CHAPTER 10 - § 10.07
| Jurisdiction | United States |
§ 10.07 TREBLE DAMAGES AND ATTORNEYS' FEES
The Lanham Act gives federal courts the latitude to enter judgment for any amount "not exceeding three times" the plaintiff's actual damages (as measured by either the defendant's profits or the plaintiff's lost profits). Such increased damages are often referred to as treble damages. Treble damages are usually deemed appropriate where there is clear evidence of willfulness on the part of the defendant.137 In cases of "counterfeit" trade dress, treble damages are mandated by statute (as are reasonable attorneys' fees).138 In addition to the Lanham Act, treble damages are sometimes permitted by state law (where they may be referred to as "treble" or "punitive" damages). For example, the common law of many states provide for punitive damages where the defendant's conduct was willful, wanton, or reckless.139
The Lanham Act also permits the recovery of attorneys' fees in certain "exceptional" cases. An "exceptional" case, for purposes of recovering attorney's fees, is a case involving malicious, fraudulent, deliberate, or willful acts by the defendant.140 If a plaintiff is able to prove such acts, a court may award the cost of attorney's fees incurred by the plaintiff in pursuing the infringement action against the defendant. In order to receive an award of attorney's fees, a trade dress plaintiff must prove, by clear and convincing evidence, that the case was "exceptional."141
While proving an entitlement to attorney's fees has traditionally been an uphill battle in trademark and trade dress cases, the Supreme Court's decision in Octane Fitness (a patent case) has started to have ripple effects in such cases (much like eBay). In Octane Fitness, the Supreme Court relaxed the standard for proving exceptionality under the Patent Laws, noting that "an 'exceptional' case is simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated."142
Judge Arterton of the District of Connecticut first considered applying Octane Fitness in a Lanham Act case in Romag Fasteners, but declined the invitation.143 The Third Circuit, however, has specifically directed at least one district court to apply the Octane Fitness standard in deciding a litigant's entitlement to attorney's fees in a trade dress case.144 Whether this trend will continue in other circuit...
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