Alli Good Govt v. Coaltn Better Govt ( 2021 )

Case: 20-30233 Document: 00515868262 Page: 1 Date Filed: 05/19/2021
United States Court of Appeals
for the Fifth Circuit
United States Court of Appeals
Fifth Circuit
FILED
No. 20-30233 May 19, 2021
Lyle W. Cayce
Clerk
Alliance for Good Government,
Plaintiff—Appellee,
versus
Coalition for Better Government,
Defendant—Appellant,
Darleen Jacobs,
Objecting Party—Appellant.
Appeal from the United States District Court
for the Eastern District of Louisiana
USDC No. 2:17-CV-3679
Before Higginbotham, Smith, and Dennis, Circuit Judges.
Patrick E. Higginbotham, Circuit Judge:
Coalition for Better Government and Darleen Jacobs challenge the
reasonableness of the district court’s award of attorney’s fees to Alliance for
Good Government for federal trademark infringement under the Lanham
Act. Jacobs also argues that she was improperly joined post-judgment. We
affirm.
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I.
Our two prior opinions detail the relevant background. 1 Briefly,
Alliance and Coalition are nonprofit organizations that endorse political
candidates in New Orleans. In 2017, Alliance sued Coalition, seeking to
enjoin use of its trade name (word mark) and logo (composite mark) for
federal trademark infringement under the Lanham Act, state trademark
infringement, and unfair trade practices. The district court granted Alliance
summary judgment on its federal trademark infringement claim, enjoining
Coalition from using both its word and composite marks. Alliance voluntarily
dismissed its other claims.
Coalition appealed, and we affirmed the district court’s summary
judgment but modified its injunction to restrain only Coalition’s use of its
composite mark. 2 While the first appeal was pending, Alliance moved for
attorney’s fees pursuant to the Lanham Act’s fee-shifting provision, 3 and the
district court awarded Alliance $68,237.25 in fees. 4 Coalition also appealed
the fee award. In our second opinion, we concluded that the district court did
not abuse its discretion in classifying this case as an exceptional one,
warranting reasonable attorney’s fees under the Lanham Act. 5 As Alliance
1
All. for Good Gov’t v. Coal. for Better Gov’t (Alliance I), 901 F.3d 498 (5th Cir.
2018); All. for Good Gov’t v. Coal. for Better Gov’t (Alliance II), 919 F.3d 291 (5th Cir. 2019).
2
Alliance I, 901 F.3d at 514.
3
The Lanham Act authorizes the award of “reasonable attorney fees to the
prevailing party” in “exceptional cases.” 15 U.S.C. § 1117(a).
4
Alliance II, 919 F.3d at 294. This amount included “fees already incurred and
projected fees from replying to Coalition’s opposition to the fees motion.” Id.
5
Alliance II, 919 F.3d at 295. The Appellants attempt to relitigate the issue of
whether this case is exceptional in their reply brief. Our prior determination that the district
court did not abuse its discretion in finding this case exceptional is law of the case and
cannot be challenged in this appeal. Tollett v. City of Kemah, 285 F.3d 357, 363 (5th Cir.
2002), cert. denied, 537 U.S. 883 (2002) (“Under the law of the case doctrine, an issue of
2
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had not prevailed on its word mark claim, it was not entitled to attorney’s
fees for work related to that claim, or for the claims it voluntarily dismissed. 6
We remanded, instructing the district court to adjust the fee award to account
for claims on which Alliance did not prevail, as best it could in light of our
opinion. 7 We made no reference to and did not prohibit awarding additional
fees related to the additional litigation of the fee award.
On remand, the district court instructed Alliance to file a new motion
for attorney’s fees, separating fees in accordance with our judgment and
including any demand for fees related to the appeals “not inconsistent with
[our] judgment,” which had affirmed the exceptional nature of the case.
Alliance argued that its work on the word mark claim was “inextricably
intertwined with work” on the composite mark claim, so it was unable to fully
disentangle fees related to each claim. Instead, it proposed a 10% across-the-
board reduction of fees to estimate for time spent on the word mark claim,
and a $1,500 reduction to account for the claims it voluntarily dismissed.
Alliance also moved to join Darleen Jacobs, a principal of Coalition, because
it had learned during post-judgment discovery that Coalition lacked
resources to pay the fee award.
The district court joined Jacobs as a third party to the case, required
that Alliance serve her with the court’s order, and gave Jacobs two weeks to
respond to Alliance’s motion. Jacobs opposed Alliance’s motion for fees, but
law or fact decided on appeal may not be reexamined either by the district court on remand
or by the appellate court on a subsequent appeal.” (citing United States v. Becerra, 155 F.3d
740, 752 (5th Cir. 1998))). Because we will not reconsider the exceptional nature of this
case, it is unnecessary to strike this portion of the Appellants’ reply brief as Alliance
requests in its motion to strike.
6
Alliance II, 919 F.3d at 298.
7
Id.
3
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the district court ultimately found it appropriate to hold her directly liable.
The district court agreed with Alliance’s efforts to modify the fee award in
accordance with our second opinion, rejected Coalition’s objections, and
awarded Alliance $148,006.15 in fees.
Both Jacobs and Coalition appealed. Jacobs argues that the district
court’s order joining her was improper. And both challenge the
reasonableness of the district court’s fee award.
II.
A.
As the Supreme Court explained in Nelson v. Adams USA, Inc., a court
adding a party post-judgment must afford that party due process. 8 Such
process, as reflected in Federal Rules of Civil Procedure 12 and 15, requires
an added party have an opportunity to respond to the claims against him. 9
We review the district court’s decision to join a party for abuse of
discretion. 10
The facts here mirror those in Nelson, with key exceptions. In both
cases, the prevailing party was awarded attorney’s fees and subsequently
sought to join an individual in a leadership role within the opposing party
entity out of fears the party itself did not have sufficient assets to pay the fee
award. 11 However, in Nelson, the district court immediately granted the
8
Nelson v. Adams USA, Inc., 529 U.S. 460, 463 (2000).
9
Id. at 468; see also Mullane v. Cent. Hanover Bank & Trust Co., 339 U.S. 306, 314
(1950) (“The fundamental requisite of due process of law is the opportunity to be heard.”
(citation omitted)).
10
Acevedo v. Allsup’s Convenience Stores, Inc., 600 F.3d 516, 520 (5th Cir. 2010) (per
curiam).
11
Nelson, 529 U.S. at 462-63.
4
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prevailing party’s motion, making Nelson a party and subjecting him to the
fee award. 12 The Supreme Court held that the district court violated due
process because it failed to give Nelson “an opportunity to respond and
contest his personal liability for the award after he was made a party and
before the entry of judgment against him.” 13 The district court here gave
Jacobs two weeks to respond to Alliance’s motion for attorney’s fees after
joining her, and she did so. It was only after considering Jacobs’s arguments
in opposition that the district court found her liable for the fee award. This
procedure met the demands of due process. 14
B.
Jacobs next argues that she is not liable as an individual under the
Lanham Act.
The Lanham Act authorizes the award of “reasonable attorney fees to
the prevailing party” in “exceptional cases.” 15 The text of the provision does
not expressly limit the persons who can be held liable for attorney’s fees. In
interpreting the Patent Act’s identically worded fee-shifting provision, the
Supreme Court explained that the “text is patently clear. It imposes one and
only one constraint on district courts’ discretion to award attorney’s fees in
patent litigation,” which is determining whether the case is exceptional. 16
12
Id. at 463.
13
Id.14
Jacobs also argues that Nelson requires that the district court join her by means
of an amended pleading instead of a motion. However, as the district court correctly noted,
it has the authority to join a party “[o]n motion or on its own” at any time. Fed. R.
Civ. P. 21.
15
15 U.S.C. § 1117(a).
16
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 553 (2014). We
have found case law interpreting the Patent Act’s fee-shifting provision instructive in
interpreting the Lanham Act’s identical provision. See, e.g., Alliance II, 919 F.3d at 295;
5
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The Court gave no indication that the provision limited who could be held
liable. Indeed, in Nelson, which also concerned attorney’s fees under the
Patent Act, the Court underscored that its decision to invalidate the manner
of Nelson’s joinder did “not insulate Nelson from liability.” 17
The Federal Circuit in turn has affirmed imposition of fee awards
under the Patent Act against individuals who were not party to the underlying
litigation when their conduct contributed to the court’s decision to award
attorney’s fees. 18 The decision to do so stems from the fee-shifting
provision’s purpose of preventing “gross injustice when a party has litigated
vexatiously” 19 and the general principle that “[a]n officer is individually
liable for any tortious conduct that he committed in connection with his
corporate duties.” 20 Given the similar underlying purpose of the Lanham
Baker v. DeShong, 821 F.3d 620, 623 (5th Cir. 2016) (citing S. Rep. No. 93-1400 (1974));
CJC Holdings, Inc. v. Wright & Lato, Inc., 979 F.2d 60, 65 (5th Cir. 1992) (“Given the
parallel language, we infer that Congress meant courts to apply similar standards in both
patent and trade dress cases.”).
17
Nelson, 529 U.S. at 472.
18
See, e.g., Insituform Tech., Inc. v. CAT Contracting, Inc., 385 F.3d 1360, 1373 (Fed.
Cir. 2004); Mach. Corp. of Am. v. Gullfiber AB, 774 F.2d 467, 475 (Fed. Cir. 1985) (“This
court has held that an individual may be assessed fees under [the fee-shifting provision of
the Patent Act] if his conduct supports a finding that the case is exceptional.” (citing
Hughes v. Novi Am., Inc., 724 F.2d 122, 126 (Fed. Cir. 1984))); see also Iris Connex, LLC v.
Dell, Inc., 235 F. Supp. 3d 826, 843 (E.D. Tex. 2017) (holding a non-party liable for
attorney’s fees under the Patent Act where the non-party was afforded due process, was
responsible for the conduct making the case exceptional, and where it was equitable to do
so).
19
Sun-Tek Indus., Inc. v. Kennedy Sky Lites, Inc., 929 F.2d 676, 679 (Fed. Cir. 1991)
(internal quotation marks and citation omitted).
20
Insituform, 385 F.3d at 1373 (citing Walker v. FDIC, 970 F.2d 114, 122 (5th Cir.
1992)).
6
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Act’s fee-shifting provision, 21 we find it reasonable to likewise impose
liability for a Lanham Act fee award on a properly-added party responsible
for the conduct making a case exceptional.
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. 22 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. 23 We find no abuse of discretion
in the district court’s decision to join Jacobs and hold her directly liable for
the fee award. 24
21
See Baker, 821 F.3d at 623 n. 1 (explaining that the legislative history indicates
that the purpose of the fee-shifting provision in the Lanham Act is similar to the purpose
underlying the fee-shifting provision in the Patent Act).
22
Alliance II, 919 F.3d at 296.
23
See, e.g., Nelson, 529 U.S. at 472 (stating that Nelson, president and sole
shareholder of a party, was not insulated from liability for an attorney’s fee award);
Insituform Tech., 385 F.3d at 1372-73 (holding main executive officer who “was directly and
actively involved in all aspects of the litigation” and “individually responsible for all of the
conduct that led the district court to increase damages and award attorney’s fees”
individually liable for Patent Act fee award).
24
Alliance moved to strike the section of the Appellants’ reply brief arguing that
Jacobs was not solely responsible for Coalition’s litigation conduct because that argument
was waived. Since we reject Jacobs’s argument, there is no need to strike it from the reply
7
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III.
Both Appellants argue that the fee award is unreasonable. We review
the reasonableness of a fee award under the Lanham Act for abuse of
discretion. 25
The Appellants raise three challenges to the fee award. They first
argue the district court had no authority to award any fees related to the two
appeals because only our Court has that authority. The Federal Circuit has
interpreted the Patent Act’s fee-shifting provision as allowing district courts
to “award[] fees for the entire case, including any subsequent appeals”
because neither the text “nor its legislative history distinguishes between
awarding attorney fees in the district court and in the appellate court.” 26 We
again find it appropriate to extend the interpretation of the Patent Act fee-
shifting provision to our interpretation of the Lanham Act and find that
district courts do have the authority to award appellate fees under the
Lanham Act.
The district court’s decision to award fees for further litigation of the
attorney’s fee award did not contravene the mandate rule. On remand, a
lower court “must implement both the letter and spirit of [our] mandate, and
may not disregard [our] explicit directives.” 27 The mandate must be
brief. Having rejected the other portions of Alliance’s motion to strike above, we deny its
motion in full.
25
Alliance II, 919 F.3d at 295.
26
Therasense, Inc. v. Becton, Dickinson and Co., 745 F.3d 513, 517 (Fed. Cir. 2014)
(quoting Rohm & Haas Co. v. Crystal Chem. Co., 736 F.2d 688, 692 (Fed. Cir. 1984)); see
also PPG Indus. Inc. v. Celanese Polymer Specialities Co., 840 F.2d 1565, 1569 (Fed. Cir. 1998)
(“[T]he power to award attorney fees for appellate work is not the exclusive domain of an
appellate court.”).
27
Tollett, 285 F.3d at 364 (emphasis omitted) (cleaned up).
8
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“construed in the light of [our] opinion.” 28 In Alliance II, we “remand[ed]
for the district court to assess the amount of the award of fees in light of this
opinion.” 29 Notably, our opinion itself made two conclusions: first, we
affirmed the exceptional nature of the case allowing Alliance attorney’s fees,
and second, we instructed the district court to adjust the award to exclude
fees related to Alliance’s work on the word mark claim and claims it
voluntarily dismissed. 30 But we did not address whether Alliance was entitled
to further attorney’s fees for continued litigation of the fee award either
expressly or implicitly. As such, when the district court allowed Alliance fees
for continued fee-award litigation, it did not contradict either the letter or the
spirit of Alliance II. 31
Second, the Appellants argue Alliance failed to properly document its
fees because its time sheets do not differentiate between work done on the
composite mark claim as opposed to other claims. This argument ignores the
efforts of the district court to adjust the fee award for claims on which
28
Id. (emphasis omitted) (cleaned up).
29
Alliance II, 919 F.3d at 298.
30
Id.
31
The Appellants argue that the district court is an improper forum for considering
appellate fees. They do not argue, and so we do not address here, whether appellate fees
may be recovered under the Lanham Act only when an appeal itself is exceptional as several
other circuits have held. See, e.g., Tamko Roofing Prods., Inc. v. Ideal Roofing Co., Ltd., 294
F.3d 227, 230 (1st Cir. 2002) (applying a three-factor analysis to determine whether an
appeal is exceptional); Urban Outfitters, Inc. v. BCBG Max Azria Grp., Inc., 430 F. App’x
131, 134 (3d Cir. 2011) (unpublished) (applying the First Circuit’s three-factor analysis);
U-Haul Int’l, Inc. v. Jartran, Inc., 793 F.2d 1034, 1044 (9th Cir. 1986) (declining to award
appellate fees because the appeal was not exceptional); see also Therasense, 745 F.3d at 518
(declining to award appellate fees under the Patent Act because appeal was not
exceptional); Rohm & Haas, 736 F.2d at 692 (allowing award of appellate fees under the
Patent Act where “the appeal itself is exceptional”). We leave this question open for
another day.
9
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Alliance did not prevail. The court found that the word and composite mark
claims were “intertwined” and difficult to separate because the parties had
not distinguished between the word and composite mark claims prior to the
first appeal. It applied a 10% across-the-board reduction to estimate for work
related to the word mark claim and further reduced the award by $1,500 for
the claims voluntarily dismissed. 32 The Appellants make no argument for
why these reductions are an abuse of discretion. Even if they are correct that
Alliance’s billing entries are flawed, the proper remedy is “a reduction of the
award by a percentage intended to substitute for the exercise of billing
judgment,” which the district court did. 33
Finally, the Appellants argue the district court did not consider their
objections to Alliance’s fees motion. We disagree. The district court
considered each of these objections and provided reasons for rejecting them.
The Appellants make no argument that the district court’s rulings on any of
these objections were improper, and we find no abuse of discretion.
IV.
The Appellants append a First Amendment argument similar to one
raised in the prior two appeals, arguing that the imposition of an attorney fee
award would violate their free speech. This argument rests on the premise
that trademark restrictions should not apply to Coalition because it is
engaged in political speech, a challenge to the injunction itself. Coalition first
32
Indeed we acknowledged in our previous opinion the possibility that Alliance’s
work on the composite mark claim may be intertwined with its other claims, noting that the
district court had a “duty to make some attempt to adjust the fee award in an effort to reflect
an apportionment” even if it was not possible to make an exact apportionment. Alliance II,
919 F.3d at 298 (quoting Gracie v. Gracie, 217 F.3d 1060, 1070 (9th Cir. 2000)).
33
Saizan v. Delta Concrete Prods. Co, Inc., 448 F.3d 795, 799 (5th Cir. 2006)
(citation omitted).
10
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raised this argument during its original appeal of the district court’s grant of
summary judgment. The Alliance I panel declined to examine the First
Amendment issue then because it had not been preserved or ruled on below,
relying on the doctrine that “an appellate court, in reviewing a summary
judgment order, can only consider those matters presented to the district
court.” 34
The dissent argues that this decision was clearly erroneous and so our
panel is not bound by law of the case. We disagree. The clearly-erroneous
exception for law-of-the-case doctrine applies only in “extraordinary
circumstances.” 35 “Mere doubts or disagreement about the wisdom of a
prior decision of this or a lower court will not suffice for this exception. To
be ‘clearly erroneous,’ a decision must strike us as more than just maybe or
probably wrong; it must be dead wrong.” 36 While the Alliance I panel had the
discretion to address a waived argument, 37 its decision not to do so was not
“dead wrong.” Moreover, 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. 38
34
Alliance I, 901 F.3d at 506 (citing Frank C. Bailey Enters., Inc. v. Cargill, Inc., 582
F.2d 333, 334 (5th Cir. 1978)).
35
City of Pub. Serv. Bd. v. Gen. Elec. Co., 935 F.2d 78, 82 (5th Cir. 1991).
36
Id. (cleaned up).
37
See United States v. Martinez, 263 F.3d 436, 438 (5th Cir. 2001).
38
This Court has held that § 43(a) contains a commercial-use requirement, see
Seven-Up v. Coca-Cola Co., 86 F.3d 1379, 1383 & n.6 (5th Cir. 1996), but it has not extended
that requirement to § 32(1). Additionally, under similar circumstances, the Second Circuit
has held that § 32(1) applies to “[a] political organization that adopts a platform and
endorses candidates under a trade name.” United We Stand Am., Inc. v. United We Stand
Am. N.Y., Inc., 128 F.3d 86, 90 (2d Cir. 1997). Thus, this is not a case where our sister
circuits have made uniform holdings that Coalition’s speech falls outside the reach of
11
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Because Alliance I was not “dead wrong” to decline to address Coalition’s
First Amendment argument, we are bound by law of the case. The argument
is therefore not properly before us, and we do not address it.
V.
We affirm.
§ 32(1). See United States v. Garza, 706 F.3d 655, 662-63 (5th Cir. 2013) (finding “clear or
obvious” error where case law from sister circuits was “uniform[]”).
12
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James L. Dennis, Circuit Judge, dissenting:
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. See All. for Good Gov’t v. Coal. for Better Gov’t
(Alliance I), 901 F.3d 498, 506 (5th Cir. 2018). If I had taken part, I would
have worked to persuade the court that applying the Lanham Act to the non-
commercial 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 addi-
tional and flawed decisions that followed Alliance I. See All. for Good Gov’t v.
Coal. for Better Gov’t (Alliance II), 919 F.3d 291 (5th Cir. 2019); All. for Good
Gov’t v. Coal. for Better Gov’t, No. CV 17-3679, 2020 WL 1503533, at *1 (E.D.
La. Mar. 30, 2020).
It is not too late to correct Alliance I’s serious statutory and constitu-
tional 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. E.g.,
Schwartz v. NMS Indus., Inc., 575 F.2d 553, 554-55 (5th Cir. 1978); United
States v. Vahlco Corp., 895 F.2d 1070, 1072-73 (5th Cir. 1990). In my view,
that exception to the rule applies here. Alliance I and Alliance II were predi-
cated on a patent error, i.e., that the Lanham Act can be constitutionally ap-
plied to the noncommercial political speech of a political organization, such
as the political endorsements made by Coalition in this case. 1 And
1
See Seven-Up v. Coca-Cola Co., 86 F.3d 1379, 1383 & n.6 (5th Cir. 1996) (holding
that § 43(a) of the Lanham Act applies only to activities that are “‘commercial’ in
nature”); Procter & Gamble Co. v. Amway Corp., 242 F.3d 539, 547 & n.13 (5th Cir. 2001)
(same), abrogated on other grounds by Lexmark Intern., Inc. v. Static Control Components, Inc.,
572 U.S. 118 (2014); Farah v. Esquire Magazine, 736 F.3d 528, 541 (D.C. Cir. 2013) (holding
13
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misapplying the Lanham Act to noncommercial political speech creates an
anomalous precedent that will beget grave injustice—the imposition of liabil-
ity for, and consequent chilling of, the exercise of constitutionally-protected
free speech. What is more, the previous decisions in Alliance I & II set dan-
gerous precedents inviting federal courts to improperly involve themselves
in state and local political disputes.
Alliance for Good Government (Alliance) and Coalition for Better
Government (Coalition) are New Orleans-based nonprofit corporations
whose principal activity is the vetting and endorsement of political candidates
vying for local and state offices. Their missions and work can only be de-
scribed as political. Neither organization offers or advertises commercial
goods or services. And the speech in which they engage—purely political
speech—is at the core of the First Amendment’s protections. See Arizona
Free Enter. Club’s Freedom Club PAC v. Bennett, 564 U.S. 721, 734 (2011)
(“[T]he First Amendment has its fullest and most urgent application to
speech uttered during a campaign for political office.” (internal quotation
marks omitted)).
that the Lanham Act applies only to commercial speech); Utah Lighthouse Ministry, 527
F.3d 1045, 1052–54 (10th Cir. 2008) (same); Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672,
676–77 (9th Cir. 2005) (same); Taubman Co. v. Webfeats, 319 F.3d 770, 774 (6th Cir. 2003)
(same); Porous Media Corp. v. Pall Corp.,173 F.3d 1109, 1120 (8th Cir. 1999) (same); cf. S.F.
Arts & Athletics, Inc. v. U.S. Olympic Comm., 483 U.S. 552, 566 (1987) (Brennan, J.,
dissenting) (explaining that a “key” requirement of the Lanham Act is the rule that a
trademark violation occurs only when an offending trademark is applied to commercial
goods and services”); Radiance Found., Inc. v. N.A.A.C.P., 786 F.3d 316, 322 (4th Cir. 2015)
(“Although this case does not require us to hold that the [First Amendment’s] commercial
speech doctrine is in all respects synonymous with the” Lanham Act’s requirement that
an infringer’s use of a mark be “‘in connection with’” goods or services, “we think that
doctrine provides much the best guidance in applying the Act. The ‘in connection with’
element [in § 32(1) of the Act] reads very much like a description of different types of
commercial actions: ‘in connection with the sale, offering for sale, distribution, or advertising
of any goods or services.” (quoting 15 U.S.C. § 1114(1)(a)).
14
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Conversely, the Lanham Act, 15 U.S.C. § 1051, et seq. (“the Act”)—
the statute that Alliance alleges Coalition violated—exclusively regulates
commercial activity and commercial speech. 2 Because Coalition does not en-
gage in commercial activity or commercial speech, its conduct is beyond the
reach of the Lanham Act, and holding it liable under the statute for its politi-
cal speech violates the First Amendment’s protections for free speech. See
Seven-Up v. Coca-Cola Co., 86 F.3d 1379, 1383 n.6 (5th Cir. 1996); Procter &
Gamble Co. v. Amway Corp., 242 F.3d 539, 547 & n.13 (5th Cir. 2001) (same),
abrogated on other grounds by Lexmark Intern., Inc. v. Static Control Compo-
nents, Inc., 572 U.S. 118 (2014); Farah v. Esquire Magazine, 736 F.3d 528, 541
(D.C. Cir. 2013); Utah Lighthouse Ministry, 527 F.3d 1045, 1052–54 (10th Cir.
2008); Bosley Med. Inst., Inc. v. Kremer, 403 F.3d 672, 676–77 (9th Cir. 2005);
Taubman Co. v. Webfeats, 319 F.3d 770, 774 (6th Cir. 2003); Porous Media
Corp. v. Pall Corp.,173 F.3d 1109, 1120 (8th Cir. 1999); see also Radiance
Found., Inc. v. N.A.A.C.P., 786 F.3d 316, 321 (4th Cir. 2015) (observing that
Congress “did not intend for trademark laws to impinge the First Amend-
ment rights of critics and commentators”).
Nevertheless, in the first appeal in this case, see Alliance I, 901 F.3d at
506, this court committed serious error by holding Coalition’s speech subject
2
In addition to bringing a Lanham Act claim, Alliance’s complaint alleged a claim
under the Louisiana Unfair Trade Practices Act, La. Rev. Stat.§ 51:1401 et seq.
However, Alliance voluntarily dismissed that state-law cause of action in its motion for
summary judgment, leaving only its claim under the Lanham Act. See All. for Good Gov’t
v. Coal. for Better Gov’t, No. 17-3679, 2017 WL 6442156, at *1 (Oct. 23, 2017 E.D. La.).
Thus, although there is a body of common law extending trademark protection to various
entities, including nonprofits, see 6 Fletcher Cyclopedia of the Law of
Corporations § 2436 (Sept. 2020), the only cause of action at issue here is a claim
under the Lanham Act, a federal statute, which, as discussed below, carries a specific
requirement that the alleged infringer use the mark “in connection with the sale, offering
for sale, distribution, or advertising of any goods or service,” i.e., that the mark be used in
commerce. 15 U.S.C. § 1114(a).
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to injunction under the Lanham Act, and thus infringing on Coalition’s First
Amendment freedom of political expression.
Although a prior panel’s rulings in a case typically bind a subsequent
panel under the law-of-the-case doctrine, our decision in Alliance I, as noted
above, was manifestly erroneous, and adhering to it now works a clear injus-
tice. Thus, this panel’s hands are not tied by that decision. See Vahlco Corp.,
895 F.2d at 1072-73 (applying this exception to the law-of-the-case doctrine
where (1) a ruling in a prior appeal in the same litigation was “clearly in er-
ror,” and (2) it “would be manifestly unjust” to follow that prior decision;
accordingly, the previous decision “does not establish the law of the case and
is not binding on the Court in the present appeal”). This panel should thus
correct this court’s error in Alliance I by vacating each judgment based on
that error and remanding for a judgment of dismissal with prejudice with re-
spect to Alliance’s Lanham Act claim against Coalition. 3
Remedying the foundational flaw in Alliance I would of course obviate
the need to reach the subsequent mistakes by the district court that generated
the present appeal. But because the majority chooses not to correct the foun-
dational error of Alliance I, I must also address the errors committed by the
district court in its decision following the remand of the case to it after Alli-
ance II. In Alliance II, a panel affirmed in part the district court’s award of
3
Under this court’s Rules, we are empowered to recall our mandates in Alliance I
and Alliance II and reform them to direct vacatur of the judgments appealed from in order
“to prevent injustice.” 5th Cir. R. 41.2; see also Nat’l Sur. Corp. v. Charles Carter &
Co., 621 F.2d 739, 741 (5th Cir. 1980) (explaining that this court is empowered to “recall”
or “reform” a previous mandate “to prevent injustice”). Because abiding by those prior
decisions would, as discussed, work a manifest injustice, a fortiori the standard for recalling
and reforming our mandates in Alliance I and II is satisfied and, indeed, these measures are
necessary to avoid the highly unjust results of those rulings. See In re Incident Aboard the
D.B. Ocean King on Aug. 30, 1980, 877 F.2d 322, 323 (5th Cir. 1989) (holding that “the
equities of this case dictate the exercise of our power under Rule 41.2 to recall and reform
the mandate,” when “not once, but twice this Court has itself brought about” a “potential
injustice” that could only be averted by recalling the court’s mandate).
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attorneys’ fees to Alliance. Our mandate in Alliance II instructed the district
court only to adjust downward its $68,237.25 award of attorneys’ fee to Alli-
ance on remand. Instead, the district court awarded additional fees for time
Alliance spent litigating the two appeals and its motion for attorneys’ fees,
resulting in a total award to Alliance of $148,006.15. The court then sua
sponte joined Coalition’s attorney, Darleen Jacobs, as a party to the case and,
purporting to act pursuant to the Lanham Act’s fee-shifting provision, 15
U.S.C. § 1117(a), held her personally liable for the full $148,006.15 fee award.
In so doing, the district court plainly violated the mandate rule, the funda-
mental requirement that on remand a district court can do one thing and one
thing only—scrupulously implement this court’s mandate. See, e.g., United
States v. Matthews, 312 F.3d 652, 657 (5th Cir. 2002); Tollett v. City of Kemah,
285 F.3d 357, 364 (5th Cir. 2002).
What is more, § 1117(a) of the Act nowhere states or implies that a
litigant’s counsel can be held liable for an award of attorneys’ fees, and it thus
does not authorize the district court’s imposition of personal liability on Co-
alition’s counsel. See Healey v. Chelsea Res., Ltd., 947 F.2d 611, 624 (2d Cir.
1991) (“When a fee-shifting statute that authorizes the courts to award attor-
neys’ fees to prevailing parties does not mention an award against the losing
party’s attorney, the appropriate inference is that an award against attorneys
is not authorized.”); see also Baker v. DeShong, 821 F.3d 620, 623-24 (5th Cir.
2016) (characterizing the fee-shifting provisions in the Lanham Act and Pa-
tent Act as “statutory equivalents” and determining that “Congress in-
tended” the provisions “to have the same meaning” given their “parallel
purpose, structure, and language”); cf. Phonometrics, Inc. v. ITT Sheraton
Corp., 64 F. App’x 219, 222 (Fed. Cir. 2003) (vacating imposition of liability
for attorneys’ fees on losing party’s counsel under the Patent Act’s identi-
cally-worded fee-shifting provision because counsel cannot be “liable for fees
awarded under § 285 [of the Act]; it can only be liable for excess fees awarded
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under [28 U.S.C.] § 1927”); cf. also Tech. Props. Ltd. LLC v. Canon Inc., No.
C 14-3640 CW, 2017 WL 2537286, at *5 (N.D. Cal. Jan. 26, 2017) (holding
that a litigant’s counsel could not be held liable for an attorneys’ fees award
under § 285 of the Patent Act based on the “the text of the statute”), aff’d,
718 F. App’x 987 (Fed. Cir. 2018) (mem.).
In sum, this court’s decision in Alliance I to hold Coalition liable under
the Lanham Act for noncommercial political speech was clearly erroneous
and following it now will result in manifest injustice. Thus, this panel is not
bound by that errant determination and should correct it by vacating judg-
ments based thereon and directing the district court to dismiss Alliance’s
Lanham Act claim with prejudice. See Schwartz, 575 F.2d at 554-55 (explain-
ing “that ‘the law case doctrine’ is not an inexorable command” and need
not be adhered to when a prior “decision was clearly erroneous and would
work a manifest injustice”). Moreover, even if this court continues to mis-
takenly adhere to Alliance I, the district court committed multiple errors on
remand from Alliance II that would necessitate reversal. Because the major-
ity fails to rectify this court’s error in Alliance I and because it ratifies the
district court’s errors on remand, I respectfully dissent.
I.
The overriding problem in this case is that the Lanham Act plainly
does not reach the noncommercial political speech in which Coalition en-
gages and holding otherwise curtails important First Amendment free speech
guarantees. 4 Enacted in 1946, the Lanham Act “was designed to protect both
4
In Alliance I, the panel determined that Coalition did not preserve below its argu-
ments (1) that the Lanham Act does not apply to noncommercial or political speech and (2)
that its political speech was protected by the First Amendment, and held these issues were
therefore “waived,” refusing to consider Coalition’s contentions. 901 F.3d at 506. This
was error for at least three reasons. First, it is axiomatic that a party can only be liable for
violating a statute if the statute actually applies to the party and its acts (or omissions). And
determining whether a particular statute applies to a particular party necessarily requires
courts to interpret that statute. See, e.g., Marbury v. Madison, 5 U.S. (1 Cranch) 137, 178
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(1803) (“Those who apply the rule to particular cases, must of necessity expound and in-
terpret that rule.”). Indeed, it is the very task of courts “to construe what Congress has
enacted.” Rumsfeld v. F. for Acad. & Institutional Rts., Inc., 547 U.S. 47, 56 (2006) (quoting
Duncan v. Walker, 533 U.S. 167, 172 (2001)). Logically, then, for the Alliance I panel to
have concluded that it could hold Coalition liable under the Lanham Act, the panel neces-
sarily must have determined that the statute’s scope covers Coalition’s conduct; implicit
in that determination is Alliance I’s (demonstrably wrong) conclusion that the Act extends
to noncommercial political speech. Thus, regardless of the Alliance I panel’s claim that
Coalition waived its defense as to the interpretation of the Lanham Act, there was simply
no way for the panel to hold Coalition liable without it concluding that the Lanham Act
may, in its view, validly constrain noncommercial political speech. But as discussed below,
the Act’s history, text, and the plethora of cases interpreting the Act make clear that it does
not apply to noncommercial or political speech.
Second, and as explained in more detail infra, Alliance I’s application of the Lan-
ham Act to Coalition’s noncommercial political speech infringes on First Amendment free
speech rights. Again, the Alliance I panel necessarily had to interpret the Lanham Act in
order to impose liability under it on Coalition. But applying the Lanham Act in this way
directly conflicts with this court’s “obligat[ion] to construe the statute to avoid constitu-
tional problems if it is fairly possible to do so.” Boumediene v. Bush, 553 U.S. 723, 787
(2008) (cleaned up). A reading of the Act that limits its reach to commercial speech and,
moreover, precludes it from touching purely political speech is not only “fairly possible”
but is the only plausible interpretation of the statute. Accordingly, the Alliance I panel failed
to uphold its duty to read the Act in a manner that avoids raising constitutional doubts.
Third, even assuming Coalition did not preserve in the district court its defenses
to an injunction under the Lanham Act, it nevertheless pressed those arguments on appeal
in Alliance I, and the Alliance I panel therefore erred in failing to apply the plain-error
standard of review to Alliance’s unpreserved arguments. Decades ago, “our Court . . .
adopted the practice of reviewing unpreserved error in a civil case using the plain-error
standard of review.” Crawford v. Falcon Drilling Co., Inc., 131 F.3d 1120, 1123 (5th Cir.
1997); see also Sec. & Exch. Comm’n v. Life Partners Holdings, Inc., 854 F.3d 765, 783 (5th
Cir. 2017) (“We review unpreserved challenges in civil cases for plain error.”); Douglass v.
United Servs. Auto. Ass’n, 79 F.3d 1415, 1428-29 (5th Cir. 1996) (en banc) (plain error
applies to a party’s failure to timely file written objections to a magistrate judge’s report
and recommendation), superseded by statute on other grounds, 28 U.S.C. § 636(b)(1). Under
this standard, which is identical to plain-error review in the criminal context, the court
“must determine (1) if there was error, (2) if that error was plain, (3) if the error affects
substantial rights, and (4) whether allowing that error to stand seriously affects the fairness,
integrity, or public reputation of judicial proceedings.” Crawford, 141 F.3d at 1123-24
(adopting the four-prong plain-error test as articulated in United States v. Olano, 507 U.S.
725, 732, (1993)).
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consumers’ confidence in the quality and source of goods and services and
protect businesses’ goodwill in their products by creating a federal right of
action for trademark infringement.” Peaches Ent. Corp. v. Ent. Repertoire As-
socs., Inc., 62 F.3d 690, 692 (5th Cir. 1995) (citing S. Rep. No. 1333, 79th
Cong., 2d Sess. at 1). The Act’s text, its legislative history, and the
Considering the first prong of the test, it was error to extend the Lanham Act to
noncommercial political speech because doing so, as detailed infra, violates the statute,
which applies only to commercial speech, and tramples on free speech rights. Second, this
legal error was plain. We have previously held that several of the statute’s provisions—
including a provision pertaining to unregistered trademarks that is analogous to the
provision protecting registered trademarks at issue here—apply only to commercial
speech. See Seven-Up v. Coca-Cola Co., 86 F.3d at 1383 & n.6; Procter & Gamble Co., 242
F.3d at 547 & n.13. And even if no Fifth Circuit decision squarely holds that the particular
provision of the Lanham Act invoked here is limited to commercial speech, the “absence
of circuit precedent does not prevent the clearly erroneous application of statutory law from
being plain error.” United States v. Brown, 316 F.3d 1151, 1158 (10th Cir. 2003) (cleaned
up) (quoting United States v. Evans, 155 F.3d 245, 252 (3d Cir. 1998)). The obviousness of
the error in the district court’s interpretation of the Lanham Act is evident from the Act’s
text, its legislative history, and the need to give the Act a construction that does not conflict
with the First Amendment. It is also underscored by the near uniform holdings of our sister
circuits that the Act does not reach noncommercial speech. Cf. United States v. Garza, 706
F.3d 655, 662-63 (5th Cir. 2013) (error was clear or obvious because, although “this court
had not [yet] definitively answered” the question presented, the caselaw on the issue
among all five of our sister circuits was “uniform[]”). Third, the error affected Coalition’s
substantial rights. To affect substantial rights, the error generally must be “prejudicial; it
must affect the outcome of the proceedings.” Crawford, 131 F.3d at 1125 (quoting United
States v. Calverly, 37 F.3d 160, 164 (5th Cir. 1994) (en banc), abrogated in part on other
grounds by Johnson v. United States, 520 U.S. 461 (1997)). Obviously, the mistake in
applying the Lanham Act to Coalition’s noncommercial political endorsements affected
the outcome of the case—indeed, was dispositive of the case—because Coalition would not
have been liable for violating the Act had the statute been construed properly. Thus, the
error that confronted the Alliance I panel was plain and affected Coalition’s substantial
rights. The Alliance I panel therefore had the discretion to notice and correct the error, and
it should have done so because holding Coalition liable for violating the Lanham Act by its
political speech muzzles the political organization’s free speech rights, chills the speech of
other political entities, and inappropriately calls upon federal courts to referee state and
local political disputes, all of which “seriously affect[] the fairness” and “public reputation
of judicial proceedings.” Crawford, 131 F.3d at 1123 (quoting Olano, 507 U.S. at 732).
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imperative to give the statute a constitutionally permissible construction all
lead to the inescapable conclusion that the Act does not reach noncommer-
cial political speech.
Start with the text. The Act defines “commerce” as “all commerce”
that Congress “may lawfully regulate[].” 15 U.S.C. § 1127. Its purpose, inter
alia, is to “secure to the owner of the mark the goodwill of his business and
to protect the ability of consumers to distinguish among competing produc-
ers.” Two Pesos, Inc. v. Taco Cabana Inc., 505 U.S. 763, 774 (1992) (internal
quotation marks omitted).
Section 43(a) of the statute, which addresses false and misleading de-
scriptions of unregistered marks, states in part that:
Any person who, on or in connection with any good or services,
. . . uses in commerce any word, term, name, symbol, or false
designation of origin, . . . which . . . is likely to cause confusion
. . . as to the origin . . . of [another person’s] goods, services, or
commercial activities, . . . shall be liable in a civil action by any
person who believes that he or she is likely to be damaged by
such act.
15 U.S.C. § 1125(a). The provision is meant to protect “against a myriad of
deceptive commercial practices.” Seven-Up Co., 86 F.3d at 1383 (emphasis
added) (quoting Res. Dev. v. Statue of Liberty-Ellis Island Found.,926 F.2d 134,
139 (2d Cir. 1991)). Unsurprisingly, we have “previously determined that
§ 43(a) . . . only applies to commercial speech.” TMI, Inc. v. Maxwell, 368
F.3d 433, 436 n.2 (5th Cir. 2004) (citing Procter & Gamble Co., 242 F.3d at
547). The provision’s legislative history supported our conclusion. See
Seven-Up Co., 86 F.3d at 1383 n.6. (citing 134 Cong. Rec 31,851 (Oct. 19,
1988) (statement of Rep. Kastenmeier) (commenting that the reach of Sec-
tion 43(a) “specifically extends only to false and misleading speech that is
encompassed within the ‘commercial speech’ doctrine developed by the
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United States Supreme Court”)); see also Procter & Gamble Co., 242 F.3d at
547 n.13 (same).
At issue in this case is § 32(1) of the Act, which covers infringement
of registered marks. 15 U.S.C. § 1114(1). Section 32(1) creates a cause of
action when trademark infringement occurs “in connection with the sale, of-
fering for sale, distribution, or advertising of any goods or services” and is
“likely to cause confusion, or to cause mistake, or to deceive.” Id.Based on the similar language between §§ 43(a) and 32(1), courts have
concluded that claims under the two provisions have the same elements, with
the exception that § 32(1) applies solely to registered marks. See Lamparello
v. Falwell, 420 F.3d 309, 312-13 (4th Cir. 2005); cf. Margreth Barrett, Finding
Trademark Use: The Historical Foundation for Limiting Infringement Liability
to Uses “In the Manner of A Mark”, 43 Wake Forest L. Rev. 893, 942–
43 (2008) (“While the statutory language of sections 32(1)(a) and 43(a) dif-
fers, the provisions are generally understood to impose the same standard for
infringement.”). “To prevail under either cause of action, the trademark
holder must prove:
(1) that it possesses a mark; (2) that the [opposing party] used
the mark; (3) that the [opposing party’s] use of the mark oc-
curred ‘in commerce’; (4) that the [opposing party] used the
mark ‘in connection with the sale, offering for sale, distribu-
tion, or advertising’ of goods or services; and (5) that the [op-
posing party] used the mark in a manner likely to confuse con-
sumers.”
Lamparello, 420 F.3d at 313 (alterations in original). Significantly, both pro-
visions require that actionable infringement be “in connection with” goods
or services in a manner likely to cause confusion to consumers. Compare 15
U.S.C. § 1125(a) (use of mark “in connection with any goods or services”),
with id. § 1114(1) (use of mark “in connection with the sale, offering for sale,
distribution, or advertising of any goods or services”). “This is commonly
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described as the commercial use requirement.” Utah Lighthouse Ministry,
527 F.3d at 1052.
In light of this requirement, the clear majority of circuits to have con-
sidered whether the Act applies to any noncommercial speech have deter-
mined that it does not. See Bosley Med. Inst., Inc., 403 F.3d at 676–77 (con-
struing § 32(1)); Taubman Co., 319 F.3d at 774 (same); Farah, 736 F.3d at
541; Utah Lighthouse Ministry, 527 F.3d at 1052–54; Porous Media Corp..,173
F.3d at 1120; cf. S.F. Arts & Athletics, Inc., 483 U.S. at 566 (Brennan, J., dis-
senting); Radiance Found., Inc., 786 F.3d at 322. 5
In the instant case, Coalition’s use of its emblem certainly was not “in
connection” with commercial activity. Coalition exists solely to engage in
the endorsement of candidates for public office. As the district court recog-
nized, “[p]eople are not buying products here.” Because these entities’ ac-
tivities are not commercial in nature, the Lanham Act simply does not apply
to this case.
Applying the Lanham Act in the manner the Alliance I panel did was
also clearly inconsistent with Congress’s intent in enacting the statute. Con-
gress specifically recognized the constitutional problems of creating liability
for free speech and sought to avoid doing so. See Radiance Found., Inc., 786
F.3d at 321; see also MasterCard Int’l Inc. v. Nader 2000 Primary Comm., Inc.,
No. 00 CIV. 6068, 2004 WL 434404, at *7–8 (S.D.N.Y. Mar. 8, 2004) (“The
5
In United We Stand, Inc. v. United We Stand, America New York, Inc., the Second
Circuit held that that noncommercial political activities may be “services” within the
meaning of the Lanham Act but also stated that a “crucial” factor in permitting such a
conclusion is that the infringer “us[e] the Mark not as a commentary on its owner, but
instead as a source identifier.” 128 F.3d 86, 89-92 (2d Cir. 1997). Not only is the Second
Circuit the sole outlier court in an otherwise uniform line of federal appellate authority
holding that the Lanham Act does not apply to noncommercial speech, but the Second Cir-
cuit is also incorrect that purely political speech is a “service” under the Lanham Act.
“[S]uch a service is not being rendered in commerce[;] it is being rendered as part of the
political process.” Tax Cap Comm. v. Save Our Everglades, Inc., 933 F. Supp. 1077, 1081
(S.D. Fla. 1996).
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legislative history of the Lanham Act clearly indicates that Congress did not
intend for the Act to chill political speech.”). Congress’s concerns were well
founded. As stated, the Alliance I panel’s interpretation of the Lanham Act
raises serious constitutional concerns. Coalition limits itself to endorsements
of political candidates, so its use of an avian emblem similar to Alliance’s oc-
curred only in the context of engaging in political speech. Imposing liability
under the Act on Coalition for its political speech, then, results in the precise
problem Congress aimed to avoid: creating liability under federal trademark
law for actors exercising their free speech rights.
It is well established that commercial speech—that is, speech that
does “no more than propose a commercial transaction,” Bolger v. Youngs
Drug Prods. Corp., 463 U.S. 60, 66 (1983)—is accorded only a “measure of
First Amendment protection.” Indeed, “the government may freely regu-
late” misleading commercial speech, the very speech that the Lanham Act
was meant to target. Florida Bar v. Went For It, Inc., 515 U.S. 618, 623-24
(1995). By contrast, free speech protections are at their zenith in the context
of political speech precisely because such speech is at the heart of the values
embodied in the First Amendment. See McIntyre v. Ohio Elecs. Comm’n, 514
U.S. 334, 346 (1995) (“Discussion of public issues and debate on the qualifi-
cations of candidates are integral to the operation of the system of govern-
ment established by our Constitution. The First Amendment affords the
broadest protection to such political expression in order to assure the unfet-
tered interchange of ideas for the bringing about of political and social
changes desired by the people.” (cleaned up)). Extending liability under the
Lanham Act to noncommercial political speech risks eroding the First
Amendment’s safeguards for political expression. 6 Finally, under the canon
6
To the extent that there may be concern over permitting a political organization
to use marks that are confusingly similar to those of another political entity, Justice
Brandeis’s concurring opinion in Whitney v. California, 274 U.S. 357, 377 (1927) (Brandeis,
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that “statutes should be interpreted to avoid constitutional doubts,” Clark v.
Martinez, 543 U.S. 371, 379 (2005), the Lanham Act ought not be construed
to apply to political speech in order to avoid a construction of the Act that
could conflict with the First Amendment.
Because Coalition only used its emblem in the context of political
speech, the Lanham Act simply and obviously cannot be applied to its speech.
Thus, the Alliance I panel’s decision to impose on Coalition liability under
the Act was clearly erroneous. 7 Moreover, adhering to that grievously wrong
decision will result in a manifest injustice by stifling the political speech that
is key to the functioning of our democracy. The law-of-the-case doctrine
therefore does not stand as an impediment to correcting our past mistakes,
J., concurring), which Justice Holmes joined, suggests an answer: “If there be time to
expose through discussion the falsehood and fallacies, to avert the evil by the processes of
education, the remedy to be applied is more speech, not enforced silence.”
7
For nearly sixty years, this court has repeatedly and consistently explained that
the law of the case does not apply when a prior “decision is clearly erroneous and works
manifest injustice.” Lincoln Nat. Life Ins. Co. v. Roosth, 306 F.2d 110, 113, (5th Cir. 1962);
accord Lumberman’s Mut. Cas. Co. v. Wright, 322 F.2d 759 (5th Cir. 1963); White v. Murtha,
377 F.2d 428, 432 (5th Cir. 1967); Morrow v. Dillard, 580 F.2d 1284, 1290 (5th Cir. 1978);
Goodpasture, Inc. v. M/V Pollux, 688 F.2d 1003, 1005-06 (5th Cir. 1982). Clear error is a
familiar legal standard for reviewing prior decisions that applies across various contexts.
For example, appellate courts apply clear error in reviewing district court’s factual findings,
Anderson v. City of Bessemer City, 470 U.S. 564, 573 (1985), and in reviewing discretionary
decisions by district courts, United States v. Walker, 772 F.2d 1172, 1176 n.9 (5th Cir. 1985).
A decision is clearly erroneous when the reviewing court is left with “a definite and firm
conviction” that the previous court was in error. Id. Under this standard, based on the
foregoing analysis, it is plain that the decision in Alliance I was clearly erroneous. On a
handful of occasions, this court has stated that for a previous decision to be “clearly
erroneous” such that the exception to the law-of-the-case doctrine for clearly erroneous
and manifestly unjust rulings may apply, the prior decision must have been “dead wrong.”
E.g., City Pub. Serv. Bd. v. Gen. Elec. Co., 935 F.2d 78, 82 (5th Cir. 1991). But the “dead
wrong” language has been employed infrequently and inconsistently and does not alter or
supplant the proper and longstanding test for assessing whether a previous ruling was
clearly erroneous—that the appellate court must have a definite and firm conviction that
the prior decision was wrong.
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and the majority errs in failing to do so. See Vahlco Corp., 895 F.2d at 1072-
73.
II.
Beyond the fundamental error in Alliance I that has infected the entire
litigation, the district court’s missteps on remand from Alliance II raise their
own set of problems. Foremost among them, the able district court acted
outside the narrow ambit of our mandate. In Alliance II, we directed the dis-
trict court to undertake only one action on remand: reducing and reallocating
its attorneys’ fee award to Alliance. 919 F.3d 291. Rather than heeding our
mandate, the district court (1) increased its fee award by awarding to Alliance
fees incurred for time spent on the appeals in Alliance I & II and in prosecut-
ing its motion for attorneys’ fees, (2) sua sponte joined Jacobs as a party, and
(3) held Jacobs personally liable for the total augmented award. A brief sum-
mary of this case’s lengthy procedural history makes manifest the district
court’s error.
At the outset of the litigation, Alliance claimed that both Coalition’s
“word mark”—its trade name, Coalition for Better Government—and its
“composite mark”—its emblem—infringed on Alliance’s marks. The dis-
trict court agreed, enjoining Coalition from using both its trade name and em-
blem. Coalition appealed, and this court concluded that only Coalition’s em-
blem, and not its trade name, violated the Lanham Act. The Alliance I panel
thus modified the district court’s injunction to restrain only Coalition’s use
of the emblem. See 901 F.3d at 514.
During the pendency of the first appeal, the district court determined
that the case was “exceptional” within the meaning of the Lanham Act’s at-
torneys’ fees provision, 15 U.S.C. § 1117(a), and thus awarded Alliance, as
the prevailing party, $68,237.50 in attorneys’ fees. Coalition appealed, and
this court, in the second appeal in this matter, affirmed the conclusion that
the case warranted an award of attorneys’ fees. Alliance II, 919 F.3d at 297.
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The Alliance II panel noted, however, this court’s earlier determina-
tion in Alliance I that Alliance had prevailed only on its emblem claim. Hence,
in Alliance II, “we remand[ed] for the district court to reassess the amount of
fees” to omit work that furthered Alliance’s trade-name claim from its fee
calculation. Id. at 293. Specifically, our mandate called only for the district
court “to account for billed time for claims on which Alliance did not prevail,
and to adjust the fee award accordingly.” Id. at 298. We gave no indication
that the district court should take any action other than a downward adjust-
ment of the attorneys’ fees award.
In failing to hew to the constraints we imposed on remand, the district
court violated the well-established mandate rule. That rule “provides that a
lower court on remand must implement both the letter and spirit of the [ap-
pellate court’s] mandate.” Tollett, 285 F.3d at 364 (internal quotation marks
omitted) (alterations in original). Notably, the mandate rule extends both to
those matters “decided expressly or by necessary implication” by the appeals
court. DeJoria v. Maghreb Petroleum Expl., S.A., 938 F.3d 381, 394 (5th Cir.
2019). A district court is “without power to do anything which is contrary to
either the letter or spirt of the mandate construed in the light of the opinion of
[the] court deciding the case.” Id. (alterations in original) (internal quotation
marks omitted).
The Supreme Court’s decision in Briggs v. Pa. R.R. Co., 334 U.S. 304,
305 (1948), is instructive on how a district court can run afoul of the mandate
rule. In that case, a jury returned a verdict of $42,500 in favor of the plaintiff,
but the district court granted a post-verdict motion to dismiss the case for
lack of jurisdiction. Id. The appellate court, however, reversed and directed
that the district court, in accordance with the jury’s verdict, enter judgment
for the plaintiff. Id. On remand, despite the fact that the appellate court’s
mandate “made no provision for interest,” the district court entered judg-
ment and “added to the verdict interest from the date the [jury returned its
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verdict] to the date of the judgment.” Id. The Supreme Court determined
that it was “clear that the interest was in excess of the terms of the mandate
and hence was wrongly included” by the district court. Id. at 306. Briggs thus
stands for the proposition that a district court violates the mandate rules
where it takes actions on remand that the appeals court “made no provision
for,” thereby exceeding the “terms of the [appellate] mandate.” Id.Tollett v. City of Kemah presented very similar facts to the present ap-
peal, and our decision there underscores the district court’s error. 285 F.3d
at 364. In Tollett, a district court awarded $5,000 in sanctions against the
defendant city and two of its employees. The amount of the award was pur-
portedly to compensate the plaintiff for attorneys’ fees and court costs in-
curred in connection with the sanctioned entities’ discovery abuses. On ap-
peal, the plaintiff conceded that the quantum of the sanctions was not sup-
ported by proof of reasonable fees and costs. Thus, this court vacated the
award and “remand[ed] for a redetermination and assessment of reasonable
attorney’s fees and costs.” Id. at 362 (emphasis omitted).
But on remand the district court imposed sanctions and attorneys’
fees against not only the city but also the city’s counsel, while dropping the
fees it had previously assessed against the city’s employees. Id. at 363. The
city and its attorney appealed, contending that the district court violated the
mandate rule. We agreed, explaining that it was “clear from our opinion” in
the first appeal “that the district court was not to redetermine . . . whether,
and against whom, sanctions should be imposed. The opinion expressly di-
rected the district court only to determine the proper amount to impose as . . .
sanctions.” Id. at 365. Accordingly, we, once again, vacated the sanctions and
fee award. Id. at 366; see Doe v. Chao, 511 F.3d 461, 466-67 (4th Cir. 2007)
(holding that district court violated the mandate rule when the appeals
court’s mandate called only for reconsideration of award of attorneys’ fees
for work performed during district-court proceedings but, on remand,
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district court awarded fees for work performed during appellate phase of the
litigation); Wang v. Douglas Aircraft Co., 221 F.3d 1350, *1 (9th Cir. 2000)
(unpublished) (district court violated mandate rule where mandate directed
court to determine whether a foreign law firm was entitled to attorneys’ fees
based on the work performed by the firm but district court instead awarded
fees in accordance with terms of a letter agreement between the foreign firm
and a local firm that reallocated fees; appeals court’s mandate “precluded
any . . . inquiry” other than whether foreign firm was entitled to fees based
on its legal services, not a letter agreement).
Here, too, the import of our directive to the district court on remand
was “clear”: it was only to reevaluate its attorneys’ fee calculation in order
to award Alliance fees solely for time spent on the emblem claim, thereby
reducing its earlier award. The “necessary implication” of our mandate was
that the district court was barred from doing anything other than reducing
the fee award. DeJoria, 935 F.3d at 394. Venturing beyond our delimited
directive, the district court sua sponte joined Jacobs as a party to the case; held
her personally liable; and awarded additional attorneys’ fees against Coali-
tion and Jacobs for Alliance’s prosecution of both appeals and its motion for
attorneys’ fees, causing the fee award to mushroom to over $148,000. But
as in Tollett, our directive to the district court “was not to redetermine . . .
against whom[] sanctions should be imposed,” nor was it to augment the
sanctions. See id. at 365.
Coalition is therefore correct that the district court’s order was di-
rectly contrary to our mandate. The majority, however, fails to mention this
argument, characterizing Jacobs and Coalition as merely contending that the
district court was an “improper forum” for considering appellate attorneys’
fees. See Maj. Op. at 10 n.54. True, Coalition made that assertion in its brief-
ing on appeal, but it also expressly objected to the district court’s award of
appellate attorneys’ fees on a second basis; Coalition explained that the
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district court’s decision is inconsistent with Alliance II because in that appeal
we ordered the district court only to recalculate attorneys’ fees to account for
the claim on which Alliance prevailed, and, as Coalition states in its brief,
“[n]othing in” our “opinion address[ed]” appellate attorneys’ fees.
Because Coalition adequately raised the issue of the district court’s
compliance with the mandate rule, and because the district court did not
faithfully apply our mandate in Alliance II, I cannot agree with the majority’s
endorsement of the decision to join attorney Jacobs as a party to the case or
to award Alliance additional attorneys’ fees for time incurred in litigating the
two appeals and its fees motion.
III.
Regrettably, in holding Jacobs personally liable for the award of attor-
neys’ fees, this court becomes the first to my knowledge to sanction such li-
ability against a party’s counsel under the Lanham Act’s fee-shifting provi-
sion, 15 U.S.C. § 1117(a). Indeed, the Federal Circuit, in construing that the
Patent Act’s identically-worded fee-shifting provision, has expressly held
that the provision cannot be used to impose liability for attorneys’ fees on a
party’s counsel. Phonometrics, Inc., 64 F. App’x at 222 (“Section 285 is a fee
shifting statute that in exceptional cases may require the losing party to reim-
burse the prevailing party its attorney fees. Sheraton[, the prevailing party,]
has provided us with no legal basis for entering a fee award against the losing
party’s attorney under § 285. . . . Counsel for Phonometrics is not liable for
fees awarded under § 285.”); see also Baker, 821 F.3d at 623-24 (borrowing
attorneys’ fees jurisprudence under the Patent Act to interpret the fee-shift-
ing provision in the Lanham Act).
That no court has previously permitted imposing attorneys’ fees
against a party’s counsel under the Lanham Act and that the Federal Circuit
has held that imposing such fees on an attorney is not authorized by the Pa-
tent Act is unsurprising in light of the text of the statutes’ attorneys’ fees
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provisions, which both read: “The court in exceptional cases may award rea-
sonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a); 35 U.S.C.
§ 285. Notably absent from the provisions is any explicit authorization to
impose attorneys’ fees against a party’s counsel. “When a fee-shifting stat-
ute that authorizes the courts to award attorneys’ fees to prevailing parties
does not mention an award against the losing party’s attorney, the appropri-
ate inference is that an award against attorneys is not authorized.” Healey,
947 F.2d at 624. Section 1117(a) thus “stands in contrast to other sections
and [Federal] Rules [of Civil Procedure] that expressly provide for the impo-
sition of sanctions against attorneys,” id., such as 28 U.S.C. § 1927, which
empowers courts to order “[a]ny attorney” who “multiples the proceedings
in any case unreasonably and vexatiously” to pay the costs and attorneys’
fees incurred because of their conduct, and Rule 11(b), which authorizes dis-
trict courts to award sanctions against “attorney[s]” for misconduct in an
array of circumstances. The availability of these traditional—and effective—
tools to discipline wayward behavior by counsel means that courts will not be
hampered in their ability to police proceedings without applying § 1117(a)
against a litigant’s counsel; similarly, these well-established provisions en-
sure that parties can recover costs incurred as a result of opposing counsel’s
unprofessional conduct.
Further underscoring that Jacobs cannot be held liable for the award
of attorneys’ fees under § 1117(a) for her representation of Coalition is that,
even in cases where courts have imposed attorneys’ fees personally on indi-
viduals who were not party to the underlying litigation, they have done so not
against a party’s counsel; rather, attorneys’ fees have been assessed against
individuals who served as a company’s president, owner, or sole shareholder
when that individual’s conduct caused the case to be “exceptional” under a
proper interpretation of the Lanham or Patent Acts. See, e.g., Mach. Corp. of
Am. v. Gullfiber AB, 774 F.2d 467, 475 (Fed. Cir. 1985) (holding that an
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individual who was “not a proper party to” the claims for violation of the
Patent Act “may be assessed fees under § 285 [of the Patent Act] if his con-
duct supports a finding that the case is exceptional” (citing Hughes v. Novi
American, Inc., 724 F.2d 122 (Fed. Cir. 1984)); Iris Connex, LLC v. Dell, Inc.,
235 F. Supp. 3d 826, 852-53 (E.D. Tex. 2017) (imposing attorneys’ fees
against a company that filed a meritless patent-infringement suit and holding
the owner of the company jointly liable for the fees where the owner was the
“driving force behind th[e] litigation” and was “responsible” for making the
case exceptional). Indeed, the majority states that its decision to hold Jacobs
personally liable is rooted in the notion that “[a]n officer is individually liable
for any tortious conduct that he committed in connection with his corporate
duties.” Maj. Op. at 7 (internal quotation marks omitted). But the principle
of imposing liability for attorneys’ fees not only on the business that is the
party to the case but also on the individual who stands behind that business
and directs its conduct has no application to an attorney representing her cli-
ent; attorneys initiate and prosecute cases at the behest of their clients, but it
is the client who ultimately must decide whether to bring a case. Thus, when
the fee-shifting provision is applied to individuals who were not party to the
underlying litigation, it should be reserved for those who, in their capacity as
a high-level officer or owner of an organization, make a case exceptional. See
Mach. Corp. of Am., 774 F.2d at 475. 8
8
The majority cites Jacobs’s leadership role within Coalition as a basis for holding
her personally liable for the fee award. Maj. Op. at 8. But this misapprehends the basis of
the district court’s decision to hold Jacobs liable for the fee award; the district court
expressly cited Jacobs’s conduct as Coalition’s counsel—not her position within Coalition’s
corporate structure—as rendering the case “exceptional” under the Lanham Act and thus
justifying imposing liability for the award on her personally. Indeed, in its order holding
Jacobs personally liable, the district court discussed only Jacobs’s actions as an attorney for
Coalition: “Jacobs is personally responsible for” filing a meritless “motion for summary
judgment, . . . counterclaim, and . . . motion to dismiss because she personally signed them,
thus certifying that they were not presented for any improper purpose and were not
frivolous.” The court further found that Jacobs’s conduct rendered the case exceptional
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In sum, Coalition and Jacobs may not be held liable for anything in this
case because no Lanham Act claim arises from Coalition’s noncommercial
political speech, and, independently of that, no Lanham Act defendant’s
counsel may be cast for attorneys’ fees under the Act’s fee-shifting provi-
sion. 9 See Healey, 947 F.2d at 624, cf. Phonometrics, Inc., 64 F. App’x at 222.
Bereft of authority under the Lanham Act to impose fees directly on
Jacobs, the district court’s decision resembles an attempt to pierce Coali-
tion’s corporate veil. But during the proceedings in the district court, Alli-
ance never attempted to pierce Coalition’s corporate veil; in fact, its motion
because she was “personally responsible” for abuses in discovery that necessitated
issuance of a protective order to prevent a wasteful deposition; “she was the one who
insisted on proceeding with the depositions even after the Court granted summary
judgment and Alliance informed the Court that it would not pursue its remaining claim.”
Wholly absent from the court’s order is any mention of actions undertaken by Jacobs in her
position as an officer or principal of Coalition. The majority’s citations to Nelson v. Adams
USA, Inc., 529 U.S. 460 (2000) and Insituform Technologies, Inc. v. CAT Contracting, Inc.,
385 F.3d 1360 (Fed. Cir. 2004) are therefore inapposite; those cases concern imposition of
personal liability for fees on non-lawyers who had senior roles in organizations that had
already been held liable for the fees in question. It was precisely the individuals’ wrongful
conduct—alleged conduct, in Nelson—that was undertaken in their positions within their
respective organizations that permitted—or would permit, in Nelson—holding them
personally liable for the fees imposed on their organizations. Conversely, the district court
sought to hold Jacobs liable based not on her role and work within Coalition but instead for
her conduct as its counsel.
9
Jacobs was joined as a party only after this court held that Coalition had waived
its noncommercial speech and First Amendment defenses, and thus never had the
opportunity to lodge these defenses on her own behalf in this court. Now, when she
attempts to advance those arguments to protect herself from personal liability, the majority
holds the law of the case precludes her doing so. Maj. Op. at 11. This is highly inequitable,
particularly in light of the clear merit of her constitutional and statutory defenses, which
she has never personally waived. The majority attempts to justify its decision on the
grounds that the merits of the infringement claim itself are no longer at issue, and the
question now is only one of the appropriate amount of attorneys’ fees. Maj. Op. at 11. But
the majority offers no analysis as to why Coalition’s litigation choices somehow bind Jacobs
personally, and, as noted infra, there was no finding by the district court that Jacobs
controlled Coalition such that its litigation conduct could be attributed to her. The majority
thus errs in stripping Jacobs of the opportunity to marshal her full array of defenses.
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for attorneys’ fees makes no mention of veil piercing nor asserts that Jacobs
is the alter ego of Coalition. Cf. Huard v. Shreveport Pirates, Inc., 147 F.3d
406, 409-10 (5th Cir. 1998) (observing that, under Louisiana law, “a plaintiff
seeking to pierce the corporate veil” must either demonstrate that the cor-
porate form was used “to perpetuate fraud” or must “bear[] a heavy burden
of proof in demonstrating that the corporate form has been disregarded by
the shareholders to the extent that the corporation and shareholders are in-
distinguishable”). 10 In the absence of any argument that the district court
should pierce Coalition’s corporate veil, it is unsurprising that the court did
not make any of the predicate findings necessary to disregard the legally dis-
tinct juridical identities of Coalition and Jacobs; there was no finding that Co-
alition was the alter ego of Jacobs, that Coalition disregarded corporate for-
malities, or that Coalition was used by Jacobs to perpetuate a fraud. See id.And in its briefing in this appeal, Alliance expressly disclaims that it seeks to
veil pierce, contending instead that it could do so in a separate lawsuit. Under
these circumstances, veil piercing is obviously inappropriate and cannot sup-
port the district court’s decision to thrust upon Jacobs the liability for fees
charged to Coalition.
Accordingly, the district court was without authority under the Lan-
ham Act to hold Jacobs directly and personally liable for attorneys’ fees, did
not invoke any other source of authority to hold Jacobs liable in her capacity
as an attorney, and could not and did not make the findings necessary to
pierce Coalition’s corporate veil.
10
“Whether to apply Louisiana or federal law is not an issue. State and federal
alter ego tests are essentially the same. Our non-diversity alter ego cases rarely state
whether a state or federal standard controls, and apply state and federal cases
interchangeably.” Century Hotels v. United States, 952 F.2d 107, 110 n.4 (5th Cir. 1992).
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* * *
In conclusion, this court’s decision in Alliance I does violence to the
text of the Lanham Act by expanding the statute into territory it was never
intended to reach—noncommercial and political speech—and, worse yet,
authorizes applying the Act in a manner that invades constitutionally-pro-
tected political speech and will embroil federal courts in local political dis-
putes. Alliance I and the tainted rulings it spawned must therefore be cor-
rected to prevent Coalition from suffering an injustice in this case and, more
broadly, to reform this court’s Lanham Act caselaw to avert chilling the
speech of other organizations and individuals that likewise engage only in po-
litical speech. Accordingly, this panel should recall the mandates in Alliance
I and II, vacate all judgments imposing liability under the Lanham Act on Co-
alition for its political speech, and instruct the district court to dismiss Alli-
ance’s Lanham Act claim with prejudice. For these reasons and those set
forth above, I respectfully dissent.
35