United States District Court, D. South Carolina, Spartanburg Division
THE MARSHALL TUCKER BAND, INC. and DOUG GRAY, Plaintiffs,
M T INDUSTRIES, INC. and RON RAINEY, Defendants.
MEMORANDUM OPINION AND ORDER DENYING DEFENDANTS'
MOTION FOR ATTORNEYS' FEES AND COSTS
GEIGER LEWIS, UNITED STATES DISTRICT JUDGE
before the Court is Defendants' Motion for Attorneys'
Fees and Costs (Defendants' Motion) pursuant to 15 U.S.C.
§ 1117(a) and Rule 54(d)(2)(B) of the Federal Rules of
Civil Procedure. The Court has jurisdiction over the matter
under 28 U.S.C. Â§' 1331 and 1367(a). Having carefully
considered Defendants' Motion, the response, the reply,
the supplemental briefing, the record, and the applicable
law, the Court will deny Defendants' Motion.
FACTUAL AND PROCEDURAL HISTORY
following facts are relevant for purposes of Defendants'
Motion. Plaintiffs filed this case alleging claims against
Defendants for trademark infringement, trademark dilution,
declaratory judgment, and trademark cancellation under
federal law and for trademark infringement, breach of
contract, conversion, violation of the South Carolina Unfair
Trade Practices Act, declaratory judgment, and breach of
contract accompanied by a fraudulent act under state law.
Defendants initially filed a motion to dismiss on May 9,
2016. Because Plaintiffs relied on the Declaration signed by
Defendant M T Industries, Inc. (MTI) when it filed its
applications to register the trademark at issue with the
United States Patent and Trademark Office (USPTO), which was
neither contained in nor attached to Plaintiffs' amended
complaint, the Court dismissed without prejudice
Defendants' motion to dismiss so the parties could
conduct discovery on that limited matter.
days later, Plaintiffs requested entry of default as to
Defendants, and the Clerk of Court entered default as to
Defendants on July 29, 2016. In Plaintiffs' request for
entry of default, they asserted the Court denied
Defendants' motion to dismiss, which purportedly entitled
them to an entry of default given Defendants' failure to
file an answer within fourteen days. The parties subsequently
resolved the issue of default, and the Court set aside the
entry of default as to Defendants.
the period of limited discovery, Plaintiffs filed a Second
Amended Complaint (SAC), to which Defendants filed another
motion to dismiss. On March 1, 2017, the Court entered an
Order granting Defendants' motion to dismiss. The Court
first dismissed Plaintiffs' federal trademark
infringement claim because Plaintiffs failed to establish
MTI's use of The Marshall Tucker Band mark (Mark or
Marks) in commerce. The Court likewise held Plaintiffs'
federal trademark dilution claim failed as a matter of law
because Plaintiffs' allegations in their SAC were
insufficient to plead a use in commerce as required under 15
U.S.C. § 1125(c). In light of the fact the Court
dismissed the only claims providing independent jurisdiction
over the action, the Court dismissed Plaintiffs' federal
declaratory judgment and federal trademark cancellation
claims for lack of subject matter jurisdiction. Finally, the
Court declined to exercise supplemental jurisdiction over
Plaintiffs' remaining state law claims.
subsequently filed a Rule 59(e) motion to alter or amend the
Court's Order granting Defendants' motion to dismiss.
On April 25, 2017, the Court amended the conclusion of its
prior Order to state the Court dismissed with prejudice
Plaintiffs' federal trademark infringement and trademark
dilution claims and dismissed without prejudice
Plaintiffs' federal declaratory judgment and trademark
cancellation claims and state law claims. The Court denied
the remainder of Plaintiffs' 59(e) motion, which alleged
the Court erred in dismissing their federal trademark
Defendants filed Defendants' Motion on March 14, 2017,
seeking their reasonable attorneys' fees and costs as the
prevailing parties under the Lanham Act, to which Plaintiffs
filed a response and Defendants filed a reply. The Court
subsequently directed the parties to file supplemental briefs
on Defendants' Motion, which the parties did. The Court,
having been exhaustively briefed on the relevant issues, is
now prepared to discuss the merits of Defendants' Motion.
STANDARD OF REVIEW
1117(a) of the Lanham Act permits the Court to “award
reasonable attorney fees to the prevailing party” in
“exceptional cases.” 15 U.S.C. § 1117(a).
The United States Court of Appeals for the Fourth Circuit has
held a court may find a case “exceptional” under
the Lanham Act-and, consequently, award attorneys' fees
to the prevailing party-where it determines, in light of the
totality of the circumstances,
(1) there is an unusual discrepancy in the merits of the
positions taken by the parties, based on the non-prevailing
party's position as either frivolous or objectively
unreasonable; (2) the non-prevailing party has litigated the
case in an unreasonable manner; or (3) there is otherwise the
need in particular circumstances to advance considerations of
compensation and deterrence.
Georgia-Pacific Consumer Prods. LP v. von Drehle
Corp., 781 F.3d 710, 721 (4th Cir. 2015) (internal
citations and quotation marks omitted).
the Court find a case to be exceptional, warranting an award
of attorneys' fees to the prevailing party, the Court
must calculate an appropriate attorneys' fee award.
Grissom v. The Mills Corp., 549 F.3d 313, 320 (4th
Cir. 2008). In doing so, the Court must determine “the
lodestar amount, ” defined as a “reasonable
hourly rate multiplied by hours reasonably expended.”
Id. To identify the reasonable number of hours and
reasonable rate to use in calculating the lodestar amount,
the Court is guided by the twelve non-exclusive ...