Intellectual Property Law

Western District Denies Rose Art's Motion for Award of Fees Following Dismissal

By Michael Atkins

In 2007, PlastWood SRL sued competing toy maker Rose Art Industries, Inc., in the Western District, alleging that many of the structures depicted on the packaging of Rose Art’s Magnetix-branded magnetic construction sets could not be built and collapse under their own weight. PlastWood also brought a Lanham Act claim based on the allegation that Rose Art advertised its toys as being safe for ages “3 to 100,” when in fact they were not.

The Western District granted Rose Art’s motions to dismiss and for summary judgment, ultimately finding that PlastWood did not have any evidence that Rose Art’s advertisement was literally false and that “‘no reasonable jury could conclude that the structures on the Magnetix box [could not] be built as represented on the box.’” (STL posts on the court’s orders on Rose Art’s motions to dismiss and for summary judgment here and here.) 

After winning dismissal, Rose Art moved for an award of attorney’s fees on the ground that the case was “exceptional” under 15 U.S.C. § 1117(a). Cases are “exceptional” for purposes of awarding fees to the defendant where plaintiff’s claims are either “groundless, unreasonable, vexatious, or pursued in bad faith.” Cairns v. Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir. 2002).

On Feb. 4, Western District Judge James Robart rejected Rose Art’s motion. It concluded: “The court dismissed the age label claim early on in the case because the court determined that enforcing PlastWood’s allegations regarding safety labeling as a Lanham Act claim would be incongruent with the safety labeling requirements set forth by the Consumer Product Safety Commission (‘CPSC’). The court did not find the claim ‘baseless’; rather, it found that the claim was better addressed by the CPSC. The court granted summary judgment on the remaining Lanham Act claim after discovery and a number of expert reports revealed that the alleged collapsing structures could be built supporting Rose Art’s claim that its advertisements were not literally false. The court likewise does not find that this claim was a ‘baseless’ claim but rather a well-litigated claim that ultimately favored Rose Art.”

Nor was the court convinced that PlastWood engaged in a ‘blatant effort to capitalize on publicity relating to the tragic death of a child attributable to Rose Art,’ as Rose Art alleged in its motion.

The case cite is PlastWood SRL v. Rose Art Industries, Inc., No. 07-458 (W.D. Wash. Feb. 4, 2009) (Robart, J.).

Full post as published by Seattle Trademark Lawyer on February 22, 2009 (boomark / email).