LANARD TOYS LIMITED v. TOYS "R" US-DELAWARE,INC. et al

Filing 559

ORDER overruling 553 Plaintiff's Objections; adopting resolutions set forth in 535 Report and Recommendations and 551 Supplemental Report and Recommendations; granting, in part, and denying, in part, 477 Defendants' Motion to Tax Costs and 518 Defendants' Renewed Motion for Attorneys' Fees; and directing the Clerk of the Court to enter judgment. See Order for details. Signed by Judge Marcia Morales Howard on 6/22/2022. (MHM)

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UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF FLORIDA
JACKSONVILLE DIVISION
LANARD TOYS LIMITED,
Plaintiff,
v.

Case No. 3:15-cv-849-MMH-PDB

TOYS ''R'' US-DELAWARE, INC.,
DOLGENCORP, LLC, and JA-RU,
INC.,
Defendants.
ORDER
THIS CAUSE is before the Court on the matter of attorneys’ fees and
costs. On March 21, 2019, the Court entered an Order (Doc. 468) granting
Defendants’ Motion for Summary Judgment and directing the Clerk of the
Court to enter Final Judgment (Doc. 469) in favor of Defendants on all counts
of the Second Amended Complaint and Demand for Jury Trial (Doc. 103).
Plaintiff appealed and the United States Court of Appeals for the Federal
Circuit affirmed the Court’s Order in a decision issued on May 14, 2020. See
Opinion (Doc. 500).

Having fully prevailed in this Court and on appeal,

Defendants seek an award of the attorneys’ fees and costs incurred in this
action.

See Defendants’ Renewed Motion for Attorneys’ Fees and

Memorandum of Law (Doc. 518; Motion for Fees); Defendants’ Motion to Tax

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Costs Pursuant to Federal Rule of Civil Procedure 54(d)(1), 28 U.S.C. § 1920,
Local Rule 4.18, and for Costs under FDUTPA, and Supporting Memorandum
of Law (Doc. 477; Motion for Costs). The Court referred the Motions to the
Honorable Patricia D. Barksdale, the United States Magistrate Judge assigned
to this case, who issued two reports on the matter.

See Report and

Recommendation (Doc. 535; First Report), entered August 20, 2021, and
Supplemental Report and Recommendation (Doc. 551; Second Report) entered
on February 2, 2022. Over the span of 213 total pages, along with an 834-page
appendix, the Magistrate Judge finds that Defendants are entitled to fees on
two of the four claims raised in this action and further determines that a
reasonable fee award on the two compensable claims is $1,630,203.54. See
First Report at 120; Second Report at 91.

In addition, Judge Barksdale

recommends awarding taxable costs to Defendants in the amount of $21,256.11
and denying Defendants’ request for non-taxable costs.1 See Second Report at
91. For the reasons that follow, the Court finds that the Magistrate Judge’s
recommended award on fees and costs is due to be adopted.

Neither party objected to the Magistrate Judge’s recommendations on costs. As
such, the Court will adopt these recommendations and need not address the issue of costs any
further.
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I.

Standard of Review
The Court “may accept, reject, or modify, in whole or in part, the findings

or recommendations made by the magistrate judge.”

28 U.S.C. § 636(b).

Pursuant to Rule 72, Federal Rules of Civil Procedure (Rule(s)), the Court “must
determine de novo any part of the magistrate judge’s disposition that has been
properly objected to.”

See Rule 72(b)(3); see also 28 U.S.C. § 636(b)(1).

However, a party waives the right to challenge on appeal any unobjected-to
factual and legal conclusions.

See 11th Cir. R. 3-1. 2

As such, the Court

reviews those portions of the Magistrate Judge’s findings to which no objection
was filed for plain error and only if necessary, in the interests of justice. See
id.; see also Thomas v. Arn, 474 U.S. 140, 150 (1985) (“It does not appear that
Congress intended to require district court review of a magistrate [judge’s]
factual or legal conclusions, under a de novo or any other standard, when
neither party objects to those findings.”); Dupree v. Warden, 715 F.3d 1295,
1304-05 (11th Cir. 2013) (recommending the adoption of what would become
11th Circuit Rule 3-1 so that district courts do not have “to spend significant
amounts of time and resources reviewing every issue—whether objected to or
not.”).

The Magistrate Judge properly informed the parties of the time period for objecting
and the consequences of failing to do so. See First Report at 120 n.56; Second Report at 92.
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II.

Reports and Objections
In the First Report, the Magistrate Judge addressed the question of

Defendants’ entitlement to an award of fees on the four claims set forth in the
Second Amended Complaint: specifically, Plaintiff’s claims of copyright
infringement, patent infringement, trade dress infringement under the
Lanham Act, and unfair competition under the Lanham Act, FDUTPA,3 and
Florida common law. Upon consideration of the relevant fee provisions and
applicable law, the Magistrate Judge recommended that the Court enter an
order determining that Defendants “are entitled to an award of fees under the
Lanham Act and FDUTPA but not under the Copyright Act or Patent Act.” See
First Report at 120. Judge Barksdale further recommended that the Court
direct her to “expeditiously prepare a report and recommendation on reasonable
attorney’s fees and non-taxable costs” and defer final rulings on the Motion for
Fees and Motion for Costs pending that determination. Id.
Significantly, Plaintiff did not raise any objections to the Magistrate
Judge’s First Report, thereby waiving any challenge to Judge Barksdale’s
recommended finding that Defendants are entitled to an award of fees under
the Lanham Act and FDUTPA. But, as to her determination that fees are not
warranted under the Copyright Act or Patent Act, Defendants did assert an

The Florida Deceptive and Unfair Trade Practices Act (FDUTPA), section 501.2105
of the Florida Statutes.
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objection.

See Defendants’ Objection to Report and Recommendation on

Defendants’ Entitlement to Attorneys’ Fees (Doc. 530; Objections on
Entitlement), filed September 3, 2021. In their Objections on Entitlement,
Defendants argued that the findings in the First Report are sufficient to
demonstrate their entitlement to fees under those Acts, but if not, the Court
should resolve certain “open factual issues” which, in Defendants’ view, would
demonstrate that fees are warranted. Id. at 5-6.
Alternatively, Defendants asserted that, “even if limited to recovering
fees under the Lanham Act and FDUTPA, Defendants may still recover all or
the vast majority of their requested fees.” Id. at 18. As such, Defendants
“propose[d] that the Court defer ruling on [the stated] objections until the
Magistrate

Judge

has

prepared

a

report

and

recommendation

on

reasonableness.” Id. In Defendants’ view, “[o]nly if the fees are allocated in a
way that the precise statutes under which defendants are entitled to recover
becomes consequential will the Court need to rule on [the stated] objections.”
Id. Plaintiff filed a response on September 17, 2021. See Plaintiff’s Response
to Defendants’ Objection to Report and Recommendation on Renewed Motion
for Attorneys’ Fees (Doc. 531; Response on Entitlement). In its Response on
Entitlement, Plaintiff asserted that the Magistrate Judge correctly determined
that fees were not warranted under the Copyright Act and Patent Act. In
addition, Plaintiff argued that “apportionment and allocation of the fees

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associated with the patent and copyright claims is necessary so that they may
be properly excluded in any fees award.” See Response on Entitlement at 1314.

According to Plaintiff, it would violate preemption principles to allow

Defendants to recover their copyright and patent fees through the FDUTPA
claim. See id. at 10-13.
Considering those arguments, and given that Defendants’ entitlement to
fees under FDUTPA and the Lanham Act was unchallenged, the Court
recommitted the matter to the Magistrate Judge for a recommendation on the
parties’ allocation arguments and the amount of a reasonable award of fees and
non-taxable costs. See Order (Doc. 532), entered September 30, 2021. The
Magistrate Judge requested and received supplemental briefing as to the
reasonable amount of fees, conducted a hearing on the matter, and obtained
additional briefing after the hearing. See Second Report at 2. On February
2, 2022, the Magistrate Judge entered the Second Report.
In the Second Report, Judge Barksdale recommends that the Court find
that a fee award of $1,630,203.54 is reasonable in this case. See Second Report
at 83, 91. The Magistrate Judge used the lodestar method to reach this total,
first determining reasonable rates for the various defense attorneys and
paralegals involved in this lawsuit, see id., Part H, and then calculating the
reasonable number of hours expended, see id., Part I.

In determining

reasonable hours, Judge Barksdale analyzed, at length, the voluminous billing

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records identifying problems such as block billing, insufficient detail,
vagueness, redundancy, excessiveness, and billing for travel time, among other
issues. See id., Part I, ¶¶ 1-6.
Judge Barksdale also addressed the issue of allocation of time between
those claims for which Defendants are entitled to fees (the Lanham Act and
FDUTPA claims) and those for which she believed they are not (the copyright
and patent claims).

See id. at 71-79.

In their billing records, Defendants

allocated each entry into one of four categories: Copyright, Patent, Trade Dress
& FDUTPA, and Joint.4 The allocation issue pertains to those fees categorized
as “joint.”5 Defendants contend that the Court should award the “joint” fees
because the claims in this action are intertwined. See Defendants’ Response
to Court Order Dated October 19, 2021 DE 533 (Doc. 536; Defendants’
Supplemental Brief) at 12-16.

The Magistrate Judge agreed, finding that

Defendants had “satisfied their burden of showing the four claims (copyright,

For ease of reference, the Magistrate Judge organized the billing records located in
various places on the docket into a single chart. See Second Report at 47, Attachments A-B.
4

In the Motion for Fees, Defendants argued that, under FDUTPA, they could recover
all their fees without the need for apportionment. See Motion for Fees at 10, 25-27. Judge
Barksdale appeared to agree, observing in the Second Report that FDUTPA places the burden
on Plaintiff to show that the copyright and patent claims were “beyond the scope” of the
FDUTPA claim, and Plaintiff neither acknowledged nor attempted to satisfy this burden. See
Second Report at 72-73, 75. Nevertheless, in an attempt to moot Plaintiff’s preemption
argument, Defendants agreed to withdraw their request for any patent or copyright-only fees.
See Defendants’ Response to Court Order Dated October 19, 2021 DE 533 (Doc. 536;
Defendants’ Supplemental Brief) at 12-13, 16 n.9; see also Second Report at 75. As such,
those fees are not at issue here. Additionally, Plaintiff does not challenge Defendants’
designation of any entries they identified as Trade Dress & FDUTPA-only.
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patent, trade dress, and FDUTPA) are intertwined and share a common core of
facts and related legal theories.”

See Second Report at 73.

However, in

reviewing Defendants’ designations in the billing records, the Magistrate Judge
found that further allocation was possible and determined that “unallocated
hours for work on the patent and copyright claims amount[ed] to approximately
three percent of the hours . . . .” Id. at 77-79 & n.67.
The Magistrate Judge then considered how to calculate the number of
reasonable hours given the foregoing issues. Because the billing records are
quite voluminous, with nearly 3500 entries, rather than conduct a line-by-line
analysis of each entry, Judge Barksdale applied an across-the-board percentage
reduction of thirty percent. See Second Report at 51, 79. Judge Barksdale
explained that the thirty-percent reduction selected was to “account for block
billing, insufficient detail, vagueness, redundancy or duplication, excessiveness,
and other issues affecting reasonable hours . . . as well as allocation conceded
by the defendants.” Id. at 79. The reasonable rates multiplied by the total
hours requested, discounted by thirty percent, total $1,630,203.54. 6

The

Both parties appear to believe that the Magistrate Judge committed a clerical error
when she multiplied the reasonable rates by the total hours, without excluding the hours
Defendants designated as copyright and patent-only, before applying the percentage
reduction. See Plaintiff’s Objections at 3-4; Defendants’ Response at 2-4. However, the
Magistrate Judge’s selection of a thirty-percent across-the-board reduction was intended to
account for the exclusion of all copyright and patent-only hours. See Second Report at 79; see
also Order (Doc. 558) at 1 n.1. The Magistrate Judge did not rely on the designations included
in the billing records based on her observation that the numbers in Defendants’ briefing did
not align with its billing records. Indeed, the Magistrate Judge identified numerous entries
characterized as “Joint” in the billing records that should have been allocated to a particular
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Magistrate Judge then considered whether this amount was a reasonable fee
award in this case and based on her thorough review of the record, and
familiarity with the history of the case and the parties, she determined that it
was. Id. at 83.
Defendants submit only a conditional objection to the Magistrate Judge’s
Second Report.
Recommendation

See Defendants’ Conditional Objections to Report and
(Doc.

529)

and

the

Supplemental

Report

and

Recommendation (Doc. 551) on Defendants’ Entitlement to Attorneys’ Fees and
Costs (Doc. 552; Conditional Objection), filed February 16, 2022. Specifically,
Defendants maintain their previous Objections on Entitlement “only in the
event that the Court reduces the award of attorneys’ fees recommended by the
Magistrate Judge’s [Second Report] in the amount of $1,630,203.54.” Id. at 2.7
Defendants advise the Court that they withdraw this Objection, “[i]f there is no

claim. See Second Report at 76-79, n.67. Rather than engage in a line-by-line analysis, and
to avoid a double discount, the Magistrate Judge accounted for all allocation in the thirty
percent reduction. See Second Report at 50 (explaining that to avoid doubly discounting
hours, courts are not permitted to conduct both an hour-by-hour analysis and an across-theboard reduction of hours (citing Bivins v. Wrap It Up, Inc., 548 F.3d 1348, 1351-52 (11th Cir.
2008))); id. at 79; see also Order (Doc. 558) at 1 n.1. As such, to the extent Plaintiff objects to
the Second Report based on a purported clerical error, this objection is due to be overruled.
However, the Court does clarify a scrivener’s error in the Second Report. On page
eighty-three of the Second Report, the sentence that reads “Thirty percent of that amount [the
lodestar] is $1,630,203.54,” is more correctly stated “The lodestar amount reduced by thirty
percent is $1,630,203.54.”
Defendants subsequently agreed to accept $1,490,554.42, in light of Plaintiff’s
argument that the Magistrate Judge committed a clerical error. See Defendants’ Response
to Plaintiff Lanard Toys Limited’s Objection to the Supplemental Report and
Recommendation (Doc. 557; Defendants’ Response) at 1-2, 4, 15.
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reduction of” the recommended attorneys’ fees award. Id. Plaintiff filed a
response to Defendants’ Conditional Objection on February 23, 2022.

See

Lanard’s Responses to Defendants’ Objections to Supplemental Report and
Recommendation (Doc. 556).
Plaintiff also filed objections to the Second Report.

See Lanard’s

Objections to Supplemental Report and Recommendation (Dkt 551) (Doc. 553;
Plaintiff’s Objections).

In Plaintiff’s Objections, Plaintiff asserts that the

Magistrate Judge’s recommended fee award is unreasonable and the Court
should award no more than $606,405.20 in fees. See id. at 2. Specifically,
Plaintiff contends that the Magistrate Judge erred in her calculation of
reasonable hours by failing to properly allocate the joint fees between
compensable and non-compensable claims.

8

Id. at 2-3.

Because the

Magistrate Judge determined that Defendants are not entitled to fees under the
Patent or Copyright Acts, Plaintiff contends that any award of fees under
FDUTPA that includes work related to the patent or copyright claims is
preempted. Id. at 4-6. Likewise, Plaintiff argues that the Magistrate Judge
improperly relied on FDUTPA to place the burden on Plaintiff to demonstrate
which joint fees should be excluded as related to the copyright and patent

Notably, Plaintiff does not object to the Magistrate Judge’s assessment of the
reasonable rates for the various lawyers and paralegals involved. Absent an objection from
either party and finding no plain error, the Court will adopt the Magistrate Judge’s
recommendations on reasonable rates.
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claims, “effectively reward[ing] Defendants for . . . vague billing practices with
a windfall . . . .” See id. at 7-8.
As to the Lanham Act, Plaintiff maintains that Defendants are not
entitled to the full amount of the joint fees because Defendants failed to meet
their burden of demonstrating that allocation is “not feasible.” Id. at 9-10. In
support, Plaintiff proposes various alternative methods for allocating the joint
fees that it maintains are “feasible.” Id. at 10-13. Not surprisingly, Plaintiff’s
proposed methods all result in a drastically reduced fee award.

Plaintiff

maintains that the Court should reject the recommended $1.6 million fee award
as “excessive,” and points to the fact that when it initiated this lawsuit, it had
a registered patent and registered copyright, as well as evidence that
Defendants used Plaintiff’s product in their design process.

Id. at 12.

Plaintiff further contends that the FDUTPA and Lanham Act claims were mere
“add-on, tag-along claims” such that allowing Defendants to recover the
majority of their fees based on these claims is “overkill.” Id. Defendants filed
a response to Plaintiff’s Objections on March 2, 2022.

See Defendants’

Response to Plaintiff Lanard Toys Limited’s Objection to the Supplemental
Report and Recommendation (Doc. 557; Defendants’ Response).
record, this matter is ripe for review.

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On this

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III.

Discussion

To resolve the Objections, the Court need only consider whether the
award of joint fees is appropriate under the Lanham Act.9 Plaintiff contends
that to be entitled to the joint fees, Defendants must show that allocation is “not
feasible.” According to Plaintiff, although the Magistrate Judge found that the
claims were intertwined, she did not find, and Defendants have not shown, that
“the issues were so intertwined that allocation is not feasible.” See Plaintiff’s
Objections at 10.

Plaintiff asserts various ways that, in its opinion, the

Magistrate Judge could have “feasibly” allocated the joint fees to particular
claims. Plaintiff’s arguments are unavailing.
To the extent Plaintiff contends that the Magistrate Judge failed to apply
the correct standard, this contention is without merit.

See Plaintiff’s

Objections at 10. In Yellow Pages Photos, Inc. v. Ziplocal, LP, 846 F.3d 1159
(11th Cir. 2017), the Eleventh Circuit explained that if compensable and noncompensable claims “are intertwined and share a ‘common core’ of facts or a

Plaintiff does not dispute the Magistrate Judge’s finding that the Lanham Act and
FDUTPA claims are entirely overlapping such that fees awarded under each statute are the
same. See Second Report at 82; Plaintiff’s Objections at 5, 9. Because the Court finds that
the award of joint fees is proper under the Lanham Act, the Court need not address whether
those same fees could be awarded under FDUTPA. Moreover, to the extent Plaintiff contends
that the Magistrate Judge improperly relied on FDUTPA to place the burden of allocation on
Plaintiff, this contention is belied by the discussion in the Second Report. The Magistrate
Judge specifically determined that Defendants satisfied their burden to show that the claims
were intertwined. See id. at 73. And, going further, she conducted her own assessment of
the billing records. Id. at 77-78 & n.67. Thus, despite her observation that FDUTPA placed
the burden on Plaintiff, she nevertheless held Defendants to their burden under the Lanham
Act. As such, the Court need not address Plaintiff’s preemption argument.
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related legal theory, then a reasonable fee is allowed as to all hours expended
on both sets of claims.”

Yellow Pages Photos, 846 at 1163 n.3 (emphasis

added); see also Hensley v. Eckerhart, 461 U.S. 424, 435 (1983) (observing that
where a plaintiff’s claims involve a common core of facts or related legal
theories, “[m]uch of counsel’s time will be devoted generally to the litigation as
a whole, making it difficult to divide the hours expended on a claim-by-claim
basis” and “[s]uch a lawsuit cannot be viewed as a series of discrete claims”).
In the Second Report, the Magistrate Judge reviewed the applicable legal
authority and determined that the claims “are intertwined and share a common
core of facts and related legal theories.” See Second Report at 73. Plaintiff’s
suggestion that some further finding was required is without merit.
Regardless, upon de novo, the Court finds that, given the common facts and
related legal theories underlying all four claims, much of the time spent
defending this action cannot feasibly be allocated to any particular claim.10
Nevertheless, it is undisputed that some allocation of the fees is possible.
In their billing records, Defendants identified approximately nine percent of the
fees as being solely related to the patent or copyright claims. In addition, upon

Plaintiff argues that allocation is feasible because Defendants identify “only” six
intertwined issues and did not raise all these issues as to every claim at summary judgment.
See Plaintiff’s Objections at 2, 10. However, the six issues identified were foundational issues
as to all claims, regardless of the fact that Defendants were ultimately able to narrow their
arguments at summary judgment given Plaintiff’s utter failure to support its Lanham Act
claims with any evidence of secondary meaning.
10

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independent review, the Magistrate Judge found that three percent of the
unallocated joint fees were more properly attributable to the copyright or patent
claims alone. See Second Report at 77-78 & n.67.11 But, as with the other
issues affecting the number of reasonable hours, rather than exclude entries on
a line-by-line basis, the Magistrate Judge opted to account for the allocation
issues in her selection of a thirty-percent across-the-board reduction of the
lodestar. See Second Report at 79.12
In its Objections, Plaintiff proposes alternative means of allocating fees
amongst the claims. According to Plaintiff, the only entries which should be
allocated and awarded as joint fees are those entries that specifically reference
one of the six issues that Defendants identified as intertwined. See Plaintiff’s
Objections at 10-11.

In Plaintiff’s view, all other joint entries must be

excluded. Notably, Plaintiff does not cite a single case in which a court has
employed this methodology for determining the proper allocation of fees
between compensable and non-compensable claims.

Id.

And, upon due

consideration, the Court rejects Plaintiff’s proposed method of allocation.
Notably, in its Objections, Plaintiff specifically identifies only three entries in the
billing records that it contends were improperly designated as “joint” entries. See Plaintiff’s
Objections at 11 n.3.
11

Thus, to the extent Plaintiff objects to the Second Report because the Magistrate
Judge’s percentage reduction “did not consider issues of allocating and excluding time spent
on the patent and copyright claims,” see Plaintiff’s Objections at 7, the Court finds this
objection is due to be overruled as Plaintiff simply misapprehends the Magistrate Judge’s
discussion in the Second Report.
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The glaring problem with Plaintiff’s proposal is that it is vastly
underinclusive.

Plaintiff ignores all the time spent on general legal work

related to all claims. The Magistrate Judge observed that:
much of the general legal work was for all claims, including work
on the motion to transfer, protective orders, case management,
motion for sanctions for violating the protective order, opposition
to adding Ja-Ru HK as a party, status reports, statement of the
facts and standard of review in the appellate response brief, and
most pretrial work.
See Second Report at 75. Even a cursory review of the billing records reveals
numerous entries properly allocated as joint that Plaintiff’s method would
arbitrarily exclude. Compare, e.g., Second Report, Attachment A, entries 28,
84, 95, 166, 182 (related to settlement); entries 400-401, 416-418, 420, 425
(related to case management conference and initial disclosures) with Plaintiff’s
Objections, Ex. 1. Moreover, this exercise proves precisely why the Magistrate
Judge was entirely correct in declining to conduct a comprehensive line-by-line
analysis here—the billing records are quite voluminous and reviewing each of
the nearly 3500 billing entries would be impractical and an egregious waste of
judicial resources.

See Loranger v. Stierheim, 10 F.3d 776, 783 (11th Cir.

1994). The Magistrate Judge opted to account for the allocation issues through
an across-the-board percentage reduction of the lodestar and the undersigned
finds that this approach is the appropriate way to address the allocation issues
in this case.

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In its Objections, Plaintiff also proposes a percentage reduction that it
maintains reflects a more appropriate “allocation” of the joint fees.

See

Plaintiff’s Objections at 13.13 Plaintiff asserts that the Court should award
only 37.2% of the joint fees, which in its view is more proportional to the
importance of the trade dress and unfair competition claims in this litigation.
See id. Plaintiff derived this number by totaling all the “non-Joint fees” (i.e.,
the fees in the patent-only, copyright-only, and trade dress & FDUTPA-only
columns) and then determining the percentage of those fees that were trade
dress & FDUTPA-only fees. Id. But Plaintiff fails to explain how this method
rationally reflects the amount of time spent working on the claims jointly, and
cites no legal authority in support of this manner of allocation. Regardless, the
Court finds that a nearly seventy-percent reduction of the joint fees is not
warranted here given Defendants’ showing that the four claims are
substantially intertwined. See Sprint Solutions, Inc. v. 4 U Cell, LLC, No.
2:15cv605-PAM-CM, 2017 WL 11632645, at *3 (M.D. Fla. June 9, 2017)
(explaining that because the compensable and non-compensable claims
“inevitably overlap,” defendants are entitled to a “full fee” except “when defense

The Court notes that Plaintiff incorporates by reference other “methods of
allocation” proposed in its prior briefing. See Objections at 12, 13. The mere incorporation
by reference of a prior argument does not constitute a “specific written objection[]” as required
by Rule 72, and as such, the Court need not consider these incorporated arguments.
Regardless, Plaintiff’s other proposed methods of allocation are due to be rejected for the same
reasons set forth here—they are underinclusive and do not result in a reasonable fee award.
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counsel indicates that they specifically worked on [non-compensable claims]”).
Moreover, the Magistrate Judge reviewed the records and determined that only
approximately three percent of the joint fees pertained to discrete copyright or
patent related matters.

As such, the Court declines to apply Plaintiff’s

proposed reduction as it would improperly exclude a significant portion of the
fees that Defendants reasonably incurred defending the Lanham Act claims.14
See Yellow Pages Photos, 846 F.3d at 1163 n.3.
Ultimately, the question before the Court is whether $1,630,203.54
constitutes a reasonable fee award for the Lanham Act claims in this case.
Plaintiff insists that a seven-figure award is excessive and amounts to an undue
punishment. See generally Plaintiff’s Objections. According to Plaintiff, it
has “already suffered great losses,” including the nearly $2 million paid to its
own attorneys, the loss of “two large retail customers,” and the invalidity of its

Plaintiff appears to contend that such a significant reduction is warranted because
this was primarily a patent and copyright infringement case. In support, Plaintiff points to
Defendants’ contention at summary judgment that Plaintiff “‘seem[ed] to have abandoned its
trade dress and unfair competition claims.’” See Plaintiff’s Objections at 2, 10 (quoting
Defendants’ Dispositive Motion for Summary Judgment (Doc. 302) at 3). This argument is
not well taken. While Plaintiff should have abandoned those claims given its egregious lack
of any supporting evidence, Plaintiff repeatedly refused to do so. Plaintiff opposed a motion
to dismiss its trade dress and unfair competition claims, opposed Defendants’ request for
summary judgment on those claims, and affirmatively moved for summary judgment in its
favor on those counts. Indeed, even after this Court entered summary judgment against it,
Plaintiff continued to pursue those claims on appeal. Moreover, as the Magistrate Judge
pointed out and Plaintiff does not deny, Plaintiff sought the same damages as to all claims.
Thus, even if all parties viewed the copyright and patent infringement counts as the stronger
claims, the trade dress and unfair competition claims were fully part of this litigation and
Defendants had to defend against those causes of action throughout this lawsuit.
14

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“registered intellectual property.” See Plaintiff’s Objections at 12. Plaintiff
appears to contend that its conduct in this case was reasonable given that when
it initiated the case it had “a registered patent and a registered copyright, and
had uncovered evidence that Defendants did use its product in the design
process.” Of course, those arguments do not address the more salient question
of whether it was reasonable for Plaintiff to assert trade dress and unfair
competition claims absent any evidence of secondary meaning or consumer
confusion. Moreover, these arguments are merely an invitation to revisit the
issues addressed on the question of entitlement. For all the reasons expressed
in the First Report, this is an exceptional case, one that stands out from others
both due to the significant flaws in the legal theories advanced and in the overly
aggressive and uncivil way it was litigated. See, e.g., First Report at 87-88,
103. Based on the undersigned’s own familiarity with the matter, a significant
fee award is warranted and, the Court is convinced that an award of
$1,630,203.54 is a reasonable fee award for the Lanham Act claims in this
case.15 Accordingly, it is
Indeed, it would not be in Plaintiff’s interest for the Court to reject the recommended
fee award. Doing so would require the Court to engage in a de novo review of the First Report
to address Defendants’ Objections on Entitlement. Having ruled on the summary judgment
motions, the undersigned is more familiar with the arguments raised at summary judgment
and the applicable law. Based on this familiarity, were the Court to revisit the issue of
entitlement, the undersigned likely would find that fees are warranted on the copyright claim
as well.
While the Magistrate Judge is correct that the Court did not give “short shrift” to
Plaintiff’s copyright arguments, this is not a reflection of the strength of the merits of those
arguments, but rather reflects that Plaintiff’s copyright claim lacked merit in so many ways.
15

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Case 3:15-cv-00849-MMH-PDB Document 559 Filed 06/22/22 Page 19 of 21 PageID 19614

ORDERED:
1. Lanard’s Objections to Supplemental Report and Recommendation
(Doc. 553) are OVERRULED.

See First Report at 98. The existence of a registered copyright notwithstanding, Plaintiff’s
copyright infringement claim was a transparent attempt to seek “protection over any and all
expressions of the idea of a pencil-shaped chalk holder.” See Lanard Toys Ltd. v. Dolgencorp
LLC, 958 F.3d 1337, 1346 (Fed. Cir. 2020). However, Plaintiff’s experienced counsel is
undoubtedly well-aware of the black letter law that copyright protection does not extend to an
“idea” itself. See 17 U.S.C. § 102(b); Feist Publications, Inc. v. Rural Telephone Serv. Co.,
Inc., 499 U.S. 340, 344 (1991) (“The most fundamental axiom of copyright law is that ‘[n]o
author may copyright his ideas . . . .’” (quoting Harper & Row Publishers, Inc. v. Nation
Enterprises, 471 U.S. 539, 556 (1985))); see also Baby Buddies, Inc. v. Toys R Us, Inc., 611
F.3d 1308, 1317 (11th Cir. 2010) (“But every sculpture of a teddy bear shares these features
simply because these features are what defines a teddy bear. To protect this basic
combination of features would in effect give Baby Buddies exclusive rights over the very idea
of a plastic sculpted teddy bear, which is expressly precluded under the copyright laws.”). Yet
remarkably, Plaintiff never made any serious attempt to identify its protected expression as
anything other than the general idea of a pencil shaped chalk holder. See, e.g., Plaintiff’s
Response in Opposition to Defendants’ Motion for Summary Judgment (Doc. 322) at 21
(characterizing the “protectable expression” as “a pencil-shaped chalk holder toy”). This is
perhaps because, once the idea itself is set aside, the only remaining similarities between the
works are those that stem from the plainly unprotected design elements of the ubiquitous no.
2 pencil itself. As such, Plaintiff’s copyright claim stands out to the Court as one involving
substantial overreach. See Baby Buddies, Inc. v. Toys “R” Us, Inc., No. 8:03-cv-1377, ECF
No. 129 (M.D. Fla. Sept. 20, 2011) (order granting fees in copyright infringement action) (“It
was objectively unreasonable for Plaintiff to pursue the theory that Plaintiff’s total design was
protected.”).
This overreach is compounded by the fact that Plaintiff sought substantial damages on
a theory that it could recover the lost sales of its unrelated products stemming from its decision
to sue its own retail customers for infringement. While the Court did not reach the issue of
damages, it is noteworthy that Plaintiff combined an exceptionally weak copyright claim with
a particularly expansive theory of damages without citation to a single case where any court
awarded such damages or otherwise recognized the viability of such a theory. See, e.g.,
Plaintiff’s Response to Defendants’ Motion in Limine Nos. 11 and 12 on Unrelated Product
and DUTPA Damage Issues (Doc. 455) at 8; Plaintiff’s Response in Opposition to Defendants’
Motion for Summary Judgment (Doc. 322) at 24-25. Nevertheless, in light of Defendants’
conditional waiver, the Court need not decide whether Plaintiff’s copyright claim was so
exceptional as to warrant a fee award. But, were a de novo review on entitlement necessary,
the Court would likely exercise its discretion to award fees in order to deter the type of
overaggressive use of the copyright laws exhibited in this action. See Fogerty v. Fantasy,
Inc., 510 U.S. 517, 527 (1994) (“[D]efendants who seek to advance a variety of meritorious
copyright defenses should be encouraged to litigate them to the same extent that plaintiffs are
encouraged to litigate meritorious claims of infringement.”).

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Case 3:15-cv-00849-MMH-PDB Document 559 Filed 06/22/22 Page 20 of 21 PageID 19615

2. Defendants’ Objection to Report and Recommendation on Defendants’
Entitlement to Attorneys’ Fees (Doc. 530) are deemed WAIVED as set
forth

in

Defendants’

Conditional

Objections

to

Report

and

Recommendation and the Supplemental Report and Recommendation
on Defendants’ Entitlement to Attorneys’ Fees and Costs (Doc. 552).
3. The resolutions set forth in the Report and Recommendation (Doc. 535)
and the Supplemental Report and Recommendation (Doc. 551) are
ADOPTED.16
4. Defendants’ Motion to Tax Costs Pursuant to Federal Rule of Civil
Procedure 54(d)(1), 28 U.S.C. § 1920, Local Rule 4.18, and for Costs
under FDUTPA, and Supporting Memorandum of Law (Doc. 477) is
GRANTED, in part, and DENIED, in part.
A. The Motion is GRANTED to the extent the Court awards taxable
costs to Defendants in the amount of $21,256.11.
B. Otherwise, the Motion is DENIED.
5. Defendants’ Renewed Motion for Attorneys’ Fees and Memorandum of
Law (Doc. 518) is GRANTED, in part, and DENIED, in part.

Although the Magistrate Judge appeared to indicate in the First Report that
Defendants would be entitled to non-taxable costs under FDUTPA, see First Report at 29, 106,
she more closely examined the issue in the Second Report and ultimately recommended that
Defendants’ request for non-taxable costs be denied. See Second Report at 84-91. Absent
any objection from Defendants on this issue, the Court adopts the recommendation in the
Second Report and denies Defendants’ request for non-taxable costs under FDUTPA.
16

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Case 3:15-cv-00849-MMH-PDB Document 559 Filed 06/22/22 Page 21 of 21 PageID 19616

A. The Motion is GRANTED to the extent the Court awards
attorney’s fees to Defendants in the amount of $1,630,203.54.
B. Otherwise, the Motion is DENIED.
6. The Clerk of the Court is directed to enter JUDGMENT for
Defendants and against Plaintiff in the amount of $21,256.11 in costs,
and $1,630,203.54 in attorney’s fees.
DONE AND ORDERED in Jacksonville, Florida this 22nd day of June,
2022.

lc11
Copies to:
Counsel of Record
The Hon. Patricia D. Barksdale
United States Magistrate Judge

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