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SDNY: Not an Exceptional Case As To Fees

By Marty Schwimmer

Plaintiff sues its licensee. Licsensee prevails, brings motions for fees and costs, alleging that plaintiff had brought this litigation as a ploy to re-negotiate the license. It alleged that plaintiff had brought similar litigation against another licensee in order to 're-negotiate' license, brought mertiless discovery, brought meritless dilution claim, abandoned ADR process, made meritless defense of venue trasnfer motion and never produced evidence on material elements of its claims. Also, defendant established that plaintiff acted in bad faith with regard to its unfair competition claim. Held:

The fact that the jury did not find that [plaintiff] had proven those claims by a prepondernece of evidence does not lead to the conclusion that they were necessarily brought in bad faith. Further, the jury's finding of bad faith on the unfair competition claims is irrelevant here, as the relevant inquiry is whether [plainitff]'s litigation tactics were premised on bad faith, and not whether its pre-Complaint conduct in preventing [defendant] from using the [Marks] in certain ways was done in bad faith.

Motion for fees was denied (however costs were awarded).

Decision Farberware Costs Exceptional

Full post as published by Trademark Blog on January 06, 2010 (boomark / email).