Xlear v. Focus Nutrition

• Court: Court of Appeals for the Tenth Circuit
• Decided: June 26, 2018
• Docket: 17-4126
• Status: Published

Opinion

FILED United States Court of Appeals PUBLISH Tenth Circuit

UNITED STATES COURT OF APPEALS June 26, 2018

Elisabeth A. Shumaker FOR THE TENTH CIRCUIT Clerk of Court _________________________________

XLEAR, INC., a Utah corporation,

Plaintiff - Appellant,

v. No. 17-4126

FOCUS NUTRITION, LLC, a Utah limited liability company,

Defendant - Appellee. _________________________________

Appeal from the United States District Court for the District of Utah (D.C. No. 2:16-CV-00643-DB) _________________________________

Timothy B. Smith (Kenneth A. Okazaki and Taryn N. Evans with him on the briefs), Jones Waldo Holbrook & McDonough, P.C., Salt Lake City, Utah, for Plaintiff - Appellant.

Matthew A. Steward (Shannon K. Zollinger with him on the brief), Clyde Snow & Sessions, P.C., Salt Lake City, Utah, for Defendant - Appellee. _________________________________

Before MATHESON, McHUGH, and EID, Circuit Judges. _________________________________

McHUGH, Circuit Judge. _________________________________

Xlear, Inc. and Focus Nutrition, LLC are both in the business of selling

sweeteners that use the sugar alcohol xylitol. Xlear filed a complaint raising a trade dress infringement claim under the Lanham Act, a claim under the Utah Truth in

Advertising Act (UTIAA), and a claim under the common law for unfair competition.

The claims all alleged that Focus Nutrition copied the packaging Xlear used for one

of its sweetener products. Focus Nutrition moved to dismiss Xlear’s Lanham Act

claim. At a hearing on Focus Nutrition’s motion to dismiss, the district court judge

made several comments questioning the validity of Xlear’s Lanham Act claim but,

ultimately, denied the motion. Following the hearing, the parties, pursuant to Federal

Rule of Civil Procedure 41(a)(1)(A)(ii), stipulated to the dismissal of all claims with

prejudice. Under the stipulation, the parties reserved the right to seek attorneys’ fees

and Focus Nutrition exercised its right by filing a motion under Federal Rule of Civil

Procedure 54 to recover its fees under the Lanham Act and the UTIAA. The district

court concluded that Focus Nutrition was a prevailing party under both the Lanham

Act and the UTIAA, and that Focus Nutrition was entitled to all of its requested fees.

On appeal, Xlear raises five challenges to the district court’s order. We reverse

the district court’s award of attorneys’ fees under the Lanham Act because Focus

Nutrition is not a prevailing party under federal law. As to the UTIAA, we vacate the

district court’s award of attorneys’ fees and remand for further proceedings to permit

the district court to analyze the factors governing prevailing party status under Utah

law and, if the court concludes Focus Nutrition is a prevailing party under the

UTIAA, to determine what portion of the requested fees Focus Nutrition incurred in

defense of the UTIAA claim and the reasonableness of the requested fees.

2 I. BACKGROUND

Xlear and Focus Nutrition both sell sweeteners containing the sugar alcohol

xylitol. According to Xlear’s complaint, several former employees of Xlear work for

Focus Nutrition. Xlear further alleged that when Focus Nutrition struggled to sell its

sweetener in a blue box, Focus Nutrition changed its packaging to resemble the

packaging used by Xlear. The three-count complaint filed by Xlear alleged (1) trade

dress infringement under the Lanham Act, 15 U.S.C. § 1125(a); (2) a violation of the

UTIAA, Utah Code Ann. § 13–11a–3; and (3) common law unfair competition. Focus

Nutrition filed an answer to the complaint, defending the action on the grounds that

Xlear’s packaging and trade dress were not distinctive and that Focus Nutrition’s

packaging was not likely to confuse consumers. Focus Nutrition also raised a

counterclaim, in which it sought a “declaratory judgment of non-infringement and

unenforceability” relative to whether Xlear’s packaging constituted a protectable

trade dress. App’x at 45–46.

Focus Nutrition moved, under Federal Rule of Civil Procedure 12(c), to

dismiss Xlear’s Lanham Act claim on the pleadings. Focus Nutrition’s Rule 12(c)

motion, however, did not seek dismissal of Xlear’s UTIAA claim or Xlear’s common

law unfair competition claim. The district court convened a hearing on the Rule 12(c)

motion. By the hearing date, Xlear had not conducted any discovery or submitted any

initial disclosures required by Federal Rule of Civil Procedure 26(a)(1). At the

hearing, Focus Nutrition presented the district court with the packaging used by

several of Focus Nutrition’s and Xlear’s competitors. Viewing the display, the

3 district court judge expressed skepticism about the validity of Xlear’s allegations and

Xlear’s ability to produce evidence in support of its Lanham Act claim. Relevant to

Focus Nutrition’s argument for recovering its attorneys’ fees, the district court judge

made three statements:

 “I have had dozens of trade dress cases through the years . . . it just seems as weak a case as I can imagine from a company that is upset that some former employees went out and did exactly what it seems like a lot of other companies are doing with this same Xylitol product and artificial sweeteners.” Id. at 107.

 “[I]t wouldn’t be hard for me today to say that no reasonable jury is going to find trade dress infringement based on the allegations . . . and a lack of facts on your side, and that is why I asked what you’re planning to do in discovery.” Id. at 109.

 “It is a little hard to believe that there are facts to support [the allegation that customers associate specific packaging with Xlear’s products] when we just look at this display [of all the sweetener companies’ packaging] here on the table.” Id. at 110.

Ultimately, however, the Rule 12(c) nature of the proceeding compelled the district

court to focus on the pleadings and deny the motion.

Following the hearing, the parties engaged in settlement discussions, which

culminated in a stipulation of dismissal pursuant to Federal Rule of Civil Procedure

41(a)(1)(A)(ii).1 Under the stipulation of dismissal, all three of Xlear’s claims, as

well as Focus Nutrition’s counterclaim, were dismissed with prejudice but the parties

reserved the right to seek attorneys’ fees. In accord with the stipulation of dismissal,

the Clerk of Court terminated the case.

1 The parties filed the stipulation after the deadline for conducting fact discovery. Although Xlear represented at the hearing on Focus Nutrition’s Rule 12(c) motion that it would engage in discovery by conducting depositions, it never did so. 4 Within fourteen days of the entry of the stipulation of dismissal, Focus

Nutrition filed a Federal Rule of Civil Procedure 54 motion seeking $26,674 in

attorneys’ fees. In its Rule 54 motion, Focus Nutrition argued that it was entitled to

recover its attorneys’ fees under both the Lanham Act and the UTIAA. Focus

Nutrition supported the reasonableness of the requested attorneys’ fees through an

affidavit from lead counsel and a one-page billing record. The affidavit summarized

the parties’ conduct during the litigation, provided information about Focus

Nutrition’s attorneys’ hourly rates and experience, and identified six broad tasks

performed by counsel during the litigation. The billing record provided a month-by-

month accounting of the requested attorneys’ fees but did not indicate how much

time counsel spent on a given task and did not separate the requested fees by claim—

i.e., how much was attributable to the defense of the Lanham Act claim, the defense

of the UTIAA claim, the defense of the common law unfair competition claim, or the

pursuit of the counterclaim. In response to the Rule 54 motion, Xlear argued, in part,

that Focus Nutrition was not a prevailing party under either the Lanham Act or the

UTIAA and that Focus Nutrition failed to submit sufficient evidence to permit the

district court to assess the reasonableness of the requested fees. In reply, Focus

Nutrition did not provide any additional evidence in support of the requested fees;

instead, it argued that the affidavit and one-page billing record were sufficient to

permit the court to assess the reasonableness of the requested fees.

The district court commenced its analysis of Focus Nutrition’s Rule 54 motion

by finding that Xlear (1) filed a cursory complaint; (2) failed to provide initial

5 disclosures as required by Federal Rule of Civil Procedure 26; (3) did not “conduct,

respond to, or participate in any discovery to support its claims”; and (4) stipulated to

the dismissal with prejudice after the fact discovery deadline and on the eve of Focus

Nutrition filing a motion for summary judgment. Id. at 149–50. Relevant to our

resolution of this appeal, the district court concluded that Focus Nutrition was a

prevailing party under both the Lanham Act and the UTIAA. Without discussing

Xlear’s argument about the sufficiency of the evidence submitted by Focus Nutrition

in support of the requested fees and without stating any findings relative to the

reasonableness of the requested fees, the district court awarded Focus Nutrition all of

its requested fees.

Xlear appeals the district court’s award of attorneys’ fees. On appeal, Xlear’s

arguments include: (1) a stipulation of dismissal pursuant to Rule 41(a)(1)(A)(ii)

does not produce a judgment for purposes of a Rule 54 motion; (2) Focus Nutrition

was not a prevailing party for purposes of the Lanham Act; (3) the district court did

not consider the factors governing the prevailing party analysis under Utah law for

purposes of awarding fees under the UTIAA; (4) even if Focus Nutrition was a

prevailing party under the UTIAA, Focus Nutrition would be entitled to recover only

fees related to the UTIAA claim and not the Lanham Act claim, the common law

unfair competition claim, or the counterclaim; and (5) Focus Nutrition did not submit

sufficient evidence to permit the district court to determine the reasonableness of the

requested fees. In response, Focus Nutrition defends the merits of the district court’s

award of attorneys’ fees and argues that Xlear did not preserve its argument that a

6 Rule 41(a)(1)(A)(ii) stipulation of dismissal does not produce a judgment for

purposes of a Rule 54 motion. After stating the standard of review, we address each

of the above identified arguments.

II. STANDARD OF REVIEW

Generally speaking, “[w]e review the decision to award attorney fees, and the

amount awarded, for abuse of discretion.” United Phosphorus, Ltd. v. Midland

Fumigant, Inc., 205 F.3d 1219, 1232 (10th Cir. 2000). “An abuse of discretion has

been characterized as an arbitrary, capricious, whimsical, or manifestly unreasonable

judgment.” Mid-Continent Cas. Co. v. Vill. at Deer Creek Homeowners Ass’n, Inc.,

685 F.3d 977, 981 (10th Cir. 2012) (internal quotation marks omitted). A district

court abuses its discretion if it commits legal error, relies on clearly erroneous factual

findings, or issues a ruling without any rational evidentiary basis. Dullmaier v.

Xanterra Parks & Resorts, 883 F.3d 1278, 1295 (10th Cir. 2018). Further, although a

district court possesses broad discretion to award attorneys’ fees, “[i]t remains

important . . . for the district court to provide a concise but clear explanation of its

reasons for the fee award.” Mares v. Credit Bureau of Raton, 801 F.2d 1197, 1201

(10th Cir. 1986) (quoting Hensley v. Eckerhart, 461 U.S. 424, 437 (1983)). “Such

explanations must give us an adequate basis for review. And, in reaching their

determinations district courts must follow the guidelines established by the Supreme

Court and this court.” Id. (internal quotation marks and citation omitted).

Although the overarching standard of review is for an abuse of discretion,

“[w]e review the statutory interpretation or legal analysis that formed the basis of the

7 award de novo.” Malloy v. Monahan, 73 F.3d 1012, 1017 (10th Cir. 1996). Whether a

litigant is a “prevailing party” is a legal question we review de novo. Lorillard

Tobacco Co. v. Engida, 611 F.3d 1209, 1214 (10th Cir. 2010). Finally, although this

appeal involves the review of an award of attorneys’ fees under state law, the

standard of review under which we review an award of fees is a procedural matter

controlled by federal precedent. See id. at 1213 (“In reviewing state law awards of

attorney’s fees, . . . it has been our consistent practice to look to our own precedent

on this purely procedural issue—viz., the applicable standard of review.”).

III. DISCUSSION

A. Does a Fed. R. Civ. P. 41(a)(1)(A)(ii) Stipulation of Dismissal Produce a Judgment for Purposes of a Fed. R. Civ. P. 54 Motion?

A motion for attorneys’ fees pursuant to Federal Rule of Civil Procedure 54

must:

(i) be filed no later than 14 days after the entry of judgment; (ii) specify the judgment and the statute, rule, or other grounds entitling the movant to the award; (iii) state the amount sought or provide a fair estimate of it; and (iv) disclose, if the court so orders, the terms of any agreement about fees for the services for which the claim is made.

Fed. R. Civ. P. 54(d)(2)(B) (emphasis added). Based on the use of the word

“judgment” in subclauses (i) and (ii), entry of a judgment is a prerequisite for a Rule

54 motion for attorneys’ fees. Put another way, if there was no judgment, then a Rule

8 54 motion was not a proper mechanism by which Focus Nutrition could seek

attorneys’ fees.2

On appeal, Xlear contends that a Rule 41(a)(1)(A)(ii) stipulation of dismissal

does not produce a judgment. In support of this contention, Xlear advances two

distinct arguments: (1) we should extend the Supreme Court’s recent holding in

Microsoft Corp. v. Baker, 137 S. Ct. 1702 (2017), to conclude that where a voluntary

stipulation of dismissal does not produce a final judgment for purposes of appellate

jurisdiction, it also does not produce a judgment for purposes of a motion under

Federal Rule of Civil Procedure 54; and (2) a stipulation of dismissal under Rule

41(a)(1)(A)(ii) is self-executing such that the district court never enters a physical

judgment. In response, Focus Nutrition argues that Xlear failed to preserve this issue

by not raising it in the district court but that, if we reach the issue, we should not

extend Microsoft because it addressed a narrow issue specific to class action

litigation. In reply, Xlear acknowledges it did not raise this issue below but contends

that an exception to the preservation requirement exists because the Supreme Court

decided Microsoft after Xlear filed its response to Focus Nutrition’s Rule 54 motion.

We start our analysis by considering Focus Nutrition’s preservation argument.

2 This is not to say that the lack of a judgment would have nullified Focus Nutrition’s ability to act on the reservation in the stipulation to seek attorneys’ fees. Attorneys’ fees may have been recoverable under other provisions in the Federal Rules of Civil Procedure, such as Rule 37, or through the inherent powers of the federal district court to sanction a party, see Goodyear Tire & Rubber Co. v. Haeger, 137 S. Ct. 1178, 1186 (2017). Because of these other potential means for seeking attorneys’ fees, we reject Focus Nutrition’s suggestion that Xlear’s entrance into the stipulation of dismissal estops Xlear from arguing there was no judgment for purposes of a Rule 54 motion for attorneys’ fees. 9 1. Preservation

Generally, “[a]n issue is waived if it was not raised below in the district

court.” Wilburn v. Mid-South Health Dev., Inc., 343 F.3d 1274, 1280 (10th Cir.

2003). “[W]e will relax the waiver rule when the issues involved are questions of

law, the proper resolution of which are beyond reasonable doubt, and the failure to

address the issues would result in a miscarriage of justice.” Gray v. Phillips

Petroleum Co., 971 F.2d 591, 592 n.3 (10th Cir. 1992) (internal quotation marks

omitted). Separately, “an intervening change in the law permits appellate review of

an issue to which a party did not object below.” Id.

Considering each of Xlear’s arguments in support of its contention that a Rule

41(a)(1)(A)(ii) stipulation does not produce a judgment for purposes of Rule 54

separately, we reach contrary conclusions on the issue of preservation. As Xlear’s

response to Focus Nutrition’s Rule 54 motion preceded the Supreme Court’s decision

in Microsoft, appellate review of Xlear’s argument under Microsoft is appropriate.

This is particularly true where some district courts have recently applied Microsoft to

hold that a Rule 41(a)(1)(A)(ii) stipulation of dismissal does not produce a judgment

for purposes of a Rule 54 motion. See Keith Mfg. Co. v. Butterfield, 256 F. Supp. 3d

1123, 1128–30 (D. Or. 2017); see also Physician’s Surrogacy, Inc. v. German, ___ F.

Supp. 3d ___, 2018 WL 1876187, at *2 (S.D. Cal. Apr. 19, 2018) (relying on Keith to

conclude that stipulation of dismissal did not produce judgment for purposes of Rule

54); but see Killer Burger, Inc. v. Rock & Roll Chili Pit, Inc., 2018 WL 1156237, at

*2 (D. Or. Mar. 5, 2018) (distinguishing Keith and rejecting application of Microsoft

10 to Rule 54 motion where Rule 41(a)(1)(A)(ii) stipulation of dismissal included

reservation of parties’ rights to seek attorneys’ fees).

We, however, conclude that appellate review of Xlear’s second argument—

that a Rule 41(a)(1)(A)(ii) stipulation of dismissal is self-executing and does not

result in a physical judgment—is not preserved or subject to an exception to the

preservation requirement. As early as 2011, we concluded that “[a] stipulation of

dismissal filed under Rule 41(a)(1)(A)(i) or (ii) is self-executing and immediately

strips the district court of jurisdiction over the merits.” De Leon v. Marcos, 659 F.3d

1276, 1283 (10th Cir. 2011). Furthermore, at the time Xlear filed its response to the

Rule 54 motion, it was apparent from the docket that the district court did not enter a

physical judgment. Thus, nothing prevented Xlear from arguing below that a Rule

41(a)(1)(A)(ii) stipulation of dismissal is self-executing and that there was no

physical judgment for purposes of a Rule 54 motion. Accordingly, we decline to

consider this argument for the first time on appeal.

2. Microsoft Does Not Apply Within the Context of a Rule 54 Motion

In Microsoft, the district court denied the putative class plaintiff’s motion for

class certification, a denial that is not a final judgment and does not otherwise permit

for an appeal as of right. 137 S. Ct. at 1710–11. Instead of litigating his claims as an

individual plaintiff and appealing the denial of his motion for class certification

following a final judgment on his individual claims, the plaintiff stipulated to the

dismissal of his action with prejudice but reserved the right to refile the action if the

appellate court reversed the district court’s adverse class certification decision. Id. at

11 1706–07, 1711. After the appellate court reversed the adverse class certification

decision, Microsoft petitioned to the Supreme Court, arguing that the stipulation of

dismissal was not a final decision capable of creating appellate jurisdiction under 28

U.S.C. § 1291. See id. at 1711–12. Focusing on the unique nature of class action

litigation and that the voluntary dismissal tactic employed by the putative class

plaintiff would allow plaintiffs to appeal immediately from adverse class certification

decisions but not allow defendants the same appellate opportunity and could result in

piecemeal appeals, the Supreme Court held that a voluntary dismissal within the

context of a class action suit was not a “final decision” for purposes of appellate

jurisdiction. Id. at 1707, 1713.

We read Microsoft as addressing the narrow situation where a hopeful class

action plaintiff uses a stipulation of dismissal as a tactic to overcome the limitations

placed on appellate jurisdiction by 28 U.S.C. § 1291.3 Notably, a stipulated dismissal

with prejudice pursuant to Rule 41(a)(1)(A)(ii) that reserves only the issue of

attorneys’ fees does not create any possibility of piecemeal litigation and cannot give

rise to the plaintiff re-filing any of the dismissed claims. Nor is the stipulated

dismissal in this case a tactic to turn an interlocutory order into a final judgment or to

otherwise overcome a jurisdictional defect. Finally, the stipulation here does not have

3 Our reading of Microsoft Corp. v. Baker, 137 S. Ct. 1702 (2017), is in accord with the reading of the Court of Appeals for the District of Columbia Circuit. See In re Brewer, 863 F.3d 861, 871 (D.C. Cir. 2017) (noting limited reach of holding in Microsoft because the decision was driven by the “questionable tactics” used by the putative class plaintiff in an effort to circumvent the rules governing appellate jurisdiction). 12 the effect of giving only one party the ability to appeal. Instead, the stipulation

permitted both parties to seek attorneys’ fees, from which a single appeal, by either

party and limited to the issue of attorneys’ fees, might follow. Accordingly, none of

the concerns underlying the holding in Microsoft are present when parties enter into a

Rule 41(a)(1)(A)(ii) stipulation of dismissal with prejudice that reserves only the

issue of attorneys’ fees. We therefore decline to read Microsoft as supporting the

conclusion that a Rule 41(a)(1)(A)(ii) dismissal does not produce a judgment for

purposes of a motion for attorneys’ fees under Rule 54.

Having established that Microsoft does not preclude Focus Nutrition from

seeking attorneys’ fees through a Rule 54 motion, we proceed by analyzing the

district court’s determination that Focus Nutrition was entitled to recover $26,674 in

attorneys’ fees, first considering the award under the Lanham Act and then

considering the award under the UTIAA.

B. Attorneys’ Fees Under the Lanham Act

Under the Lanham Act, “[t]he court in exceptional cases may award reasonable

attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). Thus, a party seeking an

award of attorneys’ fees must demonstrate that (1) it is a “prevailing party” and (2)

the case is “exceptional.” Because Focus Nutrition is not a “prevailing party,” we

start and end our analysis on that matter without considering whether this case was

“exceptional.”

The Supreme Court has defined “prevailing party” as “a party in whose favor

judgment is rendered, regardless of the amount of damages awarded.” Buckhannon

13 Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598, 603

(2001) (quoting Black’s Law Dictionary 1145 (7th ed. 1999)).4 To meet this

definition, a party must be “one who has been awarded some relief by the court” in

that the court materially altered the legal relationship between the plaintiff and the

defendant. Id. at 603–04. Thus, “[a] defendant’s voluntary change in conduct,

although perhaps accomplishing what the plaintiff sought to achieve by the lawsuit,

lacks the necessary judicial imprimatur on the change.” Id. at 605. Buckhannon

identified two situations—“enforceable judgments on the merits and court-ordered

consent decrees”—that involve sufficient judicial imprimatur to convey prevailing

party status onto a litigant. Id. at 604; see Sole v. Wyner, 551 U.S. 74, 82 n.3 (2007)

(identifying Buckhannon as holding that the term prevailing party “does not ‘include

a party that has failed to secure a judgment on the merits or a court-ordered consent

decree, but has nonetheless achieved the desired result because the lawsuit brought

about a voluntary change in the defendant’s conduct’” (quoting Buckhannon, 532

U.S. at 600)); see also CRST Van Expedited Inc. v. EEOC, 136 S. Ct. 1642, 1651–52

(2016) (concluding procedural-based judgment that terminated litigation in favor of

4 Although Buckhannon involved a party seeking attorneys’ fees pursuant to the Fair Housing Amendments Act of 1988 and the Americans with Disabilities Act, Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598, 601 (2001), the phrase “prevailing party” appears in multiple fee-shifting statutes and should be interpreted in a “consistent manner” across those statutes, CRST Van Expedited, Inc. v. EEOC, 136 S. Ct. 1642, 1646 (2016). Thus, while Buckhannon did not address a request for attorneys’ fees under the Lanham Act, its teachings about the definition of the phrase “prevailing party” apply with full force to a request for attorneys’ fees under the Lanham Act. 14 defendant qualified as judicial imprimatur to convey prevailing party status onto

defendant).

For our part, we have had at least three occasions to apply Buckhannon to the

question of whether a litigant was a prevailing party for purposes of recovering attorneys’

fees. See Biodiversity Conservation All. v. Stem, 519 F.3d 1226 (10th Cir. 2008); Bell v.

Bd. of Cty. Comm’rs, 451 F.3d 1097 (10th Cir. 2006); see also Sanchez v. Bd. of E. N.M.,

361 F. App’x 980 (10th Cir. 2010). In Bell, we concluded that a settlement was only

capable of conveying prevailing party status onto a litigant if the settlement bore the

hallmarks of a consent decree:

if a court does not incorporate a private settlement into an order, does not sign or otherwise provide written approval of the settlement’s terms, and does not retain jurisdiction to enforce performance of the obligations assumed by the settling parties, the settlement does not bear any of the marks of a consent decree and does not confer prevailing party status on the party whose claims have been compromised.

451 F.3d at 1103 (quotation marks omitted) (citing T.D. v. LaGrange Sch. Dist. No. 102,

349 F.3d 469, 479 (7th Cir. 2003); Smyth v. Rivero, 282 F.3d 268, 285 (4th Cir. 2002);

Smalbein ex rel. Smalbein v. City of Daytona Beach, 353 F.3d 901, 905–06 (11th Cir.

2003)). Further, a court’s involvement in a settlement conference by assuming a quasi-

mediator role and advising the parties of the strengths and weaknesses of their case is

insufficient to satisfy the judicial imprimatur requirement for a litigant to obtain

prevailing party status. See id.; see also Sanchez, 361 F. App’x at 984–85. Likewise, a

clerk of court terminating a case following a stipulation of dismissal does not constitute

judicial action or judicial imprimatur for purposes of the prevailing party analysis. Bell,

15 451 F.3d at 1104. And, the fact that a stipulation of dismissal reserves the issue of

attorneys’ fees and allows the district court to retain jurisdiction over that issue also does

not qualify as judicial imprimatur relative to the dismissal of the action. Sanchez, 361 F.

App’x at 983–84.

In Biodiversity Conservation Alliance, we rejected the contention that comments

by a district court favoring the merits of one party’s position over another party’s position

constitute sufficient judicial imprimatur to convey prevailing party status onto a litigant.

519 F.3d at 1230. Specifically, we stated that Buckhannon

requires more than a mere judicial statement favoring one party. Instead, in order for a party to prevail, the court’s statement must lend judicial teeth to the merits of the case. More specifically, a party is entitled to attorneys’ fees only if it could obtain a court order to enforce the merits of some portion of the claim it made in its suit. . . . ....

. . . Judicial imprimatur, of the sort required in Buckhannon, gives a plaintiff substance it can rely on in enforcing the merits of its case.

Id. (emphasis added).

In an effort to establish that it is a prevailing party, Focus Nutrition relies on

Xlear’s decision to enter into the stipulation of dismissal with prejudice and the

district court’s comments during the hearing on its Rule 12(c) motion. The stipulation

of dismissal in this case does not bear any attributes of a consent decree and did not

permit the district court to retain jurisdiction to enforce any aspect of the dismissal

relative to the merits of case. Instead, the stipulation of dismissal, by the fact that it

was a stipulation entered into under Federal Rule of Civil Procedure 41(a)(1)(A)(ii),

16 did not permit the district court to take any action relative to the merits of Xlear’s

claims or Focus Nutrition’s counterclaim. See Smith v. Phillips, 881 F.2d 902, 904

(10th Cir. 1989) (“A voluntary dismissal by stipulation under Rule 41(a)(1)[(A)](ii)

is of right, cannot be conditioned by the court, and does not call for the exercise of

any discretion on the part of the court. Once the stipulation is filed, the action on the

merits is at an end.” (citations and footnote omitted)). Further, the stipulation of

dismissal resulted only in the Clerk of Court terminating the case. And we have

already held that a clerk of court terminating a case after a settlement by the parties

does not constitute sufficient judicial imprimatur for the prevailing party analysis.

Bell, 451 F.3d at 1104.

We turn next to the comments by the district court judge at the hearing on the

Rule 12(c) motion. While certainly favorable to Focus Nutrition’s legal position

because they signaled the district court was likely to grant a future motion for

summary judgment by Focus Nutrition, the comments were not sufficient to allow

Focus Nutrition to “obtain a court order to enforce the merits of some portion of the

claim.” See Biodiversity Conservation All., 519 F.3d at 1230. In fact, the district

court denied Focus Nutrition’s Rule 12(c) motion. In so doing, the district court

explicitly indicated that there was a possibility that Xlear could produce evidence to

substantiate its claims and proceed past summary judgment. Specifically, the district

court judge stated, “I suppose there is the possibility that facts will get revealed

during this discovery disclosure window that would allow [Xlear] to avoid summary

judgment.” App’x at 115–16. Thus, while the district judge’s comments about the

17 validity of Xlear’s Lanham Act claim may have prompted Xlear to enter into

meaningful settlement talks that culminated in the stipulation of dismissal with

prejudice, these comments cannot be viewed as judicial action that altered the legal

rights of either party.5

In summation, under Buckhannon, Bell, and Biodiversity Conservation

Alliance, to establish that it was a prevailing party, a litigant must demonstrate the

existence of judicial imprimatur by identifying judicial action that altered or

modified the legal rights of the parties. Focus Nutrition cannot satisfy this

requirement and, therefore, is not entitled to recover attorneys’ fees under the

Lanham Act. Therefore, we reverse the district court’s award of attorneys’ fees under

the Lanham Act.

C. Attorneys’ Fees Under the UTIAA

Focus Nutrition argues that even if it was not a prevailing party under federal law

for purposes of the Lanham Act, it was a prevailing party under Utah law for purposes of

5 Put another way, Focus Nutrition argues that because the district court’s comments were the precipitating factor, or the catalyst, for Xlear engaging in settlement talks and entering into the stipulation of dismissal with prejudice, the comments qualify as judicial imprimatur. However, Buckhannon rejected the catalyst theory for determining if a litigant is a prevailing party and precluded courts from considering the “subjective motivations” of a party who voluntarily changed course during litigation when conducting the prevailing party analysis. See Buckhannon, 532 U.S. at 601; see also Petersen v. Gibson, 372 F.3d 862, 866 (7th Cir. 2004) (noting that catalyst theory necessitated evaluation of subjective motivations of the parties and Buckhannon rejected reliance on such as part of prevailing party analysis). Accordingly, faithful application of Buckhannon prevents us from considering what motivated Xlear to enter into the stipulation of dismissal and, instead, forces us to focus our analysis on the fact that Xlear’s entrance into the stipulation of dismissal was voluntary and the filing of the stipulation of dismissal did not permit for or result in any approval or action by the district court relative to the merits of the case. 18 the UTIAA and that the UTIAA entitled it to recover its requested attorneys’ fees of

$26,674. For two independent reasons, we vacate the district court’s award of attorneys’

fees under the UTIAA and remand for further proceedings.

Under the UTIAA, “[t]he court shall award attorneys’ fees to the prevailing party.”

Utah Code Ann. § 13–11a–4(2)(c). Because a provision of the UTIAA awards attorneys’

fees to the prevailing party—an outcome-based reason for awarding fees that is part and

parcel of the state law cause of action—the UTIAA fee award statute is substantive, and

state law controls the ability to award Focus Nutrition fees stemming from its defense of

Xlear’s UTIAA claim. See United Mine Workers of Am. v. Gibbs, 383 U.S. 715, 726

(1966) (applying Erie6 Doctrine to state law claims arising under supplemental

jurisdiction); see also Chieftain Royalty Co. v. Enervest Energy Institutional Fund XII–A,

L.P., 888 F.3d 455, 460 (10th Cir. 2017) (state law governing attorneys’ fees is

substantive when it ties the recoverability of attorneys’ fees to the “outcome of the

litigation” or where the state-created right to recover attorneys’ fees is “part and parcel of

the cause of action over which we have [supplemental] jurisdiction” (internal quotation

marks omitted)).

The Utah Supreme Court has adopted a “flexible,” “reasoned,” and “common-

sense” approach to whether a litigant is a prevailing party. Neff v. Neff, 247 P.3d 380,

399, 400 (Utah 2011). This approach requires a “case-by-case evaluation” so as “to

handle circumstances where both, or neither, parties may be considered to have

prevailed.” Id. at 398 (emphasis omitted). In employing this approach, a trial court should

6 Erie R. Co. v. Tompkins, 304 U.S. 64 (1938). 19 consider several factors, including “the language of the . . . statute that forms the basis for

the attorney fees award, the number of claims brought by the parties, the importance of

each of the claims relative to the entire litigation, and the amounts awarded on each

claim.” Id. at 398. The trial court may also consider whether interests of “justice and

equity” weigh in favor or against an award of attorneys’ fees. See Hull v. Wilcock, 285

P.3d 815, 830–31 (Utah Ct. App. 2012). Finally, under Utah law,

a party seeking fees must allocate its fee request according to its underlying claims. Indeed, the party must categorize the time and fees expended for “(1) successful claims for which there may be an entitlement to attorney fees, (2) unsuccessful claims for which there would have been an entitlement to attorney fees had the claims been successful, and (3) claims for which there is no entitlement to attorney fees.”

Foote v. Clark, 962 P.2d 52, 55 (Utah 1998) (quoting Cottonwood Mall Co. v. Sine, 830

P.2d 266, 269–70 (Utah 1992)).

By incorrectly concluding that Focus Nutrition was a prevailing party under the

Lanham Act, the district court never analyzed which of the requested fees stemmed from

Focus Nutrition’s defense of the UTIAA claim rather than the Lanham Act claim. Nor

could the district court have attempted to perform this analysis where the affidavit and

one-page billing record submitted by Focus Nutrition did not delineate time spent

defending the UTIAA claim from time spent defending the Lanham Act claim and the

common law unfair competition claim or time spent pursuing the counterclaim. That said,

from the record before us, we know that Focus Nutrition’s attorneys’ fees relative to its

Rule 12(c) motion are not recoverable under the UTIAA because the motion only sought

dismissal of Xlear’s Lanham Act claim. We also know that Focus Nutrition pursued a

20 counterclaim under the Lanham Act. Thus, attorneys’ fees attributable to the preparation

and prosecution of the counterclaim cannot be recovered under the UTIAA.7 Even

assuming temporarily that Focus Nutrition is a prevailing party under Utah law for

purposes of Xlear’s UTIAA claim, therefore, would not permit an award of the full

requested fees of $26,674. Accordingly, we must vacate the district court’s award of

attorneys’ fees under the UTIAA and remand the matter to permit the district court to

determine which of the requested fees are attributable to Focus Nutrition’s defense of the

UTIAA claim rather than to its defense of the non-UTIAA claims or to its pursuit of the

counterclaim.

Apart from the fact that the UTIAA cannot support an award of the full requested

fees, we conclude that the district court did not adequately state its findings with respect

to the prevailing party analysis under Utah law. The entirety of the district court’s

analysis specific to Focus Nutrition’s attorneys’ fees request under the UTIAA reads:

The Utah Truth in Advertising Act provides that “[c]osts shall be allowed to the prevailing party unless the court otherwise directs. The court shall award attorneys’ fees to the prevailing party.” U.C.A. § 13-11a- 4(2)(c). Federal courts have followed Utah law in determining whether a party is the “prevailing party” under this statute. See e.g. First Data Merch. Servs. Corp. v. SecurityMetrics Inc., 672 Fed. Appx. 229, 239 (4th Cir. 2016). Under Utah law, the Court looks to whether there was a prevailing party “within the context of the case as a whole” in awarding attorneys’ fees. See Neff v. Neff, 247 P.3d 380 (Utah 2011); First Data, 672 Fed. Appx. at 239. The Court is to employ a “flexible and reasoned approach” and “take into consideration ‘the significance of the net judgment in the case’ and ‘the amounts actually sought . . . balanc[ed] . . . proportionally

7 Although we identify two examples of tasks that were part of the requested attorneys’ fees and not incurred in defense of the UTIAA claim, other tasks not specifically identified here may also fall into this category. 21 with what was recovered.’” Giles v. Mineral Res. Int’l, Inc., 320 P.3d 684, 687-88 (Utah App. 2014)(quoting A.K. & R. Whipple Plumbing & Heating v. Guy, 94 P.3d 270 (Utah 2004). “Courts should not ignore common sense when deciding which party prevailed.” Giles, 320 P.3d at 687-88. The Court finds that Defendant prevailed within the context of this case as a whole. As discussed above, it succeeded in Plaintiff dismissing all of its claims with prejudice.

App’x at 151–52. This analysis, however, does not account for several of the factors

identified in Neff, particularly the importance of the UTIAA claim relative to the entire

litigation. See 247 P.3d at 398. The need for findings on this Neff factor is magnified by

our earlier conclusion that Focus Nutrition did not prevail on the Lanham Act claim. And,

where we must vacate the district court’s award of attorneys’ fees under the UTIAA

because the UTIAA cannot support an award of all of Focus Nutrition’s requested fees,

we find it prudent, in light of the abuse of discretion standard that governs our review of

attorneys’ fees awards, to allow the district court to conduct a full analysis of the Neff

factors in the first instance.

In summation, while it may be the case that Focus Nutrition is a prevailing party

for purposes of the UTIAA, we vacate the district court’s award of attorneys’ fees under

the UTIAA because the UTIAA cannot support an award of fees to Focus Nutrition for

fees incurred in defense of the non-UTIAA claims or in pursuit of its counterclaim.

Furthermore, on remand, the district court should analyze the factors identified in Neff to

determine if Focus Nutrition remains a prevailing party under the UTIAA in light of our

conclusion that Focus Nutrition is not a prevailing party under the Lanham Act.

22 D. Reasonableness of Requested Attorneys’ Fees

Finally, because the matter is likely to arise again on remand, we discuss the

parameters governing the issue of whether Focus Nutrition’s requested attorneys’

fees are reasonable. As noted earlier, in granting Focus Nutrition all of its requested

fees, the district court did not explicitly comment on the reasonableness of the

requested fees or address Xlear’s argument that Focus Nutrition failed to submit

adequate evidence to permit the district court to assess the reasonableness of the

requested fees.

Because we have already determined that if Focus Nutrition is to recover any

attorneys’ fees it can only recover fees incurred in defense of the UTIAA claim, we

start our analysis by considering the issue of whether federal or state law establishes

the requirements for assessing the reasonableness of the requested fees. “The

calculation of attorney fees is considered substantive law because ‘the method of

calculating a fee is an inherent part of the substantive right to the fee itself and

reflects substantive state policy.’” Chieftain Royalty Co., 888 F.3d at 462 (quoting

Moore’s Federal Practice § 124.07[3][b] (3d ed. 2011)). Thus, “[w]hen state law

governs whether to award attorney fees . . . state law also governs how to calculate

the amount.” Id. at 461. And, “it is state substantive law that cabins the meaning of

reasonable” with respect to the amount of fees awarded. Id. at 462 (emphasis

omitted).

Under Utah law, “an award of attorney fees must be supported by evidence in

the record.” Dixie State Bank v. Bracken, 764 P.2d 985, 988 (Utah 1988). “Except in

23 the most simple cases, the evidence should include the hours spent on the case, the

hourly rate or rates charged for those hours, and usual and customary rates for such

work.” U.S.A. United Staffing All., LLC v. Workers’ Comp. Fund, 213 P.3d 20, 30

(Utah Ct. App. 2009) (quoting Cottonwood Mall Co., 830 P.2d at 268). Additionally,

the evidence submitted in support of the fee request should permit the district court to

assess four questions central to the reasonableness inquiry:

1. What legal work was actually performed? 2. How much of the work performed was reasonably necessary to adequately prosecute [or defend] the matter? 3. Is the attorney’s billing rate consistent with the rates customarily charged in the locality for similar services? 4. Are there circumstances which require consideration of additional factors, including those listed in the Code of Professional Responsibility?

Dixie State Bank, 764 P.2d at 990 (footnotes omitted). “The appropriateness of the

work actually performed and of the attorney’s billing rate is evaluated before a

reasonable fee is set.” Id. “The trial court should . . . document its evaluation of the

requested fees’ reasonableness through findings of fact,” which should (1) “mirror

the requesting party’s allocation of fees per claims,” (2) “support any award issued,”

and (3) “detail the factors considered dispositive by the trial court in calculating the

award.” Foote, 962 P.2d at 55.

Additionally, “[a] party is . . . entitled only to those fees resulting from its

principal cause of action for which there is a contractual (or statutory) obligation for

attorney’s fees.” Utah Farm Prod. Credit Ass’n v. Cox, 627 P.2d 62, 66 (Utah 1981).

Therefore, where a party incurs attorneys’ fees prosecuting or defending multiple

24 claims within a single litigation and the party has a statutory right only to recover

fees relative to one of the claims, the party must submit sufficient evidence to permit

the district court to determine what portion of the fees were incurred prosecuting or

defending the claim for which fee recovery is statutorily authorized. Id.; see Paul

Mueller Co. v. Cache Valley Dairy Ass’n, 657 P.2d 1279, 1288 (Utah 1982)

(affirming fee award because “the trial court . . . had sufficient information before it

in the billing records to enable it to separate the counterclaim hours from those spent

in defense of the main causes of action”); see also Foote, 962 P.2d at 55 (requiring

party seeking fees to delineate requested fees based on successful claims,

unsuccessful claims, and claims for which fee recovery is not authorized).

Now that Focus Nutrition’s request for attorneys’ fees rises and falls on the

UTIAA, the particulars of Utah law relative to the calculation and reasonableness of

the requested fees are essential to Focus Nutrition’s ability to recover any of its

initially-requested fees. On remand, and assuming the district court concludes Focus

Nutrition is a prevailing party under the UTIAA, Focus Nutrition must submit

additional evidence sufficient to permit the court to make the necessary findings

relative to which fees were incurred in defense of the UTIAA claim and what a

reasonable award of fees is relative to Focus Nutrition’s defense of the UTIAA claim.

IV. CONCLUSION

We REVERSE the district court’s award of attorneys’ fees under the Lanham

Act because Focus Nutrition cannot establish that it was a prevailing party under

federal law. And we VACATE the district court’s award of attorneys’ fees under the

25 UTIAA because the UTIAA cannot support an award of attorneys’ fees incurred by

Focus Nutrition when defending non-UTIAA claims or when prosecuting its Lanham

Act counterclaim and because the district court did not make findings relative to the

prevailing party factors outlined in Neff. We REMAND this case to permit the

district court to determine whether Focus Nutrition is a prevailing party under the

UTIAA and, if so, to determine the reasonableness of Focus Nutrition’s requested fee

relative to its defense of the UTIAA claim.