IP Litigator publishes “Supreme Court Decision in Patent Case May Make it Easier to Obtain Attorney Fees in Trademark and Trade Dress Cases” by Jim HallPrint PDF
James C. Hall, a partner in the Intellectual Property Litigation practice group, published “Supreme Court Decision in Patent Case May Make it Easier to Obtain Attorney Fees in Trademark and Trade Dress Cases” in the March/April 2015 issue of IP Litigator. The article discusses the Supreme Court’s decision in Octane Fitness LLC v. ICON Health & Fitness, Inc., which lowered the bar for obtaining attorney fees in patent infringement cases. In particular, the Supreme Court replaced the previously restrictive interpretation of an “exceptional case” that qualifies for the award of attorney fees under Section 285 of the Patent Act, Chapter 35 of the United States Code (U.S.C.) with a lower, more discretionary standard.
Since then, there has been a rash of litigants attempting to cash in on their success of intellectual property litigation of all types—including trademark and trade dress litigation brought under the Lanham Act. Section 1117(a) of the Lanham Act includes a provision for awarding attorney fees that is identical to Section 285 of the Patent Act; however, because Octane Fitness only expressly addresses exceptional cases under Section 285 of the Patent Act, courts are struggling with whether to replace the prevailing standard in their Circuit with the new, lower standard in cases brought under the Lanham Act.
Jim notes that so far, courts are divided as to whether Octane Fitness applies to the Lanham Act, although a greater weight of authority exists in favor of applying the Octane Fitness standard to Section 1117(a) of the Lanham Act. He points out that at least in some Circuits, an particularly in the Third Circuit, the Supreme Court’s decision in Octane Fitness may make it easier to obtain attorney fees in trademark and trade dress infringement cases. In the absence of any definitive ruling on the issue, litigants should be aware of this potential, and in Circuits where Octane Fitness’ reach is not yet settled, prevailing parties in Lanham Act litigation should argue for attorney fees using both the prevailing standard for that Circuit and the Octane Fitness standard.