Chicago IP Attorney & Lawyer : R. David Donoghue : Chicago IP Litigation Blog

AutoZone, Inc. v. Strick, No. 03 C 8152, Slip Op. (N.D. Ill. Jun. 9, 2010) (Darrah, J.).

Judge Darrah granted in part defendants' bill of costs after defendants prevailed in a trademark infringement trial – click here for much more on the case in the Blog's archives. The Court awarded deposition transcript fees, but only up to the then applicable Northern District costs - $3.30 per page for an original transcript and $.83 per page for a copy. Because defendants did not show they were reasonably necessary, the Court did not award costs for condensed transcripts, word indexes, or delivery charges. 

The Court awarded costs for daily trial transcripts because they were necessary for direct and cross-examinations during trial and post-trial findings of fact. The Court awarded photocopying costs at $.10 per page only to the extent defendants showed the purposes of the copying. Finally, the Court awarded the costs of making the defendants' trial exhibits, excluding shipping costs. 

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Hyundai Construc. Equip. U.S.A., Inc. v. Chris Johnson Equip., Inc., No. 06 C 3238, Slip Op. (N.D. Ill. Oct 21, 2008) (Leinenweber, Sen. J.).

Judge Leinenweber, having previously granted plaintiff summary judgment of Lanham Act unfair competition and deceptive trade practices,* enjoined defendant's continued sale of gray market goods and use of plaintiffs' trademarks and awarded plaintiffs damages and costs.  The Court awarded plaintiffs defendant's profits from sales of gray market construction equipment (equipment made abroad for sale abroad that was imported to the United States without authority for resale), but the Court held that awarding plaintiffs a multiple of defendant's actual damages would be inappropriately punitive.  Additionally, the Court gave defendant an opportunity to prove its costs before entering a final damages amount. 

The Court also entered a permanent injunction.  The Court, however, denied plaintiffs' request that defendant have to provide plaintiffs and the Court a report proving defendants' compliance with the injunction.  Such a requirement was unduly burdensome.

Finally, the Court awarded plaintiffs their costs, but held attorney's fees were not appropriate because the case was not exceptional.  Among other reasons the case was not exceptional, the Court noted evidence that defendants "apparent pains" to warn customers that defendants' products lacked a warranty and came from overseas.  And the Court held that no actual confusion had yet been proven.

*  Click here for the prior decision in the Blog's archives.

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Vito & Nick’s, Inc. v. Barraco., No. 05 C 2764, Slip Op. (N.D. Ill. Oct. 10, 2008) (Nolan, Mag. J.)

Judge Nolan granted defendants’ motion for litigation costs, but denied defendants’ motion for attorney’s fees. Plaintiff sued defendants alleging trademark infringement, Lanham Act unfair competition, Illinois Deceptive Trade Practices and related state law claims based upon a dispute over sibling’s competing use of the name of a family business. After initiation of the suit, the parties engaged in extensive settlement negotiations resulting in a framework for settlement. But plaintiff was unable to come up with funds necessary for the settlement and then lost its counsel. Because plaintiff was unable to find replacement counsel, and because corporations cannot appear pro se, plaintiff’s case was eventually dismissed for want of prosecution.

The Court held that plaintiff’s conduct resulting in dismissal did not constitute bad faith warranting an award for attorney’s fees. Plaintiff actively participated in the case and settlement negotiations, until it was unable to come up with the funds required, and lost its counsel. Furthermore, the Court had not had occasion to review the viability of plaintiff’s claim and, therefore, a bad faith finding could not be based upon the viability of the claims.

The Court did, however, award defendants their costs as prevailing parties pursuant to Fed. R. Civ. P. 54(d)(1), as follows:

• Costs of serving the summons and subpoenas;
   
• Court reporter, videographer, and transcript fees (transcripts were limited to $3.30 per page and did include indexes, minuscripts or other attorney convenience features);
   
• Witness fees; and
   
• Copy costs (limited to $.10 - $.20 per page).

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Illinois Tool Works, Inc. v. Chester Bros. Mach. Prods., Inc., No. 05 C 5002, 2007 WL 2278448 (N.D. Ill. Aug. 6, 2007) (Guzman, J.).

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Judge Darrah, after finding each of the eleven patents-in-suit unenforceable for inequitable conduct, held that the suit was exceptional based upon the inequitable conduct, the filing of several frivolous claims which were previously dismissed and misconduct at trial, providing the Court the discretion to award attorney's fees.  The court also did a detailed analysis of defendants' Bill of Costs and awarded defendants some or all of their requested costs for service of process, court reporters, witnesses and experts, among others.  Of note, the Court held that expert fees, including the expert's hourly rates, were recoverable for time spent on expert reports, deposition and related preparation, and other time spent in responding to discovery, but not for time spent attending other expert depositions in the case.

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