Ariel Investments, LLC v. Ariel Capital Advisors LLC, No. 15 C 3717, Slip OP. (N.D. Ill. Jul. 17, 2017) (Kennelly, J.).

Judge Kennelly granted in part plaintiff Ariel Investments’ Fed. R. Civ. P. 54(d) motion for costs in this Lanham Act case involving Ariel Investments’ ARIEL trademarks.

The Court granted defendant Ariel Capital summary judgment as to Ariel Investments’ cybersquatting claim and then, after a bench trial, ruled in Ariel Investments’ favor as to the Lanham Act and related state law claims, ultimately granting a permanent injunction.

As an initial matter, while Ariel Investments did not win every issue — in particular losing its cybersquatting claim and being denied disgorgement of Ariel Capital’s profits — the permanent injunction granted to Ariel Investments was a substantial part of the litigation warranting fees in these particular circumstances.

Having held that Ariel Investments was the prevailing party, the Court awarded the following costs:

  • The Court awarded court reporter costs, including costs above the Judicial Conference’s approved per-page rate for a deposition where Ariel Capital selected the reporter. In that instance, the reporter offered Ariel Capital a discount, but did not extend the discount to Ariel Investments. Because Ariel Capital selected the reporter, it could not argue that the cost was too high, even above the per-page limit;
  • The Court refused the costs for video of Ariel Capital’s central witness. While he was beyond the Court’s subpoena power, “the odds were near zero that [he]—the owner and principal of Ariel Investments—would not appear at trial.”;
  • Because the evidence was “relatively simple” and the trial was short — three days — the Court did not award costs for real-time trial transcripts;
  • Looking to Third Circuit law, the Court awarded Ariel Investments its e-discovery costs because it showed that they were “copying costs” within the meaning of the law because they were related to “‘the process by which documents in a variety of native forms . . . are copied and converted’ to a readable format.”;
  • While demonstrative exhibits are often necessary at trial and, therefore, taxable costs, they were not in this instance because of the relatively simple evidence presented to the Court. The Court noted, however, that it may have ruled differently had the case been tried to a jury; and,
  • The Court awarded service costs at the rate charged by the Marshall and the cost of its complaint filing fee.