Pattishall IP Blog

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: http://tushnet.blogspot.com/2011/08/news-article-nominative-fair-use-not.html.  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…)

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