raises serious separation of powers concerns.

Texas Association of Business v. City of Austin—The Court’s Standing Analysis

In City of Austin, the plaintiffs sued the City of Austin and its manager, seeking injunctive relief against enforcement of and an order holding unconstitutional the City’s paid-sick-leave ordinance. The State intervened as a plaintiff in the suit. The trial court denied the plaintiffs’ application for a temporary restraining order against the defendants and denied the defendants’ pleas to the jurisdiction and their motion to strike the state’s intervenor petition.

The plaintiffs and defendants raised various points of error on interlocutory appeal, but this blog focuses on one. The City argued on appeal that the state lacked standing to intervene as a party plaintiff in the suit. Since the state relied on Texas Civil Practice & Remedies Code § 37.006(b) as its jurisdictional basis to pursue a legal remedy against the defendants, the appellate court focused its analysis on that specific statutory provision.

To reach its conclusion, the appellate court first drew a distinction between general “standing” analysis and “statutory-standing” analysis. According to the court, standing generally “focuses on the question who may bring an action.” In “statutory-standing cases,” the court simply conducts “a straight statutory construction of the relevant statute to determine upon whom the Texas Legislature conferred standing.” The “judge-made criteria” ordinarily applied to assess standing do not apply.

The court then looked to the specific statutory provision at issue:

In any proceeding that involves the validity of a municipal ordinance or franchise, the municipality must be made a party and is entitled to be heard, and if the statute, ordinance, or franchise is alleged to be unconstitutional, the attorney general of the state must also be served with a copy of the proceeding and is entitled to be heard.

Tex. Civ. Prac. & Rem. Code § 37.006(b) (emphasis added).

The question raised by the defendants was whether “entitled to be heard” conferred on the state a right to sue as a party under the circumstances in the underlying suit. The court rejected the City of Austin’s position that “entitled to be heard” only allowed the state to file an amicus brief, reasoning that the phrase would be rendered meaningless under such a construction, since any person “who follows the applicable procedural rules” may file an amicus brief.

Entitled to be heard,” according to the court, “suggests the ability to appear in court and present evidence and argument.” From this suggestion, the court suggested that it followed “entitled to be heard” means “to be a party” (note the i.e. in the opinion). The court added, “consistent with this notion,” other courts have not questioned the state’s “right to intervene in the litigation as a party” under section 37.006(b). Since section 37.006(b) entitles the state to be heard when the constitutionality of an ordinance is challenged, the court held the state had standing to intervene as a party plaintiff.

Expostulation and Reply

“Statutory Standing” And “Constitutional Standing” Are Not Synonymous

The court’s claim that “judge-made criteria” do not apply to “statutory-standing cases” may be overstated. Texas aligns its standing jurisprudence with federal law. See Texas Ass’n of Bus. v. Texas Air Control Bd., 852 S.W.2d 440, 444 (Tex. 1993). Just as the federal Constitution’s separation of powers doctrine prohibits courts from issuing advisory opinions, which is the function of the executive rather than the judicial branch, the Texas constitution prohibits the judicial department from issuing advisory opinions. See id. (citing Tex. Const. art II, § 1). “An opinion issued in a case brought by a party without standing is advisory because rather than remedying an actual or imminent harm, the judgment addresses only a hypothetical injury.” Id.

Likewise, just as Article III of the U.S. Constitution limits judicial power to resolve “cases” and “controversies,” requiring  a litigant to demonstrate standing, the open courts provision in the Texas Constitution has been interpreted by the Texas Supreme Court to require a litigant to demonstrate standing. Id. Central to constitutional standing is a requirement that the litigant allege an “injury in fact.” See id.; see also Steel Co. v. Citizens for a Better Environment, 523 U.S. 83, 103-04 (1998) (“The ‘irreducible constitutional minimum of standing’ contains three requirements. . . . First and foremost, there must be alleged (and ultimately proved) an ‘injury in fact’—a harm suffered by the plaintiff that is ‘concrete’ and ‘actual or imminent, not conjectural or hypothetical.’”). In short, the legislature cannot by statute require the judiciary to do what the constitution prohibits—issue an advisory opinion.

So, what led the Austin Court of Appeals to make such a strong-claim regarding “statutory standing cases”? The answer lies in the case the Court cited to in support of its strong claim. The court cited to In re Sullivan, 157 S.W.3d 911, 915 (Tex. App.—Houston [14th Dist.] 2005, orig. proceeding), a case interpreting the “standing” provision in the Texas Family Code, which identifies the proper party to bring a suit adjudicating parentage. But the “statutory standing” label is not a substitute for constitutional standing, as the Fourteenth District Court of Appeals recognized after its In re Sullivan opinion. In In Interest of K.S., the court made clear:

Although courts sometimes refer to the question whether a party has a cause of action under a statute as one of ‘statutory standing,’ that label can be misleading because the absence of a valid cause of action does not implicate subject-matter jurisdiction. . . . Because the Family Code uses the word ‘standing’ in describing its restrictions on who may bring suit, however, we use the term statutory standing here to distinguish the Family Code’s requirements from the constitutional standing requirements necessary to subject-matter jurisdiction.

492 S.W.3d 419, 422-23 & n.5 (Tex. App.—Houston [14th Dist.] 2016, pet. denied).

A Litigant Must Demonstrate Constitutional Standing to Bring an Action Under the Uniform Declaratory Judgment Act.

The law is well-settled in Texas that the Uniform Declaratory Judgment Act is “merely a procedural device for deciding cases already within the court’s jurisdiction rather than a legislative enlargement of a court’s power, permitting the rendition of advisory opinions.” See e.g., Texas Ass’n of Bus. v. Texas Air Control Bd., 852 S.W.2d 440, 444 (Tex. 1993) (emphasis added); Texas Health Care Info. Council v. Seton Health Plan, Inc., 94 S.W.3d 841, 846 (Tex. App.—Austin 2002, pet. denied). Thus, as recognized by the Austin Court of Appeals prior to its City of Austin decision, a plaintiff bringing a declaratory-relief action must still establish the court’s subject-matter jurisdiction, which requires “that the party bringing the suit must have standing, that there be a live controversy between the parties, and the case must be justiciable.” Trinity Settlement Services, LLC v. Texas State Securities Bd., 417 S.W.3d 494, 504 (Tex. App.—Austin 2013, pet. denied); see also OHBA Corp. v. City of Carrollton, 203 S.W.3d 1, 4-5 (Tex. App.—Dallas 2006, pet. denied) (“Under Texas law, standing limits subject-matter jurisdiction to cases involving a distinct injury to the plaintiff and ‘a real controversy between the parties, which . . . will be actually determined by the judicial declaration sought.’”) (quoting Brown v. Todd, 53 S.W.3d 297, 305 (Tex. 2001)). Contrary to the City of Austin court’s assertion, then, judge-made criteria regarding standing apply to actions—like the state’s action against the City of Austin—under the UDJA.

The court assumed that section 37.006(b) operates as a “standing” statutory provision without addressing the well-settled law that constitutional standing analysis applies to declaratory relief actions. But, even without considering this well-settled law, section 37.006(b) does not, at least not clearly or obviously, vest anyone with standing to sue. Section 37.006(b) provides that a municipality “must be made a party” to a declaratory relief action that challenges the validity of a municipal ordinance. Notice that this provision says nothing about the municipality’s right to bring a suit of its own against anyone; it simply requires a plaintiff to add to its suit the municipality whose ordinance the plaintiff challenges. Likewise, section 37.006(b) does not vest the state with standing to sue anyone. In fact, this section leaves out altogether any mention of making the state a party to an action challenging the constitutionality of an ordinance or statute.

To support its assumption, the City of Austin court pointed to three other cases which referenced section 37.006(b) as the predicate to the state’s “standing” to intervene; the cases, however, do not support the court’s assumption. The court first cited to dicta in Texas Department of Transportation v. Sefzik, 355 S.W.3d 618, 622 (Tex. 2011), where the Texas Supreme Court provided an example of when the UDJA may waive sovereign immunity—“For example, the state may be a proper party to a declaratory judgment action that challenges the validity of a statute.” (citing Tex. Civ. Prac. & Rem. Code § 37.006(b)). Sovereign immunity is different than “standing” in many respects, not the least of which is the fact that the former deals with whether a plaintiff may sue the state, while the latter, under the circumstances in City of Austin, deals with whether the state may sue a defendant for affirmative relief.

The City of Austin court also cited to City of Austin v. Travis Central Appraisal District, 506 S.W.3d 607, 612 n.3 (Tex. App.—Austin 2016, no pet.), and Texas Board of Chiropractic Examiners v. Texas Medical Association, 375 S.W.3d 464, 473 (Tex. App.—Austin 2012, pet. denied). Both cases involved challenges to a state statute, not a municipal ordinance. And, in both cases the state intervened to defend the challenged statutes, not to challenge the statutes as a plaintiff. Moreover, neither case dealt with any issue related to the state’s intervention.

          A “Straight[er] Statutory Construction” of Section 37.006(b)

Even if the standing analysis were reduced to a “straight statutory construction” of section 37.006(b), the City of Austin court’s statutory construction analysis likely misses the mark. The court looked solely to subsection (b). Notice that subsection (b) distinguishes between who must be made a party and who is entitled to be heard. If someone challenges the validity of a municipal ordinance, subsection (b) makes clear that the municipality “must be made a party and is entitled to be heard.” If someone challenges the constitutionality of an ordinance, the statute states that the “attorney general of the state must also be served with a copy of the proceeding and is entitled to be heard.” Why would subsection (b) draw a distinction between being a “party” and being “entitled to be heard” if, as the City of Austin court reasoned, being entitled to be heard means or includes being a party? ***For interested readers, section 37.006(a) may provide some insight***

The court also overstated its “meaningless” analysis. The court rejected the defendants’ claim that section 37.006(b) only allowed the state attorney general to file an amicus brief. The court reasoned that such a construction would render “entitled to be heard” meaningless, because anyone who satisfies Texas Rule of Appellate Procedure 11 may file an amicus brief. However, under TRAP 11, an appellate court for good cause may “refuse to consider” an amicus brief and order the brief returned, even if a party complies with the rule. If anything would be rendered meaningless by the City’s construction, it would be an appellate court’s “good cause” discretion under TRAP 11, as well as the procedural hurdles listed in TRAP 11, when the state attorney general invokes its “entitlement to be heard” pursuant to section 37.006(b).

Final Thoughts

Section 37.006(b) is not a “standing” statute. If the state wishes to intervene as a plaintiff, seeking affirmative relief, it must do more than simply point to section 37.006(b) as its jurisdictional predicate to seek such relief. Otherwise, section 37.006(b) will become an advisory-opinion vehicle for the enforcement branch of government.

When considering that the state attorney general’s “entitlement to be heard” takes place at every level in the litigation, the City of Austin court reasoned that “being heard” must include making argument and putting on evidence. Maybe “being heard” does include these, but it does not follow that “being heard” includes being made a party for all purposes, including to seek affirmative relief. If the state lacks standing or a justiciable claim to seek its own affirmative relief, but is “entitled to be heard,” what does that mean at the trial level? Is it, as the City of Austin suggested, the right of the attorney general to file some briefing at the trial level? Or does it include something more?

Daniel Correa
That’s Not “Stock” . . . Not Chapter 38 “Stock” At Least
 Photo by  Bruno Kelzer  on  Unsplash

Photo by Bruno Kelzer on Unsplash

In case you were wondering, injured “stock” for which a litigant may recover attorney fees pursuant to Chapter 38 does not include any ol’ stock. The Houston Court of Appeals (14th Dist.) recently held that “stock” in Texas Civil Practice & Remedies Code section 38.001(6) does not include pet dogs. See Palfreyman v. Gaconnet. Though this holding may appear obvious at first glance, the court’s analysis reveals nuance on the issue.

The plaintiff in Palfreyman successfully litigated a bailment claim based on negligence for the death of her two dogs, both of which were boarded at the defendant’s business. She asserted a claim for attorney fees pursuant to Chapter 38. The trial court denied her request for attorney fees and the court of appeals affirmed.

The appellate court focused on the modifiers “killed” and “injured” that precede the word “stock” in section 38.001(6): “A person may recover reasonable attorney’s fees from an individual or corporation . . . if the claim is for . . . killed or injured stock[.]” The modifiers, according to the court, denote something that was living at some point. The court looked to statutory definitions of “livestock” and the dictionary definition of “stock” for guidance, noting that these definitions all include animals kept or raised on a farm or under agricultural practices, some raised for human consumption. These definitions clearly do not include “a neutered dog kept solely for companionship.”

The court did not hold that “dogs” generally do not constitute “stock.” The court expressly left open the question whether section 38.001(6) included dogs kept solely to breed and sale or dogs bred to work on a farm or ranch. What is clear, though, is “stock” does not include something that was never alive—it does not include an investment portfolio, the merchandise kept in a store or warehouse, or the butt of a rifle. Does “stock” include plants or the “main stem of a plant”? Cf. Tex. Water Code § 36.001(22) (defining “nursery grower” to include “activities associated with the production or multiplying of stock such as the development of new plants”).  

Daniel Correa
A Burden Shift Within a Burden Shift — An Anti-SLAPP ‘Inception’
Photo by Christophe Hautier on Unsplash

         Christopher Nolan’s ‘Inception’ (2010) leaves the audience guessing at the end whether Dom Cobb, played by Leonardo DiCaprio, is awake and back with his children or still dreaming. Cobb’s spinning top is the focus point. To avoid getting trapped in a deep-dream state after trekking through another person’s sub-sub-subconscious, Cobb spins his top. If it falls after a short spin, he is awake; if it keeps spinning, he is dreaming. The film ends with Cobb spinning his top, as he eagerly eyes his children, and then impatiently running toward his children before he verifies whether the top falls or continuously spins. The camera focuses on the top. It tilts. It tilts again. Then the film ends. Is Cobb stuck in a dream within a dream? Has he traveled too far into someone else’s sub-sub-subconscious, unable to “pop” back to the beginning, back to his own reality?

         The Austin Court of Appeals recently dealt with a far less metaphysical, but no less abstract situation in Texas Jewelers Association, et al. v. Ann Glynn. The court was tasked with deciding the following question: Who shoulders the burden to prove “actual malice” in a qualified privilege defense to a defamation claim when Texas Civil Practice & Remedies Code § 27.005(d) applies?

         Section 27.005(d) addresses the burden shift after the burden shift after the initial burden that takes place in an Anti-SLAPP Motion to Dismiss. The movant under Chapter 27 bears the burden to prove by a preponderance of the evidence that Chapter 27 applies. See Tex. Civ. Prac. & Rem. Code § 27.005(b). If the movant sustains its burden, then the burden shifts to the nonmovant to establish by clear and specific evidence a prima facie case for each essential element to its claim. Id. at § 27.005(c). If the nonmovant sustains its burden, then the court may not dismiss the claim unless (here comes the burden shift) the movant establishes by a preponderance of the evidence each essential element of a defense to the nonmovant’s claim. Id. at § 27.005(d).

         But when an affirmative defense includes a burden shift, does Section 27.005(d) cancel out that burden shift? The Austin Court of Appeals did not definitively answer this question. So we are left with a teetering spinning top situation. But law, unlike cinema, cannot keep its audience guessing at the answer. Fortunately, the court’s opinion provides some guidance on how the question might be answered.

         Texas Jewelers Association

         Ann Glynn (plaintiff) sued Texas Jewelers Association and its President (Brad Koen) and Treasurer (Rex Solomon) for tortious interference with an existing contract and defamation, among other causes of action. Glynn resigned as Executive Director from Texas Jewelers Association in 2016, following allegations that funds were missing from the Association’s accounts. In her suit, Glynn alleged that Koen and Solomon engaged in efforts to build a case against her for misuse of association funds.

         The Defendants filed a Motion to Dismiss pursuant to Chapter 27. Glynn conceded that Chapter 27 applied, but argued that she established by clear and specific evidence each element to her causes of action. The trial court granted the defendants motion to dismiss in part, but denied the motion as to the plaintiff’s tortious interference and defamation claims.

         The court of appeals reversed the trial court’s ruling on the plaintiff’s tortious interference claim and her defamation claim against Koen, but affirmed the trial court’s ruling on the plaintiff’s defamation claim against Solomon. With respect to her defamation claims against Koen, the court held that Glynn failed to provide proof that Koen published any defamatory statement about Glynn. Glynn attributed every alleged defamatory statement to Solomon. As a result, she did not prove by clear and specific evidence the element of “publication” as to Koen.

         The court found, on the other hand, that Glynn sustained her burden to prove by clear and specific evidence each element to her defamation claim against Solomon. Relying on section 27.00(d), Solomon argued that the trial court erred in denying his motion to dismiss Glynn’s defamation claim because Solomon proved by a preponderance of the evidence each essential element to his qualified privilege defense.

         The court acknowledged that the qualified privilege defense includes a burden shift. The defendant bears the burden to prove the qualified privilege attaches to the communications at issue. The privilege attaches to a communication that is “made in good faith and the author, the recipient or a third-person, or one of their family members, has an interest that is sufficiently affected by the communication.” Once the defendant proves the privilege attaches to the communication at issue, then “the burden shifts to the plaintiff to prove that the defendant made the statements with actual malice.”

         Notwithstanding the burden shift to the qualified privilege defense, the parties assumed and did not contest that the defendant/movant bears the burden to prove lack of malice. The court of appeals reasoned: “Neither party contests this approach, so we will address the case as the parties litigated it in the court below. Cf. Alamo Heights Indep. Sch. Dist. V. Clark, 544 S.W.3d 755, 783 (Tex. 2018) (applying causation standard advocated by both parties without deciding whether standard was correct).” The court found that Solomon did not sustain his burden to prove lack of malice by a preponderance of the evidence and, as a result, affirmed the trial court’s denial of Solomon’s motion to dismiss Glynn’s defamation claim against him.

         What is the Correct Standard?

         The court of appeals made an interesting decision to forego articulating the correct standard to apply under section 27.005(d) to an affirmative defense with a burden-shifting component. Courts of appeal review de novo “whether each party has met its respective burden under the Act’s . . . dismissal mechanism.” Grant v. Pivot Technology Solutions, Ltd., 2018 WL 3677634 *3 (Tex. App.—Austin Aug. 3, 2018). One might think that looking “brand new” at the issue concerning the parties’ respective burdens under Chapter 27 would include looking “brand new” at whether the correct standard was applied by the court below. Of course, if the parties did not sufficiently brief the issue for the court to ascertain the correct standard, maybe the court does best by going with the standard assumed by the parties. But what if the parties are wrong on the standard?

         The Austin Court of Appeals supported with a Cf. citation its decision to side step determining the correct standard. “Cf.” is short for compare. The Bluebook informs law students and legal practitioners that “cf.” denotes the cited authority may not expressly (or even obviously) support the stated proposition. Black’s Law Dictionary defines “cf.” as “a citation signal [that] directs the reader’s attention to another authority or section of the work in which contrasting, analogous, or explanatory statements may be found.” (243). The Texas Jewelers Association court asks the reader to compare its decision to apply the standard assumed by the parties with the Texas Supreme Court’s decision in Alamo Heights Independent School District v. Clark, 544 S.W.3d 755 (2018):

Clark asserts a factual dispute exists regarding motivation by sexual desire under Oncale’s first evidentiary route. As a predicate matter, the parties disagree about whether “credible evidence” that the harasser is homosexual is required. Some courts have treated Oncale’s “credible evidence” of homosexuality language as imposing a mandatory requirement of such evidence in every first-route evidentiary case. Other courts have determined this route requires only proof of motivation by sexual desire, which may be shown by any relevant evidence, including—but not limited to—sexual propositions combined with “credible evidence” that the harasser is homosexual. We need not determine which approach is correct because, under either, the evidence is lacking.

         There are notable differences between the Texas Jewelers Association issue and the Alamo Heights issue. While both the Texas Jewelers Association and Alamo Heights decisions side-stepped a question of law, to whom the burden of proof falls in the former case and the quality and type of evidence required in the latter case, the Alamo Heights court declined to select “the correct approach” because under either approach the evidence was lacking. The Alamo Heights Court may have been adhering to “the cardinal principle of judicial restraint—if it is not necessary to decide more, it is necessary not to decide more.” PDK Labs, Inc. v. U.S. Drug Enforcement Admin., 362 F.3d 786, 799 (D.C. Cir. 2004) (Roberts, J., concurring). The Texas Jewelers Association court, however, did not side-step the burden of proof issue because the result would be the same whether the movant or nonmovant bore the burden to prove actual malice; rather, the court side-stepped the issue because the parties assumed the burden fell on the defendant/movant. Notably, the result could have been different in Texas Jewelers Association if the burden shifted to the plaintiff/nonmovant to prove actual malice because, arguably, section 27.005(c) would apply and the nonmovant would need to prove actual malice by clear and specific evidence, not merely by a preponderance of the evidence—more on this point below.

         So what is the correct standard? I propose three ways to approach this question. First, look at the qualified privilege defense to determine if “actual” malice” is or should be treated as an element of the defense or something else. Second, look at the difference between a summary judgment, which places the burden on the movant, and a motion to dismiss. Third, consider the purpose of Chapter 27. Although I will not go into much detail here, a sketch of these three inquiries reveals possible answers to our inquiry.

         First, qualified privilege as an affirmative defense against defamation claims serves to safeguard free speech. See Burbage v. Burbage, 447 S.W.3d 249, 254 (Tex. 2014). The privilege itself requires only a showing by the defendant that the communication at issue was “made in good faith and the author, the recipient or a third-person, or one of their family members, has an interest that is sufficiently affected by the communication.” Id. In one sense, once the privilege attaches, it is no different than the privilege attached to a public figure in a defamation case, making “actual malice” part of the plaintiff’s prima facie case. In fact, the Texas Supreme Court included the qualified privilege within the protections afforded in New York Times Co. v. Sullivan:

The New York Times definition of actual malice which this Court applied in El Paso Times is likewise applicable in the instance case, all three cases being libel suits, all three cases involving publishers’ privileges and all three cases requiring malice to overcome the privileges.

Dun & Bradstreet, Inc. v. O’Neil, 456 S.W.2d 896, 900 (Tex. 1970) (citing El Paso Times, Inc. v. Trexler, 447 S.W.2d 403 (Tex. 1969) and New York Times Co. v. Sullivan, 376 U.S. 254 (1964)). Under this scheme, is “actual malice” an element of the qualified privilege defense? If not, then, based on a plain reading of Texas Civil Practice & Remedies Code § 27.005(d), one might argue that the movant does not bear the burden to prove lack of malice. Cf. Goodman v. Gallerano, 695 S.W.2d 286, 287 (Tex. App.—Dallas 1985, no writ.) (“To assert that a defamation is qualifiedly privileged is an affirmative defense that is available only if evidence shows that the communication was made in good faith and without actual malice.”).

         Second, the Texas Jewelers Association court compared the standard assumed by the parties to the standard applied in the summary judgment context. The summary judgment movant always bears the burden to prove the absence of a genuine issue of material fact. When relying on a defense, it is the summary judgment movant’s burden to conclusively prove every element of its defense. Whether “actual malice” is considered an element (stated in the negative) of the movant’s defense or as part of the plaintiff’s prima facie case (stated in the affirmative) once the privilege attaches does not change the fact that the movant bears the burden to demonstrate the absence of a genuine issue of material fact on the actual malice issue; that is, whether it is part of the defense or part of plaintiff’s prima facie case, the summary judgment movant must conclusively negate actual malice—once the movant demonstrates the privilege attaches, the only issue remaining on the defamation action is whether the statement was made with actual malice. Chapter 27 does not operate the same way. It does not require the movant to prove, as a matter of law, every element to its affirmative defense or disprove the facts of at least one of the elements, or the only remaining element, to the nonmovant’s claim or defense. How, if at all, do the difference between a summary judgment motion and Chapter 27 motion to dismiss inform the inquiry into how the burden of proof should be distributed on a defendant’s qualified privilege defense under section 27.005(d)?

         Third, consider Chapter 27’s stated purpose:

The purpose of this chapter is to encourage and safeguard the constitutional rights of persons to petition, speak freely, associate freely, and otherwise participate in government to the maximum extent permitted by law and, at the same time, protect the rights of a person to file meritorious lawsuits for demonstrable injury.

Tex. Civ. Prac. & Rem. Code § 27.002.

         The burden-shifting mechanism in Chapter 27 is designed to promote Chapter 27’s stated purpose. The movant must first demonstrate that Chapter 27 applies, that is, that the legal action is based on, related to, or in response to the movant’s exercise of one of the enumerated First Amendment rights. The burden then shifts to the nonmovant to demonstrate a meritorious claim. If the nonmovant sustains its burden, then the burden shifts again to the movant to prove the elements of a defense to the nonmovant’s claim. This third shift is important to our inquiry here. It affords the movant another opportunity to demonstrate that his, her, or its First Amendment rights are undermined by an unmeritorious claim. Is the purpose of Chapter 27 undermined or otherwise thwarted if section 27.005(d) requires the movant to prove the negative of an element (actual malice) that by law the nonmovant must prove?

Tilt. Tilt. End.

Daniel Correa
Don't Waste Your Money on Lawyers
 Photo by  NeONBRAND  on  Unsplash

Photo by NeONBRAND on Unsplash

Lawyers are expensive. Whether you are involved in a transaction such as buying a business, or caught in litigation and having to defend yourself in court, the lawyer fees can mount quickly. Running into hundreds of dollars an hour, these fees can accumulate to thousands for something as basic as reviewing a contract, and your itemized bill can leave you with sticker shock. Every person who has hired a lawyer know this, and jokes about pricey legal fees abound. So what to do? Don’t waste your money on lawyers.

“Ahh — good one. A slick lawyer trick to show how your fees are lower, and that I should choose you instead.” Not quite. At the moment, I think our fees are probably a bit higher than the average in our county (for example, I bill at $395 per hour as of October 2018, and expect to raise rates January 1). That is all the more reason for you not to waste your money.

Hiring a lawyer is, and must be, an investment in your future, and with every invoice you should ask yourself “what kind of return am I getting on my money?” With that in mind, here are some things to consider as you work with your lawyer:

  • Ask, ask, ask. Your lawyer is a professional who has spent years studying the law and the legal system, learning about approaches to problem-solving and discovering counter-intuitive ways some issues get worked out in the courts. You are hiring them to advise and guide you, which means you should come out of the experience with more knowledge and a better sense of how to handle legal questions in the future. Ask your lawyer to explain terms you don’t understand, processes which don’t make sense to you, or strategic moves which don’t square with your experience. By asking questions, your investment provides you with information which will serve you for years to come.

  • Review every invoice carefully. Your bill tells the story of the work being done for you, so take the time to read each line and confirm you understand where the story is going. Your invoice may be a one-liner: “Draft, finalize, and file trademark application in class 25.” Even then, ask yourself — “what does the money pay for?” At Creedon PLLC, our current flat rate for a trademark application is $1,300, which is quite a bit more than sites like Trademarkia or LegalZoom. If you are wondering why, good — you should be. Talk to your lawyer and find out what each line on your invoice means. For example, why did a partner do some work and an associate other work (and what the heck do those terms even mean). Your invoice is the monthly chart of your dollars at work, so be certain to understand it.

  • Get a budget in advance. Asking for a budget gives you two things immediately: a sense of how much money will be required over time, and a roadmap of where the work is going to happen. For many kinds of work (trademark filings, contract reviews, company formations), many lawyers can offer a flat rate. Be certain to ask exactly what is included! For litigation or longer transactions, a budget will be much more conditional and will shift and change. That’s normal! Ask for a range of values, or for an explanation as to which numbers shift the most and why. For example, discovery (the process of both getting and giving documents and statements related to a case) is notoriously hard to budget — are we talking about 500 pages or 500,000? One deposition (sworn interview) for four hours, or four depositions lasting one day each? Your questions up front will reduce surprises down the road, and will help you to plan your investment and determine if it is worth the cost.

  • Prioritize your spending. Most people hiring a lawyer have many things they’d like to spend their money on, and that may even include multiple legal services. Don’t feel compelled to do it all at once. Rather, think carefully about which investments are the most necessary, and which can wait until later. If you are starting a business, you will almost always make forming your entity (for example, an LLC or a corporation) a very early step, but perhaps securing copyright protection on your software code can wait. (Perhaps not! This is an excellent question to ask early on.) One way to manage this is to ask your lawyer explicitly: “what do I need to do now, and what investments am I looking at over the next year?”

Hiring a lawyer is a big step, but you are the one in control — and the person best able to determine what is right for you and your business. While there is never a guarantee of success, you can always demand the guarantees of clear communication, honest assessment, and a commitment to improving your knowledge over time.

Take charge — and don’t waste your money on lawyers.

James Creedon
Judicial Admission Alone Defeats Anti-SLAPP Motion
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You may not lose your case if you fail to file a response to an Anti-SLAPP motion to dismiss, but you should always file a response . . . to any dispositive motion. In Bumjin Park and Jaeyoung Park v. Suk Baldwin Properties, LLC, et al., the Austin Court of Appeals, affirming the trial court’s denial of the movants’ motion to dismiss, held that a judicial admission by the movants established by clear and specific evidence the nonmovants’ counterclaim under section 17.50(c) of the Texas Deceptive Trade Practices Act. In other words, the plaintiffs defeated their own motion by their own pleadings.

Facts and Holding in Suk Baldwin Properties, LLC

The plaintiffs in Suk Baldwin Properties, LLC alleged that they purchased property from the defendants for $1,000,000 and that the defendants made various misleading statements about the condition of the property, among other misleading statements, during the negotiations. The plaintiffs asserted causes of action against the defendants for common law fraud and violations of the Deceptive Trade Practices Act. The defendants filed counterclaims for breach of contract, tortious interference with existing contracts and prospective business, and for attorney fees and court costs on the ground that the plaintiffs’ DTPA action was “groundless in fact or law or brought in bad faith, or brought for the purpose of harassment.” Tex. Bus. & Com. Code § 17.50(c). The plaintiffs filed a motion to dismiss the defendant's’ counterclaims pursuant to Texas Civil Practice and Remedies Code § 27.003(a), alleging that the defendants’ counterclaims were based on, related or in response to the plaintiffs’ exercise of their rights to petition government, namely filing their Original Petition.

The appellate court held the defendants’ tortious interference and breach of contract claims were based on alleged conduct by the plaintiffs outside the context of their lawsuit. The plaintiffs’ petition was based on alleged misrepresentations or material-misleading statements during the negotiations for the purchase of the property at issue. The defendants’ tortious interference and breach of contract claims alleged the plaintiffs engaged in a concerted effort to run off all existing tenants, including one of the defendants (Cen-Tex Dental), by “increasing their rent significantly” and “refus[ing] to provide services required by the tenants’ leases” and by preventing Cen-Tex Dental from erecting its sign for its customers to see and blocking customer parking and obstructing the front view of Cen-Tex Dental’s office with large trash dumpsters. The appellate court concluded that the plaintiffs failed to prove by a preponderance of the evidence the defendants’ counterclaims were based on, related or in response to the plaintiffs filing their Original Petition.

For the defendants’ section 17.50(c) counterclaim, however, the appellate court found the plaintiffs sustained their burden to prove Chapter 27 applied. The defendants sought attorney fees and court costs against the plaintiffs on the ground that the plaintiffs’ DTPA causes of action were groundless, in bad faith, or solely to harass the defendants. As a result, the defendants’ section 17.50(c) counterclaim was directly in response to the Plaintiffs’ DTPA claims in their Original Petition. The burden then shifted to the defendants to demonstrate by clear and specific evidence a prima facie case for each essential element to their section 17.50(c) counterclaim. See Tex. Civ. Prac. & Rem. Code § 27.005(c).

Since the plaintiffs filed no affidavits in support of their motion to dismiss and the defendants filed no response whatsoever, the appellate court looked solely to the pleadings to determine whether the defendants met their burden of proof. The plaintiffs relied on the fact that the defendants failed to file a response to the motion to dismiss as a sufficient ground for the court to find the defendants did not sustain their burden. However, the plaintiffs affirmatively pleaded in their Original Petition that they paid $1,000,000 for the property at issue. The plaintiffs’ assertion of fact as to the purchase price, the court held, constituted a judicial admission. Section 17.49(g) of the DTPA exempts from the DTPA commercial transactions “involving total consideration by the consumer of more than $500,000.” As a result, the appellate court held, “‘[the plaintiffs’] judicial admission as to the purchase price of the property was sufficient to establish by clear and specific evidence a prima facie case’ that their DTPA claims are groundless in fact.”

Implications of and Lessons from the Suk Baldwin Properties, LLC Holding

The Suk Baldwin Properties, LLC holding carries two large implications. First, asserting a section 17.50(c) counterclaim brings that counterclaim within Chapter 27’s reach, making it ripe for an Anti-SLAPP motion to dismiss. Section 17.50(c) can only be raised in response to a DTPA cause of action and, therefore, will always implicate Texas Civil Practice & Remedies Code chapter 27. Second, a judicial admission in the movant’s pleadings alone can defeat the movant’s motion, even if the movant demonstrates that Chapter 27 applies and even when the burden of proof lies with the nonmovant.

For practitioners, there are some lessons to glean from Suk Baldwin Properties, LLC. For one thing, if you are representing a client against whom a DTPA action is pending, and you truly believe the DTPA action is groundless in fact, brought in bad faith, or brought solely to harass your client, consider whether an alternative route to filing a counterclaim exist to recover attorney fees and court costs under section 17.50(c). Section 17.50(c) does not state whether a party wishing to recover attorney fees or court costs under its provision must file with the court a request for such fees and costs in a motion or pleading or any other document. Section 17.50(c) simply states: “On a finding by the court that an action under this section was groundless in fact or law or brought in bad faith, or brought for the purpose of harassment, the court shall award to the defendant reasonable and necessary attorneys' fees and court costs.” Also, section 17.50(c) is not an affirmative defense, so it need not be pleaded. See O’Shea v. International Business Machines Corp., 578 S.W.2d 844, 848 (Tex. App.—Houston [1st Dist.] 1979, writ ref’d n.r.e.). Since section 17.50(c)’s plain language makes clear that the judge, not a jury, decides whether the DTPA action was groundless, brought in bad faith or to harass, it would appear one could raise the issue at a hearing on a dispositive motion or raise it in the trial of the matter, rather than in an actual filing with the court, thereby taking the section 17.50(c) issue outside of Chapter 27’s reach. After all, Chapter 27 only applies to pleadings or filings with the court that seek legal or equitable relief. See Tex. Civ. Pray. & Rem. Code § 27.001(6). Section 17.50(c) may be an issue the judge can take up sua sponte, so informing the court of the issue at a hearing may be enough to recover under section 17.50(c). See Blizzard v. Nationwide Mut. Fire Ins. Co., 756 S.W.2d 801, (Tex. App.—Dallas 1988, no writ) (“[F]indings prerequisite to an award of attorney fees under section 17.50(c) must be made by the court and not by the jury.”); see also Schlager v. Clements, 939 S.W.2d 183, 190 (Tex. App.—Houston [14th Dist.] 1996, (holding the question whether a suit is groundless in fact or law or brought in bad faith under section 17.50(c) “is a question of law for the trial court”).

But don’t you have to specifically plead that you seek attorney fees and the statutory basis for an attorney fees award? Not always. For example, section 17.50(c) is similar to Texas Civil Practice & Remedies Code § 27.009(b), which states: “If the court finds that a motion to dismiss filed under this chapter is frivolous or solely intended to delay, the court may award court costs and reasonable attorney's fees to the responding party.” Chapter 27 does not require the party responding to an Anti-SLAPP motion to dismiss to first amend its answer to include a request for an award of attorney fees pursuant to Chapter 27 before the court may award attorney fees to the respondent. The responding party, for all intents and purposes, may simply request the court to award the respondent reasonable attorney fees and court costs if the judge denies the motion and finds that the motion was frivolous or for the purpose of delay.

More obvious lessons to glean from the Suk Baldwin Properties, LLC holding include the following: (1) always check your pleadings before they are filed to ensure you do not affirmatively state facts that defeat your client’s own cause of action; (2) always support an Anti-SLAPP motion to dismiss, or response thereto, with an affidavit; and (3) always file a response to any dispositive motion.

Daniel Correa
An Author’s Rights Go Public
 Photo by  Ari He  on  Unsplash

Photo by Ari He on Unsplash

Article 1, Section 8, Clause 8 of the United States Constitution, known as the “Copyright Clause,” gives Congress the power “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” As such, the exclusive rights held by a copyright author are finite, and the duration of such rights are complex — particularly for works published between 1923 and 1977.There are specific notice requirements that must be adhered to, but as a rule of thumb, it is important to remember that:

  • For works created from 1978 on, copyright protection generally expires 70 years after the individual author’s death.(See Note 1 below)

  • Copyright protection in works created before 1923 have expired and fallen into the public domain.

The following is a general guide, organized by year of registration or first publication, for determining when an author’s work will fall into the public domain. Note that works created before 1978 had renewal requirements that must be met for an author to retain copyright protection (a topic for another discussion—this topic is already complicated enough):

January 1, 1923 — December 31, 1963

Published without copyright notice:

  • The work is in the public domain.

Published with copyright notice, but the registration was not renewed:

  • The work is in the public domain.

Published with copyright notice and renewed during the 28th year of publication:

  • The work is protected for 95 years from the date it was published.

January 1, 1964 — December 31, 1977

Published without copyright notice:

  • The work is in the public domain.

Published with copyright notice (no renewal required):

  • The work is protected for 95 years from the date it was published.

January 1, 1978 — February 28, 1989

Published without copyright notice or registration:

  • The work is in the public domain.

Published without copyright notice, but registers within 5 years of publication:

  • The work is protected for the life of the individual author plus 70 years.

Published with copyright notice (but created on or after January 1, 1978):

  • The work is protected for the life of the individual author plus 70 years.

Published with copyright notice (but created before January 1, 1978):

  • The work is protected for the life of the individual author plus 70 years, or December 31, 2047, whichever is greater.

March 1, 1989 — December 31, 2002

Created on or after January 1, 1978:

  • The work is protected for the life of the individual author plus 70 years.

Created before January 1, 1978 and not previously published:

  • The work is protected for the life of the individual author plus 70 years, or December 31, 2047, whichever is greater

January 1, 2002 — Present Day

  • The work is protected pursuant to the general rule of thumb—70 years after the individual author’s death.

Works prepared by United States government employees as part of their official duties are in the public domain and do not enjoy copyright protection. There are also special rules and exceptions that apply to works first published outside the United States, architectural works, and sound recordings (as opposed to the compositions of such sound recordings). These topics only complicate the above guidelines, and they are also topics for another discussion. 

Although United States law does not allow copyright protection, unlike trademark protection, to persist indefinitely, copyright registrants enjoy a longer duration of protection than patent holders, and copyright registrations do not require the stringent maintenance procedures inherent in trademark law. The good news and takeaway: your copyright registration, assuming you haven’t licensed or sold it, is likely yours for life (plus 70 years).

  • Note 1: Copyright protection in works created from 1978 on (with more than one author) expires 70 years after the death of the last surviving author. Additionally, copyright protection for anonymous works, works authored under a pseudonym, and works made for hire expire 95 years from the date of publication or 120 years from the date of creation, whichever expires first.

Charles Wallace
Daniel Correa Selected to Update Dorsaneo's Texas Litigation Guide
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Daniel Correa, Managing Attorney at Creedon PLLC, has been selected to update the Commercial Litigation and Business Entities volumes of the Texas Litigation Guide. This guide, commonly known as Dorsaneo’s, is published by Matthew Bender & Company, Inc. and is written by SMU Law Professor William V. Dorsaneo III. The Texas Litigation Guide is a comprehensive twenty-six volume treatise commonly used in private practice, and Daniel will rely on his experience as a civil litigator and appellate attorney to make a valuable contribution to this resource.

Having graduated first in his class from the Oklahoma City University School of Law, and with an LLM in Legal Theory from the NYU School of Law, Daniel brings academic rigor to this new challenge. Find out more about Daniel here or by reviewing some of his writing.

Creedon PLLC
James Creedon Elected to Three-Year Term as Barrister with the Patrick E. Higginbotham American Inn of Court

Creedon PLLC is proud to announce that attorney James Creedon has again been elected to the Patrick E. Higginbotham American Inn of Court, this time being selected for a three-year term in the role of Barrister. This organization focuses on litigation and brings together some of the most experienced and skilled attorneys in the Dallas-Fort Worth area. Named for Circuit Judge Patrick E. Higginbotham, United States Court of Appeals for the Fifth Circuit, the Inn is committed to excellence, civility, professionalism, and ethics in the legal profession.

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“I am honored to again serve with such an esteemed gathering of attorneys, and I look forward to giving my best efforts towards the success of the Inn and the development of our profession,” said James Creedon, founding member of Creedon PLLC.

James focuses his litigation practice primarily on intellectual property and associated commercial matters, and his clients range from sole proprietors to billion dollar companies.

Creedon PLLC
Legal Issues When Leaving a Job
 Photo by  Fikri Rasyid

Photo by Fikri Rasyid

Employee mobility is becoming more and more common. While changing jobs is exciting, you need to be cautious when making a move to avoid legal liability. If you’re changing jobs, you may want to talk to an attorney to get advice on your specific situation. However, here are a few general points to keep in mind. 

 

Review Post-Employment Restrictions Before Leaving

It’s easy to forget about post-employment restrictions you may have signed on the first day of work with your former employer. Nevertheless, you likely signed agreements that you will need to review to avoid violating duties which carry forward even after you change employers. Post-employment restrictions can include non-competition and non-solicitation provisions, and can often be found in employment contracts, stock option agreements, deferred compensation agreements, bonus plans, and purchase/sale agreements. Often overlooked, post-employment restrictions are one of the easiest ways employers can file lawsuits against former employees. 

Generally, post-employment restrictions must not go beyond what is reasonably necessary to protect a legitimate business interest. This means the restriction must be limited to a geographical location and to specific types of jobs or industries. For example, a company that only operates in Texas will most likely not be able to enforce a non-compete provision against an employee moving to a company which only operates in Florida. Likewise, a company most likely cannot stop an employee working in sales from taking a job in human resources with a competing company.

If it’s clear you signed enforceable post-employment restrictions, you still have options. First, you may be able to structure your new position so that its duties and responsibilities do not violate your restrictions. For example, you may arrange your new job such that you avoid dealing with certain clients or performing particular duties for the duration of your restrictions. Next, see if your new employer will place you “on the bench.” Your new employer may be willing to place you in a temporary position for the duration of your restrictions, which may protect both you and the employer from a greater risk of liability. Lastly, depending upon the circumstances of your departure, your former employer might be willing to waive your post-employment restrictions.

Questions on your post-employment restrictions should be reviewed by an attorney admitted to practice in the applicable state, as the enforceability of post-employment restrictions varies depending on the state and differs from situation to situation. 

 

Preparing to Leave

Even if you are not subject to post-contractual agreements, you may still be liable to your former employer for certain conduct as you take steps to leave. Notably, while you’re working for an employer (even after you’ve given your notice) you owe a fiduciary duty to that employer, which means you owe a legal duty to your employer to act in their best interest before you change jobs. This includes not soliciting clients or business away from them, and continuing to work to the best of your ability to benefit their business. If you are found to have taken a business opportunity away from your former employer while you are still employed by them, you (and possibly your new employer) could be financially liable for that lost opportunity.

It’s best practice to be cautious when informing other employees, clients, customers, vendors, or business partners that you’re changing jobs. Simply let them know you’re leaving, and avoid giving them a lengthy reason why or encouraging them to join you. This can be difficult because you will most likely have built up a business or personal relationship with them. However, you will be able to contact them (absent any post-contractual agreement) once you start with your new employer and can explain the situation. 

Additionally, it’s important to be cautious of what materials you retain and carry over to your new employer. You must be certain to return all company-owned materials to your employer, including your computer, phone, notes, drafts or final documents, or anything that may contain confidential or proprietary information. Simply because you worked on a project or task does not mean you’re allowed to save or keep information related to it. Anything you prepared for your former employer is a work product of your former employer and must not be improperly retained. This includes reports, standard forms, coding, client lists, blueprints, or anything that you created that was related to your job.  An employee retaining confidential or proprietary information is often the spark that ignites a lawsuit.  

 

Starting Your New Job 

Even when you start your new job you may not be out of the woods yet. You may have also signed a non-disclosure agreement (“NDA”). NDA’s prevent you from disclosing confidential or proprietary information, and may have additional restrictions included in them related to trade secrets. Trade secrets are information which provides an economic or competitive advantage to its owner because the information is not generally known to the public or within an industry. Examples of trade secrets include, but are not limited to, marketing plans, commercial drawings, recipes, client list, or manufacturing processes. Employees who take trade secrets to a new job can be liable under the Defend Trade Secrets Act (“DTSA”), and a court may order them to stop working for a new employer and pay any damages, such as lost profits, caused by using those trade secrets. 

The best way to avoid a DTSA claim or an allegation of violating your NDA is to refrain from using practices or procedures gained from your former employer. Stick to commonly known practices in your industry. It can be difficult to perform your new job and separate out the methods or practices you learned from your former employer, but a helpful tool is to avoid the “we did it this way at my old company” mentality. Rely on the skills and knowledge you’ve gained through your education and industry experience rather than confidential or proprietary information from your previous job. Additionally, if you are working for a direct competitor, do not use inside information about your former employer to undercut them. For example, if your previous employer is about to release a new product and marketing campaign, do not disclose that to your new employer. If your new employer ever asks about your previous employer, it is best practice to avoid specific statements about internal methods and procedures. 

 

Conclusion 

It can be easy to be get swept up in the allure of a new job, but it’s important to remember your legal obligations. To the extent you have questions or concerns, contact an attorney to help you review what you signed. This way you can focus on your new job – and not spend those first days worrying about facing a lawsuit. 

Patrick Lewis
Political Parties and Trademarks
 Photo by  Jomar  on  Unsplash

Photo by Jomar on Unsplash

Political parties operate just like any other brand. Each political party has distinctive colors, logos, and brand identity. For example, you associate the Republican elephant or the Democrat donkey with a particular source. You may not like that source or agree with that source —but you know the source. Trademarks are an important part of branding, and political parties need trademark protection to promote their ideals and endorse candidates. However, political parties face challenges with the United States Patent and Trademark Office (USPTO), and the USPTO has no clear guidelines for political parties to follow. That said, if done properly, a political party can hold a registered trademark. 

Republican Party and Democratic Party Trademark Portfolios

Neither the Republican Party nor the Democratic Party holds registered word marks for their names. The Democratic Party attempted to register a service mark in 1992 but abandoned their application later the same year. The Republican Party, on the other hand, has never sought federal registration for its name. In fact, the only national political party with a registered word mark is the Libertarian Party (Reg. No. 2423459). 

The national political parties do hold a few federally registered trademarks in their trademark portfolios. The Republican Party holds two registrations for its elephant logo in connection with political activities (Reg. No. 1892445 and Reg. No. 1908397), and the Democratic Party holds a trademark registration for a logo that is an uppercase “D” with a circle around it. (Reg. No. 4139881). Additionally, the Democratic Party holds a trademark for I WILL VOTE. (Reg. No. 5061751)

Issues Political Parties Face When Applying to Register Trademarks

Political parties face a few issues when attempting to register trademarks. First, political parties often receive a “merely descriptive” refusal. The party wants people to know what it stands for when they hear the party’s name, therefore the political party’s name often stems from a quality of the party. This makes the political party names prone to “merely descriptive” refusals, as the name can be said to “merely describe” a quality of the party such as focusing on environmental issues (hence “green”). For example, the CHRISTIAN DEMOCRATIC-REPUBLICAN PARTY and the NATIONAL INDEPENDENT both received a merely descriptive refusal for their applications. (Serial No. 77039315 and Reg. No. 4482846). 

Additionally, political parties often receive “geographically descriptive” refusals. Chapters of political parties need trademarks too, and often the location of the chapter is included in the trademark. Political parties with geographic locations in their name are almost guaranteed a “geographically descriptive” refusal. For example, both the REPUBLICAN PARTY OF LOS ANGELES COUNTY and the DEMOCRATIC PARTY OF NEW JERSEY received “geographically descriptive” refusals. (Serial No. 85056861 and 85403796).

A “geographically descriptive” refusal isn’t the only problem local political party chapters might face. As stated above, the Republican Party holds its elephant logo as a registered trademark. The USPTO has issued “likelihood of confusion” refusals to local Republican Parties applying to register a logo with the Republican elephant logo. Even though a local Republican chapter is affiliated with the national Republican Party, the USPTO sees them as separate marks and prohibits local chapters from using the elephant in their own trademarks. For example, THE REPUBLICAN PARTY OF LOS ANGELES COUNTY and REPUBLICAN PARTY OF PENNSYLVANIA both received “likelihood of confusion” refusals for using the Republican elephant. (Serial No. 85056612 and 86038833). 

Do Political Parties Perform a “Service” Under the Lanham Act?

In United We Stand the Second Circuit Court of Appeals ruled political activities fall within in the meaning of “services” under the Lanham Act. United We Stand Am., Inc. v. United We Stand, Am. N.Y., Inc., 128 F.3d 86. The court reasoned that political parties provide a valuable service to voters by adopting a mark and using that mark to endorse candidates. Voters need to be able to distinguish those marks, so they know which party supports which candidate. If trademark protection were not allowed, any group trading in political ideas would be free to distribute publicity statements, endorsements, and position papers in the name of the Republican Party, the Democratic Party, or any other party. The court noted, “the resulting confusion would be catastrophic.” Id. at 90.

Should Political Parties Register Collective Marks?

The Trademark Manual of Examining Procedure does not speak to the registrability of political party names. However, the term “political parties” does appear in § 1304, which addresses collective marks. Collective marks are a type of trademark that show membership to a particular organization. The term “political parties” appears under § 1304.02(a)(i)(C), which addresses specimens and states, “Flags, pennants, and banners of various types used in connection with political parties, club groups, or the like could be satisfactory specimens.” This suggests that political parties should register their trademarks as collective marks. Political parties need to use their marks to endorse candidates, and using a collective mark would allow a party to show a candidate belongs to its group and ideals. 

In reality, political parties do not take the collective mark route. A trademark search reveals no major political party has registered a collective mark. The Green Party applied to register a collective mark in 1992 but abandoned the application. (Serial No. 74247135). Neither the Democratic Party nor the Republican Party holds a federally registered collective mark. 

Conclusion

While it’s clear political parties are brands and need trademark protection to promote their ideals and endorse candidates, there is significant uncertainty on the best path forward for them to achieve this end. Given increasing tensions within the major U.S. political parties, this may be the year the USPTO sees an uptick in applications and has to clarify its approach.

Patrick Lewis
Justice Guzman’s Dog in the Fight in City of Laredo v. Laredo Merchants Association
It’s not the size of the dog in the fight, it’s the size of the fight in the dog.
— Mark Twain
Photo by Tim Mossholder on Unsplash

State law preempts the City of Laredo’s anti-litter ordinance, which prohibited local merchants from providing to customers “single use” plastic and paper bags for point-of-sale purchases, according to the Texas Supreme Court in City of Laredo v. Laredo Merchants Association. Before engaging in its analysis and supplying reasons for its decision, the Court disclaimed that it had any “dog in this fight”:

The roving, roiling debate over local control of public affairs has not, with increased age, lost any of its vigor. From public education to immigration policy to fracking to shopping bags, the sides are always deeply divided. “Judges have no dog in this fight. Our duty is to apply the rules fairly and equally to both sides.”

This disclaimer is a curious way to begin a judicial opinion. For one thing, the issue in the case was not whether the judges personally agreed with any public policy, nor did any issue in the case involve public education, immigration, or fracking. So why begin with this disclaimer? Or maybe the following is a better question: Is it true that judges have “no dog” in any public policy fight? Footnotes 1 and 5 and Justice Guzman's concurrence in City of Laredo may answer both of these questions. 

What about those Footnotes in the Opening Paragraph? 

City of Laredo concerned “shopping bags,” not public education, immigration policy, or fracking; Yet, the Court made it a point to mention these latter “public affairs” over which local control over state control is desired by some Texas citizens.  For each of these “public affairs” issues, the Court dropped a footnote. Footnote 1 is substantially different from Footnotes 2 and 3, even though all three footnotes serve the same purpose in drawing attention to contentious public affairs issues.

The first footnote starts out with an explanatory background from a prior Texas Supreme Court case, quoting some language from the majority opinion in Neeley v. West Orange-Cove Consol. Independent School Dist., 176 S.W.3d  746, 786 (2005). Interestingly, Justice Brister wrote a scathing dissent in which he advocated a strong public-policy preference for judicial intervention in creating an "efficient" public education system, going as far as saying that the Court cannot simply defer to the legislature when the Texas Constitution requires "a general diffusion of knowledge": "If efficiency is a justiciable question (as the Court holds), then we cannot simply suggest that someone else look into it." See Neeley, 176 S.W.3d at 802-03 (Brister, J., dissenting). Footnotes 2 and 3, on the other hand, simply cite to statutes which prohibit certain local policy-actions. Footnote 5 may provide some insight into why Footnote 1 sticks out the way it does. 

Footnote 5 on its face appears completely benign. The Court cites to a concurring opinion from a case out of the Ninth Circuit Court of Appeals to which it attributes the quote, “Judges have no dog in this fight . . . .” U.S. v. Howard, 793 F.3d 1113, 1115 (9th Cir. 2015). A look at the Howard concurring opinion, however, reveals a similarity to Footnote 1. Judge Kozinski’s concurring opinion in Howard is written to address what he considered patent unfairness in the release conditions imposed on a criminal defendant by the District Court, prohibiting the Defendant from contacting certain witnesses, without an equal prohibition on the state. Judge Kozinski articulates a clear policy-preference. 

After citing to Howard’s concurring opinion, Footnote 5 in City of Laredo adds the following:

For what it’s worth, “[a] person commits an offense if the person intentionally or knowingly . . . causes a dog to fight with another dog” or “attends as a spectator an exhibition of dog fighting.” Tex. Penal Code § 42.10(a)(1), (6). The latter is a Class A misdemeanor, the former a state jail felony. Id. § 42.10(e).

The majority opinion directs readers to two cases, Neeley in Footnote 1 and Howard in Footnote 5, both of which include individual judge's respective concurring and dissenting opinions that include a strong public policy opinion by the respective judges; that is, these cases provide examples of judges with a dog in the fight. Although Footnote 5 in City of Laredo bears no relevance whatsoever to the legal analysis, reason, or conclusion in the case, it may have been directed as a good-natured-professional chide at the concurring opinion written by Justice Guzman, who did “cause a dog to fight with another dog” when she articulated a policy position against the majority’s clear statement that judges have “no dog in this fight.” 

Justice Guzman’s Dog in the Fight

Justice Guzman begins her concurring opinion by acknowledging public policy arguments are largely “legislative concerns” that are “constitutionally removed from judicial purview." Then, she enters the fray:

Even so, these complex public policy determinations have important ramifications for the environmental legacy the next generation will inherit. And allowing plastic debris—bags, Styrofoam cups, water bottles, and similar pollutants—to migrate unchecked into the environment carries grave consequences that must not be ignored. Though I join the Court’s opinion, I write separately to highlight the urgency of the matter. As a society, we are at the point where complacency has become complicity.

Her concurrence goes on for another 9 pages, discussing the deleterious impact improperly discarded plastics have on the environment and wildlife.

Justice Guzman’s concurring opinion concedes what the Majority wished to conceal: Judges are human beings and citizens of the state and are equally impacted, as every other citizens in the state, by the rights, duties, and burdens adjudicated by them. A judge may have children who might attend public school or friends whose kids may attend public school, and the way the judge comes down on public school funding will impact those kids. Every person, including a judge and his or her family and friends, may find themselves in need of fair and equal process in the face of a criminal prosecution. And every person, including a judge and his or her family and friends, are impacted negatively by a polluted environment. Every judge has a dog in the fight when public affairs are at issue.   

Of course, it does not follow from the fact that every judge has a dog in the fight of public affairs that judges are incapable of impartially deciding an issue. Justice Guzman's concurrence demonstrates that judges are capable of deciding cases according to the law as written, even when the outcome goes against the judge's personal or best interest or preference. She agreed with the outcome, but used her concurring opinion to lend some urgency to the issue, with the hope and expectation that the State legislature will act. 

Daniel Correa
“Cf.” Benisek, et al. v. Lamone, et al.—The U.S. Supreme Court’s Nod to a Laches-Like Analysis in Injunctive-Relief Cases Involving Constitutional-Right Violations

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A “cf. seldom stirs up controversy. But when “cf.” is the signifier to the first case cited by the United States Supreme Court in support of a legal proposition, that “cf.” should raise a red flag to the reader. The United States Supreme Court’s recent Per Curiam opinion in Benisek v. Lamone dropped a “cf.” that deserves heightened scrutiny.

Cf.” is short for compare. The Bluebook informs law students and legal practitioners that “cf.” denotes the cited authority may not expressly (or even obviously) support the stated proposition, but the cited authority is analogous enough to lend support to the proposition. Black’s Law Dictionary defines “cf.” as “a citation signal [that] directs the reader’s attention to another authority or section of the work in which contrasting, analogous, or explanatory statements may be found.” (243). Often, a parenthetical accompanies the case citation to illustrate the analogy between the stated legal proposition and the case cited in support thereof.

Yet, sometimes (maybe too often) the author fails to provide the reader with any information on the cited case and supplies no reason to support its analogy to the stated legal proposition. Worse, considering Black’s Law definition of “cf.,” without an explanatory parenthetical, the reader cannot know for sure whether the cited authority is used to contrast, analogize, or explain the stated legal proposition. The reader is left with a choice: take the author at his or her word that the cited case supports the legal proposition, or read the cited case and draw his or her own conclusion as to whether it is sufficiently analogous to the stated legal proposition. The former choice may be warranted at times when the source is trustworthy—maybe the United States Supreme Court is one of those sources. The latter choice is wise regardless of the source—it’s the only way to ascertain whether you can truly, and without question, trust the source.

The Partisan Gerrymanding Cases

Benisek v. Lamone is one of two cases the Supreme Court recently considered in which the constitutionality of partisan gerrymandering was at issue. The other case was Gill v. Whitford. The Court in Gill held that the plaintiffs failed to demonstrate standing—specifically a particularized and individual harm to each plaintiff—but remanded the case to the district court to provide the plaintiffs an opportunity to demonstrate particularized and individual injuries, reasoning that a remand was necessary due to the unresolved constitutional contours of partisan considerations in drawing legislative districts.

The Court in Benisek issued a Per Curiam opinion affirming the district court’s denial of the plaintiffs' request for a preliminary injunction. The plaintiffs were Republican voters in Maryland who challenged a congressional district that they claimed was redrawn in 2011 on partisan grounds, specifically to “retaliate against them for their political views.” The plaintiffs sought, among other things, an injunction prohibiting state officials from holding elections in 2018 under the 2011 map.

The district court denied the request for an injunction and stayed further proceedings pending the Supreme Court’s ruling in Gill v. Whitford in order to be “better equipped to [apply the proper legal standard] and to chart a wise course for future proceedings.” The Supreme Court affirmed, holding, among other things, that the plaintiffs failed to show “reasonable diligence” in seeking injunctive relief, having waited until “six years, and three general elections, after the 2011 map was adopted, and over three years after the plaintiffs’ first complaint was filed.” Notwithstanding the diligence requirement, the Supreme Court also held that the district court’s decision to deny injunctive relief was supported by “a due regard for the public interest in orderly elections, as the deadline for injunctive relief articulated by the plaintiffs had passed by the time the district court ruled, and the constitutional contours of partisan considerations in legislative district drawing remain unclear.

A Paragraph in Benisek Worth a Book of Scrutiny

The Court’s conclusion in Benisek is largely uncontroversial. The district court is vested with discretion to grant or deny injunctive relief. When, as here, the proper legal standard to apply over the controversy remains unsettled or unclear, it is very difficult to justify completely halting electoral processes. Moreover, as the Supreme Court noted, “the ‘purpose of a preliminary injunction is merely to preserve the relative positions of the parties until a trial on the merits can be held.’”

What is controversial about the Court’s opinion, however, is the paragraph setting forth the legal requirement of “reasonable diligence”:

First, a party requesting a preliminary injunction must generally show reasonable diligence. Cf. Holmberg v. Armbrecht, 327 U. S. 392, 396 (1946). That is as true in election law cases as elsewhere. See Lucas v. Townsend, 486 U. S. 1301, 1305 (1988) (KENNEDY, J., in chambers); Fishman v. Schaffer, 429 U. S. 1325, 1330 (1976) (Marshall, J., in chambers). In this case, appellants did not move for a preliminary injunction in the District Court until six years, and three general elections, after the 2011 map was adopted, and over three years after the plaintiffs’ first complaint was filed.

(emphasis added). What should not only surprise but shock readers is that the Court supported the first legal proposition in the above paragraph with a case citation preceded by the “cf.” signal. Surely, in the 229 years of U.S. federal jurisprudence, the Court must have something a little more concrete than a compare-this-to-that citation to support the proposition that “a party requesting a preliminary injunction must generally show reasonable diligence.”

The Court supplied no additional information as to the facts, holding, or reasoning in Holmberg v. Armbrecht, leaving the reader to either trust that Holmberg supports the stated legal proposition or to read Holmberg and decide whether it is sufficiently analogous to the case at hand. So why Holmberg? And is Holmberg analogous to the stated legal proposition in Benisek?

In Holmberg, the plaintiffs were creditors of the Southern Minnesota Joint Stock Land Bank who sought to enforce liability for the debt against the shareholders pursuant to the Federal Farm Loan Act. The federal act only provided equitable relief in the form of an enforcement proceeding to the creditors. The shareholder defendants raised statute of limitations and laches as affirmative defenses. The district court overruled both defenses. After a judgment against them, the defendants appealed and the appellate court reversed, holding that the state statute of limitations applied, citing to Guaranty Trust Co. v. York, 326 US 99 (1945).

On Writ of Certiorari, the Supreme Court considered the issue whether the state statute of limitations controlled in a suit based on a federal statute that allowed only equitable relief. The court held that the state statute of limitations did not control. Guaranty Trust involved a state-created right asserted in federal court with jurisdiction predicated upon diversity of citizenship. The Court in Guaranty Trust held that “when a State statute bars recovery of a suit in a State court on a State-created right, it likewise bars recovery on such a suit on the equity side of a federal court brought there merely because it was ‘between citizens of different states. . . .”

The Holmberg Court noted that the present action was not based on a state-created right, nor was jurisdiction predicated on diversity of citizenship. Rather, federal law created the right at issue. The federal statute at issue, however, did not articulate a statute of limitations. The Court held that, when Congress is silent as to the time limit within which to bring an action in equity, federal courts must turn to equitable principles to determine the time frame within which a litigant must enforce its right or lose it: “A federal court may not be bound by a State statute of limitation and yet that court may dismiss a suit where the plaintiffs’ ‘lack of diligence is wholly unexcused; and both the nature of the claim and the situation of the parties was such as to call for diligence.”

There are a myriad of ways in which the Holmberg opinion is nothing like the situation or suit in Benisek. For one thing, Holmberg did not involve a preliminary injunction. For another, Holmberg involved a federal right created by statute for creditors against bank shareholders (suits between individuals); whereas, Benisek involves Constitutional rights that prohibit certain government action against citizens. Also, Holmberg dealt with laches and statute of limitations due to the statutory remedy at issue; Benisek did not involve a statute of limitations issue or laches issue—in fact, when considering the constitutional rights at issue (equal political participation guaranteed by Article 1 Section 2 of the U.S. Constitution, and the First Amendment’s protection of political association), a statute of limitations or laches analysis suggests that government may violate constitutional rights with impunity.

So why Holmberg? Maybe the Supreme Court was signaling its intent to impose the Holmberg laches-like analysis to future requests for injunctive relief in election-law, political-participation cases involving government. The paragraph in Benisek that we’ve been analyzing also cited to Lucas v. Townsend, 486 U. S. 1301, 1305 (1988) (KENNEDY, J., in chambers); Fishman v. Schaffer, 429 U. S. 1325, 1330 (1976) (1976) (Marshall, J., in chambers). These cases involved election-law issues. Neither of them actually creates, though, a “reasonable diligence” requirement that, alone, could bar the injunctive relief sought.

Justice Kennedy in Lucas granted an injunction, enjoining the challenged election, based on the elements necessary for a Circuit Justice to grant an in-chambers application for equitable relief, one element of which was a showing by the applicant that irreparable harm would likely result from a denial of the injunction. In considering the “irreparable harm” element, Justice Kennedy reasoned, “Permitting the election to go forward would place the burdens of inertia and litigation delays on those whom the statute was intended to protect, despite their obvious diligence in seeking an adjudication of their rights prior to the election.”  Lucas, 486 U. S. at 1305.  Nowhere in Justice Kennedy’s opinion is “diligence” made a prerequisite to injunctive relief to enjoin an alleged constitutionally-tainted election.

Justice Marshall in Fishman came close to articulating a “reasonable diligence” factor in determining whether to grant an in-chambers application for injunctive relief; however, unlike in Lucas, his opinion did not state the necessary elements to grant such relief. Rather, Justice Marshall cited to an amorphous standard: “such power should be used sparingly and only in the most critical and exigent circumstances.” Fishman, 429 U. S. at 1326. After determining that the application should be denied because “the question [at issue was] too novel and uncertain to warrant a single Justice acting unilaterally to strip the State of its chosen method of protecting its interests in the authenticity of petition signatures,” Justice Marshall added a few more considerations militating against injunctive relief, among them lack of diligence. Id. at 1330.

*****************************************************************************************************************

Indeed, many “cf.” go unscruntized, whether because the “cf.” is buried in an opinion, partially justified by a parenthetical, or given deference based on the status of the author. But a critical thinker should never pass on an authors signal to compare cases for one’s self.  

Daniel Correa
“Trademarks and Cannabis” — Current Approaches

On June 2, 2018, Managing Attorney James Creedon spoke on approaches to trademark protection in the cannabis industry. Presenting to the Intellectual Property Law Section of the Oklahoma Bar Association, James discussed the most recent changes in the treatment of CBD by the Drug Enforcement Administration, and the increasing role of the Food and Drug Administration in the trademark review process. For trademark practitioners not familiar with the world of cannabis, he provided an overview of the key terminology and legal framework to be aware of, and worked through three main approaches to obtaining trademark protection in this area. Concluding with the ethical issues involved and the importance of providing Complete Counsel, James invited those attorneys interested in this growing area to contact him and become part of the discussion.

James Creedon
What Is a Trademark Anyway?
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What exactly is a trademark? In short, it is something consumers can look at to know the source of the product they are buying. The United States Patent and Trademark Office ("USPTO") explains "[a] trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A service mark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of a service rather than goods. Some examples include: brand names, slogans, and logos. The term 'trademark' is often used in a general sense to refer to both trademarks and service marks." Let's unravel that a bit and see why trademarks can be so valuable. 

A trademark can be a "word, phrase, symbol, and/or design." The name Starbucks® is a word consumers associate with coffee. The phrase Just Do It® is known for products produced by Nike®, as is the "swoosh" symbol below:

Each of these trademarks has little value inherently — Starbuck is merely a character from Herman Melville's Moby Dick, "just do it" is simply an encouraging phrase, Nike the Greek goddess of victory, and the swoosh a simple sketch. What gives them value is their role: to identify and distinguish the source of a product. As these companies grew and developed their offerings, they came to be known for particular products with characteristics a customer was seeking. Consumers wanting a darker roast of coffee in the late 1980's soon learned that the rapidly-expanding Starbucks brand was the place to look. Importantly, they also learned that the coffee was consistent from location to location, and that they could find a similar cup at any storefront marked by the Starbucks name. With competitors entering the market, Starbucks could differentiate itself by prominently displaying the word "Starbucks" on signage, advertising, cups, and more. In time, the Starbucks name became synonymous with quality coffee — it distinguished a cup of coffee produced by them from one produced by any other company.

That said, keep in mind that the mark which is associated with the product does not need to be related in any way to the company name itself. A consumer could recognize the "swoosh" above and soon determine that anything with the "swoosh" is in line with what they want to buy, even if they never hear the name Nike. They know, simply by a visual symbol, that the "swoosh" shoes are offered by the same company with the "swoosh" shirts, the "swoosh" basketball, or the "swoosh" water bottle. In fact, the symbol can be central to a product identity without knowing the name of the company. Recognize this?

 Registered trademark of Turner Broadcasting System

Registered trademark of Turner Broadcasting System

Of course, you know CNN as a source of news and entertainment content, and you may even recall the phrase "Cable News Network." It may not matter to you that the channel is owned by Turner Broadcasting System, so long as the symbol itself is familiar to you as a source identifier.

Trademarks are a shorthand we use to help customers understand how to choose the good or service they prefer. Their business value grows with the underlying offering, and that value ca increase dramatically as the mark's ability to be a differentiator becomes essential to the protection of a brand. A small company just starting out may not see the need to carve out this identity at the beginning, but early success and increasing recognition often leads to imitation. Choosing and protecting a trademark can be a small investment now leading to significant dividends later. After all, with all the hard work necessary to stand out from the crowd with a new product or service, the name you choose may just end up being your greatest asset.

James Creedon
Nathaniel Hawthorne, Defamation, and Privacy: A Critical Look at The Dallas Morning News, Inc. and Steve Blow v. John Tatum and Mary Ann Tatum

 Photo by James Harris on Unsplash

Photo by James Harris on Unsplash

The Texas Supreme Court opened its recent libel-by-implication opinion with the following Nathaniel Hawthorne quote: “Words—So innocent and powerless as they are, as standing in a dictionary, how potent for good or evil they become in the hands of one who knows how to combine them.” See The Dallas Morning News, Inc. and Steve Blow v. John Tatum and Mary Ann Tatum. http://www.txcourts.gov/media/1441577/160098.pdf. This quote, of course, has no legal force, as Nathaniel Hawthorne is not a legal source, nor, for that matter, are his works. But the use of Hawthorne in this case caught my attention due to the facts of the case at hand.

John and Mary Tatum experienced the untimely death of their son. Doubtless, the reader can appreciate the extreme grief that overcomes any parent who outlives his or her child. The Tatums purchased a space in the Dallas Morning News to publish an obituary for their son. As the Court notes, the obituary stated that their son died “as a result of injuries sustained in an automobile accident." Their son had shot himself after he had been involved in a car accident. John and Mary Tatum believed, having read some medical literature on the issue, that their son incurred traumatic brain injury due to the accident, which caused “irrational and suicidal ideations” in their son, ultimately causing him to commit suicide.

One month after the Dallas Morning News published the obituary, Steve Blow published a column in the Dallas Morning News, for whom he worked as a columnist, and revealed that the Tatums’ son had committed suicide. The relevant portions read as follows:

More recently, a paid obituary in this newspaper reported that a popular local high school student died “as a result of injuries sustained in an automobile accident.”

When one of my colleagues began to inquire, thinking the death deserved news coverage, it turned out to have been a suicide.

There was a car crash, all right, but death came from a self-inflicted gunshot wound in a time of remorse afterward.

And for us, there the matter ended. Newspapers don’t write about suicides unless they involve a public figure or happen in a very public way.

But is that always best?

I’m troubled that we, as a society, allow suicide to remain cloaked in such secrecy, if not outright deception.

See Appendix to Dallas Morning News, et al. v. Tatum.

The Tatums sued the Dallas Morning News and Steve Blow, alleging libel and libel per se against them. The Tatums alleged that Steve Blow’s column defamed them “by implicitly communicating the following ‘gist’”:

[The Tatums] created a red herring in the obituary by discussing a car crash in order to conceal the fact that Paul’s untreated mental illness—ignored by Plaintiffs—resulted in a suicide that Plaintiffs cannot come to terms with. Defendants led their readers to believe it is people like Plaintiffs—and their alleged inability to accept that their loved ones suffer from mental illness—who perpetuate and exacerbate the problems of mental illness, depression, and suicide.

After the trial court granted the Dallas Morning News and Steve Blow summary judgment, and after the Dallas Court of Appeals reversed the trial court’s ruling as to libel and libel per se, the Texas Supreme Court took the case to determine whether the words used in Steve Blow’s colum were “reasonably capable of defamatory meaning.”

The Texas Supreme Court reversed the Dallas Court of Appeals’ judgment and reinstated the trial court’s summary judgment in favor of the Dallas Morning News and Steve Blow. Ultimately, the Supreme Court found that the column was reasonably capable of conveying that the Tatums published a deceptive obituary, but that, to the extent this defamatory meaning was conveyed to readers, the column expressed that meaning as Steve Blow’s opinion, not as an objective fact. The Court further held that the column was not reasonably capable of conveying the meaning that the Tatums’ son had a mental illness or that their actions exacerbated mental illness, depression, and suicide. These findings were all the Court needed to reinstate the trial court’s summary judgment.

But the majority failed to heed Justice John Roberts’ oft-quoted words of caution: “[I]f it is not necessary to decide more, it is necessary not to decide more.” VanDevander v. Woods, 222 S.W.3d 430, 433 (Tex. 2007) (quoting PDK Labs., Inc. v. U.S. Drug Enforcement Admin., 362 F.3d 786, 799 (D.C. Cir. 2004) (Roberts, J., concurring)). As the concurrence in the Tatum case prudently pointed out, “[b]ecause the column only expressed a potentially defamatory opinion, the Tatums cannot recover for defamation, and we need not also consider whether Blow’s opinion was correct or substantially true.” http://www.txcourts.gov/media/1441578/160098c.pdf. Instead, the majority opinion went on for nearly three pages and pointed out the many ways in which the Tatums were, in fact, deceptive, the opinion of which is now public record, to be permanently included in the annals of case law.

The Court’s finding that the Tatums were in fact deceptive is very unfortunate, as is the public revelation of facts the Tatums sought to keep private. One of Nathaniel Hawthorne’s short stories provides an anecdote to help demonstrate why the Court’s opinion is unfortunate as to the "truth" of "deception" in the case, and to help demonstrate why the revelation of facts the Tatums sought to keep private is troublesome. 

Endicott and the Red Cross

While an undergraduate student at UCLA, I had the privilege of learning Colonial Literature, and later American Literature, from Michael J. Colacurcio, a leading scholar on the works of Nathaniel Hawthorne. Professor Colacurcio’s seminal work—The Province of Piety: Moral History in Hawthorne’s Early Tales—molded my understanding of Hawthorne’s early short stories. 

Nathaniel Hawthorne fictionalized the seventeenth-century historical account of John Endicott defacing the English banner, cutting out St. George’s Cross. Hawthorne, of course, was writing in the nineteenth-century. To fully understand Endicott and the Red Cross, the reader would also have to know that Hawthorne—in the unrevised portion of the headnote to The Gentle Boy—referred to John Endicott as a man of “uncompromising bigotry . . . made hot and mischievous by violent and hasty passions” who’s “whole conduct . . . was marked by brutal cruelty,” while also referring to Endicott as the “Puritan of Puritans” in The May-Pole of Merry Mount. Endicott and the Red Cross, as with all of Hawthorne’s Puritan short stories, offered a moral-historical critique of the religious-political effects of Puritanism in America. See Michael J. Colacurcio, The Province of Piety: Moral History in Hawthorne’s Early Tales (Duke University Press, 1995).

The narrator of Endicott and the Red Cross opens, by way of background, with a sketch of the religious persecution from which the puritans fled to “Plymouth and Massachusetts,” the persecution of which they are constantly reminded by “the folds of the English banner, with the Red Cross in its field, . . . flung out over a company of Puritans.” See Nathaniel Hawthorne, Endicott and the Red Cross in Selected Tales and Sketches, 217 (Penguin Classics). Endicott was the leader of this company. The narrator juxtaposes the tyranny of the crown and of the “haughty primate, Laud, Archbishop of Canterbury” with the Puritan leadership, who oversee “the whipping post,—with the soil around it well trodden by the feet of evil-doers.” (218). The narrator describes, "by a singular good fortune for our sketch, the head of an Episcopalian and suspected Catholic . . . grotesquely encased” in a pillory. (218). Nearby stood a man “bearing on his breast this label,—A Wanton Gospeller,—which betokened that he had dared to give interpretation of the Holy Writ," and next to him stood a woman wearing a “cleft stick on her tongue,” for wagging it at the elders of the church. (218).

Among the crowd of people in the colony, the author describes those whose punishments are permanently displayed for all to see—“some whose ears had been cropt, like those of puppy-dogs; others, whose cheeks had been branded with the initials of their misdemeanors; one with his nostrils slit and seared; and another, with a halter about his neck. . . . There was likewise a young woman, with no mean share of beauty, whose doom it was to wear the letter A on the breast of her gown, in the eyes of all the world and her own children. And even her own children knew what that initial signified.” (219).

The narrator then addresses his readers, who live after the “times of the Puritans”:

Let not the reader argue, from any of these evidences of iniquity, that the times of the Puritans were more vicious than our own, when, as we pass along the very street of this sketch, we discern no badge of infamy on man or woman. It was the policy of our ancestors to search out even the most secret sins, and expose them to shame, without fear or favor, in the broadest light of the noonday sun. Were such the custom now, perchance we might find materials for a no less piquant sketch than the above.  

(219).

Endicott receives Roger Williams, who bears a letter from John Winthrop, then governor of the Massachusetts Bay colony. The letter informs Endicott that “Charles of England, and Laud, our bitterest persecutor, arch-priest of Canterbury . . .  [intend] to send over a governor-general, . . . to establish the idolatrous forms of English Episcopacy.” (223). Endicott entreats his puritan brethren, “have we not sought this country of a rugged soil and wintry sky? Was it not for the enjoyment of our civil rights? Was it not for liberty to worship God according to our conscience?” (222). Endicott then brandishes his sword and cuts the Red Cross from the English banner. Some cried out “treason,” and others decryied Endicott’s act as “Sacrilegious.” (224). Nevertheless, the narrator ends on an ironic note:

With a cry of triumph, the people gave their sanction to one of the boldest exploits which our history records. And, for ever honored be the name of Endicott! We look back through the mist of ages, and recognize, in the rending of the Red Cross from New England’s banner, the first omen of that deliverance which our fathers consummated, after the bones of the stern Puritan had lain more than a century in the dust. 

(224).

Doubtless, Hawthorne did not intend for the reader to interpret Endicott as a champion of liberty, but displayed competing forms of tyranny, which masquerade as “liberty.” For purposes of this Article, though, the focus will be on the narrator’s appeal to his readers not to argue that the “the times of the Puritans were more vicious than our own.” Hawthorne here challenges his readers to consider the open and outright inhumane practices of past generations, to which the people of the time of the Puritans considered mere discipline and righteousness, to the readers’ own time—What forms of discipline, i.e., those practices which aim to conform people’s behaviors to existing societal norms, presently exist? And, in what ways do these forms of discipline involve “search[ing] out even the most secret sins, and expos[ing] them to shame, in the broadest light of the noonday sun”?

Private Facts and the Dignity and Autonomy of Individuals

The Tatum Court’s analysis concerning the “truth” of the Tatums’ “deception” is deeply troubling, considering the personal nature of the event to the Tatums. Scarred already by the untimely loss of their son’s life, riddled, as they must be, with both grief and disbelief, the publication of their son’s tragedy, which they sought to keep private by not fully disclosing the details of his death in his obituary, is an affront to the Tatums dignity and individual autonomy. It was wholly unnecessary for the Court to engage the question whether the Tatums were “deceptive” in how they framed the life and death of their child. The Court’s finding that the column offered only an opinion resolved the matter.

But another aspect of the facts is also troubling. Steve Blow’s column states that “Newspapers don’t write about suicides unless they involve a public figure or happen in a very public way.” Underlying this statement is some policy acknowledgment, either that suicides that happen in private are not publically important or that suicides that do not involve public figures or do not occur in a very public way should be kept private out of respect for surviving family and friends, that is, newspapers leave it to the survivors to make the issue public.

Steve Blow challenges the notion that suicides should remain private in his blog. He states, “the secrecy surrounding suicide leaves us greatly underestimating the danger there.” Though his goal is to encourage publicity, he chose to make public what the Tatums sought to keep private. He may not have defamed the Tatums, and he may not have intended to “put guilt on the family of suicide victims,” but he undoubtedly hurt the Tatums by making public what they sought to keep private. And, now, their son’s death is paraded in public and in case law, with a Court calling the Tatums “deceptive,” “exposing them to shame, without fear or favor, in the broadest light of the noonday sun.”

Common law acknowledges an action related to defamation for “publicity given to private life.” The Restatement (Second) of Torts recites the elements of this action as follows:

“One who gives publicity to a matter concerning the private life of another is subject to liability to the other for the invasion of his privacy, if the matter is of a kind that

(a) would be highly offensive to a reasonable person, and

(b) is not of legitimate concern to the public.”

Restatement (Second) of Torts §652(D) (1977). This tort places the dignity and autonomy of individuals over the social benefits that truthful material might confer, and appeals to the community’s notion of decency. See Melvin v. Reid, 297 P. 91 (Cal.Ct.App. 1931); cf Sidis v. F-R Publishing Corp., 113 F.2d 806 (2d Cir.), cert. denied 311 U.S. 711 (1940).

The reader will notice that the “publicity given to private life” tort closely tracks the concerns addressed in Hawthorne’s Endicott and the Red Cross. The tort was not derived from Hawthorne’s story, of course, but the life of the law embodies our moral and political history, a history which values privacy as a component of liberty—one that also shies from brandishing people with “badges of sin” for the public permanently to view.

The Tatums did not bring such an action against the Dallas Morning News or Steve Blow. Texas, in fact, has not adopted the "publicity given to private life tort" as articulated by the Restatement Second. See Kevin B. Bennett, Revenge Pornography: Exploring Tortious Remedies in Texas, 46 St. Mary’s L.J. 521, 528-29 (2015). The Texas Supreme Court, though, has defined the right to privacy as “the right of an individual to be left alone, to live a life of seclusion, to be free from unwarranted publicity.” See Billings v. Atkinson, 489 S.W.2d 858, 859 (Tex. 1973).

In light of the Tatums case, among other cases, perhaps it is time to give life to the tort of “publicity given to private life,” to protect the dignity and autonomy of individuals. The tort has the benefit of balancing the community’s notions of decency against the social benefits of making a person’s private life public. Are “the times of the Puritans” more vicious than our own?

 

Daniel Correa
Jury Appreciation Week—The Right to Trial by Jury and its Democratic Provenance
 Photo by Trent Yarnell on Unsplash

Photo by Trent Yarnell on Unsplash

Were I called upon to decide, whether the people had best be omitted in the legislative or judiciary department, I would say it is better to leave them out of the legislative. The execution of the laws is more important than the making of them.
— Thomas Jefferson

The constitutional promise to a trial by jury is not merely an individual right; it is necessary to validate law in a democratic system. American history is replete with this notion. John Adams declared, “the common people . . . should have as complete a control, as decisive a negative” in courts as they do in other governmental decisions through their representatives. The Works of John Adams 253 (1850) (Diary, Feb. 12, 1771); see also Akhil Reed Amar, The Bill of Rights: Creation and Reconstruction 88 (1998). The Declaration of Independence listed deprivation “of Trial by Jury” amongst many other grievances against King George III. The Declaration of Independence para 19 (U.S. 1776). Alexis de Tocqueville proclaimed, “[t]he jury system as understood in America seems to me as direct and extreme a consequence of the dogma of the sovereignty of the people as universal suffrage. They are both equally powerful means of making the majority prevail.” Alexis de Tocqueville, II Democracy in America 273 (J. P. Mayer ed., George Lawrence trans., Doubleday & Co., Inc. 1969) (1840).

So central is the right to trial by jury that it makes a primary appearance in the United States Constitution four times. Twice the constitution secures the right to a jury trial in criminal cases. See U.S. Const. art. III & amend. VI. The Fifth Amendment secures the right to indictment or presentment by a grand jury. See U.S. Const. amend. V. And, the Seventh Amendment secures the right to a jury trial in civil cases. See U.S. Const. amend VII. The Northwestern Ordinance (1787) also memorialized the right to trial by jury.

Historically, the right to trial by jury not only ensured a criminally accused person or civil litigant that her peers, not the State, would decide her fate; the right to trial by jury equally protected the people’s right to judge. With respect to federal jurisdiction, since the jury was thought to protect individual rights and to compete with centralized government power, an accused person or litigant could not waive a jury. Joan L. Larsen, Ancient Juries and Modern Judges: Originalism’s Uneasy Relationship with the Jury, 71 Ohio St. L.J. 959, 969 (2010) (pointing out that juries were considered necessary to a court’s jurisdiction to enter judgment). Only a guilty plea in a criminal case could cut the jury out. Id.

The institution of the jury has an impeccable democratic origin. “In its original Greek form (demokratia), democracy meant that ‘the capacity to act in order to effect change’ (kratos) lay with a public (demos) composed of many choice making individuals.” Josiah Ober, Democracy and Knowledge: Innovation and Learning in Classical Athens 12 (Princeton University Press 2008). Ancient Athens grappled with the problem of how to design law-making institutions that facilitate equal participation of all citizens without at the same time overburdening the workforce or disrupting people’s daily lives. The solution lied in instituting a representative body of the community to decide for the whole. This was the jury in the People’s Court. Douglas M. MacDowell, The Law in Classical Athens 33-35 (Cornell University Press 1978). The jury in ancient Athens was composed of volunteers.  Any citizen who wished to serve as a juror put his name in for selection.  Volunteers were selected by lot to serve as jurors. See Mogens Herman Hansen, The Athenian Democracy in the Age of Demosthenes 181-86 (J.A. Crook trns., University of Oklahoma Press 1999). The other decision-making body considered central to Ancient Athenian governance was the citizen Assembly. See Ober, supra at 161. The jury, under the Athenian model, constituted the very essence of democratic government, whereby the people themselves rule in the final analysis of law.

Not all persons in United States history have been fans of lay juries. By the mid-19th Century, judges began to strip the jury of any right to determine questions of law in the Untied States. The Supreme Court of the United States would put an end to any notion that the jury played a role in deciding questions of law in federal courts in Sparf v. United States, 156 U.S. 51 (1895). But even before this, Justice Story, when serving as a district court judge, argued against the wisdom of leaving any question of law to the jury. See U.S. v. Battiste, 24 F. Cas. 1042 (C.C.D. Mass. 1835) (No. 14,545); see also M. D. Howe, Juries as Judges in Criminal Law, 52 Harv. L. Rev. 582 (1939); Stacy Pratt McDermott, The Jury in Lincoln’s America (Ohio Univ. Press 2010). The jury’s power to determine civil law was the first to go. Joan L. Larsen, Ancient Juries and Modern Judges: Originalism’s Uneasy Relationship with the jury, 71 Ohio St. L.J. 959, 977 (2010). A struggle ensued between the right of the jury to decide questions of law and fact and the rising legal profession that sought consistency and transparency in the law in the form of canonized legal materials. This struggle is captured in a pivotal debate in Massachusetts concerning the right of the jury to decide questions of law and fact in criminal trials. 

An Amendment to the Massachusetts Constitution sought to articulate the right of the jury to decide questions of law in response to the Supreme Judicial Court decision to the contrary in Commonwealth v. Porter. 51 Mass. (10 Met.) 263 (1845) (holding against the argument that defense counsel had been wrongfully denied the right to address the legal argument to the jury for them to decide the question of law, and interpreting the state constitutional guarantee of a trial before an impartial judge as overriding any right of the jury to decide questions of law). Amendment proponents argued that the jury had the right not only to “interpret applicable laws” but also to ascertain whether the law was just, and thereby valid. The Changing Role of the Jury in the Nineteenth Century, 74 Yale L.J. 170, 178 (1964).  Invoking arguments reminiscent of Jefferson and Adams, proponents argued that the jury had access to the natural law as much as any trained lawyer, and that it belonged to the people to rescue themselves, “in the name of their declared rights, from an unconstitutional law, or from an unconstitutional interpretation of that law.” Id. at 178; see also 1 The Papers of Thomas Jefferson 134 (Julian Boyd ed., 1950) (“The great principles of right and wrong are legible to every reader: to pursue them requires not the aid of many counselors.”). 

Amendment opponents argued, instead, that the jury was subject to irrational passions and easily swayed by public opinion. Opponents called on Rule of Law values, namely predictability and consistency in the law, to protect a criminal defendant. They argued, additionally, that interpretation of law must be left to professionals trained to broach law’s complex structure. One opponent expressed, “does not every gentleman who has studied the common law as much as I have—and I have studied it considerable—know that the common law is not always common sense? . . . In the case of criminal law, who knows exactly what murder is?” Changing Role of the Jury, supra at 180-81; see also Larsen, supra at 975-79. Even modern opponents of lay juries, especially in civil cases, resort to the same arguments, especially with respect to the complexity of law and limited capacity of laypersons to comprehend the law as such and the interplay of laws in the total legal scheme. Daniel Solove, Should We have Professional Juries? Concurring Opinions Blog available at <http://www.concurringopinions.com/archives/2009/03/should_we_have.html> (Professor Solove argues that lay juries in complex litigation is antiquated); John Gastil, et al., The Jury and Democracy: How Jury Deliberation Promotes Civil Engagement and Political Participation 155-56 (Oxford Univ. Press 2010) (setting out various arguments by legal scholars against lay juries in civil cases).

One of the most, if not the most, important shortcomings on the part of jury opponents is a failure to consider the Rule of Law implications on the other side. For law to garner the stability and predictability necessary to guide human conduct, law must achieve and maintain a level of consistency in its application. In order for the law to achieve predictability, the legal order needs more than mere consistency; it also needs clarity and publicity. Publicity requires governing bodies to reduce all laws to publication for public access. Clarity requires the law’s dictates to be understandable to those persons it purports and aims to govern; in other words, clarity shares with publicity the requirement that laws be publicly accessible to all persons.

If a person cannot understand the law—those requirements in which a representative body reduced public disagreement and a felt need for concerted action into a final decision—then she does just as well to act on her own reasons for action rather than a legislative bodies’ reasons for action. Society may gauge law’s clarity, publicity, and predictability by its accessibility to the public. Early proponents of juries held that natural duties of justice and common sense were guides enough to access legal demands. For law to stray from people’s actual experience seemed an anomaly. Further, for law to stray from the public’s normal reasoning seemed an affront to free, democratic government. 

“Democracy” conceptually entails, at minimum, that the people govern themselves. A democratic legal system seeks to maximize its citizens’ opportunities to exercise their capacity for self-government. Anyone willing to take democracy seriously on its face considers the law’s validity strictly tied to its provenance—a provenance whose normative character aspires to improved democratic governance. 

 

 

Daniel Correa
Legal Authority and Its Weight . . . Problem
Photo by Claire Anderson on Unsplash

First year law students learn to identify the weight of legal authorities through simple heuristics. Law presents itself as a hierarchical system, with a constitution on top, statutes immediately below, executive regulations and orders following, and judicial opinions at the bottom, but not necessarily last. Every law student learns that the top court of every state and the federal government claim the final say on the validity of other sources of law within its governing jurisdiction.

Judicial opinions, in fact, take on a hierarchy separate from other sources of law in weight of authority analyses. The judiciary in every state and the federal government is broken down into three tiers. Trial courts act as the first-level fact-finding body. Although trial courts also determine questions of law, questions of law are always viewed anew (de novo) by appellate courts. Intermediate appellate courts are broken down into separate districts or circuits, each respectively handling appeals from trial courts within the same district or circuit. And, every state and the federal government have one Court that is supreme on all issues of law within its governing jurisdiction.

When conducting legal research, law students and practitioners rely on their heuristics to identify mandatory (binding) authority and persuasive authority. When judicial opinions are the primary source of law at issue in the legal research, each court within the hierarchy described above is bound by the prior decisions of the courts above it within the same jurisdiction.

Stare Decisis is the principle that justifies the binding nature of a prior court’s decision on a lower court within its jurisdiction. That is, Stare Decisis (as triggered by “precedent”) gives weight to the authoritative dictates of each court within the hierarchy.  Notably, Stare Decisis is only a legal principle. It is not in the United States Constitution or the Texas Constitution. And, Stare Decisis is not externally binding in any meaningful sense; that is, there is no mechanism by another branch of government to force a trial court or appellate court to adhere to the principle of Stare Decisis in a given case.

The Weight Problem

Herein lies the weight problem: The judiciary is the only branch of government that determines the weight of its own authority. Trial courts and appellate courts may decide for any reason not to follow precedent. Usually a reason is provided. A judge or justices may try to draw a factual distinction between a prior case and the case under review, or a court may just decide that it was flat wrong in the past and may provide its reasons in support of a new course.

The judiciary’s ability to determine the weight of its own authority creates a number of problems. First, as most new practitioners learn straight out of law school, legal research and writing efforts are frustrated by inconsistent or non application of Stare Decisis, especially when the court provides insufficient or suspect reason(s) for its deviation from precedent. Second, and related, inconsistent application of precedent invites cynicism about the judiciary and its function, leaving both practitioners and the general population with the impression that judicial decisions are but arbitrary whims of individual judges.

Third, deviations from precedent obscure political accountability. The separation of powers doctrine is infused in the structure of every state and the federal constitution. Checks and balances—the notion that each branch may act as a check on another branch against abuses of power—are central to the separation of powers doctrine. A Legislature cannot simply change its mind about a law and decide to unilaterally repeal it; the Executive must approve, unless the Legislature obtains a supermajority to override an executive veto—even then all legislation is subject to judicial review. Likewise, the Executive cannot act with impunity when it issues an executive order; the executive’s order is subject to review by the Judiciary. Without any other branch checking the judiciary when it comes to deviation from precedent, the judiciary may effectively act with impunity.

Constitutional Support for Inherent Judicial Powers

 The question arises: What justifies our understanding of “the weight of authority”? Well, Constitutional support does exist for the judiciary to determine the weight of its own authority. Inherent in our constitutional structure lies the separation of powers principle. Each branch enjoys its autonomy and may create its own institutional norms and rules to articulate the proper exercise of its power, so long as those norms and rules do not conflict with the Constitution or, in the case of the Executive, a controlling statute.

The Constitution also, arguably, grants inherent powers to the Judiciary, such as the power of judicial review—i.e., the power to invalidate legislation, regulations, or executive orders (a power that enables the judiciary to determine the weight to attribute to legislative and executive authority). The U.S. Constitution is silent as to the power of judicial review, although Alexander Hamilton touched on the Judiciary’s “duty . . . to declare all acts contrary to the manifest tenor of the constitution void.”(Federalist 78).

The question whether the Judiciary actually does possess such inherent powers is similar to the question surrounding inherent powers in the Executive. Hamilton argued that, unlike the Legislature, the Executive possessed inherent powers. As evidence, he noted the difference between the vesting clauses of Articles I and II in the Constitution. Article I states: “All legislative Powers herein granted shall be vested in a Congress of the United States.” Article II, on the other hand, states: “The executive Power shall be vested in a President of the Untied States of America.” The Executive, unlike the Legislature, is not limited to the powers “herein granted.” So, Hamilton argued that the President enjoyed powers not delineated in Article II. See Alexander Hamilton, First Letter of Pacificus (June 29, 1793), repreinted in Williams H. Goldsmith, The Growth of Presidential Power: A Documented History 398, 401 (1974).

The U.S. Supreme Court weighed in on the debate over inherent Executive powers in Youngstown Sheet & Tube Co. v. Sawyer, 343 U.S. 579 (1952). President Harry Truman issued an executive order for the federal government to seize steel mills to keep them operational when the United Steelworkers Union threatened a nationwide strike. President Truman feared that the strike would stall steel production, thereby frustrating the Korean War effort and endangering national security. The Court held that President Truman acted in excess of the Executive’s constitutional power. Despite its conclusion, seven different opinions emerged, each with a different stance on the question whether the Executive enjoyed inherent presidential power. Even though each opinion expressed certain limitations, all but one acknowledged the existence of inherent executive power.

Although the Judiciary has articulated its own inherent powers, constitutional support does exist for such inherent powers in the judiciary, based on the separation of powers doctrine, and the Federalist Papers. It is also worth noting that Article III’s vesting clause mirrors Article II: “The judicial power of the United States shall be vested in one supreme Court. . . .” The Judiciary, in other words, is not limited like the Legislature to the powers “herein granted.”

What About Checks and Balances?

 Some constitutional support may exist to support inherent judicial power to determine the weight of its own authority, but the separation of powers doctrine rests not merely on the notion of the autonomy of the Legislature, Executive, and Judiciary, but also on the notion that each Branch can act as an external check against abuse of power by any other Branch. Moreover, the Framers envisioned internal controls or checks on each Branch to minimize the risk of power abuse. James Madison best expressed the necessity of internal and external controls: “If men were angels, no government would be necessary. If angels were to govern men, neither external nor internal controls on government would be necessary. In framing a government . . . you must first enable the government to control the governed; and in the next place oblige it to control itself.” (Federalist 51).

External Controls

External controls do exist to somewhat check abuses of power by the judiciary and minimize deviations from the principle of Stare Decisis. These controls indirectly address the problem. These external controls include the impeachment process, the prerogative of the Executive to enforce judicial decrees, the legislative power to diminish the structure of the judiciary, and the constitutional amendment process.

Impeachment

Article III provides that “judges, both of the supreme and inferior Courts, shall hold their offices during good behaviour. . . .” Most jurists refer to federal judiciary tenure as “life tenure,” but the tenure is explicitly “during good behaviour.” See also Federalist 78. Unlike Article II, which provides a removal process for the President, Vice President and officers of the Executive Branch, Article III does not expressly mention an impeachment process. Nevertheless, impeachment is the process used to remove judges. John Pickering was the first federal judge to be impeached, convicted, and removed from office. His removal was controversial, since the charge centered on alcohol abuse and alleged incapacitation, but the Jefferson administration saw Pickering’s removal as a test run for a bigger fish—Justice Samuel Chase. Chase earned Jefferson’s ire when, among other things, Chase openly criticized Jefferson and his party for repealing the Judiciary Act of 1801. The Senate did not convict Chase, and the whole impeachment has been historically viewed as an attempted political coup.  

Impeachment, or the threat of impeachment, may act as a check against deviations from the principle of Stare Decisis. But, one must wonder whether such deviations would constitute “bad behavior,” or a high crime or misdemeanor. As mentioned above, judges generally make an attempt to distinguish precedent, even if stretching the bounds of analogy and disanalogy. And, overuse of the impeachment process may work to undermine the legitimacy of the other branches; certainly, too many impeachments would undermine the judiciary’s legitimacy and diminish public confidence in the judicial system. So, impeachment may not be a very effective check against deviations from precedent.

In states with elected judicial officials, the external check here is popular elections. Of course, too much popular turnover in the judiciary does not bode well for the impartial branch of government.

Executive Non-Enforcement

 Hamilton famously stated that the Judiciary was the “least dangerous branch.” (Federalist 78). He argued that the Judiciary could not exercise any power to enforce its own orders. The Executive could, if it so desired, decide not to enforce a judicial opinion. Of course, there have been no real examples—other than the possibly apocryphal account of Andrew Jackson declaring, “Chief Justice Marshal has rendered his opinion; now let him enforce it,” in response to the Court’s ruling in Worcester v. Georgia—of executive non-enforcement. Moreover, failure to enforce judicial decrees would also work to undermine the Rule of Law, the legitimacy of the Executive and Judiciary, and, again, diminish the general population’s confidence in the judicial system. 

 Legislative Diminution of Judiciary

 Hamilton also supported his “least dangerous branch” claim by pointing to the fact that the legislature controlled the purse; whereas, the judiciary could not exercise influence over legislative expenditures. The legislature, in this vein, could severely defund the Judiciary to check abuses by it. Additionally, the Legislature, with Executive approval, could diminish the size of the judiciary by, for example, reducing the number of courts, judges, or justices. Of course, historically, threats to reduce or even increase the number of Justices on the Supreme Court have been issued as a means by which to advance the sitting Executive’s agenda. For example, President John Adams signed the Judiciary Act of 1801, which reduced the number of Justices from six to five, to minimize the opportunity for Thomas Jefferson (then President-elect) to appoint a Supreme Court Justice. And, President Franklin Delano Roosevelt threatened to pack the Court with twelve Justices in order to set his New Deal in motion without judicial interference. Still, the power of the legislature, with Executive approval, to control judicial funding and the makeup of the Judiciary is a slow path to checking immediate or even serial deviations from the principle of Stare Decisis.

 Constitutional Amendment

A constitutional Amendment would end the weight of authority problem altogether. If a supermajority decided, it could include a strict command in the Constitution for the judiciary to (1) adhere to the principle of Stare Decisis, (2) avoid deviation from precedent, unless a clear and obvious distinction in the facts and the law of the prior case exists and is articulated. A separate provision could also create an independent body to evaluate suspicious or questionable deviations from precedent, with a mandate for issuing reprimands to individual judges and instituting a process for removal for bad behavior, which might be defined to include repeat and arbitrary deviations from the principle of Stare Decisis. However, Constitutional Amendments are rare, and require a supermajority. The threat of a constitutional Amendment is not itself effective in acting as a check against deviations from the principle of Stare Decisis.

On the whole, external controls are in place to check potential abuses of power by the Judiciary. These controls may not be the most robust to check deviations from the principle of Stare Decisis, but they do exist and are available.

Internal Controls

Internal controls also exist to minimize the risk of arbitrary and serial deviations from the principle of Stare Decisis. As with the external controls, these internal controls address the problem indirectly. These internal controls include the hierarchical structure of courts, the intellectual rigor required to preform as a judge, and institutional loyalty.

Hierarchical Structure of Courts

The hierarchical structure of courts acts as an internal control against arbitrary deviations from Stare Decisis. If a trial court decides not to follow precedent, an intermediate court of appeals will have an opportunity to review the trial courts decision, including its reasoning—this assumes that the parties consider an appeal worthwhile in terms of cost, time, and effort. Should an intermediate appellate court deviate from precedent, the Supreme Court (or other highest court in the jurisdiction) will have an opportunity to consider whether the issue deserves attention. This whole process provides a feedback mechanism that allows the Judiciary to check itself. And, since judicial opinions rest for support on reason and rationale, and considering that judicial opinions are often published for public view, some transparency over the process exists, which encourages judges to adhere to precedent.

Intellectual Rigor and Qualification

The nomination process might act as an external check against judicial abuse of power, if we assume that the nomination process involves consideration of each judicial nominee’s intellectual acumen and dedication to the legitimacy of the judiciary. Alexander Hamilton appeared to believe that the very nature of the job in the judiciary ensured that only intellectually qualified persons would serve. He wrote:

It has been frequently remarked, with great propriety, that a voluminous code of laws is one of the inconveniences necessarily connected with the advantages of a free government. To avoid an arbitrary discretion in the courts, it is indispensible that they should be bound down by strict rules and precedents, which serve to define and point out their duty in every particular case that comes before them; and it will readily be conceived from the variety of controversies which grow out of the folly and wickedness of mankind, that the records of those precedents must unavoidably swell to a very considerable bulk, and must demand long and laborious study to acquire a competent a competent knowledge of them. Hence it is, that there can be but few men in the society, who will have sufficient skill in the laws to qualify them for the stations of judges. And making the proper deductions for the ordinary depravity of human nature, the number must be still smaller of those who unite the requisite integrity with the requisite knowledge.

(Federalist 78).

Hamilton did not overstate the importance of rigorous study to the practice of law, with its reliance on voluminous cases. The very nature of the job, in short, may act as an effective check against arbitrary deviations from precedent.

Institutional Loyalty

Among the internal controls identified by James Madison, institutional loyalty is one less often emphasized but that should not be understated. Madison wrote:

But the great security against a gradual concentration of the several powers in the same department, consist in giving to those who administer each department, the necessary constitutional means, and personal motives, to resist encroachments of the others. The provision for defense must in this, as in all other cases, be made commensurate to the danger of the attack. Ambition must be made to counteract ambition. The interests of the [person], must be connected with the constitutional rights of the place.

(Federalist 51). When a judge’s personal motives align with the interest of his or her home institution (the Judiciary), Madison urged that the official (judge) would act so as to advance the best interest of the institution (the Judiciary). See also David Fontana and Aziz Z. Huq, Institutional Loyalties in Constitutional Law, 85 U. Chi. L. Rev. 1, 12-13 (2018).

Judges concerned with their own, personal legacies, reputations, or livelihoods generally, possess a strong motivation to see to the legitimacy of the Judiciary, their home institution. So long as institutional loyalty is present, arbitrary deviations from precedent may be minimized.

Conclusion

Although judges may at times deviate from the principle of Stare Decisis, giving rise to the problem that the Judiciary chooses the weight of its own authority, the problem, though not fully resolved, is mitigated by constitutional checks in place. 

Daniel Correa