SafeRack LLC v. Bullard Company
2:17-cv-01613
D.S.C.Feb 5, 2019Background
- SafeRack sued Bullard under the Lanham Act and South Carolina Unfair Trade Practices Act (SCUTPA), alleging Bullard's use of orange on gangways/railings infringed SafeRack's trademark and trade dress and sought damages and injunctive relief.
- The Court granted summary judgment to SafeRack on its trademark infringement claim and issued an injunction against Bullard; other claims (damages, unjust enrichment) were denied or unresolved in SafeRack's favor.
- SafeRack moved for attorneys' fees ($237,824) and costs ($19,907.18) under 15 U.S.C. § 1117(a); Bullard opposed the motion.
- The central question was whether this trademark case was "exceptional" under the Octane/Georgia-Pacific standard to justify awarding attorneys' fees to the prevailing plaintiff.
- The Court found Bullard had some partially successful and non-frivolous positions (including excluding SafeRack's expert and prevailing on actual damages) and had ceased selling the allegedly infringing items, so the totality of circumstances did not make the case exceptional.
- The Court denied attorneys' fees but awarded taxable costs limited to items recoverable under 28 U.S.C. § 1920, awarding SafeRack $15,434.13 and disallowing mediator fees, counsel travel/lodging, and minor exhibit purchases.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the case is "exceptional" under § 1117, justifying attorneys' fees | SafeRack: Bullard's positions were frivolous/objectively unreasonable; aggressive litigation tactics; SafeRack incurred substantial fees despite prevailing | Bullard: Raised bona fide defenses and partial successes; positions not frivolous or objectively unreasonable; litigated within bounds | Denied. Court held totality of circumstances did not show unusual discrepancy, unreasonable litigation overall, or need for compensation/deterrence; not exceptional |
| Whether attorneys' fees are needed for compensation/deterrence | SafeRack: Fees warranted because it had to litigate to enforce trademark despite Bullard stopping sales | Bullard: No sales of infringing products; only trade show display; injunction remedies future risk | Denied. No evidence of significant monetary harm; Bullard stopped sales and injunction suffices for deterrence |
| Recoverability of claimed costs under § 1117 and § 1920 | SafeRack: Seeks mediator fees, counsel travel, deposition exhibit costs, reporter/transcript fees | Bullard: Only costs taxable under § 1920 should be awarded | Partial grant. Disallowed mediator fees, counsel travel/lodging, and exhibit purchase; allowed court reporter, transcript, courtroom-related travel/costs totaling $15,434.13 |
| Whether SCUTPA permits attorneys' fees for SafeRack | SafeRack: Award fees under state statute as prevailing plaintiff | Bullard: SCUTPA requires ascertainable monetary loss to award fees | Denied. SafeRack did not show ascertainable monetary loss required for SCUTPA fees |
Key Cases Cited
- Georgia-Pacific Consumer Prod. LP v. von Drehle Corp., 781 F.3d 710 (4th Cir. 2015) (adopts totality-of-the-circumstances test for "exceptional" Lanham Act cases)
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (U.S. 2014) (Supreme Court standard for awarding attorney fees in patent-style "exceptional" cases applied analogously to Lanham Act)
- Verisign, Inc. v. XYZ.COM LLC, 891 F.3d 481 (4th Cir. 2018) (plaintiff bears preponderance burden to prove exceptional case)
- Exclaim Mktg., LLC v. DirecTV, LLC, [citation="674 F. App'x 250"] (4th Cir. 2016) (applies Georgia-Pacific framework to fee awards for prevailing trademark plaintiff)
- People for Ethical Treatment of Animals v. Doughney, 263 F.3d 359 (4th Cir. 2001) (district courts may limit costs to those taxable under § 1920)