Sprint Nextel Corporation v. Middle Man, Inc., The
2:12-cv-02159
D. Kan.Sep 11, 2017Background
- Sprint Nextel filed a suit with thirteen claims including two federal trademark claims and common-law unfair competition against The Middle Man, Inc.; dispute involved alleged use of Sprint’s marks and resale/"unlocking" of phones.
- Early motions: Court denied Middle Man’s motion to dismiss (claims facially plausible) and denied Sprint’s preliminary injunction for lack of irreparable harm.
- Litigation later focused on interpretation of Sprint’s Terms and Conditions and whether Sprint prohibited resale; Sprint voluntarily dismissed its trademark claims after a favorable breach-of-contract ruling but later attempted to revive them without success.
- Middle Man moved for sanctions alleging all claims were baseless; court previously found Sprint had alleged sufficient facts to avoid a spurious-suit finding.
- Middle Man sought attorney fees under 15 U.S.C. § 1117(a) (Lanham Act) and 28 U.S.C. § 1927, requesting $255,000 (a subset of its claimed fees); Sprint opposed as untimely and procedurally deficient and argued fees were unwarranted.
- Court denied Middle Man’s fee motion, granted leave to file billing records, and noted even if exceptionalness were found, improper segregation of trademark-related time would preclude an award.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether this case is "exceptional" under the Lanham Act warranting attorney fees | Sprint argued its claims were legally and factually plausible and litigated reasonably | Middle Man argued Sprint’s trademark claims were baseless and pursued unreasonably, justifying fees | Denied; court found claims were non-frivolous and litigation not unreasonable overall |
| Whether Middle Man complied with procedural requirements for fee motions | Sprint asserted Middle Man’s motion was untimely and failed to comply with D. Kan. R. 54.2(e) (missing time records/affidavits) | Middle Man moved for leave to file billing records and argued merits justified fees | Court granted leave to file billing records but denied fee award on merits (procedural defects weighed against award) |
| Whether Sprint’s voluntary dismissal of trademark claims supports fee award | Sprint maintained dismissal and earlier rulings showed reasonable basis for claims | Middle Man argued the ultimate dismissal/victory on contract claim showed trademark claims were baseless | Court held voluntary dismissal did not prove claims were frivolous; earlier pleadings and denials of dismissal showed a non-frivolous basis |
| Whether failure to segregate trademark-related billing precludes fees even if case were exceptional | Sprint emphasized procedural/segregation defects | Middle Man did not meaningfully segregate time between trademark and other claims | Court noted lack of meaningful segregation would preclude an award even if exceptionalness were found |
Key Cases Cited
- Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545 (2014) (defines "exceptional" and permits discretionary award of fees under totality-of-the-circumstances standard)
- Layne Christensen Co. v. Bro-Tech Corp., 871 F. Supp. 2d 1104 (D. Kan. 2012) (failure to segregate time between claims precludes recovery of fees)