Rackley Bilt Custom Trailers, Inc. vs Harley Murray, Inc.

Filing 55

ORDER signed by Judge John A. Mendez on 11/22/10 ORDERING that Rackley's MOTION for Attorney Fees 49 is DENIED. (Mena-Sanchez, L)

Rackley Bilt Custom Trailers, Inc. vs Harley Murray, Inc.

Doc. 55

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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF CALIFORNIA

RACKLEY BILT TRAILER SALES, PlaintiffCounterclaim Defendant, v. HARLEY MURRAY, Inc., DefendantCounterclaim Plaintiff.

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Case No. 2:09-CV-01382 JAM-EFB

ORDER DENYING RACKLEY'S MOTION FOR ATTORNEYS' FEES

This matter comes before the Court on Plaintiff-Counterclaim Defendant Rackley Bilt Trailer Sales' ("Rackley") Motion For Attorneys' Fees (Doc. 49). Rackley requests attorneys' fees

pursuant to 15 U.S.C. § 117(a) after prevailing in trial against Defendant-Counterclaim Plaintiff Harley Murray, Inc. ("Murray"). Murray opposes the motion.1

This motion was determined to be suitable for decision without oral argument. E.D.Cal. L.R. 230(g). It was scheduled for a hearing on November 17, 2010. 1
Dockets.Justia.com

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I.

FACTUAL BACKGROUND

Rackley filed a lawsuit in this Court seeking declaratory relief in this trademark and trade dress case. In response to

the lawsuit, Murray filed counterclaims against Rackley claiming trademark and trade dress infringement and unfair trade practices. After a bench trial, the Court entered judgment in

favor of Rackley on each counterclaim brought by Murray and it granted Rackley's request for declaratory judgment. As the

prevailing party, Rackley now seeks an award of attorneys' fees. II. Legal Standard OPINION

The Lanham Act allows for an award of attorneys' fees in "exceptional cases." 15 U.S.C. § 1117(a). The Lanham Act does In the Ninth Circuit,

not define what makes a case exceptional.

a case is exceptional when the case is "either groundless, unreasonable, vexatious, or pursued in bad faith." Cairns v.

Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir. 2002) (internal citations omitted). B. Claims for Fees

Rackley argues that it is entitled to fees because Murray's claims were groundless and unreasonable, the pursuit of those claims was vexatious, and the claims were pursued in bad faith. Murray counters that Rackley is not entitled to fees because Murray did no more than to make a good faith claim of infringement through a cease and desist letter, the issues were novel, and the case presented questions that the Court described as close. Though Rackley prevailed in this lawsuit, the Court finds that this is not an "exceptional case" which would entitle Rackley to 2

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fees. See e.g. Love v. Associated Newspapers, Ltd., 611 F.3d 601, 615-16 (9th Cir. 2010) (upholding the district court's fee award because the plaintiff did not present any evidence except for a misleading and deceptive declaration and the plaintiff did not cite any cases of persuasive value or that were not easily distinguishable); Matrix Motor Co., Inc. v. Toyota Motor Sales, U.S.A., Inc., 120 Fed. Appx. 30, 32 (9th Cir. 2005) (upholding attorneys' fees because the district court found that the plaintiff grossly exaggerated its claims, had no competent evidence to support those claims, and its misconduct during discovery made it very costly and difficult for the defendant to defend against the claims); Cairns, 292 F.3d at 1156 (upholding fee award because the district court found that the dilution of trademark claim was groundless and unreasonable because it had no legal basis since it was based on absurd and almost frivolous contentions). Murray's counterclaims were not groundless, unreasonable, or vexatious. Murray raised colorable legal and factual issues.

Although Murray did not prove a likelihood of confusion, its claims were not objectively unreasonable or coercive. did not pursue the case in bad faith. Furthermore, Murray

Nothing in the record

persuades the Court that Murray's purpose was other than to protect its trade mark and trade dress. The Court's findings of fact and conclusions of law reflect that this was a hard fought and closely contested case. Murray's claims against Rackley were not frivolous and raised debatable issues of law and fact. See Boney, Inc. v.

Boney Services, Inc., 127 F.3d 821, 827 (9th Cir. 1997). Accordingly, the Court finds that as a matter of law this is not an exceptional case within the meaning of Lanham Act Section 35(a) 3

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and, therefore, will not award attorneys' fees to Rackley.

III. ORDER For the reasons set forth above, Rackley's motion for attorneys' fees is DENIED. IT IS SO ORDERED. Dated: November 22, 2010 ____________________________ JOHN A. MENDEZ, UNITED STATES DISTRICT JUDGE

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