Take the Fifth: May 19, 2021 opinions

Designated for publication

  • U.S. v. Morton, 19-10842, appeal from N.D. Tex.
    • per curiam (Owen, Jones, Smith, Stewart, Dennis, Elrod, Southwick, Haynes, Graves, Higginson, Costa, Willett, Ho, Duncan, Engelhardt, Oldham, Wilson); criminal, search and seizure
    • Vacating January 5, 2021 opinion that vacated sentence of conviction on child pornography charges and reversed district court’s denial of motion exclude images found on cell phone, and ordering en banc rehearing.
  • Alliance for Good Government v. Coalition for Better Government, 20-30233, appeal from E.D. La.
    • Higginbotham, J. (Higginbotham, Smith, Dennis), Dennis, J., dissenting; attorneys’ fees, First Amendment, Lanham Act
    • Affirming reasonableness of attorneys’ fee award in favor of plaintiff on Lanham Act trademark infringement claims, and affirming post-judgment joinder of principal of the defendant upon finding that defendant was unable to satisfy fee award.
    • Plaintiff prevailed on its trademark infringement claims, voluntarily dismissing other claims; on appeal the Fifth Circuit had affirmed in part and reversed in part, upholding judgment in favor of the plaintiff as to the composite trademark use by the defendant. After the district court on remand had determined this was an exceptional case justifying fees under the Lanham Act, awarding ~$68,000 in fees, the Fifth Circuit affirmed in part and vacated in part, remanding to the district court to award fees only on the portion of the trademark infringement case that had survived the first appeal. On second remand, the plaintiff argued for a 10% across-the-board reduction to account for the inextricability of the claims on which it had prevailed from its other claims, a $1500 reduction for the claims it had voluntarily dismissed, the addition of fees incurred in the appeal, and for the joinder of Darleen Jacobs, a principal of the defendant, upon learning the defendant could not satisfy the fee award. The district court entered a new fee award for ~$148,000 and joined Ms. Jacobs as a defendant.
    • The Court affirmed. First, it held that the district court had afforded Ms. Jacobs due process by giving her two weeks to respond to the plaintiff’s arguments in favor of joining her into the suit.
    • The Court then held that the district court did not abuse its discretion in finding that the Lanham Act attorneys’ fees award was proper as against Ms. Jacobs. “We affirmed the district court’s determination that this case is exceptional because Coalition litigated in an unreasonable manner, including presenting meritless defenses at the summary judgment stage, filing an unsupported laches defense, meritless counterclaim, and a meritless motion to dismiss, and behaving unreasonably during discovery by insisting on proceeding with depositions even after the district court granted summary judgment on Alliance’s federal trademark infringement claim and Alliance dismissed its other claims. While Jacobs argues she was not responsible for this conduct, she is a principal of Coalition and personally signed the motion for summary judgment, the counterclaim, the motion to dismiss, and Coalition’s memorandum insisting on proceeding with depositions after the district court’s summary judgment ruling.”
    • The Court then held that the fee award was reasonable. It held that it was proper for the district court to award fees related to the two prior appeals. It held that the 10% reduction applied to all fees was sufficient to account for the intertwined nature of the underlying claims, where there was no distinction between work on the intertwined claims in the plaintiff’s time sheets.
    • The Court then held that the panel on the first appeal in the matter was not wrong to decline to rule on defendants’ argument that the First Amendment prohibited injunction of what the defendant asserted was political speech, where that argument had not been presented to or preserved in the district court. The Court also held that, “even if Coalition’s speech is rightly considered noncommercial speech, this Court has not previously held that § 32(1) of the Lanham Act, the section at issue here, applies only to commercial speech.”
    • Judge Dennis dissented, laying out his opinion that the Lanham Act cannot enjoin political speech, which would have obviated the foundation for any award of attorneys’ fees to the plaintiff: “The majority strains at gnats but swallows a camel. This is the third appeal in this case. I regret that I was not assigned to participate in the first appeal. If I had taken part, I would have worked to persuade the court that applying the Lanham Act to the noncommercial political speech of Coalition for Better Government is contrary to the Act and violates the First Amendment. And had the Alliance I panel correctly held that Coalition’s pure political speech cannot be enjoined under the Lanham Act, this litigation would have terminated, averting two additional and flawed decisions that followed Alliance I. It is not too late to correct Alliance I’s serious statutory and constitutional error, however; under our precedents ‘the law of the case’ is not an inexorable command. We need not adhere to a former decision if it was clearly erroneous and doing so would work a manifest injustice.”
  • U.S. v. Torres, 20-50092, appeal from W.D. Tex.
    • Graves, J. (Haynes, Graves, Willett), criminal, Sixth Amendment
    • Reversing conviction and sentence upon holding that defendant was denied his Sixth Amendment right to counsel when he was barred from communication with his attorney during an overnight recess of his trial.
    • The Court held that, even under a plain error review, reversal would be required. “Having recognized that a Geders violation is presumptively prejudicial, we now consider whether the sequestration order actually affected Torres’ substantial rights. Here, Torres was barred from all communication with his attorney during an overnight recess. This deprivation of the assistance of counsel affected his substantial rights, especially given that it was the last night before the end of trial. It was the last opportunity to discuss important case-related matters, such as conducting further examination of witnesses, closing arguments, a general recapitulation of how trial was going so far, and even the possibility of negotiating a plea bargain. See Perry, 488 U.S. at 284. Indeed, we have difficulty envisioning a scenario in which an overnight ban just before the end of trial of all communication between a defendant and his attorney would not be prejudicial.”


  • U.S. v. Russell, 20- 10621, appeal from N.D. Tex.
    • per curiam (Davis, Stewart, Dennis), criminal, sentencing
    • Affirming 155-month sentence on conviction of conspiracy to possess with intent to distribute a controlled substance, specifically 50 grams or more of methamphetamine.
  • U.S. v. Williams, 20-11110, appeal from N.D. Tex.
    • per curiam (King, Smith, Wilson), criminal, sentencing
    • Granting summary affirmance of conviction and sentence for possession of a firearm by a convicted felon.
  • U.S. v. Rojas-Torres, 20-50516, appeal from W.D. Tex.
    • per curiam (Jolly, Graves, Costa), criminal, sentencing
    • Affirming sentence on guilty plea to illegal reentry following removal.