The digitization of our economy has streamlined company operations but has brought with it persistent, ongoing cyberattacks. Successful attacks disrupt business operations, are costly to remediate, and can compromise confidential and personal information—including client and employee information. These compromises can significantly impact revenue and trust in the company and often result in stock prices dropping. While publicly traded companies typically report incidents to investors, reporting is not always consistent or is buried in quarterly reports made well after the fact.[1]

Effective as of September 5, 2023, the Securities and Exchange Commission (SEC) has finalized its proposed rule requiring publicly traded companies to promptly report “material” cybersecurity incidents and report annually on cybersecurity risk management and governance. This Rule addresses the need for disclosure of data incidents and preparedness to better inform investors with timely and reliable information.

I. Form 8-K Item 1.05: Cybersecurity Incident Reporting

The Final Rule is for the benefit of investors and focuses on streamlining and standardizing disclosures regarding data incidents and cybersecurity risk management, strategy, and governance.[2] New Form 8-K Item 1.05 requires companies to determine whether a cybersecurity incident is material without unreasonable delay after discovery of the incident. So long as a company does not intentionally delay a materiality determination to avoid timely disclosure, it will not likely be found to be in violation of the Rule.  Once a company determines that the incident is material, it has 4 days within which it must disclose the incident, including a description of the nature, scope, and timing of the incident and material impact or reasonably likely impact of the incident.[3] Registrants are not required to disclose the remediation status of the incident, technical information about planned responses, or whether data was compromised. To evaluate materiality, registrants should consider qualitative factors such as harm to company’s reputation, customer or vendor relationships, competitiveness, and potential for litigation or regulatory investigations. Cybersecurity incidents comprise “unauthorized occurrence, or a series of related unauthorized occurrences, on or conducted through a registrant’s information systems that jeopardizes the confidentiality, integrity, or availability of a registrant’s information systems or any information residing therein.”

II. Regulation S-K Item 106: Annual Reporting on Cybersecurity Risk Management, Strategy, and Governance

Registrants much also now disclose in their annual reporting their risk management practices, strategy, and governance. New S-K Item 106 requires companies to describe their processes, if any, for dealing with material risks from cybersecurity threats in enough detail that a reasonable investor would be able to understand it. Ideally, these disclosures will provide investors with material information to better inform their investment decisions, while avoiding the potential issue of a company’s being forced to disclose sensitive information that might further compromise the company’s security.[4] Item 106 reports must also include a description of the company’s governance structure and policies pertaining to cybersecurity and data protection, including which management positions are responsible for assessing and managing the risks, the expertise of the people in those positions, how those persons monitor security and compliance, and whether the risks are reported to the board of directors. The SEC also amended Form 20-F and Form 6-K to require similar disclosures in foreign private issuers’ annual reports.

A. Risk Management Disclosures

Proper compliance with the risk management practices disclosures entails disclosing information that would be material to the investment decisions of potential investors. These disclosures do not need to be so detailed that they would compromise the security of the company providing the disclosures. Indeed, in direct response to commenters’ concerns about the security risk presented from these disclosures, the SEC amended the Final Rule to appropriately account for the potential security vulnerability created by a detailed description of risk management practices or strategy by only requiring disclosure of “processes” instead of “policies and procedures”. Other deletions from the Rule as proposed include removal of the list of risk types (e.g., intellectual property theft, fraud, etc.) and removal of certain disclosure items, include the entity’s activities undertaken to prevent, detect, and minimize the effects of cybersecurity incidents and the business continuity and recovery plans in the event of a data incident.

B. Governance Disclosures

In compliance with S-K Item 106, registrants must also disclose governance of their cybersecurity policies, ideally identifying the management positions or committee responsible for managing cybersecurity risks and detailing the extent and nature of their expertise. Expertise can include prior work experience in cybersecurity, any relevant degrees or certifications, or any knowledge, skills, or other background in cybersecurity. The disclosure should further detail how the manager or committee is informed about cybersecurity threats or incidents and how they prevent, detect, mitigate, and remediate these incidents. Lastly, the company should disclose whether reports by either management or a committee are submitted to the board of directors or a subcommittee of the board. Having dedicated employees in management positions or having a committee whose primary responsibility is cybersecurity will become increasingly important to investors, who will likely exercise increasing scrutiny of such measures.

C. Compliance Considerations

Regulation S-K Item 106 and Form 20-F disclosures begin with annual reports for fiscal years ending on or after December 15, 2023. Form 8-K Item 1.05 cybersecurity incident disclosures must be compliant by the later of ninety (90) days after the date of publication in the Federal Register or December 18, 2023. Smaller reporting companies have an additional 180 days and must begin complying with Form 8-K 1.05 by the later of 270 days from the effective date of the rules or June 15, 2024. While each company will have its own individual considerations, here are some general recommendations to prepare for compliance and additional reporting:

  • Review and update the cyber incident response plan. Every company should have a cyber incident response plan that lays out how the company will respond to a suspected or confirmed data incident, the persons responsible for the incident response, and associated documentation procedures. Companies should update their plans to incorporate the new Form 8-K reporting requirements, including establishing a framework for evaluating materiality to ensure prompt reporting.  Considering that very limited circumstances allow for notification delay, companies should presume they will not be granted an extension unless they regularly interact with agencies of the U.S. government responsible for national security.  Once the policies and procedures are updated, companies should promptly train the appropriate employees on the new process.
  • Review and, if needed, update third party contract terms to include incident disclosure requirements. Cyber incidents often originate from a company’s vendor that has access to the company networks or the company’s data. The Rule requires disclosure of cyber incidents, regardless of where they originate. Companies should ensure that vendors with access to their data or networks are bound by clear, prompt incident notification requirements.
  • Assess possible updates to board assignments and committee responsibility. The SEC rules make clear that management of cybersecurity considerations just be a specifically designated job, and not an afterthought. Public companies should clearly assign cybersecurity oversight responsibilities, which may require updating committee assignments and charters.
  • Prepare the new disclosures for the company’s annual report. In addition to preparing to report on the company’s cybersecurity risk management, governance, and strategy, now is an excellent time to evaluate the effectiveness of the company’s overall cybersecurity posture and whether any gaps exist. The Rule clearly identifies that the person responsible for the cybersecurity oversight should be qualified with appropriate training or experience. If the company presently does not have someone with the appropriate qualifications, the company should consider hiring additional support or supporting a current employee’s training or certification.

While this Final Rule from the SEC will create new challenges for companies, it is worth emphasizing that the disclosure of this information to investors is not only imperative in the present moment but will become increasingly significant in the future. Cybercrime is proliferating, with professional groups organizing attacks on high level business at an ever-increasing rate. How well a company is equipped to deal with cybersecurity threats, and how well it addresses incidents that occur, is something investors will consider more and more as our reliance on technology to function grows. The Final Rule ensures that investors will become more effective in their ability to understand how prepared a company is for these events in the present and future.

[1] Special thanks to Christopher Malon, South Texas College of Law Class of 2025, for his assistance in researching and drafting this article.

[2] Securities and Exchange Commission, “Final Rule: Cybersecurity Risk Management, Strategy, Governance, and Incident Disclosure” (available at https://www.sec.gov/files/rules/final/2023/33-11216.pdf).

[3] Securities and Exchange Commission, “FACT SHEET: Public Company Cybersecurity Disclosures; Final Rules”, (available at https://www.sec.gov/files/33-11216-fact-sheet.pdf). In situations where disclosure would pose a substantial risk to national security or public safety, the SEC allows delaying disclosure if the Attorney General determines that the disclosure would indeed pose such a risk. This delay may be extended by the Attorney General so long as the risk to national security or public safety remains.

[4] See id. at 61 (noting that the revised formulation from the proposed amendment helps avoid levels of detail that would go beyond what was relevant to investors and addresses commenters concerns about details that would make companies vulnerable to cyberattacks).

This blog is an update to “Legal Issues with Using AI to Create Content – Written with Help from AI” by Devin Ricci on April 28, 2023

On August 18th, the United States District Court for the District of Columbia issued an opinion stating that Artificial Intelligence (AI) generated artwork lacks “human authorship,” thus it cannot be the subject of a valid copyright claim. This decision raises many issues regarding copyright ownership that will require further court involvement and/or policy reform.

The primary challenge arising from AI-generated artwork pertains to copyright existence and ownership. Copyright law traditionally assigns authorship to individuals who create original works. However, in the case of AI, determining authorship becomes complex. Some argue that since AI systems are essentially tools programmed by humans, the programmers should retain authorship rights. Others believe that if AI can autonomously create something new without direct human intervention, it should be granted certain rights. This debate challenges the very essence of copyright law, which is built around the concept of human creativity.

Case Summary

The plaintiff, Stephen Thaler, used the “Creativity Machine,” a generative AI technology, to generate a piece of artwork. Thaler was unsuccessful with obtaining a copyright registration for the AI-generated artwork. In the copyright application, Thaler identified “Creativity Machine” as the author. The United States Copyright Office (“USCO”) denied the application because the work “lack[ed] the human authorship necessary to support a copyright claim.” Thereafter, Thaler filed a complaint in the D.C. District Court against the USCO and its director requesting the refusal be set aside and the AI-generated artwork be registered.

Thaler filed a motion for summary judgment arguing that AI-generated work is copyrightable because the Copyright Act provides protection to “original works of authorship.” This argument was premised on Thaler’s assertion that “author” is not explicitly defined in the Copyright Act and that the ordinary meaning of “author” encompasses generative AI. Ultimately, the D.C. District Court disagreed. The Court held the Copyright Act plainly requires human authorship. As explained by the Court, an “author” is “an originator with the capacity for intellectual, creative, or artistic labor,” which is necessarily a human being.

Implications and Considerations

This decision raises a host of questions and demonstrates that a more comprehensive legal framework is required as AI generated content becomes more sophisticated and prevalent. AI has revolutionized various industries, and the realm of creative expression is no exception. AI-generated artwork has gained significant attention in recent years, raising fascinating questions about the intersection of technology, creativity, and intellectual property rights. As AI systems create artwork independently, it becomes imperative to analyze the implications of this emerging trend on copyright, ownership, and the very definition of creativity. The legal framework is continually evolving and there are many issues that content creators, artists, and marketing companies need to be cognizant of as the legal framework develops.

If this ruling is upheld, a work created solely by AI theoretically is not susceptible to copyright protection at all. Because copyright law is preemptive, meaning it exclusively governs the subject matter of claims that fall within the purview of the Copyright Act, this could severely limit the ability to prevent infringement of an AI-generated work. In theory, because the work would not be protectable, there is no property right to infringe and may not be a legal basis to prevent third party use of the material. 

It is important to note that this recent decision may not stretch to underlying works created by a human, or to the extent a human could be considered a co-author of AI-generated content. In any event, it does implicate works where AI is fully creating the work with little to no human involvement. For example, if you use a program similar to the Creativity Machine and type into the program: “create a picture of Santa getting run over by a reindeer with cookies flying everywhere and a dog laughing,” the resulting image would not be protectable under this decision. In particular, advertising companies should be aware that AI-generated advertisements may not be subject to copyright protection.

However, there must be some middle ground between complete human authorship and complete AI-generated content. AI might be utilized in developing a work, but if there is enough human involvement it should be fair to say there is human authorship. Perhaps a photographer snaps a photograph and uses an AI editing tool to filter/edit the photo. Is the photographer’s involvement enough to make the edited photo a human-authored work? How much human involvement is required to constitute authorship? Courts will have to wrestle with the intersection of AI’s involvement in creative works to sort out these questions. Otherwise, it will be up to Congress to create a new framework for addressing AI generated or augmented works.

Conclusion

AI-generated artwork represents a groundbreaking fusion of technology and creativity that challenges established norms in the art and legal worlds. The complex questions it raises about copyright, authorship, and the essence of creativity underscore the need for collaborative efforts among legal experts, artists, programmers, and policymakers. Balancing the rights of human creators and the capabilities of AI will shape the future landscape of artistic expression and intellectual property rights.

On August 18, 2023, in Hamilton v. Dallas County,[1] the United States Fifth Circuit Court of Appeals, sitting en banc, handed down a significant Title VII ruling that has far-reaching implications for future employment discrimination cases in Louisiana, Mississippi, and Texas. Employees seeking to bring a discrimination claim no longer need to meet the high burden of proving they suffered an “ultimate employment decision.” Instead, the Fifth Circuit has aligned with its sister circuits, and plaintiffs need only show they suffered from a discriminatory act related to hiring, firing, compensation or the terms, conditions, or privileges of employment. Indeed, in Hamilton, the Fifth Circuit initially applied the ultimate employment decision standard before rehearing the case en banc and ultimately reversing 27 years of precedence.

For many years, the Fifth Circuit limited actionable Title VII cases to those cases involving ultimate employment decisions. An ultimate employment decision is a decision that affects hiring, granting leave, discharging, promoting, or compensation. Employment decisions that did not impact at least one of the five enumerated categories did not rise to a level to sustain a claim under Title VII. [2]  

Hamilton arose from a Dallas County Sheriff’s Department (“the County”) employment policy pursuant to which officers were allowed to select their off-day preference, but only men could select two consecutive weekend days.[3] Consequently, female officers were not allowed time off for a full weekend. On its face, the policy was gender-based and discriminatory, but the County attempted to justify the policy by asserting that “it would be safer for male officers to be off during the weekends as opposed to during the week.”[4]  

In its initial August 3, 2022 panel opinion, consistent with its prior holdings, the Fifth Circuit held the gender-based scheduling policy was not an ultimate employment decision and affirmed the district court’s summary judgment and dismissal in favor of the County. The policy did not involve an ultimate employment decision and was, therefore, not actionable. To be actionable, the conduct must have impacted one of the enumerated categories and risen to the level of an ultimate employment decision. In the panel opinion authored by Judge Carl Stewart, the Court acknowledged its holding was contrary to its sister circuits and the express language of Title VII. But, absent an amendment to Title VII, a decision by the Court en banc, or a Supreme Court decision, the Court was bound by existing Fifth Circuit precedent. In the panel opinion, Judge Stewart recognized that the allegation against the County was within the scope of the express language of Title VII but not within the narrower requirements of Fifth Circuit precedent. In some circuits, to survive summary judgment, employees need only show that they are members of a protected class and an employment decision impacted their compensation, terms, conditions, or privileges of employment. In those circuits, claims are not limited to ultimate employment decisions. In the panel opinion, Judge Stewart expressly stated that the Hamilton case was ideal for an en banc review by the Court and would give the Court an opportunity to align the Fifth Circuit with its sister circuits and achieve fidelity with Title VII.[5]

Sitting en banc, in an opinion by Judge Don Willett, the Fifth Circuit overturned its original August 3 panel decision. Judge James Ho concurred, and Judges Edith Jones, Jerry Smith, and Andrew Oldham concurred with the judgment only. In its en banc opinion, the Court detailed the history of the phrase “ultimate employment decision” and the impact the phrase had on its past ruling. Applying the language of Title VII, the Court determined that although the County’s actions did not rise to the level of an ultimate employment decision under the Court’s prior interpretation of Title VII and was not actionable (as reflected in the original panel opinion), the en banc Court determined that because the County’s actions were linked to the female officers’ terms, conditions, and privileges of employment, their claims were actionable under Title VII. The gender-based scheduling policy had an adverse impact on female officers, and there was enough to survive summary judgment. The en banc Court held that “employees need only show that they were discriminated against because of a protected characteristic with respect to hiring, firing, compensation, or the terms, conditions, or privileges of employment to state a claim under Title VII.”[6] The judges concurring with the judgment reasoned that the conduct in Hamilton was actionable under the current standard. The concurring judges opined that the majority decision left ambiguity for employees and employers to determine what is an actionable Title VII claim and ultimately disagreed with the majority’s interpretation of the express language of Title VII.  Instead of changing the standard, the concurring judges suggested that the Court should continue applying the ultimate employment decision standard until the Supreme Court resolved the circuit split in a similar case.

The Fifth Circuit’s en banc decision in Hamilton changed the standard for Title VII discrimination claims by eliminating the need for an ultimate employment decision to sustain a Title VII claim and focused on whether an adverse decision had impacted the terms, condition, and/or privileges of employment. Yet, as reflected in the concurring opinion, the Court did not provide guidance regarding the types of adverse decisions effecting terms, conditions, or privileges of employment that could constitute actionable claims. The door has been left open for the Court to refine the scope of an adverse employment decision. What is clear is that employees no longer must satisfy the higher burden of showing an adverse employment decision. Because the standard has been lowered, there may be more cases brought under Title VII and more Title VII cases may survive summary judgment (like the plaintiffs in Hamilton). However, more suits does not mean more wins by plaintiffs. Plaintiff employees still must prove their case.

[1] Hamilton v. Dallas County, 21-10133, 2023 WL 5316716 (5th Cir. Aug. 18, 2023).

[2] 42 U.S.C. § 2000e-2(a) (“It shall be an unlawful employment practice for an employer to fail or refuse to hire or to discharge any individual, or otherwise to discriminate against any individual with respect to his compensation, terms, conditions, or privileges of employment, because of such individual’s race, color, religion, sex, or national origin.”) 

[3] Hamilton v. Dallas County, 42 F.4th 550, 552 (5th Cir. 2022), reh’g en banc granted, opinion vacated, 50 F.4th 1216 (5th Cir. 2022), and on reh’g en banc, 21-10133, 2023 WL 5316716 (5th Cir. Aug. 18, 2023).

[4] Id.

[5] Id. at 557.

[6] Hamilton, 21-10133, 2023 WL 5316716 at *8 (emphasis added).

On May 25, 2023, the United States Supreme Court ruled in favor of landowners seeking to build a modest home on “wetlands” in Sackett v. EPA. This ruling represents not only a clarification of a major law relevant to companies seeking to develop land near water bodies, but also a significant limitation on the EPA’s and Army Corps of Engineer’s power to regulate wetlands. The Supreme Court’s clarification of the Clean Water Act’s jurisdictional reach significantly benefits landowners from the standpoint of concerns over federal regulation of their property. However, the landowners must still comply with state and local requirements.

In 2004, the Sacketts purchased a plot of land near Priest Lake in Idaho. In preparation for building their home, they began backfilling their property with dirt and rocks. A short while later, the EPA sent the Sacketts a compliance order informing them their backfilling violated the CWA because their property contained protected wetlands. The EPA demanded the Sacketts to immediately restore the site and threatened the Sacketts with penalties of over $40,000 per day if they did not comply, despite their lot being worth only $23,000.[1]

The Sacketts filed suit alleging that the EPA lacked jurisdiction because any wetlands on their property were not “waters of the United States.” The District Court entered summary judgment for the EPA and the Ninth Circuit affirmed, holding that the CWA covers adjacent wetlands with a significant nexus to traditional navigable waters and that the Sacketts’ lot satisfied that standard. The United States Supreme Court granted certiorari to decide the proper test for determining whether wetlands are “waters of the United States.”

The Supreme Court recognized the need for clarification of the definition of “wetlands” under the CWA, due to the Act’s severe consequences even for justifiably ignorant violations. Property owners who unknowingly violate the CWA can face criminal penalties, including imprisonment, or fines of over $60,000 per day.  

Before the Court’s recent opinion, agency guidance instructed officials to assert jurisdiction over wetlands “adjacent” to non-navigable tributaries when those wetlands had “a significant nexus to a traditional navigable water.” In looking for evidence of a “significant nexus,” field agents were told to consider a wide range of open-ended hydrological and ecological factors.[2]  The significant nexus test and other obscure rules promulgated by the agencies over the years resulted in decades of uncertainty for permit applicants. Without a uniform rule established by the Court, the EPA and the Corps were free to implement a system of vague rules granting themselves broad jurisdictional reach. These interpretations led to rulings such as United States v. Deaton, where the Court held that a property owner violated the CWA by piling soil near a ditch 32 miles from navigable waters.[3]

In Sackett, the Court rejected the “significant nexus” test (from earlier decisions) in favor of a more objective rule. A five-Justice majority held that “the CWA extends to only those wetlands that are as a practical matter indistinguishable from waters of the United States. This requires the party asserting jurisdiction over adjacent wetlands to establish “first, that the adjacent [body of water constitutes] . . . ‘water[s] of the United States,’ (i.e., a relatively permanent body of water connected to traditional interstate navigable waters); and second, that the wetland has a continuous surface connection with that water, making it difficult to determine where the ‘water’ ends and the ‘wetland’ begins.”[4] Note that a wetland must be affirmatively connected to, not just close to, a navigable waterway in order to qualify. The Court acknowledged that a surface connection could be interrupted by “low tides or dry spells” without precluding an area from qualifying as a wetland, but the text of the opinion makes clear that, in the Court’s view, a continuous surface connection to a navigable waterbody must be maintained the majority of the time in order for an area to so qualify.

The EPA attempted to argue that “wetlands are “adjacent” when they are “neighboring” to [CWA] covered waters, even if they are separated from those waters by dry land.” The Court rejected this interpretation as “inconsistent with the text and structure of the CWA,” and also stated that such a broad scope of authority would “give[] rise to serious vagueness concerns in light of the CWA’s criminal penalties.”

The Supreme Court’s new interpretation of wetlands covered under the CWA will effectively limit the geographical reach of the EPA’s jurisdiction. Obviously, the Sackett decision does not impact state and local wetlands regulations. We encourage the reader to carefully evaluate all of the applicable requirements when dealing with wetlands issues.

[1] Sackett v. EPA Case Story | Pacific Legal Foundation

[2] Rapanos v. United States, 547 U.S. 715 (2006).

[3] United States v. Deaton, 332 F.3d 698, 702 (C.A.4 2003).

[4] Sackett, 143 S. Ct. at 1324 (quoting Rapanos, 547 U.S., at 755, 742, 126 S.Ct. 2208. Pp. 1338–41).

United States District Court Judge P. Kevin Castel issued an opinion on June 22, 2023, imposing sanctions and other penalties on the attorneys who relied on the artificial intelligence application, ChatGPT, in citing to fake cases in pleadings submitted to the court earlier this year.

Judge Castel’s thirty-four page opinion details the missteps of the lawyers, including filing the submission citing the fake cases, failing to withdraw the submission after opposing counsel identified the fake cases, doubling down on the existence of such cases when their validity was called into question, offering false information to the court in order to obtain an extension to a court ordered deadline, and providing “shifting and contradictory explanations” as to how and why the bogus case citations were submitted to the court.

The opinion makes clear that the real issue was the fact that the lawyers continued to mislead the court. Judge Castel wrote that, had the lawyers come clean about their actions shortly after they received the opposing parties’ brief questioning the existence of the cases, the outcome may have been different. While “poor and sloppy research” would amount to mere “objectively unreasonable” actions, the court found that the lawyers acted with subjective bad faith in violation of Federal Rule of Civil Procedure 11 based on all the subsequent failures to disclose.

Luckily for the offending attorneys, the court found that their submission of the fake opinions did not constitute a violation of 18 U.S.C. § 505. The statute states that it is a crime to knowingly forge the signature of a United States Judge or the seal of a federal court. Because the fake opinions did not include a signature or seal, the statute was not violated. But the court noted that the submission of fake opinions raises concerns with protecting the integrity of federal judicial proceedings and is an abuse of the adversary system.

Ultimately, the implicated lawyers were required to pay a penalty of $5,000 and to send letters to each individual judge falsely identified as the author of the fake opinions. Judge Castel’s opinion is a reminder that while a court may be forgiving of a lawyer’s choice to cut corners, lying to the court is still sanctionable.

Cite: Mata v. Avianca, Inc., No. 22-cv-1461, slip op. (S.D. NY. June 22, 2023).

Images from Opinion of the Supreme Court of the United States.

On June 8, 2023, the United States Supreme Court unanimously ruled in favor of Jack Daniels in the case of Jack Daniel’s Properties, Inc. v. VIP Products LLC, 599 U.S. ___ (2023). The case arose from Jack Daniel’s complaint about VIP’s sale of a dog toy designed to resemble a bottle of Jack Daniel’s whiskey. As shown below, there is no question that the VIP bottle is designed to resemble the Jack Daniels bottle, although several of the notable components are modified for comedic purposes.  For example, “Jack Daniels” is replaced with “Bad Spaniels”, and references to Old No. 7, is replaced with a numeric nod to dog excrement.

Jack Daniels sent a cease and desist letter to VIP shortly after the product launched. VIP filed suit, seeking a declaratory judgment that Bad Spaniels neither infringed nor diluted the Jack Daniels brand. Jack Daniels countersued, and the District Court initially ruled in favor of Jack Daniels, finding both infringement and dilution by tarnishment.

The 9th Circuit reversed on appeal. Finding that the design of the Bad Spaniels bottle was an “expressive work” parodying the elements of the Jack Daniels bottle for non-commercial purposes, the 9th Circuit held that the District Court erred in not applying the threshold First Amendment test derived from Rogers v Grimaldi, 875 F. 2d 994, 999 (2nd Cir. 1989). The goal of the Rogers test is to limit the application of the Lanham Act to expressive works where “the public interest in avoiding consumer confusion outweighs the public interest in free expression.” Under the Rogers test, the use of another’s mark in an expressive work will not be actionable under the Lanham Act unless it “has no artistic relevance to the underlying work whatsoever, or if it has some artistic relevance, unless [it] explicitly misleads as to the source or content of the work.” These factors are not a rigid test to be applied mechanically, but instead a balancing test that recognizes that the trademark rights of the senior user and the public’s right to not be confused must be carefully weighed against the artistic license granted to the junior user. The 9th Circuit remanded the dispute to the District Court to review in light of the Rogers test, where the District Court found that Jack Daniels could not prove the VIP product had no artistic relevance nor that the product was explicitly misleading.  The 9th Circuit affirmed the ruling, and the Supreme Court granted certiorari.

In a 9-0 opinion drafted by Justice Elena Kagan, the Supreme Court reversed the 9th Circuit’s holding. The Supreme Court criticized the 9th Circuit’s opinion that “because Bad Spaniels ‘communicates a humorous message,’ it is automatically entitled to Rogers’ protection.” The Court noted that applying Rogers to all matters where there is an expressive element would impermissibly extend Rogers to nearly all facets of life and potentially supplant the purpose of trademark law.  The Court explained that trademarks act “as source identifiers—as things that function to ‘indicate the source’ of goods, and so to ‘distinguish’ them from ones ‘manufactured or sold by others.’ And because of this, “trademarks are often expressive, in any number of ways.”

The opinion stresses that the defendant’s use must be considered in determining the applicability of the Rogers test. Citing to a litany of cases, the Court noted that the Rogers test has traditionally been used only in the context of “non-trademark” use, i.e., where the defendant has used the mark at issue in a “non-source-identifying way”, typically in an expressive function. For example, as noted by J. Kagan, the Ninth Circuit applied the Rogers test to evaluate the band Aqua’s song “Barbie Girl” when toymaker Mattel sued the group for trademark infringement. Here, the record presented evidence—including even VIP’s own admission—that VIP used the design elements as a source identifier for its products. As such, the Rogers test should not have been applied. 

The Court further reversed the 9th Circuit’s ruling as to the “fair use” defense related to dilution by tarnishment. The 9th Circuit opined that VIP’s use of the mark was non-commercial in nature even if it was used to sell a product because it “parodies” and “conveys a humorous message.” Without setting the limits of “noncommercial use”, the Court expressly rejected the opinion that every parody or humorous commentary would automatically benefit from this defense. Instead, the Court again turned to the purpose of the use as codified in Section 43 of the Lanham Act, finding that the defense does not apply when the use is as a designation of source for the person’s own goods or services, as VIP had admitted its use to be. 

In summation, the Court held as follows and remanded the case for further proceedings consistent therewith:

Today’s opinion is narrow. We do not decide whether the Rogers test is ever appropriate, or how far the “noncommercial use” exclusion goes. On infringement, we hold only that Rogers does not apply when the challenged use of a mark is as a mark. On dilution, we hold only that the noncommercial exclusion does not shield parody or other commentary when its use of a mark is similarly source-identifying. It is no coincidence that both our holdings turn on whether the use of a mark is serving a source-designation function. The Lanham Act makes that fact crucial, in its effort to ensure that consumers can tell where goods come from.

As the opinion notes, the Court did not make any decisions as to whether VIP actually infringed Jack Daniel’s trademark rights. That decision will be in the Ninth Circuit’s hands, who are ordered to review the dispute without using the Rogers test. Jack Daniels must still demonstrate that VIP’s products are likely to confuse an ordinary consumer as to the affiliation between VIP and Jack Daniels and dilute Jack Daniel’s brand, although such was already determined when the matter was first heard by the District Court. This case will likely be watched closely by famous brands who often find their brands parodied in unrelated products, as they seek to prevent any damage to their brand image.

We also note that this is the second case within the past month where the Supreme Court reined in a fair-use defense in the context of the nature of the use. In Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. ___ (2023), which we discussed here, the Supreme Court declined to extend fair use to the Andy Warhol Foundations’ licensing of a Warhol print that was based on a photograph of Prince. In that case, the Court focused on the economical use and purpose of the original photograph. The Supreme Court is clearly sending a message that fair use will continue to be fact intensive to the specific issue at hand and that the specific use of the contested material is a crucial focus point. 

When award-winning photographer Lynn Goldsmith snapped a portrait of the artist formerly known as Prince for Newsweek in 1981, she could not have predicted the cultural and legal impact the pop legend’s portrait would have. In 1984, Vanity Fair sought to license the photograph for an “artist reference” in a story about the musician. Goldsmith agreed to license a one-time use of the photograph with full attribution. Vanity Fair commissioned Andy Warhol to create a silkscreen using Goldsmith’s image and used Warhol’s piece in the magazine with attribution as promised. However, Andy Warhol would go on to create 15 additional works using the Goldsmith photograph, now known as the artist’s “Prince Series.” Although Warhol created the Prince Series nearly forty years ago and three years prior to Warhol’s death, it was not until 2016 when Condé Nast featured the “Orange Prince,” one of Warhol’s silkscreen prints, as part of its tribute to Prince’s passing that Goldsmith learned of the additional reproductions. Condé Nast paid the Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”) $10,000 for the license, while Goldsmith received neither a license fee nor a source credit.

Upon failure to resolve the matter privately, AWF filed suit against Goldsmith, seeking a declaratory judgment that Warhol’s works did not infringe Goldsmith’s copyright in the original photograph, or, in the alternative, Warhol’s works constituted fair use of the subject photograph.[1] The Southern District of New York granted summary judgment to AWF on its claim of fair use, but the Second Circuit Court of Appeals reversed.

The Copyright Act motivates creativity by granting the author of an original creative work rights to reproduce their work, prepare derivatives works, and (in the case of pictorial or graphic works) display the copyrighted works publicly. This ownership interest in the creative work is balanced with the general public’s need to access the creative arts and exercise First Amendment rights. The fair use doctrine (the basis of AWF’s copyright infringement defense) allows use of a copyrighted work by persons other than the author for “purposes such as criticism, comment, news reporting, teaching . . ., scholarship, or research”[2] and is evaluated through multiple factors. On petition for writ of certiorari, AWF asked the Supreme Court to evaluate whether the Condé Nast licenses are fair use based on just the first fair use factor, “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes.”[3] On this issue, the Supreme Court agreed with the Second Circuit that the first factor of fair use favored Goldsmith. Because AWF did not dispute that the remaining fair use factors favored Goldsmith, the Court affirmed the Second Circuit’s finding of copyright infringement.

The first factor of fair use considers the nature of and reasons for a copier’s use of an original work.[4] “The larger the difference, the more likely the . . . factor weighs in favor of fair use. The smaller the difference, the less likely.”[5] When the original and the copy share a similar purpose, there is a concern that the copy will substitute for the original. Because the copyright owner has the exclusive right to prepare derivative works of their original—that is, recasts, transformations, or adaptations of the original work—the copy must be substantially transformative to have a different purpose or character than the original and that degree of transformation must also be balanced against any commercial nature of the use.

AWF argued that the Prince Series is sufficiently transformative of Goldsmith’s original photograph because the artworks convey a different meaning or message than her photograph. Yet, because the first use factor focuses on the degree in which the infringing use has a different purpose or character, the Court ultimately sided with Goldsmith. The majority found that AWF’s licensing of the “Orange Prince” copy to Condé Nast is not a substantially different purpose than Goldsmith’s photograph. Goldsmith took the original photograph and licensed it to Newsweek for use in an article about Prince, and then similarly licensed the work to Vanity Fair in association with an article about Prince. AWF licensed the “Orange Prince” to Condé Nast for an article about Prince. “As portraits of Prince used to depict Prince in magazine stories about Prince, the original photograph and AWF’s copying use of it share substantially the same purpose,” wrote Justice Sonia Sotomayor for the majority.

The majority opinion stresses that its opinion is limited to AWF’s license to Condé Nast: “Only . . . AWF’s commercial licensing of ‘Orange Prince’ to Condé Nast, is alleged to be infringing. We limit our analysis accordingly. In particular, the Court expresses no opinion as to the creation, display, or sale of any of the original Prince Series works.”[6] A concurrence written by Justice Neil Gorsuch (joined by Justice Ketanji Brown Jackson) further argued that the subsequent use (AWF’s licensing to Condé Nast) is the relevant inquiry rather than considering the original copier’s (Andy Warhol) intent in creating the “Orange Prince.” Conversely, Justice Elena Kagan’s (joined by Justice John Robert’s) condemnatory dissent sharply criticized the majority’s purported failure to appreciate how Warhol’s work differed from Goldsmith’s photograph. The dissent specifically cited to the Court’s decision just over two years ago in Google LLC v. Oracle America, Inc., where Warhol’s works were deemed the “perfect exemplar of a ‘copying use that adds something new and different.’”[7] The majority opinion dismisses the dissent as “a false equivalence between AWF’s commercial licensing and Warhol’s original creation” which results in “a series of misstatements and exaggerations, from the dissent’s very first sentence.”[8]

Most often in fair use inquiries, the dispute focuses on a copier’s use of the copyrighted work. It is not often a court is presented with the issue of a third party’s independent use (that is, use without the involvement of the copy’s creator) of the subsequent work. The majority opinion is narrow and focuses on one specific fair use factor in the context of one specific use. The Court’s decision cautions that the motivations behind the third party’s use must be considered on their own merit, rather than allowing the use and motivations of the original work to automatically transfer to the third party’s use.

Significant also to the finding of infringement is that the remaining fair use factors—including the fourth factor, “the effect of the use upon the potential market for or value of the copyrighted work”—was admitted to favor Goldsmith. In fact, that is precisely what occurred in this matter. Throughout her career, Goldsmith regularly photographed celebrities and licensed those photographs to magazines for articles about that celebrity. Condé Nast needed a picture of Prince for its 2016 memorial article about Prince, and it licensed the “Orange Prince” from AWF instead of Goldsmith’s photograph. This use “served the same essential purpose of depicting Prince in a magazine commemorating his life and career.”[9]

Despite the pains made by the majority to limit the opinion’s reach, this decision will likely have significant ramifications for the art world, particularly art markets and licensing. While here the original artist’s use itself is unaddressed, the decision may temper a creator’s ability to market new creative works that incorporate copyrighted works. The fair use doctrine’s intent is to protect use of copyrighted works in particular contexts and has particular importance in artistic criticism and parody. Though a creator may still be able to express themselves artistically using the copyrighted work, finding a gallery or dealer willing to accept the work may prove more challenging. For those willing to accept the work, expect strong warranties and artist indemnification contract clauses.

Read the Supreme Court’s opinion here.

Special thanks to William Wildman, Loyola University New Orleans College of Law, Class of 2023, for his assistance in the researching and drafting of this post.

[1] See Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F.Supp. 3d 312 (S.D. N.Y. 2019).

[2] 17 U.S.C. § 107.

[3] Id.

[4] Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 598 U.S. ___ (2023).

[5] Id.

[6] Id. at ____ (slip op. 21).

[7] Id. at ____ (dissent op. 2).

[8] Id. at ____ (slip op. 22, n. 10).

[9] Id. at ___ (slip op. 23, n. 11).

On May 10, 2023, the Texas State Senate passed H.B. 4, titled the Texas Data Privacy and Security Act (“TDPSA”), sending the bill to Governor Abbott’s desk for final signature. If signed into law, Texas will join a growing contingency of states enforcing comprehensive data privacy laws for their residents.

This alert provides answers to some general questions about the TDPSA as it is currently written. Be on the lookout for additional updates about the Act once signed by Governor Abbott.

Who will be required to comply with the TDPSA?

The TDPSA will regulate persons and entities that: (a) conduct business in Texas or produce products or services consumed by Texas residents; (b) processes or engages in the sale of personal data; and (c) is not a small business as defined by the U.S. Small Business Administration, unless the small business is involved in the sale of sensitive personal information. This applicability standard is broader than many other state privacy laws previously enacted because it does not have a revenue threshold. Rather, the applicability is based on whether the business qualifies a “small business”, which is a variable, context-specific standard, the status of which can be undone by its affiliations.

If you are a small business, but you are selling Texas residents’ sensitive personal data, the TDPSA will require you to obtain the data subject’s consent prior to sale.

Does my business process or sell personal data under the TDPSA?

“Personal data” is defined as any information that is linked or reasonably linkable to an identified or identifiable individual. If you are processing personal data, that means that your business is collecting, using, storing, disclosing, analyzing, deleting, or modifying of personal data. “Sale” means the sharing, disclosing, or transferring of personal data for monetary or other valuable consideration to a third party. We have seen, particularly in California, that “sale” can have significantly broader applications than traditional notions of what constitutes a sale, such as receipt of analytic data. It has yet to be seen whether this Act would take a similar broad approach.

What rights would be granted to Texas residents?

Texas residents could soon have certain rights related to their personal data, including rights of access, correction, deletion, portability, the right to opt out of certain processing, and the right to appeal a controller’s decision regarding a rights request. The Act could also require data minimization, processing limitations, data security, non-discrimination, third-party contracting, and data protection assessments, as well as impose certain requirements directly on entities who process data on behalf of a party that makes decisions on how that data is used.

Which other states have comprehensive privacy laws?

As of this writing, seven states have signed comprehensive data privacy laws. California was the first state with the California Consumer Privacy Act (“CCPA”), effective as of January 2020. California’s amendments to the CCPA and the Virginia’s Consumer Data Protection Act (“VCDPA”) became effective January 1, 2023. Colorado and Connecticut’s laws will go into effect on July 1, 2023, while Iowa and Indiana’s will go into effect in 2025 and 2026, respectively. Similar laws from Montana and Tennessee are also awaiting final signature.

When will the TDPSA be effective?

If signed, the TDPSA will be effective on March 1, 2024.

Who is responsible for enforcement? Is there a private right of action?

The TDPA does not contain a private right of action. Rather, all enforcement will be through the Texas Attorney General, but the AG can make a civil investigative demand following a consumer request.

What is the penalty for violations?

The penalty is $7,500 per violation plus attorney fees and investigation costs incurred by the AG. Once the final act is signed, Kean Miller will provide additional resources regarding compliance with this Act. If you want to discuss this possible new Act in further detail, contact your privacy counsel.

I. Introduction

Attorneys experienced in defending depositions know the importance of witness preparation. A key component of this process requires counsel to sift through large amounts of produced discovery to identify specific documents ripe for examination by opposing counsel. An interesting issue unfolds when an examining attorney asks a witness during the deposition to recount a list of the documents provided by the defending attorney for the witness’s review prior to the deposition. Specifically, does the work product doctrine protect against such a disclosure?

The argument against disclosure is rooted in the work product doctrine as interpreted by the landmark case Sporck v. Peil, 759 F.2d 312 (3d Cir. 1985). In Sporck, the Third Circuit held that deposing counsel could not compel the disclosure of a list of documents already produced in discovery that defending counsel used to prepare a witness for his deposition. The court reasoned that an attorney’s compilation of discovery documents strategically selected for deposition preparation constitutes opinion work product as it inherently reveals the attorney’s mental impressions, opinions, and legal theories.

In the absence of United States Supreme Court guidance, several circuit courts adopted the Sporck approach.[1] The Fifth Circuit, however, has yet to take a stance. Moreover, district courts within the Fifth Circuit have faced this exact issue on several occasions and failed to reach a uniform consensus. Nonetheless, despite such seeming ambiguity, this coveted list is likely protected under the work product doctrine in the Fifth Circuit.

II. Fifth Circuit District Court Cases Where the Work Product Doctrine Applied

The Southern District of Texas, Brownsville Division was the first inner circuit district court to analyze the work product doctrine in this context. In ASARCO LLC v. Americas Mining Corporation, No. 1:07-CV-00018, 2007 WL 9736101 (S.D. Tex. Nov. 27, 2007) (unreported), the defendant’s employee testified that he reviewed documents to prepare for the deposition. After the defendant’s attorney instructed the employee not to divulge which documents he reviewed pursuant to the work product privilege, plaintiff’s counsel filed a motion to compel counsel’s disclosure. The ASARCO court, citing Sporck, ultimately applied the work product doctrine to protect the list of documents reasoning that counsel’s strategic selection and compilation of documents for a witness’s review inevitably reflects mental impressions, opinions, and legal theories. Importantly, the court noted that Federal Rule of Civil Procedure 612 – the rule requiring disclosure of a writing used to refresh a witness’s memory before testifying “if justice so requires” – could conceivably trump the work product doctrine. However, the court declined to apply this Rule 612 caveat given plaintiff counsel’s failure to lay a proper foundation establishing that (1) the witness used a document to refresh his memory and (2) justice required disclosure of the document.[2]

Similarly, in Hanover Ins. Co. v. Plaquemines Parish Government, 304 F.R.D. 494 (E.D. La. 2015), a former employee met with the defendant’s counsel to prepare for an upcoming deposition. Prior to this deposition, the defendant’s attorney selected documents produced in discovery for the former employee to review. Plaintiff’s counsel asked the former employee to identify the documents shown to him by defendant’s counsel during the deposition. Defendant’s counsel instructed the former employee not to answer the question based on the work product doctrine. Plaintiff’s counsel argued that Rule 612 mandated disclosure. In support thereof, plaintiff’s counsel reasoned that justice compelled disclosure to determine when the former employee learned of the facts to which he testified. The Eastern District of Louisiana found this argument unavailing and instead concluded that the work product doctrine protected the information. Relying on a case from the Fourth Circuit which adopted the Sporck doctrine, In re Allen, 106 F.3d 582, 608 (4th Cir. 1997), the court reasoned that when an attorney sorts through a large volume of documents produced in discovery and recognizes a select collection as important to the litigation, that compilation of documents necessarily reveals the attorney’s opinions regarding the litigation.

III. Fifth Circuit District Court Cases Where the Work Product Doctrine did not Apply

In Fisher v. Halliburton, No. CIV.A. H-05-1731, 2009 WL 483890 (S.D. Tex. Feb. 25, 2009) (unreported), defendant’s counsel prepared one of its former employees for an upcoming deposition with specific documents produced in discovery. Plaintiff’s counsel asked the witness to identify these documents during the deposition, but the defendant’s counsel objected relying on the work product doctrine. Though the facts aligned perfectly with ASARCO, the Southern District of Texas, Houston Division found, in a rather conclusory manner, that the work product doctrine did not apply. To support its holding, the court cited (1) dicta from In re Int’l Sys. & Controls Corp. Sec. Litig., 693 F.2d 1235, 1240 (5th Cir. 1982) – a factually dissimilar case where the Fifth Circuit found that an audit committee’s compilation of materials for a binder in response to an SEC request did not constitute work product – and (2) the oft-quoted rationale that “to imbue every compilation of documents reviewed by a witness before testifying at trial or at deposition with work product privilege protection would all but write Rule 612 of the Federal Rules of Evidence out of existence.”

Likewise, in In re Xarelto Prod. Liab. Litig., 314 F.R.D. 397 (E.D. La. 2016), plaintiff’s counsel requested a status conference to determine the discoverability of a list of documents that defendant’s counsel provided to a witness for his review prior to the deposition. Defendant’s counsel objected arguing the Sporck rationale. In contrast, plaintiff’s counsel relied on Rule 612 and Fisher to support its argument in favor of disclosure. The court acknowledged the integrity of the Sporck and Hanover rationales but nonetheless held that “either party should know what documents or material the witness reviewed before the deposition so that counsel can be prepared to efficiently examine the witness on these documents.” The court’s reasoning, without reliance on any inner circuit authority, rested on practicality and judicial economy. The court explained that, without this holding, deposing counsel would have to show the witness each document, one at a time, and ask “if he or she reviewed Document 1, Document 2, and so on until reaching the vicinity of Document 3,000,000,” an outcome the court categorized as “impractical” and “unworkable.”

IV. Predicted Outcome in Fifth Circuit District Courts

The foregoing cases seemingly display an even divide within the Fifth Circuit. However, there is both a strong qualitative and quantitative argument favoring protection of a list revealing defense counsel’s deposition preparation material in the Fifth Circuit. As to the former, the Fisher court, and by extension the In re Xarelto Products Liability Litigation court, relied on cases that were factually distinguishable and outside the Fifth Circuit. Both courts also failed to appreciate the legislatures’ intention that Rule 612 and the work product doctrine co-exist as evidenced by Notes of Committee on the Judiciary, House Report No. 93–650 which provides that “[t]he Committee intends that nothing in the Rule be construed as barring the assertion of a privilege with respect to writings used by a witness to refresh his memory.” As to the latter, a majority of Fifth Circuit district courts[3] and all circuit appellate courts[4] that have considered this issue approve of the Sporck rationale in this specific context. Considering both arguments, defense counsel facing this issue in the Fifth Circuit today is likely safe from an order requiring disclosure of such a list pursuant to the work product doctrine.

[1] Shelton v. Am. Motors Corp., 805 F.2d 1323, 1329 (8th Cir. 1986) (adopting Sporck approach); Gould Inc. v. Mitsui Min. & Smelting Co., 825 F.2d 676, 680 (2d Cir. 1987) (same); Matter of Grand Jury Subpoenas Dated Oct. 22, 1991, & Nov. 1, 1991, 959 F.2d 1158, 1166 (2d Cir. 1992) (same); In re San Juan Dupont Plaza Hotel Fire Litig., 859 F.2d 1007, 1018 (1st Cir. 1988) (compelling disclosure because facts did not align with those in Sprock); In re Allen, 106 F.3d 582, 608 (4th Cir. 1997) (adopting Sporck approach).

[2] ASARCO LLC v. Americas Mining Corp., No. 1:07-CV-00018, 2007 WL 9736101, at *1 (S.D. Tex. Nov. 27, 2007) (unreported) (noting that despite the work product doctrine generally protecting a list of deposition prep materials, “[u]nder Rule 612, if a party establishes that a witness used a writing before he testified to refresh his memory for the purpose of testifying, and if the court determines it to be necessary in the interest of justice, then the party is entitled to have this document produced, to inspect it, and to cross-examine the witness with it”).

[3] Janvey v. Greenberg Traurig, LLP, No. 3:12-CV-4641-N-BQ, 2019 WL 13175533, at *5 (N.D. Tex. Feb. 12, 2019) (slip copy); Benevis, LLC V. Mauze & Bagby, PLLC, No. 5:12-CV-36, 2015 WL 12763537, at *16 (S.D. Tex. Dec. 14, 2015); Klein v. Fed. Ins. Co., No. 7:03-CV-102-D, 2014 WL 3408355, at *4 (N.D. Tex. July 14, 2014) (unreported); S.E.C. v. Brady, 238 F.R.D. 429, 443 (N.D. Tex. 2006); Thomas v. Gen. Motors Corp., 174 F.R.D. 386, 388 (E.D. Tex. 1997).

[4] Shelton v. Am. Motors Corp., 805 F.2d 1323, 1329 (8th Cir. 1986) (adopting Sporck approach); Gould Inc. v. Mitsui Min. & Smelting Co., 825 F.2d 676, 680 (2d Cir. 1987) (same); Matter of Grand Jury Subpoenas Dated Oct. 22, 1991, & Nov. 1, 1991, 959 F.2d 1158, 1166 (2d Cir. 1992) (same); In re San Juan Dupont Plaza Hotel Fire Litig., 859 F.2d 1007, 1018 (1st Cir. 1988) (compelling disclosure because facts did not align with those in Sprock); In re Allen, 106 F.3d 582, 608 (4th Cir. 1997) (adopting Sporck approach).

I. INTRODUCTION

Premises owners of commercial establishments have relied on Chapter 95 of the Texas Civil Practice and Remedies Code (“Chapter 95”) to defend against negligence actions brought by independent contractors since its advent in 1996. Chapter 95 affords premises owners complete immunity against claims (1) based on the personal injury, death, or property damage to co-owners, contractors, subcontractors, or employees of the same (2) that resulted from “the condition or use of an improvement to real property where the contractor or subcontractor constructs, repairs, renovates, or modifies the improvement.”[1] This immunity is only thwarted upon proof that:

(A) the property owner exercised or retained some control over the manner in which the work was performed, other than the right to order the work to start or stop or to inspect progress or receive reports; and

(B) the property owner had actual knowledge of the danger or condition resulting in the personal injury, death, or property damage and failed to adequately warn.[2]

Chapter 95 language seems ambiguous on its face to many, particularly in the context of understanding what the statute contemplates insofar as the “same improvement” requirement, a premises owner’s control, or an agent’s actual knowledge of the dangerous condition. Fortunately, the Texas Supreme Court provides great insight as to its application. This article compiles, summarizes, and highlights the key components of all eight Texas Supreme Court Chapter 95 cases in an effort to assist practitioners and premises owners alike in efficiently and effectively determining the viability of a Chapter 95 defense for their own claims.

II. CASE LAW

1. Abutahoun v. Dow Chem. Co., 463 S.W.3d 42 (Tex. 2015)

The Court’s first encountered Chapter 95 in Abutahoun v. Dow Chem. Co. The Abutahoun Court established Chapter 95’s applicability to claims rooted in a property owner’s contemporaneous acts of negligence. In Abutahoun, defendant Dow Chemical Company (“Dow”) hired a contractor to install pipelines at its facility in Texas. Dow’s employees, along with the contractor’s employees, performed the installation work on the site. The plaintiff, an employee of the contractor, alleged injuries from asbestos exposure resulting from both his and the other Dow employees’ pipeline work. Dow moved for summary judgment based on Chapter 95 immunity.

On appeal, the Texas Supreme Court considered whether Chapter 95 applies to negligence claims based on the property owner’s negligence – as opposed to the contractor’s negligence. Reasoning that “the Legislature did not distinguish between negligence claims based on contemporaneous activity or otherwise, and neither shall we,” the Court found that it did. Chapter 95 accordingly applied to the plaintiff’s claim based on the contemporaneous acts of negligence promulgated by the Dow employees, and because the plaintiff did not argue the exceptions to Chapter 95 immunity, the Court affirmed the appellate court’s reversal of the trial court’s judgment and issued a take-nothing judgment in Dow’s favor.

Importantly, the Court also took this opportunity to outline its appreciation for the statutory phrase “condition or use of the real property” in dicta. Emphasizing the disjunctive conjunction in “condition or use,” the Court clarified that Chapter 95 protects against claims for negligence based on both an improvement’s (1) use – pursuant to respondeat superior theory of liability – or its (2) condition – rooted in premises defect liability.

Key Take-Aways:

  • Chapter 95 applies to negligence claims resulting from the contemporaneous acts of a property owner’s direct employees.
  • Chapter 95 encompasses negligence based on both a respondeat superior and premise defect theory of liability.

2. First Texas Bank v. Carpenter, 491 S.W.3d 729 (Tex. 2016)

In First Texas Bank v. Carpenter, the Court elaborated on the nature of work subject to Chapter 95 immunity, namely construction, repairs, renovations, or modifications of improvements. In Carpenter, First Texas Bank (“Bank”) tasked its “go-to” maintenance man, the plaintiff, with inspecting its roof for a suspected leak. After the plaintiff reported hail damage on the roof, the bank asked the plaintiff to show it to an adjuster in hopes of securing financial assistance with the repairs. The plaintiff sustained injuries after falling off the Bank’s ladder during this presentation. The plaintiff sued the Bank for injuries, and the Bank moved for Chapter 95 immunity in defense. The Texas Supreme Court examined two issues on appeal, namely (1) whether proof of an executed contract is necessary to qualify as a Chapter 95 contractor and (2) whether the nature of plaintiff’s work at the time of the injury implicates Chapter 95.

The Court found that a contract between the premises owner and its contractors is not necessary to establish a worker’s status as a Chapter 95 contractor. Rather, the Court explained that a Chapter 95 contractor is merely “someone who makes improvements to real property.” Nonetheless, the Court noted that Chapter 95 does not apply to all contract work on improvements – only those involving construction, repairs, renovations, or modifications to real property. Here, the Carpenter record did not evidence a mutual understanding by both the plaintiff and the Bank that the plaintiff would in fact make the repairs to the roof, with or without the adjuster’s approval to assist with the payment. The Court accordingly affirmed the appellate court’s reversal of the trial court’s judgment in favor of the Bank as Chapter 95 could not apply without proof that the Bank in fact hired the plaintiff to repair the roof and the plaintiff merely presented the damage to the adjuster as a preliminary step in rendering the repairs.

Key Take-Aways:

  • A Chapter 95 contractor is one who, regardless of a formal contract, makes improvements to real property.
  • Chapter 95 does not apply to all contract work to improvements; it only covers contract work involving the construction, repair, renovation, or modification of an improvement.

3. Ineos USA, LLC v. Elmgren, 505 S.W.3d 555 (Tex. 2016)

In Ineos USA, LLC v. Elmgren, the Court (1) determined that a premises owner’s employee cannot successfully claim Chapter 95 protection; (2) expanded the application of the “same improvement” statutory language and (3) heightened the showing of actual knowledge required to defeat Chapter 95 immunity. In Ineos, Ineos USA LLC (“Ineos”) hired a contractor to replace the valves for one furnace that served as a one component within a larger processing system at the facility. Prior the valve replacement, Ineos and the contractor’s employees shut down the furnace connected to the valve to be replaced as required. However, a furnace 200 feet away leaked and caused an explosion which injured the plaintiff, the contractor’s employee. The plaintiff sued Ineos and one of its direct employees on a negligence theory. Both Ineos and its employee moved for summary judgment on a Chapter 95 basis. The Texas Supreme Court granted the defendants’ petitions to review to determine whether (1) a direct employee qualifies for Chapter 95 immunity, (2) different pieces of connected equipment can constitute the same improvement under Chapter 95, and (3) the premises owner’s actual knowledge necessary to destroy Chapter 95 immunity must be specific.

The Court first held that a premises owner’s employee cannot claim Chapter 95 immunity. However, importantly, the Court noted that if an employee is found liable and the premises owner is subject to vicarious liability for the same, the premises owner may still invoke Chapter 95 immunity. The Court accordingly affirmed the appellate court’s reversal of the lower court’s judgment granting the defendant-employee’s motion for summary judgment.

As to the second issue, the plaintiff argued that Chapter 95 immunity could not protect Ineos here as the improvement which caused the injury was not the same improvement subject to the plaintiff’s work “because although the furnaces were interconnected, they were not so integrated as to be an indivisible improvement.” The Court rejected this argument explicitly favoring a broad definition of improvement under Chapter 95. The Court reasoned that “the valves and furnaces, though perhaps ‘separate’ in a most technical sense, were all part of a single processing system within a single plant on Ineos’s property.”

Finally, the plaintiff argued that Ineos could not enjoy Chapter 95 immunity based on Ineos’s actual knowledge of the dangerous condition. The plaintiff only presented evidence that Ineos knew of the dangerous condition of having explosive gases and hydrocarbons in the plant as a whole. The Court condemned this relaxed interpretation of the actual knowledge exception and explained the importance of identifying the specific dangerous condition which caused an injury. Only evidence of actual knowledge as to the specific dangerous condition that caused the injury challenges Chapter 95 immunity. Here, the plaintiff misidentified the dangerous condition – his injuries did not result from the presence of gas at the plant itself, but rather from the presence of gas in the pipe on which he was working. For these reasons, the Court affirmed the summary judgment in Ineos’s favor based on Chapter 95 immunity.

Key Take-Aways:

  • A premises owner’s employee cannot claim Chapter 95 immunity, but a premises owner may claim Chapter 95 immunity when its employee’s negligence is imputed to it.
  • Chapter 95’s “same improvement” requirement is interpreted broadly to account for individual pieces of equipment within an overall system.
  • Chapter 95’s actual knowledge requirement is specific to the dangerous condition which caused the injury.

4. Endeavor Energy Res., L.P. v. Cuevas, 593 S.W.3d 307 (Tex. 2019)

In Endeavor Energy Res., L.P. v. Cuevas, the Texas Supreme Court found that Chapter 95 applies to a claim against a premises owner for negligent hiring. The defendant and premises owner, Endeavor Energy Resources (“Endeavor”), hired a contractor to drill a well on its premises. An employee for the contractor died after striking his head while working on the job. The survivors of the employee filed suit against Endeavor claiming, inter alia, negligent hiring of the contractor. Endeavor moved for summary judgment on a Chapter 95 basis. The Court granted Endeavor’s petition for review to determine whether Chapter 95 applies to a negligent hiring claim.

On appeal, the employee’s survivors argued that Chapter 95 cannot apply here as an action for negligent hiring does not “arise from the condition or use of an improvement to real property.” The Court disagreed finding that Chapter 95 does in fact apply to negligent hiring claims. The Court reasoned that a negligent-hiring claim is twofold as it hinges on the negligence of both the hiring party, the premises owner, and the hired party, the contractor. Notably, “the statute’s plain language requires only that the claim arise from the use of an improvement to the property, not that the property owner’s negligence involve the use of the improvement, or that the use of the improvement be the only cause of the injury.” Thus, the Court concluded that negligent hiring claims afford Chapter 95 protection because the decedent must still establish the contractor acted negligently with respect to the improvement. The Court therefore reversed the appellate court’s judgment accordingly.

Key Take-Aways:

  • A premises owner can claim Chapter 95 immunity against a claim for negligent hiring when the contractor for which the premises owner is sued for negligently hiring nonetheless negligently used the improvement to real property causing the injury.

5. Los Compadres Pescadores, L.L.C. v. Valdez, 622 S.W.3d 771 (Tex. 2021), reh’g denied (June 11, 2021)

In Los Compadres Pescadores, L.L.C. v. Valdez, the Court explained when a dangerous condition amongst workplace constitutes a dangerous condition of a specific improvement – i.e., when the dangerous condition, by reason of its proximity to the improvement, creates a probability of harm to the contractor working on the improvement in an ordinary manner. The Court solidified an example as to what constitutes sufficient evidence of a premises owners’ actual knowledge of a danger condition. The defendant-premises owner, Los Compadres Pescadores (“Los Compadres”), hired plaintiffs, employees for Paredes Power Drilling, to construct a concrete foundation into the ground to support buildings it intended to construct thereafter. Los Compadres hired an individual named Torres to manage and supervise the project. Before preforming their duties, the plaintiffs voiced concerns to Torres regarding the proximity of AEP Texas Central Company’s (“AEP”) power lines which hung over Los Compadres’s property and requested that he do something to remedy the situation. Despite the plaintiffs’ request, the power line remained in place, and Torres instructed the plaintiffs to continue with the work. The plaintiffs ultimately made contact with the power lines while attempting to place a piece of rebarb into the concrete foundation. The plaintiffs sued Los Compadres, and a jury found Los Compadres “knew or should have known about an unreasonably dangerous condition yet failed to adequately warn the plaintiffs of the condition or make the condition reasonably safe.”

On appeal to the Court, Los Compadres claimed Chapter 95 immunity. In response, plaintiffs refuted Chapter 95 application here on the basis that their injuries did not “arise from the condition or use of an improvement to real property where the contractor or subcontractor constructs, repairs, renovates, or modifies the improvement.” The Court clarified that the inquiry is not whether the power line acted as a dangerous condition of the premises or workplace as a whole, but rather whether it served as a dangerous condition of the improvement subject to the Chapter 95 work. To assist in making this distinction, the Court explained that “if a dangerous condition, by reason of its proximity to an improvement, creates a probability of harm to one who constructs, repairs, renovates, or modifies the improvement in an ordinary manner, it constitutes a condition of the improvement itself” and not merely to the workplace as a whole. Here, the Court found that the power line – a dangerous condition on the land itself – yielded a dangerous condition in the improvement subject to the contractors’ work.

Given Chapter 95’s application, the plaintiffs needed to show that Los Compadres possessed actual knowledge of this danger but failed to warn the plaintiffs nonetheless. The Court found that the record conclusively satisfied this burden. The Court pointed to the conversation prior to the plaintiffs’ job where they communicated to Torres the issue with the power lines and requested a remedy for the same, but he told the plaintiffs to continue despite the power lines remaining unmoved and energized. Imputing Torres’s knowledge to Los Compadres, the Court found this sufficient to constitute actual knowledge. In a last ditch effort, Los Compadres attempted to argue that the open and obvious nature of the dangerous condition negated any need for a warning, but the Court rejected this defense as the energized nature of the power line – unlike its presence – was not in fact open and obvious. The Court accordingly affirmed the jury verdict.

Key Take-Aways:

  • If a dangerous workplace condition, by reason of its proximity to an improvement, creates a probability of harm to the contractor constructing, repairing, renovating, or modifying the improvement in an ordinary manner, then the dangerous condition is imputed to the improvement.
  • Courts impute the actual knowledge of an agent to its principal – the premises owner.

6. Energen Res. Corp. v. Wallace, 642 S.W.3d 502 (Tex. 2022)

In Energen Res. Corp. v. Wallace, the Court held that Chapter 95 can apply to a negligence claim that arises from the condition or use of multiple improvements, only one of which need be the “same improvement.” The Court further demonstrated the Court’s seeming reluctance to find a premises owner exercised control sufficient to oppose Chapter 95 immunity. In Wallace, Energen Resources Corporation (“Energen”) hired a contractor to drill water wells on its land to facilitate the drilling of simultaneous oil well constructions done by separate contractors. The contractor ultimately contracted with a subcontractor to complete construction of the water wells. While on the job, an unexpected “gas kick” occurred at the oil well, and three days later, gas from the water well caught fire and exploded burning a subcontractor’s employee and damaging its equipment. The subcontractor and its employee sued Energen. Energen claimed Chapter 95 immunity on summary judgment. The Texas Supreme Court granted the subcontractor’s petition for review to analyze Chapter 95’s “same improvement” requirement and a premises owner’s control exception in application here.

On appeal, the plaintiffs rejected Chapter 95’s applicability on the basis of the “same improvement” requirement arguing that their injuries resulted from both the oil well and the water well and not just the water well which was the subject of their Chapter 95 work. The Court for the first time in a Chapter 95 context looked to the allegations in plaintiffs’ petition as evidence that the water well caused their injuries, at least in part. Furthermore, the Court clarified that that the negligent condition of the oil well did not negate the negligent condition of the water well. In other words, the Court clarified that a separate improvement’s contribution to a contractor’s injuries does not affect Chapter 95 applicability where the same improvement caused the contractor’s injuries.

Upon the Court finding Chapter 95 applied, the plaintiffs attempted to demonstrate Energen’s control by citing to a recommendation by Energen’s senior geologist regarding the depth of the water wells. However, the Court found this argument unpersuasive noting “merely making suggestions or recommendations which need not necessarily be followed, or prescribing alterations and deviations does not establish control.” Instead, the Court found Energen lacked any control detrimental to its Chapter 95 immunity by way of the fact that (1) the general contractor, not Energen, contracted with the subcontractor, and (2) the subcontractor’s manager testified that he never talked with or received information from anyone at Energen. The Court accordingly reversed the court of appeals’ judgment and reinstated the trial court’s take-nothing judgment.

Key Take-Aways:

  • Chapter 95 can apply to a negligence claim that arises from the condition or use of the same improvement notwithstanding additional negligence elsewhere attributable elsewhere.
  • Allegations made by plaintiffs within their pleadings can support a judgment in favor of a premises owner based on Chapter 95.
  • Evidence of suggestions or recommendations as to the contractor’s work do not constitute control as contemplated by Chapter 95.

7. SandRidge Energy, Inc. v. Barfield, 642 S.W.3d 560 (Tex. 2022)

In SandRidge Energy, Inc. v. Barfield, the Court applied the open and obvious doctrine to protect a premises owner in the context of Chapter 95. In Barfield, SandRidge Energy (“SandRidge”) contracted with OTI Energy Services (“OTI”) to modify lines connecting its oil and gas operations. Plaintiff, an employee for OTI tasked with connecting neutral lines to existing energized poles, sustained injuries after coming in contact with the energized pole. SandRidge moved for summary judgment under Chapter 95 and argued that the plaintiff could not demonstrate its duty to warn OTI of the energized pole given the danger it posed was open and obvious.

For the first time, the Texas Supreme Court found a premises owner did not maintain a duty to warn a contractor’s employees of a specific dangerous condition in a Chapter 95 context given the condition’s open and obvious nature. The Court applied the open and obvious defense here reasoning that the employee (1) admittedly knew the line was energized and dangerous, (2) was attempting to de-energize the pole prior to attaching the lines in accordance with his routine practice in the past, and (3) could not have obtained a more refined understanding of the danger posed via a warning from SandRidge. Notably, the Court declined to decide whether the necessary-use exception also applies to Chapter 95 cases as it did not even arguably apply here. The Court reinstated the trial court’s granted summary judgment accordingly.

Key Take-Aways:

  • Chapter 95 proponents may argue the open and obvious doctrine to demonstrate a lack of failure to warn of a dangerous condition.
  • The Court is undecided as to whether the necessary-use exception applies in a Chapter 95 context.

8. Weekley Homes, LLC v. Paniagua, 646 S.W.3d 821 (Tex. 2022)

In Weekley Homes, LLC v. Paniagua,  the Texas Supreme Court confirmed that judicial admissions in an opposing party’s pleadings may provide competent summary-judgment evidence under Chapter 95. In Paniagua, Weekly Homes LLC (“Weekly”) hired a contractor to construct townhomes on its land. Each townhome plot contained both a concrete driveway and a temporary electricity pole. While on the job, two of the contractor’s employees sustained injuries after lightning struck the temporary electricity pole which was conducted by water that accumulated on the driveway. The employees sued Weekly for negligence, and Weekly pled Chapter 95 immunity on summary judgment. In support of his contention that the employees’ injuries arose from the condition or use of the “same improvement,” Weekly pointed to the plaintiffs’ petition which claimed they “were working” at the driveway and “working at” the townhome construction site when the accident occurred. The Texas Supreme Court granted Weekly’s petition for review to determine whether a defendant can properly rely on the allegations within a plaintiff’s petition as Chapter 95 summary judgment evidence.

On appeal, the Court recognized that generally pleadings are not in fact competent summary-judgment evidence; however, the Court emphasized that courts may properly grant summary judgment based on deficiencies in an opposing party’s pleadings or allegations which serve as truthful judicial admissions in a petition. The Court cited to Energen Res. Corp. v. Wallace to support its ultimate conclusion that defendants may rely on the plaintiffs’ allegations within the pleading to demonstrate Chapter 95 applicability. The Court therefore reversed and remanded.

Key Take-Aways:

  • Courts permit premises owners to rely on plaintiffs’ allegations within pleadings to demonstrate the applicability of Chapter 95 in a summary judgment proceeding.

III. CONCLUSION

The Texas Supreme Court has molded Chapter 95 case law in a direction more favorable to premises owners with each passing case. It stands to reason that this trend will continue in the Court’s review of Chapter 95 cases for 2023. Until then, with the benefit of eight Texas Supreme Court cases from the last decade, practitioners and premises owners alike are well equipped with resources to gauge the prospects of success of a Chapter 95 defense.

[1] Tex. Civ. Prac. & Rem. Code Ann. § 95.002 (West).

[2] Tex. Civ. Prac. & Rem. Code Ann. § 95.003 (West) (internal punctuation omitted).