Originally published in the Ark-La-Tex Association of Professional Landmen Register

Carbon capture and storage (“CCS”) is the process of capturing carbon dioxide emissions from large point sources, and then transporting it to a storage location for deposit in underground formations where it will not re-enter the atmosphere.  By returning CO2 emissions that resulted from the oxidation of carbon when fossil fuels are burned to the place where the fossil fuels were extracted, CCS can reduce the amount of pollutants released into the atmosphere, thus, potentially limiting climate change.  It is estimated that technologies for carbon capture, use, and storage may eventually be able to capture a vast majority of carbon dioxide emissions from power plants, refineries, petrochemical plants and other industrial facilities.  Optimistically, at least a portion of the carbon dioxide captured from this technology can be put to productive use in enhanced oil recovery or the manufacture of fuels, building materials, and more.  CCS is viewed as the primary practical way to achieve deep decarbonization in the industrial sector and could contribute 14 percent of the global greenhouse gas emissions reductions required under carbon neutral target goals and regulations by 2050.

Focusing on innovation, rather than elimination, this trend of development parallels the evolution of the oil and gas industry into an energy industry — one that invests in low-carbon and CCS technologies.

Notably, CCS technologies are being advanced out of the Natural Energy Technology Laboratory in West Virginia and other institutions. However, latent problems associated with global warming, including severe weather, that would be tackled by CCS aren’t always far from home.  While it can be debated whether climate change was a contributing cause, the State of Texas was ambushed by an unprecedented winter storm in February 2021, leaving almost the entire state with no power.  This prompted the new Energy Secretary Jennifer Granholm to advise the State of Texas to consider upgrading its connectivity to the national grid so that neighbors can help in times of crisis.

But the future need not be bleak. This April, Exxon called for expansive industry-government collaboration to develop large carbon capture and storage projects around Houston, Texas, namely, due to Houston’s footing as a home for major refining, petrochemical, manufacturing and power facilities. Exxon reported that it has already briefed government officials and industry groups, including Texas Governor Greg Abbott, Houston Mayor Sylvester Turner, U.S. Senator John Cornyn, House members in the Region, and the Greater Houston Partnership. Infrastructure estimates predict that facilities in Houston could capture and store 50 million metric tons of carbon dioxide annually by 2030 and 100 million by year 2040. The benefits of this project don’t end there, as Exxon’s proposal says the innovation in Houston could be deployed to other U.S. areas with heavy industry near storage sites, like the Midwest and the Gulf region.

British Petroleum also recently announced that it will spend $1.3 billion to build a network of pipelines and associated infrastructure to collect and capture natural gas produced as a byproduct from oil wells in the Permian Basin and in New Mexico.  Natural gas is a potent greenhouse gas, and this project sought to eliminate the routine flaring of natural gas by 2025.  This is viewed as a precedent setting carbon capture and reuse project.

Next door in Louisiana, U.S. Senator Bill Cassidy has joined a bipartisan group of lawmakers in introducing the nation’s first comprehensive carbon dioxide infrastructure package, namely, the Storing CO2 and Lowering Emissions (SCALE) Act, which could make Louisiana a national hub for carbon capture and sequestration. The bill would support the buildout of infrastructure to transport CO2 from the sites of capture to locations where it can be either used in manufacturing or sequestered safely and securely in underground formations. The legislation could also provide critical regional economic opportunities and create thousands of jobs. An analysis released by the Decarb America Project projects the possible effects as creating 13,000 direct and indirect jobs per year through the 5-year authorization. However, the Project acknowledged this estimate is conservative, as it does not include the thousands of jobs likely to be created by retrofitting energy-intensive facilities, such as cement and steel plants, or by building direct air capture plants.

The cost-benefit analysis of CCS technology is also improving daily. As part of a marathon research effort to lower the cost of carbon capture, chemists have demonstrated a way to seize carbon dioxide by using a different solvent (EEMPA) in the capture system that reduces costs by 19 percent compared to current technology. Notably, the U.S. Department of Energy’s Pacific Northwest National Laboratory (“PNNL”) plans to produce 4,000 gallons of EEMPA in 2022 at a 0.5-megawatt scale inside testing facilities at the National Carbon Capture Center in Shelby County, Alabama.  This project is led by the Electric Power Research Institute in partnership with Research Triangle Institute International and PNNL. The eventual goal is to reach the U.S. Department of Energy’s goal of deploying commercially available technology that can capture CO2 at a cost of $30 per metric ton or less by 2035.

CCS is a promising phoenix set to arise from the ashes of the world’s aging industrial practices, and America has a unique opportunity to emerge smarter and stronger than before as a leader in CCS technology. No matter the source, no matter the strategy, CCS is on the rise and evolving into an integral part of the energy industry.

This article was written and submitted by Hattie Guidry, Arielle Anderson, Jourdan Curet, and Kristi Obafunwa with Kean Miller LLP.  Kean Miller LLP is a full-service law firm located in Texas and Louisiana that counsels clients on a wide variety of substantive legal areas and state and federal laws, including a specialized practice in the energy and environmental industry.  Our attorneys are some of the leading practitioners in their field, including many who have helped shape the legal landscape.

In March 2021, Virginia’s Governor Ralph Northam signed the Consumer Data Protection Act (CDPA), making Virginia the second state to enact comprehensive data privacy protections for its residents. If you are feeling blindsided by this news, you are not alone.[1] Unlike California’s Consumer Privacy Act (CCPA) and Privacy Rights Act (CPRA) or the European Union’s General Data Protection Regulation (GDPR), which were heavily debated in both the legislature and public commentary for months on end, the Virginia legislature introduced this legislation in mid-January 2021, with Governor Northam signing the CDPA in less than two months’ time.

The CDPA will not go into effect until January 1, 2023 (ironically, the same day that most provisions of the CPRA also become effective). In the meantime, Virginia is assembling a working group to study the implementation of this act comprising “the Secretary of Commerce and Trade, the Secretary of Administration, the Attorney General, the Chairman of the Senate Committee on Transportation, representatives of businesses who control or process personal data of at least 100,000 persons, and consumer rights advocates … to review the provisions of this act and issues related to its implementation.” The findings of this work group are due on November 1, 2021, and that group’s notes will likely provide recommendations for compliance. While November may seem far away, businesses in Virginia or with significant Virginia consumer contacts may be wise to become familiar with the Act and the impending responsibilities.

Who must comply with the CDPA?

The first consideration before beginning compliance preparations is whether the CDPA will even apply to your business. The CDPA applies to persons that conduct business in Virginia or produce products or services that are targeted to Virginia residents and that either:

  • Control or process the personal data of at least 100,000 consumers during a calendar year; or
  • Control or process the personal data of at least 25,000 consumers and derive at least 50% of its gross revenue from the sale of personal data.[2]

For those familiar with California’s CCPA’s $25 million revenue threshold, the lack of a revenue threshold here is a notable omission. The result of that omission is that even large companies can be excused from compliance because they do not process the required amount of covered consumer data, while smaller companies (such as those offering low-cost direct-to-consumer products) will be required to comply regardless of revenue levels.

The definition of “sale of personal data” is also much more restrictive than the CCPA. The CCPA generally defines “sale” as exchange of information for monetary or other valuable consideration. Conversely, the Virginia definition of “sale of personal data” is only an exchange for monetary consideration, with some notable exceptions, such as exchange of personal data during a merger or acquisition.[3]

Do any exceptions exist for certain entity types?

Yes. The CDPA does not apply to the Virginia government, financial institutions subject to the Gramm-Leach-Bliley Act (GLBA), covered entities or business associates subject to the Health Insurance Portability and Accountability Act (HIPAA) and the Health Information Technology for Economic and Clinical Health Act (HITECH), nonprofits, or “institutions of higher learning.” However, the CDPA does appear to apply to third-party processors of government entities, nonprofits, and institutions of higher learning that meet the required data processing thresholds. Broadly speaking, there also exist certain carve outs for data subject to GLBA, the Fair Credit Reporting Act, and the Family Educational Rights and Privacy Act (FERPA).

Who does the CDPA protect?

The CDPA protects the personal information of “consumers”, which are defined as natural persons who are residents of Virginia “acting only in an individual or household context.” The definition explicitly excludes individuals “acting in a commercial or employment context”, which has the effect of excluding business to business communications and large amounts of human resources data. Thus, companies that only collect and hold Virginia consumer data in an employment or business to business context may be able to avoid compliance.

What personal data is protected by the CDPA?

The CDPA defines “personal data” as “any information that is linked or reasonably linkable to an identified or identifiable natural person.” “Identified or identifiable natural person” is defined as “a person who can be readily identified, directly or indirectly.” Special protections are also included for “sensitive data”, which includes data revealing racial or ethnic origin, religious beliefs, mental or physical health diagnosis, sexual orientation, or citizenship or immigration status; genetic or biometric data for uniquely identifying a natural person, data collected from a person known to be a younger than 13 years old, and “precise” geolocation data (locating an individual within a radius of 1,750 feet). Collecting sensitive data will require the consumer’s consent (or the consent of a parent if the consumer is under 13 years old).

The CDPA also excludes “publicly available information” from compliance and defines “publicly available” more broadly than other existing regulations. Unlike California’s limitation on “publicly available” only data that is lawfully obtainable from a government entity, the CDPA constitutes “publicly available information” to include information that a business has “a reasonable basis to believe [that the information is] lawfully made publicly available to the general public through widely distributed media, by the consumer, or by a person to whom the consumer has disclosed the information, unless the consumer has restricted the information to a specific audience.” Information that could thus fall under “publicly available information” in Virginia would include personal information posted publicly on social media; for example, a picture of a COVID-19 vaccine card posted on a public Instagram page.

What rights are Virginia consumers granted in the CDPA?

The rights granted through the CDPA are like those in the CCPA and GDPR. Consumers will generally be granted rights to access, correct, delete or receive copies of the personal data held by applicable businesses. Consumers will be able to opt out of targeted advertising and sale of their personal data, and businesses will also be required to make additional disclosures surrounding their personal data processing activities, the rights, and how consumers may exercise their rights. The specific mechanisms through which customers are able to exercise these rights are detailed and extensive, so thorough review of the CDPA’s specific mechanisms for compliance are recommended for businesses beginning compliance preparations.

What are the penalties for non-compliance with the CDPA?

Virginia’s Attorney General will be the sole enforcement authority of the CDPA. If the Virginia AG provides notice of a violation and the non-compliant business does not cure the compliance issue within 30 days of notice, the Virginia AG can institute enforcement action which carries statutory damages of up to $7,500 per violation for intentional violations. Unlike the CCPA, there is no private right of action.

Conclusion

Much like the CCPA, businesses can expect that regulations will be generated by the Virginia AG that will provide more detail about the CDPA requirements. While the final texts of those regulations are far off, businesses that will need to comply should begin preparations now—especially if they are not currently compliant with the GDPR or CCPA. Consultation with experienced privacy counsel and consultants can provide significant assistance in compliance efforts.

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[1] Joseph Duball, “Challenge accepted: Initial Virginia CDPA Reactions, Considerations”, IAPP (Mar. 4, 2021) (https://iapp.org/news/a/challenge-accepted-initial-virginia-cdpa-reactions-considerations/?mkt_tok=MTM4LUVaTS0wNDIAAAF7nWl2kuMyzbn5dKcD8W3Y4fggbDxNg2PM84osNdKWpMvPYHWeJcjIqQy1i4dSpHpMQHLs0yruSK6OoqCCkkzJXqhhnHOByJMIE7AxjkbfRlLv).

[2] § 59.1-572(A).

[3] Other exceptions include disclosures: (1) to a processor; (2) to a third party for the purposes of providing a product or service requested by the consumer; (3) to a controller’s affiliate; or (4) of information generally made available by the data subject through a mass media channel that is not restricted to a particular audience. The CDPA’s definitions of “processor”, “controller”, and “third party” are virtually identical to the GDPR.

This post is also available as a podcast.

Whether or not the operator of an oil and gas well can deduct post-production costs (“PPC”) can significantly impact the economics of a well for both an operator and a royalty owner.  In BlueStone Natural Resources II, LLC v. Randle, — S.W.3d —-, 2020 WL 936175, 64 Tex. Sup. Ct. J. 450 (Tex. 2021), the Texas Supreme Court was called upon to determine whether or not an oil and gas lease permitted the deduction of PPC from sales proceeds before royalties are computed.

How to calculate the payment of royalty is a matter of contract.  The value of royalty can be computed at the wellhead or at any downstream point, depending on the terms of the particular oil and gas lease.  It is common for lease forms to provide that royalty is based on the market value at the wellhead.  Since oil and gas is typically not sold at the wellhead, but rather at a point further downstream, a common method to compute royalties payable based on market value at the wellhead is the “net-back” or “workback” method.  Using this method, a lessee estimates market value at the wellhead by starting with the proceeds of a downstream sale and subtracting PPC incurred between the wellhead and the point of sale.  This method is based on the premise that production is less valuable at the wellhead because a purchaser at the wellhead would be required to incur costs for things such as processing, compression, and transportation in order to prepare it for sale to a downstream market.  Therefore, with a lease that requires royalty to be computed at the well, the royalty will bear its share of PPC.

In contrast, a lease can provide for royalty computed on “proceeds” or “amount realized” by the lessee.  A “proceeds” or “amount realized” clause, standing alone, creates a royalty that is free from PPC.  In such a case, the lessee bears all costs downstream from the wellhead to the point of sale.

The oil and gas lease in BlueStone provides in paragraph 3 of the body that royalty on gas is based on the “market value at the well” of the gas sold or used off the premises.  The lease contains an addendum that provides in paragraph 26 that the lessee “agrees to compute and pay royalties on the gross value received.”  The addendum also contains language stating that it “supersedes any provisions to the contrary in the printed lease.”  Thus, the dispute was whether the phrase “gross value received” in the addendum conflicts with the phrase “at the mouth of the well” in the body of the lease, and, therefore, would supersede the language in the body of the lease.

BlueStone argued that there was no conflict between the “at the well” language in the body and the “gross value received” language in the addendum, because the terms can be read together to produce a net-proceeds calculation, permitting the deduction of PPC.  However, the Court disagreed, citing its prior decision in Judice v. Mewbourne Oil Co., 939 S.W.2d 133 (Tex. 1996), which found that the phrase “gross value received at the well” gave rise to an inherent conflict.  That language rendered the royalty clause ambiguous because “at the well” is a net-proceeds equivalent that contemplated the deduction of PPC, whereas “gross proceeds” indicates just the opposite.

BlueStone argued that the Court’s decision in Burlington Resources Oil & Gas Company, LP v. Texas Crude Energy, LLC, et al., 573 S.W.3d 198 (Tex. 2019) stood for the proposition that “at the well” language will always mean that a royalty clause allows for deduction of PPC.  Although there is language in Burlington stating that prior decisions held that when parties specify an “at the well” valuation point, the royalty owner must share in PPC, the Court said that it is a misreading of Burlington to suggest that “at the well” language supersedes all other language in the contract.  Rather, the Court said that the oil and gas lease in question should be read and interpreted in its entirety, and construed according to all of its terms.

Based on the foregoing, the Court found that the “at the well” language in the body of the lease was in conflict with the “gross value received” language in the addendum, so the language in the addendum controlled.  Since “gross value received” language clearly does not allow the deduction of PPC when calculating the royalty, the Court held that the lease did not allow BlueStone to deduct PPC when computing the royalty owed to its lessor.

Last month’s severe cold weather across the south, particularly Texas, while having immediate impacts on millions of Texas residents, are now beginning to show additional impacts to the energy industry. Millions of Texas residents suffered widespread, lasting power outages, burst water pipes, and other weather-related impacts from the icy weather. The impacts of the severe weather affected energy providers as well, who struggled to get electricity to their customers. Texas’ largest power generation and transmission cooperative, Brazos Electric Power Cooperative, Inc. (“Brazos”) filed for Chapter 11 bankruptcy Monday after it received an approximate $2.1 billion bill from the Electric Reliability Council of Texas (“ERCOT”) for seven (7) days of power during the deep freeze. This amount far exceeds the costs charged to Brazos’ members for all of 2020, which came in at approximately $774 million. Brazos is one of multiple providers facing billions in charges from the severe cold weather. When these providers could not provide their own generated power to the grid, they were required to buy replacement power – at extremely high rates. These energy rates were about 500 times the usual rate, topping out at the $9,000/MWh established by ERCOT.

And a protocol called “uplift” allows ERCOT to spread the cost of defaulted obligations among other providers. With so many electric providers unable to supply power to the grid during last month’s freeze, it appears ERCOT may use the “uplift” protocol to send invoices to other electric providers to recover unpaid charges for grid power.  The City of Denton has already sued ERCOT and others regarding this practice, which could cost the City millions. Other providers and analysts warn that the storm-related charges could exceed many providers’ available liquidity, making it likely Brazos will not be the only Texas provider seeking bankruptcy protection in the near future.

Brazos’ bankruptcy case is docketed before the Honorable David R. Jones (In re Brazos Electric Power Cooperative, Inc., No. 21-30725) in the United States Bankruptcy Court for the Southern District of Texas. The City of Denton’s suit against ERCOT is docketed in the District Court for the County of Denton, State of Texas, Cause No. 21-1421-16.

The Securities and Exchange Commission recently adopted amendments to facilitate the use of private, or “exempt,” offerings.  The changes will impact offerings structured pursuant to Section 4(a)(2), Regulation D and Regulation S, as well as offerings conducted under Regulation A and Regulation Crowdfunding. The purpose of the changes is to facilitate capital formation and increase opportunities for investors by expanding access to capital for small and medium-sized businesses.   The new rules provide clear safe harbors from integration of separate exempt offerings, ease the determination of accredited investor status, and relax restrictions on communications made in connection with “testing the waters” for a contemplated private offering.  Highlights include:

Integration Safe Harbors in “New” Rule 152

Under certain circumstances, the Commission’s integration doctrine requires an issuer to treat two or more offerings that take place within the same general time-period as a single offering, which may have the effect of undermining reliance on private offering exemptions for one or more of the offerings.  For example, if an offering for which general solicitation is prohibited is combined with another where general solicitation is permitted and occurs, the first offering could lose its exempt status.  New Rule 152, which entirely replaces prior Rule 152, provides four distinct safe harbors that permit companies to conduct certain sequential or side-by-side offerings without integration concerns, as well as principles to apply in situations that do not fit any of the safe harbors.  Some elements of the new rule codify prior Commission interpretation. The new rule applies to all exempt offerings of securities, including offerings made in accordance with Regulation D and Regulation S, and will replace the traditional five-factor test in Rule 502.

Verification of “Accredited Investor” Status Under Rule 506(c)

Rule 506(c) permits the use of general solicitation in an exempt offering when the issuer takes reasonable steps to verify that purchasers in the offering are accredited investors.  The Commission amended Rule 506(c) to allow issuers to establish that an investor continues to be an accredited investor if the issuer, within the past five years, took reasonable steps to verify its accredited investor status in a previous offering under Rule 506(c), unless the issuer is aware of information to the contrary.  The investor must provide a written representation at the time of sale that the investor continues to qualify as an accredited investor. This change should simplify the verification process for issuers conducting continuous or multiple offerings under this exemption.

For issuers using the rule’s principles-based method to verify accredited investor status, the Commission reiterated previous guidance that issuers should continue to consider factors such as the following:

the nature of the purchaser and the type of accredited investor the purchaser claims to be;
the amount and type of information that the issuer has about the purchaser; and
the nature of the offering, such as the manner in which the purchaser was solicited to participate in the offering and the terms of the offering, such as a minimum investment amount.

The Commission also expressed its view that, in some circumstances, an issuer could satisfy the “reasonable steps” requirement in the first instance with a representation from an investor as to his or her accredited investor status, if the issuer “reasonably takes into consideration a prior substantive relationship with the investor or other facts that make apparent the accredited status of the investor.”  However, an investor representation alone would not be sufficient if the issuer has no other information about the investor.

“Testing the Waters”/Generic Solicitation

New Rule 241 permits an issuer, or any person authorized to act on behalf of the issuer, to use generic solicitation of interest materials for an offer of securities prior to making a determination as to the exemption under which the offering may be conducted, subject to certain conditions. These generic “testing-the-waters” materials must provide specific disclosures notifying potential investors about the limitations of the generic solicitation of interest. This exemption from registration applies only to the generic solicitation of interest, not to a subsequent offer or sale. Thus, if the issuer moves forward with an exempt offering following the generic solicitation of interest, the issuer needs to comply with an available exemption for the subsequent offering.

Generic solicitations of interest under Rule 241 are offers of a security for sale for purposes of the antifraud provisions of the Federal securities laws, and depending on how these materials are disseminated, they could be considered a general solicitation.  If a generic solicitation of interest constitutes a general solicitation, and the issuer proceeds with an exempt offering that does not permit general solicitation, such as an offering under Rule 506(b), the issuer will have to determine whether the generic solicitation of interest should be integrated with the subsequent offering, using the new Rule 152 integration provision.  If integration is required, the Rule 506(b) exemption would be unavailable because the issuer would have already engaged in a general solicitation for the same offering.

Other Changes

The Commission amended Regulation A, Regulation Crowdfunding and Rule 504 to increase the amounts that can be offered within a 12-month period as follows:

Tier 2 Regulation A offerings: from $50 million to $75 million;
Rule 504: from $5 million to $10 million; and
Regulation Crowdfunding: from $1.07 million to $5 million.
Commissioners’ Views

The Commission, recognizing that capital raising in the private markets has increased significantly in the past twenty-five years, attempted to even the playing field for small companies and smaller investors by reducing complexities in the exempt offering framework.

Conclusion

The new integration safe harbors should make it easier for companies to rely on the exemptions provided under Section 4(a)(2), Regulation D, and Regulation S in the context of multiple or concurrent offerings.  Moreover, allowing issuers to rely on past verification of an individual’s accredited investor status creates additional flexibility to use Rule 506(c) by reducing the compliance burden involved in multiple offerings to common investors. The additional flexibility to use generic solicitations of interest will allow issuers to test the waters for a private offering, but issuers must exercise caution to ensure that their use of these materials does not jeopardize the availability of relevant exemptions.

If you have questions about how these new rules apply to your business, please contact Dean Cazenave, Eric Thiergood, or Ben Jumonville.

The U.S. Supreme Court offered some good news to secured lenders last week, tempered with words of caution.  In Chicago v. Fulton, the Court held that a secured creditor does not violate Section 362(a)(3) of the Bankruptcy Code by merely continuing to hold property of its debtor after that debtor files a bankruptcy petition.  The 8-0 opinion written by Justice Alito, and particularly the separate concurring opinion written by Justice Sotomayor, cautioned that a creditor holding a bankrupt debtor’s property could easily run afoul of Section 362(a)(4) or (6) (prohibiting acts to enforce liens and to collect a claim, respectively), or of Section 542(a)’s obligation to deliver property to the debtor or trustee.  But at least there is nationwide clarity on one issue: merely continuing to hold a debtor’s property that was lawfully seized prepetition is not a violation of 11 U.S.C. § 362(a)(3).

This decision arises from several Chapter 13 bankruptcy cases where individuals filed bankruptcy and then demanded that the City of Chicago release their vehicles, which had been impounded for past-due parking fines.  The City refused.  The Bankruptcy Court found that the City’s refusal violated the automatic stay created by 11 U.S.C. § 362(a).  The Seventh Circuit Court of Appeals agreed that by retaining the debtors’ cars, the City had acted “to exercise control over” their property, in violation of the automatic stay.  Decisions from the Second, Eighth, Ninth, and Eleventh Circuits also imposed an affirmative duty on creditors to return seized property once a bankruptcy petition is filed; failure to do so was a violation of the automatic stay in those Circuits.  The Third, Tenth, and District of Columbia Circuits held that merely retaining property was not a violation of the automatic stay.   The Supreme Court resolved the circuit split by holding that simply holding property lawfully seized prepetition (i.e., before the debtor filed its petition for relief in bankruptcy court) and maintaining the status quo is not a violation of the automatic stay.

One interesting effect of this decision is that lenders now have even more incentive to move quickly to seize their collateral.  In commercial cases, the fact that a debtor cannot get its property back by simply filing bankruptcy will affect negotiations between borrowers and lenders, both in and out of a bankruptcy courtroom.  Justice Sotomayor’s concurring opinion notes that where the debtor is an individual, he or she may not be able to get to work to earn money to pay any creditors if his or her car is impounded for parking fines the debtor cannot afford to pay . . . effectively undermining the debtor’s bankruptcy case before it gets underway.  Her opinion suggests some ways that Congress could improve the Bankruptcy Code to give working debtors a better chance at a successful outcome for their case and unsecured creditors a better chance of getting paid something on their claims.  Perhaps the incoming Congress will accept her invitation to make some changes to the Bankruptcy Code.

On January 12, 2021, the U.S. Court of Appeals for the Fifth Circuit vastly changed the landscape for collective action wage and hour claims under the federal Fair Labor Standards Act.

In Swales v. KLLM Transport Services, L.L.C., the Fifth Circuit rejected the lenient standard typically employed by federal district courts for “conditionally certifying” collective actions and ruled that courts must, instead, do the difficult work to rigorously scrutinize whether workers are similarly situated to the named plaintiff before sending notice to potential opt-in plaintiffs.  According to the Court, the importance of the collective action certification issue “cannot be overstated.”

Background: FLSA Collective Actions

The FLSA allows plaintiffs to proceed collectively in litigation, but only when the plaintiffs can show that they and the members of the proposed collective are “similarly situated.”

Group litigation under the FLSA is different from class actions under Federal Rule of Civil Procedure 23. Whereas Rule 23 provides an “opt out” mechanism for class action members to avoid being bound by any judgment, the FLSA requires that similarly situated individuals file written consents to “opt-in” to the collective action.  But, the FLSA does not define what it means to be “similarly situated.”

Lusardi Two-Step Process

There has been much confusion and a lack of uniformity among district courts over how collective actions should proceed.  District courts are required to ensure that notice of the litigation is sent to those who are similarly situated to the named plaintiff, but they must do so in a way that scrupulously avoids endorsing the merits of the case.  Most district courts within the Fifth Circuit applied a “two-step” process to determine (1) who should receive notice of the potential collective action, and then (2) who should be allowed to proceed to trial as a collective.  This method comes from a New Jersey district court case, Lusardi v. Xerox Corp.  Under Lusardi, district courts utilize the two-step process to determine whether other employees or former employees of the defendant are “similarly situated” to the named plaintiff.

In the first step of Lusardi, the district court determines whether the proposed members are similar enough to the named plaintiff to receive notice of the lawsuit. This step is referred to as “conditional certification” of the putative class.  Typically, it is a lenient standard and a relatively low hurdle for the plaintiff to satisfy.

The second step occurs at the end of discovery.  At that time, the district court makes a second and final determination (utilizing a stricter standard) of whether the named plaintiff and opt-in plaintiffs are “similarly situated,” such that they may proceed to trial collectively.  If the court determines that the opt-ins are not sufficiently similar to the named plaintiff, then the opt-ins are dismissed from the lawsuit, and the named plaintiff proceeds to trial.  This step is referred to as “decertification.”

The Swales Court Rejected Lusardi; New Standard Announced

Last week, in Swales, the Fifth Circuit expressly rejected Lusardi. The Court found that the FLSA does not support Lusardi’s lenient conditional certification of a collective. Instead, the Court instructed district courts to “rigorously scrutinize” whether workers are similarly situated at the outset of the case.

Specifically, the district courts are to identify, before sending notice to any potential opt-ins, what facts and legal considerations will be material to determining whether a group of employees is similarly situated.  Then, the district court should authorize preliminary discovery specifically tailored to those facts and legal considerations.  The Fifth Circuit recognized that the amount of discovery necessary to make the determination will vary case-by-case; but the Court made clear that the determination “must be made, and as early as possible.”  As a result, notices of the lawsuit will only be sent to the individuals who actually are similarly situated to the named plaintiff.

Impact on Employers

Swales is a positive development for employers who face the potentially grueling and costly collective action process. Under Swales, threshold and potentially dispositive issues must be addressed early in the case. While the Swales framework may require more discovery at the beginning of the case, it also limits the scope of potential opt-in plaintiffs and number of individuals receiving notice to only those who truly have an interest in the outcome of the case.  The Fifth Circuit’s new standard also provides litigants with more certainty regarding the issues and parties in the case.

Buried in the 5,500-page Consolidated Appropriations Act for 2021 among various COVID-19 relief was the Trademark Modernization Act of 2020 (“TMA”). The TMA, which will become effective on December 27, 2021, makes several important amendments to federal trademark law (the Lanham Act) intended to modernize trademark application examinations and clean house of trademark registrations for marks not used in commerce. For litigants, the TMA also adds important clarity to the Lanham Act’s standard for obtaining injunctive relief by restoring the rebuttable presumption of irreparable harm called into question by the Supreme Court’s decision in eBay v. MercExchange, LLC, 547 U.S. 388 (2006). A summary of these key changes for trademark registrations and trademark litigation follows.

Ex Parte Challenges to Current Trademark Registrations

A significant impetus for the TMA was comments during a 2019 hearing before the House Subcommittee on Courts, Intellectual Property, and the Internet concerning “clutter” and “deadwood” on the United States Patent and Trademark Office (“USPTO”) trademark registers. As of July 18, 2019, the USPTO trademark register comprised approximately 2.4 million registrations.[1]  As testified by Commissioner for Trademarks Mary Boney Denison, the USPTO had seen an increase in trademark applications or registration maintenance filings that contained false or misleading claims and information, particularly with regard to specimens of use.[2] Trademark applicants are required to submit evidence with their applications that the applied-for trademark is actually being used in commerce in the class of goods or services listed on their respective application. Trademark owners are required to regularly submit similar evidence to maintain their registrations. Commissioner Denison testified that the USPTO has increasingly received fake or digitally altered specimens that do not actually show use of the mark in commerce as required by the Lanham Act.[3] These false submissions, as well as excessive registrations for marks no longer in use, limit the usefulness of Trademark Register and significantly increase trademark clearance costs.

The TMA seeks to address these issues through two new ex parte proceedings. The first mechanism, an ex parte reexamination, permits third parties to challenge use-based registrations where the trademark owner swore that the marks were used in commerce, either in the application itself or in a statement of use. This mechanism allows the USPTO to reexamine the accuracy of the applicant’s claim of use at the time the averment was made. The second mechanism primarily targets foreign applications that claim use under Lanham Act section 44(e) or 66(a)—which allows foreign applicants to bypass submitting a statement of use in lieu of providing evidence of trademark registration in another country—and allows challenges to marks that have never been used in commerce. These proceedings can each be initiated by submitting testimony or evidence establishing a prima facie case of non-use, or the Director of the USPTO may determine on his or her own initiative that a prima facie case of nonuse exists. The registrant will then have the opportunity to respond to the alleged prima facie case. The registration will then either be cancelled, subject to the registrant’s right of appeal to the Trademark Trial and Appeal Board, or confirmed valid. A validity decision will preclude all further ex parte challenges to the registration.

These ex parte mechanisms add renewed focus to the Lanham Act’s requirement of “use” for trademark rights. The Lanham Act requires “bona fide use of a trademark in the ordinary course of trade.” For goods, that can include consistently placing the trademark on the product or its packaging, labels, or tags or, if it is impractical to use on the product itself, invoices and documents associated with the sale of the goods. For services, use can include advertising in connection with actual offers for the services.[4] Given these new mechanisms and an increase in fraudulent applications, USPTO trademark examiners may more strictly scrutinize specimens of use for compliance with trademark use requirements. To avoid unnecessary delays in trademark applications, applicants should take care to ensure specimens meet the requirements of the Trademark Manual of Examining Procedure (“TMEP”) and that their use actually qualifies as trademark use. Experience intellectual property counsel can help clients navigate the TMEP and trademark application procedures.

Changes to Trademark Registration Examination Procedures

The Lanham Act currently requires trademark applicants to respond to office actions issued during the examination within 6 months. The TMA now allows the USPTO increased flexibility to set shorter response deadlines. Specifically, the USPTO can, through regulations, set shorter response periods between 60 days to 6 months, provided applicants can receive extensions of time to respond up to the standard 6 months. Much like extensions of time granted by the USPTO for patent applications, any such extension requests will incur additional fees.

Formalization of the Informal Protest Procedure

Though not a formal process, the USPTO has long allowed third parties to submit evidence regarding registrability of a mark during examination of a trademark application. Section 3 of the TMA now formalizes that process by: (1) expressly allowing third party evidence submissions; (2) setting requirements that the submission include identification of the grounds for refusal to which the submission relates; and (3) authorizing the USPTO to charge a fee for the submission. The USPTO is required to act on that submission within two months of its filing. The decision on the submission is final, but the applicant may raise any issue regarding the grounds for refusal in the application or any other proceeding.

Presumption of Irreparable Harm for Trademark Infringement Plaintiffs

The primary goal of most trademark infringement litigation is to stop the infringing behavior, typically through injunctions. Section 6 of the TMA provides that a “plaintiff seeking an injunction shall be entitled to a rebuttable presumption of irreparable harm.” This language codifies a standard that most courts had applied to establish harm before the U.S. Supreme Court’s 2006 decision in eBay v. MercExchange, LLC.[5] In eBay, the Supreme Court held that patent owners were no different than any other litigant seeking equitable relief, so those owners must demonstrate irreparable harm to be entitled to a permanent injunction. Several courts then applied eBay’s holding by extension to trademark owners, finding they also must demonstrate irreparable harm for an injunction to be warranted.[6] Some courts, like the Fifth Circuit, have struggled in their application of eBay to trademark infringement disputes, leading to confusion and disagreement among lower district courts.[7] The eBay decision thus ultimately led to a circuit split on whether the rule presuming irreparable harm remained valid in Lanham Act cases.[8]

The TMA makes clear that trademark infringement plaintiffs are entitled to the presumption that they will be irreparably harmed if the infringer is allowed to continue use of the infringing trademark. Section 6(b) further confirms the retroactivity of this presumption, stating that Section 6’s amendment “shall not be construed to mean that a plaintiff seeking an injunction was not entitled to a presumption of irreparable harm before the date of enactment of this Act.” This change increases the likelihood that trademark infringement plaintiffs will be awarded preliminary and permanent injunctive relief, decreasing overall litigation costs and evidentiary burdens on plaintiffs.

The Trademark Modernization Act of 2020 addresses a grab-bag of challenging trademark issues that together provide additional protections for trademark owners and, ultimately, consumers. Trademark owners seeking to register their marks will soon have expedited procedures to tackle fraudulent or “deadwood” registrations that block their trademark applications. The Act further resolves a circuit split for awarding an injunction, easing the burden on trademark owners to show harm. While the ultimate effect of the TMA remains to be seen, these changes should empower trademark holders with additional tools to combat problematic registrations and ease litigation burdens.

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[1] Statement of the Commissioner for Trademarks Mary Boney Denison before the United States House Subcommittee on Courts, Intellectual Property, and the Internet Committee on the Judiciary, Jul. 18, 2019 (available at https://www.uspto.gov/about-us/news-updates/statement-commissioner-trademarks-mary-boney-denison-united-states-house_).

[2] Id.

[3] Id.

[4] Services must actually be offered in connection with the advertisement to qualify as “use.” Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015).

[5] 547 U.S. 388 (2006).

[6] See Peter J. Karol, Trademark’s eBay Problem, 26 Fordham Intell. Prop. Media & Ent. L.J. 625, 636–653 (2016) (available at https://ir.lawnet.fordham.edu/cgi/viewcontent.cgi?article=1623&context=iplj); Mark A. Lemley, Did eBay Irreparably Injury Trademark Law?, 92 Notre Dame L. Rev. 1795 (2017) . See also Gene Quinn, “Why eBay v. MercExchange Should, But Won’t, Be Overruled”, IPWatchdog.com (Feb. 16, 2020) (https://www.ipwatchdog.com/2020/02/16/ebay-v-mercexchange-wont-overruled/id=118929/).

[7] See Karol, supra n. 5 at 646–47.

[8] Testimony of Douglas A. Rettew, “Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses” at p. 13, Hearing Before the Senate Committee on the Judiciary, Subcommittee on Intellectual Property (Dec. 3, 2019) (available at https://www.judiciary.senate.gov/imo/media/doc/Rettew%20Testimony.pdf).

Unlike many states on the Pacific and Atlantic costs, Texas’ probate process is quicker and comparatively cost efficient.  In fact, Texas offers a several abbreviated probate process (e.g. independent administration, muniment of title, small estate affidavits) that require only limited filings and usually a single brief hearing in order to transfer the property to the decedent’s beneficiaries or heirs.

Despite the efficiency of its process, Texas does not offer a “do it yourself” probate.  An individual looking to probate an estate must use a licensed attorney “because in this role [the applicant] is litigating rights in a representative capacity rather than on his [or her] own behalf.”[1]  In Texas, as with other states, only a licensed attorney may represent someone else in court.  Therefore, an attorney is required in all probate proceedings because the person applying to open the decedent’s estate is not actually representing themselves.  Instead, the applicant is representing the estate of the person that died and the applicant’s actions can impact the rights of others (e.g. other heirs or creditors).

In short, this requirement is intended to offer each heir and creditor a fair opportunity to claim their interest in each estate probated.  It also offers executors with professional assistance in their role since they are have a duty to operate as a fiduciary.

Since the court will require you to obtain counsel it is best to meet with counsel before taking any action with the court.  There are a number of different options that may fit your circumstance and it is important to start the process with good advice from knowledgeable counsel to avoid wasting time, money, and effort.

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[1] Steele v. McDonald, 202 S.W.3d 926 (Tex. App. — Waco 2006).

The “accommodation doctrine” is a judicially created doctrine that governs the manner in which a mineral owner and surface owner may use the surface of a tract of land for their respective purposes.  The mineral estate is considered the “dominant” estate, and is permitted to use so much of the surface as is reasonably necessary for exploration and development of the minerals.  However, the mineral estate owner’s rights are not absolute.  The accommodation doctrine was adopted in Getty Oil Co. v. Jones, 470 S.W.2d 618 (Tex. 1971) to balance the rights of the surface and mineral owners, and it requires them to exercise their respective rights with due regard for the other’s.

Lyle v. Midway Solar, LLC — S.W.3d —-, 2020 WL 7769632, (Tex.App. – El Paso [83rd Dist.] 2020) deals with the question of whether the accommodation doctrine applies to a tract of land upon which the mineral estate is undeveloped and the majority of the surface is being used as a solar facility.  The El Paso Court of Appeals held that the accommodation doctrine could apply to the dispute, but that its application was premature until the mineral owner actually seeks to develop its minerals.

The Lyles own 27.5% of the mineral estate in a 315-acre tract in Pecos County, Texas.  No mineral development has occurred on the tract, and the Lyles have never executed an oil and gas lease on the tract.

Midway Solar, LLC (“Midway”) is the lessee of a solar lease executed by the owners of the surface estate in the 315-acre tract.  The solar lease allows Midway to build a solar facility on the tract, and grants the right to place solar panels, transmission lines, and cable lines anywhere on the tract.  It expressly recognized that the surface owner did not own the mineral estate in the tract, and that ownership of minerals in third parties constituted a title encumbrance.  The solar lease was subsequently amended to provide “Designated Drill Site Tracts” on the property.  Specifically, the amendment designated an 80-acre tract at the north end of the tract, and a 17-acre tract on the south end of the tract, which were stated to be for the benefit of any present or future operator.  Midway then placed solar panels on that part of the tract not designated as “Designated Drill Site Tracts.”

Prior to constructing the solar facility, which was located on the 315-acre tract as well as adjacent lands, Midway obtained waiver agreements from mineral owners in adjacent tracts, as is customary.  Although the opinion does not state whether it attempted to obtain such an agreement from the Lyles, one would presume that it attempted to do so but was unsuccessful.  Some of the waivers from the adjacent mineral owners erroneously purported to waive surface rights on the 315-acre tract.  Some were subsequently amended, and Midway filed a “Disclaimer of Interest” in which it states that the waivers did not grant any rights to Midway on the 315-acre tract.

After Midway constructed its solar facility, the Lyles sued Midway, the surface owners, and the parties who signed the mineral waiver agreements on the adjacent lands.  There are several claims asserted by the plaintiffs, but the focus of this comment is whether the accommodation doctrine applies to the claim that Midway and the surface owners denied the Lyles reasonable access to their minerals by covering 70% of the surface with solar panels and transmission lines.

The Lyles argued that the accommodation doctrine did not apply because the deed in which the mineral estate was severed expressly describes the rights of the parties, which makes application of the doctrine unnecessary and inappropriate.  They point to the language in the deed wherein the grantor reserved the minerals and the right to use the surface “as may be usual, necessary, and convenient” in the use and enjoyment of the mineral estate.  Specifically, they argued that the use of the term “usual” expressed the intent to reserve the right to use vertical drilling, which was the “usual” method of development when the minerals were severed in 1948.  At that time, directional drilling was at best unusual, and horizontal drilling had not been invented.  It follows that if the deed allowed vertical drilling to develop the mineral estate, eliminating 70% of the surface acreage from possible development would be a violation of its rights as mineral owner.

The Court acknowledged that Texas public policy strongly favors freedom of contract, and if the express terms of a deed determines the parties’ rights with respect to surface use, then the accommodation doctrine would not apply.  However, the Court disagreed with the Lyles’ argument that the quoted language was intended to determine the rights of the parties and supplant the application of the accommodation doctrine.  It found that the deed did not use the term “usual” in the context of drilling methods, but used it instead in a more general sense.  Had the grantor in the deed intended to specify a particular drilling method, it should have simply said that it could drill a vertical well anywhere it wanted to.

The Lyles also argued that the following “elimination of liability provision” dictates how this dispute should be governed:

And neither Grantors herein nor their heirs, assigns, successors in title, nor any persons holding or claiming under them shall ever be liable to Grantees herein, their heirs, assigns, and successors in title for any damage or injury to the surface estate by reason of such use or for any damage or injury or for any damage or injury resulting from or claimed to have resulted from the exercise of the rights and privileges hereinabove reserved in connection with the reservation of the oil, gas, and general mineral estate.

The Lyles’ argument goes that because this clause provides that they can destroy any surface obstruction without liability, this negates any basis for accommodating competing surface uses.  However, the Court disagreed, stating that the clause relieves the Lyles from liability only from exercising “the rights and privileges hereinabove reserved[.]”  Therefore the language does not define the scope of rights and privileges, but simply states only what the common law requires.

Given that the 1948 deed does not preclude application of the accommodation doctrine, Midway argued that the Lyles must be either using the mineral estate or planning to use the mineral estate in order for the doctrine to apply.  In response, the Lyles argued that they have already suffered damages because they cannot realistically pursue mineral development when the solar facility covers 70% of the surface of the tract.  The Court resolved the dispute by stating that the answer lies in a proposition of logic as much as one of law.  If the Lyles exercise their right to use the surface in connection with their mineral estate, Midway must yield to the extent required by the accommodation doctrine.  However, because the Lyles are not using their rights, there is nothing to be accommodated.  Accordingly, the Court concluded that the Lyles’ claims are premature until the Lyles actually seek to develop their mineral estate.

The author finds this case noteworthy and interesting for several reasons.  First, it adds to the caselaw on the accommodation doctrine, particularly in terms of when these kinds of controversies become ripe and warrant judicial intervention.  Also important is the identity of the parties and the broader implications of this kind of dispute.  The Court was keenly aware that this case was between a mineral owner and the owner of a solar facility.  It began the opinion by recognizing that Texas is a leader in energy, producing more oil and gas than any other state.  However, it stated that Texas public policy “favors adding renewable energy sources into the State’s energy portfolio.” (Id. at 1).  As renewable energy grows in the coming years, there will no doubt be more disputes between mineral owners and solar developers.