by Paul Alan Levy
In a brief opinion issued today, Judge Richard Seeborg of the United States District Court for the Northern District of California awarded Christopher Recouvreur more than $46,000 in attorney fees and expenses for having had to defend himself against a series of wild and baseless threats of suit for trademark infringement by Charles Carreon. After we were finally able to get service on Carreon and moved for an award of the costs of service, Carreon served a Rule 68 judgment granting the declaratory relief for which we had sued. We then sought to have fees awarded on the grounds that Carreon had bought threatened trademark claims that had no reasonable basis, thus forcing Recouvreur to seek a declaratory judgment to protect himself against damages claims; that Carreon ducked service and then refused to pay the costs of such service but rather forced us to move to collect those costs; particularly after Carreon demanded the opportunity to conduct discovery over the fee claims, we also argued that his litigation conduct made the case exceptional.
Judge Seeborg’s Ruling
Judge Seeborg granted our motion in part.
Although he firmly rejected the arguments that Carreon put in his brief opposing fees in defense of the tenability of the threatened trademark claims, the judge said that he could not find the threatened trademark claims to be “frivolous” because if Carreon had mounted a defense, “he may have been able to raise debatable issues of law and fact.” However, the court held that the fees for seeking service costs were fully justified under Rule 4(d)(2), which encourages defendants to waive service of process, and that Carreon’s conduct after the motion for an award of fees was filed was “unnecessary, vexatious and costly,” thus making the litigation exceptional after that point. Accordingly, Judge Seeborg awarded $8450 in fees for litigation on the service costs issue, and $37,650.25 for the fees and expenses incurred in litigating after the initial motion for fees was filed.
The opinion is not a perfect one, from a consumer perspective. The Ninth Circuit does not limit fee awards to those who successfully defend against frivolous trademark claims; under Ninth Circuit law, it is enough that the suit be “groundless or unreasonable.” On the other hand, the fact that Judge Seeborg drew a different distinction in the context of trademark claims that were only threatened, and never actually made the basis for a complaint, allows future successful defendants to argue that the “groundless or unreasonable” standard still applies in that sort of case.
Lessons from the Decision
This fee award teaches two important lessons about litigation. First, it reminds us of the adage that a lawyer who represents himself has a fool for a client. Carreon did himself a disservice by representing himself after we sought a declaratory judgment. A good lawyer would have counseled him not to duck service, and he could have given Carreon good advice about his offer of judgment — we would have been happy to discuss a compromise on fees at that point of the litigation, and indeed it does not appear to me that Carreon understood, when he sent the offer of judgment, that it was going to subject him to an award of fees by making Recouvreur a prevailing party. And a lawyer would likely have advised him not to embark on the course of frivolous and abusive discovery. I urged Carreon on more than one occasion to get himself a lawyer, if not to negotiate with me then at least to give him an objective opinion about what he was facing. This was particularly important because Carreon is a sole practitioner who does not have colleagues off whom he can bounce ideas, and because he rejected private advice from at least one lawyer who has told me of his efforts to help Carreon to steer himself into safer waters. And a document that Carreon showed Recouvreur during his deposition makes clear that he actually was talking to another lawyer when he made his first threat to Register.com.
Carreon made clear at various points in the fee proceedings, that he had made his threats out of anger at the public obloquy he was facing, making independent judgment from a lawyer he could respect particularly important. He seemed to be asking me to put myself in his shoes and take pity. On a human level, I can understand how this could happen, and there is no way that Carreon would be facing this judgment if he had obtained independent counsel. But it is not an excuse for what he put Recouvreur through.
The second lesson: sometimes you have to be careful about what you ask for, because you just might get it. In my very first appellate argument, Judge Luther Swygert, sitting by designation in the DC Circuit, talked to my adversary about seeking summary judgment from a judge who is going your way without thinking about how you are going to defend it on appeal. We argued to Judge Seeborg that no discovery was appropriate, that Carreon should have to file his opposition brief, explaining in that context on what issues he needed discovery, much like a Rule 56(d) motion (formerly Rule 56(f)). Carreon got discovery because most federal judges, outside the contexts of official immunity and its cognate, an anti-SLAPP statute, are reluctant to impose a judgment based on evidence without allowing any discovery. But Judge Seeborg sent Carreon a pretty clear hint in his order implicitly allowing some discovery that Carreon should not go overboard. In the end, it is apparent that the Court gave Carreon enough rope to hang himself.
In my view, Carreon would still be wise to find himself a lawyer to help him decide on his next steps. To be sure, he has claimed to be as poor as a churchmouse, and made it clear that we are going to have to fight to execute on any fee judgment (any sources out there who know where assets are located, please be in touch). But fees are likely to be awarded for an appeal, and they are also awardable for judgment enforcement proceedings. As Mike Masnick ended his report on today’s decision, “will Charles Carreon stop digging?”
We owe Ken White a huge debt of gratitude for his selfless assistance throughout this case. He was the first lawyer whom Recouvreur consulted, and his offer to provide advice and assistance throughout the case encouraged me to take it on. He gave excellent advice as well as marking up drafts, in detail and with Litigation-Group-quality edits for almost every document that was filed in the case. At the same time, he decided not to enter an appearance even though an attorney fee award seemed possible from the outset. And, when we were worried about the cost of hiring a process server to sit outside Carreon’s house, waiting for him to show his face so that process could be dropped in front of him, it was Ken who posted an appeal on Popehat for funds to support service, although in the end there was a source out there who tipped us that Carreon was scheduled to appear in federal court in San Francisco, where Carreon was eventually served. Ken will not be getting a dime from this fee award, and unlike me, Ken depends on attorney fees to make his living.
Ken blogs and does this sort of work because it is what he thinks is right. This is what good lawyers do.