If I win, can I get my attorney’s fees? It’s a common question. Unfortunately, the answer is “probably not.” Under the Lanham Act, a party who prevails in a trademark infringement, false designation of origin, or dilution suit can recover its attorney’s fees only in “exceptional circumstances.” In the Ninth Circuit, that means a plaintiff can get fees when the district court finds the defendant acted “maliciously, fraudulently, deliberately, or willfully.” Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210, 1216 (9th Cir. 1997). A defendant can get its fees when the plaintiff’s case was “groundless, unreasonable, vexatious, or pursued in bad faith.” Stephen W. Boney, Inc. v. Boney Serv. Inc., 1127 F.3d 821, 827 (9th Cir. 1997).
In the last month, STL blogged about two cases in which fees were awarded. By definition, those cases were exceptional. In Horphag Research Ltd. v. Garcia (discussed here) the Ninth Circuit found that defendant Larry Garcia “made deliberate and calculated attempts” to confuse his herbal supplement with plaintiff Horphag’s herbal supplement by “altering quotations from research publications that refer exclusively to Horphag’s product” to make it appear as though they were referring to Mr. Garcia’s product. Given these findings, the Ninth Circuit found the Central District of California did not abuse its discretion in awarding fees.
Closer to home, in Derek Andrew, Inc. v. Poof Apparel Corp. (discussed here), the Western District found the defendant copied the plaintiff’s twisted heart logo on the hangtags affixed to its garments. The court found defendant then willfully continued to sell garments with the infringing hangtag after plaintiff notified it of its infringement, and assured plaintiff it would attempt to remove the infringing hangtags from its inventory when it had no intention of doing so. The court concluded “this is an exceptional case in light of Poof Apparel’s conduct after it was notified of the infringing hangtags.” On that basis, it awarded Derek Andrew its fees.
What do these cases reveal about fee awards? Such awards are not unheard of but they still are rare. Even with a strong case you should not expect an award and realistically should hope for one only if you can prove the opposing party’s conduct was truly outrageous.
This is my biggest gripe with the Lanham Act. I think fee awards should be routine.