Independent Living Aids, Inc. v. Maxi-Aids, Inc.

25 F. Supp. 2d 127, 1998 U.S. Dist. LEXIS 17549, 1998 WL 764801
CourtDistrict Court, E.D. New York
DecidedOctober 28, 1998
Docket95 CV 656(ADS)
StatusPublished
Cited by12 cases

This text of 25 F. Supp. 2d 127 (Independent Living Aids, Inc. v. Maxi-Aids, Inc.) is published on Counsel Stack Legal Research, covering District Court, E.D. New York primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Independent Living Aids, Inc. v. Maxi-Aids, Inc., 25 F. Supp. 2d 127, 1998 U.S. Dist. LEXIS 17549, 1998 WL 764801 (E.D.N.Y. 1998).

Opinion

MEMORANDUM OF DECISION AND ORDER

SPATT, District Judge.

The facts underlying this ease are set forth in the Court’s earlier decisions and the trial transcript, and will not be repeated here. Presently before the Court is the renewed motion for attorneys’ fees by the plaintiffs, Marvin Sandler and Independent Living Aids (collectively the “plaintiffs” or “ILA”).

I. BACKGROUND

The plaintiffs previously moved for attorneys’ fees in the amount of $399,467.50, plus interest, as the prevailing party following a jury trial on their trademark (15 U.S.C. §§ 1117[a] and [b]), copyright (17 U.S.C. § 505) and New York General Business Law (“GBL”) (GBL §§ 349 and 350) claims. The remaining defendants, Maxi-Aids, Inc., Mitchel Zaretsky, Elliot Zaretsky and Pamela Zaretsky Stein (collectively, the “defendants” or “Maxi-Aids”) opposed this motion. In a decision dated July 25, 1998, the Court found it impossible to adequately determine the amount of attorneys’ fees to be awarded, if any. The Court emphasized three deficiencies in the earlier fee request. First, the attorneys’ time sheets did not indicate which hours were devoted to unsuccessful claims and actions, including: (1) a federal trade dress claim regarding their “Slimline Lo-Vision watches”; (2) federal trademark/serviee-mark claims regarding the terms “Independent Living,” “ILA,” “Do More Products,” “Maxi-Aids and Appliances for Independent Living” and “Maxi-Aids Products for Independent Living”; and (3) a state law claim for intentional interference with economic benefits relating to bidding procedures. For this reason, the Court afforded the plaintiffs’ counsel a “final” opportunity to review their records and determine the number of hours spent on the successful claims and actions. The Court advised the plaintiffs that in the event they are unable to do so, the Court intended to “substantially” reduce the fee application, to reflect that the claims on which the plaintiffs lost and their defense of the libel counterclaim were a major part of their theory of this case.

Second, the Court directed the plaintiffs’ attorneys to recalculate their fee request, by reducing their hourly rates for a partner, Jack S. Dweck, and an associate, Richard A. Hubell from $350.00 and $175.00 an hour, to $225 and $135 per hour, respectively.

Third, the Court directed counsel to delete those portions of the request related to subjects which, on their face, had no relation to this case. Such extraneous matters included ILA’s subsequently filed RICO lawsuit against the defendants and “estate planning” for the plaintiff Sandler.

Following this decision, the plaintiffs submitted a supplemental motion, allegedly in compliance with the Court’s instructions concerning the elimination of certain fees. The following is the revised fee request (in hold), as compared to the initial request (in italics ):

Attorney Original Hours Revised Hours Original Rate Revised , Rate Original Total Revised Total

J. Dweck 721.3 735.45 $325 $225 $234,422.50 $165,476.25

R. Hubell 1,098.1 1,066.9 $175 $135 $164,715.00 $144,031.50

H.P. Dweck .7 8 $135 $135 $105 $1080.00

*130 Paralegal 4.5 0 $50 N/A $225 $0

TOTAL 1824.6 1810.35 - - $399,467.50 $310,587.75

II. THE PLAINTIFFS’ MOTION FOR ATTORNEYS’ FEES

As noted previously, the plaintiffs prevailed at trial on four causes of action: (1) a federal copyright infringement claim based on Maxi-Aids’ “willfully” infringing ILA’s copyrights in its 1985 through 1995 catalogs by copying original product listings; (2) a federal trademark/service-mark claim arising from Maxi-Aids’ use of the “ILA logo” in its advertising, catalog and sales program, in a manner likely to cause confusion as to the source, (3) a claim arising under GBL § 349 for willful deceptive acts and practices with regard to the defendants’ advertising and sale of products; and (4) willful false advertising in violation of GBL § 350. Given that the Court’s prior opinion did not address whether the plaintiffs are entitled to attorneys’ fees as a prevailing party on these causes of action, it now does so.

A. Attorneys’ Fees and Costs: The Standards

1. The Lanham Act

The plaintiffs prevailed on a single Lan-ham Act cause of action, arising from Maxi-Aids’ use of the “ILA logo” in its advertising, catalog and sales program, in a manner likely to cause confusion as to the source. At issue is whether the plaintiffs are entitled to recover counsels’ fees for this claim.

The Lanham Act authorizes the award of attorneys’ fees in “exceptional cases.” 15 U.S.C. § 1117(a). “Exceptional circumstances” exist only where there is evidence of fraud or bad faith. Conopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 194 (2d Cir.1996); Aztar Corp. v. N.Y. Entertainment, LLC, 15 F.Supp.2d 252, 261 (E.D.N.Y.1998). A finding of “exceptional circumstances” warranting an award of attorneys’ fees falls “well within the district court’s discretion, and absent evidence of its abuse,” will not be disturbed on review. Conopco, Inc. v. Campbell Soup Co., 95 F.3d at 194 (citing Getty Petroleum Corp. v. Bartco Petroleum Corp., 858 F.2d 103, 114 [2d Cir.1988], ce rt. denied, 490 U.S. 1006, 109 S.Ct. 1642, 104 L.Ed.2d 158 [1989]).

This Court, in its exercise of discretion, finds evidence of bad faith on the part of Maxi-Aids, warranting the award of attorneys’ fees under the Lanham Act. As set forth in the Court’s earlier opinion and the trial transcript, the plaintiffs introduced evidence of at least five violations in each of the five consecutive Maxi-Aids catalogs from 1986 through 1989, by using ILA watches in its advertisements (Plaintiffs Exhibits 9B-9F). Significantly, the defendant Elliot Zar-etsky admitted that he advertised, marketed and sold the watches bearing the ILA logo through 1990 (E. Zaretsky: Tr. 2111-17, 2159-63). From this and other proof, the Court finds that the defendants’ Lanham Act violations were willful and in bad faith; for these reasons, the Court, in its exercise of discretion, finds that “exceptional circumstances” are present, rendering an award of attorneys’ fees appropriate.

2. The Copyright Act

The plaintiffs also seek counsels’ fees associated with their federal copyright infringement claim. This claim was premised on Maxi-Aids “willfully” infringing ILA’s copyrights of its 1985 through 1995 catalogs by copying original product listings.

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Cite This Page — Counsel Stack

Bluebook (online)
25 F. Supp. 2d 127, 1998 U.S. Dist. LEXIS 17549, 1998 WL 764801, Counsel Stack Legal Research, https://law.counselstack.com/opinion/independent-living-aids-inc-v-maxi-aids-inc-nyed-1998.