805 F. Supp. 2d 551
N.D. Ill.2011Background
- Plaintiffs allege Google infringed the unregistered Android mark with Google’s use of the Android OS, while Plaintiffs previously abandoned the Android Data mark in a prior ruling.
- The court previously granted summary judgment for Google on all counts of the Second Amended Complaint and dismissed most of Google's counterclaims, with judgment entered in early 2011.
- On March 22, 2011, Google moved for attorney’s fees under 15 U.S.C. § 1117(a) and for sanctions under 28 U.S.C. § 1927; Plaintiffs moved to strike these motions.
- The court evaluated whether the case qualified as an “exceptional” trademark case and whether sanctions against plaintiffs’ counsel were warranted.
- The court denied Plaintiffs’ strikes and denied Google’s motions for Lanham Act fees and § 1927 sanctions, concluding the case was not exceptional and sanctions were not appropriate.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Proper procedural basis for §1117(a) fees | Rule 59(e) governs post-judgment fees under Hairline Creations. | Rule 54(d)(2) governs §1117(a) fees; timely under the March 11, 2011 judgment date. | Rule 54(d)(2) applies; timely motion. |
| Timeliness of Google's §1117(a) fee motion | Judgment date used for filing window; December 17, 2010 date controls. | Judgment entered March 11, 2011; motion filed March 22, 2011 within permissible period. | Motion timely under March 11, 2011 judgment date. |
| Whether the case is exceptional under §1117(a) | Plaintiffs’ conduct was abusive and warranted fees. | Overall case not exceptional; defenses had colorable basis; some alleged missteps but not extortionate. | Not an exceptional case; no §1117(a) fees awarded. |
| Whether §1927 sanctions against Murphy and Fleming are warranted | Sanctions justified for improper conduct and multiplied proceedings. | Murphy’s conduct was aggressive but not sanctionable; Fleming not sanctionable; some conduct was unreasonable but not vexatious. | §1927 sanctions denied for both Murphy and Fleming. |
Key Cases Cited
- Nightingale Home Healthcare, Inc. v. Anodyne Therapy, LLC, 626 F.3d 958 (7th Cir. 2010) (exceptional-case standard for Lanham Act fees; focus on reasonable basis)
- Hairline Creations, Inc. v. Kefalas, 664 F.2d 652 (7th Cir. 1981) (Hairline ties §1117(a) fees to judgment (rule), later treated as outlier)
- S Industries, Inc. v. Centra 2000, Inc., 249 F.3d 625 (7th Cir. 2001) (illustrates Rule 54(d)(2) usage for fee petitions despite Hairline)
- Door Systems Inc. v. Pro-Line Door Systems, Inc., 126 F.3d 1028 (7th Cir. 1997) (fee petitions may proceed under Rule 54(d)(2))
- Exch. Nat. Bank of Chicago v. Daniels, 763 F.2d 286 (7th Cir. 1985) (context for fees and miscellaneous proceedings in Seventh Circuit)
- Jolly Grp., Ltd. v. Medline Indus., Inc., 435 F.3d 717 (7th Cir. 2006) (standards for imposing §1927 sanctions; objective/subjective bad faith)
- Dal Pozzo v. Basic Mach. Co., Inc., 463 F.3d 609 (7th Cir. 2006) (objective bad faith requires reckless indifference; §1927 standard)
- Kotsilieris v. Chalmers, 966 F.2d 1181 (7th Cir. 1992) (vexatiousness standard for sanctions)