United States District Court, N.D. Oklahoma
SATA GMBH & CO. KG, Plaintiff,
JERRY HAUBER, Defendant.
OPINION AND ORDER
V. EAGAN, UNITED STATES DISTRICT JUDGE
before the Court is plaintiff's Motion for Attorneys'
Fees and Brief in Support (Dkt. # 29). Plaintiff asks the
Court to enter a judgment of attorney fees in favor of
plaintiff and against defendant in the amount of $34, 550.
Dkt. # 29, at 1. As defendant has not appeared or defended
this case, the Court enters this opinion and order without
waiting for a response to plaintiff's motion. See
Gibson v. Simm Assocs., Inc., No. 14-CV-0730-CVE-FHM,
2015 WL 363898, at *1 (N.D. Okla. Jan. 27, 2015).
filed this case alleging that defendant sold counterfeit
versions of plaintiff's paint spray guns. Dkt. # 2, at
8-10. Plaintiff asserted claims for trademark counterfeiting,
trademark infringement, and false designation of
origin/unfair competition in violation of the Lanham Act, 15
U.S.C. § 1051 et seq., common law trademark
infringement and unfair competition, and design patent
infringement pursuant to 35 U.S.C. § 289. Dkt. # 2, at
10-15. The same day it filed the complaint, plaintiff filed
an ex parte motion for a temporary restraining order, seizure
order, and preliminary injunction (ex parte motion). Dkt. #
3. The Court denied the ex parte motion as to the temporary
restraining order and seizure order, and ordered that it
would address plaintiff's motion for a preliminary
injunction once defendant had been served and provided an
opportunity to respond to the motion. Dkt. # 8, at 3-4.
was served on May 30, 2017 by personal service. Dkt. # 12, at
1. After defendant was served, the Court ordered him to file,
along with his answer or responsive pleading, a response to
plaintiff's motion for preliminary injunction no later
than June 20, 2017. Dkt. # 14. Defendant failed to file
either a responsive pleading or a response to plaintiff's
motion. On June 21, 2017, plaintiff asked the Court to grant
its motion for preliminary injunction due to defendant's
failure to answer. Dkt. # 16. The Court found plaintiff's
motion for preliminary injunction moot because plaintiff was
entitled to final relief under Rule 55 based on
defendant's failure to answer or file a responsive
pleading within 21 days of service as required by Rule 12(a).
Dkt. # 17, at 1. The Court ordered plaintiff's counsel to
proceed under Rule 55. Id. at 2.
filed a motion for entry of default (Dkt. # 18), which was
denied because plaintiff failed to include information
regarding defendant's military status or competency in
the affidavit supporting its motion. Dkt. # 19. Plaintiff
filed a second motion for entry of default (Dkt. # 20), and
on June 29, 2017, the Clerk of the Court entered default
against defendant. Dkt. # 23. On July 10, 2017, the Court
advised plaintiff that it was appropriate for it to file a
motion for default judgment at that time. Dkt. # 24.
Plaintiff filed a motion for default judgment (Dkt. # 25),
and the Court entered default judgment and a permanent
injunction against defendant on July 18, 2017. Dkt. # 27.
Plaintiff now asks the Court to enter a judgment of attorney
fees in favor of plaintiff and against defendant in the
amount of $34, 550. Dkt. # 29, at 1.
seeks attorney fees pursuant to the Lanham Act, which gives
courts the discretion to award reasonable attorney fees to
the prevailing party in “exceptional” trademark
infringement cases. 15 U.S.C. § 1117(a). The Lanham Act
gives no guidance on what is an exceptional case, but the
Tenth Circuit has determined that an exceptional case is one
in which the trademark infringement is “malicious,
fraudulent, deliberate, or willful.” United
Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d
1219, 1232 (10th Cir. 2000) (citing Bishop v. Equinox
Int'l Corp., 154 F.3d 1220, 1224 (10th Cir. 1998)).
The Court has already determined that defendant willfully
used a counterfeit mark in violation of the Lanham Act. Dkt.
# 29, at 2. Thus, the Court has the discretion to award
plaintiff reasonable attorney fees in this case under §
Tenth Circuit has approved the lodestar method for
calculating reasonable attorney fees under the Lanham Act.
United Phosphorus, 205 F.3d at 1233. Using this
method, “the number of hours reasonably expended on the
litigation multiplied by a reasonable hourly rate”
results in a presumptively reasonable fee. Hensley v.
Eckerhart, 461 U.S. 424, 433 (1983). The court may then
adjust the lodestar based on other factors, such as the time
and labor required, the novelty and difficulty of the case,
skill required, the results obtained, and awards in similar
cases. See Johnson v. Ga. Highway Express, Inc., 488
F.2d 714, 717-19 (5th Cir. 1974); Homeward Bound, Inc. v.
Hissom Mem'l Ctr., 963 F.2d 1352, 1356 (10th Cir.
1992) (noting that district courts should look to the factors
set out in Johnson to guide their calculations and
review of reasonable attorney fees). However, many of the
these factors are properly “subsumed within the initial
calculation of hours reasonably expended at a reasonable
rate.” Homeward Bound, 963 F.2d at 1356
(quoting Hensley, 463 U.S. at 434 n.9). “[T]he
fee applicant bears the burden of establishing entitlement to
an award and documenting the appropriate hours expended and
hourly rates.” Case v. Unified Sch. Dist. No.
233, 157 F.3d 1243, 1249 (10th Cir. 1998).
seeks $34, 550 in attorney fees, representing 127.1 hours of
work by two attorneys. Dkt. # 29. Steven A. Caloiaro, a
lawyer with six years experience as an
intellectual property litigator, performed 110.6 hours of
work at an hourly rate of $275. Dkt. # 29-1, at 7-16. George
M. Miles, a partner with over 30 years experience as a
litigator, performed 16.5 hours at an hourly rate of $250.
Dkt. # 29-2, at 5. Plaintiff has submitted in support of its
motion time records and declarations from both Caloiaro and
Miles stating that the hours and rates billed are reasonable.
See Dkt. ## 29-1, 29-2. The Court will first
consider whether the rates billed are reasonable in this
determine whether an hourly rate is reasonable, courts look
to “the prevailing market rate in the relevant
community.” Malloy v. Monahan, 73 F.3d 1012,
1018 (10th Cir. 1996) (citing Blum v. Stenson, 465
U.S. 886, 895 (1984)). “Unless the subject of the
litigation is ‘so unusual or requires such special
skills' that only an out-of-state lawyer possesses,
‘the fee rates of the local area should be applied even
when the lawyers seeking fees are from another
area.'” Jane L. v. Bangerter, 61 F.3d
1505, 1510 (10th Cir. 1995) (quoting Ramos v. Lamm,
713 F.2d 546, 555 (10th Cir. 1983)). This is a patent and
trademark infringement case that involves counterfeit paint
spray guns. The Court sees no reason why an out-of-state
lawyer would be necessary to litigate these issues, and
therefore, the fee rates of the Northern District of Oklahoma
will be applied.
Court finds that the hourly rate of $250 for Miles is
reasonable. He is a partner at his law firm with decades of
litigation experience, and an hourly rate of $250 is common
for an experienced litigator in this district. See,
e.g., McCrary v. Country Mut. Ins. Co., No.
13-CV-507-JED-PJC, 2016 WL 8118183, at *2 (N.D. Okla. June
22, 2016) (“This Court has routinely allowed hourly
rates of $250 for commercial litigation.”). However,
Caloiaro's hourly rate is inconsistent with the local
market. He has six years of experience and performed the
majority of the work on this case presumably as an associate.
See supra note 1. The Court will reduce
Caloiaro's hourly rate to $175, which is consistent with
the local market and reflective of his skill and experience.