The Fifth Circuit’s recent ruling in Lewis Brisbois v. Bitgood et al. underscores the delicate balance between legal practice and ethical obligations, particularly in trademark disputes. The case highlights how businesses must vigilantly monitor their intellectual property and how legal professionals cannot exploit their roles to engage in deceptive conduct.
A Clash of Names and Legal Tactics
The dispute began in Texas state court, where Michael Bitgood, represented by Susan Norman, sued a corporate landlord affiliated with Lewis Brisbois Bisgaard & Smith LLP (LBBS), a California law firm licensed to operate in Texas. During the proceedings, Bitgood and Norman discovered that LBBS’s foreign registration had lapsed. To circumvent this, they registered a domestic limited liability partnership under the same name, “Lewis Brisbois Bis, Smith, LLP,” and filed documents under LBBS’s letterhead. They also distributed business cards falsely claiming affiliation with LBBS.
LBBS responded by filing a federal lawsuit, alleging trademark infringement, trade name infringement, and unfair competition. The district court granted a temporary restraining order, prohibiting the defendants from using LBBS’s marks or implying any connection to the firm. It later ruled in favor of LBBS on summary judgment, issuing a permanent injunction, statutory damages, and attorney fees.
The Limits of Attorney Immunity
On appeal, the Fifth Circuit affirmed the injunction but rejected the defendants’ claim of attorney immunity. The panel emphasized that legal professionals cannot shield fraudulent behavior under the guise of professional duty. “This is precisely the type of wrongful activity that falls outside the scope of attorney immunity,” the court stated.
Defendant Bradley Beers, who prepared the fraudulent documents, argued his actions were part of legitimate legal representation. The court dismissed this, noting Beers knowingly collaborated with co-defendants to create a sham entity designed to harm LBBS. The ruling reaffirms that attorneys cannot exploit their positions to engage in misconduct, reinforcing that legal practice imposes a duty to avoid deception.
Statutory Damages and Constitutional Considerations
The defendants challenged the $1.5 million statutory damages award, arguing LBBS’s registration had lapsed during the relevant period. The Fifth Circuit vacated the award, remanding the case for further analysis. The panel instructed the district court to consider whether the Seventh Amendment requires a jury to determine statutory damages, though the court expressed no opinion on the issue.
This raises broader questions about the role of juries in assessing statutory damages, particularly in high-value trademark cases. However, the ruling’s significance lies in its reaffirmation that lawyers cannot convert legal privileges into tools for fraud.
Lessons for Businesses and Legal Practitioners
For businesses, the case underscores the importance of proactive trademark monitoring. Confusability - where a mark resembles another - can lead to costly litigation, especially when competitors exploit legal loopholes. Companies must ensure their intellectual property remains protected through proper registration and vigilance.
IP Defender monitors national trademark databases for conflicts and infringements, helping businesses identify potential issues before they escalate. By staying ahead of rogue registrations and confusable marks, companies can avoid the kind of legal entanglements seen in the Lewis Brisbois case.
For legal professionals, the ruling serves as a cautionary tale. The line between legitimate representation and deceptive conduct is thin, and attorneys must avoid actions that compromise their ethical obligations. The case also highlights the judiciary’s willingness to hold legal practitioners accountable for misconduct, even when it masquerades as professional service.
Trademark law remains a complex battlefield, where clarity and diligence are essential. The Lewis Brisbois case reminds all stakeholders that the law does not tolerate the misuse of legal authority to perpetuate confusion or harm. IP Defender’s continuous monitoring ensures businesses can defend their trademarks without relying on reactive measures.