`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`
`BRIGHTON COLLECTIBLES, INC.,
`Plaintiff,
`
`vs.
`
`COLDWATER CREEK INC.,
`
`Defendant.
`
`CASE NO. 06-CV-01848-H (POR)
`ORDER:
`(1) GRANTING PLAINTIFF’S
`MOTION FOR ATTORNEYS
`FEES,
`(2) DENYING PLAINTIFF’S
`MOTION FOR PREJUDGMENT
`INTEREST,
`(3) DENYING PLAINTIFF’S
`MOTION FOR ENHANCED
`DAMAGES, &
`(4) DENYING DEFENDANT’S
`MOTION FOR ATTORNEYS’
`FEES
`
`On December 19, 2008, Plaintiff Brighton Collectibles, Inc. (“Brighton”) filed a motion
`for attorneys’ fees, enhanced damages under the Lanham Act, and prejudgment interest. (Doc.
`Nos. 279, 281.) On the same day, Defendant Coldwater Creek Inc. (“Coldwater”) filed a
`motion for attorneys’ fees. (Doc. Nos. 275, 278.) On January 6, 2009, the parties filed
`responses in opposition to the cross motions. (Doc. Nos. 290-91, 294.) On January 13, 2009,
`the parties filed their replies. (Doc. Nos. 298–99; 300, 302.) The Court held a hearing on the
`motions on January 16, 2009. Peter Ross and Steven Winton appeared on behalf of Brighton.
`Peter Brann and Alison Pivonka appeared on behalf of Coldwater.
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`After due consideration, the Court grants Plaintiff’s motion for attorneys’ fees, denies
`Plaintiff’s motion for enhanced damages, denies Plaintiff’s motion for prejudgment interest,
`and denies Defendant’s motion for attorneys’ fees.
`Background
`Plaintiff Brighton, a designer, manufacturer and retailer of women’s fashion
`accessories, brought suit against Defendant Coldwater, a retailer of products including
`women’s fashion accessories. Plaintiff Brighton alleged copyright infringement of Brighton’s
`“Carolina” and “Brighton Scroll” copyrights, trade dress infringement, false designation of
`origin, common law unfair competition, and statutory unfair competition. (See Doc. No. 30.)
`Brighton’s claims against Coldwater stemmed from sales of women’s handbags and luggage
`from 2005 to 2007.
`On May 20, 2008, the Court granted Coldwater’s motion for summary judgment on
`Plaintiff’s copyright claim for infringement of the Brighton scroll. (Doc. No. 179 at p.7.) On
`November 21, 2008, a jury returned a special verdict in favor of Brighton, finding Coldwater
`willfully committed trade dress infringement, false designation of origin, and copyright
`infringement of the “Carolina” copyright and engaged in unfair competition with malice, fraud,
`or oppression. (Doc. No. 264.) The jury awarded actual damages of $5,893,000 ($2,652,000
`for trade dress infringement, false designation of origin or unfair competition and $3,241,000
`for copyright infringement) and wrongful profits of $1,499,000 ($675,000 for trade dress
`infringement, false designation of origin or unfair competition and $824,000 for copyright
`infringement) against Coldwater. (Id.)
` Brighton claims to be the prevailing party under the Copyright Act and the Lanham Act
`and seeks attorneys’ fees of $1,235,404, enhanced damages under the Lanham Act, and
`prejudgment interest. (Doc. No. 279.)1 Coldwater claims to be the prevailing party on
`Brighton’s “Brighton Scroll” copyright claim and seeks attorneys’ fees of $99,751.74 and costs
`of $4,166.28. (Doc. No. 275 at p.1.)
`
`1Brighton also seeks a permanent injunction against Coldwater (Doc. No. 280), which the
`Court addresses in a separate order.
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`Discussion
`Under Federal Rule of Civil Procedure 54, a party may move for attorney fees, unless
`the substantive law requires those fees to be proved at trial as an element of damages. FED. R.
`CIV. P. 54(d)(2)(A). Brighton asserts that it is entitled to attorneys’ fees as the prevailing
`party under the Copyright Act and the Lanham Act, as the jury found Coldwater willfully
`infringed Brighton’s “Carolina” copyright and willfully committed trade dress infringement
`and false designation of origin. (Doc. No. 279 at p.1.) Coldwater asserts that it is entitled to
`attorneys’ fees and costs as the prevailing party under the Copyright Act based on the Court’s
`dismissal of Brighton’s “Brighton Scroll” copyright claim at summary judgment. (Doc. No.
`275 at p.1.)
`1. Lanham Act
`The Lanham Act provides that “[t]he court in exceptional cases may award reasonable
`attorney fees to the prevailing party.” 15 U.S.C. §1117(a). “[A] case is exceptional within the
`meaning of 15 U.S.C. § 1117(a) where the infringement is willful, deliberate, knowing or
`malicious.” Earthquake Sound Corp. v. Bumper Indus., 352 F.3d 1210, 1216 (9th Cir. 2003);
`see also Derek Andrew, Inc. v. Poof Apparel Corp., 528 F.3d 696, 702 (9th Cir. 2008)
`(upholding grant of attorneys’ fees under Lanham Act based on default judgment where
`plaintiff pled willful infringement); Rio Properties, Inc. v. Rio Int’l Interlink, 284 F.3d 1007,
`1023 (9th Cir. 2002) (“While the term ‘exceptional’ is not defined in the statute, attorneys’ fees
`are available in infringement cases where the acts of infringement can be characterized as
`malicious, fraudulent, deliberate, or willful.”(citation omitted)).
`Plaintiff Brighton is the prevailing party under the Lanham Act, as the jury found
`Coldwater willfully committed trade dress infringement and false designation of origin. (Doc.
`No. 264.) The Court finds this case exceptional based on the total record of this case,
`including the jury’s finding of willfulness. See Earthquake Sound, 352 F.3d at 1216
`(explaining cases defendant cited for proposition that willful infringement does not per se show
`exceptionality are “either distinguishable or do not reflect the law of this circuit”). During
`trial, Brighton presented substantial evidence of Coldwater’s intentional infringing conduct,
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`such as emails between employees and designers concerning how to make Coldwater’s
`products more “Brightony.” (See, e.g., Doc. No. 281, Trial Ex. 250.) The jury agreed with
`Brighton’s case and found Coldwater willfully infringed Brighton’s asserted trade dress and
`engaged in common law unfair competition with malice, fraud or oppression. (Doc. No. 264.)
`As a result, the jury awarded Brighton $2,652,000 in actual damages and $675,000 in
`wrongful profits. (Id.)
`Defendant asserts that this is not an exceptional case because Plaintiff’s trade dress
`definition was amorphous and the issues of infringement and willfulness were closely
`contested. (Doc. No. 290 at pp.12–13.) The Court disagrees and concludes that an award of
`attorneys’ fees under the Lanham Act is appropriate in this exceptional case. Accordingly, the
`Court grants Plaintiff’s motion for attorneys’ fees under the Lanham Act.
`2. Copyright Act
`Under the Copyright Act, “the court in its discretion may allow the recovery of full
`costs by or against any party other than the United States or an officer thereof. Except as
`otherwise provided by this title, the court may also award a reasonable attorney's fee to the
`prevailing party as part of the costs.” 17 U.S.C. §505. “In copyright infringement cases,
`generally, the prevailing party is the one who succeeds on a significant issue in the litigation
`that achieves some of the benefits the party sought in bringing suit.” Thoroughbred Software
`Int’l, Inc. v. Dice Corp., 488 F.3d 352, 362 (6th Cir. 2007); Wall Data Inc. v. Los Angeles
`County Sheriff’s Dept., 447 F.3d 769, 787 (9th Cir. 2006).
`Prevailing parties are to be awarded attorneys’ fees in copyright cases “only as a matter
`of the court’s discretion.” Fantasy, Inc. v. Fogerty, 94 F.3d 553, 557 (9th Cir. 1996)
`(discussing the Supreme Court’s holding in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 (1994),
`rejecting the dual standard “whereby prevailing plaintiffs were generally awarded attorney’s
`fees as a matter of course”). In deciding whether to award attorneys’ fees to the prevailing
`party, a district court may consider the following nonexclusive factors: “(1) the degree of
`success obtained, (2) frivolousness, (3) motivation, (4) objective unreasonableness (legal and
`factual), and (5) the need to advance considerations of compensation and deterrence.” Smith
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`v. Jackson, 84 F.3d 1213, 1221 (9th Cir. 1996) (citations omitted); see also Fantasy, 94 F.3d
`at 558. Although a finding of willfulness is not a prerequisite to a fee award under the
`Copyright Act, “willful infringement is an important factor favoring an award of fees . . . .”
`Historical Research v. Cabral, 80 F.3d 377, 379 (9th Cir. 1996).
`Each party claims to be the prevailing party for purposes of the Copyright Act.
`Brighton contends that it is the prevailing party because the jury found that Coldwater willfully
`infringed its “Carolina” copyright and awarded actual damages of $3,241,000 and wrongful
`profits of $824,000 stemming from the infringement. Coldwater claims that it is the prevailing
`party under the Copyright Act because Brighton’s claim for infringement of its “Brighton
`Scroll” copyright was dismissed on summary judgment.
`The Court concludes that Plaintiff Brighton is the prevailing party for purposes of the
`Copyright Act. Brighton succeeded on its claim for willful infringement of its “Carolina”
`copyright and was awarded significant damages. In light of the special verdict in favor of
`Brighton, the dismissal of one of its copyright claims does not prevent it from being deemed
`the overall prevailing party under the Copyright Act. See Wall Data, 447 F.3d 769;
`Thoroughbred, 488 F.3d 352.
`The Court grants Plaintiff Brighton’s motion for attorneys’ fees under the Copyright Act
`and denies Defendant Coldwater’s motion for attorneys’ fees under the Copyright Act. After
`considering the factors listed in Smith, the Court in its discretion, concludes that an award of
`attorneys’ fees to Brighton as the prevailing party under the Copyright Act is appropriate. See
`Smith, 84 F.3d at 1221. Brighton obtained a high degree of success on its copyright
`infringement claim, as the jury found Coldwater willfully infringed Brighton’s “Carolina”
`copyright and awarded substantial damages. A fee award in this case of willful infringement
`furthers the goal of the Copyright Act to serve “the purpose of encouraging private
`enforcement and deterring infringements.” Frank Music Corp. v. Metro-Goldwyn-Mayer Inc.,
`886 F.2d 1545, 1556 (9th Cir. 1989). The Court concludes that Brighton is entitled to a
`reasonable award of its attorneys’ fees under the Copyright Act. Brighton’s copyright claims
`arose from a common core of facts, the evidence on infringement overlapped, and the claims
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`were based on the same governing law, and therefore no apportionment or allocation is
`required. See Creative Computing v. Getloaded.com, LLC, 386 F.3d 930, 937 (9th Cir. 2004)
`(“Allocation is not required where there is a ‘common core of facts’ that requires substantially
`the same expense on prevailing and unsuccessful claims.” (citation omitted)).
`3. Calculation of the Attorneys’ Fees Award
`The calculation of a reasonable fee award is a two-step process. “To determine what
`fee should be awarded, the court must first determine the ‘lodestar,’ which is the number of
`hours reasonably expended on litigation multiplied by a reasonable rate.” United
`Steelworkers of Am. v. Phelps Dodge Corp., 896 F.2d 403, 406 (9th Cir. 1990). Taken into
`account in either the reasonable hours component or the reasonable rate component of the
`lodestar calculation are: “(1) the novelty and complexity of the issues; (2) the special skill
`and experience of counsel; (3) the quality of representation; (4) the results obtained; and (5)
`the contingent nature of the fee agreement.” Morales v. City of San Rafael, 96 F.3d 359,
`364 (9th Cir.1996). During the second step the district court, in its equitable discretion,
`adjusts this amount “on the basis of other considerations.” Lytle v. Carl, 382 F.3d 978, 988
`(9th Cir.2004).
`The Court grants Plaintiff’s motion for attorneys’ fees, as Brighton is entitled to fees
`under the Lanham Act and the Copyright Act. Brighton requests fees for 3,366 hours of
`work performed and has submitted detailed billing statements of those hours, reducing the
`number of hours for entries that related to another matter. (Doc. No. 281, Ross Decl.
`¶¶19–25, Ex. N.) Once the applicants submit evidence of the appropriate hours spent on
`litigation, “the party opposing the fee application has a burden of rebuttal that requires
`submission of evidence to the district court challenging the accuracy and reasonableness of
`the hours charged.” Gates v. Deukmejian, 987 F.2d 1392, 1397 (9th Cir.1992). Coldwater
`objects to the hours requested by Brighton based on failure to apportion between claims,
`block billing, overstaffing, overlitigating, billing judgment, and clerical tasks. (Doc. No.
`290 at pp.13–16.) As part of its opposition, Coldwater has submitted two charts listing
`Brighton’s billing entries to which Coldwater takes exception, with no other evidence
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`challenging the accuracy or the reasonableness. (Doc. No. 291, Charts 1 & 2.) After a
`review of the parties’ submissions, the Court concludes that Brighton’s requested hours are
`reasonable, as this litigation spans more than two years, includes a jury trial, and Brighton
`obtained excellent results. See Fischer v. SJB-P.D. Inc., 214 F.3d 1115, 1121 (9th Cir.
`2000). No apportionment is required as the Court grants Brighton’s motion for attorneys’
`fees on its Lanham Act claim, on its “Carolina” copyright claim, and its related “Brighton
`Scroll” copyright claim. See Creative Computing, 386 F.3d at 937.
`Brighton requests fees at hourly rates ranging from $90 to $210 per hour for
`paralegal work and $125 to $625 per hour for attorney work. (Doc. No. 281, Ross Decl. &
`Ex. N.) Brighton’s highest rates are $550 per hour for the lead attorney’s work, who has 25
`years of experience and has tried 55 cases, and $625 for outside, general counsel’s work,
`who has 35 years of litigation experience. (Id.) The average rate for the claimed hours is
`$367 per hour. (Id.) “The prevailing market rate is indicative of a reasonable hourly rate.”
`Jordan v. Multnomah County, 815 F.2d 1258, 1262 (9th Cir. 1987). “Affidavits of the
`plaintiffs’ attorney and other attorneys regarding prevailing fees in the community, and rate
`determinations in other cases, particularly those setting a rate for the plaintiffs’ attorney,
`are satisfactory evidence of the prevailing market rate.” United Steelworkers, 896 F.2d at
`407. Plaintiff’s attorney submitted an affidavit concerning the rates claimed in this case
`and avered that these were consistent with prevailing rates in Southern California. (Doc.
`No. 281, Ross Decl. ¶¶22–26.) In addition, Plaintiff cited other cases from this district
`finding rates over $500 reasonable for experienced counsel handling complex litigation.
`See Moore v. Bank of Am., N.A. (USA), 2008 WL 688851, at *3 (S.D. Cal. Jan. 7, 2008);
`Eldorado Stone LLC v. Renaissane Stone, 2007 WL 3308099, at * 4 (S.D. Cal. Oct. 24,
`2007). Defendant opposes Plaintiff’s rates and argues that the rate should be $268 per
`hour, the rate requested by Defendant in its motion for attorneys’ fees. (Doc. No. 290 at
`p.17.) The Court concludes that Plaintiff’s requested rates, with an average rate of $367,
`are reasonable in light of the experience and skill of counsel, the quality of representation
`provided by counsel, and the excellent results obtained for the client.
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`Second, the court must decide whether to enhance or reduce the lodestar figure
`based on an evaluation of the Kerr factors that are not already subsumed in the initial
`lodestar calculation. Fischer, 214 F.3d at 1119; see also Van Gerwen v. Guarantee Mut.
`Life Co., 214 F.3d 1041, 1045 & n.2 (9th Cir. 2000) (discussing factors courts consider in
`making discretionary upward or downward departures). “A ‘strong presumption’ exists
`that the lodestar figure represents a ‘reasonable fee,’ and therefore, it should only be
`enhanced or reduced in ‘rare and exceptional cases.’ Id. at n.4 (quoting Pennsylvania v.
`Delaware Valley Citizens' Council for Clean Air, 478 U.S. 546, 565 (1986) (internal
`quotations omitted)). The Court concludes that the loadstar figure represents a reasonable
`fee in this case and should not be enhanced or reduced based on the Kerr factors.
`Plaintiff’s request for fees is granted in the amount of $1,235,404.
`4. Prejudgment Interest
`Plaintiff also requests an award of prejudgment interest on the jury’s award of actual
`damages and wrongful profits. (Doc. No. 279 at p.22.) “Prejudgment interest is available
`under the Copyright Act” in the discretion of the district court. Polar Bear Productions,
`Inc. v. Timex Corp., 384 F.3d 700, 716 & n.12 (9th Cir. 2004). Prejudgment interest is not
`available to Plaintiff under the Lanham Act, as this case was not a counterfeit trademark
`case brought under 15 U.S.C. §1114(1)(a). See 15 U.S.C. §1117(b) (authorizing award of
`prejudgment interest in case involving use of a counterfeit mark or designation).
`After considering the entire record, the Court denies Plaintiff Brighton’s motion for
`prejudgment interest. Brighton is not entitled to prejudgment interest on its Lanham Act
`damages, as it brought suit under 15 U.S.C. §1125(a) for trade dress infringement and false
`designation of origin. (See Doc. No. 30 ¶¶ 29–45.) As to Brighton’s copyright claims, the
`Court exercises its discretion to deny an award of prejudgment interest, as the Court
`concludes that the jury award adequately compensates Brighton for the damages in this
`case. Coldwater’s decision to fully litigate its infringement of the “Carolina” copyright was
`not needless delay, as there were legitimate disputes over infringement of the “Carolina”
`copyright.
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`5. Enhanced Damages under the Lanham Act
`“Section 35 of the Lanham Act gives the trial judge discretion to increase the award of
`actual damages, not to exceed three times that amount, according to the circumstances of the
`case.” Playboy Enter., Inc. v. Baccarat Clothing Co., Inc., 692 F.2d 1272, 12756 (9th Cir.
`1982); 15 U.S.C. §1117(a) (“In assessing damages the court may enter judgment, according
`to the circumstances of the case, for any sum above the amount found as actual damages, not
`exceeding three times such amount.”) Brighton argues that the jury’s award of actual damages
`under the Lanham Act should be trebled or doubled based on Coldwater’s willful infringement
`of Brighton’s trade dress and to deter Coldwater from engaging in similar activity in the future.
`(Doc. No. 279 at pp.21–22.)
`The Court denies Plaintiff Brighton’s motion for enhanced damages under the Lanham
`Act. The jury award of $2,652,000 in actual damages and the Court’s award of attorneys’ fees
`reasonably compensates Brighton and any enhancement may constitute an impermissible
`penalty against Coldwater. The Lanham Act provides that any enhancement by a court, “shall
`constitute compensation and not a penalty.” 15 U.S.C. §1117(a). The jury specifically
`rejected imposing punitive damages on Coldwater. (Doc. No. 265.) Brighton’s arguments that
`Coldwater needs to be deterred from future infringement through an enhanced damage award
`sounds in punishment, and do not claim that the jury’s award fails to adequately compensate
`Brighton.
`
`Conclusion
`Based on the reasons set forth above, the Court GRANTS Plaintiff Brighton’s motion
`for attorneys’ fees in the amount of $1,235,404 and DENIES Defendant Coldwater’s motion
`for attorneys’ fees. The Court DENIES Plaintiff Brighton’s motion for prejudgment interest
`and DENIES Plaintiff Brighton’s motion for enhancement of damages under the Lanham Act.
`IT IS SO ORDERED.
`DATED: January 20, 2009
`
`________________________________
`MARILYN L. HUFF, District Judge
`UNITED STATES DISTRICT COURT
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