Yellow Book USA Inc et al v. Brandeberry

Filing 135

FINAL JUDGMENT - A Permanent Injunction is hereby entered against American Telephone and Brandeberry and their related companies, officers, directors, subsidiaries, affiliates, agents, employees, successors in interest, and all those in concert or a ctive participation with them. The terms of this Permanent Injunction are as set forth above. American Telephone and Brandeberry are both liable for the damages awarded by the jury. This final judgment is also set forth above. Finally, Yellowbook&# 039;s reasonable attorneys' fee award in the amount of $209,010 is adjusted downward by 19.3%. Thus, Yellowbook is awarded attorneys' fees in the amount of $168,671.07 for which American Telephone and Brandeberry are jointly and severally liable. Signed by Judge Thomas M Rose on 5/28/13. (kje1)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF OHIO
WESTERN DIVISION AT DAYTON
YELLOW BOOK USA, INC., et al.,
Case No. 3:10-CV-025
Plaintiffs,
Judge Thomas M. Rose
-vSTEVEN M. BRANDEBERRY,
Defendant.
______________________________________________________________________________
FINAL JUDGMENT
______________________________________________________________________________
This matter comes now before the Court on an opinion and remand rendered by Judge
Boggs of the Sixth Circuit Court of Appeals. Yellowbook, Inc. v. Brandeberry, 708 F.3d 837 (6th
Cir. 2013). The Plaintiffs in this matter are Yellow Book USA, Inc. and Yellow Book Sales and
Distribution Company, Inc. (collectively referred to herein as “Yellowbook”1). The Defendants
are American Telephone Directories, Inc. (“American Telephone”) and Steven M. Brandeberry
(“Brandeberry”).
PROCEDURAL HISTORY
Yellowbook’s original Complaint was filed on January 22, 2010, against Defendant
Brandeberry. (Doc. #1.) On February 8, 2010, Brandeberry answered and counterclaimed. (Doc.
#9.) On February 11, 2010, Yellowbook answered the counterclaim. (Doc. #11.) Brandeberry
then filed a Motion for Summary Judgment (doc. #13) which was overruled without prejudice to
renewal (doc. #17).

1

Yellowbook changed its name to hibu on January 1, 2013. However, for consistency
with prior pleadings, the name Yellowbook will be used herein.

A Preliminary Pretrial Conference was conducted on May 11, 2010, during which
various deadlines were set. (Doc. #18.) On May 12, 2010, Brandeberry filed a second Motion for
Summary Judgment (doc. #19) which was subsequently denied (doc. #22). On July 13, 2010,
Yellowbook filed its First Amended Complaint (“FAC”) which added American Telephone as a
Defendant. (Doc. #25.) Brandeberry and American Telephone answered Yellowbook’s FAC.2
(Docs. #29 and 30.)
The Parties then entered into a Protective Order (doc. #31) and proceeded with
depositions. On December 30, 2010, the discovery deadline and the deadline for filing motions
for summary judgment were extended. (Doc. #40.) On February 11, 2011, Brandeberry filed his
third Motion for Summary Judgment (doc. #41), and on February 18, 2010, Yellowbook filed a
Motion for Partial Summary Judgment (doc. #47) and a Motion for Summary Judgment on
Brandeberry’s Counterclaim (doc. #48).
With leave of Court, on February 24, 2011, Yellowbook filed its Supplemental FAC
(doc. 49) which Brandeberry and American Telephone answered (doc. #50). Yellowbook then
received leave of Court to file its Second Supplemental FAC (doc. #54) which Brandeberry and
American Telephone answered (doc. #56).
Yellowbook’s Second Supplemental FAC, the operative complaint in this matter, brought
six (6) claims for relief. The First Claim for Relief was for trademark infringement and false
designation and description in violation of section 43(a) of the Lanham Act, 15 U.S.C. §
1125(a)(1)(B). The Second Claim for Relief was for deceptive trade practices in violation of
Ohio Rev. Code § 4165.02. The Third Claim for Relief was for common law trademark

2

Brandeberry’s Answer to the FAC did not include a counterclaim.
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infringement. The Fourth Claim for Relief was for misappropriation of trade secrets in violation
of the Ohio Uniform Trade Secrets Act, Ohio Rev. Code § 1333.61 et seq. The Fifth Claim for
Relief was for tortious interference with existing and prospective business relations and the Sixth
Claim for Relief was for unjust enrichment. Brandeberry brought one Counterclaim for
defamation.
In response to the motions for summary judgment, the Court found, on May 3, 2010, that
none of Yellowbook’s claims against Brandeberry were actionable. (Doc. #61.) The Court did,
however, determine that Yellowbook’s misappropriation of trade secrets and unjust enrichment
claims against American Telephone remained to be adjudicated as did Yellowbook’s damages on
its tortious interference claim against American Telephone. (Doc. #61.)
Next, the Court determined that Brandeberry’s counterclaim had been abandoned, (doc.
#62), so Brandeberry amended his latest answer to include a Counterclaim for defamation (doc.
#67). Then, Yellowbook’s Motion for Summary Judgment on Brandeberry’s Counterclaim was
overruled. (Doc. #75.)
This matter was unsuccessfully mediated on June 27, 2011. (Doc. #72.) A Final Pretrial
Conference, preceded by Yellowbook’s Motion In Limine, was conducted on July 28, 2011.
Yellowbook dismissed its misappropriation of trade secrets and unjust enrichment claims
against American Telephone just before trial. A three-day trial to a jury was conducted from
August 22, 2011 to August 24, 2011.
The Jury awarded $104,406.90 of compensatory damages and $10,406.90 in punitive
damages to Yellowbook on its tortious interference claim against American Telephone. The Jury
also awarded attorneys’ fees, to be determined by the Court, to Yellowbook. The Jury found for

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Brandeberry on his defamation Counterclaim and awarded $10 in nominal damages.
On September 6, 2011, Yellowbook submitted its Petition for Attorneys Fees. (Doc.
#105.) Therein, Yellowbook sought an award of $209,009.30. On October 27, 2011, the Court
declined to award any attorneys fees to Yellowbook for various reasons. (Doc. #109.)
On November 7, 2011, Yellowbook appealed this Court’s Entry and Order Granting
Brandeberry’s Motion for Summary Judgment and Granting In Part and Overruling In Part
Yellowbook’s Motion for Partial Summary Judgment. (Doc # 62). Yellowbook also appealed
this Court’s Entry and Order Overruling Yellowbook’s Motion for Attorneys’ Fees. (Doc. 109.)
On February 27, 2013, the Sixth Circuit issued its decision on Yellowbook’s appeal.
Yellowbook, 708 F.3d 837. Therein, the Appeals Court found that “American Telephone is
Brandeberry for practical purposes,” and that the 2002 contract between Brandeberry and
William “Barney” White (“White”) transferred all of the rights to the use of the AMTEL mark to
White. Id. at 847. White subsequently sold all of the rights to the use of the AMTEL mark to
Yellowbook in 2007, and Yellowbook used the AMTEL mark in publishing its telephone
directories thereafter. Id. at 842. The Appeals Court also found that, even if Brandeberry did not
transfer an individual right to the AMTEL mark to White, Brandeberry abandoned any such
right. Id. at 847.
The Appeals Court reversed this Court’s decision granting summary judgment to
Brandeberry and denying summary judgment to Yellowbook, and the matter was remanded for a
determination of damages for trademark infringement. Id. at 850. The Appeals Court indicated
that, “as damages have already been assessed for tortious interference against American
Telephone, additional compensatory damages may be duplicative, unless Brandeberry continues

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to infringe the AMTEL mark after judgment.” Id.
The Appeals Court also reversed and remanded this Court’s decision denying attorneys’
fees to Yellowbook for several reasons. Id. According to the Appeals Court, where Yellowbook
“simply failed to ‘show its work’ in calculating the lodestar amount, the district court abused its
discretion in denying fees altogether.” Id. at 849. Further, since the concern with quarter-hour
billing increments is over-billing, fee reductions are a proper exercise of discretion and fee
denials are not. Id. In addition, instead of finding that the hourly rates charged by Yellowbook’s
attorneys to be unreasonable, “the district court should indicate what a reasonable rate in Dayton
for such litigation would be, provide some explanation for that conclusion, and reduce the fee
award accordingly.” Id. at 850. Also, requests for more documentation and percentage reductions
will generally be the appropriate response to concerns about what attorneys’ fees were actually
paid by Yellowbook, instead of flat denial. Id. The Appeals Court found that a downward
adjustment in attorneys’ fees due to limited results would not be an abuse of discretion, but such
a consideration here must be made in light of the reversal of summary judgment. Id. Finally, the
Appeals Court said that the remand “does not… preclude a denial of fees on discretionary
grounds.” Id.
Following the issuance of a mandate on this reversal and remand, the Court gave the
Parties twenty-one (21) days to submit initial briefs that address the injunctive relief and
additional damages, if any, that should be awarded and the attorneys’ fees that should be
awarded. The Parties were also given fourteen (14) days to submit simultaneous reply briefs.
Yellowbook submitted a Post-Appeal Brief (doc. #132) and a Reply (doc. #134). The

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time has run and neither American Telephone nor Brandeberry has submitted a brief or reply.3
This matter is, therefore, ripe for decision.
ANALYSIS
Yellowbook offers three arguments in its Post-Appeal Brief. The first is that
Brandeberry, American Telephone and all other Brandeberry-owned or operated entities should
be permanently enjoined from using the AMTEL name and mark. The second is that the
damages awards should be extended to Brandeberry and all other Brandeberry-owned or
operated entities. The third is that Yellowbook is entitled to an award of attorneys’ fees in the
amount of $209,0009.30. Each of these arguments is relevant to the Appeals Court’s reversal and
remand and will be addressed below.
Injunctive Relief
Yellowbook’s trademark infringement claim against American Telephone was dismissed
on summary judgment because this Court found that Yellowbook was not entitled to the
exclusive use of the AMTEL mark. (Doc. #61.) The Appeals Court has now determined that
Yellowbook was entitled to the exclusive use of the AMTEL mark. Yellowbook, 708 F.3d at 84546. The Appeals Court has also determined that Brandeberry retained no rights in the AMTEL
mark. Id. at 846. Finally, the Appeals Court determined that “American Telephone is
Brandeberry for practical purposes….” Id. at 847. Therefore, American Telephone and

3

Brandeberry’s counsel has been granted leave to withdraw based upon the argument that
Brandeberry has not paid his legal bills and is in the process of filing for bankruptcy. (Doc.
#128.)
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Brandeberry should be permanently enjoined from the use of the AMTEL mark.4
In addition to past infringement, there is evidence that American Telephone registered
the AMTEL DIRECTORIES name and mark with the Ohio Secretary of State on May 14, 2009,
and that this registration does not expire until May 14, 2014. (Yellowbook Post-Appeal Brief,
Ex. 1.) There is also evidence that Brandeberry registered the business name “AMTEL
DIRECTORIES, LLC” on June 9, 2011. (Id. at Ex. 2.) Thus, there is evidence that mechanisms
are in place for American Telephone and Brandeberry to continue using the AMTEL mark.
Pursuant to 15 U.S.C. § 1116(a), an injunction to prevent the illegal use of a trademark
may include a provision directing the defendant to file with the court and serve on the plaintiff,
within thirty (30) days after service of the injunction, a written report made under oath setting
forth in detail the manner and form in which the defendant has complied with the injunction.
Because there is evidence that mechanisms are in place for American Telephone and
Brandeberry to continue using the AMTEL mark, such a written report made under oath is
appropriate in this case.
Finally, there is evidence in this case that Brandeberry contacted and sold advertising to
former customers of the entities that were using the AMTEL mark. Therefore, he should be
enjoined from continuing to do so.
A Permanent Injunction is entered as follows:
IT IS HEREBY ORDERED, ADJUDGED AND DECREED that Defendants Steven
M. Brandeberry and American Telephone Directories, Inc. and their related companies, officers,

4

Yellowbook requested such an enjoinment in its Second Supplemental FAC, the
operative complaint in this matter.
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directors, subsidiaries, affiliates, agents, employees, successors in interest, and all those in
concert or active participation with them are hereby ordered:
1.

To refrain from using in any manner the AMTEL trademark or any other mark or
trade name confusingly similar thereto;

2.

To refrain for a period of three years from selling advertising to, and from directly
or indirectly contacting or soliciting, any customer or advertiser who has been a
customer or advertiser of White/AMTEL or Yellowbook in the last five years, or
who has been directly or indirectly solicited by them to purchase advertising
through illegal, deceptive or fraudulent tactics;

3.

To turn over to Yellowbook or destroy all yellow pages directories, sales
collateral or similar documents and websites in American Telephone’s or
Brandeberry’s control which bear or otherwise use the AMTEL name and mark;
and,

4.

To immediately assign to Yellowbook and/or cancel the AMTEL trademark
registration with the Ohio Secretary of State.

In addition, American Telephone and Brandeberry must file with the court and serve on
Yellowbook, within thirty (30) days after service of this Permanent Injunction, a written report
made under oath setting forth in detail the manner and form in which American Telephone and
Brandeberry have complied with this Permanent Injunction.
Responsibility for Damages
The Appeals Court remanded this matter for a determination of damages for trademark
infringement. Yellowbook, 708 F.3d at 850. They also noted that, since damages for tortious

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interference have already been assessed against American Telephone for tortious interference,
“additional compensatory damages may be duplicative, unless Brandeberry continues to infringe
the AMTEL mark after judgment.” Id.
Yellowbook concedes that “it has not sustained additional damages above and beyond
those previously awarded by the jury for the time period before the verdict (prior to August
2011).” (Yellowbook Post-Appeal Brief, p. 7.) Thus, no additional damages will be awarded on
remand.
Yellowbook also argues that it has sustained “significant additional damages on account
of Brandeberry’s and American Telephone Directories’ improper use of the AMTEL name and
mark from the date of the verdict to present.” (Id.) However, evidence of these alleged additional
damages has not been presented to the Court. Therefore, the Court declines to award additional
damages at this time.
Yellowbook also argues that any and all damage awards must be levied against American
Telephone, Brandeberry and any other Brandeberry-related entity that have utilized the AMTEL
name and mark. This argument is well-founded since the Appeals Court found that “American
Telephone is Brandeberry for practical purposes,” and that Brandeberry retained no rights in the
AMTEL mark. Yellowbook, 708 F.3d at 846-47.
Therefore, it is hereby ORDERED, ADJUDGED AND DECREED that Plaintiff,
Yellowbook Inc., is to recover from Defendants, American Telephone Directories, Inc. and
Steven M. Brandeberry, and any other Brandeberry-owned entities, the total amount of
$114,475.90 ($104,069.00 in compensatory damages and $10,406.90 in punitive damages),
attorneys’ fees and post judgment interest pursuant to 28U.S.C. § 1961. The amount of

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attorneys’ fees due to Yellowbook will be separately determined by the Court.
Attorneys’ Fees
Litigants in the United States generally follow the “American Rule” regarding attorneys’
fees. Hensley v. Eckerhart, 461 U.S. 424, 429 (1983). The “American Rule” is that each party in
a lawsuit ordinarily bears its own attorneys’ fees unless an exception applies. Id.
One such exception to the “American Rule” is that, in Ohio, if punitive damages are
awarded, an aggrieved party may also recover reasonable attorneys’ fees. Galmish v. Cicchini,
734 N.E.2d 782, (Ohio 2000). This provision of an award of attorneys’ fees is not specified in a
statute but is mandated by the court-made law of Ohio.
The Court has the discretion to determine the amount of a fee award. Hensley, 461 U.S.
at 437. Also, the fee applicant has the burden of establishing an entitlement to an award of
attorneys’ fees. Wooldridge v. Marlene Industries Corp., 898 F.2d 1169, 1176 (6th Cir. 1990).
In the Sixth Circuit, a reasonable attorney-fee award is determined by calculating the
number of hours reasonably expended on the litigation multiplied by a reasonable hourly rate.
Imwalle v. Reliance Medical Products, Inc., 515 F.3d 531, 551 (6th Cir. 2008); Jordan v. City of
Cleveland, 464 F.3d 584, 602 (6th Cir. 2006). The result is the lodestar amount which is the
reasonable fee to which counsel is entitled. Imwalle, 515 F.3d ast 552.
This matter has been remanded for various reasons, more fully identified above, for a
determination of the amount of attorneys’ fees to be awarded to Yellowbook. And, as stated by
the Appeals Court, this remand “does not… preclude a denial of fees on discretionary grounds.”
Yellowbook, 708 F.3d at 850.
Yellowbook now seeks, as it did previously, an attorneys’ fee award in the amount of

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$209,009.30. In support of this award, Yellowbook has previously submitted a “true and
accurate schedule detailing these fees.” However, the total amount of the fees detailed on this
“true and accurate” schedule is $209, 010.00.
Yellowbook also now indicates, under the oath of Jeffrey T. Cox, that Yellowbook’s
attorney’s bill summary reflects that its attorneys and paralegals spent 640.25 hours on this
matter. However, the “true and accurate schedule,” which is the only detail provided to the
Court, reflects a total of 638.5 hours spent.
Thus, the dollar amount requested by Yellowbook and the hours allegedly expended are
not consistent with the only evidence that has been provided to the Court after two opportunities
to get it right. The Court recognizes that these differences are minor and will not decline to
award attorneys’ fees on this basis alone.
The Court will use the evidence of the hours and dollars expended from the “true and
accurate schedule” provided by Yellowbook. Thus, the Court will consider an amount of
$209.010.00 and hours expended of 638.5.
In its earlier Opinion, the Court faulted Yellowbook for providing only the lawyer’s time
detail and not the amount actually paid by Yellowbook. Yellowbook has now provided evidence
that indicates that Yellowbook has paid at least the amount for attorneys’ fees identified on the
“true and accurate” schedule, and in some cases more. Thus, the Court may proceed to consider
the whether the number of hours and the hourly rate sought by Yellowbook are reasonable.
Reasonable Number of Hours
When determining reasonable hours, “the standard is whether a reasonable attorney
would have believed the work to be reasonably expended in pursuit of success at the point in

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time when the work was performed.” Wooldridge, 898 F.2d at 1177. The documentation
provided in support of the hours charged must be sufficiently detailed to enable the court to
determine, with a high degree of certainty, that such hours were actually and reasonably
expended in the prosecution of the litigation. Bench Billboard Company v. City of Toledo, 759 F.
Supp.2d 905, 913 (N.D. Ohio 2010)(citing United Slate Tile and Composition Roofers v. G & M
Roofing and Sheet Metal Co., Inc., 732 F.3d 495, n.2 (6th Cir. 1984)), rev’d on other grounds,
499 F. App’x 538 (6th Cir. 2012). Where the documentation is inadequate, the court may reduce
the award accordingly. Id. (citing Hensley, 461 U.S. at 433)).
In this case, the Court finds that the 638.50 hours, as indicated on the “true and accurate”
schedule provided by Yellowbook, were reasonably expended in this litigation. In support, local
and well-respected attorney Jeffrey T. Cox has testified that 640.25 hours is both “reasonable
and necessary in light of the complexity of the trademark claims, the discovery and motion
practice involved, and to properly address the related issues in the matter.” (Affidavit of Jeffrey
T. Cox (“Cox Aff.”) ¶ 9 April 19, 2013.)
Reasonable Hourly Rate
The Court has a broad discretion in determining what constitutes a reasonable hourly
rate. Hudson v. Reno, 130 F.3d 1993, 1208 (6th Cir. 1997), abrogated on other grounds.
However, the reasonable hourly rate is generally the prevailing market rate in the relevant
community. Blum v. Stenson, 465 U.S. 886, 895 (1984). The prevailing market rate is the rate
that lawyers of comparable skill and experience can reasonably expect to command in the venue

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of the court of record.5 Geier v. Sundquist, 372 F.3d 784, 791 (6th Cir. 2004). However, courts
may look to other markets, such as a national market, an area of specialization or any other
appropriate market for a prevailing market rate. Louisville Black Police Officers Organization v.
City of Louisville, 700 F.2d 268, 278 (6th Cir. 1983).
The reasonable hourly rate must be adequately compensatory to attract competent
counsel yet must avoid producing a windfall for lawyers. Reed v. Rhodes, 179 F.3d 453, 471 (6th
Cir. 1999). “In most communities, the marketplace has set a value for the services of attorneys,
and the hourly rate charged by an attorney for his or her services will normally reflect the
training, background, experience and skill of the individual attorney.” Northcross v. Board of
Education of Memphis City Schools, 611 F.2d 624, 638 (6th Cir. 1979). However, the reasonable
hourly rate is not necessarily the exact value sought by a particular firm, but is rather the market
rate in the venue sufficient to encourage competent representation. Gonter v. Hunt Valve Co.,
Inc., 510 F.3d 610, 618 (6th Cir. 2007).
In this case, according to the “true and accurate” schedule provided by Yellowbook, it
seeks an hourly rate of $410 for Robert P. Johnson, $345 in 2010 and $360 in 2011 for Bryce A.
Lenox, $205 for Diane E. MacLeod, $190 for Michael B. Stottman, $215 for Joseph B. Russell,
$210 for Matthew R. Fong, $195 for Lisa A. Smith, $140 for Barbara W. Silbersack, and $120
for Barbara Schiller, with the vast majority of hours being charged by Bryce A. Lenox.
Yellowbook has presented no evidence that any of these hourly rates are reasonable. It

5

An attorney’s customary client billing rate is one reliable indicator of that attorney’s
prevailing market rate in the applicable venue. Hadix v. Johnson, 65 F.3d 532, 536 (6th Cir.
1995).
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has, however, presented evidence that a average rate of $326.44 is reasonable. (Cox Aff. ¶ 10.)
Mr. Cox determined an average rate by dividing the $209,009.30 requested by Yellowbook by
the 640.25 hours that he uses as having been expended. The average hourly rate calculated using
the data provided on Yellowbook’s “true and accurate” schedule is $209.010.00 divided by the
hours expended of 638.5 resulting in an average rate of $327.34.
While the Court has no evidence that the individual hourly rates charged by
Yellowbook’s attorneys are reasonable, there is evidence that the average rate of $327.34
requested by Yellowbook is reasonable. This average rate is reasonable because Mr. Cox has
testified that a rate very close to that is reasonable and because the Court finds that the hourly
rates underlying this average rate are necessary to adequately compensate competent counsel
performing the type of work that was performed here.
Using the average rate of $327.34 from the “true and accurate” schedule provided by
Yellowbook is reasonable. Also, the 638.5 hours requested by Yellowbook in the “true and
accurate” schedule are reasonable notwithstanding adjustments. Therefore, a fee award of
$209,010 is reasonable notwithstanding adjustments.
Adjustment of Award
Two adjustments are relevant for consideration in this matter. One is an adjustment for
the using of quarter-hour billing increments and the other is for limited success. Each will be
considered seriatim.
Adjustment for Quarter-Hour Billing Increments
The “true and accurate” billing summary provided by Yellowbook is in quarter-hour
increments. Quarter-hour billing increments invite downward adjustment of the reasonable

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number of hours. Yellowbook, 708 F.3d at 849; see also Douglas R. Richmond, The New Law
Firm Economy, Billable Hours and Professional Responsibility, 29 Hofstra L. Rev. 207,234
(2000). As one district court has observed, “very few telephone calls last more than one-tenth of
an hour and… it rarely takes more than one-tenth of an hour to read an incoming letter or write a
short outgoing letter.” In re Tom Carter Enterprises, 55 B.R. 548, 549 (Bankr. C.D. Cal. 1985).
Further, several courts have found that keeping time in quarter-hour increments is a feeenhancing, rather that a fee-constraining mechanism. Bench Billboard, 759 F. Supp.2d at 914.
“Billing in quarter-hour increments generates a fee that is 15% higher than billing in a tenth of
an hour.” Id. at 915. “To compensate for inflation imposed by quarter-hour billing increments,
other courts have reduced the attorney’s fee award by 20%.” Id.(citing various opinions).
Finally, the Court of Appeals has determined that “quarter-hour billing cannot mathematically
warrant a fee reduction greater than 60% relative to tenth-of-an-hour billing….” Yellowbook, 708
F.3d at 849.
In this case, the “true and accurate” billing records submitted by Yellowbook include 272
distinct time entries. Of those, approximately 112 at least partly include telephone conferences,
and at least ten of them entail charging the regular hourly rate for travel. If each of the 272 time
entries were considered over-billed by 9 minutes as a result of using quarter-hour increments
instead of tenth-hour increments, the total adjustment would be a reduction of 6.4%.
In sum, due to billing in quarter-hour increments, a fee-enhancing mechanism, and
because Yellowbook’s attorney charged a regular hourly rate for travel, Yellowbook’s fee award
is reduced by 5%. One other possible adjustment will next be considered.
Adjustment for Limited Success

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A court must consider the relationship between the amount of attorneys’ fees awarded
and the results obtained. Hensley, 461 U.S. 424. The court has the discretion to adjust the award
depending upon a plaintiff’s success, the complexity of the case and the risk of recovery.
Dowling v. Litton Loan Servicing, L.P., No. 05-CV-098, 2008 WL 906042 at *1 (S.D. Ohio Mar.
31, 2008)(citing Building Services Local 47 Cleaning Contractors Pension Plan v. Grandview
Raceway, 46 F.3d 1392, 1401 (6th Cir. 1995)). The court also has discretion to adjust the award
downward if the award results in an excessive amount because the claimant has achieved only
partial success. Imwalle, 515 F.3d at 552. Finally, the award may be lowered if the claims on
which the claimant prevailed were sufficiently distinct from the claims upon which the claimant
failed or the claimant did not achieve a sufficient degree of success to justify the fees. Id.(citing
Pennsylvania v. Delaware Valley Citizens' Council for Clean Air, 478 U.S. 546, 564 (1986)).
To be fully successful, a plaintiff need not prevail on every claim or legal theory to
receive fully compensatory attorneys’ fees. Hensley, 461 U.S. at 435. Yet, partial success may
require reduction even where the plaintiff’s claims were interrelated, nonfrivolous and raised in
good faith. Id. at 436. A court is to consider “the significance of the overall relief obtained by the
plaintiff in relation to the hours reasonably expended on the litigation.” Id. at 435. For a plaintiff
to be the prevailing party, there must be some actual benefit to the plaintiff either in terms of
monetary damages, injunctive relief or a voluntary change in a defendant’s conduct. Woolridge,
898 F.2d at 1174.
Where a plaintiff has presented distinctly different claims based upon different facts and
legal theories, work on an unsuccessful claim is not considered to have been expended in pursuit
of the ultimate result achieved. Imwalle, 515 F.3d at 552. Said another way, attorneys’ fees

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should not be awarded for work on unsuccessful claims that are based upon different facts and
legal theories. Warnock v. Archer, 380 F.3d 1076, 1084 (8th Cir. 2004). However, where the
plaintiff’s claims involve common facts or related legal theories, the claims should not be treated
as distinct claims and focus should be on the significance of the overall relief obtained. Imwalle,
515 F.3d at 552.
Finally, a nominal damages award makes the party that is successful on the claim a
prevailing party. Id. at 555. The award of nominal damages, however, highlights the party’s
failure to prove actual, compensable injury, and the only reasonable fee for the party receiving
nominal damages is usually no fee at all. Id. at 555-56.
In this case, Yellowbook brought six claims for relief and Brandeberry brought one
counterclaim. Considering the opinion on appeal, Yellowbook has been successful on four of its
six claims and the remaining two were dropped on the eave of trial. Brandeberry was successful
on his counterclaim, although he was awarded only nominal damages.
Yellowbook’s claims were against Brandeberry and American Telephone and involved
trademark infringement and Brandeberry’s counterclaim involved defamation. Although all of
these claims generally arose out of a set of facts and circumstances, the facts and circumstances
and the law applicable to Yellowbook’s claims are different from the facts and circumstances
and law applicable to Brandeberry’s counterclaim.
Thus, the Court cannot conclude that Yellowbook’s claims and Brandeberry’s
counterclaim involve common facts or related legal theories and cannot conclude that the focus
should be on the significance of the overall relief obtained. Some allocation is necessary, yet the
“true and accurate” billing records submitted by Yellowbook do not distinguish between the

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claims and counterclaim and the Court is unable to discern the difference based upon these
billing records.
The relationship between the attorneys' fees awarded and the overall results that were
obtained are to be considered. Unable to use the time records submitted, the Court turns to the
number of claims. Yellowbook made six claims. Giving Yellowbook the benefit of the doubt, it
was successful on all six. Brandeberry made one counterclaim. Giving Brandeberry the benefit
of the doubt, he was successful on it. Thus, Yellowbook was successful on six claims, or 85.7%
of the claims litigated by the parties, and Brandeberry was successful on one, or 14.3% of the
claims litigated by the parties.
Using the number of claims successfully litigated as a basis, Yellowbook’s attorneys’ fee
award will be reduced by 14.3%. This reduction recognizes that at least some of Yellowbook’s
attorney’s time was spent litigating Brandeberry’s counterclaim for defamation which entailed
different evidence and which also entailed different law from Yellowbook’s claims.
Total Adjustments
Again giving Yellowbook the benefit of the doubt, the two adjustments will not be
compounded. Yellowbook’s total attorneys’ fee award will be adjusted downward by 19.3%, 5%
based upon quarter-hour billing increments and 14.3% based upon the results obtained.
CONCLUSION
A Permanent Injunction is hereby entered against American Telephone and Brandeberry
and their related companies, officers, directors, subsidiaries, affiliates, agents, employees,
successors in interest, and all those in concert or active participation with them. The terms of this
Permanent Injunction are as set forth above.

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American Telephone and Brandeberry are both liable for the damages awarded by the
jury. This final judgment is also set forth above.
Finally, Yellowbook’s reasonable attorneys’ fee award in the amount of $209,010 is
adjusted downward by 19.3%. Thus, Yellowbook is awarded attorneys’ fees in the amount of
$168,671.07 for which American Telephone and Brandeberry are jointly and severally liable.
DONE and ORDERED in Dayton, Ohio this Twenty-Eighth Day of May, 2013.

s/Thomas M. Rose
_______________________________
THOMAS M. ROSE
UNITED STATES DISTRICT JUDGE
Copies furnished to:
Counsel of Record
Steven M. Brandeberry at his last address of record
American Telephone Directories, Inc. at its last address of record

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