Roor v. SMOKE THIS TOO, LLC
0:16-cv-61439
S.D. Fla.Jul 14, 2017Background
- Sream, Inc. (doing business as Roor USA) sued Smoke This Too, LLC for trademark infringement, counterfeiting, false designation of origin, and FDUTPA violations alleging sale of counterfeit RooR water pipes.
- Defendant moved to dismiss for lack of subject-matter jurisdiction, arguing Sream lacked a valid license/standing to enforce the RooR trademarks.
- The Court granted Defendant’s motion and dismissed the Amended Complaint without prejudice for lack of standing, declining supplemental jurisdiction over the FDUTPA claim.
- After dismissal, Defendant sought costs for a corporate-representative deposition and attorney’s fees under the Lanham Act (15 U.S.C. § 1117(a)).
- The central legal question became whether Defendant is a “prevailing party” entitled to costs/fees given the dismissal without prejudice.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Defendant is a "prevailing party" after dismissal without prejudice for lack of standing | Dismissal did not decide merits; Sream may refile; no material alteration of legal relationship | Defendant prevailed on critical jurisdictional/standing issue and therefore is the prevailing party | Not prevailing: dismissal without prejudice does not materially alter parties' legal relationship |
| Whether costs are recoverable under Rule 54(d)/§ 1920 | Costs not appropriate because no prevailing party | Costs requested for deposition; should be taxable if prevailing party | Denied because threshold prevailing-party requirement not met |
| Whether attorney’s fees under 15 U.S.C. § 1117(a) are warranted | Fees not proper absent prevailing party and exceptional-case finding | Fees sought as prevailing party; argued standing dismissal compels new claims later | Denied: Defendant not prevailing; court did not reach exceptional-case inquiry |
| Preclusive effect of jurisdictional dismissal | Dismissal without prejudice leaves plaintiff free to refile; no preclusion | Dismissal on jurisdictional grounds resolves a key issue and forecloses claims | Court: because dismissal was without prejudice it did not foreclose claims; no prevailing-party status |
Key Cases Cited
- Buckhannon Bd. & Care Home, Inc. v. West Virginia Dep't of Health & Human Resources, 532 U.S. 598 (U.S. 2001) (prevailing-party requires court-ordered material alteration of legal relationship)
- Alyeska Pipeline Serv. Co. v. Wilderness Soc'y, 421 U.S. 240 (U.S. 1975) (American Rule: each party bears its own attorney’s fees unless statute provides otherwise)
- Key Tronic Corp. v. United States, 511 U.S. 809 (U.S. 1994) (statutory authorization required for fee awards)
- Smalbein ex rel. Estate of Smalbein v. City of Daytona Beach, 353 F.3d 901 (11th Cir. 2003) (material alteration test for prevailing-party status)
- Stalley v. Orlando Regional Healthcare Sys., Inc., 524 F.3d 1229 (11th Cir. 2008) (dismissal for lack of standing is equivalent to lack of subject-matter jurisdiction and is without prejudice)
- Citizens for a Better Environment v. Steel Co., 230 F.3d 923 (7th Cir. 2000) (a dismissal for want of jurisdiction that forecloses the plaintiff's claim may render defendant prevailing)