Silverman v. State Bar of Texas

• Decision Date: 11 December 1968
• Docket Number: No. 25582.,25582.
• Citation: 405 F.2d 410
• Parties: Ely SILVERMAN, Appellant, v. The STATE BAR OF TEXAS, Appellee.
• Court: U.S. Court of Appeals — Fifth Circuit

405 F.2d 410 (1968)

Ely SILVERMAN, Appellant, v. The STATE BAR OF TEXAS, Appellee.

No. 25582.

United States Court of Appeals Fifth Circuit.

December 11, 1968.

Elsie Brown Silverman, Amarillo, Tex., John C. Stahl, San Antonio, Tex., Silverman & Silverman, Amarillo, Tex., for appellant.

Davis Grant, Austin, Tex., for appellee.

Before JONES and COLEMAN, Circuit Judges, and CHOATE, District Judge.

COLEMAN, Circuit Judge:

In an action for declaratory and injunctive relief, appellant unsuccessfully challenged the validity of a regulation of the Texas State Bar. We reverse and remand.

The facts were stipulated. Silverman is a practicing attorney of Amarillo, Texas, licensed by the State of Texas and in good standing. He is also a Registered Patent Attorney, enrolled by the United States Commissioner of Patents. He lists himself under "Attorneys" in the classified section of the local telephone directory and likewise lists himself under "Patent Attorney" in the same classified section.

On June 19, 1964, the appropriate committee of the Texas State Bar, which is an integrated bar, issued Opinion 289, interpreting Canons 24, 39, 41, and 42¹ of the Rules Governing the State Bar of Texas, promulgated by the Supreme Court of Texas, Vernon's Ann.Civil Statutes, Volume 1A (1959) Pages 233 ff. Opinion 289, inter alia, reads as follows:

"A registered U. S. Patent Attorney may list himself as a Patent Attorney in the classified or city directory or in any other manner permitted by pertinent patent regulations, if he limits his practice to the scope of his license from the U. S. Patent Office; but the Registered U. S. Patent Attorney who also practices law under or by reason of his Texas license may not list himself or his qualifications on letterheads or in a telephone directory or in any other way forbidden to other Texas laywers. Except as provided in Canons 39 and 42 and the pertinent interpretative opinions, the fact that the scope of one\'s practice is influenced by the existence of a limited-license from another source such as the U. S. Patent Office is immaterial and may not be used as the basis of any direct or indirect solicitation or advertisement."

The opinion concludes, in part:

"Thus the one who holds both a limited license from the Federal agency and a general license from the State of Texas has no problem if he limits his practice to the scope of his limited license. * * * But if he wishes to practice under his general state license, he must conform to state standards, and this means that all `specialists\' are handled as general practitioners (Canon 41) and that as a Texas lawyer he cannot hold himself out by means of letterheads, calling cards, office sign, etc., as having any special talents or qualifications."

The Texas Bar Rules are at least quasi-statutory, State ex rel. Chandler v. Dancer, Ct. of Civ.App., 1965, 391 S.W. 2d 504, and have the same legal effect as the Texas Rules of Civil Procedure, Rattikin Title Co. v. Grievance Committee of the State Bar of Texas, Ct. of Civ. App., 1954, 272 S.W.2d 948.

The appellant contends that Opinion 289, delivered pursuant to State Bar Rules, is contrary to a federal statutory scheme and therefore invalid.

The United States Constitution specifically grants Congress the power to:

"* * * promote the Progress of Science and Useful Arts, by securing for limited times to inventors the exclusive rights to their respective writings and discoveries * * *" Art. I, § 8.

By statute, Congress has delegated to the United States Commissioner of Patents authority to "prescribe regulations, governing the recognition and conduct of agents, attorneys, or other persons representing applicants or other parties before the Patent Office * * *." 35 U.S.C.A. § 31.

Pursuant to this authorization, the Commissioner promulgated the following Regulation:

"(a) The use of advertising, circulars, letters, cards, and similar material to solicit patent business, directly or indirectly, is forbidden as unprofessional conduct, and any person engaging in such solicitation, or associated with or employed by others who so solicit, shall be refused recognition to practice before the Patent Office or may be suspended, excluded or disbarred from further practice.

"(b) The use of simple professional letterheads, calling cards, or office signs, simple announcements necessitated by opening an office, change of association, or change of address, distributed to clients and friends, and insertion of listings in common form (not display) in a classified telephone or city directory, and listings and professional cards with biographical data in standard professional directories shall not be considered a violation of this rule.

"(c) Omitted." 37 C.F.R. § 1.345.

This Regulation has been held to be valid and within the authority of the Commissioner of Patents. Evans v. Watson, 1959, 106 U.S.App.D.C. 108, 269 F.2d 775, cert. den. 361 U.S. 900, 80 S. Ct. 213, 4 L.Ed.2d 157.

At the outset it might be well to note that federal patent laws, like other laws of the United States enacted pursuant to constitutional authority, are a part of the supreme law of the land, and when state law touches on an area of those federal statutes, federal policy may not be set at naught and its benefits may not be denied by state law, even if the state law is enacted in the exercise of otherwise undoubted state power. The Supreme Court specifically so held in Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964), reh. den. 376 U.S. 973, 84 S.Ct. 1131, 12 L.Ed.2d 87.

In determining whether a Treasury Regulation preempted an inconsistent provision of Texas law, the Supreme Court in Free v. Bland, 369 U.S. 663, 82 S.Ct. 1089, 8 L.Ed.2d 180 (1962) said:

"The relative importance to the State of its own law is not material when there is a conflict with a valid federal law, for the framers of our Constitution provided that the federal law must prevail. Art. VI, Clause 2. This principle was made clear by Chief Justice Marshall when he stated for the Court that any state law, however clearly within a State\'s acknowledged power, which interferes with or is contrary to federal law, must yield. Gibbons v. Ogden, 9 Wheat. 1, 210-211 6 L.Ed. 23 Citations omitted * *." Free, 369 U.S. at 666, 82 S.Ct. at 1092.

This reasoning was reiterated by the Court in Sperry v. State of Florida ex rel. Florida Bar, 373 U.S. 379, 83 S.Ct. 1322, 10 L.Ed.2d 428, 438 (1963), where Florida sought to enjoin a non-lawyer authorized by federal statute to practice before the Commissioner of Patents, from practicing in that state because he had no law license. The Court rejected the State's contention that it had the authority to enjoin in that instance.

"If the authorization to practice before the Commissioner without a license is unqualified, then, by virtue of the Supremacy Clause, Florida may not deny to those failing to meet its own qualifications the right to perform the functions within the scope of the federal authority. A State may not enforce licensing requirements which, though valid in the absence of federal regulation, give `the State\'s licensing board a virtual power of review over the federal determination\' that a person or agency is qualified and entitled to perform certain functions, or which impose upon the performance of the activity sanctioned by federal license additional conditions not contemplated by Congress. `No state can hinder or obstruct the free use of license granted under an act of Congress\'. Pennsylvania v. Wheeling & B. Bridge Co., 13 How. 518, 566, 14 L.Ed. 249." Sperry, 373 U.S. at 385, 83 S.Ct. at 1326.

While recognizing a state's right to control the practice of law within its boundaries, the Court determined that the power was not absolute:

"Congress having acted within the scope of the powers `delegated to the

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