The opinion of the court was delivered by: Marilyn L. Huff, District Judge United States District Court
ORDER: (1) GRANTING PLAINTIFF'S MOTION FOR ATTORNEYS FEES, (2) DENYING PLAINTIFF'S MOTION FOR PREJUDGMENT INTEREST, (3) DENYING PLAINTIFF'S MOTION FOR ENHANCED DAMAGES, & (4) DENYING DEFENDANT'S MOTION FOR ATTORNEYS' FEES
On December 19, 2008, Plaintiff Brighton Collectibles, Inc. ("Brighton") filed a motion for attorneys' fees, enhanced damages under the Lanham Act, and prejudgment interest. (Doc. Nos. 279, 281.) On the same day, Defendant Coldwater Creek Inc. ("Coldwater") filed a motion for attorneys' fees. (Doc. Nos. 275, 278.) On January 6, 2009, the parties filed responses in opposition to the cross motions. (Doc. Nos. 290-91, 294.) On January 13, 2009, the parties filed their replies. (Doc. Nos. 298--99; 300, 302.) The Court held a hearing on the motions on January 16, 2009. Peter Ross and Steven Winton appeared on behalf of Brighton. Peter Brann and Alison Pivonka appeared on behalf of Coldwater.
After due consideration, the Court grants Plaintiff's motion for attorneys' fees, denies Plaintiff's motion for enhanced damages, denies Plaintiff's motion for prejudgment interest, and denies Defendant's motion for attorneys' fees.
Plaintiff Brighton, a designer, manufacturer and retailer of women's fashion accessories, brought suit against Defendant Coldwater, a retailer of products including women's fashion accessories. Plaintiff Brighton alleged copyright infringement of Brighton's "Carolina" and "Brighton Scroll" copyrights, trade dress infringement, false designation of origin, common law unfair competition, and statutory unfair competition. (See Doc. No. 30.) Brighton's claims against Coldwater stemmed from sales of women's handbags and luggage from 2005 to 2007.
On May 20, 2008, the Court granted Coldwater's motion for summary judgment on Plaintiff's copyright claim for infringement of the Brighton scroll. (Doc. No. 179 at p.7.) On November 21, 2008, a jury returned a special verdict in favor of Brighton, finding Coldwater willfully committed trade dress infringement, false designation of origin, and copyright infringement of the "Carolina" copyright and engaged in unfair competition with malice, fraud, or oppression. (Doc. No. 264.) The jury awarded actual damages of $5,893,000 ($2,652,000 for trade dress infringement, false designation of origin or unfair competition and $3,241,000 for copyright infringement) and wrongful profits of $1,499,000 ($675,000 for trade dress infringement, false designation of origin or unfair competition and $824,000 for copyright infringement) against Coldwater. (Id.)
Brighton claims to be the prevailing party under the Copyright Act and the Lanham Act and seeks attorneys' fees of $1,235,404, enhanced damages under the Lanham Act, and prejudgment interest. (Doc. No. 279.)*fn1 Coldwater claims to be the prevailing party on Brighton's "Brighton Scroll" copyright claim and seeks attorneys' fees of $99,751.74 and costs of $4,166.28. (Doc. No. 275 at p.1.)
Under Federal Rule of Civil Procedure 54, a party may move for attorney fees, unless the substantive law requires those fees to be proved at trial as an element of damages. FED. R. CIV. P. 54(d)(2)(A). Brighton asserts that it is entitled to attorneys' fees as the prevailing party under the Copyright Act and the Lanham Act, as the jury found Coldwater willfully infringed Brighton's "Carolina" copyright and willfully committed trade dress infringement and false designation of origin. (Doc. No. 279 at p.1.) Coldwater asserts that it is entitled to attorneys' fees and costs as the prevailing party under the Copyright Act based on the Court's dismissal of Brighton's "Brighton Scroll" copyright claim at summary judgment. (Doc. No. 275 at p.1.)
The Lanham Act provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 15 U.S.C. §1117(a). "[A] case is exceptional within the meaning of 15 U.S.C. § 1117(a) where the infringement is willful, deliberate, knowing or malicious." Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210, 1216 (9th Cir. 2003); see also Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 702 (9th Cir. 2008) (upholding grant of attorneys' fees under Lanham Act based on default judgment where plaintiff pled willful infringement); Rio Properties, Inc. v. Rio Int'l Interlink, 284 F.3d 1007, 1023 (9th Cir. 2002) ("While the term 'exceptional' is not defined in the statute, attorneys' fees are available in infringement cases where the acts of infringement can be characterized as malicious, fraudulent, deliberate, or willful."(citation omitted)).
Plaintiff Brighton is the prevailing party under the Lanham Act, as the jury found Coldwater willfully committed trade dress infringement and false designation of origin. (Doc. No. 264.) The Court finds this case exceptional based on the total record of this case, including the jury's finding of willfulness. See Earthquake Sound, 352 F.3d at 1216 (explaining cases defendant cited for proposition that willful infringement does not per se show exceptionality are "either distinguishable or do not reflect the law of this circuit"). During trial, Brighton presented substantial evidence of Coldwater's intentional infringing conduct, such as emails between employees and designers concerning how to make Coldwater's products more "Brightony." (See, e.g., Doc. No. 281, Trial Ex. 250.) The jury agreed with Brighton's case and found Coldwater willfully infringed Brighton's asserted trade dress and engaged in common law unfair competition with malice, fraud or oppression. (Doc. No. 264.) As a result, the jury awarded Brighton $2,652,000 in actual damages and $675,000 in wrongful profits. (Id.)
Defendant asserts that this is not an exceptional case because Plaintiff's trade dress definition was amorphous and the issues of infringement and willfulness were closely contested. (Doc. No. 290 at pp.12--13.) The Court disagrees and concludes that an award of attorneys' fees under the Lanham Act is appropriate in this exceptional case. ...