Except For $83,229.49 Component Sent For Remand Determinations, $836,899.99 Was the Fee Hit Against Losing Plaintiff.
Plaintiff suing for trade dress protection under the Lanham Act lost a functionality-oriented case in Secalt S.A. v. Wuxi Shenxi Construction Machinery Co., Ltd., Case Nos. 10-17007 et al. (9th Cir. Feb. 7, 2012) (for publication). The district court also determined that this was an “exceptional” case giving rise to fee shifting under Lanham Act section 35(a). 15 U.S.C. § 1117(a). It awarded attorney’s fees and non-taxable costs of $836,899.99 to the winning defendant.
Except for an $83,229.49 component remanded for a redetermination, the remainder of the fee/costs award was sustained. Even though the line for Lanham Act “exceptional” fee recovery is somewhat murky for the prevailing defendant, here the failure of proof was clear given the two years of discovery and further investigation by losing plaintiff, who lost pretty convincingly on a functionality issue. (Plaintiff’s own witnesses and third-party witnesses seemed to confirm the functionality of the claimed trade dress, with merely the “hope” of a third-party patent not saving the day for plaintiff.) Although the Lanham Act did allow the prevailing defendant to recover non-taxable costs, the remand component was questionable and had to be vacated so that the district court could determine if the sub-components were reasonably incurred. Also, a small amount of taxable routine costs had to be vacated because an attorney providing translation services was not the equivalent of an “interpreter” for purposes of a cost award.
Comments