Baxter Bailey & Associates v. Powers & Stinson, Inc. et al

Filing 83

ORDER denying 81 Motion for Attorney Fees. Signed by Judge Samuel H. Mays, Jr on 03/20/2017. (Mays, Samuel)

IN THE UNITED STATES DISTRICT COURT
FOR THE WESTERN DISTRICT OF TENNESSEE
WESTERN DIVISION

BAXTER BAILEY & ASSOCIATES,
Plaintiff,
v.
POWERS & STINSON, INC.;
THE TRANSPORTATION FIRM; and
DONALD MCKNATT,
Defendants.

)
)
)
)
)
)
)
)
)
)
)

No. 2:14-cv-03012-SHM

ORDER

Before the Court is the Motion for Costs and Attorney’s
Fees filed by Plaintiff Baxter Bailey & Associates, Inc. (“Baxter”) on August 9, 2016.

(ECF No. 81 (“Mot.”); see also Mem. in

Supp. of Mot. for Costs and Attorney’s Fees, ECF No. 81-1 (“Mem.
ISO Mot.”).)

Defendants Powers & Stinson, Inc.; The Transporta-

tion Firm; and Donald McKnatt filed a response to the Motion on
August 18, 2016.

(Defs.’ Resp. Mem. in Opp’n to Pl.’s Mot. for

Costs and Attorney’s Fees, ECF No. 82 (“Resp.”).)
For the following reasons, the Motion is DENIED without
prejudice.
I.

BACKGROUND
Section I of the Court’s Order dated July 5, 2016 (the “Ju-

ly 2016 Order”) recounts the history of this matter.

Baxter

Bailey & Assocs., Inc. v. Powers & Stinson, Inc., No. 14-3012,
2016 WL 7497581, at *1 (W.D. Tenn. July 5, 2016).

This Back-

ground section addresses only proceedings since the July 2016
Order.
The July 2016 Order denied motions for summary judgment
filed by Baxter and Defendants.

(Id. at *6.)

place on July 25 and 26, 2016.

(Minute Entry, ECF No. 73; Mi-

nute

Entry,

ECF

No.

75.)

The

jury

A jury trial took

considered

two

claims:

(1) trademark dilution in violation of 15 U.S.C. § 1125(a) and
(c); and (2) violation of the Anticybersquatting Consumer Protection Act (“ACPA”), 15 U.S.C. § 1125(d)(1).

(Jury Verdict,

ECF No. 76 (“Verdict”); see also Jury Instructions 10–21, ECF
No.

77.)

The

jury

found

for

Defendants

on

the

dilution claim, and for Baxter on the ACPA claim.

trademark-

(See Verdict

1, 3.)
Before trial, Baxter elected “to accept statutory damages
should it prevail at trial.”
71.)

(Jt. Pretrial Order 8, ECF No.

Under the ACPA, those damages were between $1,000.00 and

$100,000.00,
§ 1117(d).

and

for

the

jury

to

determine.

The jury awarded Baxter $1,000.00.

15

U.S.C.

(Verdict 4.)

Baxter filed the present Motion on August 9, 2016.

Baxter

asks the Court “to award costs and attorney’s fees and allow
counsel to submit an affidavit to provide proof of the costs and

2

attorney’s fees expended in this case.”

(Mem. ISO Mot. 4.)

De-

fendants filed the Response on August 18, 2016.
II.

STANDARDS
The

jury

§ 1125(d)(1).

found

that

Defendants

had

violated

15

U.S.C.

Under 15 U.S.C. § 1117(a):

When . . . a violation under [15 U.S.C.
§ 1125(a) or § 1125(d)] . . . shall have
been established in any civil action arising
under this chapter, the plaintiff shall be
entitled . . . , subject to the principles
of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. . . .
The court in exceptional cases may award
reasonable attorney fees to the prevailing
party.
Under 15 U.S.C. § 1117(d):
In a case involving a violation of [15
U.S.C.
§ 1125(d)(1)],
the
plaintiff
may
elect . . . to recover, instead of actual
damages and profits, an award of statutory
damages in the amount of not less than
$1,000 and not more than $100,000 per domain
name, as the court considers just.
Baxter elected to take statutory damages “instead of actual
damages and profits.”

That leaves the issues of costs and at-

torney’s fees.
Rule 54(d)(1) 1 governs requests for costs:
Unless a federal statute, these rules, or a
court order provides otherwise, costs ––
other than attorney’s fees –– should be al1

References to “Rule __” are to the Federal Rules of Civil Procedure. References to “Local Rule __” are to the Local Rules of
the U.S. District Court for the Western District of Tennessee.

3

lowed to the prevailing party. . . .
The
clerk may tax costs on 14 days’ notice. On
motion served within the next 7 days, the
court may review the clerk’s action.
Local Rule 54.1(a) provides local rules for costs requests:
If parties can agree on costs, it is not
necessary to file a cost bill with the
clerk. If counsel cannot agree, a cost bill
will be filed with the clerk within thirty
days from the termination of the case. If a
cost bill is filed, the clerk will assess
costs after notice and hearing.
No costs
are to be paid through the clerk except
those that are due the clerk.
Rule 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.

Local Rule 54.1(b) provides supplementary rules for 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

4

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 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.

III. ANALYSIS
The

Motion

fails

to

meet

54(d) and Local Rule 54.1(b).

numerous

requirements

of

Rule

The Motion does not state whether

the parties have reached agreement about costs, and Baxter has
not filed a cost bill with the clerk.

The Motion does not state

the amount of attorney’s fees sought “or provide a fair estimate
of it.”

Baxter also has not provided either affidavit specified

by Local Rule 54.1(b).

5

These requirements are not technicalities.
on the Court’s decision.

They may bear

Under § 1117(a), an award of costs is

permissible, “subject to the principles of equity.”

Baxter has

not specified its costs, which the cost-bill requirement demands.

Assuming the parties cannot agree on costs, making an

equitable cost determination requires knowing what costs Baxter
seeks.

If the Court determines that this is an “exceptional

case,” it can award reasonable attorney’s fees.

Baxter has pro-

vided no information about the fees it seeks.
Baxter contemplates a two-part process for seeking costs
and fees.

First, the Court decides the present Motion, answer-

ing certain legal questions bearing on whether Baxter is entitled

to

costs

and

attorney’s

fees.

Second,

if

the

Court

determines that Baxter is entitled to costs or attorney’s fees,
Baxter will “submit an affidavit to provide proof of the costs
and attorney’s fees expended in this case.”

(Mem. ISO Mot. 5.)

That is not what the Federal Rules and Local Rules contemplate.
Baxter gives no reasons to deviate from the Rules. 2

2

The Response does not raise these procedural issues, instead
engaging Baxter’s argument about whether this is an “exceptional
case” justifying a fees award. (See generally Resp.) The Court
should nevertheless raise these issues sua sponte, given its
“‘broad discretion to manage its docket.’”
Moncier v. Jones,
557 F. App’x 407, 409 (6th Cir. 2014) (quoting ACLU v. McCreary
Cnty., Ky., 607 F.3d 439, 451 (6th Cir. 2010)).
Rule 54(2)(C)
provides that a court “may decide issues of liability for fees
before receiving submissions on the value of services.” In this
6

If Baxter chooses to seek costs and fees in this case, it
must follow the procedures set forth in Rule 54(d) and Local
Rule 54.1.

To the extent those rules have deadlines based on

the date of entry of judgment or the date of termination of the
case, for purposes of awarding costs and fees only, the date of
this Order shall be treated as the date of the entry of judgment
and the date the case terminated.
IV.

CONCLUSION
The Motion is DENIED without prejudice.
So ordered this 20th day of March, 2017.

/s/ Samuel H. Mays, Jr.
SAMUEL H. MAYS, JR.
UNITED STATES DISTRICT JUDGE

case, piecemeal handling of the costs and fees issues is not
warranted.

7