Nova Design Build, Inc. v. Grace Hotels, LLC, No. 08 C 2855, Slip Op. (N.D. Ill. Jun. 8, 2010) (Der-Yeghiayan, J.).
Judge Der-Yeghiayan granted defendant Grace Hotel’s motion for costs and denied without prejudice Grace Hotel’s motion for attorney’s fees. As an initial matter, the Court held that Grace Hotels was a prevailing party pursuant to both Fed. R. Civ. P. 54(d) (costs) and 17 U.S.C. § 505 (attorney’s fees). While the standards were different, Grace Hotels met both standards. Grace Hotels was granted summary judgment on plaintiff’s copyright infringement claim because plaintiffs did not have a valid copyright registration – click here for more on this opinion in the Blog’s archives. While the decision was jurisdictional and not substantive, Grace Hotel was a prevailing party because the Court’s ruling “effectively foreclosed” Plaintiff’s copyright claims. In other words, “Grace [Hotels] obtained more than just a moral victory on a minor jurisdictional point.” Because Grace Hotels was a prevailing party, the Court awarded the reasonable costs Grace Hotels requested for court reporter fees pursuant to Fed. R. Civ. P. 54(d) – $2,534.70.
While Grace Hotels was also a prevailing party for purposes of § 505, the Court denied Grace Hotels attorney’s fees motion without prejudice. The fees did not appear reasonable. They were not limited to fees associated with defending the copyright claim. Grace Hotels was not entitled to fees for defending related state law claims which the Court declined to exercise supplemental jurisdiction over after resolving the federal copyright claim. Grace Hotels also sought fees for a separate case between the parties. The Court allowed Grace Hotels to file a renewal motion for attorney’s fees tailored to the recoverable fees.

Continue Reading Attorney’s Fees Petition Must be Tailored to Resolved Claims

Gabbanelli Accordions & Imports, L.L.C. v. Italo-Am. Accordion Mfg. Co., No. 02 C 4048, Slip. Op. (N.D. Ill. Sept. 21, 2009) (Zagel, J.).
Judge Zagel entered judgment on behalf of plaintiffs in the amount of $151,200 in lost profits after the Seventh Circuit affirmed the Court’s judgment.* The Court also held defendants jointly and severally liable for $147,576.12 in plaintiff’s attorneys’ fees.
* Click here for more on this case in the Blog’s archives.

Continue Reading Court Enters Judgment on Trademark Damages and Attorneys Fees in Accordian Case

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Slip Op. (N.D. Ill. Apr. 13, 2009) (Bobrick, Ret. J. & Special Master).
Special Master Bobrick, a retired judge, awarded defendant Starent its attorneys fees related to Starent’s efforts to get complete interrogatory responses from plaintiff UTStarcom. In an earlier opinion (click here for the Blog’s related post), the Court denied Starent’s request to dismiss plaintiff’s trade secret misappropriation claim as a sanction for UTStarcom’s incomplete responses, but awarded attorneys fees. Of particular interest, the Special Master held that block billing was not inappropriate and that block billed entries could be recovered. Additionally, based in part on UTStarcom’s failure to provide its rates as part of a reasonableness analysis, the Special Master held that Starent’s rates were not unreasonable, although they may have been more than standard local rates. The Court also noted that patent cases required special expertise which often commands a premium. The Special Master did, however, reduce the rates of Starent’s law students whom the Special Master noted were neither lawyers nor paralegals. Finally, the Special Master reduced by one-third the bills for certain time that was added to Starent’s Bill of Costs late.

Continue Reading Court Finds National Rates Reasonable & Awards Attorney’s Fees

UTStarcom, Inc. v. Starent Networks, Corp., No. 07 C 2582, Slip Op. (N.D. Ill. Jan. 22, 2009) (Bobrick, Ret. J. & Special Master).
Special Master Bobrick, a retired judge, denied defendant Starent’s motion to dismiss plaintiff UTSI’s trade secret misappropriation claim for repeatedly deficient interrogatory responses related to the claim. Over the course of a year, UTSI served six responses to the interrogatories at issue based upon various requests by Starent and orders by the Special Master. After the sixth set of responses, Starent agreed that the answers were sufficient. Starent, however, requested dismissal of the claim based upon UTStarcom’s repeated failure to provide a substantive answer. UTStarcom responded that dismissal was a drastic remedy that was not warranted because had provided substantive answers and because Starent had not been prejudiced by the delay. UTStarcom even suggested other remedies like exclusion of late produced evidence. The Special Master held that it was a close case and that either outcome would be defensible. The Court however, denied Starent’s motion to dismiss but did award attorney’s fees for the filing of Starent’s motion.

Continue Reading Court Barely Denies Motion to Dismiss for Delayed Interrogatory Answers

Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc., No. 05 C 4088, Min. Order (N.D. Ill. Feb. 2, 2009) (Moran, Sen. J.).*
In this pair of entries, Judge Moran denied plaintiff Trading Technologies’ motions for fees and costs related to a discovery motion and referred another fees motion to Magistrate Judge Schenkier. In the first entry, the Court noted that it was time to end “unnecessary [discovery] battles” in the case and that it might not be as forgiving with the next fees motion. In the other entry, the Court transferred a fees motion to Judge Schenkier, but questioned how “a single discovery dispute could blossom into a claim for over $300,000.
* Click here to read much more about this case and the related cases in the Blog’s archives.

Continue Reading Court Warns Parties That Future Fee Motions May be Granted

Welsh v. Big Ten Conf., Inc., No. 08 C 1342, Slip Op. (N.D. Ill. Nov. 21, 2008) (Gottschall, J.).
Judge Gottschall granted defendant the Big Ten Conference’s motion to dismiss plaintiff’s complaint, but denied the Big Ten’s motion for its attorney’s fees. Plaintiff claimed that it presented the Big Ten with a trade secret business plan for a Big Ten television network named the “Big Ten Network.” The Big Ten allegedly told plaintiff it was not interested and then several years later started the Big Ten Network using plaintiff’s trade secrets, including the Big Ten Network name. Plaintiff claimed that the Big Ten violated § 38 of the Lanham Act by filing a false declaration with the PTO stating that the Big Ten had the sole right to use the Big Ten Network mark in commerce. Plaintiff argued that the Big Ten should have disclosed plaintiff’s trade secret rights in the mark. But the Court held that even if plaintiff could establish trade secret rights, the Seventh Circuit had held that it was “far from clear” whether trade secret claims fall within the scope of § 38, which is directed to statements about ownership, as opposed to statements about use in commerce. Additionally, the Court held that plaintiff’s alleged development of the name did not necessarily grant plaintiff any rights in the trademark. Trademark rights are granted based upon use, not discovery or invention. And inclusion in a business plan is not a “use in commerce.” Having dismissed plaintiff’s federal claim and noting that the parties were not diverse, the Court declined to exercise supplemental jurisdiction over the remaining state law claims and dismissed the case.
The Court denied the Big Ten’s request for its fees. First, the case was resolved on a motion to dismiss filed two months after the complaint and while plaintiff’s arguments lost, the theory had not been “squarely rejected by the Seventh Circuit.” As such, plaintiff’s suit could not be deemed “oppressive” as is required for an award of fees.

Continue Reading Inclusion of Trademark in Business Plan Not a Use in Commerce

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.

Continue Reading Court Awards Injunction, Actual Damages and Costs, Not Attorney’s Fees

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).

Continue Reading Dismissal For Failure To Prosecute: Costs Awarded Not Attorney’s Fees

Hyperquest, Inc. v. N’Site Solutions, Inc., No. 08 C 483, 2008 WL 3978310 (N.D. Ill. Aug. 22, 2008) (Shadur, Sen. J.)
Judge Shadur continued defendants’ motion for fees as a prevailing party in this copyright case pursuant to 17 U.S.C. §505, after previously requiring additional briefing as to the reasonableness of defendants’ requested fees – click here to read about that opinion in the Blog’s archives. Defendants collectively requested approximately $260K in fees. The Court dismissed plaintiff’s argument that defendants did not offer proof that defendants had paid their counsels’ fees. But the Court set a hearing to discuss an appropriate award, noting that plaintiff’s counsel’s fees, approximately $110K, were a more appropriate sum, with some adjustment for the fact that there were two defendants.

Continue Reading Court Uses Plaintiff’s Attorney’s Fees as Measure for Awarding Defendants’ Fees

Rosenthal Collins Group, LLC v. Trading Techs. Int’l, Inc., No. 05 C 4088, Slip Op. (N.D. Ill. Jul. 17, 2008) (Moran, Sen. J.).
Judge Moran denied declaratory judgment plaintiff Rosenthal Collins Group’s (“RCG”) motion to vacate the Court’s March 14, 2007 order awarding declaratory judgment defendant Trading Technologies’ (“TT”) Fed. R. Civ. P. 37 sanctions – click here to read the Blog’s post about that opinion and click here to read much more about this case and the related cases. In that earlier order, the Court held that RCG’s motion for summary judgment of invalidity was “somewhat misleading” and possibly “disingenuous.” Instead of dismissing the case as TT requested, the Court struck the declaration underlying RCG’s motion, denied RCG’s summary judgment motion with leave to refile a motion “supported by proper evidence” and awarded TT its costs and attorneys fees associated with the Rule 37 motion, as well as its software expert’s fees.
In this motion, RCG argued that the Court should vacate that sanctions order because the Court held that TT had not proved by clear and convincing evidence that RCG acted willfully or with bad faith. But the Court held that Rule 37 sanctions could be based upon willfulness, bad faith or fault. Fault went to the reasonableness of the party’s content, not necessarily intent. And the Court held that RCG’s actions met the standard for fault. Furthermore, while clear and convincing was the burden of proof for dismissal, clear and convincing proof is not required for lesser sanctions.
Finally, the Court held that the categories of fees and costs sought by TT were within the scope of the Court’s order, but ordered the parties to brief the reasonableness of the specific fees sought by TT, using the Local Rule 54.3 requirements (a rule usually used for post-judgment fees and costs).

Continue Reading Trading Technologies: Rule 37 Sanctions Based Upon Fault