Southern Snow Manufacturing Co., Inc. v. SnoWizard Holdings, Inc. et al

Filing 745

ORDER denying 741 Motion for Attorney Fees. Signed by Judge Nannette Jolivette Brown. (Reference: as listed)(jrc)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
SOUTHERN SNOW MFG. CO., INC.

CIVIL ACTION

VERSUS

NO. 06-9170 c/w 09-3394,
10-791, 11-1499

SNOWIZARD HOLDINGS, INC. et al.

SECTION: G(1)

ORDER AND REASONS
Presently pending before the Court is a “Renewed Motion for Attorneys’ Fees”1 filed by
SnoWizard, Inc. and Ronald R. Sciortino (collectively, “SnoWizard”), in which SnoWizard urges
the Court to award attorney’s fees against Parasol Flavors, LLC (“Parasol”), Southern Snow Mfg.
Co., Inc. (“Southern Snow”), Snow Ingredients, Inc. (“Snow Ingredients”), Simeon, Inc. (“Simeon”),
Banister & Co., Inc. (“Banister”), and Milton “Bubby” Wendling (“Wendling”) (collectively,
“Plaintiffs”). Having reviewed the motion, the opposition, the record, and the applicable law, the
Court will deny the motion.
I. Background2
In 2006, Southern Snow filed a Petition and a Supplementing and Amending Petition in the
24th Judicial District Court for the Parish of Jefferson, Louisiana, against SnoWizard for violations
of Louisiana state law and U.S. trademark law.3 On October 27, 2006, SnoWizard removed the case

1

Rec. Doc. 741.

2

The factual and procedural history of this case has been summarized in numerous Orders issued by this
Court. The following background is adapted from the Court’s April 24, 2014 Order and Reasons granting
SnoWizard’s post-trial “Motion for Permanent Injunction.” Rec. Doc. 732.
3

Rec. Doc. 1.

to the United States District Court for the Eastern District of Louisiana, invoking federal question
jurisdiction pursuant to 28 U.S.C. § 1331.4
SnoWizard asserted counterclaims against Plaintiffs,5 generally raising claims of
infringement and dilution of multiple asserted state and federal trademarks, unfair competition under
federal and state law, and patent infringement. After more than six years of litigation, this matter,
composed of four consolidated cases with two defendants and numerous plaintiffs, was tried before
a jury in this Court beginning on February 19, 2013.6
Among other things, the jury found that Southern Snow, Banister, and Wendling knowingly
and willfully directly infringed, induced infringement of, and contributorily infringed SnoWizard’s
U.S. Pat. No. 7,536,871 (the “‘871 Patent”).7 The jury also determined that SnoWizard did not suffer
lost profits as a result of sales of the patented product.8 Likewise, the jury found that SnoWizard did
not suffer loss of collateral sales as a result of the infringement.9 The jury ultimately awarded
SnoWizard $102,000 as a reasonable royalty owed to SnoWizard as a result of the use of its patented
product.10
Additionally, the jury found that Southern Snow and Snow Ingredients willfully infringed
SnoWizard’s federally and Louisiana registered trademarks “CAJUN RED HOT,” “MOUNTAIN
MAPLE,” and “WHITE CHOCOLATE & CHIPS,” and that Parasol willfully infringed SnoWizard’s

4

Id. This matter was originally assigned to Judge Jay C. Zainey, Section “A,” but was reassigned to this
section, Section “G,” as part of a docket created for a newly appointed judge. Rec. Doc. 439.
5

Rec. Doc. 38, 168.

6

Rec. Doc. 654.

7

Rec. Doc. 710 at pp. 20–21.

8

Id. at p. 22.

9

Id. at pp. 22–23.

10

Id. at p. 23.

2

federally and Louisiana registered trademark “SNOSWEET.”11 It further found that SnoWizard was
entitled to the value of the profits Southern Snow and Parasol earned as a result of their infringing
activity, determining that Southern Snow earned $1,200 as a result of its infringement and that
Parasol gained $100.12 However, the jury found that SnoWizard did not prove that it suffered any
actual damages from any of the infringing activity.13 On March 5, 2013, the Court entered judgment
in conformity with the jury’s verdict.14 The Court then granted SnoWizard’s motion to amend the
judgment, ordering as a matter of law that Southern Snow literally infringed on the ‘871 Patent and
that Plum Street Snoballs was not entitled to actual damages for SnoWizard’s infringement of Plum
Street’s ORCHID CREAM VANILLA trademark.15
On March 19, 2013, SnoWizard moved for attorney’s fees.16 On March 26, 2013, SnoWizard
filed a “Motion for Permanent Injunction”17 against Southern Snow, Banister, and Wendling for
patent infringement; against Southern Snow and Snow Ingredients for trademark infringement of
CAJUN RED HOT, MOUNTAIN MAPLE, and WHITE CHOCOLATE & CHIPS; and against
Parasol for trademark infringement of SNOSWEET.18 On May 13, 2013, Plaintiffs Southern Snow,

11

Id. at pp. 14–20.

12

Id.

13

Id. at pp. 14–18.

14

Rec. Doc. 665.

15

Rec. Doc. 709 at p. 19. On appeal, the Federal Circuit vacated the Court’s judgment of literal infringement
as to the ‘871 patent, as well as its judgments of equivalents infringement, willfulness, and damages related to that patent.
See So. Snow Mfg. Co., Inc. v. SnoWizard Holdings, Inc., 567 Fed. App’x 945, 964 (Fed. Cir. 2014). The Federal Circuit
affirmed the Court’s judgment related to the validity and infringement of the mark “ORCHID CREAM VANILLA,” but
did not address the issue of damages related to that mark. Id. at 956–57.
16

Rec. Doc. 669.

17

Rec. Doc. 672.

18

Id.

3

Banister, Wendling, and “all antitrust Plaintiffs in 11-1499” filed a “Motion for Relief Under Rule
60.”19 On June 26, 2013, SnoWizard filed a “Re-Urged Motion for Sanctions Pursuant to Rule 11.”20
On August 8, 2013, all plaintiffs in this case filed a “Notice of Appeal to Federal Circuit.”21
On September 3, 2013, Hanover Insurance Company, intervenor and third-party defendant, filed an
“Amended and Supplemental Notice of Appeal” to the Fifth Circuit “or, pursuant to 28 U.S.C. [§]
1295(a)(1), the Federal Circuit.”22 On September 4, 2013, Defendants Sciortino and SnoWizard filed
a “Notice of Cross Appeal to Federal Circuit.”23
On April 24, 2014, the Court granted SnoWizard’s “Motion for Permanent Injunction.”24 On
June 30, 2014, the Federal Circuit issued its judgment affirming this Court’s judgment in most
respects, but reversing the Court’s judgment as to: (1) the validity and infringement of the ‘879
patent; and (2) the dismissal of certain claims asserted by Plaintiffs Raggs Supply, LP (“Raggs”) and
Special T Ice Co., Inc. (“Special T”).25
On September 23, 2014, the Court dismissed without prejudice all pending motions in light
of the Federal Circuit’s decision.26 On October 20, 2014, the Court reconsidered in part and lifted
in part its permanent injunction, consistent with the Federal Circuit’s Mandate.27 On October 29,

19

Rec. Doc. 701.

20

Rec. Doc. 708.

21

Rec. Doc. 713 at pp. 1–2 (citing Rec. Doc. Nos. 162, 332, 333, 336, 561, 605, 610, 621, 651, 665, 709, 711;
Parasol Flavors, LLC v. SnoWizard, Inc., Case No. 09-3394, Rec. Doc. 56).
22

Rec. Doc. 716 at p. 1 (citing Rec. Doc. Nos. 342, 343, 346, 641).

23

Rec. Doc. 717 at pp. 1–2 (citing Rec. Doc. Nos. 557, 558, 559, 622, 655, 709).

24

Rec. Doc. 732.

25

So. Snow Mfg. Co., Inc. v. SnoWizard Holdings, Inc., 567 Fed. App’x 945, 964 (Fed. Cir. 2014).

26

Rec. Doc. 735.

27

Rec. Doc. 739.

4

2014, Raggs and Special T moved to dismiss without prejudice the claims reinstated by the Federal
Circuit.28 Also on October 29, 2014, SnoWizard filed the instant motion for attorneys’ fees.29
II. Parties’ Arguments
A.

SnoWizard’s “Renewed Motion for Attorneys’ Fees”30
In the pending motion, SnoWizard argues that “the jury’s findings of willful trademark

infringement” on the part of Plaintiffs, “coupled with Plaintiffs’ pattern of harassing and meritless
litigation, serve as a clear signal to this Court that attorney’s fees are warranted in this action in
favor of SnoWizard.”31
1.

Fees Pursuant to the Lanham Act

SnoWizard first argues that Section 35(a) of the Lanham Act32 authorizes courts to award
attorney’s fees in “exceptional cases,” in which a party has “engaged in some form of willful,
deliberate, or fraudulent conduct.”33 According to SnoWizard, the present case meets this
requirement because the jury found that: (1) Southern Snow and Snow Ingredients “engaged in
willful trademark infringement” and “unethical, oppressive, unscrupulous, or deceptive” conduct
with regard to SnoWizard’s “CAJUN RED HOT,” “WHITE CHOCOLATE & CHIPS,” and
“MOUNTAIN MAPLE” trademarks; and (2) Parasol “engaged in willful trademark infringement”
and “unethical, oppressive, unscrupulous, or deceptive” conduct with regard to SnoWizard’s

28

Rec. Doc. 740. The Court granted this motion on November 12, 2014. Rec. Doc. 742.

29

Rec. Doc. 741.

30

Id.

31

Rec. Doc. 141-1 at p. 9.

32

15 U.S.C. § 1117(a).

33

Rec. Doc. 741-1 at p. 9 (citing Taco Cabana, Int’t, Inc. v. Two Pesos, Inc., 932 F.2d 1113, 1127 (5th Cir.
1991) (internal quotation marks omitted)).

5

“SNOSWEET” trademark.34 SnoWizard cites four district court cases in support of its argument that
Plaintiffs’ infringement actions make this case exceptional.35
SnoWizard additionally argues that the findings are consistent with evidence adduced at trial
as Wendling, on behalf of Southern Snow and Snow Ingredients, “admitted to directly copying
SnoWizard’s flavor names because of their popularity,” and Drewes, on behalf of Parasol, admitted
that he was on notice to SnoWizard’s earlier claim to trademark rights concerning the
“SNOSWEET” mark, yet continued to infringe.36 SnoWizard further contends that Southern Snow,
Snow Ingredients, and Parasol “deliberately continued to infringe these marks all the way through
trial and beyond.”37 Specifically, SnoWizard argues that Parasol continues to use the term “SNOW
SWEET” on its website, notwithstanding the Court’s order permanently enjoining Parasol from
using the “SNOSWEET” mark.38 Therefore, SnoWizard contends, attorney’s fees should be awarded
against these parties.39
2.

Fees Pursuant to the Louisiana Unfair Trade Practices Act (“LUTPA”)

SnoWizard next argues that, pursuant to the LUTPA,40 a prevailing defendant may recover
attorney’s fees “[u]pon a finding that an action under this Section was groundless and brought in bad
faith or for purposes of harassment.”41 SnoWizard argues that the Court should award LUTPA
34

Id. at pp. 9–10.

35

Rec. Doc. 741-1 at pp. 10–11 (citing Shen Mfg. Co. v. Suncrest Mills, Inc., 673 F. Supp. 1199 (S.D.N.Y.
1987); Hallmark Cards, Inc. v. Hallmark Dodge, Inc., 634 F. Supp. 990 (W.D. Mo. 1986); Bagdasarian Prods. v.
Audiofidelity Enters., Inc., No. 84-2290, 1984 WL 1564 (D.N.J. Oct. 3, 1984); and Tri-Star Pictures, Inc. v. Unger,
14 F. Supp. 2d 339 (S.D.N.Y. 1998)).
36

Id. at p. 10.

37

Id..

38

Id. at p. 11 (citing Rec. Doc. 732).

39

Id. at pp. 11–12.

40

LA. REV. STAT. § 51:1409.

41

Rec. Doc. 741-1 at p. 12 (quoting La. Rev. Stat. § 51:1409).

6

attorney’s fees here because: (1) “many of Plaintiffs’ LUTPA claims were dismissed outright by this
Court as a matter of law;” (2) the jury found that Southern Snow and Simeon’s infringement claims
regarding the term “SNOBALL” were “groundless, brought in bad faith, or were brought for the
purposes of harassment;” and (3) the jury rejected Parasol’s LUTPA infringement claim regarding
“SNOW SWEET,” and found Parasol’s conduct “unethical, oppressive, unscrupulous, or deceptive”
with regard to SnoWizard’s “SNOSWEET” trademark.42 SnoWizard contends that, in addition to
the jury’s findings on these points, an award of attorney’s fees “is further justified” here “by
Plaintiffs’ duplicative and harassing litigation tactics.”43
3.

Fee Calculation

SnoWizard next argues that its fee application is reasonable under the “lodestar” method,
where a court multiplies the number of hours reasonably expended on the litigation by a reasonable
hourly billing rate.44 SnoWizard contends that the appropriate lodestar figure is $491,748.25 which
“corresponds to the number of hours worked and actually billed” for the claims at issue, “multiplied
by each timekeeper’s hourly billing rate.”45 SnoWizard further contends that the requested fees are
reasonable pursuant to an analysis of the factors set forth in Johnson v. Georgia Highway Express,
Inc., which are used in combination with the “lodestar” method in order to determine whether a
requested fee award is reasonable.46 As to the allocation of fees, SnoWizard contends that Plaintiffs

42

Id. (citing Rec. Doc. 710).

43

Id. at p. 13.

44

Id. (citing Watkins v. Fordice, 7 F.3d 453, 457 (5th Cir. 1993)).

45

Rec. Doc. 741-1 at pp. 13–15.

46

Id. (citing 488 F.2d 714, 717–19 (5th Cir. 1974)).

7

“were the primary driving force behind the consolidated litigation,” and that “each should be liable
for a 1/6 pro rata share” of the requested fees.47
SnoWizard next addresses each of the Johnson factors. According to SnoWizard, these
factors are:
(1) the time and labor required; (2) the novelty and difficulty of the question; (3) the
skill required to perform the legal service properly; (4) the preclusion of other
employment by the attorney due to acceptance of the case; (5) the customary fee; (6)
whether the fee is fixed or contingent; (7) time limitations imposed by the client or
the circumstances; (8) the amount involved and the results obtained; (9) the
experience, reputation, and ability of the attorneys; (10) the “undesirability” of the
case; (11) the nature and length of the professional relationship with the client; and
(12) awards in similar cases.48
As to the “amount involved and the results obtained,” SnoWizard argues that “the degree
of the plaintiffs overall success is ‘the most critical factor’ in determining the reasonableness of a
fee award.”49 SnoWizard states that courts “are reluctant to decrease the lodestar amount” in cases
where, as here, “the prevailing party is granted relief on the majority of its claims.”50
Addressing “the time and labor required,” SnoWizard contends that “particularized records”
filed in support of its prior motion for fees “illustrate that the division of labor was efficient and that
each attorney and staff member had specified projects for which they were responsible . . . [and that]
this matter was staffed appropriately.”51 SnoWizard further contends that “the time spent on this

47

Id. at p. 15.

48

Id. at p. 14, n.1.

49

Id. at p. 15 (citing Toys “R” Us, Inc. v. Abir, No. 97-8673, 1999 WL 61817, at *3 (S.D.N.Y. Feb 10,
1999) (quoting Farrar v. Hobby, 506 U.S. 103, 114 (1992)).
50

Id. at pp. 16.

51

Id. at pp. 16–17.

8

matter was reasonable given the attorneys’ varying experience levels” and that its attorneys’ time
“was reasonably expended in meeting the demands of the Court and this case.”52
Turning to “the customary fee,” SnoWizard asserts that its fee rates in this case were “set
intentionally low in order to accommodate long-standing relationships with the clients,” and were
“far below the industry standard for typical commercial litigation, much less for the more specialized
field of intellectual property litigation.”53 Discussing “the experience, reputation, and ability of the
attorneys” factor, SnoWizard asserts that “the specialized knowledge and experience” of its
attorneys “further support[] the fee application.”54
As to the “novelty and difficulty of the questions,” SnoWizard contends that Plaintiffs
“continually asserted claims for which there was no supporting case law,” thereby presenting novel
and difficult issues that support the reasonableness of its fee application.55 Turning to “the skill
requisite to perform the legal service properly,” SnoWizard argues that its counsel are “all highly
specialized trial and intellectual property attorneys with years of collective trademark litigation
experience.”56
Discussing “the preclusion of other employment by the attorneys due to acceptance of the
case,” SnoWizard avers that the fee statements submitted here show that “this matter dominated
several attorneys’ calendars for years,” and thereby prevented “some of SnoWizard’s attorneys from
taking on other matters and clients.”57 Furthermore, SnoWizard contends that “[i]n addition to the

52

Id.

53

Id. at p. 17.

54

Id. at pp. 17–18.

55

Id. at p. 18.

56

Id. at pp. 18–19.

57

Id. at p. 19.

9

motions that SnoWizard filed, SnoWizard had to respond to Plaintiffs’ numerous motions and
discovery disputes,” which was both time-consuming and “subject to tight deadlines that required
the immediate attention of several attorneys.”58
Regarding “awards in similar cases,” SnoWizard asserts that courts in similar cases have
upheld awards of $940,000 and $889,986.50 in attorneys’ fees, and that “[b]oth of these cases were
decided more than ten years ago,” and since then “legal fees have increased, in part to keep pace
with inflation.”59
4.

Fee Segregation

Finally, SnoWizard asserts that “it is contrary to the law” to hold that it is “only entitled to
recover attorney’s fees in connection with the claims upon which it prevailed at trial,” because “the
party seeking reduction of the lodestar bears the burden of showing that a reduction is warranted.”60
SnoWizard contends that such a holding would “improperly shift this burden to SnoWizard.”61
According to SnoWizard, the appropriate course of action when “a plaintiff’s claims cannot be
disentangled” is to consider “the results obtained and adjust the lodestar accordingly.”62 SnoWizard
asserts, however, that the Fifth Circuit has held that where “time spent on unsuccessful issues is
difficult to segregate, no reduction of fees is required.”63

58

Id.

59

Id. at pp. 19–20 (citing Taco Cabana, 932 F.2d at 1128, aff’d 505 U.S. 763 (1992), reh’g denied 505
U.S. 1244 (1992); Dunkin’ Donuts, Inc. v. Mercantile Ventures, Inc., No. 91-154, 1994 WL 720236 (W.D. Tex.
Aug. 11, 1994)).
60

Id. at p. 20 (quoting Millon v. Johnston, No. 98-2235, 1999 WL 358968 (E.D. La. May 28, 1999)
(Wilkinson, M.J.)).
61

Id.

62

Id. at p. 20.

63

Id. at p. 21 (quoting Abell v. Potomac Ins. Co. of Ill., 946 F.2d 1160, 1169 (5th Cir. 1991)).

10

B.

Plaintiffs’ Opposition
In opposition, Plaintiffs assert that the question of whether to shift attorneys fees

“encompasses all of the litigation in all of these 4 consolidated cases” and that the “8-day jury trial
and 7-year litigation produced mixed results and split decisions for the dominant parties SnoWizard
and Southern Snow companies.”64 Plaintiffs contend that “SnoWizard lost both its patentinfringement claims and the patent itself on appeal,” therefore the instant motion is “only about
attorney’s fees under trademark law.”65
1.

SnoWizard’s Entitlement to Fees

Plaintiffs argue that “SnoWizard did not prevail on even half of its counterclaims, and lost
15 out of 19 of its purported trademarks, in this 7-year litigation.”66 According to Plaintiffs,
SnoWizard “was not the prevailing party for the purported trademarks that . . . [it] lost,” even if it
“was able to avoid liability for fraud in claiming the trademarks in the first place.”67 Plaintiffs
additionally contend that Plaintiff Plum Street Snoballs was “clearly a prevailing party” with regards
to the flavor name Orchid Cream Vanilla where the jury found “10,000 in damages and profits” and
that there was “deliberate and willful intent to deceive and unethical, unscrupulous, or deceptive
conduct on SnoWizard’s part.”68 Furthermore, Plaintiffs argue that they “should not be punished by
the Court for agreeing to the consent judgment,” in which “SnoWizard gave up 15 out of 19
purported trademarks,” and Plaintiffs gave up “their now-completely-justified claims against the

64

Rec. Doc. 743 at p. 1.

65

Id. at p. 2.

66

Id. at p. 3.

67

Id.

68

Id.

11

unlawful assertion” of those surrendered marks, and their “years-long defense against SnoWizard’s
claims of infringement of these now-proven-bogus trademarks.”69
2.

SnoWizard’s Fee Calculation

Plaintiffs additionally argue that SnoWizard’s requested fee award includes “hundreds of
thousands of dollars in fees for issues upon which SnoWizard did not prevail,” and is essentially the
same sum it requested before the Federal Circuit reversed its “huge patent victory.”70 Plaintiffs
maintain that although SnoWizard “only prevailed on a small portion of the claims in this litigation,”
its requested fee award amounts to “a bill for essentially all of their work,” and that SnoWizard’s
attorneys “make no attempt” to segregate or estimate the fees pertaining to the issues upon which
SnoWizard prevailed.71 Plaintiffs argue that “it is not the responsibility of the Plaintiffs’ counsel to
go through the 3-inch stack of confidential, sealed, faint photocopies to try to guess which entries
might arguably be allowable,” and that the descriptions given therein “do not appear to have enough
detail to allow anyone—even SnoWizard’s attorneys themselves—to tease out any arguably
allowable fees.”72
3.

The Prevailing Plaintiffs’ Entitlement to Fees

According to Plaintiffs, they should be awarded attorneys’ fees regarding the purported
trademarks that SnoWizard gave up in the consent judgment because SnoWizard’s litigation of these
marks after the Court or the Trademark Trial and Appeal Board “found them to be generic” gave
SnoWizard “extra years of asserting to customers that SnoWizard owned several trademarks that

69

Id. at p. 2.

70

Id. at pp. 3–4.

71

Id. at p. 4.

72

Id.

12

SnoWizard really never did own,” and was therefore “willful and fraudulent.”73 Further, Plaintiffs
argue, “[i]f the reasons given by SnoWizard support the shifting of attorney fees to any party, then
those reasons equally support the shifting of attorney fees to all other parties” with regard to “claims
and issues upon which each party prevailed.”74 Moreover, Plaintiffs argue, “under SnoWizard’s
method of counting hours, which is to count all of them,” Plaintiffs “are entitled to recover all of the
attorney fees for the whole 7-year litigation.”75
Plaintiffs assert that defendants-in-counterclaim Ron Robinson, Raggs Supply LP, Doty
Management, LLC and Julie K. Doty (collectively, “Raggs Counter-Defendants”) are also entitled
to attorney’s fees, because the consent judgment dismissed various claims asserted by SnoWizard
against these parties.76 Thus, Plaintiffs argue, the Raggs Counter-Defendants prevailed on these
claims.77 According to Plaintiffs, SnoWizard’s claims against these parties were “objectively
unreasonable and were frivolous on the day they were filed,” but the Raggs Counter-Defendants
were required to defend against the claims for a year and a half.78 Therefore, Plaintiffs argue, the
Raggs Counter-Defendants are entitled to fees related to these claims.79
Plaintiffs also assert that Plaintiff Plum Street Snoballs (“Plum Street”) is entitled to
attorney’s fees because the jury found that SnoWizard infringed the “ORCHID CREAM
VANILLA” mark owned by Plum Street and found that SnoWizard’s “conduct was unethical,

73

Id. at p. 5.

74

Id. at pp. 5–6.

75

Id.

76

Id. at p. 6.

77

Id.

78

Id. at pp. 6–7.

79

Id. at p. 7.

13

oppressive, unscrupulous, or deceptive” as to the use of that trademark.80 According to Plaintiffs,
“SnoWizard avoided [Plum Street] getting a judgment to cancel SnoWizard’s federal registration
of ‘ORCHID CREAM VANILLA’ by agreeing, at the last minute, to ‘voluntarily’ cancel it” in the
Consent Judgment, even though it had already “required [Plum Street] to fully litigate the issue.”81
Thus, Plaintiffs argue, “[u]nder SnoWizard’s reasoning, the prevailing Plaintiffs, who
succeeded in getting 12 purported trademarks declared generic and invalid, and got federal and state
registrations of these 12 purported trademarks cancelled, are entitled to recover their attorney fees,”
due to SnoWizard’s unreasonable delay in giving up the marks.82
III. Law and Analysis
A.

Entitlement to Attorney’s Fees Pursuant to the Lanham Act
1.

Legal Standard

Section 35(a) of the Lanham Act, as codified at 15 U.S.C. § 1117(a), provides that “[t]he
court in exceptional cases may award reasonable attorney fees to the prevailing party.” To qualify
for an award of attorney’s fees pursuant to this provision, “the prevailing party must demonstrate
the exceptional nature of the case by clear and convincing evidence.”83 “An exceptional case is one
where the violative acts can be characterized as malicious, fraudulent, deliberate, or willful.”84 The
requisite showing “demands a high degree of culpability on the part of the infringer, for example bad
faith or fraud.”85
80

Id.

81

Id.

82

Id.

83

CJC Holdings, Inc. v. Wright & Lato, Inc., 979 F.2d 60, 65 (5th Cir. 1992).

84

Bd. of Supervisors for La. State Univ. Agric. and Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 491
(5th Cir. 2008).
85

Id. (citations and internal quotation marks omitted).

14

However, a finding of “bad faith in violating the Lanham Act” or “deliberate copying of a
mark” does not require the Court to find that a particular case is exceptional.86 Furthermore, the
Fifth Circuit instructs that jury findings do not render a case per se “exceptional” for purposes of
Section 35(a),87 as the “[i]mposition of attorney’s fees on the unsuccessful infringer is not a matter
for the jury.”88 Rather, in determining whether the requisite showing has been made, the Fifth Circuit
instructs courts to “examin[e] all the facts and circumstances,”89 including the merits and substance
of the action,90 and the party’s subjective culpability.91 Once a party has made the requisite showing,
the Court may, in its discretion, award attorney’s fees.92
2.

Analysis

Applying these legal standards here, the Court will consider whether SnoWizard has
demonstrated by clear and convincing evidence that Plaintiffs have acted with the level of
culpability required to merit a determination that this case is “exceptional” such that attorney’s fees
should be awarded.
In support of its claim for attorney’s fees pursuant to Section 35(a) of the Lanham Act,
SnoWizard argues that the jury found that Southern Snow and Snow Ingredients willfully infringed

86

Id.; Nat’l Bus. Forms & Printing Co., Inc. v. Ford Motor Co., 671 F.3d 526, 537 (5th Cir. 2012).

87

See Tex. Pig Stands, Inc. v. Hard Rock Café Intern., Inc., 951 F.2d 684, 697 (5th Cir. 1992) (“A jury
finding of willfulness does not bind the trial court in determining whether this case is ‘exceptional’; it may, however,
serve as a guide.”). See also Clearline Techs. Ltd v. Cooper B-Line, Inc., 948 F. Supp.2d 691, 719 (S.D. Tex. 2013)
(“Although the jury was presented with sufficient evidence to conclude that the infringement was willful by a
preponderance standard . . . the Court does not find that Cooper infringed willfully by a clear and convincing
standard.”).
88

Id. at 696.

89

CJC Holdings, Inc., 979 F.2d at 65.

90

Procter & Gamble, 280 F.3d 519, 528 (5th Cir. 2002).

91

Nat’l Bus. Forms & Printing Co., Inc., 671 F.3d at 537.

92

CJC Holdings, Inc., 979 F.2d at 65.

15

SnoWizard’s trademarks, “CAJUN RED HOT,” “WHITE CHOCOLATE & CHIPS,” and
“MOUNTAIN MAPLE” and that these Plaintiffs’ conduct was “unethical, oppressive, unscrupulous,
or deceptive” with respect to these trademarks.93 SnoWizard further argues that Wendling testified
on behalf of Southern Snow and Snow Ingredients at trial and admitted to “directly copying
SnoWizard’s flavor names because of their popularity.”94 Additionally, SnoWizard argues that the
jury found that Parasol willfully infringed SnoWizard’s “SNOSWEET” mark and that its conduct
was “unethical, oppressive, unscrupulous, or deceptive” with respect to this trademark.95 SnoWizard
contends that Drewes “admitted that he was on notice of SnoWizard’s earlier claim to trademark
rights concerning the ‘SNOSWEET’ mark” yet chose to ignore them.96 According to SnoWizard,
a fee award against Parasol is “particularly warranted” in this case, because Parasol “has thumbed
its nose at this Court’s order enjoining it from further use of its SNOW SWEET mark” and continues
to use that mark on its website.97 Finally, SnoWizard argues that “the jury’s findings of willful
trademark infringement, coupled with Plaintiffs’ pattern of harassing and meritless litigation, serve
as a clear signal to this Court that attorneys’ fees are warranted.”98
Plaintiffs, in opposition, argue that SnoWizard only prevailed on four of its Lanham Act
counterclaims.99 Plaintiffs further argue that they should not be punished for agreeing to the Consent
Judgment, in which SnoWizard “gave up 15 of 19 purported trademarks.”100 Finally, Plaintiffs
93

Rec. Doc. 741-1 at p. 9.

94

Id. at 10.

95

Id. at 9.

96

Id. at 10.

97

Id. at pp. 10–11.

98

Id. at 9.

99

Rec. Doc. 743 at p. 3.

100

Id. at p. 2.

16

contend that they, too, should be entitled to attorney’s fees, in light of the consent judgment and
trademark claims upon which they prevailed.101
SnoWizard correctly asserts that the jury found that Southern Snow and Snow Ingredients’
conduct was both willful and “unethical, oppressive, unscrupulous, or deceptive” with regards to the
use of the trademarks “CAJUN RED HOT,” “WHITE CHOCOLATE & CHIPS,” and
“MOUNTAIN MAPLE,”102 and that Parasol’s conduct was both willful and “unethical, oppressive,
unscrupulous, or deceptive” with regards to the use of the trademark “SNOSWEET.”103 However,
jury findings alone do not render a case per se “exceptional” for purposes of Section 35(a).104
Therefore, the jury findings do not end the inquiry.
In support of its argument that this case is exceptional, SnoWizard relies upon four district
court cases. In Shen Manufacturing Co. v. Suncrest Mills, Inc,105 a case from the Southern District
of New York, the court found that defendant had engaged in intentional copying of the plaintiff’s
product, even going so far as to provide a manufacturer with the plaintiff’s product as “reference”
for the manufacture of its own product.106 The District Court for the Western District of Missouri,
in Hallmark Cards v. Hallmark Dodge,107 found the case to be exceptional because it determined
that defendant, in adopting the name “Hallmark,” using a similar typestyle for the name, and
adopting a similar slogan, intended to “ride the coattails of an existing reputable company.”108 In

101

Id. at pp. 4–7. Notwithstanding this final argument, Plaintiffs have not moved for attorney’s fees.

102

Rec. Doc. 710 at pp. 15–18.

103

Id. at p. 19.

104

See Tex. Pig Stands, Inc., 951 F.2d at 697.

105

673 F. Supp. 1199, 1207 (S.D.N.Y. 1987).

106

Id. at 1206–07.

107

634 F. Supp. 990 (W.D. Mo. 1986).

108

Id. at 999.

17

Bagdasarian Productions v. Audiofidelity Enterprises, Inc.,109 a case from the District of New
Jersey, the court found that attorney’s fees should be awarded as the defendant’s actions revealed
a “purposeful intent . . . to capitalize on the goodwill and popularity [of Plaintiff’s product].”110 In
the final case, Tri-Star Pictures, Inc. v. Unger,111 the District Court for the Southern District of New
York found that the defendant had adopted the infringing mark “for the purpose of trading on the
goodwill, fame, and reputation of [plaintiff’s mark].”112
These cases are not analogous to the instant case. The courts in those cases found that the
defendants had intentionally sought to benefit by infringing upon the plaintiffs’ protected interests.
Here, the testimony of Wendling and Drewes demonstrate that they believed that SnoWizard’s
trademarks were invalid. Based on the testimony discussed below, as neither Wendling nor Drewes
believed that SnoWizard’s trademarks were valid, there was no purposeful infringement that rises
to the level of culpability as found in the cases cited.
Wendling did testify at trial that he had copied “WHITE CHOCOLATE & CHIPS” from
SnoWizard and that he had also copied “CAJUN RED HOT”once he saw how popular it had
become, though he contested that he had copied it from SnoWizard.113 However, Wendling further
testified that he had spoken with another distributor, Jason Guidry, and, from that conversation, he
believed that others had also been selling the flavor at the time and that the trademark was not
valid.114 Furthermore, Wendling testified that he continued to make and sell “WHITE CHOCOLATE

109

No. 84-9920, 1984 WL 1565 (D.N.J. Oct. 4, 1984).

110

Id. at *4.

111

14 F. Supp. 2d 339 (S.D.N.Y. 1998).

112

Id. at 352.

113

Rec. Doc. 720 at pp. 80, 90.

114

Id. at p. 88.

18

& CHIPS,” despite his acknowledgment that there was a certificate of registration on the mark,
because he believed that SnoWizard’s claim before the Patent and Trademark Office that it was
selling “WHITE CHOCOLATE & CHIPS” exclusively was a “boldfaced lie.”115
Drewes testified at trial, on behalf of Parasol, that he had created the name “SNOW SWEET”
and that he contacted a trademark attorney to ensure that the mark “SNOW SWEET” was
available.116 However, Drewes testified that SnoWizard’s application was submitted to the Patent
and Trademark Office before his own application and that his application was subsequently
rejected.117 Although Drewes acknowledged that he received a cease and desist letter from
SnoWizard, he also testified that he had done research into trademark law and believed that
SnoWizard had committed fraud.118 He further testified that he was unaware that the Court had ruled
that SnoWizard’s prior use of the mark had been sufficient.119
Based on the foregoing, the Court finds that SnoWizard has not met its burden of
demonstrating by clear and convincing evidence that these entities acted with the “high degree of
culpability” required to render this case “exceptional” within the meaning of Section 35(a) of the
Lanham Act. The Fifth Circuit instructs that “[a] district court normally should not find a case
exceptional where the party presents what it in good faith believes may be a legitimate defense.”120
Although the Court ultimately granted the motion for summary judgment as to the claim challenging
the validity of “SNOSWEET”121 and the jury found SnoWizard’s marks in “CAJUN RED HOT,”
115

Id. at p. 91.

116

Rec. Doc. 721 at pp. 47, 55.

117

Id. at p. 53.

118

Id. at pp. 55–57.

119

Id. at p. 59.

120

CJC Holdings Inc., 929 F.2d at 66.

121

Rec. Doc. 333.

19

“WHITE CHOCOLATE & CHIPS,” and “MOUNTAIN MAPLE” to be valid and enforceable, the
testimony of Wendling and Drewes is indicative of a good-faith, if ultimately incorrect, belief that
SnoWizard did not actually own the marks.
SnoWizard additionally argues that attorney’s fees are warranted because Parasol did not
remove “SNOW SWEET” from its website after the Court enjoined it, in April of 2014, from using
“SNOSWEET” or any colorable imitation of that mark.122 Although the name “SNOW SWEET” and
a description of the product appear in Exhibit A to SnoWizard’s motion, alleged to be Parasol’s
website in October of 2014, neither “SNOSWEET” nor “SNOW SWEET” appear in the “flavor list”
on the website, suggesting that Parasol’s failure to eliminate all instances of the mark may have been
inadvertent. Accordingly, the evidence from Parasol’s website does not support SnoWizard’s claim
that this case is exceptional.
Finally, SnoWizard argues that attorney’s fees are warranted due to Plaintiffs’ “pattern of
harassing and meritless litigation.”123 SnoWizard alleges that various Plaintiffs have filed at least
five separate lawsuits against SnoWizard, creating close to nine years of “costly and time-consuming
litigation,” and that over the years, more than 200 of the over 225 claims brought against SnoWizard
were dismissed on motions for summary judgment.124 SnoWizard further argues that the Court noted
at one point during the litigation that “the only explanation for the duplicative litigation in the
pending consolidated action is to expand Plaintiffs’ procedural rights, upset the trial schedule, harass
Defendants, and avoid the requirements of amendment of Plaintiffs’ claims.”125

122

Rec. Doc. 741-1 at pp. 10–11.

123

Id. at p. 9.

124

Id. at pp. 1–2.

125

Rec. Doc. 741-1 at p. 8 (quoting Rec. Doc. 621 at pp. 26–27).

20

Although there was some duplicative litigation, the Court does not find that the litigation was
meritless, as SnoWizard asserts, or that the circumstances of the litigation make this case
exceptional. The Fifth Circuit instructs that “[t]he fact that the outcome was mixed is relevant to
whether a case is exceptional, but it should not be accorded great weight in the court’s analysis.”126
Although SnoWizard contends that the jury “rejected each and every one of the claims against
SnoWizard that were brought by the primary instigators of the consolidated lawsuits” and that
SnoWizard “prevailed on nearly all of its remaining counterclaims,”127 Plaintiffs argue that
“SnoWizard did not prevail on even half of its counterclaims, and lost 15 out of 19 of its purported
trademarks, in this 7-year litigation.”128 In fact, both sides obtained mixed results in this litigation.129
Therefore, the litigation brought by Plaintiffs was not meritless.
Considering all of the facts and circumstances, the Court finds that SnoWizard has failed to
meet its burden of demonstrating that this case is sufficiently “exceptional” to warrant the imposition
of attorney’s fees pursuant to Section 35(a) of the Lanham Act. Accordingly, SnoWizard’s motion
will be denied, to the extent that it seeks an award of fees pursuant to this statutory provision.130
126

Pebble Beach Co. v. Tour 18 I Ltd., 155 F.3d 526, 556 (5th Cir. 1998) abrogation on other grounds
recognized in Eppendorf-Netheler-Hinz GMBH v. Ritter GMBH, 289 F.3d 351, 356 (5th Cir. 2002).
127
128

Id. at p. 8–9.
Rec. Doc. 743 at p. 3.

129

After trial had begun, SnoWizard entered into a consent judgment agreeing that fifteen marks that it had
litigated were “generic for flavor concentrates for shaved ice confections or food flavorings.” Rec. Doc. 652. The
jury found in Plaintiff Plum Street Snoballs’ favor regarding the validity and enforceability of the mark “ORCHID
CREAM VANILLA” and found that SnoWizard had infringed on that mark. Rec. Doc. 709-1 at p. 3. The jury also
found that SnoWizard had made false claims to customers about having invented and/or originated the snowball, the
snowball machine, the snowball industry, and various snowball flavors. Id. at 13.
130

Plaintiffs, in opposition, aver that “Prevailing Plaintiffs . . . should be entitled to reasonable attorney
fees because of SnoWizard’s unreasonable prolongation of litigation, and unsupported counterclaims.” Rec. Doc.
743 at p. 4 (emphasis in original). To the extent that this argument is construed as a request for fees, the Court finds
it unavailing. As noted above, Plaintiffs, like SnoWizard, took certain unsuccessful positions and unsuccessfully
pursued certain claims in this litigation. Considering all of the facts and circumstances present here, however, no
evidence was presented to show that SnoWizard’s conduct warrants a finding that the present case is “exceptional”
pursuant to Section 35(a) of the Lanham Act.

21

B.

Entitlement to Attorney’s Fees Pursuant to the Louisiana Unfair Trade Practices Act
“LUPTA”
1.

Legal Standard

The LUTPA, as codified at LA. REV. STAT. § 51:1409(A), provides that:
Upon a finding by the court that an action under this Section was groundless and
brought in bad faith or for purposes of harassment, the court may award to the
defendant reasonable attorney fees and costs.
Louisiana courts have described this provision as “penal in nature and subject to reasonably strict
construction.”131 Courts have discretion in determining whether to award attorney’s fees under this
provision.132
2.

Analysis

SnoWizard argues that in order to prevail on its motion, it need only establish two elements:
“(1) that the plaintiffs did not prevail on their LUPTA claims, and (2) that, with respect to such
claims, the plaintiffs’ claims were either groundless or brought in bad faith or for purposes of
harassment.”133 SnoWizard argues that Plaintiffs have not prevailed upon their LUPTA claims at
trial because: (1) “many of Plaintiffs’ LUTPA claims were dismissed outright by this Court as a
matter of law;” (2) the jury found that Southern Snow and Simeon’s infringement claims regarding
the term “SNOBALL” were “groundless, brought in bad faith, or were brought for the purposes of
harassment;” and (3) the jury rejected Parasol’s LUTPA infringement claim regarding the “SNOW
SWEET,” and found Parasol’s conduct “unethical, oppressive, unscrupulous, or deceptive” with

131

Bobby and Ray Williams P’ship, L.L.P. v. The Shreveport La. Hayride Co., L.L.C., 38,224, p. 12 (La.
App. 2 Cir. 4/21/04); 873 So.2d 739. See also Grace-Cajun Oil Co. No. Two v. Damson Oil Corp., 897 F.2d 1364
(5th Cir. 1990) (same).
132

Id. at 13.

133

Rec. Doc. 741-1 at p. 12.

22

regard to SnoWizard’s “SNOSWEET” trademark.134 SnoWizard argues that the jury’s express
findings on Plaintiffs’ claims as well as Plaintiffs’ “duplicative and harassing litigation tactics”
support an award of attorney’s fees under LUPTA.
Plaintiffs do not specifically address SnoWizard’s LUPTA arguments. However, as noted
above, Plaintiffs contend that they should not be punished for agreeing to the Consent Judgment,
in which SnoWizard “gave up 15 of 19 purported trademarks.”135
The Court finds that SnoWizard has not demonstrated that it is entitled to attorney’s fees
pursuant to the LUPTA. SnoWizard cites one finding by the jury—Southern Snow and Simeon’s
infringement claim regarding the term “SNOBALL” was “groundless, brought in bad faith, or []
brought for the purposes of harassment.” However, the jury was instructed that “[i]n the event you
find that the plaintiff Southern Snow’s claim . . . was groundless, filed in bad faith for the purpose
of harassing SnoWizard, you may conclude that SnoWizard is entitled to reasonable attorney’s fees
and costs. However, the Court will determine the amount SnoWizard is entitled to.”136 The jury, so
instructed, found that Southern Snow and Simeon’s claims under the LUPTA were not “groundless,
brought in bad faith, or [] brought for the purposes of harassment.”137 SnoWizard does not
acknowledge or attempt to distinguish the jury’s specific finding of no bad faith with regard to either

134

Id. (citing Rec. Doc. 710).

135

Rec. Doc. 743 at p. 2.

136

Rec. Doc. 727 at p. 39.

137

Rec. Doc. 710 at p. 13. The jury verdict form states as follows:

Id.

23

of these parties’ LUTPA claims.138 Therefore, this finding appears to foreclose SnoWizard’s reliance
upon the jury’s findings with respect to its claim for LUTPA attorney’s fees against Southern Snow
and Simeon.
In support of its claim that attorney’s fees are warranted, SnoWizard also cites the jury’s
rejection of Parasol’s claim for infringement of Parasol’s purported mark “SNOW SWEET” and
the jury’s finding that Parasol’s conduct regarding the use SnoWizard’s trademark “SNOSWEET”
was “unethical, oppressive, unscrupulous, or deceptive.”139 However, both of these claims were
under the Lanham Act, not LUPTA.140 To obtain an award of attorney’s fees pursuant to the LUPTA,
a party must point to “an action under this Section [that] was groundless and brought in bad faith,
or for purposes of harassment.”141 As SnoWizard does not specifically point to an unsuccessful
LUPTA claim asserted by Parasol or argue why it is “groundless and brought in bad faith, or for
purposes of harassment,” SnoWizard has failed to show that it is entitled to attorney’s fees as a result
of the claim by Parasol.
Additionally, SnoWizard argues that the pre-trial dismissal of Plaintiffs’ LUTPA claims
support its request for attorney’s fees.142 However, other than a discussion of the background of the
litigation,143 SnoWizard offers no argument or citation to any authority for its claim that the pre-trial
dismissal of Plaintiffs’ LUPTA claims entitles it to attorney’s fees. Although the Court dismissed
certain LUTPA claims before trial, SnoWizard does not specifically identify which, if any, of these

139

Rec. Doc. 741-1 at p. 12.

140

Rec. Doc. 710 at p. 5, 19.

141

LA. REV. STAT. § 51:1409(A) (emphasis added).

142

Rec. Doc. 741-1 at p. 12

143

Id. (“Over the course of the nearly seven years the consolidated suits have been pending, many of
Plaintiffs’ LUPTA claims were dismissed outright by this Court as a matter of law (discussed supra).”)

24

dismissed LUTPA claims support its request for attorney’s fees pursuant to LUTPA. Rather,
SnoWizard seeks attorney’s fees based upon a vague reference to pre-trial dismissals and a quotation
from a prior Order of this Court. SnoWizard has not explained how the Court’s pre-trial dismissals
of certain LUTPA claims, considered along with, or independent of, the jury’s findings, show that
the claims brought by Parasol, Simeon, or Southern Snow were “groundless and brought in bad faith
or for purposes of harassment.”
Finally, SnoWizard argues that an award of attorney’s fees is justified by Plaintiffs’
“duplicative and harassing tactics.”144 As discussed above, both sides obtained mixed results in this
litigation and SnoWizard has not demonstrated that the claims were “groundless and brought in bad
faith or for the purposes of harassment.”

144

Rec. Doc. 741-1 at p. 13.

25

Accordingly, SnoWizard has not demonstrated that it is entitled to attorney’s fees pursuant
to the LUPTA. Therefore, the Court, in its discretion, declines to award attorney’s fees pursuant to
the LUPTA, and will deny SnoWizard’s motion.145
IV. Conclusion
For the foregoing reasons,
IT IS HEREBY ORDERED that the “Renewed Motion for Attorney’s Fees”146 filed by
SnoWizard, Inc. and Ronald R. Sciortino is DENIED.
NEW ORLEANS, LOUISIANA, this ______ day of August, 2015.
26th

_______________________________
NANNETTE JOLIVETTE BROWN
UNITED STATES DISTRICT JUDGE

145

Because the Court has determined that SnoWizard has not shown that it is entitled to attorney’s fees
pursuant to Section 35(a) of the Lanham Act or pursuant to the LUPTA, the Court need not reach the issue of
whether the amount of fees requested by SnoWizard is reasonable, or how those fees should be allocated between
Plaintiffs.
146

Rec. Doc. 741.

26