United States District Court, W.D. Oklahoma
JEG POWERSPORTS, LLC, d/b/a STILLWATER HONDA and d/b/a HONDA OF STILLWATER, an Oklahoma Limited Liability Company Plaintiff,
M & N DEALERSHIP VI, LLC, d/b/a BARRY SANDERS HONDA, and d/b/a BARRY SANDERS SUPERCENTER, and d/b/a STILLWATER HONDA CARS, and d/b/a STILLWATER HONDA MOTORS, Defendant.
HEATON OHip U.S. DISTRICT JUDGE.
JEG Powersports, LLC, d/b/a Stillwater Honda and d/b/a Honda
of Stillwater (“JEG”) sued M & N Dealership
VI, LLC, d/b/a Barry Sanders Honda and d/b/a Barry Sanders
Supercenter and d/b/a Stillwater Honda Cars and d/b/a
Stillwater Honda Motors (“M&N”), asserting
tradename infringement and unfair competition/false
advertising claims under the Lanham Act, 15 U.S.C.
§§ 1051-1141, and unfair competition and tradename
infringement claims under Oklahoma law. Plaintiff sought
injunctive relief and monetary damages. Before trial,
plaintiff limited its claims against defendant, asserting
only trademark infringement claims under the Lanham Act, 15
U.S.C. § 1125(a), and Oklahoma common law. Specifically,
JEG alleged that M&N infringed its unregistered
tradenames, “Honda of Stillwater” and
“Stillwater Honda.” The case was tried to a jury,
which found in favor of M&N with respect to
plaintiff's claims based on its tradename “Honda of
Stillwater.” The jury found in favor of plaintiff with
respect to its infringement claims based on its tradename
“Stillwater Honda” and awarded plaintiff damages
in the amount of $160, 000.00. The court then concluded
plaintiff was entitled to injunctive relief, but not enhanced
damages. Plaintiff now seeks to recover its
attorney's fees and litigation expenses pursuant to 15
U.S.C. § 1117(a).
Lanham Act allows the court to award reasonable
attorney's fees to the prevailing party in
“exceptional cases.” 15 U.S.C. § 1117(a).
Neither the Supreme Court nor the Tenth Circuit has recently
considered a fee award under § 1117(a). In Octane
Fitness, LLC v. Icon Health & Fitness, ___ U.S. ___,
134 S.Ct. 1749 (2014), the Supreme Court did, though, analyze
identical language in the Patent Act. 35 U.S.C. § 285.
There the Court rejected the Federal Circuit's conclusion
that a case was exceptional only if the district court found,
by clear and convincing evidence “litigation-related
misconduct of an independently sanctionable magnitude or
determine[d] that the litigation was both brought in
subjective bad faith and objectively baseless.”
Id. at 1756 (internal quotation marks omitted). The
Supreme Court defined an “exceptional” case under
§285 as any which “stands out from others with
respect to the substantive strength of a party's
litigating position (considering both the governing law and
the facts of the case) or the unreasonable manner in which
the case was litigated.” Id. The Court noted
it had previously “explained that in determining
whether to award fees under a similar provision in the
Copyright Act, district courts could consider a
‘nonexclusive' list of ‘factors, '
including ‘frivolousness, motivation, objective
unreasonableness (both in the factual and legal components of
the case) and the need in particular circumstances to advance
considerations of compensation and deterrence.'”
Id. at n.6 (quoting Fogerty v. Fantasy,
Inc., 510 U.S. 517, 534 n.19 (1994)). It also made clear
that a bad faith requirement would render § 285
superflous, stating: “‘We have long recognized a
common-law exception to the general American rule against
fee-shifting-an exception, inherent in the power [of] the
courts that applies for ‘willful disobedience of a
court order or when the losing party has acted in bad faith,
vexatiously, wantonly, or for oppressive reasons.”
Id. at 1758.
acknowledging that Octane Fitness directly concerns
the scope of a district court's discretion to award fees
for an ‘exceptional' case under § 285 of the
Patent Act, ” several appellate courts have used the
case to guide their interpretation of § 1117(a) of the
Lanham Act. Baker v. DeShong, 821 F.3d 620, 623-24
(5th Cir. 2016); Georgia-Pacific Consumer Prods. LP v.
von Drehle Corp., 781 F.3d 710, 720-21 (4th Cir. 2015);
Fair Wind Sailing, Inc. Dempster, 764 F.3d
303, 313-15 (3d Cir. 2014). The court similarly finds
Octane Fitness to be instructive here, “[i]n
light of the Supreme Court's clear guidance under §
285 - and given the parallel purpose, structure, and given
the parallel purpose, structure, and language of
§1117(a) to 285.” Baker, 821 F.3d at 624.
contends this case is exceptional under the Octane
Fitness standard because M&N “clearly,
knowingly, and intentionally co-opted JEG's registered
trademark.” Doc. #102, p. 8. Plaintiff claims
defendant, when its efforts to obtain permission to use the
JEG tradename were unsuccessful, begin infringing the
tradename Stillwater Honda by using the tradename in an
advertising campaign and “on public signage it
continues to display to this day.” Id. at p.
9. Plaintiff asserts that, while defendant was aware of the
confusion that can result among stores with the same or
similar names, it “chose to willfully infringe on a
smaller company.” Id. Plaintiff also argues
that, because M&N failed to engage in “meaningful,
good-faith effort[s] to find a resolution, ” defendant
forced it, “a much smaller entity with relatively
limited resources, into litigation to protect its valuable
tradenames.” Id. at pp. 9, 12.
the totality of the circumstances and applying the Octane
Fitness standard, the court concludes this case does not
merit an award of attorney's fee award under
§1117(a). This is not a situation where there was
“an unusual discrepancy in the merits of the positions
taken by the parties, ” Fair Wind Sailing, 764
F.3d at 315, so that the case was uncommon with respect to
the relative strengths of the parties' substantive
litigating positions. Plaintiff not only dropped multiple
claims before trial, as defendant points out, JEG's
victory at trial was only partial. Its success was limited to
its secondary tradename, “Stillwater Honda, ”
with the jury finding in favor of defendant with respect to
plaintiff's primary tradename, “Honda of
Stillwater.” The court previously recognized, when
denying plaintiff's request for enhanced damages, that
defendant did use the name “Stillwater Honda
Cars” after it knew of plaintiff's competing
interest and claim to “Stillwater Honda.” Doc.
#100, p. 10. However, there was a reasonable dispute over
whether the tradename had acquired a secondary meaning and
therefore was protectable. In light of that legal
uncertainty, defendant's use of the tradename
“Stillwater Honda Cars” did not amount to willful
or bad faith infringement. Id. It cannot be said here
that there was such disparity between the parties'
litigating positions that the present case “stands out
from others” so that fees are warranted under the first
prong of the Octane Fitness test.
case also did not involve the sort of “wasteful
procedural maneuvers or dilatory tactics” that are the
hallmark of a case that has been litigated in an unreasonable
manner.” Parks, LLC v. Tyson Foods, Inc., 2017
WL 3534993, at *1 (E.D. Pa. Aug. 17, 2017) (internal
quotation marks omitted). Notably, plaintiff does not argue
otherwise. In its brief JEG does not mention the manner in
which defendant litigated the action, much less assert that
it was unreasonable.
court therefore concludes plaintiff is not entitled under the
Octane Fitness standard to an award of
attorney's fees. It also denies plaintiff's motion
insofar as it seeks, pursuant to 15 U.S.C. § 1117(a), to
recover its litigation expenses.
objects to plaintiff's recovery of costs due to its
failure to comply with LCvR54.1. The court agrees that JEG is
not entitled to an award of costs due to its noncompliance
with the local rule. Plaintiff did not file a bill of costs
and it failed to provide invoices or receipts or otherwise
substantiate any of the invoices for which it seeks
court has concluded that neither the parties' litigation
positions nor defendant's litigation tactics in this case
were “exceptional” enough to merit an award of
attorney's fees to plaintiff under the Lanham Act.
Further, it has not established an entitlement to costs.
Accordingly, plaintiff's motion [Doc. #102] is denied
with respect to its request for attorney's fees and its
request for costs.
IS SO ORDERED.