Circuit Backs One Attorneys’ Costs Guideline for Patent, TM Cases
In denying offender Jeffrey Todd DeShong’s motion for lawyers’ costs, the high court applied the incorrect standard of what constitutes a remarkable case, the U.S. Court of Appeals for the 5th Circuit ruled.
In the decision, the 5th Circuit joins numerous other federal appeals courts in discovering that the very same standard must request awarding lawyers’ costs in both patent and trademark cases.
Complainant Clive Baker and his organization, the Office of Medical and Scientific Justice Inc., sued DeShong for trademark infringement under the Lanham Act. The OMSJ has a service called the HIV Innocence Group, and DeShong has a number of websites, consisting of www.hivinnocencegrouptruth.com, which claim to expose the OMSJ’s misdeeds. Baker’s suit is based upon claims that DeShong’s site infringes his hallmarks.
The district court dismissed the claims, and DeShong moved for lawyers’ costs under 1117 of the Lanham Act. The court rejected the motion, saying that the case was not exceptional because DeShong did not prove by clear and persuading proof that the plaintiffs brought the match in bad faith.
Section 1117 licenses attorneys’ costs awards to the prevailing party in extraordinary hallmark cases.
The court explained that 1117 of the Lanham Act and the Patent Act’s charges provision contain identical language, which indicates that Octane applies to hallmark cases. Under this analysis, the celebration looking for costs does not need to prove that the other party acted in bad faith. The winning celebration does not have to show that a case was exceptional under the higher clear and convincing requirement (83 PTD, 4/30/14).