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

Hickory Farms, Inc. v. SnackmastersSnackmasters, Inc., No. 05 C 4541, Slip Op. (N.D. Ill. Apr. 2, 2008) (Kennelly, J.).

Judge Kennelly awarded defendant approximately $350,000 in attorney's fees, costs and interest, based upon defendant's fee petition. The Court previously held that plaintiff's “Beef Stick” and “Turkey Stick” marks were generic and ordered their cancellation -- click here for more on this case in the Blog's archives. The Court also denied plaintiff's motion for reconsideration of the genericness decision and held that defendant had a right to its reasonable attorney's fees and costs because the case was exceptional. There were several noteworthy rulings in the opinion:

• The Court held that defendant was owned not just its fees from the litigation, but also from the related TTAB because the substantive work and research in the earlier TTAB proceeding formed the core of defendant's successful motion for summary judgment of genericness. It did not matter that defendant initiated the TTAB proceeding.

• The Court awarded defendant its attorney's fees for time spent searching the internet for third party uses of “Beef Stick” and “Turkey Stick.” Internet searching was not clerical work because review of each use of the marks required legal analysis. Furthermore, the Court relied on the fruits of that research in granting summary judgment.

• The Court denied attorney's fees for work related to the Seventh Circuit's mediation program. The Seventh Circuit appeal was a separate proceeding and, therefore, it was not appropriate for the Court to award fees for work done that did not further this case, as the work in the TTAB proceeding did.

• The Court held that an administrative charge of 4% of an attorney's billings was reasonable and awarded it as part of attorney's fees, as opposed to costs. Defendant's counsel used the 4% administrative charge as a standard billing practice, instead of tracking long-distance telephone, copying, faxing and other incidental charges for each client and case. The Court held that 4% was a modest amount and was an “appropriate device” for estimating fees without incurring substantial overhead for monitoring those fees precisely.

 

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Milwaukee Elec. Tool Corp. v. Robert Bosch Tool Corp., No. 05 C 1171, 2007 WL 2875232 (N.D. Ill. Sep. 28, 2004) (Kendall, J.)

Judge Kendall granted plaintiff’s motion to dismiss its Lanham Act case with prejudice and awarded defendant its costs but not its fees pursuant to 15 U.S.C. § 1117(a). The Court held that attorney’s fees were not warranted because the case and its dismissal after substantial fact discovery were not exceptional. Plaintiff dismissed its case because of two significant events which plaintiff believed reduced its likelihood of success.

            First, during discovery Congress passed the Trademark Dilution Revision Act (“TDRA”)* which changed the definition of “famous” such that fame within a niche market was no longer sufficient for dilution. Plaintiff was not certain it could prove fame outside its market. Second, defendant changed the trade dress, and particularly the color scheme, of its accused SKIL line of power tools. Plaintiff believed that defendant’s new trade dress was less similar to plaintiff’s and, therefore, plaintiff’s case was more difficult to prove. The Court accepted plaintiff’s reasoning and, therefore, held that the case was not exceptional. The Court did, however, award costs, which plaintiff had originally agreed it would pay.

* For more on the TDRA, click here for the Seattle Trademark Lawyer’s coverage of the TDRA this week in honor of the TDRA’s first anniversary.

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Lexion Medical, LLC v. Northgate Techs., Inc., No. 04 C 5705, Slip Op. (N.D. Ill. May 29, 2007).*

Judge Rosenbaum (a visiting judge, who is the Chief Judge for the District of Minnesota) granted in part plaintiff’s Fed. R. Civ. P. 59(e) and 60(a) motion to alter or amend the judgment, altering the judgment to include all post-verdict sales of infringing product. The court held a trial in October 2006 resulting in a jury verdict that defendants’ insufflator (a device that blows a powder, gas or vapor into a body cavity) infringed plaintiff’s patent, but that the infringement was not willful. The Court entered judgment in February 2007. Shortly after the judgment, defendant Northgate Technologies (“Northgate”) informed plaintiff that after the verdict, but before the judgment was entered, Northgate sold its remaining inventory. Plaintiff sought damages for the post-verdict sales and argued that the Court should find the post-verdict sales willful and declare the case exceptional. The Court held that the post-verdict sales infringed the patent, but that they were not willful because Northgate received an oral opinion of counsel prior to shipping any post-verdict product. The oral opinion was based upon three factors: 1) a belief that the jury’s verdict was unreasonable; 2) the fact that the Court had not yet entered a permanent injunction; and 3) Northgate’s post-trial arguments that were pending before the Court. The Court noted that the second factor could not support Northgate’s decision. But the remaining justifications were not “so flawed as to alert Northgate to reject [the oral opinion] as ‘obviously bad legal advice.”

But because Northgate’s decision to sell infringing product post-verdict “needlessly multiplied” the case, the Court held that the post-verdict sales were exception and awarded plaintiff’s attorneys fees and costs incurred by the post-verdict sales motion. Additionally, the Court entered a permanent injunction.

*You can read the opinion here.

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Ty, Inc v. Softbelly's, Inc., No. 00 C 5230, 2007 WL 734394 (N.D. Ill. Mar. 6, 2007) (Lefkow, J.).

Judge Lefkow granted plaintiff's, Ty, motion to make the case exception and grant it attorneys' fees and expenses.  A jury previously returned a verdict against defendant, Softbelly's, for violations of the Lanham Act and common law unfair competition.  The Court held that the case was exceptional because "Softbelly's made an aggressive, uncounseled, and persistent endeavor to trade on the success and reputation of Ty's marks."

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