Olson Kundig Inc v. 12th Avenue Iron Inc

Opinion

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3 4 5 6 7 UNITED STATES DISTRICT COURT WESTERN DISTRICT OF WASHINGTON 8 AT SEATTLE

9 10 OLSON KUNDIG, INC., CASE NO. C22-0825JLR 11 Plaintiff, MINUTE ORDER v. 12 12TH AVENUE IRON, INC., 13 Defendant. 14

15 The following minute order is made by the direction of the court, the Honorable 16 James L. Robart: 17 Before the court is Plaintiff Olson Kundig, Inc.’s (“Olson Kundig”) motion for 18 entry of default judgment against Defendant 12th Avenue Iron, Inc. (“12th Avenue”). 19 (Mot. (Dkt. # 52).) In its motion, Olson Kundig seeks an award of attorneys’ fees in the 20 amount of $130,896.04 on its claims under the Lanham Act, the Patent Act, the 21 Washington Consumer Protection Act, and the Washington Personality Rights Act (the 22 “recoverable claims”). (Id. at 14-15.) Because there is no statute entitling Olson Kundig 1 to fees with respect to its breach of contract claim, Olson Kundig does not seek an award 2 of fees for work performed on that claim. (See generally id.)

3 Although Olson Kundig is only entitled to recover fees on some of its claims, 4 Olson Kundig’s counsel does not segregate its billing entries by claim. (See generally 5 Hodges Decl. (Dkt. # 53) ¶ 17, Ex. E.) As such, the court is unable to assess whether the 6 hours spent preparing Olson Kundig’s recoverable claims were reasonable. Additionally, 7 while the Patent Act and Lanham Act authorize district courts to award attorneys’ fees to 8 prevailing parties in “exceptional cases,” 35 U.S.C. § 285; 15 U.S.C. § 1117(a), Olson

9 Kundig fails to discuss why its case is “exceptional” under the test set forth in Octane 10 Fitness, LLC v. ICON Health & Fitness, Inc. See 572 U.S. 545, 554-57 & n.6 (2014) 11 (applying a “totality of the circumstances” test to fee claims under the Patent Act and 12 setting forth factors to be considered); SunEarth, Inc. v. Sun Earth Solar Power Co., 839 13 F.3d 1179, 1180 (9th Cir. 2016) (making the Octane Fitness test applicable to fee claims

14 under the Lanham Act); (see generally Mot. at 14-15). 15 Accordingly, the court ORDERS Olson Kundig to submit, by April 12, 2023, a 16 supplemental brief not to exceed 1400 words that analyzes whether an award of 17 attorneys’ fees on its Patent Act and Lanham Act claims is warranted under the test set 18 forth in Octane Fitness. Additionally, Olson Kundig must either (1) segregate its billing

19 records by claim so that the court can assess the hours spent preparing only Olson 20 Kundig’s recoverable claims, or (2) if Olson Kundig’s breach of contract claim is so 21 intertwined with its recoverable claims that segregation would be impossible, Olson 22 Kundig must propose a percentage downward adjustment to its total fee request to 1 represent the work done on its breach of contract claim. See, e.g., Safeworks, LLC v. 2 Teupen Am., LLC, No. C08-12197, 2010 WL 3033711, at *3-4 (W.D. Wash. July 29,

3 2010) (first citing Gracie v. Gracie, 217 F.3d 1060, 1069-70 (9th Cir. 2000); and then 4 citing Cairns v. Franklin Mint Co., 292 F.3d 1139, 1157-58 (9th Cir. 2002)). 5 Filed and entered this 3rd day of April, 2023. 6 RAVI SUBRAMANIAN Clerk of Court 7 s/ Ashleigh Drecktrah 8 Deputy Clerk

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