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SafeRack LLC v. Bullard Co.

United States District Court, D. South Carolina, Charleston Division

February 5, 2019

SafeRack, LLC, Plaintiff,
v.
Bullard Company, Defendant.

          ORDER AND OPINION

          Richard Mark Gorgel United States District Court Judge

         This matter is before the Court on Plaintiff SafeRack, LLC's motion for attorneys' fees and costs. (Dkt. No. 67). For the reasons set forth below, the Court grants in part and denies in part the motion.

         I. Background

         Plaintiff SafeRack, LLC ("SafeRack") alleged that Defendant Bullard Company's ("Bullard") use of orange on "gangways, railings, and gates" infringed on its trademark and trade dress and constituted unfair competition in violation of the Lanham Act and the South Carolina Unfair Trade Practices Act ("SCUTPA"). SafeRack also brought a claim for unjust enrichment. The Court granted in part and denied in part summary judgment in favor of SafeRack on November 28, 2018. (Dkt. No. 65.) Importantly, the Court granted summary judgment in favor of SafeRack on its trademark infringement claim. (Dkt. No. 65 at 18 - 19.) SafeRack now moves for attorneys' fees in the amount of $237, 824.00 and costs in the amount of $19, 907.18. (Dkt. No. 67.) Bullard opposes the motion. (Dkt. No. 69.)

         II. Legal Standard

         Under the Lanham Act, a "court in exceptional cases may award reasonable attorney fees to the prevailing party." 15 U.S.C. § 1117(a). For a case to be exceptional, it must be one that "stands out from others[.]" Georgia-Pac. Consumer Prod. LP v. von Drehle Corp., 781 F.3d 710, 720 (4th Cir. 2015), as amended (Apr. 15, 2015) citing Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749, 1756 (2014) (internal citations and quotations omitted). In making this determination, the Fourth Circuit held that a case is "exceptional" for purposes of attorneys' fees when, in light of the totality of the circumstances, a court determines that:

(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.

Id. at 721. See also Exclaim Mktg, LLC v. DirecTV, LLC, 674 Fed.Appx. 250, 260 (4th Cir. 2016) (applying same standard to assessing attorneys' fees for prevailing plaintiff). A party must demonstrate that a case was exceptional by a preponderance of the evidence. See Verisign, Inc. v. XYZ. COM LLC, 891 F.3d 481, 485 (4th Cir. 2018).

         III. Discussion

         To begin with, SafeRack is clearly a prevailing party in this case as the Court granted summary judgment on SafeRack's trademark infringement claim and enjoined Bullard from future infringement of SafeRack's trademark. (Dkt. No. 65.) Therefore, the Court must assess whether this case is "exceptional."

         A. Attorneys' Fees

         1. Merits of Parties' Positions

         First, under the framework adopted by the Fourth Circuit, the Court must examine whether there was an "unusual discrepancy" between the Parties' positions because the "non-prevailing party's position [w]as either frivolous or objectively unreasonable." See Georgia-Pacific Consumer Prods. LP, 781 F.3d at 721 (citations omitted). To begin with, SafeRack argues that trademark cases are per se complex, especially when applied to a trademark of a single color. (Dkt. No. 67 at 8.) However, this ignores the fact that Lanham Act claims inherently deal with trademarks, yet the statute nonetheless requires a showing that the case is "exceptional" to support an award of attorneys' fees. Similarly, SafeRack argues that this case is exceptional because, after Bullard ceased selling orange gangways, SafeRack was nonetheless "forced...to pursue this litigation until the end." (Id. at 9.) Yet, SafeRack's position would essentially penalize a party for defending itself, and Bullard's decision to cease selling orange gangways does not negate the fact that the parties had a bonafide dispute about whether the color Bullard used and the placement of the color on its railings and gangways constituted trademark infringement.

         Finally, SafeRack argues that Bullard's legal positions were untenable, focusing on Bullard's ultimately unsuccessful argument that the shades of orange employed by Bullard was sufficiently different from the one used by SafeRack. (Id. at 9 - 10.) SafeRack also identifies a number of Bullard's unsupported affirmative defenses, such as its argument that SafeRack "abandoned" its mark and that SafeRack committed fraud against the USPTO. (Dkt. Nos. 67 at 10; 70 at 3.) However, while ...


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