Featured Chrome Extensions:

Casey IRACs are produced by an AI that analyzes the opinion’s content to construct its analysis. While we strive for accuracy, the output may not be flawless. For a complete and precise understanding, please refer to the linked opinions above.

Keywords

lawsuitlitigationattorneymotionwilltrademarkcorporationgood faithbad faith
attorneyequityverdictmotionwillcorporationbad faith

Related Cases

Playboy Enterprises, Inc. v. Baccarat Clothing Co., Inc., 692 F.2d 1272, 216 U.S.P.Q. 1083
View Case »
Burford v. Accounting Practice Sales, Inc., 786 F.3d 582, 40 IER Cases 1, 114 U.S.P.Q.2d 1734
View Case »
Continental Distilling Corp. v. Old Charter Distillery Co., 188 F.2d 614, 88 U.S.App.D.C. 73, 87 U.S.P.Q. 365
View Case »
Prestonettes, Inc., v. Coty, 264 U.S. 359, 44 S.Ct. 350, 68 L.Ed. 731
View Case »
Coach, Inc. v. Goodfellow, 717 F.3d 498, 106 U.S.P.Q.2d 2033
View Case »
Justia Law Link
LexisNexis Link
Westlaw Link
CourtListener Link
Oyez Link

Visible Systems Corp. v. Unisys Corp., Not Reported in F.Supp.2d, 2008 WL 352488

Facts

Visible Systems Corporation (Visible) filed a lawsuit against Unisys Corporation (Unisys) for infringing on its registered trademark 'Visible.' A jury awarded Visible $250,000 for the infringement. Visible subsequently sought an award of attorneys' fees amounting to $934,591.86, arguing that the case was exceptional due to Unisys's willful infringement. However, the court found that Unisys acted with a good faith belief that its actions did not infringe on Visible's mark.

Visible's case for a finding of exceptional circumstances rests principally on the jury's advisory verdict that Unisys's infringement was willful, a state of mind that the court in its instructions equated with actual knowledge of, or deliberate indifference to, acts of infringement.

Issue

Whether Visible Systems Corporation is entitled to an award of attorneys' fees under the Lanham Act based on the claim of exceptional circumstances.

Whether Visible Systems Corporation is entitled to an award of attorneys' fees under the Lanham Act based on the claim of exceptional circumstances.

Rule

Under the Lanham Act, a court may award attorneys' fees in 'exceptional' cases as defined by the standard set forth in Tamko Roofing Prods., Inc. v. Ideal Roofing Co., Ltd., which requires a finding of egregious conduct such as malicious, fraudulent, deliberate, or willful infringement. The First Circuit allows for fee awards based on willfulness alone when equitable considerations justify such an award.

Analysis

The court analyzed whether the facts of the case met the standard for an 'exceptional' case. It noted that while the jury found Unisys's conduct to be willful, this alone did not equate to exceptional circumstances. The court found no evidence of deliberate copying or bad faith, and Unisys's actions were deemed careless rather than malicious. The lack of actual consumer confusion and the absence of evidence supporting a finding of fraud or bad faith further supported the court's decision.

Willfulness short of bad faith or fraud will suffice when equitable considerations justify an award and the district court supportably finds the case exceptional. There are two reasons we reject a bad faith or fraud requirement as a precondition to an award of attorneys' fees. First, the legislative history of section 35 links such exceptional cases to situations where the acts are malicious or fraudulent or deliberate or willful, and where equity justifies the award.

Conclusion

The court denied Visible's motion for an award of attorneys' fees, concluding that the case did not meet the criteria for being exceptional under the Lanham Act.

For the foregoing reasons, Visible's motion for an award of attorneys' fees is DENIED.

Who won?

Unisys Corporation prevailed in this case as the court denied Visible Systems Corporation's request for attorneys' fees. The court determined that Visible did not demonstrate that the circumstances of the case were exceptional enough to warrant a departure from the American Rule, which generally requires parties to bear their own litigation costs. The court emphasized that Unisys's conduct, while careless, did not rise to the level of egregiousness required for fee-shifting under the Lanham Act.

Unisys prevailed in this case as the court found that there was no evidence to support a finding of fraud or bad faith on the part of Unisys.

You must be