Pattishall IP Blog

March 8, 2017

Pattishall Prevails in 5th Circuit

Filed under: Litigation, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:02 pm

By Phillip Barengolts

Phil Barengolts and Jessica Ekhoff prevailed in the U.S. Court of Appeals for the Fifth Circuit for Insignia Marketing and Christine McAtee in Vetter v. McAtee, No. 15-20575 (5th Cir. March 1, 2017), The Court upheld Insignia Marketing’s trial victory and affirmed the denial of Vetter’s request for attorneys’ fees against our clients.  The Court held the Lanham Act’s “fee-shifting provision vests significant discretion in the district courts to grant or deny attorneys’ fees on a case-by-case basis.”  The case was held not “exceptional” under the standards announced in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).


These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

October 10, 2012

Pattishall Client Prevails On Counterfeiting and Infringement Claims Over Marks for Vehicle Braking Systems; Court Awards Over $13 Million in Damages, Attorneys’ Fees, Costs and Sanctions

Pattishall client Robert Bosch LLC (“Bosch”) was awarded judgment of over $13 Million by default on its claims of counterfeiting, infringement, unfair competition, and false advertising after nearly three years of litigation and “extensive and cumbersome discovery” in Robert Bosch LLC v. A.B.S. Power Brake, Inc., Case No. 09-14468 (E.D. Mich. August 2, 2012).  Pattishall attorneys Belinda Scrimenti, Bradley Cohn, Thad Chaloemtiarana, and Jeffrey Wakolbinger represented Bosch in this litigation in the United States District Court for the Eastern District of Michigan before the Honorable Patrick J. Duggan.

Specifically, Judge Duggan:

  • awarded Bosch $12,875,997.96; consisting of $3,931,220 in defendant’s profits (which the court trebled to $11,793,660), $993,309.00 in reasonable attorneys’ fees, and $89,028.96 in costs;
  • awarded Bosch $142,082.52 as a judgment for previously entered sanctions;
  • enjoined defendants from future use of Bosch’s HYDRO-BOOST and HYDRO-MAX marks in connection with hydraulic vehicle braking systems or remanufactured, reconditioned or rebuilt Bosch products; and
  • ordered the defendants to destroy all infringing products and promotional materials.

The Court’s opinion highlighted the difficulty of assessing actual damages given the actions of the defendants in discovery and found the Pattishall team’s method for estimating damages to be reasonable.  Relying on survey evidence of law firms nationwide, Judge Duggan also found Pattishall’s Chicago-based attorneys’ fees request reasonable and consistent with rates of comparably-situated firms in Detroit with large intellectual property practices under the traditional lodestar analysis.

The defendants’ alleged violations covered a range of activities, including manufacturing of counterfeit products sold under Bosch’s trademarks, use of identical and similar infringing marks on generic products, sale of refurbished Bosch products that failed to meet genuine Bosch specifications, and false advertising of refurbished hydraulic brake products as new, genuine Bosch products.

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February 9, 2012

Defendant Hoist Manufacturer Awarded Attorney’s Fees in Trade Dress Case Secalt v. Wuxi Shenxi Construction Machinery

Filed under: Litigation, Trade Dress — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:30 pm

By Janet Marvel, Trademark Attorney

In Secalt S.A. v. Wuxi Shenxi Construction Machinery Co., Ltd., Nos. 10-17007 & 11-15066, 2012 WL 373102 (9th Cir. Feb. 7, 2012), plaintiff, a manufacturer of traction hoists (typically used for commercial building and window washing), alleged that it owned trade dress rights in the following design:

The Ninth Circuit ruled for the defendant, the maker of an apparently identical product.  The court’s opinion rested on its conclusion that, to paraphrase, no one cares what a traction hoist looks like, as long as it works.  Id. at *4.  Since plaintiff’s design was not the subject of a federal trademark registration, plaintiff was required to prove that it was non-functional and that it had secondary meaning.  Plaintiff could not prove non-functionality.  A design is functional if it “is essential to the use or purpose of the article, or affects the cost or quality of the article.”  Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 n.10 (1982).

The Ninth Circuit, after citing the confusing de jure and de facto definitions of functionality (which have been rejected as unhelpful by the TTAB), considered the much more understandable factors set forth in Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002 (9th Cir. 1988).  Those factors are:  “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.”  Secalt, 2012 WL 373102, at *4 (citing Disc Golf, 158 F.3d at 1006).

No factor supported the plaintiff.  Plaintiff’s own engineers testified that the hoist’s features were utilitarian.  There were alternative designs, but they were functional too.  Plaintiff’s own advertising stated that its hoists were rectangular (“cubist” in plaintiff’s trade dress parlance) so they would not roll off of tables.  All hoists cost pretty much the same, so the last factor was neutral.  The court found that plaintiff’s evidence was so lacking that defendant was entitled to its attorney’s fees.

The Secalt case provides the opportunity to revisit a best practice in trade dress protection.

Although a utilitarian design can only be protected for a limited time, and a purely ornamental design does not necessarily function as a source indicator, when designing a product, the  developer has the opportunity to consider adding a unique feature and repeating it throughout a product line.  If this is possible, then the product manufacturer has the opportunity to use the feature to develop and support brand recognition, even after its utility patent for the product expires, at which time copyists otherwise legally would be allowed to create competing identical products.

 *     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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November 30, 2011

Green Day Awarded Attorneys’ Fees Against Artist After Defeating Copyright Infringement and Unfair Competition Claims With Fair Use Defense

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:27 pm

Categories: Copyright, Litigation
Tags: Copyright, Fair Use, Attorney’s Fees, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

Green Day, a punk band most of us know for the song Good Riddance,[1] and others remember for songs like Basket Case,[2] was sued by artist Derek Seltzer for copyright infringement and unfair competition over Green Day’s use of his work Scream Icon in connection with Green Day’s song East Jesus Nowhere.[3]  More precisely, Green Day’s co-defendant Roger Staub, a photographer and set designer photographed a torn Scream Icon poster he saw on the corner of Sunset Boulevard and Gardner Avenue in Los Angeles, altered the color and contrast, added a brick background, and superimposed a red spray-painted cross over the image.  On summary judgment, Green Day defeated the copyright claim with a fair use defense and the unfair competition claim because Green Day did not use Scream Icon in a trademark manner.[4]  For a thorough discussion of that decision, see Professor Tushnet’s post at  Seltzer has appealed the ruling and briefing is scheduled to close in April 2012.

Just before Thanksgiving, the Court awarded Green Day $128,000 and its co-defendants an additional $72,000 in attorneys’ fees.  Seltzer v. Green Day, Inc., No. 10-2103 (C.D. Cal. Nov. 17, 2011).[5]  In an arguably close case that turned on fair use analysis, why did the court grant Green Day its fees?  Let’s take a closer look.

Under the Copyright Act, a court “may award a reasonable attorneys’ fee to the prevailing party . . .” 17 U.S.C. § 505.  The court properly referred to the Supreme Court’s decision in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), which highlighted that a prevailing defendant must be treated similarly to a prevailing plaintiff in the award of attorneys’ fees.  The court observed, “The pivotal inquiry is whether the successful defense furthered the goals of the Copyright Act.”  It then proceeded to analyze the Ninth Circuit’s attorneys’ fees factors: “ (1) the degree of success; (2) frivolousness; (3) motivation; (4) the objective unreasonableness of the losing party’s factual and legal arguments; and (5) the need, in particular circumstances, to advance considerations of compensation and deterrence.

Immediately, we see a problem for the plaintiff when, according to the court, plaintiff cited to bad law in the Ninth Circuit, which had established a “dual” standard for attorneys’ fees in copyright claims – plaintiffs usually won them, defendants had to show a plaintiff’s claim was objectively unreasonable or frivolous.  The court was harsh: “Plaintiff’s citation to Hustler, a case applying the ‘dual’ standard rejected by the Supreme Court in Fogerty, edges close to an affirmative attempt to mislead the Court.” (more…)

September 21, 2011

Despite Prevailing on a Motion to Dismiss on the Merits of Plaintiff’s Trademark Infringement Claims, the L.A. Times Could Not Recover its Attorneys’ Fees Because the Plaintiff’s Claims Were Not Exceptional Under the Lanham Act

Filed under: Litigation, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:09 pm

Categories: Litigation, Trademark (General)
Tags: Attorney’s Fees, Nominative Fair Use, Exceptional Case, Phillip Barengolts

By Phillip Barengolts, Trademark Attorney

The L.A. Times published numerous articles questioning the practices of 1800 Get Thin – referencing the 1800 GET THIN mark in the articles.  Get Thin sued the L.A. Times, including the reporter primarily responsible for the articles, for trademark infringement and false advertising under the Lanham Act.  The L.A. Times moved to dismiss on grounds of nominative fair use and won – easily.  See coverage here:  Then, the L.A. Times moved for attorneys’ fees – all $100k plus of them – and lost.[1]

Under the Lanham Act, the prevailing party may obtain its attorneys’ fees in an exceptional case. For a plaintiff, generally, this standard is met by showing that an infringement is deliberate or willful.  For the L.A. Times, the defendant here, “this requirement is met when the [plaintiff’s] case is either ‘groundless, unreasonable, vexatious, or pursued in bad faith.’” (citations omitted).  To meet this burden, the L.A. Times asserted that the Lanham Act was never meant to apply to the use of a trademark in news reporting activities.  The court thought this argument went too far. (more…)

April 28, 2011

Successfully Defend Copyright Infringement Claim – Win Attorneys’ Fees

Filed under: Copyright, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:55 pm

Categories: Litigation, Copyright
Tags: Copyright Infringement, Attorney’s Fees, 1st Circuit, Phillip Barengolts

by Phillip Barengolts, Trademark Attorney

The First Circuit recently confirmed that an alleged copyright infringer who prevails in the copyright infringement action can be entitled to its reasonable attorneys’ fees.  Latin American Music Co. v. American Society of Composers, Authors and Publishers, 98 U.S.P.Q.2d 1409 (1st Cir. 2011).[1]  Without getting into the details of this long-running dispute, this decision concerned Latin American Music Co.’s (“LAMCO”) appeal from an award of attorneys’ fees to the American Society of Composers, Authors and Publishers (“ASCAP”) after ASCAP won a jury verdict of non-infringement of the one song still at issue in the proceeding during trial.

Section 505 of the Copyright Act states, in relevant part, “the court may . . . award a reasonable attorney’s fee to the prevailing party as part of the costs.”  17 U.S.C. § 505.  The First Circuit noted that a “prevailing party” is “one who has prevailed on the merits of at least some claims.”  LAMCO, 98 U.S.P.Q.2d at 1411 (quotations omitted).  “A showing of frivolity or bad faith is not required; rather, the prevailing party need only show that its opponent’s copyright claims . . . were ‘objectively weak.'”  Id. (citations omitted).  Here, the First Circuit refused to disturb the district court’s finding that LAMCO’s claims were weak and its award of fees.  The First Circuit stated that it would do so “only if the record persuades us that the trial court indulges in a serious lapse in judgment.”  Id. (citation omitted). (more…)

December 10, 2010

The Seventh Circuit Clarifies what Constitutes an “Exceptional Case” under the Lanham Act and Calls for Uniformity among the Circuits

Filed under: Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:10 am

Categories: Trademark (General)
Tags:  Trademark Infringement, Attorney’s Fees, 7th Circuit, Ashly A. Iacullo

by Ashly Iacullo, Trademark Attorney

The Lanham Act allows prevailing parties to recover an award of attorneys’ fees in “exceptional cases.”[1] Cases have been held “exceptional”, for example, where the suit was frivolous, or the infringement in bad faith, or there was misconduct during litigation.

Since its addition to the Lanham Act in 1975, the circuit courts have grappled with what constitutes an “exceptional” case and, accordingly, have set different standards.  In some jurisdictions, the standards for recovery by the plaintiff differ from the standards for recovery by the defendant. (more…)

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