Alliance for Good Government v. Coalition for Bett
919 F.3d 291
| 5th Cir. | 2019Background
- Alliance for Good Government (Alliance) and Coalition for Better Government (Coalition) are New Orleans political nonprofit groups; Alliance adopted a bird logo in the 1960s, Coalition adopted a similar logo later and in 2008 changed to a logo virtually identical to Alliance’s.
- Alliance sued in federal court alleging federal and state trademark infringement and unfair trade practices; sought to enjoin Coalition’s use of both its logo (composite mark) and its trade name (word mark).
- The district court granted partial summary judgment to Alliance, enjoined Coalition from using its logo and trade name, dismissed other claims, and later awarded Alliance $68,237.25 in attorney’s fees under the Lanham Act.
- On appeal, this Court affirmed liability as to the logo (composite mark) but held Coalition’s trade name did not, on the summary judgment record, create a likelihood of confusion; the injunction was modified to permit continued use of the trade name.
- The Court considered Alliance’s entitlement to fees under the Lanham Act’s "exceptional case" standard (as informed by Octane Fitness) and affirmed entitlement to fees but vacated the fee amount and remanded for apportionment because Alliance did not prevail on the trade-name claim.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether this was an "exceptional" Lanham Act case warranting attorney's fees | Alliance: strength of infringement claim and Coalition’s unreasonable litigation conduct justify fees | Coalition: fees improper; nonprofit political speech and other defenses (e.g., laches, different bird species) | Affirmed: district court did not abuse discretion in finding the case "exceptional" and awarding fees |
| Whether the logo (composite mark) infringed Alliance’s mark | Alliance: longstanding use, strong mark, high likelihood of confusion | Coalition: marks differ (eagle v. hawk), laches, lack of confusion | Affirmed liability for logo infringement (prior opinion) |
| Whether Coalition’s trade name (word mark) infringed Alliance’s mark | Alliance: trade name likely to cause confusion | Coalition: trade name is "differently-worded," no likelihood of confusion | Reversed as to the trade name injunction; Coalition may continue using its name |
| Proper scope/amount of fee award | Alliance: seeks full fees incurred and anticipated reply fees | Coalition: fees should be reduced because Alliance did not prevail on all claims; apportionment required | Remanded: entitlement affirmed, but district court must apportion and adjust fee award to cover only work on successful Lanham Act claim (logo) |
Key Cases Cited
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (defines "exceptional" for fee-shifting and permits flexible, discretionary standard)
- Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559 (2014) (appellate review of fee determinations is for abuse of discretion)
- Baker v. DeShong, 821 F.3d 620 (5th Cir. 2016) (applies Octane Fitness reasoning to Lanham Act fee provision)
- Procter & Gamble Co. v. Amway Corp., 280 F.3d 519 (5th Cir. 2002) (apportionment of fees when only some claims qualify under Lanham Act)
- Gracie v. Gracie, 217 F.3d 1060 (9th Cir. 2000) (apportionment principle where Lanham and non-Lanham claims overlap)
- All. for Good Gov’t v. Coal. for Better Gov’t (Alliance I), 901 F.3d 498 (5th Cir. 2018) (previous panel decision affirming logo infringement and addressing other defenses)