Music City Metals Co., Inc. v. Lucas BBQ Co. Ltd. et al

Filing 35

REPORT AND RECOMMENDATION re 32 MOTION for Attorney Fees and Non-Taxable Expenses filed by Music City Metals Co., Inc. Signed by Magistrate Judge Barbara D. Holmes on 8/11/2015. (DOCKET TEXT SUMMARY ONLY-ATTORNEYS MUST OPEN THE PDF AND READ THE ORDER.)(hb)

IN THE UNITED STATES DISTRICT COURT
MIDDLE DISTRICT OF TENNESSEE
NASHVILLE DIVISION

MUSIC CITY METALS CO., INC.
v.
LUCAS BBQ CO., LTD, et al.

TO:

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)
)
)
)

NO. 3:14-0834

Honorable Todd J. Campbell, District Judge

REPORT AND RECOMMENDATION
By Order entered October 21, 2014 (Docket Entry No. 34), the Court referred Plaintiff’s
Motion for Attorneys’ Fees and Non-Taxable Expenses (Docket Entry No. 32) to the Magistrate
Judge for decision. In accordance with Rules 54(d)(2)(D) and 72(b) of the Federal Rules of Civil
Procedure and for the reasons stated below, the Court recommends that the Motion be granted.
Plaintiff filed this action alleging that Defendants engaged in repeated instances of willful
trademark infringement, trademark counterfeiting, and copyright infringement of Plaintiff’s
intellectual property rights in violation of 15 U.S.C. §§ 1114, 1116, and 1125(a) of the Lanham Act
and 17 U.S.C. § 501 of the Copyright Act. Plaintiff also asserted violations of Tennessee law.
Defendants failed to appear and defend in the action, and an Entry of Default (Docket Entry No. 17)
was entered against Defendants on July 18, 2014. By Order entered September 18, 2014 (the
“Default Judgment Order”)(Docket Entry No. 25), the Court, after holding a hearing on the matter,
granted Plaintiff’s unopposed Motion for Default Judgment and Permanent Injunction. The Court

awarded Plaintiff a total judgment of $2,850,000.00 in statutory damages1 against Defendants for
willful trademark counterfeiting and willful copyright infringement and directed Plaintiff to file its
Application for Attorneys’ Fees, Costs, and Expenses in accordance with the Local Rules of Court.
Id. On September 19, 2014, an Entry of Judgment (Docket Entry No. 26) and a Permanent
Injunction and Order (Docket Entry No. 29) were entered against Defendants.
Pursuant to Rule 54(d)(1) of the Federal Rules of Civil Procedure and Rule 54.01(b) of the
Local Rules of Court, Plaintiff thereafter filed its Motion for Attorneys’ Fees and Non-Taxable
Expenses seeking an award of $30,763.24 in attorneys’ fees and non-taxable expenses. In support
of its motion, Plaintiff submits the Declarations and attachments thereto of Edward D. Lanquist, Jr.,
and Nathan J. Bailey (Docket Entry No. 33-1), the two attorneys who represented Plaintiff in this
action. No opposition to the motion has been filed by Defendants.
The Lanham Act provides that a court may award “reasonable attorney fees to the prevailing
party” in exceptional cases. 15 U.S.C. § 1117(a).2 The Copyright Act provides that a court “may,
in its discretion, award costs, including reasonable attorney fees, to the prevailing party in a civil
suit.” Bridgeport Music, Inc. v. Dimension Films, 410 F.3d 792, 807 (6th Cir.2005) (citing
17 U.S.C. § 505). Plaintiff in this action was clearly the prevailing party, having obtained judgment
in its favor, an award of statutory damages, and the entry of a permanent injunction against

1

In their Motion for Default Judgment, Plaintiff elected to pursue statutory damages under
15 U.S.C. § 1117(a) of the Lanham Act and 17 U.S.C. § 504(c) of the Copyright Act instead of
actual damages. See Docket Entry No. 20, at 12.
2

Although Plaintiff in its motion refers to 15 U.S.C. § 1117(b) as the statutory basis for its
request for attorneys’ fees under the Lanham Act, because treble damages under Section 1117(b)
were not sought by Plaintiff in its Motion for Default Judgment, nor awarded by the Court, the Court
finds that the correct statutory basis for the award of attorney’s fees is that contained in 15 U.S.C.
§ 1117(a).
2

Defendants. See Maker's Mark Distillery, Inc. v. Diageo N. Am., Inc., 679 F.3d 410, 425 (6th Cir.
2012). In the Sixth Circuit, a Lanham Act case can be deemed exceptional for the purposes of
awarding attorneys’ fees when the acts of infringement are “malicious, fraudulent, willful, or
deliberate.” Eagles, Ltd. v. Am. Eagle Found., 356 F.3d 724, 728 (6th Cir. 2004) (quoting Hindu
Incense v. Meadows, 692 F.2d 1048, 1051 (6th Cir. 1982)). In its Default Judgment Order, the
Court, in awarding default judgment to Plaintiff, declared that Defendants had committed willful
infringements. For all of these reasons, the Court finds this to be an exceptional case warranting the
award of attorneys’ fees. See Am. Appraisal Associates, Inc. v. W., 2006 WL 724547, *2 (M.D.
Tenn. Mar. 21, 2006) (Echols, J.). Attorneys’ fees are justified to Plaintiff under both the Lanham
Act and the Copyright Act. The Court also finds that the discretionary award of non-taxable
expenses is warranted in this action.
The Court further finds that the requested attorneys’ fees and expenses are reasonable. The
initial step in determining a reasonable attorneys’ fee is to consider the lodestar amount, which is the
number of hours reasonably expended multiplied by a reasonable hourly rate. See Hensley v.
Eckerhart, 461 U.S. 424, 433, 103 S.Ct. 1933, 76 L.Ed.2d 40 (1983); Isabel v. City of Memphis, 404
F.3d 404, 415 (6th Cir. 2005). When a plaintiff has obtained excellent results, its counsel is entitled
to a "full compensatory fee," Hensley, 461 U.S. at 435, and a reduction in attorneys fees is
appropriate only in "rare and exceptional cases where specific evidence requires it." Isabel, 404 F.3d
at 416. The Declarations and attached exhibits submitted by Plaintiff are sufficiently detailed to
satisfy Plaintiff’s obligation of demonstrating that the requested hours were actually and reasonably
expended in the prosecution of this case and that the hourly rate charged is reasonable. See Hensley,
461 U.S. at 433-34; Imwalle v. Reliance Med. Prods., Inc., 515 F.3d 531, 553 (6th Cir. 2008).
3

Plaintiff’s submissions also satisfy the requirement of Local Rule 54.01(b)(3) that an attorneys’ fee
application be supported by an affidavit that, among other things, sets out “in detail the number of
hours spent on each aspect of the case.”

RECOMMENDATION
Accordingly, the Court respectfully RECOMMENDS that Plaintiff’s Motion for Attorneys’
Fees and Non-Taxable Expenses (Docket Entry No. 32) be GRANTED and that Plaintiff be awarded
a total of $30,763.24 in attorneys’ fees and non-taxable expenses.
ANY OBJECTIONS to this Report and Recommendation must be filed with the Clerk of
Court within fourteen (14) days of service of this Report and Recommendation and must state with
particularity the specific portions of this Report and Recommendation to which objection is made.
Failure to file written objections within the specified time can be deemed a waiver of the right to
appeal the District Court's Order regarding the Report and Recommendation. See Thomas v. Arn,
474 U.S. 140, 106 S.Ct. 466, 88 L.Ed.2d 435 (1985); United States v. Walters, 638 F.2d 947 (6th
Cir. 1981).

Respectfully submitted,

BARBARA D. HOLMES
United States Magistrate Judge

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