In this case involving a commercial lease, appellants Julio Garcia and Elsie Ritchie (“the guarantors”) signed a guaranty agreement on behalf of the tenant, Sugar Land Mia Bella, L.P. (“Mia Bella”). After Mia Bella stopped paying rent, the landlord, appellee First Colony Mall, LLC f/k/a GGP-Sugarland Mall, L.P. (“the Mall”), sued the guarantors for breach of the guaranty agreement. The Mall moved
for summary judgment on its claim, and the trial court rendered summary judgment in the Mall’s favor, awarding the Mall $147,384.26 in damages, pre- and postjudgment interest, attorney’s fees, and court costs.

In three issues on appeal, the guarantors contend that the trial court erroneously rendered summary judgment in favor of the Mall because the guarantors raised genuine issues of material fact on their affirmative defenses of novation, waiver, and accord and satisfaction.

We affirm.

Background 

A. Factual Background

First Colony Mall, LLC owns the First Colony Mall located in Sugar Land,
Texas. In 2011, Garcia was the managing member of Sugar Land Mia Bella, L.P.,
which operated an Italian restaurant under the name Mia Bella Trattoria. Trattoria
First Colony, LLC, and Mia Managing Group, LLC, were the limited partner and
the general partner, respectively, of Mia Bella. Julio Garcia and Pedro Garcia owned
membership interests in both Trattoria First Colony and Mia Managing Group.
On May 13, 2011, the Mall and Mia Bella entered into a commercial lease
agreement (“the Lease”). The Lease allowed Mia Bella to operate an Italian
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restaurant in 4,276 square feet of space for a ten-year period. Under the terms of the
Lease, Mia Bella paid approximately $18,000 per month in rent to the Mall.
Article 23(b) of the Lease provided that, if Mia Bella defaulted on its
obligations, the Mall could elect to terminate the lease, and it would have the right
to collect from Mia Bella, among other things, “any unpaid rental which has been
earned at the time of termination” of the Lease. The Lease included a provision
stating that a payment by Mia Bella “of an amount less than the monthly rental shall
not . . . be an accord and satisfaction. [The Mall] may accept a check or payment
without prejudice to its right to recover the balance of rental due and pursue any
other remedy.” Further, the Lease provided that if the Mall terminated the Lease
pursuant to Article 23(b), that termination “shall not be construed as a forfeiture of
rental remaining to be paid during the balance of the Term, nor shall it act to relieve
[Mia Bella] of any other obligations under this Lease . . . .” The Mall also agreed
that, if a default occurred, it would “use reasonable efforts to relet the Leased
Premises and mitigate its damages.”
The Lease included a provision stating that Mia Bella “acknowledges that the
Guaranty of the Lease is a material inducement to the execution of the Lease by [the
Mall].” On May 13, 2011, the same day the Mall and Mia Bella entered into the
Lease, Garcia and Ritchie signed a guaranty agreement (“the Guaranty”). The
guarantors agreed:
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[T]hat if default shall at any time under the Lease be made by [Mia
Bella], their successors and assigns, in the payment of any monthly
installment of rent, or additional rent, or in the performance of any of
the terms, covenants and conditions of the Lease, and if the default shall
not have been cured within the time specified in the Lease for curing
the same, then Guarantors will well and truly pay on demand in cash
the amount of the monthly installment of rent and additional rent not
paid by [Mia Bella] and cure such other default together with such costs
and expenses (including without limitation attorney fees) incurred by
[the Mall] as a result of or arising out of the default for which [Mia
Bella], its successors and assigns are obligated to [the Mall] pursuant
to the terms of the Lease. This Guaranty shall include any liability of
[Mia Bella] that shall accrue under the Lease for any period preceding
as well as any period following the term of the Lease.
Notwithstanding anything to the contrary contained herein, this
Guaranty shall be limited to the amount of $299,320.00.
(Emphasis in original.) The Guaranty stated that it was “an absolute and
unconditional guaranty of payment and performance” that was enforceable against
the guarantors “without the necessity for any suit or proceedings” by the Mall against
Mia Bella and “without the necessity of any notice of non-payment, nonperformance
or non-observance.” The Guaranty also provided that the liability of
the guarantors “is co-extensive with that of [Mia Bella] and also joint and several.”
It is undisputed that, in November 2014, Mia Bella began falling behind on
its monthly rental obligations. Mia Bella and the Mall attempted to negotiate a rental
abatement and a restructuring of rental payments, but the parties were unable to
come to an agreement. In April 2015 and September 2015, the Mall’s counsel sought
recovery of outstanding rent from the guarantors. Both of the letters mailed to the
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guarantors from the Mall’s counsel notifying them of their obligations under the
Guaranty included the following paragraph:
A temporary forbearance in exercising any and all rights under the
Lease is in no way intended to waive any rights or claims, or change,
alter or modify the terms and conditions of the Lease, and there is
nothing in this letter that shall constitute an election of remedies or a
waiver of any rights, claims, causes of action, or remedies, at law, by
statute, or in equity, or a waiver of any existing or future defaults under
the Lease, whether or not mentioned herein. [The Mall’s] acceptance
of rent for less than the full amount due and owing shall not constitute
an accord or satisfaction, novation, or waiver by [the Mall] of the
deficiency. [The Mall] reserves all rights, whether or not mentioned
herein, arising under the Lease or applicable law.
The Mall indicated its intent to initiate legal proceedings to recover the outstanding
rental balance if the guarantors did not satisfy their obligations under the Guaranty.
It is further undisputed that the guarantors did not pay the outstanding rental balance
to the Mall.
While the Mall and Mia Bella were attempting to negotiate a modification of
Mia Bella’s rental obligations, on February 25, 2015, Julio Garcia and Pedro Garcia
sold their membership interests in Trattoria First Colony, LLC, and Mia Managing
Group, LLC—the limited and general partners of Mia Bella—to Jose Luis Castelan.
In the documents effecting the sale of the membership interests, the parties agreed
that Garcia should “not be released of [his] personal guaranty on the lease on the
restaurant premises.”
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The Mall attempted to mitigate its damages as a result of Mia Bella’s failure
to pay rent. On December 2, 2015, the Mall and Castelan, in his individual capacity,
entered into a License Agreement, pursuant to which the Mall granted Castelan a
license to operate an Italian restaurant under the trade name of Mia Bella Trattoria
in the same space Mia Bella had been leasing for the previous four years (“the
License Agreement”). The License Agreement specified that it was for a one-year
term beginning on December 1, 2015, and that Castelan would owe $12,000 in rent
per month. The License Agreement stated, “This License contains all the covenants,
promises, agreements, conditions and understandings between Licensor [the Mall]
and Licensee [Castelan]. There are no other agreements, either oral or written,
between them other than those set forth in this License.” The License Agreement
did not reference the Lease, the Guaranty, or Mia Bella’s and the guarantors’
obligations under the Lease and the Guaranty, respectively. Neither Mia Bella nor
the guarantors were parties to the License Agreement.
On December 15, 2015, the Mall’s counsel sent a letter to the guarantors
stating, “By this letter, [the Mall] hereby gives [Mia Bella] written notice of its
election to terminate the Lease, in its entirety, effective retroactively to November
30, 2015.” The Mall demanded payment from the guarantors for Mia Bella’s
outstanding rental balance. The letter informed the guarantors that the notice of
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termination was not a release of Mia Bella or the guarantors from their liability for
rent under the Lease.

B. Proceedings in the Trial Court

When the guarantors failed to pay Mia Bella’s outstanding rental balance to
the Mall, the Mall filed suit for breach of the Guaranty on March 23, 2016. The Mall
sought a total of $150,384.26 in damages from the guarantors, jointly and severally,
plus attorney’s fees. The guarantors answered and asserted, among other defenses,
the affirmative defenses of accord and satisfaction, waiver, and novation.
The Mall moved for traditional summary judgment on its claims against the
guarantors for breach of the Guaranty. As summary judgment evidence, the Mall
attached a copy of the Lease, the Guaranty, the December 15, 2015 letter from the
Mall’s counsel to the guarantors, notifying them that the Mall was terminating the
Lease and demanding the payment of the outstanding rental balance, and the Mall’s
financial records demonstrating the outstanding rental balance. The Mall also
attached the affidavit of Heidi Westlund, the Mall’s senior general manager, who
averred that the guarantors “personally guaranteed the payment of all sums due to
First Colony Mall by Mia Bella under the lease.” Westlund averred that the Mall
complied with its obligations under the Lease by leasing the premises to Mia Bella.
She averred that Mia Bella began falling behind on its monthly rental obligations in
November 2014 and that it “continued to pay less than what was owed for each
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subsequent month until First Colony Mall exercised its right to terminate the lease
by notice letter dated December 15, 2015, but effective November 30, 2015.” She
stated that, at the time the Mall terminated the Lease, $147,384.26 remained due and
owing under the Lease.
In response to the Mall’s summary judgment motion, the guarantors argued
that Mia Bella’s debts to the Mall were discharged on December 2, 2015, when the
Mall “entered into a new lease with Mia Bella and Mia Bella’s manager.” The
guarantors argued that the License Agreement created a fact issue on their
affirmative defenses of accord and satisfaction, novation, and waiver. Specifically,
the guarantors argued that the License Agreement—a “new lease”—extinguished
the previous terms of the Lease, as well as Mia Bella’s liability for rental payments
under the Lease. Because Mia Bella was no longer obligated to pay the delinquent
rental payments to continue operating under the License Agreement, the guarantors
could not “be held to a larger liability than the tenant.” As summary judgment
evidence, the guarantors attached the agreement between Garcia and Castelan
concerning the sale of the membership interests in Mia Bella’s limited and general
partners, as well as the License Agreement.
In reply, the Mall argued that the License Agreement did not raise a fact issue
on the guarantors’ affirmative defenses, but instead “constitute[d] compliance with
First Colony Mall’s statutory and contractual duty to mitigate damages—not any
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extinguishment, satisfaction, or waiver of obligations under the underlying lease or
guaranty.” The Mall argued that the License Agreement could not be considered a
novation because it did not involve the same parties as the Lease and the terms of
the License Agreement were not inconsistent with the Lease. The Mall further
argued that termination of the Lease did not “extinguish any obligation to pay
amounts that had already become due.” The Mall argued that the License Agreement
did not raise a fact issue on the defense of accord and satisfaction because the
License Agreement did not extinguish any obligation under the Lease, nor was there
an “unmistakable” statement that the License Agreement would constitute a
satisfaction of the obligations of the underlying Lease. Finally, the Mall argued that
the guarantors had not presented any evidence that, by entering into the License
Agreement, the Mall intended to relinquish its right to collect rental amounts due
and owing under the Lease.
The trial court granted the Mall’s summary judgment motion and rendered
judgment that the Mall recover from the guarantors, jointly and severally,
$147,384.26 in damages, pre- and post-judgment interest, trial-level and conditional
appellate attorney’s fees, and court costs. This appeal followed.
Summary Judgment
In three issues, the guarantors contend that the trial court erred by rendering
summary judgment in favor of the Mall. Specifically, they argue that they raised a
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fact issue precluding summary judgment on each of their affirmative defenses of
novation, waiver, and accord and satisfaction.

A. Standard of Review

We review a trial court’s ruling on a summary judgment motion de novo. City
of Richardson v. Oncor Elec. Delivery Co., 539 S.W.3d 252, 258 (Tex. 2018). To
prevail on a traditional summary judgment motion, the movant bears the burden of
proving that no genuine issues of material fact exist and that it is entitled to judgment
as a matter of law. TEX. R. CIV. P. 166a(c); City of Richardson, 539 S.W.3d at 258–
59. When a plaintiff moves for summary judgment on its own claim, it must prove
that it is entitled to judgment as a matter of law on each element of its cause of action.
Lawyers Title Co. v. J.G. Cooper Dev., Inc., 429 S.W.3d 713, 717 (Tex. App.—
Dallas 2014, pet. denied).
A matter is conclusively established if reasonable people could not differ as
to the conclusion to be drawn from the evidence. See Cmty. Health Sys. Prof’l Servs.
Corp. v. Hansen, 525 S.W.3d 671, 681 (Tex. 2017). If the movant meets its burden,
the burden then shifts to the nonmovant to raise a genuine issue of material fact. See
Katy Venture, Ltd. v. Cremona Bistro Corp., 469 S.W.3d 160, 163 (Tex. 2015) (per
curiam); see also First United Pentecostal Church of Beaumont v. Parker, 514
S.W.3d 214, 220 (Tex. 2017) (stating that fact question exists if evidence rises to
level that would enable reasonable and fair-minded people differ in their
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conclusions). We review the evidence presented in the motion and response in the
light most favorable to the nonmovant, crediting favorable evidence if reasonable
jurors could and disregarding contrary evidence unless reasonable jurors could not.
Mann Frankfort Stein & Lipp Advisors, Inc. v. Fielding, 289 S.W.3d 844, 848 (Tex.
2009) (citing City of Keller v. Wilson, 168 S.W.3d 802, 827 (Tex. 2005)). We
indulge every reasonable inference and resolve any doubts in the nonmovant’s favor.
Helix Energy Sols. Grp., Inc. v. Gold, 522 S.W.3d 427, 431 (Tex. 2017).
A plaintiff moving for summary judgment is not under any obligation to
negate affirmative defenses. Tesoro Petroleum Corp. v. Nabors Drilling USA, Inc.,
106 S.W.3d 118, 124 (Tex. App.—Houston [1st Dist.] 2002, pet. denied); see
Woodside v. Woodside, 154 S.W.3d 688, 691 (Tex. App.—El Paso 2004, no pet.).
An affirmative defense prevents the granting of a summary judgment only if each
element of the affirmative defense is supported by summary judgment evidence.
Tesoro Petroleum, 106 S.W.3d at 124. A party raising an affirmative defense in
opposition to a summary judgment motion must either (1) present a disputed fact
issue on the opposing party’s failure to satisfy its own summary judgment burden of
proof or (2) establish the existence of a fact issue on each element of his affirmative
defense. Id.; see Woodside, 154 S.W.3d at 691–92.
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B. Novation

In their first issue, the guarantors contend that the trial court improperly
granted summary judgment in favor of the Mall because the guarantors raised a fact
issue on their affirmative defense of novation. Specifically, the guarantors argue
that because the Mall and Mia Bella entered into the License Agreement while the
Lease was still operative, the License Agreement replaced the requirements of the
Lease and extinguished the liability of the guarantors under the Lease.
A novation is the substitution of a new agreement between the same parties
or the substitution of a new party on an existing agreement, and as a result of the
substitution, “only the new obligation may be enforced.” Honeycutt v. Billingsley,
992 S.W.2d 570, 576 (Tex. App.—Houston [1st Dist.] 1999, pet. denied); see
Vandeventer v. All Am. Life & Cas. Co., 101 S.W.3d 703, 712 (Tex. App.—Fort
Worth 2003, no pet.) (“Novation is the creation of a new obligation in the place of
an old one, by which the parties agree that a new obligor will be substituted to
perform the duties agreed upon by the old contract, while the original obligor is
released from performing those duties.”). A novation occurs if a new contract
reflects an intention to “relinquish and extinguish pre-existing claims and rights of
action,” and if a novation occurs, “in lieu of the old obligation, a party accepts the
promise of performance of the new obligation instead of the performance itself.”
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Fulcrum Cent. v. AutoTester, Inc., 102 S.W.3d 274, 277 (Tex. App.—Dallas 2003,
no pet.).
The elements of novation are: (1) a previous, valid obligation; (2) an
agreement of the parties to a new contract; (3) the extinguishment of the old contract;
and (4) the validity of the new contract. Honeycutt, 992 S.W.2d at 576. The
substitution of a new agreement occurs “when a later agreement is so inconsistent
with a former agreement that the two cannot subsist together.” Fulcrum Cent., 102
S.W.3d at 277 (quoting Scalise v. McCallum, 700 S.W.2d 682, 684 (Tex. App.—
Dallas 1985, writ ref’d n.r.e.)). “In the absence of inconsistent provisions, ‘a second
contract will operate as a novation of a first contract only when the parties to both
contracts intend and agree that the obligations of the second shall be substituted for
and operate as a discharge of the obligations of the first.’” Id. (quoting Chastain v.
Cooper & Reed, 257 S.W.2d 422, 424 (Tex. 1953)).
Whether novation has occurred is a question of the parties’ intent.
Vandeventer, 101 S.W.3d at 712. Only if a party has agreed to the substitution of a
new party is the former party relieved of liability, and consent of the parties to
substitute a new obligor and release the old obligor “cannot be achieved
unilaterally,” although it may be express or implied. Id. However, novation is never
presumed; instead, there must be a “clear, definite intention on the part of all
concerned that such is the purpose of the agreement.” Id. at 713; Fulcrum Cent.,
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102 S.W.3d at 278 (“It must clearly appear that the parties intended a novation, and
novation is never presumed.”). Furthermore, the relevant intent in determining
novation is the obligee’s intent to release the first obligor and seek performance only
from the party allegedly substituted. Vandeventer, 101 S.W.3d at 713. “Unless the
obligee makes a clear manifestation of assent to the substitution of the new obligor
and release of the original obligor, he retains his rights against the original obligor.”
Id.
In arguing that a fact issue exists on their affirmative defense of novation, the
guarantors contend that the License Agreement was a “new agreement between First
Colony and Mia Bella entered into while the First Lease was operative and
controlling” that extinguished the requirements and obligations of the Lease and,
thus, extinguished the guarantors’ liability under the Lease and the Guaranty. The
guarantors argue that the “plain language” of the License Agreement extinguished
the Lease, as it provided for a significantly shorter lease term and reduced monthly
rental payments as compared to the Lease. The guarantors thus contend that the
terms of the Lease and the License Agreement are so inconsistent that the two
contracts cannot be read together.
The Lease—entered into between the Mall and Mia Bella in May 2011—set
the original lease term at ten years and required Mia Bella to pay nearly $18,000 per
month in rental payments. The Lease provided that failure to pay an installment of
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rent constituted a default by Mia Bella and that, upon default by Mia Bella, the Mall
could elect to terminate the Lease and recover from Mia Bella as damages “any
unpaid rental which has been earned at the time of termination.” The Lease also
allowed the Mall, upon default by Mia Bella, to relet the premises “for any length of
time, rental and conditions that [the Mall] in its sole discretion deems advisable.”
The Mall agreed in the Lease that, in the event of default, it would use “reasonable
efforts to relet the Leased Premises and mitigate its damages.” The guarantors
signed the Guaranty, agreeing to personally guarantee Mia Bella’s performance of
the Lease and agreeing that, if Mia Bella defaulted, the guarantors would “well and
truly pay on demand in cash the amount of the monthly installment of rent and
additional rent not paid by [Mia Bella].”
It is undisputed that Mia Bella defaulted under the Lease when it fell behind
in making its rental payments beginning in November 2014. It is also undisputed
that the Mall and Mia Bella attempted to negotiate a rental abatement and a
restructuring of Mia Bella’s rental obligations, but these attempts were unsuccessful.
At some point in 2015, the Mall became aware that Castelan had purchased
the membership interests of the limited and general partners of Mia Bella. The Mall
sent several letters throughout 2015 to Garcia and Castelan, notifying them of Mia
Bella’s failure to abide by the terms of the Lease and demanding payment of the
outstanding rental balance. These letters included a paragraph stating:
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A temporary forbearance in exercising any and all rights under the
Lease is in no way intended to waive any rights or claims, or change,
alter or modify the terms and conditions of the Lease, and there is
nothing in this letter that shall constitute an election of remedies or a
waiver of any rights, claims, causes of action, or remedies, at law, by
statute, or in equity, or a waiver of any existing or future defaults under
the Lease, whether or not mentioned herein. [The Mall’s] acceptance
of rent for less than the full amount due and owing shall not constitute
an accord or satisfaction, novation, or waiver by [the Mall] of the
deficiency. [The Mall] reserves all rights, whether or not mentioned
herein, arising under the Lease or applicable law.
On December 2, 2015, the Mall and Castelan—in his individual capacity—
entered into the License Agreement, which granted Castelan a license to operate an
Italian restaurant under the trade name Mia Bella Trattoria for a one-year term
beginning on December 1, 2015, and ending November 30, 2016. The License
Agreement set the rental obligation at $12,000 per month. Although the License
Agreement used identical language as the Lease in describing the purpose of the
business activities to be conducted at the premises, the License Agreement did not
reference the Lease, nor did it reference the guarantors or the Guaranty. Mia Bella
was not a signatory to the License Agreement, and this entity was not mentioned in
the License Agreement. The License Agreement was silent concerning the
collection of outstanding rental payments under the Lease—which undisputedly had
never been paid to the Mall—as well as the obligations of the guarantors. On
December 15, 2015, the Mall notified the guarantors that it had terminated the Lease
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for non-payment of rent, effective November 30, 2015, and that it intended to collect
the outstanding rental balance under the Lease from the guarantors.
There is no language in the License Agreement entered into with Castelan
demonstrating an intent on the part of the Mall to forego the collection of outstanding
rent from Mia Bella or the guarantors under the Lease. See Fulcrum Cent., 102
S.W.3d at 277 (stating that novation occurs if new contract reflects intention to
“relinquish and extinguish pre-existing claims and rights of action”). There is no
indication in the License Agreement that the Mall intended to release Mia Bella and
the guarantors from paying the rental amounts that had already accrued and instead
seek performance only from Castelan under the terms of the License Agreement.
See Vandeventer, 101 S.W.3d at 713 (stating that relevant intent in determining
novation is obligee’s intent to release first obligor and seek performance only from
party allegedly substituted).
We disagree with the guarantors’ contention that the provisions of the Lease
and the License Agreement are so inconsistent that they cannot be read together. See
Fulcrum Cent., 102 S.W.3d at 277. First, the respective agreements were between
different parties: the Lease was between the Mall and Mia Bella, and the License
Agreement was between the Mall and Castelan. Second, the Lease expressly
provided that, upon default, the Mall could terminate the Lease and seek payment of
the outstanding rental balance from Mia Bella or the guarantors. Finally, the Lease
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also expressly allowed the Mall to relet the premises under any conditions the Mall
deemed advisable, and the Mall agreed in the Lease that it would use reasonable
efforts to relet the premises and mitigate its damages. Entering into the License
Agreement with Castelan to operate a Mia Bella restaurant in the existing space and
using the existing fixtures, albeit for a shorter lease term and for reduced monthly
payments, constituted an attempt to mitigate damages.
We conclude that the guarantors failed to raise a fact issue on an essential
element of their affirmative defense of novation—the extinguishment of the Mall’s
rights under the Lease to seek payment of the outstanding rental balance upon
termination of the Lease. See Honeycutt, 992 S.W.2d at 576; see also Vandeventer,
101 S.W.3d at 713 (“Unless the obligee makes a clear manifestation of assent to the
substitution of the new obligor and release of the original obligor, he retains his
rights against the original obligor.”); Tesoro Petroleum, 106 S.W.3d at 124 (stating
that party opposing summary judgment motion by raising affirmative defense may
defeat summary judgment by establishing existence of fact issue on each element of
affirmative defense).
We overrule the guarantors’ first issue.

C. Waiver

In their second issue, the guarantors argue that the trial court erred in granting
summary judgment in favor of the Mall because the guarantors raised a fact issue on
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their affirmative defense of waiver. Specifically, the guarantors argue that by
entering into the License Agreement, the Mall intended to relinquish the right to
collect past-due rent under the Lease, thereby relieving the guarantors of liability.
Waiver is the intentional relinquishment of a known right or intentional
conduct inconsistent with claiming that right. In re Gen. Elec. Capital Corp., 203
S.W.3d 314, 316 (Tex. 2006) (per curiam) (orig. proceeding); Blackstone Med., Inc.
v. Phoenix Surgicals, L.L.C., 470 S.W.3d 636, 646 (Tex. App.—Dallas 2015, no
pet.). The elements of waiver include (1) an existing right, benefit, or advantage
held by a party; (2) the party’s actual knowledge of its existence; and (3) the party’s
actual intent to relinquish the right, or intentional conduct inconsistent with the right.
Ulico Cas. Co. v. Allied Pilots Ass’n, 262 S.W.3d 773, 778 (Tex. 2008); Geis v.
Colina Del Rio, LP, 362 S.W.3d 100, 111 (Tex. App.—San Antonio 2011, pet.
denied).
Waiver is largely a matter of intent. Motor Vehicle Bd. of Tex. Dep’t of
Transp. v. El Paso Indep. Auto. Dealers Ass’n, 1 S.W.3d 108, 111 (Tex. 1999) (per
curiam); Blackstone Med., 470 S.W.3d at 646. Ordinarily, waiver is a fact question,
but a party can establish waiver as a matter of law when the facts and circumstances
are admitted or clearly established. Blackstone Med., 470 S.W.3d at 646. In
determining if waiver has occurred, courts examine the acts, words, or conduct of a
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party to determine if the party “unequivocally manifested” an intent to no longer
assert the right in question. Geis, 362 S.W.3d at 111.
The guarantors argue that the License Agreement’s merger clause created a
fact issue regarding whether the Mall waived Mia Bella’s and the guarantors’
performance under the Lease. The License Agreement included a clause providing,
“This License contains all the covenants, promises, agreements, conditions and
understandings between Licensor and Licensee. There are no other agreements,
either oral or written, between them other than those set forth in this License.” The
License Agreement defines the “licensor” as “First Colony Mall, LLC” and the
“licensee” as Luis Castelan. The License Agreement is the only agreement between
the Mall and Castelan. Castelan was not a party to the Lease, and Mia Bella—a
party to the Lease—was not a party to the License Agreement. The existence of a
merger clause in the License Agreement, under these circumstances, constitutes no
evidence that the Mall intended to relinquish its right to seek payment of the
outstanding rental balance under the Lease.
Furthermore, we disagree with the guarantors’ contention that the very act of
entering into the License Agreement with Castelan served as evidence that the Mall
actually intended to relinquish its right to seek payment under the Lease or that the
Mall engaged in intentional conduct inconsistent with that right. See Ulico Cas. Co.,
262 S.W.3d at 778 (listing elements of waiver). As we have already stated, Article
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23(b) of the Lease expressly provided that, upon default by Mia Bella, the Mall could
terminate the Lease and seek payment “of any unpaid rental which has been earned
at the time of termination” as damages. The Lease also specifically allowed the Mall
to enter into an agreement to relet the premises in order to mitigate its damages
arising out of Mia Bella’s default. The parties also agreed in the Lease that the
Mall’s decision to terminate the Lease under Article 23(b) “shall not be construed as
a forfeiture of rental remaining to be paid during the balance of the Term, nor shall
it act to relieve [Mia Bella] of any other obligations under this Lease.”
The Lease specifically contemplated that the Mall could terminate the Lease
for Mia Bella’s failure to pay rent and that, if that condition occurred, the Mall could
seek the outstanding rental balance from Mia Bella—and, by extension, the
guarantors—and could enter into a new agreement to relet the premises in an attempt
to mitigate damages. The Mall’s actions are consistent with the terms of the Lease.
By itself, entering into the License Agreement, which in no way references the Lease
or outstanding rental payments due under the Lease, does not raise a fact issue
regarding whether the Mall actually intended to relinquish its right to collect the
outstanding rental balance or whether the Mall engaged in intentional conduct
inconsistent with asserting that right.1
 See id.

1 The guarantors point out that the Mall sent notices of default in September and
October 2015 “to the attention of Castelan as the owner of the Tenant.” The Mall
also sent these letters to Garcia, and the letters included language that the Mall
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We hold that the guarantors have failed to raise a fact issue on an essential
element of their affirmative defense of waiver. See id.; Tesoro Petroleum, 106
S.W.3d at 124.
We overrule the guarantors’ second issue.

D. Accord and Satisfaction

In their third issue, the guarantors contend that the trial court improperly
granted summary judgment in favor of the Mall because the guarantors raised a fact
issue on their affirmative defense of accord and satisfaction. Specifically, the
guarantors argue that they raised a fact issue on this defense because the Mall and
Castelan entered into the License Agreement for a shorter term and at a lower
monthly rental rate while the Mall did not notify Mia Bella that the Lease had been
terminated.
The “accord” of “accord and satisfaction” is a new contract to discharge an
existing obligation, while the “satisfaction” is the performance of the new contract.
Honeycutt, 992 S.W.2d at 576–77; see Lopez v. Munoz, Hockema & Reed, L.L.P.,
22 S.W.3d 857, 863 (Tex. 2000) (“The accord and satisfaction defense rests upon a
contract, express or implied, in which the parties agree to the discharge of an existing
obligation by means of a lesser payment tendered and accepted.”); Richardson v.

intended to seek the outstanding rental balance from Mia Bella or from the
guarantors.
23
Allstate Tex. Lloyd’s, 235 S.W.3d 863, 865 (Tex. App.—Dallas 2007, no pet.) (“An
accord and satisfaction exists when parties agree to discharge ‘an existing obligation
in a manner other than in accordance with the terms of their original contract.’”)
(quoting Avary v. Bank of Am., N.A., 72 S.W.3d 779, 788 (Tex. App.—Dallas 2002,
pet. denied)). To constitute an accord and satisfaction, in the new contract: (1) the
parties must agree to discharge the existing obligation; (2) the parties must agree that
one party will perform and the other will accept something different from what each
expected from the existing obligation; (3) the parties unmistakably communicate that
the different performance will discharge the existing obligation; (4) the agreement
to discharge the existing obligation is plain, definite, certain, clear, full, explicit, and
not susceptible to any other interpretation; and (5) the parties’ agreement must be
accompanied by acts and declarations that the creditor is “bound to understand.”
Honeycutt, 992 S.W.2d at 577 (quoting Jenkins v. Henry C. Beck Co., 449 S.W.2d
454, 455 (Tex. 1969)).
For the accord and satisfaction defense to prevail, “there must be a dispute
and an unmistakable communication to the creditor that tender of the reduced sum
is upon the condition that acceptance will satisfy the underlying obligation.” Lopez,
22 S.W.3d at 863; Case Funding Network, L.P. v. Anglo-Dutch Petroleum Int’l, Inc.,
264 S.W.3d 38, 50 (Tex. App.—Houston [1st Dist.] 2007, pet. denied). “An
agreement that modifies an existing obligation will result in both an accord and
24
satisfaction and a novation if the parties intended to extinguish the existing
obligation.” Honeycutt, 992 S.W.2d at 577; see Lopez, 22 S.W.3d at 863 (“The
parties must specifically and intentionally agree to the discharge of one of the
parties’ existing obligations.”); Cleveland Reg’l Med. Ctr., L.P. v. Celtic Props.,
L.C., 323 S.W.3d 322, 335 (Tex. App.—Beaumont 2010, pet. denied) (“The parties
must mutually assent to form a new agreement to satisfy the original obligation, and
the parties’ intent is controlling.”). Summary judgment evidence in support of this
defense must demonstrate that both parties agreed that the amount paid by the debtor
to the creditor fully satisfied the entire claim. Richardson, 235 S.W.3d at 865.
As we have stated, the License Agreement did not reference the Lease, nor
did it make any mention of the existing indebtedness of Mia Bella and the guarantors
to the Mall for the outstanding rental balance. The License Agreement contained no
indication that, by entering into that agreement, the parties intended to extinguish
the obligation under the Lease for Mia Bella and the guarantors to pay the
outstanding rental balance to the Mall. Further, there was no indication in the
License Agreement—let alone a “plain, definite, certain, clear, full, [and] explicit”
indication—that the Mall’s acceptance of the monthly rental payment of $12,000
under the License Agreement would satisfy Mia Bella’s existing obligation to it. See
Lopez, 22 S.W.3d at 863; Richardson, 235 S.W.3d at 865; Honeycutt, 992 S.W.2d
at 577. The parties to the License Agreement did not “specifically and intentionally
25
agree” to the discharge of Mia Bella’s and the guarantors’ obligation to pay the
outstanding rental balance to the Mall. See Lopez, 22 S.W.3d at 863; Cleveland
Reg’l Med. Ctr., L.P., 323 S.W.3d at 335 (stating that parties must mutually assent
to form new agreement to satisfy original obligation).
We conclude that the guarantors’ summary judgment evidence does not raise
a fact issue on their affirmative defense of accord and satisfaction. See Honeycutt,
992 S.W.2d at 577 (stating elements of accord and satisfaction defense). We
therefore hold that because the guarantors did not raise a fact issue on each element
of any of their affirmative defenses, the trial court did not err in granting summary
judgment in favor of the Mall. See Tesoro Petroleum, 106 S.W.3d at 124.
We overrule the guarantors’ third issue.

Conclusion

We affirm the judgment of the trial court.
Evelyn V. Keyes
Justice
Panel consists of Justices Jennings, Keyes, and Higley.

Orion Marine Construction, Inc. v. Inocente Cepeda, No. 01-18-00323-CV (Tex.App. - Houston [1st Dist.] Jun. 21, 2018) (request for permissive appeal from interim trial court order denied in subsequent appeal after prior appeal resulted in reversal and remand on issue of plaintiff's status as seaman). 



BACKGROUND

In an earlier appeal from a final judgment in this case, we reversed and
remanded. See Cepeda v. Orion Marine Constr., 499 S.W.3d 579 (Tex. App.—
Houston [1st Dist.] 2016, pet. denied). In that earlier appeal, Inocente Cepeda
challenged the trial court’s partial summary judgment in favor of Orion. Id. at 580–
81. In our opinion and judgment, we concluded that the trial court erred in ruling
that Cepeda lost seaman status because Orion had fired him while he was on Orion’s
vessel and the alleged injury had occurred after Orion had fired him. Id. at 581–83.

On appeal, Cepeda claimed that he was injured while riding a skiff during his
transport from Orion’s vessel to dry land, that his termination did not become
effective until he reached dry land, and that, in any event, fact issues existed as to
whether he was terminated aboard the vessel or two days later, after he reached dry
land. See id. at 580, 583. In our opinion reversing the trial court’s ruling, we agreed
that Orion had failed to establish that Cepeda lacked seaman status as a matter of
law. Id. at 583. The Supreme Court of Texas denied review, and the case thus
returned to the trial court.

Upon remand, Cepeda moved for partial summary judgment, seeking the
reverse determination: that he was a seaman as a matter of law at the time of the
alleged injury. The trial court granted the motion. The trial court also denied Orion’s
motion for summary judgment as to Cepeda’s claims for negligence under the Jones
Act and for maintenance and cure. In an amended order, the trial court granted Orion
permission to file a permissive appeal from its interlocutory summary-judgment
rulings. Orion has filed a petition requesting that we accept its permissive appeal.
Cepeda has filed a response in opposition.

DISCUSSION

A. Permissive appeal standard

A trial court may allow a party to appeal from an interlocutory order if the
order involves a controlling question of law as to which there is a substantial ground
for difference of opinion and an immediate appeal may materially advance the
ultimate termination of the litigation. TEX. CIV. PRAC. & REM. CODE § 51.014(d);
TEX. R. CIV. P. 168. Because a permissive interlocutory appeal is not the norm, we
strictly construe Section 51.014(d)’s requirements. Gulf Coast Asphalt Co. v. Lloyd,
457 S.W.3d 539, 545 (Tex. App.—Houston [14th Dist.] 2015, no pet.). The order
must identify the controlling question of law at issue and state why an immediate
appeal may materially advance the ultimate termination of the litigation. TEX. R.
CIV. P. 168; Hebert v. JJT Constr., 438 S.W.3d 139, 141 (Tex. App.—Houston [14th
Dist.] 2014, no pet.). The trial court must make a substantive ruling on the
controlling question of law. Borowski v. Ayers, 432 S.W.3d 344, 347–48 (Tex.
App.—Waco 2013, no pet.); Gulley v. State Farm Lloyds, 350 S.W.3d 204, 207–08
(Tex. App.—San Antonio 2011, no pet.). It cannot certify the question to the
appellate court for decision. Bank of N.Y. Mellon v. Guzman, 390 S.W.3d 593, 597
(Tex. App.—Dallas 2012, no pet.); Gulley, 350 S.W.3d at 207.
An unexplained ruling is not subject to permissive appeal if its substantive
basis is unstated and not apparent from the appellate record. See Borowski, 432
S.W.3d at 347–48; see, e.g., Eagle Gun Range v. Bancalari, 495 S.W.3d 887, 889
(Tex. App.—Fort Worth 2016, no pet.) (denial of motion to dismiss without
comment was not substantive ruling); City of San Antonio v. Tommy Harral Constr.,
486 S.W.3d 77, 81–82 (Tex. App.—San Antonio 2016, no pet.) (denial of motion
for partial summary judgment that identified controlling question of law but did not
state basis for denial was not substantive ruling).1

Further, a party cannot seek to appeal from an interlocutory order on a ground
or issue that differs from the basis on which the trial court ruled. Tommy Harral,
486 S.W.3d at 83–84. It is not enough that the issue presented on appeal and the
trial court’s ruling concern the same general subject matter. See id. at 84. The
controlling question of law presented to the court of appeals must be the same legal

1 Accord Dafashy v. Jimenez, No. 01-17-00767-CV, 2017 WL 6001526, at *1
(Tex. App.—Houston [1st Dist.] Dec. 5, 2017, no pet.) (per curiam) (mem. op.);
Luccia v. City of Houston, No. 01-17-00378-CV, 2017 WL 2471107, at *1 (Tex.
App.—Houston [1st Dist.] June 8, 2017, no pet.) (per curiam) (mem. op.);
Vestalia, Ltd. v. Taylor-Watson, No. 01-15-00332-CV, 2015 WL 3799505, at *1
(Tex. App.—Houston [1st Dist.] June 18, 2015, no pet.) (per curiam) (mem. op.);
Great Am. E&S Ins. Co. v. Lapolla Indus., No. 01-14-00372-CV, 2014 WL
2895770, at *2 & n.2 (Tex. App.—Houston [1st Dist.] June 24, 2014, no pet.)
(per curiam) (mem. op.).
issue decided by the trial court. Id.; see also White Point Minerals v. Swantner, 464
S.W.3d 884, 890–91 (Tex. App.—Corpus Christi 2015, no pet.) (declining to address
second issue presented in permissive appeal because trial court had not ruled on it).
 To be a controlling question of law, the question must deeply affect the
ongoing litigation process. Undavia v. Avant Med. Grp., 468 S.W.3d 629, 632 (Tex.
App.—Houston [14th Dist.] 2015, no pet.). In general, if the viability of a claim
turns on the question and the resolution of the question will considerably shorten the
time, effort, and expense of litigating the suit, it qualifies as a controlling question
of law. Id. But the question must be a legal one; a party cannot permissively appeal
from a partial summary judgment if the parties dispute the material facts. In re
Estate of Fisher, 421 S.W.3d 682, 685 (Tex. App.—Texarkana 2014, no pet.);
Diamond Prods. Int’l v. Handsel, 142 S.W.3d 491, 494 (Tex. App.—Houston [14th
Dist.] 2004, no pet.).2

Even if the statutory requirements are satisfied, whether to accept a permissive
appeal rests in our discretion. TEX. CIV. PRAC. & REM. CODE § 51.014(f); In re
Volkswagen Clean Diesel Litig., 504 S.W.3d 547, 549 (Tex. App.—Austin 2016, no
pet.).

2 Accord Fertitta Hospitality v. O’Balle, No. 01-14-00193-CV, 2014 WL 5780329,
at *4 (Tex. App.—Houston [1st Dist.] Nov. 6, 2014, no pet.) (mem. op.).
B. Analysis

Orion identifies two issues for permissive interlocutory appeal:

(1) whether our opinion and judgment in the earlier appeal merely clarified
the effect of Orion’s termination of Cepeda on his status as a seaman or
ruled that he was a seaman as a matter of law; and
(2) whether the Court intended to address any other legal prerequisites to
recover as a seaman under federal maritime law.

In our opinion in the earlier appeal, we held that a worker who meets the
definition of a seaman generally does not lose that status until reaching dry land, and
further that fact issues existed as to the time of Cepeda’s termination, essential to
determining whether Orion terminated his employment aboard the vessel or after the
alleged incident. See Cepeda, 499 S.W.3d at 581–83. We made no determination
that Cepeda was a seaman as a matter of law. See id. The trial court had not so ruled
in the earlier appeal to present that issue for our review. See id. at 580–81.

Orion’s proposed appellate issues do not conform with the trial court’s rulings
on remand. On remand, the trial court did not render a ruling based on our earlier
opinion. The trial court did not answer the specific questions that Orion presents in
this request for a permissive appeal. Rather, the trial court granted different relief
based on new legal motions brought by the parties on remand. These questions were
not determined as part of the first appeal. The trial court made a finding in its
amended summary-judgment order “that there are unresolved questions of law” but
identified just one, namely whether Cepeda was a seaman as a matter of law at the
time of the alleged accident.

The trial court did not explain the basis for its interlocutory summaryjudgment
rulings or its determination that Cepeda had seaman status as a matter of
law. Essentially, Orion invites us to review the trial court’s interim rulings about the
status of the plaintiff seriatim, having once considered the case on appeal from a
final judgment. We decline that invitation.

To the extent that there are other unresolved questions of law, a permissive
appeal is an improper vehicle for resolving them. The courts of appeals are not
statutorily authorized to decide controlling questions of law in the first instance. See
Guzman, 390 S.W.3d at 597; Gulley, 350 S.W.3d at 207. Rather, the trial court must
do so. See Borowski, 432 S.W.3d at 347–48.

Orion’s second appellate issue as to particular legal requirements that must be
present to recover based on status as a seaman is entirely absent from the trial court’s
order. Their absence precludes our consideration of these requirements in a
permissive appeal. See Tommy Harral, 486 S.W.3d at 84; White Point Minerals,
464 S.W.3d at 890–91.

CONCLUSION

We deny Orion’s petition for permissive appeal.

Jane Bland
Justice

Panel consists of Justices Higley, Bland, and Massengale.

TERRY MURPHY, Appellant,
v.
BILL UNDERHILL, ALLIANCE ROOFING & CONSTRUCTION, Appellee.

No. 14-17-00385-CV.

Court of Appeals of Texas, Fourteenth District, Houston.

Memorandum Opinion filed June 14, 2018.

MEMORANDUM OPINION

I. FACTUAL AND PROCEDURAL BACKGROUND^[1]

II. ISSUES PRESENTED

III. CHALLENGES TO THE EXISTENCE AND ENFORCEABILITY OF THE CONTRACT

IV. CHALLENGE TO THE EXCLUSION OF EVIDENCE

V. REQUEST FOR ATTORNEY'S FEES AND SANCTIONS

VI. CONCLUSION

In re Vantage Drilling International, Vantage Deepwater Drilling, Inc., and Vantage Energy Services, Inc., No. 01-17-00592-CV (Tex.App. - Houston [1st Dist.] June 5, 2018) 

DISSENTING OPINION

Background

Analysis

A. Standard of Review of Order Granting Motion to Compel Arbitration

B. Waiver of Arbitration by Substantial Litigation Conduct

C. The Totality of the Circumstances Test for Waiver by Substantial Litigation Conduct

• when the movant knew of the arbitration clause;

• how much discovery has been conducted;

• who initiated it;

• whether it related to the merits rather than arbitrability or standing;

• how much of it would be useful in arbitration; and

• whether the movant sought judgment on the merits.

Here, the factors generally examined to determine waiver—how much discovery has been conducted, who initiated it, and whether it relates to the merits; how much time and expense has been incurred in litigation; and the proximity in time between a trial setting and the filing of the motion seeking arbitration—may serve as guideposts.

D. Application of the Perry Homes Factors to Order Compelling Arbitration in This Case

• There is no question that Martinez Partners knew of the arbitration clauses in both its and Vantage's engagement agreements;

• Martinez Partners itself filed the litigation;

• The parties litigated for eleven months, including extensive document discovery into the lawsuit's merits;

• Martinez Partners amended its pleadings twice, propounded extensive written discovery, and pursued numerous motions to compel additional discovery;

• It also added an individual defendant and then nonsuited that defendant in response to a motion to dismiss and sought discovery on that motion;

• It sought sanctions against Vantage's counsel in connection with the dismissed claim;

• It served ten sets of merits-based written discovery on each of the three defendants; and it attempted to avoid providing reciprocal discovery in response to Vantage's requests by disclaiming any obligation to search its principal's email account for communications responsive to Vantage's requests for production, rejected Vantage's request to make him available to be deposed, and only produced communications responsive to Vantage's requests after an oral ruling from the court;

• Martinez Partners filed a motion to compel arbitration under both Texas and federal arbitration statutes only after the trial court expressed doubt about its legal position at a hearing on its second motion to compel when the key issue in the case arose: whether Texas law provides an offset to Martinez Partners' claims for unpaid invoices based on what Vantage claims was the undisputed and undisclosed mark-up of almost half a million dollars that Martinez Partners applied to third-party charges invoiced to Vantage;

• Martinez Partners moved for arbitration only after summary judgment had been filed against it; and

• Even after the trial court heard preliminary argument on arbitration, Martinez Partners served yet another set of production requests on Vantage, with all of its previous requests for document production and motions to compel.

E. Lack of Adequate Remedy by Appeal

Mandamus review of significant rulings in exceptional cases may be essential to preserve important substantive and procedural rights from impairment or loss, allow the appellate courts to give needed and helpful direction to the law that would otherwise prove elusive in appeals from final judgments, and spare private parties and the public the time and money utterly wasted enduring eventual reversal of improperly conducted proceedings.

Conclusion

IN RE VANTAGE DRILLING INTERNATIONAL, VANTAGE DEEPWATER DRILLING, INC., AND VANTAGE ENERGY SERVICES, INC., Relators.

No. 01-17-00592-CV.

Court of Appeals of Texas, First District, Houston.

Opinion issued June 5, 2018.

OPINION

Background

Final Appeal is Adequate for Reviewing Vantage's Waiver Argument

I. Standard of Review and Applicable Law

A. Mandamus standard and adequacy of final appeal

B. Mandamus review under the FAA and TGAA

C. Reviewing orders compelling arbitration and reviewing orders denying arbitration involve different standards.

We agree that post-arbitration review of referral may create . . . a huge waste of the parties' resources. But if review is available before arbitration, parties may also waste resources appealing every referral when a quick arbitration might settle the matter. Frequent pre-arbitration review would inevitably frustrate Congress's intent to move the parties to an arbitrable dispute out of court and into arbitration as quickly and easily as possible.

II. The case-specific benefits of interrupting or delaying this referral to arbitration do not outweigh the detriments.

A. Avoiding further delay and expense

B. Time and money already spent would be wasted

In no real sense can the trial court's denial of Prudential's contractual right to have [tenant] waive a jury ever be rectified on appeal. If Prudential were to obtain judgment on a favorable jury verdict, it could not appeal, and its contractual right would be lost forever. If Prudential suffered judgment on an unfavorable verdict, Prudential could not obtain reversal for the incorrect denial of its contractual right "unless the court of appeals concludes that the error complained of . . . probably caused the rendition of an improper judgment". Even if Prudential could somehow obtain reversal based on the denial of its contractual right, it would already have lost a part of it by having been subject to the procedure it agreed to waive.

C. Martinez Partners' impermissible tactical conduct

III. Vantage's remaining cases are distinguishable.

Conclusion

BRAZORIA DRAINAGE DISTRICT NO. 4 v. KASSI MATTIES, INDIVIDUALLY AND AS NEXT FRIEND OF MINOR, No. 01-17-00422-CV (Tex.App. - Houston [1st Dist.] July 19, 2018) (Tort Claims case remanded in appeal from denial of plea to the jurisdiction asserted by drainage district to offer the plaintiff an opportunity to amend her pleadings to establish district's immunity waiver)

Collision with Cow Case

Standing is a jurisdictional issue. If there is no jurisdiction, the court can't grant any relief. Jurisdiction cannot normally be created by agreement, but there are exceptions, as illustrated by this case, where the parties agreed on appeal that facts existed to allow grandparent to pursue a suit affecting the parent-child relationship even though it had already been dismissed by the trial court for lack of standing. The agreement the parties reached was in the form of a Mediated Settlement Agreement. Johnson v Hardy, No. 01-17-00640-CV (Tex.App. - Houston, Aug. 9, 2018)

MEDIATED SETTLEMENT AGREEMENT IN GRANDPARENT ACCESS SUIT

This is an appeal from the dismissal of a suit for lack of evidence to support a grandparent’s standing under Section 102.004(a)(1) of the Family Code. On appeal, the parties have entered into a mediated settlement agreement, in which the appellees agree that appellant “has standing to pursue her claim,” meaning the parties agree that adequate facts exist to support standing under Section 102.004(a)(1), and further agree that the matter should be remanded for appellant to pursue her claims. See TEX. FAM. CODE § 102.004(a)(1). We therefore vacate the trial court’s judgment of dismissal and remand the case for further proceedings consistent with the parties’ mediated settlement agreement. See TEX. R. APP. P.42.1(a)(2).

The appeal is dismissed as moot. See TEX. R. APP. P. 43.2(f).

PER CURIAM

Panel consists of Justices Massengale, Brown, and Caughey.

v.
DR. MARY LYLES AND KATY FAMILY COUNSELING, PLLC, Appellees.

No. 14-17-00028-CV.

Court of Appeals of Texas, Fourteenth District, Houston.

Opinion filed August 14, 2018.

                                                        M A J O R I T Y    O P I N I O N 

BACKGROUND

ANALYSIS

I. Section 261.106(a) Does Not Defeat Subject Matter Jurisdiction

A person acting in good faith who reports or assists in the investigation of a report of alleged child abuse or neglect or who testifies or otherwise participates in a judicial proceeding arising from a report, petition, or investigation of alleged child abuse or neglect is immune from civil or criminal liability that might otherwise be incurred or imposed.

II. The Bird Privilege Does Not Defeat Subject Matter Jurisdiction

CONCLUSION

Immunity for reporting suspected child abuse is critical to the successful prevention of child abuse and should be treated as immunity from suit, stripping the court of jurisdiction.

Alternatively, Defendants move for dismissal pursuant to Rule 91a of the Texas Rules of Civil Procedure because it has no basis in law.

Justice Terry Jennings parts ways with colleagues in suit by widow of Jefferson County judge over asbestos exposure in the Jefferson County Court House. Jefferson County sought dismissal of widow's claims against county but MDL Judge Mark Davidson denied the County's bid to squash her wrongful death action. On appeal to the First Court of Appeals, panel majority (consisting of Massengale and Caughey) vacates the denial and dismisses the widow's case, faulting her for not giving timely notice of claim under the Tort Claims Act before anyone knew that the deceased judge suffered from mesothelioma. Ellarene Farris, Individually and as Personal Representative of the Heirs and Estate of James Farris No. 01-17-00493-CV (Tex.App. – Houston [1st Dist.] August 31, 2018).

You have to be a Texas lawyer to understand the logic of it all, if any. How can you give notice of claim when the ill effects of the asbestos exposure have not yet manifested themselves?

Justice Jennings' dissent makes much more sense.

[Judge James] Farris, who was 72 when he died, spent almost
his entire legal career[, until retiring in 1996,] in the Jefferson County
courthouse[, which included a period of asbestos remediation at the
courthouse, during which he was allegedly exposed to the deadly
fibers] . . . .
2
. . . .
“He had just given a speech in Idaho in October 2004,” Ellarene
Farris said. “He came home and said he couldn’t do it anymore. He
went into the hospital and nine days later, he was dead.”
She said her husband had no idea he suffered from
mesothelioma, a cancer of the lining of the lungs. The symptoms
began as an abdominal pain that wouldn’t quit and ended soon after
with a struggle to breathe.1

1 Dan Wallach, Death Suit Blaming Asbestos in Jefferson County Courthouse Could End, BEAUMONT ENTERPRISE, Sept. 12, 2016, https://www.beaumontenterprise.com/news/article/Death-suit-blaming-asbestos-in-Jefferson-County-9217178.php (emphasis added) (Exhibit 3 to Jefferson County’s Amended Plea to the Jurisdiction and Amended Motion for Summary Judgment and Amended No Evidence Motion for Summary Judgment). 

Fourteenth Court of Appeals says that mandamus relief cannot be granted even if the challenged order is void if the argument was not first presented to the trial court and overruled. In re Total Petrochemicals & Refining USA, Inc. No. 14-18-00843-CV (Tex.App. - Houston [14th Dist.] Oct. 11, 2018) (orig. proc.). Mandamus relief denied. So ruled, party seeking mandamus relief is free to try again later.

IN RE TOTAL PETROCHEMICALS & REFINING USA, INC., Relator.

No. 14-18-00843-CV.

Court of Appeals of Texas, Fourteenth District, Houston.

Memorandum Opinion filed October 11, 2018.

MEMORANDUM OPINION

AMIR A. CHAMIE V. MEMORIAL HERMANN HEALTH SYSTEM, NO. 14-17-00354-CV (Tex.App. - Houston [1st Dist.] Sep. 25, 2018)

Pleadings generally are not proper summary judgment evidence. Laidlaw Waste Sys. (Dallas), Inc. v. City of Wilmer, 904 S.W.2d 656, 660 (Tex. 1995); Hidalgo v. Surety Sav. & Loan Ass'n, 462 S.W.2d 540, 545 (Tex. 1971); Nguyen v. Citibank N.A., 403 S.W.3d 927, 932 (Tex. App.-Houston [14th Dist.] 2013, pet. denied). Chamie offers no explanation as to why this court should treat his pleadings as summary judgment evidence, and we discern no reason to do so; the pleadings simply contain Chamie's allegations in this case and are not evidence. Likewise, we cannot consider the attachments to Chamie's brief, as they are not a part of the appellate record. See, e.g., Canton-Carter v. Baylor Coll. of Med., 271 S.W.3d 928, 931 n.2 (Tex. App.-Houston [14th Dist.] 2008, no pet.); Gibson v. Grocers Supply Co., 866 S.W.2d 757, 760 n.4 (Tex. App.-Houston [14th Dist.] 1993, no writ). And lastly, the table of contents that Chamie attached to his response as an exhibit did not present any actual evidence; it was merely a list of documents that are not in the record.
The record demonstrates that Chamie did not file any evidence in response to appellees' no-evidence motion for summary judgment, much less any evidence that appellees' conduct caused Chamie's alleged injuries. Accordingly, the trial court did not err in granting the motion.[4] See Tex. R. Civ. P. 166a(i); Doherty v. Old Place, Inc., 316 S.W.3d 840, 845 (Tex. App.-Houston [14th Dist.] 2010, no pet.). We therefore overrule Chamie's first issue.

Affirmed and Opinion filed September 25, 2018.
 

OPINION

Background

Summary Judgment

Time for Discovery

Tyhan, Inc. d/b/a Auto Fix Unlimited v Cintas Corporation No. 2 , No. 01-18-00027-CV (Tex.App. - Houston [1st Dist.] Oct. 30, 2018) 


Tyhan, Inc., doing business as Auto Fix Unlimited, appeals from a default
summary judgment in favor of Cintas Corporation No. 2. We reverse and remand.

BACKGROUND

Tyhan signed a five-year contract with Cintas for the rental of uniforms and
the provision of associated services. After about two and a half years, Tyhan stopped
paying for Cintas’s goods and services. Cintas sued Tyhan for breach of contract.
Cintas sought past due amounts owed for goods and services rendered, liquidated
damages for the remainder of the contract’s five-year term, and the replacement cost
of lost and damaged items rented to Tyhan.

In response to Cintas’s lawsuit, Tyhan’s president filed a letter on behalf of
the company, which was not represented by counsel in the trial court. On appeal,
both parties characterize this letter as Tyhan’s answer.

Cintas moved for a traditional summary judgment on its cause of action for
breach of contract. In support, Cintas attached the parties’ contract, four invoices, an
affidavit by the general manager of the location that serviced the contract, and an
affidavit by its attorney as to reasonable and necessary attorney’s fees incurred in
prosecuting the suit.

Tyhan filed a verified response to Cintas’s summary-judgment motion, in
which its president represented that it had not yet retained counsel, stated that Cintas
had not served it with a copy of the summary-judgment motion, and argued that
genuine issues of material fact precluded summary judgment.

The trial court held a hearing on Cintas’s summary-judgment motion. Neither
Tyhan’s president nor any other representative of Tyhan attended the hearing.
The trial court entered a final summary judgment in Cintas’s favor. The
judgment awarded Cintas $11,230.16 for unpaid invoices, $34,621.43 in liquidated
damages, $2,823 for lost or damaged items, pre- and post-judgment interest, costs,
and attorney’s fees.

Tyhan filed a verified motion for new trial. In its motion, Tyhan’s president
represented that the company did not receive notice of the summary-judgment
hearing and that it had a meritorious defense to Cintas’s suit. Tyhan’s new-trial
motion was denied by operation of law.

Tyhan subsequently retained counsel, who filed this appeal.

[...]

II. Summary Judgment

Tyhan challenges the evidence the trial court relied on in awarding the default
damages. In its motion for summary judgment, Cintas relied on the affidavit of one

of its general managers, John Ayers, for proof of its damages. Tyhan asserts that this
affidavit is conclusory and thus no evidence.

A. Standard of review and applicable law

We review summary judgments de novo. City of Richardson v. Oncor Elec.
Delivery Co., 539 S.W.3d 252, 258 (Tex. 2018). Traditional summary judgment is
proper when the material facts are not disputed and the moving party is entitled to
judgment as a matter of law. TEX. R. CIV. P. 166a(c); Oncor, 539 S.W.3d at 258–59.
If the movant seeks summary judgment on its own affirmative claim for relief, it
must conclusively prove all elements of its cause of action. Havlen v. McDougall,
22 S.W.3d 343, 345 (Tex. 2000). The trial court cannot grant summary judgment if
the movant’s summary-judgment proof is legally insufficient. See Amedisys, Inc. v.
Kingwood Home Health Care, 437 S.W.3d 507, 512 (Tex. 2014).

A conclusory affidavit is legally insufficient to raise a genuine issue of
material fact on summary judgment, let alone conclusively prove a fact. See
Brownlee v. Brownlee, 665 S.W.2d 111, 112 (Tex. 1984); Prime Prods. v. S.S.I.
Plastics, 97 S.W.3d 631, 637 (Tex. App.—Houston [1st Dist.] 2002, pet. denied). A
witness’s affidavit is conclusory when he offers nothing more than unexplained
conclusions or opinions by failing to specify the facts on which his conclusions or
opinions rest. See Arkoma Basin Expl. Co. v. FMF Assocs. 1990-A, Ltd., 249 S.W.3d
380, 389 n.32 (Tex. 2008); Brookshire Katy Drainage Dist. v. Lily Gardens, 333
S.W.3d 301, 308 (Tex. App.—Houston [1st Dist.] 2010, pet. denied).

B. Analysis

Ayers averred that Tyhan defaulted on the contract by failing to make its
weekly rental payments. He stated that the contract had a term of five years and that
Tyhan owed a balance of $11,230.16. Ayers did not explain how he calculated the
balance or attach records accounting for the tally. Cintas attached four invoices to
its summary-judgment motion. They state total amounts of $64.56, $184.84,
$171.29, and $178.24, and are dated February 21, 2017, February 21, 2017,
December 2, 2016, and November 10, 2016 respectively. They do not substantiate
the outstanding balance of $11,230.16 stated by Ayers in his affidavit, which does
not even refer to these four invoices.

Ayers further testified that Tyhan owed $34,621.43 under the liquidated damages
provision of the contract. This provision obligates Tyhan to pay “the
greater of 50% of the average weekly invoice total multiplied by the number of
weeks remaining in the unexpired term, or buy back all garments and other products
allocated to [Tyhan] at the then current replacement values” if Cintas terminates the
contract for cause. Ayers testified that Cintas terminated the contract with 139 weeks
of its term remaining and stated that the weekly invoice amount was $498.15. Thus,
the basis for his calculation is clear: 139 x $498.15 x .5 = $34,621.43. Ayers,
however, did not explain how the $498.15 average weekly invoice amount was
calculated or attach records substantiating this average. Ayers’s average weekly
amount cannot be derived from the four invoices attached to Cintas’s summary judgment
motion.

Finally, Ayers testified that Tyhan owes $2,823 under a provision of the
contract requiring Tyhan to “pay the then current replacement values” for lost or
damaged items. Ayers, however, neither identified the lost or damaged items nor
itemized the current replacement values for them.

Ayers’s statements as to the balance owed on the contract, liquidated
damages, and replacement costs each suffer from the same essential flaw: they fail
to provide the underlying factual basis for the amounts claimed. His affidavit
therefore is conclusory and is no evidence of Cintas’s damages. See Brownlee, 665
S.W.2d at 112 (affidavit that stated contract was modified but failed to specify the
time, place, and exact nature of modification was conclusory); see, e.g., Brown v.
Mesa Distribs., 414 S.W.3d 279, 287 (Tex. App.—Houston [1st Dist.] 2013, no pet.)
(affidavit that stated $13,000 was owed under lease but didn’t provide factual
support or additional evidence showing how that figure was calculated was
conclusory). Accordingly, we hold that the proof of damages is legally insufficient
to support the amount awarded. Because Cintas’s proof of damages is legally
insufficient, the trial court erred in granting summary judgment. See Brownlee, 665
S.W.2d at 112; Prime Prods., 97 S.W.3d at 637.

III. Undecided Issues

Tyhan also contends that the trial court erred in granting summary judgment
on the issue of liquidated damages because the record raises a genuine issue of
material fact as to their amount and in awarding attorney’s fees because the evidence
of fees is legally insufficient. We need not decide these additional issues, given our
reversal of the trial court’s judgment on other grounds. See TEX. R. APP. P. 47.1.

CONCLUSION

We reverse the judgment of the trial court and, as Tyhan contests liability and
the alleged damages are unliquidated, we remand this cause for a new trial on both
liability and damages. See TEX. R. APP. P. 44.1(b); Pointe W. Ctr. v. It’s Alive, Inc.,
476 S.W.3d 141, 150 (Tex. App.—Houston [1st Dist.] 2015, pet. denied).

Jane Bland
Justice
Panel consists of Justices Keyes, Bland, and Lloyd.

Opinion issued October 30, 2018

SANE LOCKE V. BRIARWOOD VILLAGE, No. 14-17-00113-CV (Tex. App. - Houston [14th Dist.] Oct. 30, 2018)

Affirmed and Memorandum Opinion filed October 30, 2018.

BACKGROUND

ANALYSIS

I. Sufficient evidence supports the trial court's judgment.

II. Because Briarwood Village did not file a notice of appeal, we do not consider its request for additional attorney's fees.

CONCLUSION

Evian Johnson and Mellanie M. Walton v. Pamela Lee & Donny Lee, NO. 01-17-00773-CV (Tex.App. - Houston [1st Dist.] Oct. 30, 2018) (appellants' failure to obtain hearing on motion to attack default judgment nixes appeal based on failure to preserve issues for review. Motion was overruled by operation of law in the trial court).

EVIAN JOHNSON AND MELLANIE M. WALTON, Appellants,
v.
PAMELA LEE AND DONNY LEE, Appellees.

No. 01-17-00773-CV.

Court of Appeals of Texas, First District, Houston.

Opinion issued October 30, 2018.

MEMORANDUM OPINION

BACKGROUND

DISCUSSION

A. Standard of review and applicable law

B. Analysis

CONCLUSION

Seat of Houston Courts of Appeals in the historic Harris County Courthouse

Based on preliminary election results reported by the Texas Secretary of State, all Republican incumbents on the First and Fourteenth Court of Appeals in Houston who ran for reelection this year have lost their jobs effective December 31, 2018 even though the Republican incumbents on the state's highest appellate courts--the Texas Supreme Court and the Court of Criminal Appeals--were reelected. The latter are elected statewide while the members of the Houston-based appellate courts are elected from an appellate district comprising Harris County and nine surrounding counties. All current incumbents on the Houston-based courts of appeals were elected or appointed as Republicans. Their terms will expire December 31, 2018.


OUT ON THE FIRST COA: Justice Jane Bland (R), Justice Harvey Brown (R), Justice Michael Massengale (R), and appointed Justice Jennifer Caughey (R), who stood for election for the first time, rather than running for reelection. Justice Terry Jennings, elected as a Republican, quit the Republican Party in 2016 and did not seek reelection in 2018.

IN: Gordon Goodman (D), Sarah Beth Landau (D), Julie Countiss (D)(defeating Republican Terry Yates in an open race), Richard Hightower (D), Peter Kelly (D).

First Court of Appeals Races - Election Results

OUT ON THE FOURTEENTH COA: Justice Brett Busby (R), Justice Marc Brown (R), Justice Martha Hill Jamison (R), Justice Bill Boyce (R), Justice John Donovan (R)

IN: Jerry Zimmerer (D), Charles Spain (D), Frances Bourliot (D), Meagan Hassan (D), Margaret “Meg” Poissant (D)

Fourteenth Court of Appeals Races - Election Results

Some judicial incumbents' time will be up come at the end of 2018. Not all sitting district judges were up for re-election this year.

The straight-party vote for Democrats in Harris County was 55.25% against 44.12% for the Republicans. Libertarians made up the tiny difference. Democratic U.S. Senate candidate Beto O'Rourke attracted 57.86% of the vote in Harris County against only 41.42% for Ted Cruz.

Republican incumbents on the Texas Supreme Court (Justices Jeff Brown, John Devine, and recent appointee Jimmy Blacklock) would have lost by wide margins had they been elected from Harris County only.

In the SCOTX races, Democratic challengers Steven Kirkland, R.K. Sandill, and Kathy Cheng all pulled more than 55% of the votes in the county. Kirkland and Sandill are currently serving as District Judges in Harris County and were not up for reelection this year.

REP John Devine: 53.72% statewide vs. 43.61% in Harris County
DEM R.K. Sandill: 46.27% statewide vs. 56.39% in Harris County
REP Jeff Brown: 53.72% statewide vs. 44.90% in Harris County
DEM Kathy Cheng: 46.27% statewide vs. 55.10% in Harris County
REP Jimmy Blacklock: 53.14% statewide vs. 43.40% in Harris County
DEM Steven Kirkland: 46.85% statewide vs. 56.60% in Harris County 

Voting in judicial races is mostly a party affair. Candidate-specific attributes appear to have made little difference at the statewide level, and only a small difference in Harris County, where the two Democratic candidates who have substantial judicial experience pulled more votes than the one who does not. Because Harris County is competitive, however, relatively small differences in votes can make all the difference in the outcome in district and county-bench races. Not in this midterm election, however, in which the margins were large both for Republicans (at the statewide level) and for the Democrats (in Harris County and first and fourteenth appellate district races).

Nov. 6, 2018 Election results for Texas Supreme Court races in Harris County

Following the Democratic sweep in the November 2018 election, many newly elected judges took office at the beginning of the year. The District and County Clerks were also replaced, although the Harris County Clerk's website has not fully made the transition yet.

From Stan Stanart to Diane Trautman

Bio of new Harris County Clerk

Harris County CCCL1: Judge George Barnstone (incumbent, elected in 2016)
Harris County CCCL2: Judge Jim F. Kovach (replacing Teresa W. Chang)
Harris County CCCL3: Judge LaShawn A. Williams (replacing Linda Storey)
Harris County CCCL4: Judge William "Bill" McLeod  (replacing Roberta Lloyd)

HARRIS COUNTY DISTRICT CLERK: MARILYN BURGESS [replacing Chris Daniel]

The updated Harris County District Clerks home page

ROSTER OF HARRIS COUNTY DISTRICT COURT JUDGES AS OF JANUARY 2019 

Roster of Harris County District Courts and Judges as of Jan 2019

11th District Court: Judge Kristen Brauchle Hawkins
55thDistrict Court: Judge Latosha Lewis Payne (replacing Jeff Shadwick)
61st District Court: Judge Fredericka Phillips
80th District Court: Judge Larry Weiman
113thDistrict Court: Judge Rabeea Sultan Collier (replacing Michael Landrum) 
125th District Court: Judge Kyle Carter
127thDistrict Court: Judge R.K. Sandill
129thDistrict Court: Judge Michael Gomez
133rdDistrict Court: Judge Jaclanel McFarland
151stDistrict Court: Judge Mike Engelhart
152nd District Court: Judge Robert Schaffer 
157thDistrict Court: Judge Tanya Garrison (replacing Randy Wilson, who rejoined Susman Godfrey)
164thDistrict Court: Judge Alexandra Smoots-Thomas
165thDistrict Court: Judge Ursula A. Hall
189thDistrict Court: Judge Scot "dolli" Dollinger (replacing Bill Burke)
190thDistrict Court: Judge Beau A. Miller (replacing Debra Ibarra Mayfield)
215thDistrict Court: Judge Elaine H. Palmer
234thDistrict Court: Judge Lauren Reeder (replacing Wesley Ward)
269thDistrict Court: Judge Cory Don Sepolio (replacing Dan Hinde)
270thDistrict Court: Judge Dedra Davis (replacing Brent Gamble)
281stDistrict Court: Judge Christine Weems (replacing Sylvia A. Matthews)
295thDistrict Court: Judge Donna Roth (replacing Caroline E. Baker)
333rdDistrict Court: Judge Daryl L. Moore
334thDistrict Court: Judge Steven Kirkland

See roster with links to individual profiles at: https://www.justex.net/Courts/Civil/CivilCourts.aspx

MDLJudge Mark Davidson
MDLJudge Sylvia A. Matthews
TAXTax Masters
Former 281st District Judge Sylvia A. Matthews now serves as a multi-district litigation judge, as does former 11th District Court Judge Mark Davidson.
Former District Judge and Court of Appeals Justice Sharon McCally serves as Tax Master.

OTHER CIVIL COURTS 


For Harris County Family Courts, see https://www.justex.net/Courts/Family/FamilyCourts.aspx


Harris County Juvenile Courts: https://www.justex.net/Courts/Juvenile/JuvenileCourts.aspx


Administrative Office of the District Courts: 1201 Franklin, 7th Floor  Houston, Texas 77002

Hon. Robert Schaffer, Harris County Administrative Judge
Hon. Maria T. Jackson, Administrative Judge - Criminal Division
Hon. Mike Engelhart, Administrative Judge - Civil Division
Hon. Julia Maldonado, Administrative Judge - Family Division
Hon. Michelle Moore, Administrative Judge - Juvenile Division

Harris County Civil Courthouse

One of the consequences of the turnover in the composition of the Houston Courts of Appeals brought about by the Democratic sweep in the November 2018 elections is the need to reconstitute panels and reassign cases as numerous Republican incumbents departed from the court when their terms of office expired at the end of 2018. A large number of cases are affected, including cases that were previously submitted but were not decided before the year was up. All that makes for a crowded docket. Neither one of the two Houston Courts of Appeals that hear appeals from Harris County and nine additional surrounding counties has any oral arguments scheduled for January 2019, but the incoming justices face a daunting task working their way into, not to mention through, the pending caseload. 

For tomorrow, January 10, 2019, alone a total of no less than 187 civil and criminal appeals cases are set for submission in the Fourteenth Court of Appeals. Here is the list, followed by a breakdown by justices, who sit in panel of three. 

14-16-00880-CVTransamerica Corporation v. Braes Woods Condo Association Inc.
14-16-00959-CRRobert Hocko v. The State of Texas
14-17-00026-CREpolito Lozano Junior v. The State of Texas
14-17-00027-CREpolito Lozano Junior v. The State of Texas
14-17-00088-CRSenthil Manalan v. The State of Texas
14-17-00181-CVRobert Burton v. Wayman L. Prince, Nafisa Yaqoob, Independent Management & Investment LLC and Leawood Homeowners Association, Inc.
14-17-00210-CVVernon Kent Maree and Front Row Parking Inc. v. Baldemar (Val) Zuniga
14-17-00216-CVIn the Matter of the Marriage of Diana Erika Lopez and Jovany Jampher Paredes v.
14-17-00221-CVTommy Layton Schmitt v. Petra Ulrike Schmitt
14-17-00239-CRKevin Wayne Sauls v. The State of Texas
14-17-00257-CVRichard D. Davis, L.L.P., a Texas General Partnership, Richard D. Davis, L.L.P, a Nevada Limited Liability Partnership and Patricia K. Suarez v. Andy Knott, Bill Green, Dempsey Gearen, Jim Phillips, Phil Birkelbach, Danny Langhorne, Hans van der Voort, Gene Morton, Stanley Hoffpauir and Paul Kates
14-17-00259-CRRobert Ray Moore v. The State of Texas
14-17-00267-CRJesus Gabriel Zamarripa v. The State of Texas
14-17-00271-CVASR 2620-2630 Fountainview, LP, Fountainview Park Plaza, LLC, and ASRP Investments, LLC v. ASR 2620-2630 Fountainview GP, LLC, American Spectrum Operating Partnership LP, American Spectrum Realty, Inc., and American Spectrum Realty Management, LLC
14-17-00278-CVBill Green, Hans Van Der Voort, Phil Birkelbach, and Paul Kates v. Richard D. Davis, L.L.P., a Nevada Limited Liability Partnership, Richard D. Davis, L.L.P., a Texas General Partnership, and Patricia K. Suarez
14-17-00281-CVNguyen Vu Corporation ("NVC") v. PD & Sons, LLC d/b/a Rosa Pharmacy
14-17-00297-CRShirley Fanuiel v. The State of Texas
14-17-00303-CRBene A. Taylor v. The State of Texas
14-17-00315-CRJohn Anthony Vela v. The State of Texas
14-17-00324-CVJesse Andrew Lopez v. Shari Grace Occhiogrosso
14-17-00347-CVErnestine Sophie Jimenez aka Ernestine Sierra Jimenez aka Ernestine Garcia aka Ernestine Jimenez Garcia aka Baker Lewis v. Rosemarie Z. Lewis
14-17-00349-CRJoshuah Mack v. The State of Texas
14-17-00372-CVRichard D. Davis, LLP., a Texas General Partnership, Richard D. Davis, LLP, a Nevada Limited Liability Partnership and Patricia Suarez v. Sky Lakes Flyers Foundation and Carbett J. Duhon, III
14-17-00377-CRTerry Danell Ward v. The State of Texas
14-17-00379-CVAlejandro L. Padua and The Padua Law Firm, P.L.L.C v. Jason A. Gibson, P.C. d/b/a The Gibson Law Firm and Jason A. Gibson
14-17-00400-CRHappy Tran Pham v. The State of Texas
14-17-00408-CRHumberto Ruiz v. The State of Texas
14-17-00411-CRRobert DeWayne Bolden v. The State of Texas
14-17-00418-CRKevin Devon Batts v. The State of Texas
14-17-00419-CRJason Lara v. The State of Texas
14-17-00431-CVJoe Alfred Izen, Jr. and Ray Edwards and Bonnie Edwards d/b/a Big Man Diesel v. Kenneth Ryals, Trustee of the East Texas Investments Trust
14-17-00444-CVIn the Matter of the Marriage of Mari Lou Garcia and Rene Garcia v.
14-17-00450-CVFidelis Johnson Badaiki v. Bryan Miller DBA Classic Towing, Pine Forest Park Place, American Eagle Auto Storage
14-17-00460-CRTerrance Devaughn Edwards v. The State of Texas
14-17-00466-CVRima Group, Inc. v. David H. Janowitz and Cynthia Edmiston, as Trustee of the Janowitz Edmiston Family Living Trust
14-17-00479-CVAimee Harvey Individually and as Next Friend of Talisa Phillips, Amanda Harvey, Henry Wilson, III, as Next Friend of Aaleisa Phillips (a Minor) and Gwendolyn Wilson v. Kindred Healthcare Operating, Inc., Kindred Hospital Houston Medical Center, Kindred Hospitals Limited Partnership
14-17-00480-CVDealer Computer Services, Inc. v. DCT Hollister Rd, LLC Staples, Inc., Northwest Crossing Association, Inc., First Service Residential Houston. Inc., Keith Grothaus, Victoria Brown and Jared Hothan
14-17-00493-CRPaul Craig Scott v. The State of Texas
14-17-00499-CRDarias Taron Lacour v. The State of Texas
14-17-00512-CRAlberto Palacio v. The State of Texas
14-17-00520-CVFort Bend County v. Melissa Ann Norsworthy
14-17-00533-CVHouston Firefighters' Relief and Retirement Fund v. City of Houston, Sylvester Turner, Brenda Stardig, Jerry Davis, Ellen Cohen, Dwight Boykins, Dave Martin, Steve Le, Greg Travis, Karla Cisneros, Robert Gallegos, Mike Laster, Larry Green, Mike Knox, David Robinson, Michael Kubosh, Amanda Edwards and Jack Christie
14-17-00536-CRElbert Jones v. The State of Texas
14-17-00547-CVJeffrey Wells v. Texas Department of Public Safety
14-17-00554-CRRamon Delgado v. The State of Texas
14-17-00557-CVMaurice Sloan II v. Goldberg B'Nai B'rith Towers
14-17-00559-CRLeonard Farrell Willis v. The State of Texas
14-17-00560-CRDavid Sherrod Wyles v. The State of Texas
14-17-00562-CVB2 Towing Co., Inc. and Sharon Brooks, Individually and as Administratrix of the Estate of Ann C. Brooks, v. Dale A. Binger, Jr., Joseph Hunter, Bill Watkins, and Marsha Watkins
14-17-00565-CVIn the Interest of C.Z.P, a child v.
14-17-00572-CVTexas Department of Public Safety v. T. R. W.
14-17-00580-CRCharles Robert Ransier v. The State of Texas
14-17-00581-CRCharles Robert Ransier v. The State of Texas
14-17-00588-CRTheresa Serrano v. The State of Texas
14-17-00590-CRMiguel Angel Yepez v. The State of Texas
14-17-00604-CVIn re the Commitment of Seth Hill v.
14-17-00606-CRSuzanne Elizabeth Wexler v. The State of Texas
14-17-00609-CVScarlett Yarborough v. Vitrola Bar, Inc., Pete Mitchell, and Vera Mitchell
14-17-00610-CRJessie Earl Nicholson v. The State of Texas
14-17-00613-CRAlvaro Angel Rodriguez v. The State of Texas
14-17-00619-CVTexas Central Partners, LLC v. Grimes County, Texas
14-17-00621-CREngwin Williams v. The State of Texas
14-17-00622-CRMarvin Dayvon Brown v. The State of Texas
14-17-00623-CRTravis E Scott v. The State of Texas
14-17-00641-CRJohn Douglas Osby v. The State of Texas
14-17-00643-CROmar Hernandez v. The State of Texas
14-17-00666-CVJack Zeev Yetiv v. Commission for Lawyer Discipline
14-17-00672-CVIn the Matter of the Marriage of Jose Eugenio Rangel and Catalina Tovias Rangel v.
14-17-00674-CRLemandale Dewayne Braggs a/k/a Lemandale Dewayne Braggs v. The State of Texas
14-17-00676-CVSameera Arshad and Almorfa LLC v. American Express Bank FSB
14-17-00687-CVJohn Kevin Munz and Unimaginable Ventures, LLC v. Craig Schreiber
14-17-00715-CVIn the Interest of H.P.J., a Child v.
14-17-00717-CVPolaris Guidance Systems, LLC v. EOG Resources, Inc.
14-17-00718-CVHarris County, Texas v. Claudia Ramirez
14-17-00719-CRSteven Cortez v. The State of Texas
14-17-00733-CVJay & VMK, Corp. and John Kelly v. Cristina Lopez and Humanitarian Financial, Inc.
14-17-00737-CVAltech Controls Corporation and Richard Alsenz v. Paul Malone
14-17-00739-CVCenter Rose Partners, Ltd., Individually and derivatively as a member of Rose Acquisition LLC, David and Nicole Felt, and Lloyd Hall v. Jerry W. Bailey and David Sonnier
14-17-00742-CVGary Ginn v. Robert Pierce
14-17-00745-CRJose Guadalupe Garcia Flores v. The State of Texas
14-17-00749-CRJames Oliver Charles Junior v. The State of Texas
14-17-00751-CVIn the Interest of C.M., a Child v.
14-17-00754-CVDawn Brown v. Prairie View A&M University and Ashley Robinson, in his Individual and Official Capacity
14-17-00761-CVWorldwide Autotainment, Inc. v. John Matthew Galloway
14-17-00762-CRDiva Maria Babel v. The State of Texas
14-17-00766-CVF. Don Lacy and Homes and More v. Luis A. Castillo
14-17-00768-CVKevin P. Kaley v. Terri E. Kaley
14-17-00770-CRJoseph Arthur Alridge v. The State of Texas
14-17-00782-CVJimmy Vitela v. Gallery Model Homes , Inc DBA Gallery Furniture
14-17-00783-CVRobert Burton v. Wayman L. Prince, Nafisa Yaqoob, Independant Management and Investments, LLC, and The Leawood Homeowners Assoviation, Inc.
14-17-00785-CRZaid Adnan Najar v. The State of Texas
14-17-00802-CRJames Alsup Hill v. The State of Texas
14-17-00814-CVNatosha Abraham v. Victory Apartments
14-17-00821-CRMaria Corona v. The State of Texas
14-17-00822-CRJimmy Derrick Hicks v. The State of Texas
14-17-00835-CVRedmond Legal Group, PLLC, and Jerry Redmond, Jr., v. Carliss Chatman, and Mitra Woody
14-17-00837-CRKole Keaton Batiste v. The State of Texas
14-17-00850-CVWatamar Holdings SA v. Ashford Development, Inc. Ashford Willowbrook, Inc., et al.
14-17-00851-CVStewart A. Feldman, Individually, The Feldman Law Firm LLP, Rapid Settlements, Ltd., et al. v. Joseph K. Watts, Angela M. Watts, and Joseph K. Watts P.C.
14-17-00853-CVJoseph K. Watts, Angela M. Watts, Joseph K. Watts, Alexandria Smith, Scott Edward Smith, and Vikas Jundra v. Stewart A. Feldman, Individually the Feldman Law Firm, LLP,et al.
14-17-00861-CVJoseph K. Watts v. Stewart A. Feldman, individually, The Feldman Law Firm LLP, Rapid Settlements, Ltd.,et al.
14-17-00862-CVIn the Interest of S.M.H and W.H.H., Minor Children v.
14-17-00864-CVRobert Burton v. Leawood HOA, Independant Management
14-17-00870-CVSonya Ashley v. North Houston Pole Line, L.P. and Joaquin Jimenez
14-17-00872-CVEdwin Rodriguez and Tonya Rodriguez v. Texas Leaguer Brewing Company L.L.C. and Nathan Rees
14-17-00877-CVSergio A Gonzalez & Sherice Gonzalez v. Hunting Energy Services, Inc., Hunting Energy Services, Drilling Tools, Inc., Hunting Titan, Inc.
14-17-00883-CVCharles Lee Cunningham, III, and Karan Lozano v. Christi Lee Waymire, and Gary Michael Waymire, individually and as next friend of minor children MC and MC2
14-17-00884-CRNathaniel Davis v. The State of Texas
14-17-00893-CRLeslie Ray Foster v. The State of Texas
14-17-00900-CVStanwyn Jay Carter v. ZB, National Association d/b/a Amegy Bank
14-17-00902-CRDouglas Harry Young v. The State of Texas
14-17-00904-CRAdrian Rashun Gaston v. The State of Texas

Example of Notice of Change in Panel Composition

14-17-00916-CVCharles J. Germany Jr. v. Wells Fargo Bank, NA
14-17-00922-CRAnthony Wayne Sykes v. The State of Texas
14-17-00923-CRJustin Ross Holzworth v. The State of Texas
14-17-00929-CVAlex Erazo v. Luis A Sanchez, Chief Medical Director for the Harris County Institute of Forensic Sciences; Kim Ogg (formally Devon Anderson), District Attorney for Harris County, Texas
14-17-00938-CVIn the interest of D.Z, a minor child v.
14-17-00944-CVViola Perfecto Clark v. Cornel T Clark
14-17-00946-CVMai Tran v. Thien Quang Dinh & Lieu Thi Nguyen
14-17-00953-CRJuan Javier Lagos v. The State of Texas
14-17-00954-CVIn the Interest of T.A.Q., a child v.
14-17-00980-CRDaniel Arnold Waller v. The State of Texas
14-17-00981-CVJerry Sanchez, Timothy Wiliams, and Jose Estrada v. James Daniel Boone
14-17-00983-CRElizabeth Jimenez v. The State of Texas
14-17-00989-CRRodolfo Quintero v. The State of Texas
14-17-00990-CVPEM Offshore Incorporated and Philips Matthew v. Index Brook Limited
14-17-00991-CVFrank Zhang and Daxwell Group, LLC v. Capital Plastic & Bags, Inc.
14-17-00992-CRQuentin Jehlonton Wallace v. The State of Texas
14-17-00998-CVSon Tran v. Vully V Trejos
14-17-01008-CVRosa Escalona v. MC Charter LLC and Michael Chavez
14-17-01010-CVSchear Hampton Drywall, LLC v. Founders Commercial, LTD
14-18-00001-CVCarl Tolbert, Nizzera Kimball and Vivian Robbins v. Terisa Taylor, Mark Broome, Neal Broome, Connie Broome, Fiona McInally and Pathway Forensics, LLC
14-18-00008-CRChristopher M. Pelletier v. The State of Texas
14-18-00009-CRSteven Kurt Baughman v. The State of Texas
14-18-00010-CRSteven Kurt Baughman v. The State of Texas
14-18-00015-CVIn the Interest of K.A.M.S & K.A.S, Children v.
14-18-00017-CVHarris County Appraisal District v. Natalie Boyaki
14-18-00018-CVTendeka, Inc. v. Nine Energy Service, et al
14-18-00020-CVLatia M Jones v. RGJ Apartments Inc. a/k/a RGJ Inc. a/k/a Victoria Park Apartments, a/k/a RGJ Apts Inc., a/k/a Victoria Park Apartment Home Inc.
14-18-00021-CRSteven Kurt Baughman v. The State of Texas
14-18-00037-CRShaun Evertte Craven v. The State of Texas
14-18-00038-CVTexan Land & Cattle II, Ltd., v. Exxon Mobil Pipeline Company
14-18-00045-CVMark Anthony Fornesa, Judy Thanh Fornesa, Ricardo Fornesa Jr., and Cynthia Fornesa v. Fifth Third Mortgage Co. & Fifth Third Bank
14-18-00055-CVCharles W. Cook, Levi Watson, Jessica Watson, Joe Blair Rowton, Jamie Louis Rowton, and Charles Townsend v. Ronen Nissimov, Natalia Nissimov, and Brian Blalock
14-18-00056-CRJermel Irving v. The State of Texas
14-18-00057-CVOscar Romero III v. D. R. Kidd Company, Inc. d/b/a Kidd Roofing
14-18-00060-CVChristopher Durham v. Barbara Accardi and Jules Accardi
14-18-00061-CVBlaine M. Standiford and Sheryl E. Standiford v. Citimortgage, Inc.
14-18-00065-CRStephen Armstrong v. The State of Texas
14-18-00067-CRCorey Cadrey Thomas v. The State of Texas
14-18-00068-CVThe City of Austin v. Lake Austin Collective, Inc.
14-18-00072-CRRudolph Hardin v. The State of Texas
14-18-00073-CRDale Anthony Tatro, Jr. v. The State of Texas
14-18-00074-CRZeth Aurelio Garcia v. The State of Texas
14-18-00078-CRLisa Ann Barfield v. The State of Texas
14-18-00080-CVThe City of Houston v. Francisco Cruz
14-18-00082-CVGreat West Casualty Company as Subrogee of Try Again Trucking and Gurjap Singh v. Jorge Billafuerte and Dwayne Washington
14-18-00097-CRBraylon Damon Cloud v. The State of Texas
14-18-00098-CVGordon M Swoboda v. Ocwen Loan Servicing, LLC; and U.S. Bank National Association, as Trustee
14-18-00106-CVNatalya Read v. Stephen Sibo
14-18-00107-CVRosemary C Phelan, Et Al v. Good Buys USA INC.
14-18-00116-CRMiguel Martines v. The State of Texas
14-18-00126-CVJennifer Braden v. Hussain A. Rahim
14-18-00127-CVContinental Alloys & Services (Delaware) LLC and Continental Alloys & Services, Inc. v. Yangzhou Chengde Steel Pipe Co., Ltd. and Ciec USA Incorporation
14-18-00133-CVAMEC Foster Wheeler USA Corp., f/k/a Foster Wheeler USA Corporation; AMEC Foster Wheeler PLC v. Enterprise Products Operating LLC
14-18-00139-CVDolly Ann Islas v. Daisy Sanchez Dominguez
14-18-00146-CVTexas Southern University v. Satterfield & Pontikes Construction, Inc.; Kirksey Architects, Inc.; Paradigm Consultants, Inc.; Nathelyne Kennedy & Associates, L.P. f/k/a Nathelyne Kennedy & Associates L.P.; and Haynes Whaley Associates Inc. Structural Engineering
14-18-00150-CVGlenn Johnson v. William Villatoro
14-18-00162-CRVincent Depaul Stredic v. The State of Texas
14-18-00182-CVHarris County v. Juana Avila Individually and as Next Fried of Karla Avila, A Minor and Karla Avila, Individually
14-18-00184-CVGeorge E. Hilburn v. Storage Trust Properties, LP
14-18-00202-CRMichael Andrew Marshall v. The State of Texas
14-18-00222-CVIn Re Ricardo Fornesa, Cynthia Fornesa, Judy Thanh Fornesa, and Mark Anthony Fornesa v.
14-18-00233-CRAntwain Townes III v. The State of Texas
14-18-00234-CRAntwain Townes III v. The State of Texas
14-18-00237-CVScott Van Dyke and ANGLO-DUTCH ENERGY, LLC v. Forest Hunter Smith, Littlemill Limited, Prosperity Settlement Funding, Inc., Robert M. Press, Anzar Settlement Funding Corp., Gerard Swonke and Greenberg Peden, P.C.
14-18-00247-CVHouston Independent School District, Harris County Harris County Flood Control District, Port of Houston Authority, Harris County Hospital District, Harris County Department of Education, Houston Community College System and City of Houston v. submission (brie
14-18-00273-CRDevlon Deaquel Johnson v. The State of Texas
14-18-00314-CVThe University of Texas Medical Branch at Galveston ("UTMB") v. Francis Durisseau, Individually and as Administrator of the Estate of Michael Durisseau, Deceased
14-18-00381-CRKenton Fryer v. The State of Texas
14-18-00387-CRStephen Andrew Linton v. The State of Texas
14-18-00394-CVIn re the Commitment of K.S v.
14-18-00400-CV7 Point Group, LLC and EP Distributors, Inc. v. Green Mountain Energy Company; Reliant Energy Retail Services, LLC; US Retailers, LLC (d/b/a Compassion Energy; Cirro Energy, and Pennywise Power) and Everything Energy LLC
14-18-00420-CVNapoli, Bern, Ripka, Shkolnik & Associates, LLP; Napoli, Bern, Ripka, Shkolnik, LLP and Napoli Shkolnik, PLLC v. Stratos Legal Services, L.P.
14-18-00429-CVYew Yuen Chow, Jeffery Chow, and Keppel Amfels, L.L.C. f/k/a Amfels, Inc. v. Jose M. Rodriguez San Pedro
14-18-00480-CVSanjar Naderi, D.D.S. and Antoine Dental Center, LLC v. Kangasabapathy "Rikki" Ratnarajah
14-18-00568-CREx parte David Williams v.

In an opinion handed down this morning (6/11/2019) the First Court of Appeals in Houston ruled in a case of first impression (i.e., no controlling case law covering the fact scenario) that a Houston photographer's claim of copyright infringement against the University of Houston, which had used his work without permission and without paying a licensing fee, was not actionable as a takings claims under the constitution, which would have entitled the owner to compensation for the government's taking of his property. The appellate court accordingly vacated the trial court's order denying the university's jurisdictional challenge to the viability of the claim, and dismissed the photographer's case. The photographer brought his claim of an unconstitutional taking in state court because he cannot sue the University, a state entity, for copyright infringement in federal court.

The central legal issue concerned the characterization of the intellectual property rights at issue for takings-jurisprudence purposes, and the appropriateness of various analogies in the absence of clearly established and binding precedent applicable to the image at issue in the dispute: a photo of the Houston skyline that the plaintiff--a professional photographer--had taken with special equipment while suspended from a helicopter he had chartered, and had made available for licensing on his website. The University downloaded it without permission, and did not pay anything for using the photo on its own website.

The National Press Photographers Association, the American Society of Mediate Photographers, and four other visual artists groups had jointly filed an amicus curiae brief, in which they protested that the University's position that "a photographer has no remedy when his work is misappropriated by a state actor" as shocking the conscience and averred that it "would devastate the creative industry if adopted by this court."

To no avail.


In this interlocutory appeal from the trial court’s denial of a plea to the
jurisdiction, we must determine if a viable constitutional takings claim can be
asserted when the State commits copyright infringement. We conclude that a
governmental unit’s copyright infringement is not a taking and that the trial court
therefore erred in denying the plea to the jurisdiction.

Background

Jim Olive Photography d/b/a Photolive, Inc. (Olive) sued the University of
Houston System, alleging an unlawful taking and seeking just compensation under
Article I, Section 17 of the Texas Constitution and under the Fifth Amendment of
the United States Constitution. Olive, a professional photographer, alleges that he
took a series of aerial photographs of the City of Houston at dusk in 2005. To take
these photographs, Olive rented a helicopter, hired a pilot, and, utilizing special
photography equipment, suspended himself from the helicopter with a harness.
While suspended in the harness, Olive took photograph SKDT1082—“The
Cityscape”— the subject of this litigation.

Olive registered The Cityscape with the United States Copyright Office on
November 18, 2005 and displayed it for purchase on his website. Olive owned all
rights associated with The Cityscape, and his website had numerous references to
licensing the website’s photographs, including an entire page labeled “Copyrights
and Usage,” which described the applicable copyright protections held in the
photographs and explicitly stated that “[t]he unauthorized use of these images is
strictly prohibited.”

Olive alleges that sometime around June of 2012, the University of Houston
downloaded The Cityscape from Olive’s website, removed all identifying
copyright and attribution material, and displayed it on several webpages to
promote the University’s C.T. Bauer College of Business. The University never
contacted Olive about using his photograph and never compensated him for its use.
Over three years later, Olive discovered that his photograph was being
displayed on the University’s Bauer College of Business webpages. Olive
informed the University of its unauthorized use of the photograph and demanded
that it cease and desist this use. The University immediately removed the
photograph from the College’s website. Olive further alleges that the University’s
display of the photograph without attribution allowed private actors such as Forbes
Magazine to republish and display The Cityscape without Olive’s permission and
without compensation.

Upon being sued by Olive, the University filed a plea to the jurisdiction,
asserting, among other things, that because Olive failed to plead a viable takings
claim, the University retains governmental immunity and the trial court lacks
subject-matter jurisdiction. The trial court denied the plea, and this interlocutory
appeal followed.

The University argues in four issues that the trial court erred in denying its
plea. The University first argues that a copyright is not property under the federal
or state takings clauses. The University then argues that, if a copyright is property
under the federal or state takings clauses, its copyright infringement of Olive’s
photograph is not a taking, that it lacked capacity to take Olive’s copyright
property, and that Olive did not sufficiently plead an intentional taking.

Standard of Review

The standard of review of a trial court’s ruling on a plea to the jurisdiction
based on governmental immunity is de novo. See Tex. Dep’t of Parks & Wildlife v.
Miranda, 133 S.W.3d 217, 225–26 (Tex. 2004); Tex. So. Univ. v. Gilford, 277
S.W.3d 65, 68 (Tex. App.—Houston [1st Dist.] 2009, pet. denied). The plaintiff
has the burden to allege facts that affirmatively demonstrate the trial court’s
subject-matter jurisdiction. Gilford, 277 S.W.3d at 68 (citing Tex. Ass’n of Bus. v.
Tex. Air Control Bd., 852 S.W.2d 440, 446 (Tex. 1993)). We construe the
pleadings liberally and accept the plaintiff’s factual allegations as true. See
Miranda, 133 S.W.3d at 226–27; Gilford, 277 S.W.3d at 68.
An inverse-condemnation action is a constitutional claim in which the
property owner asserts that a governmental entity intentionally performed acts that
resulted in a “taking” of the property for public use, without formally condemning
the property. See, e.g., Tarrant Reg’l Water Dist. v. Gragg, 151 S.W.3d 546, 554
(Tex. 2004). The Texas Constitution’s takings clause (Article I, Section 17)
includes personal property. Renault, Inc. v. City of Houston, 415 S.W.2d 948, 952
5
(Tex. Civ. App.—Waco 1967), rev’d on other grounds, 431 S.W.2d 322 (Tex.
1968). It is well settled that the Texas Constitution waives governmental immunity
for an inverse-condemnation (a takings) claim, but in the absence of a properly
pleaded takings claim, the governmental entity retains immunity. City of Houston
v. Carlson, 451 S.W.3d 828, 830 (Tex. 2014).
Whether the pleaded facts constitute a viable takings claim is a question of
law. See Tex. Parks & Wildlife Dep’t v. Sawyer Trust, 354 S.W.3d 384, 390 (Tex.
2011); Mayhew v. Town of Sunnyvale, 964 S.W.2d 922, 932–33 (Tex. 1998); City
of Friendswood v. Horn, 489 S.W.3d 515, 525 (Tex. App.—Houston [1st Dist.]
2016, no pet.). When the plaintiff cannot establish a viable takings claim, the trial
court lacks subject-matter jurisdiction and should grant a plea to the jurisdiction.
Tex. Dep’t of Transp. v. A.P.I. Pipe & Supply, LLC, 397 S.W.3d 162, 166 (Tex.
2013).
Analysis
Copyright generally
Federal copyright law provides that “[c]opyright protection subsists . . . in
original works of authorship fixed in any tangible medium of expression, now
known or later developed, from which they can be perceived, reproduced, or
otherwise communicated, either directly or with the aid of a machine or device.”
17 U.S.C. § 102(a).
6
Copyright has been defined as:
The right to copy; specifically, a property right in an original work of
authorship (including literary, musical, dramatic, choreographic,
pictorial, graphic, sculptural, and architectural works; motion pictures
and other audiovisual works; and sound recordings) fixed in any
tangible medium of expression, giving the holder the exclusive right
to reproduce, adapt, distribute, perform, and display the work.
Copyright, BLACK’S LAW DICTIONARY (10th ed. 2014); see also 17 U.S.C. § 102(a) (1–8)
(providing categories of works of authorship to include literary works; musical
works, including any accompanying words; dramatic works, including any
accompanying music; pantomimes and choreographic works; pictorial, graphic,
and sculptural works; motion pictures and other audiovisual works; sound
recordings; and architectural works).
A copyright in a work subsists from its creation and generally endures for
the life of the author and 70 years after the author’s death. See 17 U.S.C. § 302(a).
Civil remedies for copyright infringement include injunctive relief. 17 U.S.C.
§ 502(a). A copyright owner can also seek money damages from an infringer:
either (1) his actual damages and any additional profits of the infringer, or
(2) statutory damages, including a sum of not more than $150,000 for willful
infringement.1 See 17 U.S.C. § 504. Federal courts have original and exclusive

1 Olive’s petition seeks monetary relief over $100,000 but not more than $200,000.
The record does not reflect the basis of this claim for damages or whether it is
7
jurisdiction of copyright claims, 28 U.S.C. § 1338(a), and all state-law claims
arising under federal law relating to copyrights are preempted by federal law.
17 U.S.C. § 301(a); see Butler v. Cont’l Airlines, Inc., 31 S.W.3d 642, 648–52
(Tex. App.—Houston [1st Dist.] 2000, pet. denied).
In the case of copyright infringement by a state actor, states have Eleventh
Amendment immunity from a suit for money damages in federal court. See Chavez
v. Arte Publico Press, 204 F.3d 601, 607–08 (5th Cir. 2000) (Chavez III)
(discussed below) (in copyright-infringement action against University of Houston,
holding that Copyright Remedy Clarification Act (CRCA), 17 U.S.C. § 511, which
purported to abrogate Eleventh Amendment immunity and to provide for state
liability for copyright infringement, was unconstitutional); see also Allen v.
Cooper, 895 F.3d 337, 347–54 (4th Cir. 2018) (same), pet. for cert. filed, (U.S. Jan.
4, 2019) (No. 18-877); Nat’l Ass’n of Bds. of Pharmacy v. Bd. of Regents of Univ.
Sys. of Ga., 633 F.3d 1297, 1312–19 (11th Cir. 2011) (same); Richard Anderson
Photography v. Brown, 852 F.2d 114, 120 (4th Cir. 1988) (holding that state

related to the statutory damages of not more than $150,000 for willful
infringement under 17 U.S.C. § 504(c)(2). See generally Thomas F. Cotter, Do
Federal Uses of Intellectual Property Implicate the Fifth Amendment?, 50 FLA. L.
REV. 529, 562–63 (1998) (asserting that, because copyright is “nonrivalrous,”
“[a]ll that the intellectual property owner loses” from the government’s use of a
copyright, “except in those rare circumstances in which government use destroys
virtually all of the property’s value, is some licensing revenue.”). “Nonrivalrous
means that another person can use it without simultaneously depriving anyone else
of its use.” Id. at 563.
8
university had Eleventh Amendment immunity against photographer’s copyrightinfringement action). See generally 3 MELVILLE B. NIMMER & DAVID NIMMER,
NIMMER ON COPYRIGHT § 12.01[E][2] (Rev. Ed. 2019); 6 WILLIAM F. PATRY,
PATRY ON COPYRIGHT § 21.88 (Mar. 2019). But a copyright owner can obtain
prospective injunctive relief for copyright infringement by a state actor under the
Ex parte Young doctrine.2 See, e.g., Nat’l Ass’n of Bds. of Pharmacy, 633 F.3d at
1307–12 (addressing claim for injunctive relief under Ex parte Young doctrine
against state university for ongoing copyright infringement); Hairston v. N.C.
Agric. & Tech. State Univ., No. 1:04 CV 1203, 2005 WL 2136923, at *8
(M.D.N.C. Aug. 5, 2005) (“[T]he court finds that Plaintiff sufficiently alleges an
ongoing violation of federal copyright law by Defendants, and the Ex parte Young
doctrine therefore applies to his copyright infringement claim seeking prospective
injunctive relieffromDefendants.”).
Copyright infringement, whether common law or statutory, is a tort. Porter
v. United States, 473 F.2d 1329, 1337 (5th Cir. 1973); Ted Browne Music Co. v.
Fowler, 290 F. 751, 754 (2d Cir. 1923) (stating courts “have long recognized that
infringement of a copyright is a tort”). Texas has not waived sovereign
(governmental) immunity in the Texas Tort Claims Act for copyright infringement

2 Ex parte Young, 209 U.S. 123 (1908).
9
by a governmental unit. See TEX. CIV. PRAC. & REM. CODE § 101.021(1)
(providing for limited waiver of governmental immunity for claims of property
damage, personal injury, or death proximately caused by wrongful or negligent
conduct of governmental employee arising out of (1) use of publicly owned motordriven equipment or motor vehicle, (2) premises defects, and (3) conditions or uses
of certain property); see also Schneider v. Ne. Hosp. Auth., No. 01-96-01098-CV,
1998 WL 834346, at *2 (Tex. App.—Houston [1st Dist.] 1998, pet. denied) (not
designated for publication) (“It is up to the legislature to add the tort of trademark
infringement to those torts for which immunity is statutorily waived.”). Nor has
Texas waived its Eleventh Amendment immunity by consenting to suit in federal
court for copyright infringement. See generally Seminole Tribe of Fla. v. Florida,
517 U.S. 44, 54–55, 67–72 & n.14 (1996)
Intellectual Property and Takings
In apparent recognition of the above legal landscape that forecloses a
copyright owner’s claim for copyright infringement against a state actor, Olive has
asserted his constitutional takings claims against the University. The Texas
Constitution’s Takings Clause provides: “No person’s property shall be taken,
damaged, or destroyed for or applied to public use without adequate compensation
10
being made.” TEX. CONST. art. I, § 17(a).3
The federal takings clause protects both real property and personal property.
Horne v. Dep’t of Agric., 135 S.Ct. 2419, 2425–26 (2015) (holding that raisins
were subject of government taking: “The Government has a categorical duty to pay
just compensation when it takes your car, just as when it takes your home.”). A
copyright, which is intellectual property,4
is a protected property interest.
5 Nat’l
Ass’n of Bds. of Pharmacy, 633 F.3d at 1317; see also 17 U.S.C. § 201(d) (“The

3 The Fifth Amendment prohibits the taking of “private property [] for public use,
without just compensation.” U.S. CONST. AMEND. V. Texas courts look to federal
takings jurisprudence for guidance. Sheffield Dev. Co. v. City of Glenn Heights,
140 S.W.3d 660, 669 (Tex. 2004). The protections of the Texas Constitution’s
Takings Clause are presumed to be coextensive with the federal protections,
absent a showing that the Texas provision was intended to apply more broadly.
See Mayhew, 964 S.W.2d at 932.
4
Intellectual property is a “category of intangible rights protecting commercially
valuable products of the human intellect,” and the “category comprises primarily
trademark, copyright, and patent rights, but also includes trade-secret rights,
publicity rights, moral rights, and rights against unfair competition.” Intellectual
property, BLACK’S LAW DICTIONARY (10th ed. 2014).
5 Other types of intellectual property—patents, trademarks, and trade secrets—are
recognized as “property” or a protected “property interest” for due-process
purposes. See Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Savs. Bank,
527 U.S. 627, 642 (1999) (“Patents, however, have long been considered a species
of property.”); Coll. Savs. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd.,
527 U.S. 666, 673 (1999) (“trademarks” are a “constitutionally cognizable
property interest[]” and “are the ‘property’ of the owner because he can exclude
others from using them”); Ruckelshaus v. Monsanto Co., 467 U.S. 986, 1002
(1984) (holding that trade secrets are property under applicable state law and
subject to federal takings clause); see also Schneider, 1998 WL 834346, at *2
(“Clearly, a trademark is property.”).
11
ownership of a copyright may be transferred in whole or in part by any means of
conveyance or by operation of law, and may be bequeathed by will or pass as
personal property by the applicable laws of intestate succession.”). See generally
Pascale Chapdelaine, The Property Attributes of Copyright, 10 BUFF. INTELL.
PROP. L.J. 34 (2014). But while a copyright is “property” or a protected “property
interest” for due-process purposes, that does not necessarily mean that it is
property for purposes of the takings clause. See, e.g., Davida H. Isaacs, Not All
Property Is Created Equal: Why Modern Courts Resist Applying the Takings
Clause to Patents, and Why They Are Right to Do So, 15 GEO. MASON L. REV. 1,
36 (2007) (“Being property is a necessary requirement for Takings Clause
protection, but it is not a sufficient one.”).
In 2008, it was noted that whether copyright is property under the takings
clause is “as yet unlitigated.”6 Tom W. Bell, Copyright as Intellectual Property

6 The Fifth Circuit has also pointed out this dearth of authority:
Copyrights are indeed a species of property, but the extent to which
they are protectable against the states raises troubling issues. In
Seminole, the Supreme Court noted the absence of caselaw
authority over the past 200 years dealing with enforcement of
copyrights in federal courts against the states. Surely this dearth
implies that there has been no claim against states in the federal
courts.
Chavez v. Arte Publico Press, 157 F.3d 282, 288 (5th Cir.) (Chavez II) (citing
Seminole Tribe, 517 U.S. at 71 & n.16), reh’g en banc granted and opinion
12
Privilege, 58 SYRACUSE L. REV. 523, 538 (2008). But see Porter, 473 F.2d at 1337
(copyright “infringement is not a ‘taking’ as the term is constitutionally
understood”) (discussed below). Relying on Zoltek Corp. v. United States, 442
F.3d 1345, 1350–53 (Fed. Cir. 2006) (holding that patent infringement by federal
government does not constitute taking under Fifth Amendment), cert. denied, 551
U.S. 1113 (2007), vacated on other grounds on reh’g en banc, 672 F.3d 1309 (Fed.
Cir. 2012), and the Supreme Court’s denial of certiorari in Zoltek, the author
asserts that Zoltek “strongly suggests that the same outcome would obtain for
copyrights.” Bell, 58 SYRACUSE L. REV. at 538; see also Isaacs,15 GEO. MASON. L.
REV. at 1–2, 6–17 (discussing Zoltek). But see Note, Copyright Reform and the
Takings Clause, 128 HARV. L. REV. 973 (2015) (arguing that copyright should be
protected by takings clause).
7 The author further argues that the Supreme Court’s

vacated, 178 F.3d 281 (5th Cir. 1998), remanded to panel for reconsideration, 180
F.3d 674 (5th Cir. 1999), panel op. on reconsideration, Chavez III, 204 F.3d 601.
7 This Note collects, in addition to Cotter and Isaacs, other scholars’ articles on the
subject of intellectual property and takings. Note, 128 HARV. L. REV. at 974
nn.12-13 (citing Christina Bohannon, Reclaiming Copyright, 23 CARDOZO ARTS
& ENT. L.J. 567 (2006); Shubha Ghosh, Toward a Theory of Regulatory Takings
for Intellectual Property: The Path Left Open After College Savings v. Florida
Prepaid, 37 SAN DIEGO L. REV. 637 (2000); Roberta Rosenthal Kwall,
Governmental Use of Copyrighted Property: The Sovereign’s Prerogative, 67
TEX. L. REV. 685, 755 (1989); Adam Mossoff, Patents as Constitutional Private
Property: The Historical Protection of Patents Under the Takings Clause, 87 B.U.
L. REV. 689 (2007); and John C. O’Quinn, Protecting Private Intellectual
13
“definition of ‘property’ appears not to shelter copyright” because of its description
of the sources of property interests protected from takings
8
and “copyrights exist
only by the grace of the Constitution.”
9
Id.
No Texas case appears to have addressed whether a copyright is property for
purposes of the takings clause and whether copyright infringement by a state actor
is a taking. The case closest on point is our unpublished 1998 decision in
Schneider, 1998 WL 834346. There, after recognizing that a trademark is property,
this court squarely held that a governmental entity’s (a hospital authority’s)
“trademark infringement is not a compensable taking; thus, sovereign immunity is
not waived on the basis of an unconstitutional taking.”10 Id. at *2. After noting that
no authority classified trademarks as property for purposes of the takings clause,

Property from Government Intrusion: Revisiting SmithKline and the Case for Just
Compensation, 29 PEPP. L. REV. 435 (2002)).
8
“[P]roperty interests . . . are not created by the Constitution. Rather, they are
created and their dimensions are defined by existing rules or understandings that
stem from an independent source such as state law.” Ruckelshaus, 467 U.S. at
1001 (quoting Webb’s Fabulous Pharmacies, Inc. v. Beckwith, 449 U.S. 156, 161
(1980)) (quoting Bd. of Regents v. Roth, 408 U.S. 564, 577 (1972)).
9 U.S. CONST. art. 1, § 8, cl. 8 (“The Congress shall have Power . . . To promote the
Progress of Science and useful Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective Writings and Discoveries”).
10 A “trademark” is a “word, phrase, logo, or other sensory symbol used by a
manufacturer or seller to distinguish its products or services from those of others.”
Trademark, BLACK’S LAW DICTIONARY (10th ed. 2014).
14
this court stated that, to the contrary, “there is authority that refutes such a
classification” and cited Porter for the proposition that copyright infringement is
not a taking.11 Id. at *2 (citing Porter, 473 F.2d at 1337). We therefore turn to
Porter and the other federal cases relied on by the parties for their respective
positions.
Porter v. United States
Porter involved in part a claim by Lee Harvey Oswald’s widow for the
diminution in the copyright value of Oswald’s writings because of their publication
in the Warren Commission report. Porter, 473 F.2d at 1336.
We turn finally to the question whether Mrs. Porter can recover for
the diminution in value of Oswald’s writings attributable to their
publication in the Warren Commission Report. It is, of course, quite
plain that the recovery sought here is for infringement by the
government of Mrs. Porter’s common law copyright interest in
Oswald’s writings. Such infringement is not a “taking” as the term is
constitutionally understood. Rather, it has always been held that
infringement of copyright, whether common law, Twentieth Century
Fox Film Corp. v. Dieckhaus, 153 F.2d 893 (CA 8, 1948), or
statutory, Turton v. United States, 212 F.2d 354 (CA 6, 1954)
constitutes a tort.

11 This court also cited Garcia v. Peeples, 734 S.W.2d 343 (Tex. 1987) (orig.
proceeding) as supporting authority. Schneider, 1998 WL 834346, at *2. In
Garcia, a product-liability suit, our supreme court rejected an automaker’s claim
that a plaintiff’s shared discovery of the automaker’s trade secrets (which the court
recognized as property) with only similarly situated litigants under a properly
tailored protective order would be “an unconstitutional deprivation of property”
that “rises to the level of a constitutional taking.” Garcia, 734 S.W.2d at 348 n.4.
15
Id. at 1337 (emphasis added). But see Roth v. Pritikin, 710 F.2d 934, 939 (1st Cir.
1983) (“An interest in a copyright is a property right protected by the due process
and just compensation clauses of the Constitution.”).
Olive characterizes Porter as anomalous12 and as superseded by both the
Supreme Court in Horne and the Fifth Circuit in Chavez. Because Horne involved
the taking of raisins—which are tangible personal property, not intangible
intellectual property—it is inapposite; further, it made no attempt to address
intellectual property.
As noted above, Chavez, in part a copyright-infringement action against the
University of Houston, held that Congress, by enacting the CRCA, could not
subject states to suit in federal court for copyright infringement because of
Eleventh Amendment immunity. Chavez III, 204 F.3d at 607–08. In passing on the
constitutionality of the CRCA—Chavez was not a takings case—the court
addressed copyright as property for due-process purposes and considered whether
Congress could abrogate state Eleventh Amendment immunity under section 5 of
the Fourteenth Amendment “to prevent states from depriving copyright holders of
their property without due process of law.” Id. at 604; see id. at 605–07. In its
analysis, the court stated that the “underlying conduct at issue here is state

12 We disagree that Porter is an anomaly, but because of its subject matter, it is
undoubtedly sui generis.
16
infringement of copyrights, rather than patents, and the ‘constitutional injury’
consists of possibly unremedied, or uncompensated, violation of copyrights by
states.” Id. at 605. The court then noted:
In Chavez II, we said that whether copyrights were a form of property
protectable against the states raised troubling issues. The Supreme
Court held in Florida Prepaid that patents are considered property
within the meaning of the due process clause. See Florida Prepaid,
119 S.Ct. at 2208. Since patent and copyright are of a similar nature,
and patent is a form of property protectable against the states,
copyright would seem to be so too.
Id. at 605 & n.6.
We do not view Chavez III as superseding Porter; instead, these comments
concerned due-process protection of property from deprivation, rather than from a
taking, as did the Supreme Court’s due-process description of patents as property
in Florida Prepaid. See Fla. Prepaid, 527 U.S. at 642 (“patents may be considered
‘property’ for purposes of our analysis”); see also Carlos Manuel Vazquez, What is
Eleventh Amendment Immunity?, 106 Yale L.J. 1683, 1745 n.281 (1997) (“the
Court has interpreted the term “property” in the Takings Clause more narrowly
than the same term in the Due Process Clause”).
Chavez II touches on copyright as property for takings purposes, citing and
discussing Roth (which we address below). Chavez II, 157 F.3d at 288. In dicta,
and after distinguishing Roth because it was not a copyright-infringement action
17
against a state and after highlighting Roth’s statement as dicta,
13 Chavez II noted—
“[o]nly slightly more apropos of [Roth’s] discussion”—that the Supreme Court
held that trade secrets are property protected by the Fifth Amendment takings
clause in Ruckleshaus v. Monsanto Co. and that, “[b]y analogy, copyrights
constitute intangible property that, for some purposes at least, receives
constitutional protection.” Chavez II, 157 F.3d at 288 (citing Ruckelshaus v.
Monsanto Co., 467 U.S. 986, 1002 (1984) (holding that trade secrets are property
under applicable state law and subject to federal takings clause). Chavez II thus
stops short of stating that copyright is property protected by the takings clause and
does not purport to supersede Porter’s contrary statement.
Roth v. Pritikin
Roth is Olive’s principal authority for his contention that copyright is
property protected by the takings clause, but on close examination, we find Roth’s
statement to be both unsupported and dicta. Moreover, Roth did not involve a
copyright-infringement claim against a state; it involved a dispute over Roth’s
recipes that were used in a bestselling diet book. The 1977 oral contract to use
Roth’s recipes provided for only a flat fee to Roth as a “writer for hire,” with her
having no interest in the book’s copyright and royalties, as found by the district

13 See Chavez II, 157 F.3d at 288 (“In Roth, the Second Circuit was speculating on
the entirely different issue of. . . .”).
18
court. Roth, 710 F.2d at 936. Roth argued that if an oral contract for payment for
her recipes had been made in 1977, it was invalidated by the subsequent enactment
of the Copyright Act of 1978, which she contended applied retroactively and which
required a work-for-hire agreement with no ownership interest in a copyright to be
expressly agreed to in a signed and written agreement.
14 Id. at 938. The parties and
the Second Circuit agreed that if the oral contract was governed by the law in
effect in 1977, it properly divested Roth of any rights to a share of the book’s
royalties that she might otherwise have possessed. Id. at 937 & n.3.
After affirming the district court’s finding of an enforceable oral contract,
the Second Circuit rejected Roth’s contention that the Copyright Act of 1978
applied retroactively. Id. at 938–39. The court then ventured into admitted dicta,15

14 See 17 U.S.C. § 201(b) (“In the case of a work made for hire, the employer or
other person for whom the work was prepared is considered the author for
purposes of this title, and, unless the parties have expressly agreed otherwise in a
written instrument signed by them, owns all of the rights comprised in the
copyright.”); 17 U.S.C. § 101 (defining “work made for hire” in part as “a work
specially ordered or commissioned for use as a contribution to a collective work,
. . . if the parties expressly agree in a written instrument signed by them that the
work shall be considered a work made for hire”).
15 Dictum is “[a]n opinion expressed by a court, but which, not being necessarily
involved in the case, lacks the force of an adjudication. . . .” Seger v. Yorkshire
Ins. Co., 503 S.W.3d 388, 399 (Tex. 2016) (quoting Grigsby v. Reib, 153 S.W.
1124, 1126 (Tex. 1913)). “Obiter dictum [literally, “something said in passing”.
Obiter dictum, BLACK’S LAW DICTIONARY (10th ed. 2014).] is not binding as
precedent.” Seger, 503 S.W.3d at 399. Judicial dictum is “a statement made
deliberately after careful consideration and for future guidance in the conduct of
19
stating that “the language of the Act, its legislative history and rules of statutory
interpretation are sufficient answers to Roth’s [retroactivity] claim,” but then
noting “en passant,”
16 that
adoption of her interpretation . . .. would, in addition, raise a serious
issue concerning the Act’s constitutionality. See 1 Nimmer on
Copyright, supra, at § 1.11. An interest in a copyright is a property
right protected by the due process and just compensation clauses of
the Constitution. See Loretto v. Teleprompter Manhattan CATV Corp.,
458 U.S. 419, 102 S.Ct. 3194, 73 L.Ed.2d (1982); Pruneyard
Shopping Center v. Robins, 447 U.S. 74, 82 n.6, 100 S.Ct. 2035, 2041
n.6, 64 L.Ed.2d 741 (1980). The agreement between Roth and the
appellees, pursuant to which Roth surrendered any rights she might
otherwise have obtained in the copyright, was valid when it was
entered into, and a subsequently enacted statute which purported to
divest Pritikin and McGrady of their interest in the copyright by
invalidating the 1977 agreement could be viewed as an
unconstitutional taking. See, e.g., Pennsylvania Coal Co. v. Mahon,
260 U.S. 393, 43 S.Ct. 158, 67 L.Ed. 322 (1922); Penn Central
Transportation Co. v. New York City, 438 U.S. 104, 98 S.Ct. 2646, 57
L.Ed.2d 631 (1922); see also Michelman, Property, Utility, And
Fairness: Comments On The Ethical Foundations of “Just

litigation,” and “[i]t is at least persuasive and should be followed unless found to
be erroneous.” Id. (citations omitted).
16 Literally, “in passing.” En passant, WEBSTER’S NEW COLLEGIATE DICTIONARY
(1981). In Chavez II, the Fifth Circuit pointed out Roth’s dicta, noting that “the
Second Circuit was speculating on the entirely different issue of Congress’s
inability to retroactively invalidate by statute certain pre-existing copyright
contracts between private parties.” Chavez II, 157 F.3d at 288 (emphasis added).
Also, we disagree with Chavez II’s likely inadvertent characterization of Roth’s
copyright-takings statement as a holding because Roth’s statement is obiter
dictum. See Chavez II, 157 F.3d at 288 (“one court of appeals has held that an
interest in a copyright is protected by the Due Process and Just Compensation
Clauses of the Constitution”) (emphasis added) (citing Roth, 710 F.2d at 939).
20
Compensation” Law, 80 HARV. L. REV. 1165 (1967). Resolution of
this issue is not required for our holding, and will have to wait for an
appropriate case.
17
Id. at 939 (emphases added).
As support for its statement that copyright is a property right protected by
the just compensation clause, Roth cited two Supreme Court cases, neither of
which involved intellectual property and copyright in particular and therefore do
not support Roth’s proposition. See id. (citing Loretto and PruneYard). Loretto
held that a New York law requiring a landlord to permit a cable television
company to install its cable facilities on his property—a permanent physical
occupation—was a “taking.” Loretto, 458 U.S. at 421, 441.
PruneYard upheld a state constitutional requirement that shopping center
owners permit individuals to exercise free speech and petition rights on their
property, rejecting the owner’s contention that it amounted to an unconstitutional
infringement of property rights under the Fifth Amendment’s Takings Clause.
PruneYard, 447 U.S. at 82–84. Because “one of the essential sticks in the bundle
of property rights is the right to exclude others,” the Court stated that there has
literally been a “taking” of that right to the extent that the California Supreme
Court has interpreted its state constitution to entitle its citizens to exercise free-

17 Neither Pennsylvania Coal nor Penn Central concern intellectual property and
takings.
21
expression and petition rights on shopping center property. Id. at 82. Roth cited
footnote six in PruneYard, which discusses “property” as used in the Takings
Clause to denote “the group of rights inhering in the citizen’s relation to the
physical thing, as the right to possess, use and dispose of it. . . . The constitutional
provision is addressed to every sort of interest the citizen may possess.” Id. at 82
n.6 (quoting United States v. Gen. Motors Corp., 323 U.S. 373, 377–78 (1945)).18
This weighty quotation also appears in Ruckelshaus, with the Court ascribing it to
intangible property rights, 467 U.S. at 1003, but it does not suffice to compel
takings protection to copyright. See, e.g., PruneYard, 447 U.S. at 82 (“not every
destruction or injury to property by governmental action has been held to be a
‘taking’ in the constitutional sense”) (quoting Armstrong v. United States, 364 U.S.
40, 48 (1960)).
Zoltek v. United States
As mentioned, in Zoltek, the Federal Circuit19 held that a patent holder could
not allege patent infringement as a Fifth Amendment taking against the federal

18 Like PruneYard, General Motors did not involve intellectual property. It
concerned the Government’s temporary condemnation of a warehouse held under
a long-term lease during World War II. See Gen. Motors, 323 U.S. at 375.
19 The Federal Circuit is a specialized appellate court that has exclusive nationwide
jurisdiction of patent appeals and also takes appeals from the United States Court
of Federal Claims. See 28 U.S.C. §§ 1292(c), 1295(a)(1), (3).
22
government under the Tucker Act.
20 Zoltek, 442 F.3d at 1350–53. The Federal
Circuit relied on Schillinger v. United States, 155 U.S. 163 (1894), in which the
Supreme Court rejected an argument that a patent holder could sue the government
for patent infringement as a Fifth Amendment taking. Zoltek, 442 F.3d at 1350
(citing Schillinger, 155 U.S. at 169); see id. at 1351–52 (explaining that Congress
enacted the Tucker Act in response to Schillinger).
Zoltek, a post-Ruckelshaus decision, stated unequivocally: “Schillinger
remains the law.” Id. at 1350. The court noted that in Ruckelshaus (discussed
below), the Supreme Court concluded that government interference with interests
“cognizable as trade-secret property right[s]” could constitute a taking depending
on the circumstances, but that Ruckelshaus did not overrule Schillinger and that
Schillinger must be followed until it is overruled by the Supreme Court. Zoltek,
442 F.3d at 1352 & n.3 (citing and quoting Ruckelshaus, 467 U.S. at 1003–04).
The Federal Circuit vacated its original decision on other grounds years later, see
Zoltek Corp. v. United States, 672 F.3d 1309, 1322, 1327 (Fed. Cir. 2012), but its

20 28 U.S.C. § 1491(a)(1) (providing limited waiver of sovereign immunity by the
United States for certain claims in Court of Federal Claims), § 1498 (providing
statutory remedy in Court of Federal Claims for federal government’s unlicensed
use of patent or copyright). “Generally, compensation for a taking may be
obtained under the Tucker Act, which confers jurisdiction on the United States
Court of Claims.” Gordon v. Norton, 322 F.3d 1213, 1216 (10th Cir. 2003) (citing
Preseault v. Interstate Commerce Comm’n, 494 U.S. 1, 11–12 (1990)).
23
original decision remains persuasive and has been subsequently cited with
approval and applied by the Federal Circuit. See Gal-Or v. United States, 470
F. App’x 879, 881–83, 2012 WL 882670, at *1–3 (Fed. Cir. Feb. 9, 2012) (holding
Court of Federal Claims correctly concluded that patent-infringement claim against
federal government was not cognizable Fifth Amendment takings claim) (citing
Zoltek, 442 F.3d at 1352–53); see also Bell, 58 SYRACUSE L. REV. at 538 (noting
that Supreme Court’s denial of certiorari in Zoltek “strongly suggests that the same
outcome would obtain for copyrights”).
Zoltek also provides a segue to Olive’s reliance on James v. Campbell, 104
U.S. 356 (1881), which he contends is Supreme Court precedent for his copyrighttakings claim because it purports to protect patents from a government taking
without just compensation. Olive points out that Horne, the raisin-takings case,
states:
Nothing in this [Takings Clause] history suggests that personal
property was any less protected against physical appropriation than
real property. As this Court summed up in James v. Campbell, 104
U.S. 356, 358, 26 L.Ed. 786 (188[1]), a case concerning the alleged
appropriation of a patent by the Government:
“[A patent] confers upon the patentee an exclusive property in
the patented invention which cannot be appropriated or used by
the government itself, without just compensation, any more
than it can appropriate or use without compensation land which
has been patented to a private purchaser.”
24
Horne, 135 S.Ct. at 2427. Olive further notes that subsequent Supreme Court cases
have repeated the point in James: Hollister v. Benedict & Burnham Mfg. Co., 113
U.S. 59, 67 (1885); Wm. Cramp & Sons Ship & Engine Bldg. Co. v. Int’l Curtis
Marine Turbine Co., 246 U.S. 28, 39–40 (1918); and Hartford-Empire Co. v.
United States, 323 U.S. 386, 415 (1945). But we agree with the University that the
Supreme Court has never definitively held that a patent holder’s recourse against
the government for infringement is a constitutional takings claim.21 Zoltek noted as
much, for it addressed James in addition to applying Schillinger to conclude that a
patent-infringement claim against the federal government is not a cognizable Fifth
Amendment takings claim:
2As the Supreme Court recognized at least as long ago as 1881, the
patentee’s recourse for infringement by the government is limited by

21 The University asserts that Horne’s quotation from James is dicta, as Horne
involved raisins, not patents, and that Horne makes no pretense of deciding any
intellectual-property issue. See Horne, 135 S.Ct. at 2427. The University argues
persuasively that, had the Court in Horne fully considered the issue, it would have
realized that James’s dicta must be discounted because it came from a time when
the federal takings clause was not understood to be self-executing and therefore
routinely conflated a takings analysis with an implied contract with the
government to pay the value of the property. See, e.g., United States v. N. Am.
Transp. & Trading Co., 253 U.S. 330, 335 (1920) (“The right to bring this suit
against the United States in the Court of Claims is not founded upon the Fifth
Amendment, but upon the existence of an implied contract entered into by the
United States; and the contract which is implied is to pay the value of property as
of the date of the taking.”) (citations omitted)); see also James, 104 U.S. at 358–59
(noting that Court of Claims had been entertaining jurisdiction of claims for
unauthorized use of patented inventions “upon the footing of an implied
contract”).
25
the scope of the waiver of sovereign immunity established by the
Congressional consent to be sued. “If the jurisdiction of the Court of
Claims should not be finally sustained [to hear an infringement action
against the government], the only remedy against the United States,
unless Congress enlarges the jurisdiction of that court, would be to
apply to Congress itself.” James v. Campbell, 104 U.S. 356, 359, 26
L.Ed. 786 (1881).
. . . .
In response to Schillinger, Congress provided a specific sovereign
immunity waiver for a patentee to recover for infringement by the
government. Had Congress intended to clarify the dimensions of the
patent rights as property interests under the Fifth Amendment, there
would have been no need for the new and limited sovereign immunity
waiver. The manner in which Congress responded to Schillinger is
significant.
. . . .
In sum, the trial court erred in finding that Zoltek could allege patent
infringement as a Fifth Amendment taking under the Tucker Act, and
we reverse.
Zoltek, 442 F.3d at 1349 & n.2, 1352–53; see id. at 1349–50 (“A patentee’s judicial
recourse against the federal government, or its contractors, for patent infringement,
is set forth and limited by the terms of 28 U.S.C. § 1498.”).
The University correctly asserts that the above quote from James is dicta—at
least as to the existence of a viable Fifth Amendment takings claim—and that the
subsequent cases introduced new dicta by parroting James’s dicta. James’s dicta
about patents as property under the federal takings clause is divorced from its
holding that the government was not liable for infringement because there was no
26
valid patent. See James, 104 U.S. at 383. Hollister cited this dicta from James in an
opinion that also found no valid patent and that specifically declined to dispose of
the case on takings grounds.22 Hollister, 113 U.S. at 67, 71–73. In Zoltek, the
Federal Circuit noted that the Supreme Court in Wm. Cramp acknowleged that the
Tucker Act was the sole remedy for the government’s patent infringement. Zoltek,
442 F.3d at 1351 (stating that the 1910 [Tucker] Act “was intended alone to
provide for the discrepancy resulting from the right in one case to sue on the
implied contract and the non-existence of a right to sue” for infringement) (quoting
Wm. Cramp, 246 U.S. at 41). Zoltek further noted that in Wm. Cramp and Crozier
v. Fried. Krupp Aktiengesellschaft, 224 U.S. 290, 304 (1912), the Supreme Court
“acknowledged Congressional recognition that the Court of Claims lacked Tucker
Act jurisdiction over infringement under a takings theory.” Zoltek, 442 F.3d at
1351 (“Moreover, discussing the state of the law before the 1910 [Tucker] Act, the
Crozier court expressly noted that no patent infringement action could be brought

22 Hartford-Empire likewise quoted James in dicta because it did not concern the
Fifth Amendment and held only that Congress had chosen not to make forfeitable
patents that were involved in an antitrust violation. Hartford-Empire, 323 U.S. at
413–16. Olive also contends that the Supreme Court has held that trademark is
protected by the federal takings clause, but that contention not only also relies on
dicta but is incorrect. See K Mart Corp. v. Cartier, Inc., 485 U.S. 176, 185–86
(1988) (stating that trademarks provide trademark owner with certain bundle of
rights in context of decision not involving Fifth or Fourteenth Amendments); Coll.
Savs. Bank, 527 U.S. at 673 (quoting Cartier dicta to note that trademark may
constitute property for purposes of due-process clause).
27
against the government unless in the Court of Claims under a contract or implied
contract theory.”) (citing Crozier, 224 U.S. at 304).
In conclusion, and as partially explained by the Federal Circuit in Zoltek, the
litany of Supreme Court decisions relied on by Olive did not recognize a
constitutional takings claim for patent infringement. See Zoltek, 442 F.3d at 1350–
53 & nn.2-3.
Ruckelshaus v. Monsanto Co.
Ruckelshaus, which held that trade secrets23 are property under applicable
state law and can be subject to the federal takings clause, is the only Supreme
Court decision that has afforded takings protection to a form of intellectual
property. See Ruckelshaus, 467 U.S. at 1002. At issue were EPA regulations
requiring applicants for pesticide registration to disclose the applicant’s health,
safety, and environmental data that were trade-secret property rights under state
law, with the disclosure potentially becoming available to the applicant’s
competitors. Id. at 992–98, 1001. The principal basis for this decision was the

23 A trade secret is defined as “any formula, pattern, device or compilation of
information which is used in one’s business, and which gives him an opportunity
to obtain an advantage over competitors who do not know or use it.” Ruckelshaus,
467 U.S. at 1001 (quoting RESTATEMENT (FIRST) OF TORTS § 757 cmt. b (AM.
LAW INST. 1939)).
28
economic impact on the trade-secret owner and the impact’s effect on the owner’s
investment-backed expectations. See id. at 1005, 1011–12.
Because of the intangible nature of a trade secret, the extent of
the property right therein is defined by the extent to which the owner
of the secret protects his interest from disclosure to others.
. . . .
With respect to a trade secret, the right to exclude others is central to
the very definition of the property interest. Once the data that
constitute a trade secret are disclosed to others, or others are allowed
to use those data, the holder of the trade secret has lost his property
interest in the data.[15]
[15] We emphasize that the value of a trade secret lies in the
competitive advantage it gives its owner over competitors. Thus, it is
the fact that operation of the data-consideration or data-disclosure
provisions will allow a competitor to register more easily its product
or to use the disclosed data to improve its own technology that may
constitute a taking.
. . . .
The economic value of that property right lies in the competitive
advantage over others that Monsanto enjoys by virtue of its exclusive
access to the data, and disclosure or use by others of the data would
destroy that competitive edge.
Id. at 1002, 1011–12 & n.15.
* * *
It is not in dispute that a copyright is property with value to its owner. As we
stated, federal law protects this property interest by providing a statutory
29
infringement cause of action and the recovery of substantial damages. See 17
U.S.C. §§ 501(a), 504.
Copyright protection “subsists . . . in original works of authorship
fixed in any tangible medium of expression.” 17 U.S.C. § 102(a). This
protection has never accorded the copyright owner complete control
over all possible uses of his work. Rather, the Copyright Act grants
the copyright holder “exclusive” rights to use and to authorize the use
of his work in five qualified ways, including reproduction of the
copyrighted work in copies. Id., § 106. All reproductions of the work,
however, are not within the exclusive domain of the copyright owner;
some are in the public domain. Any individual may reproduce a
copyrighted work for a “fair use;” the copyright owner does not
possess the exclusive right to such a use. Compare id., § 106 with id.,
§ 107.[24]
“Anyone who violates any of the exclusive rights of the
copyright owner,” that is, anyone who trespasses into his exclusive
domain by using or authorizing the use of the copyrighted work in one
of the five ways set forth in the statute, “is an infringer of the
copyright.” Id., § 501(a).
Sony Corp. of Am. v. Universal City Studios, Inc., 464 U.S. 417, 432–33 (1984).
(footnotes omitted).

24 Under current law, the Copyright Act defines fair use as follows:
the fair use of a copyrighted work, including such use by
reproduction in copies or phonorecords or by any other means
specified by that section, for purposes such as criticism, comment,
news reporting, teaching (including multiple copies for classroom
use), scholarship, or research, is not an infringement of copyright.
17 U.S.C. § 107.
30
Olive does not allege that the University took his copyright interest; the only
reasonable construction of Olive’s claim is that the University committed
infringement. See id. Because copyright is nonrivalrous,25 Olive never lost his right
to use or license his photograph; the University’s infringement cost Olive a
licensing fee. See Cotter, 50 FLA. L. REV. at 562–63; see also Note, 128 HARV. L.
REV. at 985 n.109 (“As Professor Thomas Cotter has insightfully pointed out, the
consequences of government use are very different for intellectual property
because of its nonrivalrous nature: although the government’s use of physical
property excludes the owner, government copyright infringement costs the owner
no more than a licensing fee.”) (citing Cotter, 50 FLA. L. REV. at 562–63.). In these
respects, copyright is distinguishable from a trade secret, which, if disclosed to
others, results in a loss of the property interest and the economic value of the
competitive advantage inherent in the trade secret. See Ruckelshaus, 467 U.S. at
1010.
Copyright infringement as alleged by Olive is “akin to a transitory common
law trespass—a government interference with real property that may not amount to

25 See n.1 supra.
31
a taking at all.”26 Note, 128 HARV. L. REV. at 985 n.109; see id. at 977 n.41 (“[N]ot
every physical invasion amounts to a taking: a merely transitory invasion, akin to a
common law trespass, may not amount to a taking at all.”) (citing Hendler v.
United States, 952 F.2d 1364, 1377 (Fed. Cir. 1991)); see Sony, 464 U.S. at 433
(“anyone who trespasses into his exclusive domain by using or authorizing the use
of the copyrighted work in one of the five ways set forth in the statute, “ ‘is an
infringer of the copyright’ ”); see also Dowling v. United States, 473 U.S. 207, 217
(1985) (“The infringer invades a statutorily defined province guaranteed to the
copyright holder alone. But he does not assume physical control over the
copyright; nor does he wholly deprive its owner of its use.”).
Suppose, for example, that ten copies of a government manual take
from a textbook an excerpt that is just too long to be a fair use. The
act is an infringement but seems hardly more serious than a
“truckdriver parking on someone’s vacant land to eat lunch.” Hendler
v. United States, 952 F.2d 1364, 1377 (Fed. Cir. 1991).
Even if the government sets itself up as a competitor by producing a
copyrighted work, there probably is not good reason to conclude

26 Similarly, property rights, including copyright, have been described as ownership
of a bundle of rights or interests. See Harper & Row, Publishers, Inc. v. Nation
Enters., 471 U.S. 539, 546 (1985) (“Section 106 of the Copyright Act confers a
bundle of exclusive rights to the owner of the copyright.”); see also Ruckelshaus,
467 U.S. at 1011; Note, 128 HARV. L. REV. at 980; Chapdelaine, 10 BUFF. INTELL.
PROP. L.J. at 51–61. “But the denial of one traditional property right does not
always amount to a taking. At least where an owner possesses a full ‘bundle’ of
property rights, the destruction of one ‘strand’ of the bundle is not a taking,
because the aggregate must be viewed in its entirety.” Andrus v. Allard, 444 U.S.
51, 65–66 (1979).
32
automatically that the copyright has been “taken.” The copyright
holder can still exclude all private competitors even as the government
pirates the entirety of his work.
Note, 128 HARV. L. REV. at 985 n.109 (citing Cotter, 50 FLA. L. REV. at 562–63.);
cf. Vazquez, 106 Yale L.J. at 1745 n.281 (“the Court’s takings cases would appear
to require the conclusion that a state’s infringement of a patent is not a ‘taking,’ as
it does not ‘virtually destroy’ the property’s value”) (citing LAURENCE H. TRIBE,
AMERICAN CONSTITUTIONAL LAW § 9-3, at 593 (2d ed. 1988)).
To summarize, legal scholars are divided on whether copyright should be
protected from government takings, and legal authority is scant. This court’s
unpublished opinion in Schneider held that trademark infringement is not a taking.
Schneider, 1998 WL 834346, at *2. In the unique Porter case, the Fifth Circuit
stated that infringement of a common law copyright was not a taking. Porter, 473
F.2d at 1337. In Ruckelshaus, the Supreme Court held that trade secrets can be
subject to the federal takings clause. Ruckelshaus, 467 U.S. at 1002. But in the
Federal Circuit’s vacated, post-Ruckelshaus Zoltek decision on which the Supreme
Court denied certiorari, it held that patent infringement by the federal government
does not constitute a taking. Zoltek, 442 F.3d at 1350–53. Patents and trademarks,
as species of intellectual property, are more similar to copyrights than trade secrets.
Based on this authority, we hold that the Olive’s takings claim, which is
based on a single act of copyright infringement by the University, is not viable. We
33
sustain in part the University’s first and second issues, and we conclude that the
trial court erred in denying the University’s plea to the jurisdiction. This opinion
should not be construed as an endorsement of the University’s alleged copyright
infringement,27 and as discussed, copyright owners can seek injunctive relief
against a state actor for ongoing and prospective infringement. Instead, in the
absence of authority that copyright infringement by a state actor presents a viable
takings claim, and based on the contrary persuasive authority cited above, we
decline to so hold.
Conclusion
Because Olive has not pleaded a viable takings claim, the trial court should
have granted the University’s plea to the jurisdiction and dismissed Olive’s takings
claims for lack of subject-matter jurisdiction. We vacate the trial court’s order

27 See Harris Cty. Flood Control Dist. v. Kerr, 499 S.W.3d 793, 804–05 (Tex. 2016)
(noting that where government action harms an individual, “[o]ne’s normal reaction
is that he should be compensated therefor. [But,] [o]n the other hand, the doctrine of
the non-suability of the state is grounded upon sound public policy. If the State
were suable and liable for every tortious act of its agents, servants, and employees
committed in the performance of their official duties, there would result a serious
impairment of the public service and the necessary administrative functions of
government would be hampered.”) (quoting Tex. Highway Dep’t v. Weber, 219
S.W.2d 70, 71–72 (Tex. 1949)); see also Hillman v. Nueces Cty., ___ S.W.3d ___,
___, 2019 WL 1231341, at *6 (Tex. Mar. 15, 2019) (quoting truism that, “just as
immunity is inherent to sovereignty, unfairness is inherent to immunity.”) (quoting
City of Galveston v. State, 217 S.W.3d 466, 480 n.38 (Tex. 2007) (Willett, J.,
dissenting)).
34
denying the University’s plea to the jurisdiction and dismiss this cause for lack of
subject-matter jurisdiction.
Richard Hightower
Justice
Panel consists of Chief Justice Radack and Justices Higley and Hightower.

Univ. of Houston v Jim Olive Photography [Link to -->  UH v. Olive opinion of court's website] No. 01-18-00534-CV (Tex.App.- Houston [1st Dist.] June 11, 2019)