by Paul Alan Levy
Last year I discussed an attorney fee application that I prepared on behalf of a small company making canvas totes that poke fun of such high-fashion royalty as Louis Vuitton by scrawling the words “My Other Bag” on one side of the totes and placing parody versions of various luxury brands on the other side of the totes. After District Judge Jesse Furman granted summary judgment dismissing infringement and dilution claims by Louis Vuitton, we argued that the Supreme Court’s decision abrogating the Federal Circuit’s “bad faith” standard for finding patent cases to be “exceptional” hence warranting awards of attorney should apply equally to the Lanham Act’s provision for fee awards in “exceptional cases,” and we pointed to Louis Vuitton’s long history of trademark bullying, well exemplified by its conduct of the litigation against My Other Bag, as justifying an award of attorney fees in this case.
In response to our motion, Louis Vuitton was able to persuade Judge Furman to exercise his Rule 54 discretion to postpone the fee issue until after the Second Circuit heard its appeal from the summary judgment ruling. At the time, I am sure that seeking a postponement seemed a good idea to the plaintiff, but if anything the record and the legal scene have become even worse for Louis Vuitton: not only did the Second Circuit summarily affirm barely two weeks after oral argument, but during the argument the Second Circuit panel made clear its view that Louis Vuitton’s claims were risible and that this case was plain trademark bullying: “of course you just want to bully them into having to spend the money on a trial . . . if this were a real trial and you tried [your argument] out on a mock jury and you tried that out with some jury consultants, you would be laughed out of the room." And at this point, five separate circuits have held that the Supreme Court's Octane Fitness decision provides the standard for Lanham Act fee applications.
We refiled our brief seeking an award of attorney fees at the end of last week.