Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc.

915 F. Supp. 2d 1179, 2013 WL 141737, 2013 U.S. Dist. LEXIS 5303
CourtDistrict Court, D. Nevada
DecidedJanuary 14, 2013
DocketNo. 2:08-CV-00105-PMP-PAL
StatusPublished
Cited by4 cases

This text of 915 F. Supp. 2d 1179 (Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc.) is published on Counsel Stack Legal Research, covering District Court, D. Nevada primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., 915 F. Supp. 2d 1179, 2013 WL 141737, 2013 U.S. Dist. LEXIS 5303 (D. Nev. 2013).

Opinion

ORDER

PHILIP M. PRO, District Judge.

Presently before the Court is Plaintiffs’ Motion for Attorneys’ Fees (Doc. # 390), filed on July 17, 2012. Defendant Jem Sportswear, Inc. (“Jem”) filed an Opposition (Doc. # 397) on August 3, 2012. Defendants A.V.E.L.A., Inc. (“Avela”); X One X Movie Archive, Inc. (“X One X”); and Leo Valencia (“Valencia”), collectively the “Avela Defendants,” and Defendant Central Mills, Inc. (“Freeze”) filed an Opposition (Doc. #400) on August 3, 2012. Plaintiffs filed Replies (Doc. # 404, # 405) on August 13, 2012.

The parties are familiar with the facts of this case, and the Court will not repeat them here except where necessary. A court may award attorney’s fees to the prevailing party under the Lanham Act in “exceptional cases.” 15 U.S.C. § 1117(a). Plaintiffs now move for attorney’s fees in this Lanham Act case, arguing they are prevailing parties, the case is exceptional, and they therefore are entitled to over $2 million in attorney’s fees which cannot be apportioned between Lanham Act and non-Lanham Act claims. The Avela Defendants and Freeze contend Plaintiffs are not prevailing parties because Plaintiffs lost three out of five claims. All Defendants argue the case is not exceptional, and, even if it is, fees should not be awarded or should be apportioned to reflect billing only for the one successful Lanham Act claim. Additionally, Defendants argue Plaintiffs’ requested fees are not reasonable.

A. Prevailing Party Status

Plaintiffs contend they are prevailing parties in this action, as they obtained a jury verdict in their favor. Additionally, Plaintiffs contend the Court adopted the jury’s findings and entered judgment for damages and a permanent injunction against Defendants. Defendant Jem does not dispute that Plaintiffs are prevailing parties. The Avela Defendants and Freeze contend Plaintiffs are not prevailing parties because Plaintiffs lost three of their five claims.

Only a prevailing party is entitled to attorney’s fees under the Lanham Act. 15 U.S.C. § 1117(a). Federal courts consistently interpret the term “prevailing party” across various federal statutes containing a similar fee-shifting provision as the Lanham Act. See Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598, 603 n. 4, 121 S.Ct. 1835, 149 L.Ed.2d 855 (2001); Klamath Siskiyou Wildlands Ctr. v. U.S. Bureau of Land Mgmt., 589 F.3d 1027, 1030 (9th Cir.2009). A party prevails for purposes of an attorney’s fee award if the party has “achieved a material alteration in the legal relationship of the parties that [1184]*1184is judicially sanctioned.” Klamath, 589 F.3d at 1030 (quotation omitted). “The material alteration in the legal relationship of the parties must be relief that the would-be prevailing party sought....” Id.

“The threshold for sufficient relief to confer prevailing party status is not high.” Saint John’s Organic Farm v. Gem Cnty. Mosquito Abatement Dist., 574 F.3d 1054, 1059 (9th Cir.2009). Even an award of nominal damages will suffice to confer prevailing party status, although the “nature and quality of relief may affect the amount of the fees awarded.” Id. A party need not prevail on all of its claims to be the prevailing party. San Diego Police Officers’ Ass’n v. San Diego City Emps.’ Ret. Sys., 568 F.3d 725, 741 (9th Cir.2009).

Plaintiffs are prevailing parties in this action. Plaintiffs sought both damages and permanent injunctive relief in their Complaint. (Compl.(Doc.# 1) at 10-11.) The jury returned a verdict in Plaintiffs’ favor on one of their Lanham Act claims. (Jury Verdict (Doc. # 301).) The Court agreed with and adopted the jury’s findings, made additional findings regarding the propriety of injunctive relief on the Lanham Act claim, and entered a permanent injunction against all Defendants. (Partial Monetary J. & Permanent Inj. (Doc. # 307).) The Court also awarded to Plaintiffs each Defendant’s net profits based on Plaintiffs’ Lanham Act claim, and monetary judgments were entered against Defendants as a result. (Order (Doc. # 385); J. (Doc. # 386).) Plaintiffs therefore have obtained judicially sanctioned material alterations in their legal relationships with all Defendants, through both monetary judgments and permanent injunctive relief. The fact that Plaintiffs prevailed on only two of their five claims, and on only one of their Lanham Act claims, may affect the amount of any attorney’s fee award, but it does not deprive Plaintiffs of prevailing party status.

B. Exceptional

Plaintiffs argue this case is exceptional because the jury determined Defendants acted willfully, and the evidence at trial supports that conclusion. Specifically, Plaintiffs argue that it was common knowledge in the industry that Plaintiffs owned the rights to Bob Marley’s (“Marley”) persona, yet Defendants nevertheless sold Marley products without Plaintiffs’ permission even after other retailers questioned Defendants’ rights to do so. Plaintiffs also contend that Valencia unsuccessfully attempted to obtain a license from Plaintiffs, conspired with Roberto Rabanne (“Rabanne”) to falsify evidence in this case, admitted that he lied at his deposition, and told Rabanne he would flood the market with Marley merchandise in response to Plaintiffs’ lawsuit against him. Plaintiffs contend Avela and Jem conspired to use Marley photos that were not taken by Rabanne and made a Marley t-shirt that was nearly identical to one sold by Plaintiffs. Plaintiffs further assert that Jem and Freeze were at a minimum willfully blind to their infringing activity, as neither conducted any due diligence and instead relied on the indemnity provision of their licensing agreements with Avela. Plaintiffs also argue Avela did not prove it relied on its attorney’s advice. Finally, Plaintiffs contend the jury’s determination that Avela intentionally interfered with Plaintiffs’ prospective business relationships shows Avela acted maliciously.

Defendant Jem responds that the case is not exceptional as to Jem, as Jem did not engage in any egregious conduct sufficient to warrant an award of attorney’s fees against it. Jem contends that it had no reason to investigate Avela’s right to use the Marley images, that inquiry from two [1185]*1185retailers was not sufficient to put Jem on notice, and Jem would not have discovered anything even if it had investigated because Plaintiffs had no trademarks in any Marley image or song lyrics, no copyrights on the Rabanne images, and no Nevada publicity rights. Jem contends that reliance on the indemnity agreement is standard industry practice, and thus Jem’s conduct is not exceptional. Finally, Jem contends that there is no evidence that Jem knew about Plaintiff's or that Jem used any Marley image not licensed through Avela.

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Bluebook (online)
915 F. Supp. 2d 1179, 2013 WL 141737, 2013 U.S. Dist. LEXIS 5303, Counsel Stack Legal Research, https://law.counselstack.com/opinion/fifty-six-hope-road-music-ltd-v-avela-inc-nvd-2013.