The situation with attorneys’ fees in “exceptional cases” under the Lanham Act is, to put it mildly, not clear. I’ve written about it from time to time here, including, in December, in connection with the important Second Circuit decision in Louis Vuitton v. Ly USA Inc., which held that a prevailing plaintiff in a trademark counterfeiting case may collect both statutory damages and attorneys’ fees.
Well, I say “collect” — I really mean “be awarded.” In the vast majority of “big” counterfeiting cases, of course, these awards aren’t collected, or collectible, at all (there are exceptions). Rather, they are “symbolic” victories meant to “send a message” to counterfeiters around the world and make them repent.
Having sent one of those messages myself … back in, oh, 2002 … I must admit I am curious why it hasn’t been received yet, evidently…
Anyway, it always comes down to this: No one really knows what an exceptional case is, because it’s obviously an entirely subjective test pretty much left to the sound discretion of the District Court. That “standard” is amorphous enough that, outside of big counterfeiting cases, clients should not only never be told that they can get Lanham Act attorneys fees: They should never even be left with the impression that it’s a creditable probability, and certainly not to the extent that they should include collection of those fees in their budgeting choices for infringement litigation.
All this is by way of linking to Michael Atkins’s recent post on the latest statement on the topic of that elusive “exceptional case,” this one on the other side of the continent, in a Ninth Circuit case called Haas Automation, Inc. v. Denny, No. 11-56991, 2013 WL 2303528 (9th Cir. May 28, 2013):
Courts don’t award attorney’s fees that often in trademark cases.
That’s because the statute only authorizes fees awards in “exceptional” cases.
So what’s that mean?
The Ninth Circuit recently reviewed the standard. . . .
The court didn’t offer much analysis in upholding the district court’s award to the prevailing plaintiff. It just said that “[c]onsidering all of the circumstances of this case, including the jury’s verdict, we agree with the district court that the threshold standard for awarding fees has been met, and further that the district court did not abuse its discretion in awarding attorneys’ fees.”
A little more explanation would have been nice. However, trademark owners still have an important take-away from the decision: it’s important to know the court’s standards when seeking or defending against a claim for attorney’s fees. Most claims won’t cut it, but the cases with egregious facts can.
Just to be a little clearer: The decision doesn’t say a damned thing about what the facts were that were so egregious. Moreover, the case is one of those “nothing to look at here, move along” specials, with a footnote that says, “This disposition is not appropriate for publication and is not precedent except as provided by 9th Cir. R. 36-3.”
Well, I’ll tell you some facts. Read More…