Secalt S.A., et al v. Wuxi Shenxi Construction Machi

Filing

FILED OPINION (MICHAEL DALY HAWKINS, M. MARGARET MCKEOWN and MILAN D. SMITH, JR.) AFFIRMED IN PART; REVERSED IN PART; REMANDED., Judge: MMM Authoring, Judge: Costs on appeal are awarded to Jiangsu . FILED AND ENTERED JUDGMENT. [8058921] [10-17007, 11-15066]

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FOR PUBLICATION

UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
SECALT S.A.; TRACTEL, INC.,
Plaintiffs-Appellants,
v.
WUXI SHENXI CONSTRUCTION
MACHINERY COMPANY, LTD.,
Defendant-Appellee.

SECALT S.A.; TRACTEL, INC.,
Plaintiffs-Appellants,
v.
WUXI SHENXI CONSTRUCTION
MACHINERY COMPANY, LTD.,
Defendant-Appellee.

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

No. 10-17007
D.C. No.
2:08-cv-00336-JCMGWF

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

No. 11-15066
D.C. No.
2:08-cv-00336-JCMGWF
OPINION

Appeal from the United States District Court
for the District of Nevada
James C. Mahan, District Judge, Presiding
Argued and Submitted
November 17, 2011—San Francisco, California
Filed February 7, 2012
Before: Michael Daly Hawkins, M. Margaret McKeown, and
Milan D. Smith, Jr., Circuit Judges.
Opinion by Judge McKeown

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COUNSEL
Scott S. Christie (argued), McCarter & English, Newark, New
Jersey, for the plaintiffs-appellants.
James C. Martin, Charles H. Dougherty, Jr., Donna M. Doblick (argued), Clay P. Hughes, Reed Smith LLP, Pittsburgh,
Pennsylvania; Carina M. Tan, Reed Smith LLP, Palo Alto,
California; Ivy Y. Mei, The Law Offices of Ivy Y. Mei,
Mountain View, California, for the defendant-appellee.

OPINION
McKEOWN, Circuit Judge:
Although “[p]rotection of trade dress, no less than of trademarks, serves the [Lanham] Act’s purpose,” Two Pesos, Inc.
v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992), that protection does not extend to designs that are functional. We consider here whether a traction hoist manufactured by Secalt,
S.A., and Tractel, Inc. (collectively “Tractel”) qualifies for
trade dress protection. We agree with the district court that
Tractel did not meet its burden to establish nonfunctionality
and affirm the grant of summary judgment in favor of Jiangsu
Shenxi Construction Machinery Co. (“Jiangsu”). We affirm
the district court’s award of attorney’s fees to Jiangsu upon
finding that this is an “exceptional” case meriting fees. While
the line delineating “exceptional” cases under the Lanham Act
may be murky, this action falls squarely within the realm of
exceptional cases contemplated by the Act.

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FACTUAL AND PROCEDURAL BACKGROUND
Tractel manufactures and sells the Tirak traction hoist,
which is used typically for commercial building projects and
external maintenance, like window washing. These devices
are commonly affixed to suspended platforms to power the
platforms up and down stationary wire ropes. Upon discovering that Jiangsu, a Chinese competitor, exhibited similar looking hoists at a trade show in Las Vegas, Tractel brought suit
claiming that Jiangsu’s hoists infringed the trade dress of the
Tractel traction hoist. The complaint included three counts
against Jiangsu: trade dress infringement under the Lanham
Act; federal unfair competition; and related state law trade
dress and unfair competition claims. This photograph reflects
the design of Tractel’s hoist.

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Tractel alleges that the external design elements of its hoist
deserve trade dress protection. It claims as its trade dress: 1)
a cube-shaped gear box with horizontal fins; 2) a cylindrical
motor mounted in an off-set position on the cube and partially
overhanging the edge of the cube; 3) the cylindrical motor

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including vertical fins on a lower portion and a generally
smooth sheet metal upper cover having a control descent lever
and top cap positioned over the upper end and supported by
rectangular legs; 4) a rectangular control box cantilevered to
the motor by a square shaped member, the control box positioned over the cube, the control box including controls
thereon; and 5) a rectangular frame.
In the district court, Jiangsu argued that Tractel failed to
establish that its claimed trade dress was nonfunctional. Noting that “[e]ven when viewed in the most favorable light, the
admissible evidence submitted by Tractel fails to suggest that
the alleged Tirak trade dress is non-functional,” the district
court granted summary judgment in favor of Jiangsu. The district court also found the action to be “exceptional” under the
Lanham Act and awarded both fees and costs to Jiangsu.
DISCUSSION
I.

TRADE DRESS PROTECTION AND NONFUNCTIONALITY

[1] Trade dress protection under federal law is designed to
promote competition. TrafFix Devices, Inc. v. Mktg. Displays,
Inc., 532 U.S. 23, 28 (2001). Such protection, however, “must
subsist with the recognition that in many instances there is no
prohibition against copying goods and products.” Id. at 29.
Rather, “[t]he physical details and design of a product may be
protected under the trademark laws only if they are nonfunctional . . . .” Clamp Mfg. Co. v. Enco Mfg. Co., 870 F.2d 512,
515 (9th Cir. 1989) (citing Vuitton Et Fils S.A. v. J. Young
Enters., 644 F.2d 769, 772 (9th Cir. 1981)). Were a product’s
functional features protected, then “a monopoly over such
features could be obtained without regard to whether they
qualify as patents and could be extended forever.” Disc Golf
Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir.
1998) (citation omitted).
Under the Lanham Act, Congress imposes a presumption of
functionality, and plaintiff bears the burden of proving non-

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functionality. 15 U.S.C. § 1125(a)(3) (“In a civil action for
trade dress infringement under this chapter for trade dress not
registered on the principal register, the person who asserts
trade dress protection has the burden of proving that the matter sought to be protected is not functional.”). Therefore,
Tractel, as the “one who seeks to establish trade dress protection must carry the heavy burden of showing that the feature
is not functional, for instance by showing that it is merely an
ornamental, incidental, or arbitrary aspect of the device.”
TrafFix, 532 U.S. at 30. In cases of product design, the
Supreme Court has counseled “that design, like color, is not
inherently distinctive.” Wal-Mart Stores, Inc. v. Samara
Bros., 529 U.S. 205, 212 (2000).
[2] In conducting the functionality analysis, which is a
question of fact, we must be mindful that “‘[f]or an overall
product configuration to be recognized as a trademark, the
entire design must be nonfunctional.’ ” Leatherman Tool Grp.
v. Cooper Indus., 199 F.3d 1009, 1012 (9th Cir. 1999) (quoting Clamp, 870 F.2d at 516); see also Tie Tech, Inc. v. Kinedyne Corp., 296 F.3d 778, 786 (9th Cir. 2002) (foreclosing a
finding of nonfunctionality where “ ‘the whole is nothing
other than the assemblage of functional parts’ ” (quoting Leatherman, 199 F.3d at 1013)). “De facto” functionality means
that the “design of a product has a function, i.e., a bottle of
any design holds fluid,” whereas “de jure” functionality
means that the “product is in its particular shape because it
works better in this shape.” Leatherman, 199 F.3d at 1012
(citation omitted). “[B]efore an overall product configuration
can be recognized as a trademark, the entire design must be
arbitrary or non de jure functional.” Id.
[3] Tractel claims that the overall exterior appearance of its
hoist is nonfunctional because the hoist’s design—wherein
the component parts meet each other at right angles—
demonstrates a “cubist” look and feel. Its engineering manager testified that the hoist’s “cube shape was part of the
design look” and that the fins were supposed to be “modern”

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and “flashy.” Tractel touts the “singular exterior design” that
sets its hoist apart from those of its competitors by presenting
evidence that its hoist has “more square edges” and a “rectangular look.”1 Tractel’s fundamental misunderstanding—which
infects its entire argument—is that the presumption of functionality can be overcome on the basis that its product is visually distinguishable from competing products. While such
distinctive appearance is necessary, it is here insufficient to
warrant trade dress protection.
Our decision in Leatherman is determinative and underscores the fallacy of Tractel’s approach. The court in Leatherman was faced with competing multifunction pocket tools that
resembled the classic “Swiss army knife.” 199 F.3d at 1010.
The defendant’s products contained only “small but not particularly visible differences” from the plaintiff’s product. Id.
Nonetheless, we reversed a jury finding of infringement
because:
To be sure, the [pocket tool] has an appearance, as
every physical object must. There is no evidence,
however, that anything about that appearance (other
than the Leatherman name) exists for any nonfunctional purpose. Rather, every physical part of the
Leatherman [tool] is de jure functional. . . . [T]he
evidence showed, as in Textron, that “the product is
in its particular shape because it works better in this
shape.”
Id. at 1013 (quoting Textron, Inc. v. U.S. Int’l Trade Comm’n,
753 F.2d 1019, 1025 (Fed. Cir. 1985)).
[4] Just as in Leatherman, Tractel’s hoist has an exterior
appearance, as every object must; but there is no evidence that
anything about the appearance exists for any nonfunctional
1

The briefs and record in this case were filed under seal; however, nothing we discuss in this opinion is proprietary or confidential.

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purpose. Rather, every part is de jure functional. A piece of
industrial machinery with “rectangular” components that meet
each other at “right angles,” without more, is wholly insufficient to warrant trade dress protection. It is not enough to say
that the design portrays a “cubist” feel—so does a square
table supported by four legs. The fins may be attractive but
they serve a functional purpose. And the cube-shaped gear
box is simply housing. Except for conclusory, self-serving
statements, Tractel provides no other evidence of fanciful
design or arbitrariness; instead, here, “the whole is nothing
other than the assemblage of functional parts, and where even
the arrangement and combination of the parts is designed to
result in superior performance, it is semantic trickery to say
that there is still some sort of separate ‘overall appearance’
which is non-functional.” Id.
[5] As evidence of nonfunctionality, Tractel points to a
United States design patent issued to Griefzug Hebezeubau
GmbH. To be sure, the Supreme Court has recognized that a
“producer can ordinarily obtain protection for a design that is
inherently source identifying (if any such exists) . . . by securing a design patent or a copyright . . . .” Wal-Mart, 529 U.S.
at 214.2 Design patent protection, which is limited, extends
only to “any new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171; see also Manual of
Patent Examining Procedure § 1504.01 (8th ed. rev. July
2010). Such protection extends only to “the appearance of the
article and not structural or utilitarian features.”
[6] Courts have uniformly held that a design patent, without more, is insufficient to prove that a design is nonfunc2

Tractel also argues that its trade dress serves as a source identifier to
the public. This argument misses the mark because “[w]hether a feature
is functional has no direct bearing on whether it plays a source-identifying
role. The functionality analysis should not be conflated with the inquiry
into whether the purchasing public associates the dress with a particular
source.” Clicks Billiards Inc. v. Sixshooters, Inc., 251 F.3d 1252, 1260
(9th Cir. 2001) (internal quotation marks omitted).

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tional. See McCarthy on Trademarks and Unfair Competition,
§ 7.93 (4th ed. 2010) (“While a design patent is some evidence of nonfunctionality, alone it is not sufficient without
other evidence.”). In Krueger Int’l, Inc. v. Nightingale Inc.,
then-District Judge Sotomayor collected cases and concluded
that “[a]t best, a design patent can only help rebut the functionality defense; it cannot do the whole job of proving inherent distinctiveness. The plaintiff still needs to show that, in its
market at the time of the alleged infringement, the design is
both ornamental and deserving of trade dress protection.” 915
F. Supp. 595, 605 (S.D.N.Y. 1996), overruled on other
grounds by Landscape Forms, Inc. v. Columbia Cascade Co.,
113 F.3d 373 (2d Cir. 1997). Other than conclusory assertions
about the design patent, Tractel offers no other relevant evidence. Because Tractel is unable to present evidence of nonfunctionality, it fails to demonstrate that the exterior design
and appearance of its hoist deserve trade dress protection.
Tractel’s reliance on the design patent is further problematic for a number of reasons. To begin, Tractel baldly asserts
its claimed trade dress is protected by the patent and yet offers
no analysis and proffers no evidence of any connection with
the design or the designer. Nor is there any evidence the
patent has been assigned or licensed to Tractel, or that Tractel
has any relationship to the patent. The chain becomes even
more attenuated based on the issuance of the patent in the
year 2003, more than twenty years after Tractel started selling
its hoist in the United States. See 35 U.S.C. § 102(b) (“A person shall be entitled to a patent unless . . . the invention was
. . . on sale in this country, more than one year prior to the
date of the application for patent in the United States.”). And
finally, Tractel’s purported trade dress does not even match
the design in the patent.3 For example, the patent drawings do
3

We recognize that were this a design patent infringement case, the figures in the patent, not Tractel’s commercial product, would be the baseline
design. See Payless Shoesource, Inc. v. Reebok Int’l Ltd., 998 F.2d 985,
990 (Fed. Cir. 1993) (“Under the test set forth by the Supreme Court [in

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not contain legs, whereas Tractel explicitly claims support
“by rectangular legs” as a distinctive feature. In short, Tractel
doesn’t have a leg to stand on via the design patent.
Tractel also criticizes the district court for failing to cite the
four Disc Golf factors in analyzing functionality: “(1) whether
the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the
utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.” Disc Golf, 158 F.3d at 1006.
These factors certainly illuminate the functionality analysis,
but instead of aiding Tractel, they further support the district
court’s finding of functionality.
[7] Disc Golf teaches that “[a] product feature need only
have some utilitarian advantage to be considered functional.”
Id. at 1007. Tractel’s claims of its cubist visual effect are
undermined by its own engineering witness who testified that
numerous features of the claimed trade dress serve a function
—round motors can accommodate the rotating cylindrical
shaft, vertical fins can dissipate heat, and the top cap can keep
water and debris from falling into the fan. Absent is any evidence that these functional aspects of the trade dress were
adorned with arbitrary, ornamental embellishments; instead,
Tractel claims that the exterior design has nothing to do with
how the hoist functions internally and that customers consider
how the hoist performs, not how it looks. This argument
undercuts Tractel’s position by demonstrating that hoists are
fungible goods for which customer preferences do not depend
on visual features. See Tie Tech, 296 F.3d at 785 (differentiatGorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871)], infringement of a
design patent requires a showing that the accused design is substantially
the same as the claimed design. . . . Proper application of the Gorham test
requires that an accused design be compared to the claimed design, not to
a commercial embodiment.”).

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ing between features that constitute the benefit that the consumer wishes to purchase, which is unprotected, from
artificial embellishment, which has trademark significance).
Since at least some (and in this case significant) utilitarian
advantage stems from the visual appearance, the presumption
of functionality remains intact.
[8] Under the second Disc Golf factor, a lack of alternative
designs favors a finding of functionality. It is undisputed that
Tractel’s competitors market and sell hoists that look similar,
but not identical, to the Tractel hoist. This does not help Tractel because “[e]ven though many of the [competitor’s hoists]
likely are highly functional and useful, none of them offer
exactly the same features as [Tractel’s hoist].” Leatherman,
199 F.3d at 1013-14. For example, a particular alternative
design might be smaller or larger than Tractel’s hoist. As such
it may be preferred by a customer looking either for a easily
maneuverable hoist, or a heavier duty hoist. The same considerations apply to differences in maintenance costs and ease of
storage. Unfortunately for Tractel, “a customer’s preference
for a particular functional aspect of a product is wholly distinct from a customer’s desire to be assured ‘that a particular
entity made, sponsored, or endorsed a product.’ Whereas the
latter concern encompasses the realm of trademark protection,
the former does not.” Tie Tech, 296 F.3d at 786-87 (quoting
Leatherman, 199 F.3d at 1012).
[9] Next, advertising that touts the utilitarian advantages of
the Tractel design points to functionality. Tractel’s advertising
specifically claims that the angular construction of its hoist
“[a]llows for easier maintenance. [The hoist] does not roll off
of the table. Service people love it.” This direct utilitarian
advantage of the angular design favors functionality.
We consider last whether the particular design results from
a comparatively simple or inexpensive method of manufacture. Since manufacturing costs are generally the same in the
hoist industry, about $2,000 per hoist, this factor is neutral.

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Jiangsu contends that alternative designs are subsumed by
“competitive necessity” and therefore need not be considered.
As the Supreme Court noted in Inwood Labs., Inc. v. Ives
Labs., Inc., 456 U.S. 844, 850 n.10 (1982), a product feature
is functional “if it is essential to the use or purpose of the article.” The Court later explained that “[w]here [a product’s]
design is functional under the Inwood formulation there is no
need to proceed further to consider if there is a competitive
necessity.” TrafFix, 532 U.S. at 33. Thus, a determination of
functionality under Inwood may be seen as short circuiting
some of the Disc Golf factors. See Au–Tomotive Gold, Inc. v.
Volkswagen of Am., Inc., 457 F.3d 1062, 1071 (9th Cir. 2006)
(“As to functionality, we read the Court’s decision [in TrafFix] to mean that consideration of competitive necessity may
be an appropriate but not necessary element of the functionality analysis.”).
[10] Nonetheless, even if the Disc Golf factors are somewhat more expansive than the Inwood formulation, they do
not aid Tractel in meeting its burden of demonstrating nonfunctionality. Tractel’s hoist is, at bottom, a utilitarian
machine with no indication that the visual appearance of its
rectangular exterior design is anything more than the result of
a simple amalgamation of functional component parts. Absent
are any indicia of arbitrary or fanciful design. “To uphold a
finding of infringement here . . . would suggest that the general appearance of almost any unpatented product rarely if
ever could be copied faithfully. That is not the law.” Leatherman, 199 F.3d at 1011. The form of Tractel’s hoist follows its
function, making the hoist a classic example of “de jure”
functionality. We affirm the district court’s determination that
Tractel did not present evidence sufficient to create a triable
issue as to the nonfunctionality of its claimed trade dress.
II.

EXCEPTIONALITY AND ATTORNEY’S FEES

[11] Section 35(a) of the Lanham Act provides that “[t]he
court in exceptional cases may award reasonable attorney fees

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to the prevailing party.” 15 U.S.C. § 1117(a). An action may
be considered exceptional “[w]hen a plaintiff’s case is
groundless, unreasonable, vexatious, or pursued in bad faith.”
Stephen W. Boney, Inc. v. Boney Servs., 127 F.3d 821, 827
(9th Cir. 1997) (internal citation and quotation marks omitted). The district court concluded that “the plaintiffs were
unable to provide the court with any evidence to support their
assertion that the trade dress was not functional.” It further
found that:
“[T]he mere absence of bad faith on [Tractel’s] part
does not render it ineligible for attorney’s fees.”
[Tractel does] not provide the court with any evidence that there were “debatable issues of law and
fact” with regards to the trade dress. They assert
rights in the design patent to rebut the defendant’s
‘unreasonable’ argument, yet fail to produce evidence that they own the design patent or that the true
owner assigned the rights to them.
In light of these factors, Tractel’s continued prosecution of its
claims was held by the district court to be “unreasonable.”
We review de novo the district court’s legal determination
that an action is “exceptional” under the Lanham Act; however, once an action is determined to be exceptional, the district court’s decision to award attorney’s fees is reviewed for
an abuse of discretion. Earthquake Sound Corp. v. Bumper
Indus., 352 F.3d 1210, 1216 (9th Cir. 2003).
[12] The line distinguishing exceptional cases from nonexceptional cases is far from clear. It is especially fuzzy
where the defendant prevails due to plaintiff’s failure of
proof. We have previously held that an action is exceptional
under the Lanham Act if the plaintiff has no reasonable or
legal basis to believe in success on the merits. See Cairns v.
Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir. 2002) (“The
false advertisement claim was groundless and unreasonable

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because the statements in the advertisements at issue were
true and [plaintiff] had no reasonable basis to believe they
were false.”); id. (“the dilution of trademark claim was
groundless and unreasonable because it had no legal basis”).
In other words, exceptional cases include instances where
plaintiff’s case is frivolous or completely lacking in merit.
[13] Although Tractel does not ultimately prevail, were it
able to provide some legitimate evidence of nonfunctionality,
this case would likely fall on the unexceptional side of the
dividing line. When summary judgment motions were heard,
the parties had been in discovery for almost two years, taken
multiple depositions, and compiled substantial documents.
Yet, Tractel could not identify the aesthetic value of the exterior design, and was reduced to arguing that it was pursuing
a “cubist” look and feel even though its own witnesses undercut this argument.
[14] In addition, months before the summary judgment
proceedings, the Northern District of Georgia, in a separate
action regarding the same claimed trade dress, denied Tractel’s motion for a preliminary injunction because “there’s
nothing about [Tractel’s] design that is arbitrary, incidental or
ornamental.” The court went even further: “Each of the features of the alleged trade dress, based on the evidence that
I’ve heard, serve a function in the operation of the hoist. . .
. There’s an utter failure of evidence . . . .” Although the
Georgia decision was made at the preliminary injunction
stage, Tractel was on notice that even on its own motion for
relief, there was “an utter failure” of proof. Given that evidence of nonfunctionality would be primarily in Tractel’s possession, its inability to demonstrate nonfunctionality in the
Georgia case seriously undercuts its arguments that it was
raising “debatable issues of law and fact” in this action. Stephen W. Boney, Inc., 127 F.3d at 827.
As it turned out, the testimony at summary judgment in
Nevada played out just like in Georgia—there was an utter

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failure of proof. Tractel failed to “provide the court with any
evidence that there were ‘debatable issues of law and fact’
with regards to the trade dress.” From its own witnesses,
Tractel at best offered either unsupported or conclusory
claims about the design. Fatal to its claim was the testimony
of its own witnesses who honestly laid out the functional
nature of the design. Lacking was any evidence, like engineering notebooks or testimony from the designers, about
design or aesthetics. Even more devastating was the testimony
of third-party witnesses called by Tractel who laid bare the
claim of nonfunctionality. For example, they testified that the
fins play an important function of dissipating heat and are not
for aesthetics. Likewise, the shape of the hoist is practical
because it fits in confined construction sites and it is “more
efficient and more compact” than some of the other hoists on
the market. One of Tractel’s distributors, who was also a hoist
industry professional, summed up the functional reality of the
Tractel hoist:
[T]he entire design is predicated on function from
what I’ve seen, and again as with most hoist manufacturers, every element on there is critical to the
design otherwise they wouldn’t waste the money or
the weight which again comes back to the weight is
the key component. So in my opinion every element
on there is important to the function.
Faced with this evidence, the slim reed offered by Tractel
is a design patent for a hoist that does not mirror the Tractel
hoist. Tellingly, Tractel does not offer evidence that it has any
claim or rights in the patent or even that it is a valid patent.
Although we do not favor a mini patent trial within the trade
dress context, Tractel cannot simply raise the specter of a
third-party patent and hope it will serve to support nonfunctionality. We need not decide whether, under different circumstances, a trade dress claimant could rely on its own
identical design patent to overcome the lack of any other evidence of nonfunctionality, though the case law suggests other-

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wise. Nonetheless, Tractel cannot even make that claim.
Simply pointing to a design patent with similarities (and differences) to its claimed trade dress is insufficient to raise a
“debatable issue of law or fact.”
[15] Although the timing of Tractel’s suit could be considered suspicious, such preemptive suits are not uncommon in
intellectual property matters. Even if Tractel had an ulterior
anti-competitive motive, had it made a colorable claim, that
factor would weigh in our analysis. See Mennen Co. v. Gillette Co., 565 F. Supp. 648, 657 (S.D.N.Y. 1983), aff’d, 742
F.2d 1437 (2d Cir. 1984) (attorney’s fees justified where suit
was filed “as a competitive ploy”). Instead, Tractel’s action
appears to be a conscious, albeit misguided, attempt to assert
trade dress rights in a non-protectable machine configuration.
We affirm the district court’s finding that this is an exceptional case meriting attorney’s fees under 15 U.S.C.
§ 1117(a).
III.

AWARD OF ATTORNEY’S FEES

The district court awarded Jiangsu $836,899.99 as attorney’s fees and non-taxable costs. We outlined the path for fee
calculation in Intel Corp. v. Terabyte Int’l, Inc.:
When it sets a fee, the district court must first determine the presumptive lodestar figure by multiplying
the number of hours reasonably expended on the litigation by the reasonable hourly rate. Next, in appropriate cases, the district court may adjust the
‘presumptively reasonable’ lodestar figure based
upon the factors listed in Kerr v. Screen Extras
Guild, Inc., 526 F.2d 67, 69-70 (9th Cir. 1975), that
have not been subsumed in the lodestar calculation.
6 F.3d 614, 622 (9th Cir. 1993) (internal citations omitted).
Although the district court did not parse out the lodestar calculation or the Kerr factors, its order first discussed and

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rejected Tractel’s arguments, and then adopted the lodestar
calculation performed by Jiangsu. On appeal, Tractel raises
again the arguments already rejected by the district court. The
district court’s analysis is amply supported by the record.
Tractel first claims that the rates charged by Jiangsu’s
attorneys—$320 to $685 per hour—exceeded prevailing rates.
Jiangsu’s attorneys explained that the rates “reflect a negotiated discount from market rates,” and are “well within the
range for comparably-experienced attorneys” because they
“take into account the experience of the individual attorney,
the geographic location of that attorney’s practice, and
publicly-available information concerning rates charged by
similar law firms.” The district court did not abuse its discretion in awarding the hourly rate.
According to the district court, the time spent by Jiangsu’s
attorneys was reasonable. Even though Jiangsu’s attorneys
tersely testified that the fees incurred were “reasonable and
necessary” to defend against Tractel’s claims, twenty-two
months of discovery, including foreign language documents
and multiple motions to compel, numerous transnational inperson depositions with interpreters, cross-motions for summary judgment, and a motion to exclude expert testimony,
support the reasonableness of the time expended.4
Tractel also argues that the bills contain conclusory narratives.5 Given the voluminous billing entries, spanning two
4

Tractel’s reliance on the design patent prompted the need for a patent
attorney. Ivy Mei, an American patent attorney who speaks Mandarin,
interfaced between domestic counsel and the non-English speaking defendant. Given her unique position, her fees were not unreasonable simply
because she spent some of her time on logistics.
5
The allegedly conclusory narratives include “teleconference with
. . . ,” “discuss case . . . ,” “work with . . . ,” “communicate with . . . ,”
“provide translation,” and “SJM.” The first four entries all list the individuals involved, and the remaining two, while not a model of clarity, are
obvious in context. For instance, “SJM” appears to stand for Summary
Judgment Motion.

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years, the district court did not abuse its discretion in awarding fees for such entries, which are few in number. The same
rationale applies to Tractel’s claim that Jiangsu engaged in
block billing. Though a small subset of the billing entries list
numerous tasks performed over multi-hour spans, it was not
an abuse of discretion for the district court to award the associated fees because counsel “is not required to record in great
detail how each minute of his time was expended.” Hensley
v. Eckerhart, 461 U.S. 424, 437 n.12 (1983).6
[16] Finally, attorney’s fees under the Lanham Act may
also include reasonable costs that the party cannot recover as
the “prevailing party.” See Grove v. Wells Fargo Fin. Cal.,
Inc., 606 F.3d 577, 580 (9th Cir. 2010) (“we repeatedly have
allowed prevailing plaintiffs to recover non-taxable costs
where statutes authorize attorney’s fees awards to prevailing
parties.”). The district court awarded $83,229.49 for twelve
such categories of costs, including “legal research,” “deposition expenses,” and “expert witness fee.” Since no further
details or itemization was provided, neither Tractel nor we
can determine whether the costs were in fact reasonably
incurred. The district court abused its discretion by failing to
confirm their reasonableness, and also by failing to “determine whether it is the prevailing practice in the given community for lawyers to bill those costs separate from their hourly
rates.” Id. at 583. We remand to the district court to consider
the reasonableness of these costs.
IV.

TAXABLE COSTS

[17] The district court awarded taxable costs associated
with two interpreters after finding that in at least one instance,
the “dialect of the first interpreter was not the same as that of
the witnesses, and that the second interpreter played a ‘vital
role,’ as she was able to communicate for the parties.” The
6

We acknowledge Tractel’s multiple remaining arguments but are not
persuaded the district court abused its discretion in calculating the fees.

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related holding that the second interpreter was therefore necessary during all four depositions in December 2009 was
therefore not an abuse of discretion. The district court did,
however, abuse its discretion in reimbursing, as translation
costs, expenses associated with an attorney providing informal translation services. Since there is no evidence that attorney Lam was qualified to provide translation services, her
attorney’s fees were not properly charged as “interpreter
costs.” The district court further abused its discretion by
awarding an extra $738.90 in deposition costs that are not
substantiated by the bills.
CONCLUSION
[18] We affirm the district court’s grant of summary judgment, its finding of exceptionality, and its award of attorney’s
fees under the Lanham Act. We reverse the district court’s
award of non-taxable costs and certain taxable costs and
remand for further proceedings.
AFFIRMED in part; REVERSED in part; and
REMANDED. Costs on appeal are awarded to Jiangsu.