United States District Court, D. South Carolina, Charleston Division
ORDER AND OPINION
Richard Mark Gorgel United States District Court Judge
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.
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.)
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
(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
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
Merits of Parties' Positions
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.
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 ...