Fair Wind Sailing Inc v. H. Dempster
61 V.I. 797
| 3rd Cir. | 2014Background
- Fair Wind sued Dempster and VISS for Lanham Act trade dress infringement and unjust enrichment.
- District Court dismissed both claims and awarded Defendants Virgin Islands attorney’s fees for the entire litigation.
- Fair Wind appealed challenging the trade dress dismissal and the fee award.
- Court affirmed dismissal of both claims, holding trade dress was either nonprotectable or functional and unjust enrichment inadequately pleaded.
- Court vacated the fee award, remanding to determine if fees may be awarded under § 35(a) of the Lanham Act as an exceptional case.
- On remand, district court must apply Octane Fitness standard to decide exclusivity of fee award and apportionment between federal and territorial claims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Fair Wind adequately pleaded trade dress. | Fair Wind described a composite dress identifying its business. | Dress is not adequately described and is largely functional. | Trade dress claim dismissed. |
| Whether Fair Wind's trade dress is nonfunctional and protectable. | Composite elements create a protectable look. | Elements are functional or fail to create a distinct look. | Not protectable; dress deemed functional. |
| Whether Fair Wind adequately pleaded unjust enrichment. | Dempster and VISS were enriched by improper conduct. | No specific facts showing enrichment were pled. | Unjust enrichment claim dismissed. |
| Whether the district court correctly awarded Virgin Islands fees for the entire case under § 541. | Fees should subtract federal claims; inappropriate for full award. | Fees incurred were intertwined; full award justified. | Remanded to apportion fees; full award not affirmed. |
| Whether fees for the Lanham Act claim may be awarded under § 35(a) as an exceptional case following Octane Fitness. | Lanham Act fees may be awarded if exceptional. | Exceptional standard should apply; district court should decide on remand. | Octane Fitness standard adopted; remand to determine exceptionalacy. |
Key Cases Cited
- Ashcroft v. Iqbal, 556 U.S. 662 (U.S. 2009) (pleading must contain more than mere conclusory statements)
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (U.S. 2007) (plausibility pleading standard)
- Rose Art Indus., Inc. v. Swanson, 235 F.3d 165 (3d Cir. 2000) (trade dress elements; protectable composite look must exist)
- McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, 511 F.3d 350 (3d Cir. 2007) (elements of trade dress must be articulated)
- TrafFix Devices, Inc. v. Mktg. Displays, 532 U.S. 23 (U.S. 2001) (functional vs. nonfunctional trade dress analysis)
- Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (U.S. 2003) (trade dress protection does not shield plagiarism absent source identification)
- Click Billiards, Inc. v. Sixshooters, Inc., 251 F.3d 1252 (9th Cir. 2001) (composite elements may form nonfunctional trade dress)
- Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749 (S. Ct. 2014) (definition of 'exceptional' for fee awards in analogous contexts)
- Figueroa v. Buccaneer Hotel Inc., 188 F.3d 172 (3d Cir. 1999) (apportionment of fees between claims under 5 V.I.C. § 541)
- Securacomm Consulting, Inc. v. Securacom Inc., 224 F.3d 273 (3d Cir. 2000) (Lanham Act fee discretion guidance)
- Green v. Fornario, 486 F.3d 100 (3d Cir. 2007) (two-step analysis for exceptional fee awards)
- Ferrero U.S.A., Inc. v. Ozak Trading, Inc., 952 F.2d 44 (3d Cir. 1991) (requirement of culpable conduct before fee awards)