United States District Court, D. Utah, Central Division
MEMORANDUM DECISION AND ORDER
Benson United States District Judge
the Court is Defendant's motion for attorneys' fees.
Dkt. 36. Defendant moves the Court, pursuant to Federal Rule
of Civil Procedure 54 and Local Rule 54-2, for an award of
the attorneys' fees it incurred in defending this action.
The motion has been fully briefed. Based on the written
arguments of the parties and on the relevant facts and the
law, the Court enters the following Order.
filed its Complaint on June 20, 2016, alleging trade dress
infringement under the Lanham Act, 15 U.S.C. § 1125(a);
violation of the Utah Truth in Advertising Act, U.C.A. §
13- 11a-3; and common law unfair competition. Dkt. 1.
Plaintiff sought injunctive relief, an award of actual
damages, treble damages, punitive damages, interest, costs
and fees. Id.
response, Defendant filed a Counterclaim for declaratory
judgment of non-infringement and unenforceability of
Plaintiff's trade dress. Dkt. 14. Plaintiff filed its
Answer to Defendant's Counterclaim on September 2, 2016
and the Court entered a Scheduling Order on October 5, 2016.
Dkt. 17, 19-20.
January 4, 2017, Defendant filed a Rule 12(c) motion for
judgment on the pleadings as to Count 1, Plaintiff's
trade dress infringement claim under the Lanham Act. Dkt. 23.
The Court held a hearing on the motion on April 10, 2017, at
which argument was heard from both sides. Dkt. 33. Defendant
presented the packaging of several third-party
competitors' products in an attempt to show that
Plaintiff's was not “inherently distinctive”
for purposes of stating a claim under section 1125(a). The
Court noted that the numerous packages displayed at the
hearing were all “remarkably similar.” Each one
of the products was packaged in a white mylar bag of the same
or similar shape and size; each had a band of a similar hue
of green at the top; and most contained a picture of the
product alongside a piece of fruit. The Court noted that
without more evidence in the record, the Court would grant
summary judgment on the trade dress infringement claim. The
Court denied the Rule 12(c) motion, however, because the
discovery deadline had not yet passed and Plaintiff stated it
intended to take depositions that would factually
substantiate its claims. In denying the motion at the
hearing, the Court stated, “I suppose there is the
possibility that facts will get revealed during this
discovery disclosure window that would allow Plaintiff to
avoid summary judgment.”
to the Scheduling Order, fact discovery ended on May 1, 2017.
At no time during the litigation proceedings or discovery
process did Plaintiff conduct, respond to, or participate in
any discovery to support its claims. Exhibit A. Dkt. 36 at
¶8. On May 10, 2017, Plaintiff filed a Stipulation For
Dismissal with the Court in which all claims were dismissed
with prejudice. Dkt. 34.
this motion, Defendant seeks recovery of $26, 674.00 in
attorneys' fees pursuant to the Lanham Act and the Utah
Truth in Advertising Act, contending it is the
“prevailing party” in this action and that this
is an exceptional case.
both the Lanham Act and the Utah Truth in Advertising Act, a
prevailing party may seek attorneys' fees.
Lanham Act provides that “the court in exceptional
cases may award reasonable attorney fees to the prevailing
party.” 15 U.S.C. § 1117(a).
initiated this action with a Complaint that contained only
cursory allegations. In the eleven months that the case was
pending in this Court, Plaintiff conducted no discovery to
prosecute or support its claims. It made no effort to comply
with Rule 26 initial disclosure requirements; made no expert
witness designations; took no depositions; served no
discovery requests; failed to disclose any witnesses, with
the exception of its CEO; conducted no polls or surveys to
support its allegations; and offered no evidence of damages.
After the discovery deadline had passed, and when notified
that Defendant was about to file a motion for summary
judgment, Plaintiff filed the stipulated dismissal of its
case with prejudice. Although Plaintiff had sought injunctive
relief and an award of damages, including treble and punitive
damages, interest, costs and fees, it received no monetary
settlement or damages, nor injunctive relief of any kind.
Court finds that, given the facts and circumstances of this
action, Defendant is the “prevailing party” for
purposes of awarding attorneys fees under § 1117(a) of
the Lanham Act. See, e.g., Killer Joe Nevada, LLC v.
Leaverton, 2014 WL 3547766, at *6 (N.D. Iowa July 17,
2014) (unpublished) (“The parties do not dispute that
‘the defendant' is a ‘prevailing party, '
if dismissal of Killer Joe's infringement claim is with
prejudice, and I agree.”)(citing Cadkin v.
Loose, 569 F.3d 1142, 1147-49 (9th Cir.
2009)(joining all circuit courts of appeals that had
considered the question, holding that voluntary dismissal
with prejudice of a plaintiff's infringement claims
confers “prevailing party” status on a defendant
under § 505 [copyright infringement actions]);
Advanced Career Techs., Inc. v. John Does 1-10, 100
F.Supp.3d 1105, 1107 (D. Colo. 2015)(plaintiff's
voluntary dismissal of complaint in response to motion to
dismiss did not prevent defendant from receiving attorney fee
award); Atlantic Recording Corp.v. Andersen, 2008 WL
185806, at *2 (D. Oregon Jan. 16, 2008) (unpublished)
(parties' stipulation of dismissal with prejudice of
plaintiff's claims, which reserved the issue of
attorney's fees, was acknowledged by court in its minute
entry, and where court also granted dismissal of
defendant's counterclaim without prejudice to be heard in
another case, was sufficient to deem defendant the
“prevailing party” for purposes of attorneys'
fees); Nemeroff v. Abelson, 620 F.2d 339, 350 (2d
Cir. 1980)(finding that stipulation of dismissal that
expressly reserved the right to move for costs and
disbursements in the action was effective as to prevailing
party); Cantrell v. International Bhd of Elec. Workers,
AFL-CIO, Local 2021, 69 F.3d 456, 458 (10th