Attorney Immunity Shields Entity-Formation and Filing Work; Lanham Act Statutory Damages Require a Registered-Mark Basis and May Implicate a Jury Right

Introduction

In Lewis Brisbois Bisgaard & Smith LLP v. Bitgood (5th Cir. Feb. 27, 2026) (per curiam) (unpublished), a national law firm (Lewis Brisbois Bisgaard & Smith, LLP “LBBS”) sued Michael Joseph Bitgood (a/k/a “Michael Easton”), attorney Susan C. Norman, and attorney Bradley B. Beers after Bitgood and Norman discovered that LBBS’s Texas foreign LLP registration had lapsed and then registered a new Texas entity under the identical name. They also procured an assumed-name certificate—prepared and filed with Beers’s assistance—under the same name, and used the name and letterhead in court filings and related communications.

LBBS brought federal Lanham Act claims (trademark infringement under § 32, 15 U.S.C. § 1114; unfair competition under § 43(a), 15 U.S.C. § 1125), plus Texas-law unfair competition, fraud, and conspiracy theories. The district court granted summary judgment on infringement/unfair competition and conspiracy-to-infringe, entered a permanent injunction, and awarded statutory damages and attorney’s fees. On rehearing, the Fifth Circuit largely affirmed liability and injunctive relief, but reversed as to Beers on attorney immunity and vacated/remanded statutory damages and fees due to unresolved issues concerning registered-mark status and the proper basis for statutory damages (and potentially the Seventh Amendment).

Summary of the Opinion

  • Rehearing posture: En banc rehearing denied; panel rehearing denied for Norman and Bitgood; panel rehearing granted for Beers; prior opinion withdrawn and substituted.
  • Affirmed: Summary judgment on unfair competition, conspiracy to infringe, and the permanent injunction.
  • Reversed (Beers): Beers is protected by attorney immunity for the conduct at issue (entity-formation/assumed-name paperwork and related client communications).
  • Vacated & remanded: Statutory damages (as to each defendant) and attorney’s fees, because the court could not meaningfully review whether damages were properly tied to infringement of a registered mark, and because the district court did not explain its statutory basis.
  • Open question flagged: On remand, the district court should consider whether the Seventh Amendment requires a jury determination of the amount of Lanham Act statutory damages.

Analysis

Precedents Cited

1) Law-of-the-case and threshold jurisdiction: Rooker-Feldman

  • Miller v. Dunn, 35 F.4th 1007 (5th Cir. 2022), quoting Lance v. Dennis, 546 U.S. 459 (2006) (per curiam): framed Rooker-Feldman as barring federal “appellate” review of final state-court judgments. The panel relied on this finality requirement to reject abstention.
  • Lewis Brisbois Bisgaard & Smith, L.L.P. v. Norman (LBBS 1), No. 23-20065, 2024 WL 3595388 (5th Cir. July 31, 2024): the earlier interlocutory appeal (preliminary injunction) had already rejected Rooker-Feldman because there was no final state-court judgment.
  • Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988); Royal Ins. Co. of Am. v. Quinn-L Cap. Corp., 3 F.3d 877 (5th Cir. 1993); Gaalla v. Brown, 460 F. App'x 469 (5th Cir. 2012): supplied the governing standard for applying law of the case even after an interlocutory appeal—so long as the issue was “actually decided.” Using these authorities, the panel treated LBBS 1 as binding on Rooker-Feldman and “use in commerce.”

2) Attorney immunity (Texas law applied in federal court)

  • Ironshore Eur. DAC v. Schiff Hardin, L.L.P., 912 F.3d 759 (5th Cir. 2019): the central authority. The panel emphasized Ironshore’s focus on the character of the attorney’s conduct, not the attorney’s knowledge or motives, and its description of protected conduct as the “kind of conduct” attorneys engage in when “discharging duties to a client.”
  • Haynes & Boone, LLP v. NFTD, LLC, 631 S.W.3d 65 (Tex. 2021), citing Cantey Hanger, LLP v. Byrd, 467 S.W.3d 477 (Tex. 2015): reinforced that communications with clients and assistance in forming entities are paradigmatic legal services within the scope of representation. The panel used these cases to reject the district court’s reliance on Beers’s communications and awareness of LBBS’s existence.

3) Lanham Act “use in commerce” and law-of-the-case

  • Lewis Brisbois Bisgaard & Smith, L.L.P. v. Norman (LBBS 1), 2024 WL 3595388: held that defendants’ conduct constituted “uses in commerce,” and thus the district court properly relied on that holding at summary judgment.
  • Comm. for Idaho's High Desert, Inc. v. Yost, 92 F.3d 814 (9th Cir. 1996): cited in LBBS 1 for analogous facts—formation of a corporation and public communications supporting “use in commerce.”

4) Statutory damages, registered marks, dicta, and remand

  • Jim S. Adler, P.C. v. McNeil Consultants, L.L.C., 10 F.4th 422 (5th Cir. 2021): used to underscore that 15 U.S.C. § 1114(1)(a) is a cause of action for infringement of registered marks—central to vacating damages where the mark “Lewis Brisbois Bisgaard & Smith” had lapsed during the infringement period.
  • Int'l Truck & Engine Corp. v. Bray, 372 F.3d 717 (5th Cir. 2004) and Soc'y of Roman Cath. Church of Diocese of Lafayette, Inc. v. Interstate Fire & Cas. Co., 126 F.3d 727 (5th Cir. 1997): supported the panel’s conclusion that the earlier panel’s footnote in LBBS 1 was dicta and did not establish law of the case on statutory damages.
  • Feltner v. Columbia Pictures Television, Inc., 523 U.S. 340 (1998), and Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc., 135 F.4th 1344 (11th Cir. 2025): cited to flag (without deciding) the argument that juries must set the amount of statutory damages under the Seventh Amendment. The panel instructed the district court to consider this issue on remand.

5) Fees and the standard practice of remand

  • Fluorine On Call, Ltd. v. Fluorogas Ltd., 380 F.3d 849 (5th Cir. 2004) and Black v. SettlePou, P.C., 732 F.3d 492 (5th Cir. 2013): supported vacating and remanding attorney’s fees in tandem with the vacatur/remand of damages.
  • Standard-of-review anchors—Harville v. City of Hous., 945 F.3d 870 (5th Cir. 2019); Spectrum Ass'n Mgmt. of Tex., L.L.C. v. Lifetime HOA Mgmt. L.L.C., 5 F.4th 560 (5th Cir. 2021); All. for Good Gov't v. Coal. for Better Gov't, 919 F.3d 291 (5th Cir. 2019); ASHH, Inc. v. URZ Trendz, L.L.C., No. 23-20614, 2024 WL 3595385 (5th Cir. July 31, 2024) (quoting Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014)): framed review of summary judgment, damages, and fee discretion.

Legal Reasoning

1) Rooker-Feldman rejected via law of the case

The panel treated Rooker-Feldman as foreclosed because LBBS 1 already “actually decided” there was no final state-court judgment, and thus no Rooker-Feldman bar. The key move was doctrinal: even though LBBS 1 arose from an interlocutory appeal, law-of-the-case applies when the issue was actually resolved, and nothing materially changed.

2) Attorney immunity applied to Beers based on conduct-type, not knowledge

The district court’s denial of immunity rested heavily on Beers’s communications with Bitgood/Norman, his knowledge of the real LBBS, and the alleged harmful objective. On rehearing, the Fifth Circuit recalibrated the analysis to Texas attorney-immunity doctrine: immunity generally attaches when the attorney’s acts are within the scope of representation and are the sort of services lawyers normally provide.

Under Ironshore Eur. DAC v. Schiff Hardin, L.L.P., the salient question is the nature of the acts—here, preparing/reviewing/signing and filing formation-related documents (including an assumed-name certificate) and communicating with clients about those legal steps. Under Haynes & Boone, LLP v. NFTD, LLC and Cantey Hanger, LLP v. Byrd, those tasks are ordinary legal services. The court further stressed that “what [the attorney] knew or should have known” is not the focus for determining immunity; the focus is whether the conduct falls within representation.

The result is a strong reaffirmation that transactional or administrative filings can be immune even when they facilitate wrongful conduct by the client, unless the attorney’s conduct itself falls outside the role of counsel (the opinion did not identify such an exception on these facts).

3) “Use in commerce” fixed by prior ruling

The panel held that the “use in commerce” element for Lanham Act liability was already resolved in LBBS 1, which found defendants’ uses (entity formation, public-facing communications, and related conduct) sufficient. The district court therefore did not err in relying on that prior holding at summary judgment.

4) Statutory damages vacated due to inadequate linkage to a registered mark

The panel identified a reviewability problem: § 1117(c) statutory damages depend on use of a “counterfeit mark,” which, by definition, must be identical or substantially indistinguishable from a registered mark. Defendants pointed out that LBBS’s registration for “Lewis Brisbois Bisgaard & Smith” lapsed from 2020 to 2022—overlapping the infringement period—making § 1114(1)(a) damages problematic if the award rested on that specific (unregistered-at-the-time) mark.

LBBS argued that other registered marks it owned were similar enough to supply the needed registered-mark predicate. The Fifth Circuit did not decide that alternative theory because the district court did not articulate the statutory pathway or factual findings tying statutory damages to particular registered marks. Without that explanation, meaningful appellate review was not possible. The panel therefore vacated statutory damages for all defendants and remanded for the district court to determine liability and damages under § 1114(1)(a) with the requisite findings.

5) Seventh Amendment issue flagged for remand

The court did not decide whether a jury must determine the amount of Lanham Act statutory damages, but directed the district court to consider it. By citing Feltner v. Columbia Pictures Television, Inc. and Top Tobacco, L.P. v. Star Importers & Wholesalers, Inc., the panel highlighted a live constitutional issue: statutory-damages amounts may be a jury question where the parties demanded a jury and the remedy is analogous to legal damages historically set by juries.

6) Attorney’s fees vacated as a dependent remedy

Because damages and the § 1114 theory were remanded, the panel followed circuit practice (per Fluorine On Call, Ltd. v. Fluorogas Ltd. and Black v. SettlePou, P.C.) by vacating fees and requiring reconsideration after the district court resolves the damages and underlying statutory basis.

Impact

  • Stronger shelter for attorneys performing “ordinary” legal services: The opinion reinforces that attorney immunity can apply even where the client’s aim is improper and the lawyer is aware of adverse parties. This has practical significance for lawyers assisting with entity formation, assumed-name filings, and other ministerial/transactional acts: plaintiffs may need to target non-immune actors or plead facts showing the attorney’s conduct fell outside representation.
  • Statutory-damages discipline in counterfeit-mark cases: The decision underscores that § 1117(c) statutory damages require a clear nexus to infringement of a registered mark (or a counterfeit of one), and that district courts should identify (i) which registered mark is at issue, (ii) how the defendant’s mark is “identical or substantially indistinguishable,” and (iii) the statutory route supporting the award.
  • Emerging jury-trial question in the Fifth Circuit: By instructing consideration of a Seventh Amendment jury right on the amount of Lanham Act statutory damages, the panel tees up an issue that could reshape trial strategy and settlement leverage in trademark-counterfeiting cases in the circuit.
  • Stability from law-of-the-case in serial injunction/merits appeals: The opinion illustrates that determinations made in preliminary-injunction appeals—when “actually decided”—can bind later merits stages, reducing relitigation of jurisdictional and elements-based issues (here, Rooker-Feldman and “use in commerce”).

Complex Concepts Simplified

Rooker-Feldman
A doctrine preventing lower federal courts from acting like appellate courts over final state-court judgments. If there is no final judgment, it usually does not apply.
Law of the case
A rule of judicial efficiency: once an issue is actually decided earlier in the same case, later stages generally follow that ruling unless an exception applies.
Attorney immunity (Texas)
A protection that can bar civil liability against lawyers for conduct within the scope of representing a client—focused on the kind of act performed (legal services) rather than the lawyer’s intent or awareness of harm.
“Use in commerce” (Lanham Act)
A requirement that the challenged use of a mark is connected to commercial activity (broadly defined). Use in public communications, filings, or entity-related representations can qualify.
Statutory damages for counterfeiting (15 U.S.C. § 1117(c))
A set dollar-range remedy available in certain counterfeit-mark cases, potentially without proving actual damages—but it depends on a “counterfeit mark” tied to a registered trademark.
Seventh Amendment jury right
The constitutional right to a jury in suits at common law. Some statutory-damages schemes may require a jury to decide the amount of damages.

Conclusion

The Fifth Circuit’s substituted opinion in Lewis Brisbois v. Bitgood delivers two primary takeaways. First, it meaningfully strengthens the application of Texas attorney immunity for routine legal services—here, entity-formation and assumed-name filings—by centering the analysis on conduct-type rather than knowledge or alleged improper purpose. Second, it demands greater rigor for Lanham Act statutory damages by requiring a clearly articulated, reviewable connection to a registered mark, while simultaneously spotlighting a potentially significant Seventh Amendment issue about who sets the amount of statutory damages. Together, these holdings shape both liability targeting (especially when attorneys are involved) and remedial proof and procedure in trademark-counterfeiting litigation.