In this edition of Litigation Roundup, we preview a trademark infringement lawsuit brought by Landry’s that’s slated for trial this week, another trial in the 26-year dispute between David Clapper and American Realty Investors is averted, and the Fifth Circuit sends a malpractice lawsuit against Beck Redden to state court.
The Litigation Roundup is a weekly feature highlighting the work Texas lawyers are doing inside and outside the state. Have a development we should include next week? Please let us know at tlblitigation@texaslawbook.net.
Harris County District Court
Trial Begins in Landry’s Trademark Case
On Wednesday, a jury in Harris County is scheduled to be empaneled and tasked with deciding whether a whiskey distilling company is infringing the trademark of Landry’s LLC, the dining and hospitality group owned by Houston billionaire Tilman Fertitta.
Lowell Zachary Landry and his Landry Distilling drew a lawsuit from Landry’s in March 2023.
In a brief filed by counsel for Landry Distilling Jan. 3, they called the claim asserted here, “infringement of federally registered marks asserted exclusively under state common law,” a “unicorn.” The brief also argued that under Texas common law, there’s an exception to trademark infringement where personal names are involved.
“As the court has heard in prior hearings, a consistent line of Texas cases from 1939
through 2020 recognizes the exception for personal-name cases,” Landry Distilling’s lawyers argued in the brief.
In Landry’s Jan. 3 brief, it told the court the use of one’s own name “is not a proper defense” to a trademark infringement claim.
“A person’s use of their own name in their trademark is relevant only when the court fashions the scope of an injunctive remedy,” Landry’s argued. “Marks using personal names, especially when those marks are federally registered, are routinely litigated without any instruction or a defense on the jury charge related to the fact the mark at issue is Defendant’s surname.”
Landry’s has alleged in its suit that the distilling company filed applications with the U.S. Patent and Trademark Office in July 2021 to register the word marks “Landry Distillery,” “Landry Oaks,” and “Landry Stakes” for use in marketing its whiskey products.
Despite receiving a cease-and-desist letter from Landry’s in August 2021, the company began selling products using the Landry name in November 2021.
The USPTO, in January 2022, refused the applications citing a “likelihood of confusion” with the Landry’s marks.
Harris County District Judge Beau A. Miller will preside over the case.
Landry’s is represented by John Zavitsanos, Harrison Scheer, Angela M. Peterson of Ahmad Zavitsanos & Mensing and Jason P. Blair of Smith, Gambrell & Russell.
Landry Distilling is represented by Joseph R. Knight of Ewell Brown Blanke & Knight and Steven J. Knight of Chamberlain, Hrdlicka, White, Williams & Aughtry.
The case number is 2023-20455.
Northern District of Texas
Case Where Trial Lawyers Drew Sharp Rebuke from Fifth Circuit Has Settled
Next week, a trial in David M. Clapper v. American Realty Investors was set to begin before U.S. District Judge Brantley Starr, but the parties have reached an agreement to dismiss the dispute with prejudice.
The agreement was reached in early November. Clapper had accused American Realty and others in his 2014 lawsuit of violations of the Texas Uniform Fraudulent Transfers Act for allegedly moving assets to avoid paying a judgment in a previous lawsuit.
A jury sided with the defendants at trial in May 2021 and Clapper appealed to the Fifth Circuit, arguing that improper jury argument from attorneys Stephen A. Khoury and C. Gregory Shamoun had prejudiced the jury and necessitated a new trial.
The Fifth Circuit issued a scathing ruling in March agreeing with Clapper. Once back in the district court, the case was set for a second trial to take place the week of Jan. 13.
The feud between the parties dates back to 1999, when the defendants sued Clapper for allegedly breaching an agreement to acquire and manage apartment complexes. At a trial on that matter, the jury sided with the defendants in 2004, but the Fifth Circuit reversed and remanded the case.
The jury sided with Clapper the second time around, in 2011, awarding him $70 million in damages and following an appeal of that verdict, final judgment awarding Clapper $50 million was eventually entered.
That paved the way for Clapper’s 2014 lawsuit, accusing the defendants of the fraudulent transfer of funds to avoid paying the judgment.
American Realty Investors is represented by LeElle B. Slifer and Thomas M. Melsheimer of Winston & Strawn and G. Don Swaim and Alex Whitman of Cunningham Swaim.
Clapper is represented by Alison R. Ashmore, Jeffrey R. Fine, Christopher D. Kratovil and David J. Schenck of Dykema Gossett and Todd Disher and Scott A. Keller of Lehotsky Keller Cohn.
The case number is 3:14-cv-02970.
Texas Supreme Court
FBI Can Review Video First in Sex Tape, Child Porn Suit
In one of its final rulings of 2024, the Texas Supreme Court issued a per curiam opinion determining that a video one party in an underlying lawsuit contends depicts child pornography should be handed to the FBI before it is produced in discovery.
Magdoline Elhindi is suing attorney Hamilton Rucker in Harris County district court, alleging he violated the Texas Relationship Privacy Act by distributing an intimate video of her without her knowledge or consent.
At issue on appeal was a trial court’s order directing Elhindi to hand over all videos of Rucker in her possession. She objected to production of one video, alleging that when Rucker sent it to her, he said it depicted him having sex with a 14-year-old girl in Egypt and that if she disseminated the video she would run afoul of both federal law and a letter from the FBI instructing her not to share the video.
In January 2024, the Texas Supreme Court narrowly denied Elhindi’s petition for writ of mandamus that had asked the court to allow her to first turn the video over to federal authorities who can determine whether it constitutes child pornography.
In April, the high court granted rehearing in the case after entering a stay in February while it considered her request.
On Dec. 31, in a six-page ruling, the Texas Supreme Court sided with Elhindi without hearing oral arguments in the case.
“The trial court erred in ordering production without first determining whether this sensitive material required special treatment,” the court held. “The trial court’s refusal to delay discovery for further inspection elevated the immediate production of a peripherally relevant video over an undue risk to the alleged minor.”
Elhindi is represented by Kenton J. Hutcherson of Hutcherson Law in Dallas.
Rucker is represented by Peyton Z. Peebles III of Shellist Peebles McAlister in Houston.
The amici legislators are represented by Christopher A. Klement of Fee, Smith & Sharp.
The case number is 23-1040.
U.S. Court of Appeals for the Fifth Circuit
3 Judges Wanted Initial En Banc Review in Louisiana 10 Commandments Case
In a departure from the 8-9 and 9-8 splits from the Fifth Circuit on recent petitions for rehearing en banc, one of the last orders issued by the court last year ended with a 3-14 vote against initially hearing a case en banc.
The case, Roake v. Brumley, challenges H.B. 71, a Louisiana law that requires schools to display the Ten Commandments in classrooms. A district court judge sided with parents and students and entered a preliminary injunction after finding the law unconstitutionally pressured viewers to “observe, meditate on, venerate, and adopt or obey the state’s preferred religious doctrine.”
Louisiana appealed and asked the full Fifth Circuit to hear the case in the first instance.
“The time has come to bury offended-observer standing …” Louisiana argued.
“This is the perfect case in which to do so because, in a radical extension of the theory, plaintiffs hang their hat on imaginary offended observer standing — the theory that someday, somewhere they will be offended by an H.B. 71 display. That is not, and has never been, a cognizable standing theory. But only the full Court can say so.”
Only three judges — Edith H. Jones, James C. Ho and Andrew S. Oldham — voted in favor of having the full court initially hear the case.
Oral arguments are set to take place Jan. 23
Roake is represented by Jonathan K. Youngwood of Simpson, Thacher & Bartlett.
Brumley is represented by Jorge Benjamin Aguiñaga of the Louisiana Department of Justice
The case number is 24-30706.
Beck Redden Malpractice Suit Revived, Kicked Back to State Court
A three-judge panel has determined a legal malpractice lawsuit brought by a disbarred attorney against Beck Redden, the firm he hired to represent him in an earlier dispute, belongs in state court.
The Dec. 23 ruling undid a ruling from U.S. District Judge Ricardo H. Hinojosa that had ended Mark A. Cantu’s lawsuit against the law firm. The panel agreed that summary judgment in Beck Redden’s favor was improper because federal courts did not have jurisdiction to hear Cantu’s state tort malpractice claim.
According to court documents, Cantu hired Beck Redden to represent him in a bill of review proceeding in state court where he was seeking to set aside a $1.6 million judgment against him and in favor of the law firm Guerra & Moore. Guerra & Moore had accused Cantu in an earlier suit of tortiously interfering with a client.
After Cantu lost that lawsuit, he alleged Beck Redden had committed legal malpractice by framing his complaint in a way that allowed federal jurisdiction to be asserted over his state court action.
Beck Redden removed Cantu’s malpractice lawsuit to federal court, and Judge Hinojosa dismissed the case after finding Cantu’s claim had no merit.
The State Bar of Texas lists a Mark A. Cantu as a 1985 graduate of the University of Texas School of Law. He was disbarred in 2016 stemming from misconduct in his personal bankruptcy proceeding. The misconduct case was tried to a jury and featured the testimony of U.S. Bankruptcy Judge Marvin Isgur.
Judges E. Grady Jolly, James E. Graves Jr. and Cory T. Wilson sat on the panel.
Cantu is represented by Lance Kassab and David Kassab at Kassab Law Firm.
Beck Redden is represented by George William Shepherd III, Stephen Bailey of Shepherd Prewett and Raymond L. Thomas of Ray Thomas PC.
The case number is 24-40275.
Krista Torralva contributed to this report.