July 2, 2025, opinions

Posted on by tadbartlett

Designated for publication

  • Reed v. Marshall, 24-20198, appeal from S.D. Tex.
    • Graves, J. (Smith, Graves, Duncan), trademark infringement, Lanham Act
    • Affirming summary judgment in defendants’ favor on Lanham Act trademark infringement claims.
    • This case stems from a dispute among members of the 1990s R&B group Jade. Di Reed sued her former bandmates Joi Marshall and Tonya Harris, along with a new singer, Myracle Holloway, alleging Lanham Act violations for performing under the “JADE” trademark without her authorization. Reed claimed that their use of the JADE mark, which the three original members co-owned, amounted to trademark infringement, dilution, false advertising, and false designation of origin. The district court granted summary judgment in favor of the defendants, holding that the Lanham Act does not authorize claims for infringement or dilution between co-owners of a trademark.
    • On appeal, the Fifth Circuit affirmed the district court’s ruling, explaining that trademark law is fundamentally incompatible with co-owner litigation under the Lanham Act. Because the parties were joint owners of the JADE mark—each having full rights to use it—no co-owner could be said to infringe upon the mark by using it, or by licensing its use. The court emphasized that the Lanham Act was designed to prevent consumer deception by third-party infringers, not to resolve internal disputes between mark co-owners. Thus, neither Marshall nor Harris, as co-owners, nor Holloway, as their licensee, could be held liable under the Act.
    • The court also rejected Reed’s trademark dilution and false advertising claims, finding that she lacked statutory standing and failed to show any actual injury to her commercial interests. Because the mark had not been used by a third party or in a way that diluted its source-identifying function, and because Reed presented no evidence of reputational or financial harm, her claims failed as a matter of law. Similarly, her false designation of origin theory fell apart since it was based on the false premise that Marshall and Harris were unauthorized users of the mark—they were not.
    • Finally, the Fifth Circuit dismissed Reed’s procedural objections, noting she had ample notice of the summary judgment motion and failed to provide evidence of harm or legal error in how the district court handled her claims. The court affirmed that the Lanham Act does not apply to disputes between co-owners and reiterated that trademark co-ownership should be accompanied by a clear contract to manage potential conflicts. Reed’s appeal was ultimately unsuccessful, and the district court’s decision was affirmed in full.
  • Crystal Clear Special Utility District v. Jackson, 23-50928, appeal from W.D. Tex.
    • Higginson, J. (King, Stewart, Higginson), water law, preemption
    • Affirming in part, but remanding in part to determine if Texas Water Code is preempted by federal law protecting federally indebted utilities providers.
    • This case arises from a dispute over water service rights in Hays County, Texas, between Crystal Clear Special Utility District (“Crystal Clear”) and real estate developer HK Baugh Ranch, LLC (“HK Baugh”). HK Baugh petitioned the Texas Public Utility Commission (PUC) to decertify its property, River Bend Ranch, from Crystal Clear’s state-issued Certificate of Convenience and Necessity (CCN), claiming Crystal Clear had not provided actual water service. Before the PUC could act, Crystal Clear filed suit in federal court, alleging that § 13.2541 of the Texas Water Code was preempted by 7 U.S.C. § 1926(b), a federal statute protecting water utilities indebted to the USDA from curtailment of service areas. The district court issued a preliminary injunction blocking the PUC from proceeding, finding Crystal Clear likely met the “physical ability” test for § 1926(b) protection under Fifth Circuit precedent.
    • Crystal Clear and HK Baugh had entered into a service agreement in 2019 to supply water to River Bend Ranch, contingent on infrastructure upgrades. HK Baugh repeatedly revised its service request, leading to significant cost fluctuations—estimates ranged from $2 million to over $6 million depending on project scope. Although Crystal Clear had some infrastructure in place and could serve 450 living unit equivalents (LUEs) immediately, construction delays persisted, and no development occurred. Eventually, HK Baugh explored cheaper alternatives, entering a development agreement with the City of San Marcos, which confirmed its ability to serve the land without additional infrastructure costs. In January 2023, HK Baugh petitioned the PUC for expedited release, claiming Crystal Clear was not serving the land.
    • The PUC’s staff recommended decertification, noting the absence of active facilities serving the land, and the administrative law judge agreed. But before the final order, Crystal Clear sued the PUC Commissioners, seeking injunctive and declaratory relief under § 1926(b), which protects federally indebted utilities from encroachment or limitation of their service areas. The district court granted a preliminary injunction, relying solely on the conclusion that § 1926(b) expressly preempts § 13.2541 and finding no need to evaluate the other injunction factors separately. HK Baugh appealed, arguing both the excessive cost of Crystal Clear’s service and that the federal statute should not apply to state regulators.
    • The Fifth Circuit affirmed the district court’s conclusion that Crystal Clear would likely meet the “physical ability” test under Green Valley, meaning it had adequate infrastructure and the legal right to serve River Bend Ranch within a reasonable time. However, the court found that the district court erred by concluding that § 1926(b) expressly preempts Texas law, since the federal statute contains no such explicit language. Because conflict preemption remains unresolved and presents a complex question implicating federalism and state regulatory authority, the court remanded for the district court to analyze whether § 1926(b) conflict-preempts § 13.2541. The preliminary injunction will remain in effect during remand to preserve the status quo and prevent potential mootness of Crystal Clear’s claims.

Unpublished opinions

  • Wissel v. Somes, 25-10424, appeal from N.D. Tex.
    • per curiam (Davis, Smith, Higginson), sanctions
    • Vacating district court’s sanctions order against attorney for opposing a defendant’s second request for an extension of time to answer.
  • U.S. v. Thomas, 25-30079, appeal from W.D. La.
    • per curiam (Davis, Stewart, Southwick), criminal
    • Affirming conviction of possession of a firearm by a felon.
  • U.S. v. Garcia-Zabaleta, 24-40762, appeal from E.D. Tex.
    • per curiam (Jones, Higginson, Douglas), criminal
    • Granting Anders motion to withdraw, and dismissing appeal.