Ducks Unlimited, Inc. v. Boondux, LLC et al

Filing 184

ORDER granting in part and denying in part Ducks Unlimiteds Motion for Attorneys Fees, Expenses, and Costs 169 . Ducks Unlimited is entitled to $10,845.29 in taxable costs and is not entitled to attorneys fees or non-taxable costs. Ducks Unli mited is awarded $13,371.85 for profits arising from trademark infringement, in addition to damages awarded in the Courts August 18, 2017 Memorandum Opinion Findings of Fact and Conclusions of Law (ECF No. 163) and in the Courts September 8, 2017 Order (ECF No. 166). Signed by Judge Samuel H. Mays, Jr on 3/9/2018. (Mays, Samuel)

IN THE UNITED STATES DISTRICT COURT
WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION
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DUCKS UNLIMITED, INC.,
Plaintiff,
v.
BOONDUX, LLC and CALEB
SUTTON,
Defendants.

No. 2:14-cv-2885-SHM-tmp

ORDER

Before the Court is Plaintiff Ducks Unlimited, Inc.’s
(“Ducks Unlimited”) Motion for Attorney’s Fees, Expenses, and
Costs, filed on September 21, 2017.

(ECF No. 169.)

Defendants

Boondux, LLC and Caleb Sutton (collectively, “Defendants”)
responded on October 16, 2017.

(ECF No. 174.)

Ducks Unlimited

filed supplemental briefing on November 21, 2017.
Defendants responded on December 8, 2017.

(ECF No. 179.)

(ECF No. 181.)

Also before the Court is Defendants’ Submission of
Supplemental Accounting, filed on December 8, 2017.
182-83.)

(ECF Nos.

Ducks Unlimited responded on December 15, 2017.

(ECF

No. 183.)
For the following reasons, Ducks Unlimited’s Motion for
Attorney’s Fees, Expenses, and Costs is GRANTED in part and

DENIED in part.

Ducks Unlimited is entitled to $10,845.29 in

taxable costs and is not entitled to attorney’s fees or nontaxable costs.

Ducks Unlimited is awarded $13,371.85 for profits

arising from trademark infringement, in addition to damages
awarded in the Court’s August 18, 2017 Memorandum Opinion
Findings of Fact and Conclusions of Law (ECF No. 163) and in the
Court’s September 8, 2017 Order (ECF No. 166).
I.

Background
This Order includes an abbreviated background beginning from

the Court’s August 18, 2017 Memorandum Opinion Findings of Fact
and Conclusions of Law (ECF No. 163).

A complete background can

be found in that Memorandum Opinion.
On August 18, 2017, the Court found Defendants liable for
copyright infringement, trademark infringement, and false
designation of origin or sponsorship.

(ECF No. 163.)

Defendants

were enjoined from further using the Boondux Logo in commerce.
(Id.)
claims.

Ducks Unlimited was awarded $258,919.04 on its prevailing
(Id.)

Ducks Unlimited was also ordered to elect

statutory damages or profits on its copyright infringement claim.
(Id.)
On August 25, 2017, Ducks Unlimited filed two notices.
First is Ducks Unlimited’s Notice of Election of an Accounting of

2

Defendants’ Infringing Sales, asking that Defendants provide
sales associated with their trademark infringement from their
last accounting until the Court’s August 18, 2017 Memorandum
Opinion.

(ECF No. 164.)

Second is Ducks Unlimited’s Notice of

Election Pursuant to 15 U.S.C. § 504 to Accept Statutory Damages
for its Copyright Infringement Claim in lieu of Profits, seeking
$30,000.00 in statutory damages for copyright infringement.

(ECF

No. 165.)
On September 8, 2017, based on Ducks Unlimited’s second
Notice of Election, the Court awarded Ducks Unlimited statutory
damages for copyright infringement in the amount of $30,000.00.
(ECF No. 166.)

Those damages were in addition to damages awarded

in the Court’s August 18, 2017 Memorandum Opinion (ECF No. 163).
(Id.)
On September 21, 2017, Ducks Unlimited filed its Motion for
Attorney’s Fees, Expenses, and Costs.

(ECF No. 169.)

Ducks

Unlimited seeks $10,845.29 in taxable costs, $5,515.29 in nontaxable costs, and $380,885.00 in attorney’s fees on its
copyright infringement claim and related claims.
Defendants responded on October 16, 2017.

(Id.)

(ECF No. 174.)

On November 3, 2017, Ducks Unlimited filed an Unopposed
Motion to Set Schedule for Production of Defendants’ Accounting,
requiring Defendants to provide, by December 8, 2017, “an
3

accounting of the number of units sold and gross revenue of items
bearing the Boondux Logo from the date of its last production of
sales figures in this case through August 18, 2017.”
176.)

(ECF No.

The Court granted the unopposed motion the same day.

(ECF

No. 177.)
On November 9, 2017, the Court entered an Order for
Supplemental Briefing on Attorney’s Fees, requiring Ducks
Unlimited to file supplemental briefing addressing whether this
matter is an “exceptional case” under the Lanham Act to justify
attorney’s fees on its trademark claims or file supplemental
briefing that limits its fees, expenses, and costs to its
copyright claims.

(ECF No. 178.)

Ducks Unlimited filed its

supplemental brief on November 21, 2017.
Defendants responded on December 8, 2017.

(ECF No. 179.)
(ECF No. 181.)

On December 8, 2017, Defendants filed their accounting of
profits from products bearing the Boondux Logo from the date of
their last production of sales figures through August 18, 2017.
(ECF No. 182.)

Defendants assert that sales amounted to

$13,371.85, and that costs associated with those sales amounted
to $34,550.84.

(Id.)

Defendants seek a decrease in Ducks

Unlimited’s profit award of $258,919.04 to $237,740.05.
Ducks Unlimited responded on December 1, 2017.

4

(Id.)

(ECF No. 183.)

II.

Legal Standard

A. Attorney’s Fees
1. Federal Rule of Civil Procedure 54(d)(2)
Federal Rule of Civil Procedure 54(d)(2)(B) governs motions
for attorney’s fees:
Unless a statute or a court order provides
otherwise, the motion must:
(i)

be filed no later than 14 days after
the entry of judgment;

(ii)

specify the judgment and the statute,
rule, or other grounds entitling the
movant to the award;

(iii) state the amount sought or provide a
fair estimate of it; and
(iv)

disclose, if the court so orders, the
terms of any agreement about fees for
the services for which the claim is
made.

2. Local Rule 54.1(b) Requirements
Local Rule 54.1(b) supplements the rules governing motions
for attorney’s fees:
Consistent with the provision in [Rule]
54(d)(2)(B) permitting variation in the time
for filing a motion for attorney’s fees, a
motion for an award of attorney’s fees and
related non-taxable expenses may be filed
within 14 days from the date the Court’s
judgment becomes final.
In addition to the
requirements of [Rule] 54(d)(2), a motion for
an
award
of
attorney’s
fees
shall
be
supported by a memorandum setting forth the
authority of the Court to make such an award,
why the movant should be considered the
5

prevailing party, if such a consideration is
required for the award, and any other factors
that the Court should consider in making the
award.
The motion shall also be supported
by:
(1)

an affidavit or declaration of counsel
setting out in detail the number of
hours spent on each aspect of the case,
and the rate customarily charged by
counsel for such work; and,

(2)

an affidavit or declaration of another
attorney in the community, who is not
otherwise
involved
with
the
case,
setting out the prevailing rate charged
in the community for similar services.
Within eleven days after service of the
motion, the party against whom the
award is requested shall respond with
any
objections
thereto
and
an
accompanying memorandum setting forth
why
the
award
is
excessive,
unwarranted, or unjust.

3. Copyright Infringement Attorney’s Fees
Under the Copyright Act, it is within the court’s discretion
to award reasonable fees to the “prevailing party.”
§ 505.

17 U.S.C.

The court may not award fees as a matter of course.

Fogerty v. Fantasy, Inc., 510 U.S. 517, 533 (1994).
must further the purposes of the Copyright Act.

An award

Kirtsaeng v.

John Wiley & Sons, Inc., 136 S. Ct. 1979, 1983-85 (2016).
To determine whether to award attorney’s fees, the deciding
court must “give substantial weight to the objective
reasonableness of the losing party's position,” and assess
nonexclusive factors, such as “frivolousness, motivation, . . .

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and the need in particular circumstances to advance
considerations of compensation and deterrence.”

Id.

4. Trademark Infringement Attorney’s Fees
Title 15 U.S.C. § 1117(a) provides that “[t]he court in
exceptional cases may award reasonable attorney fees to the
prevailing party.”

The statute does not define “exceptional,”

but the Sixth Circuit has held that a case is not exceptional
unless “the infringement was malicious, fraudulent, willful, or
deliberate.”

Hindu Incense v. Meadows, 692 F.2d 1048, 1051 (6th

Cir. 1982).
“Trial judges have considerable discretion in [deciding]
§ 1117 motions for attorney fees.”

Sovereign Order of Saint John

of Jerusalem, Inc. v. Grady, 119 F.3d 1236, 1244 (6th Cir. 1997).
A case cannot be exceptional “if there is the slightest doubt” as
to whether the defendant acted with the requisite intent.

Hindu

Incense, 692 F.2d at 1052 (citing O'Brien Int'l, Inc. v. Mitch,
209 USPQ 212, 221 (N.D. Cal. 1980)).
Octane Fitness, LLC v. ICON Health & Fitness, Inc. also
provides guidance.

134 S. Ct. 1749 (2014).

In Octane Fitness,

the Supreme Court clarified the meaning of “exceptional” under
the Patent Act’s fee-shifting provision, 35 U.S.C. § 285.
1751.

Thirty-five U.S.C. § 285 is identical to 15 U.S.C. §

Id. at

1117(a).

Compare 15 U.S.C. § 1117(a) with 35 U.S.C. § 285.

7

Statutes using the same language are interpreted consistently.
See United States v. Hynes, 467 F.3d 951, 967 (6th Cir. 2006)
(“The Supreme Court has held that statutes containing similar
language and having a similar underlying purpose should be
interpreted consistently.”) (citing Northcross v. Bd. of Educ. of
Memphis City Schs., 412 U.S. 427, 428 (1973)); see also

Slep-

Tone Entm't Corp. v. Karaoke Kandy Store, Inc., 782 F.3d 313,
317-18 (6th Cir. 2015) (remanding to district court and
instructing that identical statutes such as the Patent Shifting
Provision and the Lanham Act should be interpreted alike).
In Octane Fitness, the Supreme Court held that, applying the
ordinary meaning of “exceptional,” fees should be awarded only in
a case “that stands out from others with respect to the
substantive strength of a party's litigating position
(considering both the governing law and the facts of the case) or
the unreasonable manner in which the case was litigated.”
1756.

Id. at

The Supreme Court did not state a “precise rule or formula

for making these determinations,” and said that district courts
have discretion to make exceptional case determinations on a
case-by-case basis.

Id. at 1756.

The Court provided a

“‘nonexclusive’ list of ‘factors,’ including ‘frivolousness,
motivation, objective unreasonableness (both in the factual and
legal components of the case) and the need in particular
circumstances to advance considerations of compensation and
8

deterrence.’”

Id. at 1756 n.6 (internal quotations omitted).

The Court emphasized that an exceptional case is “rare.”

Id. at

1756.
B. Costs and Expenses
“Unless a federal statute, these rules, or a court order
provides otherwise, costs -- other than attorney's fees -- should
be allowed to the prevailing party.”

Fed. R. Civ. P. 54(d)(1).

The categories of taxable costs include clerk and marshal fees,
“[f]ees for printed or electronically recorded transcripts
necessarily obtained for use in the case,” witness and printing
fees, copying fees for materials necessarily obtained for use in
the case, docket fees, and certain expert and interpretation
fees.

28 U.S.C. § 1920.

C. Remedies – Trademark Infringement Profits
“In

assessing

infringement]

the

profits
plaintiff

[associated
shall

be

with

required

trademark
to

prove

defendant’s sales only; defendant must prove all elements of cost
or deduction claimed.”

15 U.S.C. § 1117(a).

9

III. Analysis
A. Attorney’s Fees
1. Copyright Infringement Attorney’s Fees
a. Prevailing Party
The parties do not dispute that Ducks Unlimited is the
prevailing party under the attorney’s fee analysis.

The Court

has found that Defendants infringed Ducks Unlimited’s copyright
and trademark.

(ECF No. 163.)
b. Objective Reasonableness & Frivolousness

Ducks Unlimited argues that Defendants’ claims and defenses
were frivolous and objectively unreasonable, because Defendant
Sutton claimed he did not have access to the Ducks Unlimited Duck
Head Logo and the Court found his testimony lacked credibility.
(ECF No. 169-1 at 5201.) 1

Ducks Unlimited contends that

Defendants’ claim that its logo was not substantially similar to
Ducks Unlimited’s logo was objectively unreasonable because the
Court found that Defendants’ logo “copies elements of the DU Logo
that are entitled to copyright protection.”
163 at 5114).)

(Id. (citing ECF No.

Defendants argue that Ducks Unlimited improperly

conflates objective reasonableness with ultimate liability.
No. 174 at 5458.)

1

(ECF

Whether Defendants were ultimately liable does

Unless otherwise noted, citations to the record refer to the PageID

number.

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not make their claims and defenses objectively unreasonable.
(Id.)
“When [one party] has advanced a reasonable, yet
unsuccessful position, an award of attorney fees to the
prevailing [party] generally does not promote the purposes of the
Copyright Act.”

Bridgeport Music, Inc. v. Diamond Time, Ltd.,

371 F.3d 883, 895 (6th Cir. 2004).

Claims under the Copyright

Act are “objectively unreasonable if ‘[they are] clearly without
merit or otherwise patently devoid of legal or factual basis,’”
and are “not objectively unreasonable if there is a ‘reasonable
possibility’ that the court would reach a different outcome on
the merits of the claim.”

Prunty v. Vivendi, 195 F. Supp. 3d

107, 112 (D.D.C. 2016) (quoting ZilYen, Inc. v. Rubber Mfrs.
Ass'n, 958 F.Supp.2d 215, 218 (D.D.C. 2013)); see Nat'l Bus. Dev.
Servs., Inc. v. Am. Credit Educ. & Consulting Inc., 299 F. App’x
509, 513 (6th Cir. 2008) (affirming fees where claim was
“frivolous, unreasonable, and deserving of deterrent action”
because plaintiff “filed a complaint with no genuine idea as to
whether a claim existed and, in failing to obtain the deposit
materials, had exhibited a general indifference to the merits of
the claim”) (internal quotation marks omitted); Heritage Custom
Homes, LLC, No. 2:13-cv-779, 2015 WL 4639654, at *5–*6 (S.D. Ohio
Aug. 3, 2015) (awarding fees and finding that a copyright lawsuit

11

was objectively unreasonable when the plaintiff pursued it for
over a year without having the certificate of registration for
the copyrights at issue).
Defendants’ claims and defenses were not objectively
unreasonable.

Defendants first sought to undermine Ducks

Unlimited’s position that Defendant Sutton had access to Ducks
Unlimited’s logo.

(ECF No. 163 at 5108-09.)

“Access is proven

when the plaintiff shows that the defendant had an opportunity to
view or to copy plaintiff’s work.”

Murray Hill Publ’ns., Inc. v.

Twentieth Century Fox Film Corp., 361 F.3d 312, 316 (6th Cir.
2004).

“[A]ccess may not be inferred through mere speculation or

conjecture.”

Ellis v. Diffie, 177 F.3d 503, 506 (6th Cir. 1999)

(quotation marks omitted).

The legal basis for Defendants’ claim

was not objectively unreasonable.

Defendants argued that Ducks

Unlimited “did not prove that Mr. Sutton was aware prior to his
creation of the Boondux Mark.”

(ECF No. 161 at 5029.)

Defendants argued that the possibility Sutton could have seen
Ducks Unlimited’s Logo did not mean Sutton had actually seen it.
(Id. at 5029-30.)
Courts in this Circuit assess two forms of circumstantial
evidence to demonstrate “reasonable access” when there is no
direct evidence of access: “‘(1) a particular chain of events
establishing defendant's access to plaintiff's work, or (2)

12

plaintiff's work has been widely disseminated.’”

Design Basics,

L.L.C. v. DeShano Companies, Inc., No. 10-14419, 2012 WL 4321313,
at *13 (E.D. Mich. Sept. 21, 2012) (quoting King Records, Inc. v.
Bennett, 438 F.Supp.2d 812, 846 (M.D. Tenn. 2006)).
factual inquiry.

That is a

Plaintiff’s factual allegations must rise above

the level of bald speculation.

Lyles v. Capital-EMI Music Inc.,

No. 2:12-CV-00751, 2013 WL 6000991, at *3 (S.D. Ohio Nov. 12,
2013); see Martinez v. McGraw, No. 3:08–0738, 2009 WL 2447611
(M.D. Tenn. Aug. 10, 2009) (finding no access where plaintiff
claimed that defendants (one of whom was country music singer Tim
McGraw) gained access to plaintiff's songs because McGraw used
the same recording studio and worked with the same musical
personnel as a recording artist who had recorded a song that used
lyrics from plaintiff's copyrighted collection).

Although

Defendants’ factual claims did not succeed, their argument that
Ducks Unlimited’s evidence did not rise above the level of
speculation was not objectively unreasonable.
Defendants also argued that the logos were not substantially
similar.

Defendants “contend[ed] that, after filtering out the

unprotectible elements, any protectible elements that remain in
the DU Logo are not substantially similar to the Boondux Logo.”
(ECF No. 163 at 5112.)

The Sixth Circuit has instructed that, to

perform a proper substantial-similarity analysis, courts must

13

first filter the unoriginal, unprotectible elements out of the
original work and then assess whether the allegedly infringing
work is substantially similar to any remaining protectible
elements in the original.
856-56 (6th Cir. 2003).

See Kohus v. Mariol, 328 F.3d 848,
Defendants’ argument that under this

analysis the logos were not substantially similar was not
objectively unreasonable.
The case law available at the time of the Defendant's
contentions was suggestive of the ultimate result, but not so
overwhelming or direct as to render Defendants’ positions
unreasonable.

See Specific Software Solutions, LLC v. Institute

of WorkComp Advisors, LLC, 615 F.Supp.2d 708, 716 n.7 (M.D. Tenn.
2009) (claim not objectively unreasonable where there was no
controlling Sixth Circuit precedent and only “scant case law” on
the issue in dispute).

Defendants’ arguments were reasonable,

although unsuccessful.

This factor weighs against awarding Ducks

Unlimited’s attorney’s fees and costs.

See Bridgeport Music, 520

F.3d at 593 (It is a “rare instance[]in which a district court
orders a party to pay attorneys’ fees and costs in spite of
finding that the party advanced an objectively reasonable legal
claim or theory.”)

14

c. Motivation
“In considering whether to award attorneys’ fees, courts
consider the motivations of both parties in pursuing the
litigation.”

DC Comics v. Pac. Pictures Corp., No. 2:10-CV-

03633-ODW, 2013 WL 1389960, at *5 (C.D. Cal. Apr. 4, 2013).
Ducks Unlimited argues that Defendants’ motivation was
improper because “their sole motivation was commercial and to
make a profit from the use of the Boondux Logo.”
at 5202.)

(ECF No. 169-1

Courts have found improper motive where a defendant

directly copies a copyrighted work for profit.

Cf. Thoroughbred

Software Int'l, Inc. v. Dice Corp., 529 F. Supp. 2d 800, 803
(E.D. Mich. 2007) (finding no improper motive where defendants
directly copied elements of copyrighted software on customers’
computers, but did not activate any modules for which defendants
had no licenses and did not profit from the infringement);
Balsley v. LFP, Inc., No. 1:08 CV 491, 2011 WL 1303738, at *5
(N.D. Ohio Mar. 31, 2011), aff'd, 691 F.3d 747 (6th Cir. 2012)
(finding improper motive where defendants profited from directly
copying and publishing a copyrighted photograph).
Ducks Unlimited has not established that Defendants directly
copied Ducks Unlimited’s logo as direct copying has been
identified in the cases.

Although Defendants’ motive was to

15

continue profiting from the Boondux Logo, that motivation alone
does not support an attorney’s fee award to Ducks Unlimited.

d. Compensation and Deterrence
Considerations of compensation and deterrence under the
Copyright Act are inextricably intertwined with the
reasonableness or frivolousness of the parties’ positions and
their motivations in litigating the dispute.

A party that

advances reasonable, good-faith positions should not be deterred
from doing so, even if ultimately unsuccessful, because such
claims or defenses help define the scope and limits of copyright
protection.

See Donald Frederick Evans and Associates, Inc. v.

Continental Homes, Inc., 785 F.2d 897, 916 (11th Cir. 1986)
(under § 505, “a losing party's good faith and the complexity of
the legal issues likely would justify a denial of fees to a
prevailing party” (internal quotations and citations omitted)).
Deterring future violations is a factor in awarding
attorney’s fees.

Likely future violators include those who

should have investigated the possibility of infringement, but
failed to do so.

Balsley, 691 F.3d at 773.

Likely future

violators include those who willfully infringe.

See, e.g.,

Cable/Home Comm. Corp. v. Network Prods., Inc., 902 F.2d 829, 851
(11th Cir. 1990) (quoting Int'l Korwin Corp. v. Kowalczyk, 855
F.2d 375, 383 (7th Cir. 1988)) (“[W]hen the infringement is
16

willful, ‘deterrence of future violations is a legitimate
consideration’ because ‘defendants must not be able to sneer in
the face of copyright owners and copyright laws.’”); Harrison
Music Corp. v. Tesfaye, 293 F.Supp.2d 80, 84 (D.D.C.
2003) (awarding fees in part because defendant “deliberately
refused to comply with copyright laws”).
Some courts have held that willful copyright infringement
requires a penalty that dissuades present or future infringers
and furthers the national interest in maintaining “a legal system
that encourages and rewards those who prevent copyright
infringement.”

See, e.g., Quantum Sys. Integrators, Inc. v.

Sprint Nextel Corp., 2009 WL 3423848 (E.D. Va. Oct. 16, 2009).
Other courts have held that, where injunctive relief has
been awarded, a fee award is no longer necessary to deter future
violations.

See, e.g., Virtual Studios, Inc. v. Beaulieu Grp.,

LLC, 987 F. Supp. 2d 769 (E.D. Tenn. 2013); Bait Prods. Pty Ltd.
v. Murray, No. 8:13-CV-0169-T-33AEP, 2013 WL 4506408, at *7 (M.D.
Fla. Aug. 23, 2013) (statutory damages coupled with the
injunctive relief were a sufficient deterrent against any future
wrongful conduct by defendant and others); Under a Foot Plant,
Co. v. Exterior Design, Inc., No. CV BPG-15-871, 2017 WL 3840260,
at *3 (D. Md. Sept. 1, 2017) (same); Compaq Computer Corp. v.
Procom Tech., Inc., 908 F.Supp. 1409, 1428–29 (S.D. Tex. 1995).

17

Ducks Unlimited has been awarded statutory damages of
$30,000.00.

(ECF No. 166.)

Ducks Unlimited has also received a

permanent injunction against Defendants for future copyright and
trademark infringement.

(ECF No. 163.)

Ducks Unlimited now

seeks $380,885.00 in attorney’s fees and $16,360.58 in costs and
expenses.

(ECF No. 169-1 at 5213.)

Attorney’s fees more than

ten times greater than the damages awarded for copyright
infringement, in addition to a permanent injunction, would exceed
the amount necessary to deter future infringers.
Ducks Unlimited argues that compensation and deterrence
support a fee award because Defendants “infringed on Ducks
Unlimited’s copyright in its Ducks Head Logo,” “were fully aware
that Ducks Unlimited would pursue its attorneys’ fees if it were
the prevailing party,” and “chose to continue on with this
litigation, even after it appeared the parties had reached a
settlement over a year before trial . . . .”

(ECF No. 169-1 at

5204.)
The parties’ settlement discussions, which are typically
confidential to encourage candid negotiations, are not relevant
in determining whether compensation or deterrence favors a fee
award.

See Diamond Star Bldg. Corp. v. Freed, 30 F.3d 503, 506–

07 (4th Cir. 1994) (lower court abused its discretion by
considering prevailing defendant's refusal to settle).

18

The

Court’s ultimate conclusion that Defendants infringed Ducks
Unlimited’s copyright or that Ducks Unlimited included in its
complaint a request for attorney’s fees also has no effect on
whether compensation or deterrence favors a fee award.
Ducks Unlimited contends that Defendant Sutton did not
remove merchandise bearing the Boondux Logo from the market,
although he “was fully aware of the copyright rights Ducks
Unlimited was asserting, as well as the scope of protection
afforded by a copyright, as he had discussed copyright protection
with an attorney, sought copyright protection for the Boondux
Logo, and actively policed the Boondux Logo.”
5204.)

(ECF No. 169-1 at

Sutton’s behavior is not inconsistent with deterring

future violators.

The Court has found that Defendants did not

infringe Ducks Unlimited’s copyright willfully.
5177.)

(ECF No. 163 at

The failure to remove merchandise was consistent with

Defendants’ legal position that the Boodux Logo did not infringe.
Ducks Unlimited also argues that deterrence favors
attorney’s fees because Defendants “appear to continue to utilize
other logos that appear to be substantially similar to logos of
other well-known companies. . . .”

(ECF No. 169-1 at 5205.)

Whether Defendants are infringing other logos is not properly
before the Court.

Ducks Unlimited does not contend that

Defendants have continued to infringe the Ducks Unlimited Logo

19

following the Court’s August 18, 2017 Order.

Defendants’

production of products unrelated to this litigation does not
affect future violators.
Ducks Unlimited contends that compensation favors attorney’s
fees because Ducks Unlimited is a non-profit corporation.

(Id.)

Assessing the status of the parties does not further the purposes
of the Copyright Act and is not relevant to awarding fees.

See

Fogerty, 510 U.S. at 524 (“Entities which sue for copyright
infringement as plaintiffs can run the gamut from corporate
behemoths to starving artists.”); see also MiTek Holdings, Inc.
v. Arce Eng'g Co., 198 F.3d 840, 843 (11th Cir. 1999)
(“[D]istrict court[s] should consider not whether the losing
party can afford to pay the fees but whether the imposition of
fees will further the goals of the Copyright Act.”).
Awards pursuant to Section 505 “should encourage the types
of lawsuits that promote” the Copyright Act's aims of
“encouraging and rewarding authors’ creations while also enabling
others to build on that work.”

Kirtsaeng, 136 S.Ct. at 1986.

Awarding fees to Ducks Unlimited in light of Defendants’ nonfrivolous defenses and non-willful infringement would not further
the purposes of the Copyright Act.

Ducks Unlimited’s request for

attorney’s fees under Section 505 is DENIED.

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2. Trademark Infringement Attorney’s Fees
Ducks Unlimited argues that this is an exceptional case
warranting attorney’s fees under 15 U.S.C. § 1117.
at 5711.)

(ECF No. 179

Ducks Unlimited points to Defendants’ allegedly

“malicious, willful, fraudulent, and deliberate” acts.

(Id.)

Defendants’ arguments were not frivolous, their conduct was
not unreasonable, and their motive was not improper.

Defendants’

motion for partial summary judgment was granted in part.
No. 140.)

(ECF

Although Defendants’ arguments at trial were

ultimately unsuccessful, they were based on appropriate precedent
within the meaning of § 1117(a).

Defendants did not engage in

vexatious conduct, assert groundless claims or defenses, or
pursue their case in bad faith.

“Considering the totality of the

circumstances,” this is not an “exceptional” case that “stands
out from others with respect to the substantive strength of [the
defendants’] litigating position (considering both the governing
law and the facts of the case) [and the] . . . manner in which
the case was litigated.”

Octane Fitness, 134 S. Ct. at 1756.

Ducks Unlimited’s motion for attorney’s fees under § 1117(a) is
DENIED.

21

B. Costs and Expenses
Ducks Unlimited seeks $10,845.29 in taxable costs and
$5,515.29 in non-taxable costs.

(ECF No. 169-1 at 5211-13.)

non-taxable costs are expert witness fees.

Its

Defendants contend

that Ducks Unlimited’s costs are “excessive and should be
reduced.”

(ECF No. 174 at 5456.)

“Defendants concede that Ducks

Unlimited is entitled to $10,845.29 in taxable costs” under 28
U.S.C. § 1920.

(Id. at 5476.)

Defendants dispute Ducks

Unlimited’s entitlement to non-taxable costs because the case
does not merit an award of attorney’s fees.

(Id. at 5477.)

Although the Copyright Act permits the recovery of “full
costs,” there is a split of authority on whether that provision
is limited by 28 U.S.C. §§ 1821(b) and 1920.
Nimmer, § 14.09 (2017).

See 4 Nimmer &

Plaintiff urges the Court to follow the

Ninth Circuit's decision in Twentieth Century Fox Film Corp. v.
Entm't Distrib., 429 F.3d 869 (9th Cir. 2005), in which the court
concluded that, by specifically authorizing the recovery of
“full” costs, Congress empowered “district courts . . . [to]
award otherwise non-taxable costs, including those that lie
outside the scope of § 1920, under § 505.”
Fox, 429 F.3d at 885.

Twentieth Century

Defendants contend that the Sixth Circuit

has not clearly adopted the Ninth Circuit’s test.
at 5477.)

(ECF No. 174

They argue that “Sixth Circuit jurisprudence suggests

22

that an award of non-taxable costs should be evaluated for
reasonableness in light of similar factors for awarding
attorneys’ fees.”

(Id.)

The Court need not decide whether sections 1821 and 1920
limit the recovery of non-taxable costs under Section 505.

For

the reasons discussed above as to attorney’s fees, an award of
expert witness fees, in any amount, is not warranted in this
case.

See 4 Nimmer & Nimmer, § 14.09 (2017) (“As with the award

of fees, an award of costs typically is not made if there is no
element of moral blame attributable to the party against whom
such costs are sought.” (footnotes omitted)).
Ducks Unlimited’s request for $10,845.29 in taxable costs is
GRANTED and its request for $5,515.29 in non-taxable costs is
DENIED.
C. Remedies – Trademark Infringement Profits
“In assessing profits the plaintiff shall be required to
prove defendant’s sales only; defendant must prove all elements
of cost or deduction claimed.”

15 U.S.C. § 1117(a).

“Any doubts

about the actual amount of gross sales or profits will be
resolved against the infringing party.”

5 McCarthy on Trademarks

and Unfair Competition § 30:66 (5th ed.) (2017).

“If the

infringer provides no evidence from which the court can determine
the amount of any cost deductions, there is no obligation to make
23

an estimate, and ‘costs’ need not form any part of the
calculation of profits.”

Id.

“The infringer's burden of proving

deductible costs is not carried by records showing only a vague,
undifferentiated category of ‘overhead’ or ‘checks written.’”
Id. (citing 4 Nimmer on Copyright § 14.03).
The supporting documentation cannot be incomplete,
contradictory, or contain imprecise figures.

See H-D Michigan

Inc. v. Biker's Dream Inc., 48 U.S.P.Q.2d 1108, 1998 WL 697898
(C.D. Cal. 1998), aff'd in part, appeal dismissed in part, 230
F.3d 1366 (9th Cir. 2000) (finding failure to prove any cost
deductions where infringer's cost data is “incomplete and
contradictory”); see also Aris Isotoner Inc. v. Dong Jin Trading
Co., Inc., 17 U.S.P.Q.2d 1017, 1989 WL 236526, *5 (S.D.N.Y. 1989)
(“[I]f the actual sales cannot be precisely determined, the court
may resolve any doubts against the defendant in calculating
profits, particularly if the uncertainty is due to the
defendant’s inadequate recordkeeping or failure to produce
documentary evidence.”); 4 Nimmer on Copyright § 14.03 (2017)
(“[O]nly expenses proven with some specificity to relate to the
infringing work may be deducted in determining the profits
attributable to that work.”).

“[T]he determination of overhead

presents an issue of fact,” so the “[d]efendant bears the burden
of proving that each item of general expense contributed to the
production of the infringing items, and of further offering a
24

fair and acceptable formula for allocating a given portion of
overhead to the particular infringing items in issue.”
on Copyright § 14.03 (2017).

4 Nimmer

“The defendant may not claim the

absence of profits merely because the profits attributable to the
infringing items were not sufficient to offset the losses
sustained by the defendant from other aspects of his business.”
Id.
Defendants have provided an accounting of total sales from
the last date of production in February 2017, to August 18, 2017.
They assert that their total sales of infringing products were
$13,371.85.

(ECF No. 182.)

They also assert that they incurred

$34,550.84 in costs, and thus experienced a loss of $21,178.99.
(Id.)

The exhibits attached to Defendants’ accounting show that

total “Costs Associated with Original Boondux Logo Only” were
$40,184.73.

(ECF No. 182-2.)

The affidavit of Jeanne Sutton

represents that some costs are not fully attributable to the
Boondux Logo, and thus the total costs incurred were actually
$34,550.84.

(Aff’d Jeanne Sutton, ECF No. 182-3.)

Based on

Defendants’ purported loss, they seek a reduction of Ducks
Unlimited’s profit award from $258,919.04 to $237,740.05.

(ECF

No. 182.)
Defendants, through the affidavit of Jeanne Sutton (“Ms.
Sutton”), allege 13 deductible expenses and costs.

25

(Aff’d Jeanne

Sutton, ECF No. 182-3 ¶¶ 6-18.)

Attached to Ms. Sutton’s

affidavit are two tables that Defendants appear to have created.
One table consists of four columns entitled “Description,”
“Quantity,” “Total Sales,” and “Cost of Goods:”

(ECF No. 182-1.)
The second table consists of two columns entitled, “Cost
Associated with Original Boondux Logo Only” and “Cost:”

26

(ECF No. 182-2.)
her affidavit.

Ms. Sutton describes the categories of costs in
(Aff’d Jeanne Sutton, ECF No. 182-3.)

No methodology is suggested and no facts are presented to
explain the difference between the not-fully-attributable costs
of $40,184.73 in the second table and the costs of $34,558.84
that Ms. Sutton asserts were actually incurred.
A review of the cost categories in the affidavit reinforces
the lack of clarity and factual support.

First, Ms. Sutton

asserts that Defendants incurred $22,966.00 in costs for
manufacturing and printing products bearing the Boondux Logo.

27

(Id. ¶ 6.)

Defendants provide no purchase orders, receipts,

invoices, or other documentation to support this calculation.

It

is unclear from the first table why some products cost $145 to
manufacture and print (e.g., sunglasses straps) while other
products cost nothing to manufacture and print (e.g., glow in the
dark tanks).

(See ECF No. 182-1.)

There is no explanation about

how the table was compiled or the values calculated.

Defendants

are in the best position to provide documentation supporting
their deductions and costs, but have failed to provide
satisfactory evidence.

Defendants have failed to prove that they

incurred $22,966.00 in manufacturing and printing costs.
Second, Ms. Sutton asserts that Defendants have incurred
$668.58 in credit card processing fees for products bearing the
Boondux Logo.

(Aff’d Jeanne Sutton, ECF No. 182-3 ¶ 7.)

Defendants provide no receipts, invoices, or purchase orders
associated with those credit card processing fees, although
Defendants are in the best position to provide documentation.
Defendants have failed to prove that they incurred $668.96 in
credit card processing fees associated with infringing products.
Third, Ms. Sutton asserts that Defendants have incurred
$1664.94 in website fees for hosting Boondux.com, $832.47 of
which is attributable to Boondux Logo related costs.
Jeanne Sutton, ECF No. 182-3 ¶ 8.)

28

(Aff’d

She asserts that, between

February 2017 and August 18, 2017 “approximately 50 percent of
all products sold bore the Boondux Mark.”

(Id. ¶ 5.)

“If the infringer makes or sells several different brands of
goods and only one is infringing, then it must apportion costs to
the infringing line.”

5 McCarthy on Trademarks and Unfair

Competition § 30:68 (5th ed.) (2017).

“Where the infringer can

show from his books the percentage of gross income derived from
the sale of the infringing goods separate from that of
noninfringing goods, overhead costs should generally be
apportioned in the same proportion as gross sales.”

Id.

Defendants provide no evidence to support the proposition that
50% of sales between February and August 2017 should be
apportioned to products bearing the Boondux Logo, although
Defendants are in the best position to provide documentation.
Defendants present no evidence to support the allocation of
profits, costs, and expenses between infringing and noninfringing products.
Defendants provide no invoices, receipts, or other
supporting documentation to establish that they have incurred
$1664.94 in website fees for hosting Boondux.com.

The self-

created table, which includes “Website Fees” as a “Cost
Associated with Original Boondux Logo Only,” is vague and
undifferentiated.

(See ECF No. 182-2.)

29

Without supporting

documentation, it is unclear how the fees were calculated.
Defendants have failed to prove they are entitled to $832.47 in
deductions and costs for website fees.
Fourth, Ms. Sutton asserts that Defendants incurred $402.77
for shipping products bearing the Boondux Logo through USPS or
UPS.

(Aff’d Jeanne Sutton, ECF No. 182-3 ¶ 9.)

Defendants

provide no invoices, receipts, or other supporting documentation
to establish that they have incurred $402.77 for shipping
products bearing the Boondux Logo through USPS or UPS.

Without

documentation, it is unclear how that amount was calculated.
Defendants have failed to prove they are entitled to $402.77 in
shipping costs for products bearing the Boondux Logo.
Fifth, Ms. Sutton asserts that Defendants incurred “at least
$236.32” in costs for “general office supplies such as ink,
paper, labels and other general office materials.”
Sutton, ECF No. 182-3 ¶ 10.)

(Aff’d Jeanne

“When applying the percentage

applicable to the Boondux Logo, at least $118.31 is attributable
to the Boondux Logo related costs.”

(Id.)

For the reasons

discussed above, Defendants have failed to prove that 50% of
sales were attributable to products bearing the Boondux Logo.
The application of a 50% apportionment is not well taken.
Defendants present only the table as a record of their costs.
That record shows only a vague, undifferentiated category of

30

“Office Supplies.”

The office supply costs associated with the

infringing products cannot be determined.

Defendants have failed

to prove they are entitled to any general office supply costs.
Sixth, Ms. Sutton asserts that Defendants incurred $3,850.99
in costs for hangtags bearing the Boondux Logo.
Sutton, ECF No. 182-3 ¶ 11.)

(Aff’d Jeanne

Defendants provide no documentation

explaining how that figure was calculated.

Defendants provide no

invoices, receipts, purchase orders, or other documentation to
demonstrate that they incurred the cost and that the cost is
associated with infringing sales.

Defendants are in the best

position to provide that supporting documentation.

Defendants

have failed to prove they are entitled to costs incurred for
hangtags bearing the Boondux Logo.
Seventh, Ms. Sutton asserts that Defendants incurred “at
least $440.00” in costs for shipping supplies bearing the Boondux
Logo.

(Aff’d Jeanne Sutton, ECF No. 183-2 ¶ 12.)

She refers to

the second table and to Trial Exhibit No. 94 (a cylindrical,
cardboard shipping container bearing the Boondux Logo).
Defendants provide no supporting documentation.

(Id.)

Ms. Sutton’s

statement that the cost is “at least $440.00” demonstrates that
the value is vague and incomplete.
was calculated.

It is unclear how the cost

Defendants have failed to prove they are

31

entitled to costs and deductions for shipping supplies bearing
the Boondux Logo.
Eighth, Ms. Sutton asserts that Defendants have incurred
$585.00 in “advertising emails sent by Boondux to its current and
former customers using the MailChimp emailing service[].

These

mailers are prominently featured and advertise[] products bearing
the Boondux Logo.”

(Aff’d Jeanne Sutton, ECF No. 182-3 ¶ 13.)

Defendants provide no receipts or invoices for these services,
although they are in the best position to provide documentation.
It is unclear how the cost was calculated.

Defendants have

failed to prove they are entitled to $585.00 in advertising costs
for MailChimp’s emailing service.
Ninth, Ms. Sutton asserts that Defendants have incurred
$70.00 in fees to maintain Boondux’s business registration with
the Louisiana Secretary of State.
182-3 ¶ 14.)

(Aff’d Jeanne Sutton, ECF No.

Defendants provide no receipts or invoices for the

registration fee, although they are in the best position to
provide documentation.

Defendants also provide no proof that

this cost was incurred in connection with the sale of its
infringing products.

Because Defendants sell non-infringing

products, they would have paid the registration fee regardless of
their infringing sales.

See Shell Trademark Mgmt. BV v. Ray

Thomas Petroleum Co., No. 3:07cv163-RJC, 2009 WL 2105933, at *4

32

(W.D.N.C. July 13, 2009) (rejecting infringer’s overhead costs
because it failed to provide proof that those costs were incurred
in connection with the sale of the infringing product and that it
would have paid those costs regardless of its infringing sales).
Defendants fail to prove that they are entitled to any business
registration costs.
Tenth, Ms. Sutton asserts that Defendants have incurred
$381.22 in costs for “repairs made to the trailer owned by
Boondux.

In June 2017, a panel on the trailer was leaking and

had to be replaced.”

(Aff’d Jeanne Sutton, ECF No. 182-3 ¶ 15.)

Like Defendants’ business registration fee, the cost of repairs
to a trailer would have been incurred regardless of Defendants’
infringing sales.

There is no nexus between the trailer and the

infringing sales.

Defendants have failed to prove they are

entitled to costs of repairs to the trailer.
Eleventh, Ms. Sutton asserts that Defendants have incurred
$1535.00 in “general expenses paid to Boondux’s accountants who
prepare Boondux’s tax filings and sales tax calculations.”
(Aff’d Jeanne Sutton, ECF No. 182-3 ¶ 16.)

Defendants provide no

receipt or invoice for those services, although they are in the
best position to provide documentation.

Defendants would have

paid those costs regardless of their infringing sales.
Defendants have failed to prove that they are entitled to costs

33

incurred because their accountants prepared Boondux’s tax filings
and sales tax calculations.
Twelfth, Ms. Sutton asserts that Defendants have incurred
$3590.00 in labor costs “paid to [her] as salary for [her] work
for Boondux.”

(Aff’d Jeanne Sutton, ECF No. 182-3 ¶ 17.)

Defendants provide no proof of Ms. Sutton’s employment or of her
salaried position with Boondux.
contrary.

The trial testimony is to the

(Trial Tr., ECF No. 153 at 4195:4-20; Trial Tr., ECF

No. 154 at 4260:2-11 (“Q: So, you have never financially
compensated [Ms. Sutton] for anything in connection with the
Boondux business operation, correct?

A: Well, I mean, maybe

there’s been some, like, business gifts or something like that
but as far as giving her a direct paycheck, no, ma’am.”).)
“The value of a defendant's own labor . . . and salaries or wages
paid to persons responsible for the tortious conduct, are not
ordinarily deductible.”

Restatement (Third) of Unfair

Competition § 37 cmt. g (2017).

Defendants have failed to prove

that they are entitled to $3590.00 in deductions and costs for
Ms. Sutton’s compensation.
Thirteenth, Ms. Sutton asserts that Defendants have incurred
“at least $200” in gasoline “expended in dropping off packages to
be shipped at the post office.”
182-3 ¶ 18.)

(Aff’d Jeanne Sutton, ECF No.

Defendants provide no receipts, proof of mileage,

34

or formula for that expense.

Ms. Sutton’s use of “at least”

demonstrates that the figure is imprecise, requiring some upward
or downward departure from the actual cost.

The uncertainty of

gasoline costs is resolved in Ducks Unlimited’s favor.
Defendants have failed to prove that they are entitled to costs
and deductions for gasoline expended in dropping off packages at
the post office.
Defendants have failed to prove they are entitled to any of
their alleged costs and deductions.

Ducks Unlimited is awarded

$13,371.85 for profits arising from trademark infringement
between February 2017 and August 18, 2017.
IV.

Conclusion

For the foregoing reasons, Ducks Unlimited’s Motion for
Attorney’s Fees, Expenses, and Costs is GRANTED in part and
DENIED in part.

Ducks Unlimited is AWARDED $10,845.29 in taxable

costs.

It is not entitled to attorney’s fees or non-taxable

costs.

Ducks Unlimited is AWARDED $13,371.85 for profits arising

from trademark infringement, in addition to damages awarded in
the Court’s August 18, 2017 Memorandum Opinion (ECF No. 163) and
the Court’s September 8, 2017 Order (ECF No. 166).

35

So ordered this 9th day of March, 2018.
/s/ Samuel H. Mays, Jr.
SAMUEL H. MAYS, JR.
UNITED STATES DISTRICT COURT JUDGE

36