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James Creedon
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Managing Attorney James Creedon has again been selected for the Texas Rising Stars list under the category of intellectual property litigation. Each year, no more than 2.5 percent of the lawyers in Texas are selected by the research team at Super Lawyers to receive this honor.

Super Lawyers, a Thomson Reuters business, is a rating service of outstanding lawyers from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement. The annual selections are made using a patented multiphase process that includes a statewide survey of lawyers, an independent research evaluation of candidates and peer reviews by practice area. The result is a credible, comprehensive and diverse listing of exceptional attorneys.

James Creedon

In my last blog, we posited from In re Kimberly-Clark Corp. that Discovery is the legal process in a lawsuit by which facts, documents, and other forms of information that relate to the litigation are disclosed. We found, however, that this definition alone did not fully capture the court’s description. The court described the nature of Discovery not merely in terms of process, but also purpose.  

            What is the purpose of Discovery?

The purpose of discovery may first be gleaned by the stated objective of the Texas Rules of Civil Procedure: “The proper objective of rules of civil procedure is to obtain a just, fair, equitable, and impartial adjudication of rights of litigants under established principles of substantive law.” Tex. R. Civ. P. 1. We may glean from TRCP 1 that the objective of Discovery must be in line with the proper objective of rules of civil procedure generally. That is, Discovery cannot have as its purpose anything short of the general objective of civil procedure rules. But we cannot conclude, yet, that the purpose of discovery is exactly the same as the proper objective of civil procedure rules.

Texas Courts articulate the purposes of Discovery in line with but not exactly as the stated objective of civil procedure rules.

1.    “The ultimate purpose of discovery is to seek the truth, so that disputes may be decided by what the facts reveal, not by what facts are concealed.” In re Colonial Pipeline Co., 968 S.W.2d 938, 941 (Tex. 1998) (emphasis added).

2.    “Discovery should be used to augment and facilitate the trial process by narrowing as much as possible the actual issues in dispute.” In re Kimberly-Clark Corp., 228 S.W.3d 480, 490 (Tex. App.—Dallas, 2007 orig. proceeding) (emphasis added).

3.    “The purpose of the discovery rules is to encourage full discovery of the issues and facts before trial so that parties can make realistic assessments of their respective positions in order to facilitate settlements. . . .” Lopez v. La. Madeleine of Texas, Inc., 200 S.W.3d 854, 861 (Tex. App.—Dallas 2006, no pet.) (emphasis added) (citing Gee v. Liberty Mut. Fire Ins. Co., 765 S.W.2d 394, 396 (Tex. 1989)).

4.    “The rules of discovery were changed to prevent trials by ambush and to ensure that fairness would prevail.” Gutierrez v. Dallas Independent School Dist., 729 S.W.2d 691, 693 (Tex. 1987) (emphasis added).

Notably, if discovery’s primary purpose is to seek the truth, then the stated objective of civil procedure rules would mostly be met; that is, if discovery is a process by which litigants seek the truth, then discovery would facilitate a just and impartial resolution of rights of litigants.

However, there are countervailing civil procedure rules that thwart the truth-seeking function of discovery, like certain privileges, and rules limiting the scope of discovery. Though we value the search for truth, we also value protecting other rights and privileges in the process. We also value reducing the cost of civil processes so as not to unduly burden litigants, that is, to ensure cases are decided on their merits and not on the mere inability of a party to pay to defend itself; an unrestrained search for the truth through civil processes could prove unfair or inequitable. So, courts articulate the purpose of discovery not merely in terms of the search for truth, but also in terms of ensuring fairness.

The other stated purposes of discovery are really not purposes of discovery, but consequences of the stated purposes of discovery. As a truth-seeking process, discovery is the process through which all relevant facts come to light. If all relevant facts come to light, then the issues in dispute will narrow, and the parties will be able to make realistic assessments of their positions. Further, if discovery’s purpose is to ensure fairness in the search for truth, then as a consequence it would avoid trials by ambush.

Having uncovered the process-oriented nature of Discovery and unpacked its normative grounds, we may posit a legal definition of “Discovery”: Discovery is the legal process in a lawsuit by which facts, documents, and other forms of information that relate to the litigation are disclosed, the process of which aims to ensure fairness in the search for truth.

If we accept or agree that this legal definition accurately, albeit generally, describes the nature or essence of Discovery, then we can efficiently and effectively examine and describe, in a non-question-begging manner, the practice of Discovery in Texas.

James Creedon
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One of the most stressful events for a business owner is receiving a demand letter from a lawyer. Often times, these letters contain strong language full of accusations about wrongdoing, combined with a specific statement of what the lawyer expects and when. In Texas, for example, a letter may refer to the Deceptive Trade Practices Act or to Chapter 38 attorney's fees — things most business owners thankfully are not familiar with — and may even state a specific dollar amount required to settle a dispute.

For any business receiving this kind of letter, there are clear steps to take from the first moment:

  1. Don't Panic. Many of these letters contain a laundry list of wrongdoing and include accusations of breach of contract, fraud, individual responsibility by the business owners, and even threats to shut down operations. Recognize that these allegations may be over-the-top and may not have any factual support whatsoever. Take a breath, understand that the actual conflict may be much less serious, and make a firm decision to approach the issue calmly and responsibly.
  2. Contact an Attorney. Many business owners are tempted to call the author of the letter, or to call the business or individual which hired the lawyer. Don't do this. Your first call should be to your counsel of choice, who will request a copy of the letter and any other materials you may have received. By making contact directly with the other side, you may inadvertently say or do something which could hurt your position down the road. Calling your own counsel doesn't mean you have to get involved in a knockdown litigation, or that you will have to spend thousands to even figure out where things stand. It is simply making a calculated business decision to ask an experienced professional about your risks and options.
  3. Take a Snapshot. Rather than rush to make changes to any operations or practices, wait until you receive specific guidance from your counsel of choice. As you go through that process, be certain to maintain a snapshot of where things were when you received the letter. Does it pertain to your website? Create a backup archive of the site as it stands. Is it related to a contract? Be certain to retain all documents related to that contract, including negotiation emails, notes, drafts, and final signed versions. Is it an accusation of monies owed? Save copies of bank statements, transactional records, cancelled checks, and any associated records. In short, you want to be able to look back later and understand exactly where everything stood when you received the letter and before you took any further steps or made any changes to your business.
  4. Notify Key People. There is no need to tell the world about the letter you received, but you may want to rope in those who will be directly involved. After contacting your attorney, consider speaking with your chief of operations, your internal financial officer, or any other individuals necessary to take the snapshot discussed above. You may be required to notify your insurance provider, but hold off on doing so until you speak with your attorney. Don't forget your spouse! Legal matters can be a source of significant stress which can affect your family — don't keep it to yourself.
  5. Don't Panic. Did we say this already? You can address this issue in a calculated, responsible way, which will allow you greater freedom in choosing options to resolve a dispute. Call your attorney, leave your cellphone number if they need to call you back, and go for a walk. Grab a coffee. Hit the gym (with your phone nearby). Let the initial wave of surprise pass, and then work with counsel to develop a plan.

Any unexpected letter from an attorney can disrupt your business, but following these basic steps can reduce stress and help you determine the best path forward.

To learn more please visit the Litigation page at Creedon PLLC.

James Creedon

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In a booming economy like North Texas, a company's brand, or identity in the marketplace, is often its most valuable asset. The brand is the touchstone the company builds itself around — a symbol of quality, a mark with a reputation for excellent service, and an important means of building goodwill and long-term loyalty. Founders spend countless hours brainstorming names or logos, and once a brand is settled on they often pour even more hours (and dollars) into securing all the necessities of a modern company: a business entity, a domain name, social media accounts, business cards, marketing materials, and perhaps the occasional fun item (branded socks, anyone?).

With all of this time, effort and money invested, founders often forget an important step: brand clearance. Brand clearance is nothing more than a focused, thorough, and directed search to confirm that a particular brand name or logo is worth the investment. Without it, many companies have found themselves a year into formation and having to change their brand — losing market recognition and momentum in the process.

Basic steps in brand clearance include the following:

  • Is the entity name available in the state you intend to form the company? Often a check on the Secretary of State website is sufficient, but beware that each state has its own rules on how unique a name must be, which words must or mustn't be in the name, and which entities are required for particular services.
  • Is the trademark available for registration? Federal trademark registration provides a number of significant benefits, including the ability to prevent others across the United States from using the mark for similar goods or services. A proper brand clearance looks at the federal trademark database as well as the individual databases of all states and territories. For some brands, an international search is also critical - think of video game developers in the United States who often seek game distribution in Southeast Asia. Understanding trademark availability can help a company secure a valuable asset in their growth, and can also provide a shield from early accusations of copying or infringement.
  • Is the domain name available? Consider not just identical domains, but similar ones as well. Consider also alternative top-level domains (TLDs) such as .co, .tech, and .tv. Look also for slight misspellings - will these deprive you of valuable traffic to your future site?
  • Are the social media accounts taken? Often a new brand is willing to make slight changes to its social media handle to get a descriptive word or phrase, but brand clearance is a means of thinking ahead. Who has a handle which is similar, and what will happen when potential or current customers accidentally arrive at that account?
  • Does your visual brand, such as a logo, create a risk of trademark or copyright infringement? An early tool for this is an image reverse search, which allows you to provide your logo or image and find other images on the internet which are visually similar.

Proper brand clearance can involve many other steps, including an internal review to be certain that intellectual property such as a logo actually belongs to the company and not to individual owners, employees or third-parties. But that, my friends, is for another blog post.

To learn more about brand clearance, please visit the Trademark or Transactional pages at Creedon PLLC.

James Creedon
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A company's brand, or identity in the marketplace, is often its most valuable asset. The brand is the touchstone the company builds itself around — a symbol of quality, a mark with a reputation for excellent service, and an important means of building goodwill and long-term loyalty. Founders spend countless hours brainstorming names or logos, and once a brand is settled on they often pour even more hours (and dollars) into securing all the necessities of a modern company: a business entity, a domain name, social media accounts, business cards, marketing materials, and perhaps the occasional fun item (branded socks, anyone?).

With all of this time, effort and money invested, founders often forget an important step: brand clearance. Brand clearance is nothing more than a focused, thorough, and directed search to confirm that a particular brand name or logo is worth the investment. Without it, many companies have found themselves a year into formation and having to change their brand — losing market recognition and momentum in the process.

Basic steps in brand clearance include the following:

  • Is the entity name available in the state you intend to form the company? Often a check on the Secretary of State website is sufficient, but beware that each state has its own rules on how unique a name must be, which words must or mustn't be in the name, and which entities are required for particular services.
  • Is the trademark available for registration? Federal trademark registration provides a number of significant benefits, including the ability to prevent others across the United States from using the mark for similar goods or services. A proper brand clearance looks at the federal trademark database as well as the individual databases of all states and territories. For some brands, an international search is also critical - think of video game developers in the United States who often seek game distribution in Southeast Asia. Understanding trademark availability can help a company secure a valuable asset in their growth, and can also provide a shield from early accusations of copying or infringement.
  • Is the domain name available? Consider not just identical domains, but similar ones as well. Consider also alternative top-level domains (TLDs) such as .co, .tech, and .tv. Look also for slight misspellings - will these deprive you of valuable traffic to your future site?
  • Are the social media accounts taken? Often a new brand is willing to make slight changes to its social media handle to get a descriptive word or phrase, but brand clearance is a means of thinking ahead. Who has a handle which is similar, and what will happen when potential or current customers accidentally arrive at that account?
  • Does your visual brand, such as a logo, create a risk of trademark or copyright infringement? An early tool for this is an image reverse search, which allows you to provide your logo or image and find other images on the internet which are visually similar.

Proper brand clearance can involve many other steps, including an internal review to be certain that intellectual property such as a logo actually belongs to the company and not to individual owners, employees or third-parties. But that, my friends, is for another blog post.

To learn more about brand clearance, please visit the Trademark or Transactional pages at Creedon PLLC.

James Creedon
Photo by Samuel Zeller  on Unsplash

Photo by Samuel Zeller on Unsplash

“Philosopher: We have hitherto spoken of laws without considering anything of the nature and essence of a law; and now unless we define the word law, we can go no farther without ambiguity, and fallacy, which will be but loss of time; whereas, on the contrary, the Agreement upon our words will enlighten all we have to say hereafter.

Lawyer: I do not remember the definition of law in any Statute.”
— Thomas Hobbes

Claims about the essence or nature of certain concepts inevitably threaten to bog one down in what seems like a mere verbal dispute. What is the essence or nature of law? What is the essence or nature of justice? On the surface, these questions do not appear to reduce to a right or wrong answer, making the questions appear trivial or non-substantive—law or justice by any other name would function just the same.

Conceptual questions tell us much about social practices. When John Austin posited that law is a command by a sovereign backed by a sanction, he understood this definition to be a description of a social practice. Likewise, when Saint Thomas Aquinas and, in a more elusive manner, Lon Fuller posited that whatever law is it must satisfy certain moral principles, they were describing what they considered socially acceptable practices. Even with Hobbes’ quote above, the Lawyer’s response to the Philosopher implies a social practice of lawmaking that reduces to statutes.

There is a risk, however, in confusing the practice with the concept for all purposes. That is, social practices tend to change, sometimes gradually, sometimes swiftly. If a certain practice changes, does the concept remain the same? What, in other words, is the fixed structure of the concept such that it can inform our understanding of social practices, and not only the other way around? If we can ascertain or agree to a fixed structure of the concept itself, then the concept will aid our understanding of contingent social practices (as the Philosopher argues in the Hobbes’ quote above).

Analytical debates abound in trying to articulate the essence or nature of “Law,” “Justice,” and even “Democracy” and “Rule of Law”—the latter two of which appear to raise an issue of disambiguating the concepts. We take these concepts seriously because the stakes may be high if we get them wrong, and we wish to get the concept right to instantiate the best possible example of these concepts through our social practices.  

I submit that getting “Discovery” conceptually right is equally important. Fortunately, unlike law or justice, discovery for our purposes does not have a life independent of litigation. Thus, our inquiry will be less esoteric than inquiries into the nature of law or justice. 

What is “Discovery”?

I’m not going on a limb to suggest that most practitioners do not consider what the essence or nature of “Discovery” is. Like the Texas Rules of Civil Procedure, most, if not all, practitioners view and describe discovery through the lens of its practice. The Texas Rules of Civil Procedure set forth a definition of “Written Discovery”: “Written Discovery means requests for disclosure, requests for production and inspection of documents and tangible things, requests for entry onto property, interrogatories, and requests for admission.” Tex. R. Civ. P. 192.7. Notably, this definition summarizes the “Forms of Discovery.” See Tex. R. Civ. P. 192.1. Surely, Discovery must have meaning independent of its tools.

It is tempting to point to the “Scope of Discovery” as revealing Discovery’s conceptual essence or nature, but the scope of discovery tells us only how far practitioners may wield discovery tools, i.e., the “Forms of Discovery.” See Tex. R. Civ. P. 192.3. Undoubtedly, the proper use and reach of discovery tools reveals something of Discovery’s essence or nature, but Discovery must have some meaning independent of how far its tools may reach.

Black’s Law Dictionary provides a few useful definitions for “Discovery”:

  1. The act or process of finding or learning something that was previously unknown.
  2. Compulsory disclosure, at a party’s request, of information that relates to the litigation.
  3. The facts or documents disclosed.
  4. The pretrial phase of a lawsuit during which depositions, interrogatories, and other forms of discovery are conducted.

Black’s Law Dictionary 498 (8th ed. 2004). The first definition in this list goes to the general understanding, both lay and legal, of Discovery. The next three definitions pertain to the legal understanding of Discovery, and each such definition speaks to a process of compulsion and revelation.

At least one court in Texas has articulated its understanding of the nature of Discovery: “The nature and purpose of the discovery process is the administration of justice by allowing the parties to obtain the fullest knowledge of the issues and facts prior to trial.” In re Kimberly-Clark Corp., 228 S.W.3d 480, 490 (Tex. App.—Dallas 2007, orig. proceeding) (emphasis added). The court describes Discovery as a process-oriented legal concept. Looking back to the last three definitions of Discovery in Black’s Law Dictionary, you will see that the court’s definition tracks the understanding of Discovery in terms of compulsion and revelation. The administration of justice, after all, means “the state’s application of the sanction of force to the rule of right.” See Black’s Law Dictionary 47 (8th ed. 2004).

We can posit from In re Kimberly-Clark Corp., and from the "Forms of Discovery" and the "Scope of Discovery," that Discovery is the legal process in a lawsuit by which facts, documents, and other forms of information that relate to the litigation are disclosed. This definition may strike some as obvious; less obvious, perhaps, is the value of not only fully articulating such a definition, but also in employing analytical reason to uncover Discovery's meaning. We are one step closer to understanding the nature or essence of discovery, which will dramatically aid and improve our discovery practice. 

But, this definition alone does not fully capture the In re Kimberly-Clark Corp.  court’s description. The court described the nature of Discovery not merely in terms of process, but also purpose. Indeed, the “administration of justice,” with its focus on “rule of right,” contains a normative component that we must unpack to fully understand the nature of Discovery.

Normative inquiries demand exacting attention to detail. To make the best attempt at getting the conclusion right, or just reaching the best conclusion possible, the discussion pertaining to Discovery’s normative grounds must be the subject of another blog. 

James Creedon
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I recently had the privilege of representing City Council Member Ryan Harte in his battle against the Lone Star City Council and the City of Lone Star, Texas, to retain his seat as an elected councilmember. The City Council had declared Mr. Harte automatically disqualified from holding the position of Alderman pursuant to a newly enacted local government code provision, which provided that a member of a local governing body “is automatically disqualified from holding the member’s office and the office is considered vacant” if the member changes his or her place of residence outside of the municipality.  Tex. Loc. Gov’t Code § 22.008(b).

At the heart of the controversy lay questions concerning process due under the newly enacted local government code provision and the effect of this new provision on democratic processes. These questions remain open. Harte’s matter was resolved by an agreed judgment permanently enjoining the City of Lone Star, Texas, from enforcing the City Council’s declaration that he was automatically disqualified from holding his office. A close look at Local Government Code § 22.008(b) in the context of Harte’s case reveals uncertainty regarding future application of the automatic disqualification provision as it pertains to office holders' due process rights and preservation of representative government. 

“Harte Removed From Council Due To Residency Issues”

On September 21, 2017, the Lone Star City Council voted Ryan Harte off the City Council, asserting as its ground Local Government Code Section 22.008(b). The Mayor met with Harte the week prior to the vote to inform Harte that he was automatically disqualified from serving as a city councilmember because, according to the Mayor, Harte did not own property in the county.

During the September 21 hearing concerning Harte’s residency, the Mayor provided the following testimony:

I wanted to add something to what Ryan said, a little clarification.  When I became aware that this law, this ruling, had become law, I looked at public records and trying to determine where one lives or resides…property ownership is but one aspect.  Your place of residence is where you lay your head, where your furniture is, where your clothing is, where your wife and child or husband reside.  That’s part of the equation.  Via public record, Mr. Harte owns no property in Lone Star, that’s true, via public record.  Mike and Ryan Harte purchased property in [*****], Texas October 16, 2016.  Ryan then had the property transferred to his name on June 7, 2017. . .  That’s what some of the conclusions were based on.  I’m advised that that’s where his vehicles are.  That’s where he returns to when he comes home from work. That’s where his utilities are.

Some members of the public had an opportunity to weigh in on the disqualification hearing. Kenny Simpson, a local citizen and voter, testified as follows:

My name is Kenny Simpson.  Mayor and city council, I’d like you to know.  I don’t think we get a great turnout in elections around here but, I can say this much…I’m not going to speak and address the Local Government Code.  I don’t have as much intelligence as this gentleman must have on what the laws are pertaining to the government code.  But I do know that Ryan Harte came to me; expressed his willingness to serve on the city council; explained to me his goals and opinions on what he was going to do on the council.  I took the time to come up here and vote. My wife took the time to come up here and vote and we would hate to see that vote totally wasted. Uh, I’m just asking you to consider that aspect of why he’s here. He’s here to represent us.

Remaining City Council members asked Harte questions pertaining to his residency during the disqualification hearing. At all times, Harte maintained that he resided in Lone Star, Texas. At the end of the hearing, the remaining City Council members declared Harte automatically disqualified from holding the position of Alderman due to residence requirements, and that his seat was vacated. A few days later, the Daingerfield Bee published an article, with a headline that read, “Harte removed from council due to residency issues.”

Harte v. City of Lone Star, Texas, et al.

Harte filed suit in Morris County, Texas, and sought a declaration that the city officials exceeded the scope of their lawful authority and a permanent injunction, enjoining the City and individual officials from enforcing the City Council’s declaration. Harte took the position that Local Government Code Section 22.008(b) could not be applied retroactively. Section 22.008(b) became effective on September 1, 2017. The residency issues of which the remaining City Council members complained arose sometime around April of 2017. The automatic disqualification provision, according to Harte, could only apply prospectively to persons who move their place of residency after September 1, 2017. Harte also complained that Section 22.008(b) could not be applied to an official elected before the code’s effective date because such an application would unconstitutionally divest him of his right and duty to represent his constituents and his constituents’ rights to be represented in the city council by a representative of their choosing.

Additionally, Harte took the position that the City Council’s action violated his due process rights. The City alleged that Section 22.008(b) was self-executing, in that Harte was automatically disqualified the moment he designated a homestead outside of the City of Lone Star, Texas (it is not clear how this could be possible since the homestead designation took place before the effective date of Section 22.008(b)). According to the City, the September 21, 2017 council meeting was not even necessary to declare Harte automatically disqualified. Harte maintained that the statute was not self-executing and that he was entitled to a full adversarial proceeding in a court.

Harte also maintained that the September 21, 2017 city council meeting was not an impartial adjudication of his right to retain his seat. The Mayor presiding over the meeting, acting as judge, also provided testimony against Harte in the proceeding. Harte complained that the hearing violated his due process rights by creating a constitutionally intolerable appearance of partiality.

The trial court granted Harte a temporary injunction against the City, allowing him to continue serving his constituents and the City of Lone Star during pendency of the suit. The court also denied the City’s plea to the jurisdiction. After the City filed a notice of appeal on the court’s plea to the jurisdiction denial, the parties entered into an agreed judgment, permanently enjoining the City and its officials from enforcing the September 21, 2017 declaration against Ryan Harte.

Future Applications of Section 22.008(b)—Preserving Due Process Rights and Representative Government

Section 22.008(b) undoubtedly serves to preserve representative government. The provision ensures that local elected officials live under the same laws as their constituents; that is, that local officials share in the burdens and benefits they grant or impose on everyone living within the municipality. Sharing in the same burdens and benefits guarantees a confluence of interests and goals between citizen and representative.

But Section 22.008(b) lacks an enforcement provision, the lack of which threatens to undermine representative government. Harte’s case provides a prime example. At his temporary injunction hearing, Harte testified that he more often than not acted as a contrarian or dissenting voice in the City Council. Harte believed that his vocal dissent motivated the Mayor and other City Council members to find a way to get rid of him. Taking his testimony as true, if the City Council rather than a court could enforce Section 22.008(b), then elected officials could use the provision as a means to oust political rivals or enemies, depriving constituents of a dissenting voice or “voice of reason.”

This threat manifested itself in Harte’s case. The City relied heavily, if not solely, on Harte’s homestead designation as dispositive on the residency issue. However, Texas Courts have consistently held that a homestead designation is not conclusive on the question of one’s intended residency. See e.g., In re Peacock, 421 S.W.3d 913, 918 (Tex. App.—Tyler 2014, no pet.); McDuffee v. Miller, 327 S.W.3d 808, 821-22 (Tex. App.—Beaumont 2010, no pet.) (holding a designated homestead outside of the relevant district is not conclusive); see also State v. Wilson, 490 S.W.3d 610, 621-22 (Tex. App.—Houston 2016, (holding legally insufficient tax records relied on by the State to prove the defendant’s residency). The Texas Supreme Court has held, in fact, that “residence” is an elastic term that is “extremely difficult to define.” See Mills v. Bartlett, 377 S.W.2d 636, 637 (Tex. 1964).

The risk of political reprisal is great when considering a local city council could latch onto a single criteria as the baseline to determine residency, placing the cost of a full adversarial hearing solely on the ousted official, who would have to seek vindication in a court proceeding, in which he or she would also carry the burden of proof. Since many local government positions are unpaid, like Alderpersons, local officials may feel emboldened to oust political enemies on very little residency evidence or information, knowing that the ousted official has minimal to zero financial incentive to incur the cost of challenging the ouster. 

So, what process is due under Section 22.008(b)? This question is up for grabs moving forward. A full adversarial hearing seems necessary. Section 22.008(b) should at most fall under the enforcement provision of Texas Civil Practice & Remedies Code § 66.01-002, the quo warranto action provision, but must at least require a judicial proceeding.  A local government entity should initiate a judicial action pursuant to these provisions to ensure the full breadth of procedural rights to the targeted official and to promote the purpose of Section 22.008(b)—to preserve representative government.

James Creedon

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Legal practitioners in Texas continue to watch the scope of the Texas Citizens Participation Act extend beyond what they could have imagined. Texas enacted Anti-SLAPP legislation to curb litigants’ efforts to employ the judicial system as a means to silence or chill another’s First Amendment rights. The Texas Citizens Participation Act (TCPA) provides pretrial procedural checks against litigation designed to chill a party’s right to free speech, association, or right to petition government. See Tex. Civ. Prac. & Rem. Code §§ 27.001-011. The Act allows a party to file a motion to dismiss the case, with an award of attorney fees and costs to the party if successful on the motion. 

Courts construing Chapter 27 have applied its reach to both public and private communications, and beyond the obvious defamation claim to breach of contract, breach of fiduciary duty, negligence, gross negligence, malicious prosecution, false imprisonment, and other claims. See e.g., ExxonMobil Pipeline Co. v. Coleman, 512 S.W.3d 895 (Tex. 2017); Murphy USA, Inc. v. Rose, 2016 WL 5800263 (Tex. App.—Tyler Oct. 5, 2016, no pet.); Kinney v. BCG Attorney Search, Inc., 2014 WL 1432012 (Tex. App.—Austin Apr. 11, 2014, pet. denied). Definitional constraints within Chapter 27 yield to the command that “[t]his chapter shall be construed liberally to effectuate its purpose and intent fully.” Tex. Civ. Prac. & Rem. Code § 27.011(b).

One provision within Chapter 27 remains largely untapped, and will undoubtedly further broaden Chapter 27’s reach. The Act applies to a “legal action” that is based on, relates to, or is in response to a party’s exercise of one of the enumerated First Amendment Rights. The Act defines “legal action” as “a lawsuit, cause of action, petition, complaint, cross-claim, or counterclaim or any other judicial pleading or filing that requests legal or equitable relief.” Tex. Civ. Prac. & Rem. Code § 27.001(6).  

So the question is raised: what other judicial pleadings or filings, other than a petition, cross-claim, or counter-claim, fall within Chapter 27’s reach? The answer is in the definition: any filing or pleading that seeks legal or equitable relief and that is based on, relates to, or is in response to the party’s exercise of one of the enumerated First Amendment rights. Taking this definition seriously and without reservation could potentially wreak havoc in any specific case.

Consider the different types of filings in which legal or equitable relief may be sought:

  • Does Chapter 27 apply to a motion for sanctions under Texas Rule of Civil Procedure 13 or Chapter 10 of the Texas Civil Practice & Remedies Code? Maybe. After all, a Rule 13 and Chapter 10 motion for sanctions must relate to or be in response to something filed by the other party in the judicial proceeding, which implicates the initial filing party’s right to petition government. See Tex. Civ. Prac. & Rem. Code § 27.001(4)(A)(i) ("'Exercise of the right to petition' means any of the following: a communication in or pertaining to a judicial proceeding.”). If the party filing for sanctions seeks an award of attorney fees, that would be a request for legal or equitable relief, bringing the motion for sanctions within Chapter 27’s reach.
  • Does Chapter 27 apply to a motion to dismiss under Texas Rule of Civil Procedure 91a? Maybe. A Rule 91a Motion to Dismiss is a judicial filing. The 91a Motion to Dismiss must be in response to the opposing party’s cause(s) of action alleged in a pleading or complaint. 91a mandatorily awards attorney fees to the prevailing party. And, filing a pleading or complaint clearly falls within the filing party’s right to petition government. (Note* Since 91a awards attorney fees to the prevailing party, an Anti-SLAPP motion to dismiss may not provide enough leverage to employ in response to a 91a motion, unless the party opposing the 91a motion wishes to have the option for an automatic interlocutory appeal.).
  • Does Chapter 27 apply to a motion for summary judgment. No. A summary judgment hearing is considered a trial. So, even though a summary judgment is a judicial filing, and even if the motion for summary judgment explicitly seeks legal or equitable relief, Chapter 27 does not reach trials. Summary judgment motions themselves act as trial briefing with attendant trial evidence. The motions are necessary predicates to the summary trial.

Chapter 27 by its plain language appears to reach most court filings seeking some form of legal or equitable relief, since in most, if not all, instances a filing seeking legal or equitable relief within the judicial proceeding will be based on, relate to, or be in response to the other party’s exercise of his, her, or its right to petition. Testing the metes and bounds of what constitutes a "legal action" for purposes of Chapter 27 is necessary to ensure that Anti-SLAPP motions do not take over judicial proceedings. The first place one might start to test the metes and bounds of the "legal action" definition would be a Chapter 27 motion to dismiss itself.  

Wouldn’t an Anti-SLAPP Motion to Dismiss itself constitute a judicial filing that seeks legal or equitable relief (an award of attorney fees) and that is in response to the non-movant’s exercise of his, her, or its right to petition government? Asked another way, could a party permissibly file, under Chapter 27, a motion to dismiss the other party’s Anti-SLAPP Motion to Dismiss?

Or do we go too far in asking the latter question? After all, Chapter 27 creates its own safeguard against motions to dismiss which are “frivolous or solely intended to delay” by allowing the court to award attorney fees and court costs to the responding party. See Tex. Civ. Prac. & Rem. Code § 27.009(b). One might argue that the inclusion of this safeguard indicates that the legislature did not intend for Chapter 27 to reach a motion filed under the same Chapter.

But nothing in Chapter 27 exempts Chapter 27 motions from the chapter’s reach. And, the stated purpose of the Texas Citizens Participation Act “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. Notice that the statute does not seek to safeguard only “Plaintiff’s rights” or only “Defendant’s rights” or only “Movant’s rights” or "Responding Party’s rights,” but seeks to safeguard the rights of persons, regardless of what side of the “v.” he, she, or it lands on, and regardless of whether he, she, or it is the movant or respondent.

On the other hand, if a responding party as a defensive measure could use Chapter 27, the counter-Anti-SLAPP motion to dismiss would, arguably, effectively alter the burden of proof. A party filing a motion to dismiss under Chapter 27 bears the burden to prove by a preponderance of the evidence that the “legal action” is based on, relates to, or is in response to the party’s exercise of one of the enumerated First Amendment rights.  Tex. Civ. Prac. & Rem. Code § 27.005(b). If this burden is met, then the responding party must establish “by clear and specific evidence a prima facie case for each essential element of the claim in question.” Tex. Civ. Prac. & Rem. Code § 27.005(c). The court must deny the movant's motion to dismiss if the respondent provides such clear and specific evidence. 

Consider, though, that by successfully providing clear and specific evidence to show a prima facie case of the claim, the respondant might argue that the movant could not supply clear and specific evidence showing a prima facie case for the relief sought in the initial motion to dismiss. And, if the respondent filed a counter-anti-SLAPP motion, the respondant might also argue that it was Plaintiff's burden to provide clear and specific evidence of a prima facie case for the relief sought in the initial motion to dismiss, so long as the respondant demonstrates by a preponderance of the evidence that the initial motion to dismiss was based on, related to, or was in response to the respondent's exercise of the right to petition government.

Notice, however, that a counter-anti-SLAPP motion would essentially alter the burden of proof in Chapter 27. The initial movant need only demonstrate by a preponderance of the evidence that the legal action filed by the respondant is based on, related to, or is in response to the movant's exercise of one of the enumerated First Amendment rights. The movant does not bear the burden to demonstrate by clear and specific evidence that he, she, or it is entitled to the relief sought in the motion to dismiss--as an aside, Chapter 27 does place a clear and specific evidence burned of proof on a movant when the movant intends to rely on an affirmative defense to the underlying claims. 

What courts will do with the “legal action” language remains to be seen. Practitioners should consider tapping into this largely untapped area. Whenever an opposing party files a document with the court in which legal or equitable relief is sought against your client, consider employing Chapter 27.

James Creedon
HAIL KITTY

HAIL KITTY

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It is official: the first trademark application of 2018 is serial number 87739622 for "the image of a cat's face and shoulders with the word 'HAIL' in uppercase lettering at the bottom of the mark" claiming "animal advocacy, t shirts, stickers, entertainment services." Let's unpack this one a bit, and see if we can figure out what lessons this application may teach us for use in the coming year.

Beginning with a bit of background, this application was filed by an individual in Seattle, Washington, and there is no attorney of record listed. Although the mark is listed for individual ownership, the applicant is also the registered agent for Hail Kitty, LLC in Washington. The company filings also provide for alternate names of Hail the Kitty, LLC, or Hail the Meiji Kitty, LLC. And who is the Governor (manager or managing-member) of the LLC? Meiji Kitty herself — the very kitty shown in the mark. Meiji Kitty is no slouch, providing online reviews while also running her LLC. She is not, however, a trademark attorney (from what we can tell), and so perhaps did not identify some of the issues in this filing.

First, this application is a 1(a) application, meaning the applicant declares that the mark has been used in commerce prior to filing. With a claimed first use date of October 20, 2012, the applicant puts a stake in the ground and asserts that this particular image has been used to designate the source of the claimed goods or services since that date. While this may be true, a priority date from over five years ago can open up the mark to later challenge. For example, if a challenger to the mark could demonstrate that this particular image hadn't been consistently used to identify the source of the claimed goods or services during the intervening years, there could be a basis to allege fraud on the United States Patent & Trademark Office (USPTO). Given that the applicant signs a declaration acknowledging that "willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001,” and that § 1001 specifically provides for imprisonment of not more than 5 years, one should be particularly careful prior to making such a declaration. Failing to properly designate a first use in commerce date can create legal headaches and result in unnecessary expense and lost time. The takeaway? Take extra care to be certain that the mark has been used in commerce beginning on the claimed date and with no significant breaks in use prior to the application.

Second, this application is filed under International Class 35, which generally covers "advertising; business management; business administration; office functions." Importantly, class 35 is a class specifically for services, and cannot be used to claim protection for physical goods. Further, even for services, one must be careful which class to use, as particular services fall under other classes. As you recall, applicant is claiming "animal advocacy, t shirts, stickers, entertainment services." Animal advocacy? While this is a service, it often is found under class 36 as a part of charitable services. T shirts are physical goods, and cannot be claimed under class 35 — rather, they fall under class 25 for clothing. Stickers are also a physical good, generally falling under class 16. And entertainment services, properly a service, will generally be found under class 41. These numbers matter, as filing in an improper class may result in the USPTO issuing an office action, which identifies an issue with the application requiring resolution prior to registration. If an application is filed in a fundamentally incorrect class, the mark will not proceed to registration, the filing fees will not be refunded, and the "place in line" in the process is lost. The takeaway? Applicants must understand and carefully select the proper class for a particular mark. One helpful tool for this is the online Trademark ID Manual, which allows the public to search for terms in the trademark database and provides guidance on which classes are appropriate.

Third, this application provides the following specimen (example of use):

HAIL: the t-shirt

HAIL: the t-shirt

As trademarks serve to identify the source of a good or service, the question becomes whether this specimen supports the claimed good of "t shirts." Putting aside the matter of being filed in an improper class, the specimen itself is an issue, as it suggests that the mark is a design on the front of the shirt. Unfortunately for applicant, according to § 1202.03(a) of the Trademark Manual of Examining Procedure (TMEP), "matter that is purely ornamental or decorative does not function as a trademark." The mark specimen should demonstrate how the mark designates the source of the shirt itself, rather than being a design simply placed on the front of another provider's physical shirt. Thankfully, TMEP § 904.03(i)(B)(2) provides very clear guidance on what would suffice for a specimen, and could save applicant a likely office action. The takeaway? Take the time to clearly understand what type of specimen is required prior to filing. Not only will this increase the chances of getting a mark granted — it also educates the applicant on what ongoing use in commerce will be sufficient to maintain trademark protection once a federal registration is granted, avoiding the risks of the mark being declared abandoned.

Lastly, this application was filed as a TEAS Reduced Fee, which lowers the per-class government filing fee to $275 per class. If, however, the applicant used the Trademark ID Manual to select preapproved language for goods and services, she could have reduced this fee even further to $225 per class by filing as a TEAS Plus application. This not only saves money, but can speed up the processing time for the application by reducing office actions to modify particular wording in the application. The takeaway? The USPTO has mechanisms by which applicants can save money, speed up processing, and improve the chances of obtaining registration — but the applicant must seek out and use those tools.

The issues above could likely be avoided by engaging an experienced trademark attorney who deals with these issues regularly. Further, trademark applications don't stand alone, but rather are part of a larger business strategy. Retaining counsel with the knowledge and insight to assist with overall growth is a key step in building the foundation for long term success.

To learn more about the services offered by Creedon PLLC, please visit our Trademark and Transactional pages.

James Creedon
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Suing former clients to recover a contingent fee is never ideal. But neither is working for free. Like any other contract for services, when an attorney enters into a contingent fee agreement with a client, the attorney expects she will be paid for her services if her client recovers.

What if the attorney, though, has worked on her client’s case for some time and the client terminates the attorney-client relationship before the client recovers? And, what if the client hires another attorney and the new attorney helps the client settle the case? Does the former attorney have a remedy against the client’s new counsel or the third-party with whom the former client settled? 

Suits to recover on contingent fee contracts often include the former client and the third-party (often the insurance carrier paying the settlement on behalf of the actual third-party) with whom the client settled. Most of the time, terminated counsel will send a letter or email to the third-party, informing the third-party that terminated counsel holds an assignment interest in the cause of action and/or in the former client’s recovery, if any. The letter or email often includes language suggesting that the third-party owes a duty to protect terminated counsel’s “assignment interest.” 

The Beaumont Court of Appeals recently issued an opinion which touches on the questions and issues raised above. In Effrem D. Sewell v. Zurich American Insurance Company, Case Number 09-16-00079-CV, the court of appeals affirmed the trial court’s summary judgment in favor of Zurich as to Sewell’s breach of contract and quantum meriut causes of action. Zurich insured a vehicle operated by an employee of Diakon Logistics. The employee was involved in a vehicular accident with a motorcycle operated by Joseph Guillory, II. Guillory hired Sewell as an attorney to represent him in pursuing claims against Diakon Logistics for injuries Guillory sustained as a result of the accident. The representation agreement between Sewell and Guillory contained a standard contingent fee agreement. Sewell immediately sent a letter to Zurich, advising Zurich that he represented Guillory in his claim against Diakon Logistics and informing Zurich that he had been assigned an undivided interest in Guillory’s claims and causes of action.

About eight months after the representation agreement was signed, Guillory terminated Sewell. Guillory secured new counsel. Seventeen months later, Guillory entered into a settlement agreement, acknowledged and approved by his new counsel. Zurich paid the agreed-to settlement value to Guillory and his new counsel.

Sewell brought suit against his former client (Guillory) and against Zurich for breach of contract and in quantum meruit. Sewell did not sue Diakon Logistics. Zurich filed a traditional motion for summary judgment, arguing that Zurich owed no duty to Sewell, that Zurich had no contractual relationship with Sewell, and that Sewell’s remedy, if any, would be an action against his former client. The trial court granted Zurich’s motion.

In its opinion affirming the trial court’s summary judgment in favor of Zurich, the Beaumont Court of Appeals reaffirmed the general rule that terminated counsel may not seek to recover his contingency fee against the opposing party or its insurer. See e.g., Dow Chemical Co. v. Benton, 357 S.W.2d 565, 568 (Tex. 1962) (reasoning that a “lawyer’s rights, based on the contingent fee contract, are wholly derivative from those of his client[]” and that an attorney working on a contingent fee “elects to litigate his interest simultaneously with his client’s interest [and] in his client’s name); Honeycutt v. Billingsley, 992 S.W.2d 570, 584 (Tex. App.—Houston [1st Dist.] 1999, no pet.). The court noted an exception to the general rule—when the discharged attorney pleads and proves that his former client and the opposing party conspired to vitiate terminated counsel’s contractual rights. Sewell, however, did not plead or argue that Guillory conspired with Zurich to deprive Sewell of any rights under the contingent fee agreement.

The Sewell opinion should bring some clarity and consistency to contingent fee recovery practice. A discharged attorney hired on a contingent-fee basis can seek recovery of his fee against his former client in a breach of contract action or in quantum meruit—the Mandell remedies. See Mandell & Wright v. Thomas, 441 S.W.2d 841, 847 (Tex. 1969). If terminated counsel wishes to pursue his contingent fee against the opposing party or its insurance carrier, terminated counsel will need to plead and prove an exception to the general rule which limits terminated counsel to the Mandell remedies solely against his former client.