Intellectual Property: Second Circuit Joins Third, Fourth, Fifth, Sixth, Ninth, and Federal Circuits In Applying Patent Act’s “Exceptional Case” Factors To Determine If Fee Recovery Warranted In Lanham Act Case

Second Circuit Did So In 2018, Recently Remanding A District Judge’s Award of Fees Under Lanham Act For A New Scrutiny Using The Octane Fitness Factors.

            In Sleepy’s LLC v. Select Comfort Wholesale Corp., 909 F.3d 519, 530-531 (2d Cir. 2018), the Second Circuit joined the Third Fourth, Fifth, Sixth, Ninth, and Federal Circuits in determining that the Patent Act’s standards for determining whether a case was exceptional for purposes of awarding fees to a prevailing party (as articulated in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014)), also applied with respect to fee recovery in a Lanham Act case.  Recently, in 4 Pillar Dynasty LLC v. New York & Co., Inc., Nos. 17-2398/17-2399 (2d Cir. Aug. 8, 2019), the Second Circuit remanded a pre-Sleepy’s LLC fee award to a prevailing trademark infringement plaintiff so it could be rescrutinized through the more flexible Octane Fitness test rather than the district court’s utilization of the fact that a willful infringement case was per se exceptional.  (The Second Circuit observed that Octane Fitness establishes no presumption that cases involving willful infringement are exceptional.) 

            BLOG BONUS—The Ninth Circuit decision on this issue is Sun Earth, Inc. v. Sun Earth Solar Power Co., 839 F.3d 1179, 1181 (9^th Cir. 2016).