Case: 4:19-cv-00200-SEP Doc. #: 535 Filed: 01/12/24 Page: 1 of 13 PageID #: 12885
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`Plaintiffs,
`
`
`
`Defendants,
`
`UNITED STATES DISTRICT COURT
`EASTERN DISTRICT OF MISSOURI
`EASTERN DIVISION
`HOFFMANN BROTHERS HEATING )
`
`AND AIR CONDITIONING, LLC, )
`
`
`)
`
`
`)
`
`v.
`)
`
`
`)
`
`HOFFMANN AIR CONDITIONING
`)
`
`AND HEATING, LLC, et al.,
`)
`
`
`) Case No. 4:19-cv-00200-SEP
`
`)
`
`v.
`)
`
`)
`)
`HOFFMANNN BROTHERS HEATING
`)
`AND AIR CONDITIONING, INC.,
`)
`ROBERT J. HOFFMANNN, CHRIS
`)
`HOFFMANNN, AND ROBERT
`)
`JOSEPH HOFFMANNN, JR.
`)
`
` Counterclaim Defendants.
`)
`MEMORANDUM AND ORDER
`Before the Court are Defendants/Counterclaimants Thomas E. Hoffmann and Hoffmann
`
`Air Conditioning & Heating, LLC’s Motion for Attorneys’ Fees, Doc. [489], and Counter
`Defendant Robert J. Hoffmann’s Motion for Attorneys’ Fees, Doc. [491]. The motions have
`been fully briefed. For the reasons set forth below, both motions are denied.
`BACKGROUND
`This matter comes before the Court after more than a decade of contention and litigation
`
`among the parties. The procedural history of this case is set forth at length in the prior opinions
`of this Court issued at summary judgment and post-trial, which are incorporated by reference.
`See Docs. [314], [362], [530]. The Court will not repeat that lengthy history except to the extent
`relevant to the competing motions for attorneys’ fees now before it.
`In 1988, Defendant Thomas E. Hoffmann (Tom), and his older brother, Counterclaim
`Defendant Robert J. Hoffmann (Robert), purchased what would eventually become Hoffmann
`Brothers Heating and Air Conditioning, Inc. (“Hoffmann Brothers”). Doc. [252] at 2. In 2010,
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`Robert made plans to buy Tom out of the family business, Doc. [278] ¶ 1 *SEALED*, and a
`lawsuit between the brothers ensued in the Circuit Court of St. Louis County. See Doc. [285]
`¶ 2. On July 14, 2011, the parties entered into a Settlement Agreement. Id. The 2011
`Settlement Agreement included, among other things, a non-disparagement clause, non-
`solicitation agreements, and a provision that provided for Tom to receive a payment in exchange
`for his agreement to not use the “Hoffmann” name in connection with an HVAC business for the
`four years following the settlement. See Doc. [251-2] *SEALED* (Copy of the 2011 Settlement
`Agreement).
`
`After executing the Settlement Agreement, Tom created a new HVAC company, and in
`the summer of 2017, began using the business name “Hoffmann Air Conditioning & Heating”
`and operating the website hoffmannairconditioning.com. See Doc. [59] ¶ 23. On February 8,
`2019, Plaintiff Hoffmann Brothers filed this suit against Tom and Hoffmann Air Conditioning &
`Heating, bringing various claims relating to trademark and copyright infringement, cyberpiracy,
`and breach of contract. See Docs. [1], [55]. Defendants filed counterclaims against Plaintiff
`Hoffmann Brothers as well as Robert J. Hoffmann, Robert J. Hoffmann, Jr., and Chris
`Hoffmann. Doc. [59].
`At summary judgment, Defendants prevailed on the merits of Plaintiff’s claims for
`copyright infringement, as the Court found that while Defendants admitted using images of
`Hoffmann Brothers employees taken from Plaintiff’s advertisements to promote Hoffmann AC,
`Plaintiff failed to demonstrate a causal nexus between Defendants’ use of the photos and
`Defendants’ profits. See Docs. [314], [362]. Plaintiff prevailed on Count II of Defendants’
`counterclaim for breach of contract, and Counterclaim Defendants prevailed on Defendants’
`counterclaims for defamation and tortious interference. Id. The parties proceeded to trial on
`Plaintiff’s remaining trademark-related claims, the breach of contract claims, and Defendants’
`claim for prima facie tort against Joe Hoffmann.1
`
`On June 17, 2022, after an eight-day trial, the jury found in favor of Defendants on
`Plaintiff’s primary claims of trademark infringement and unfair competition. See Doc. [460].
`The jury also found in favor of Defendants on their counterclaim of prima facie tort against
`
`
`1 Tom also sought a declaratory judgment that Defendants’ actions had not violated Plaintiff’s statutory or
`common law trademark rights, which claim was rendered moot by the jury’s verdict in Tom’s favor on
`Plaintiff’s trademark claims. See Docs. [59], [460].
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`Counterclaim Defendant Joe Hoffmann, awarding $800 in actual damages and $5,000 in punitive
`damages. Id. The jury found in favor of Tom on Hoffmann Brothers’ claim that Tom breached
`the 2011 Settlement Agreement by using the name “Hoffmann” in an HVAC business name
`between 2011 and 2015, and it found in favor of Hoffmann Brothers on its claim that Tom had
`breached the 2011 Settlement Agreement by failing to return or destroy all Hoffmann Brothers
`materials in his possession. The jury awarded Hoffmann Brothers nominal damages of $1 for the
`breach. See Doc. [460]. Finally, the jury found in favor of Counterclaim Defendant Robert on
`Tom’s claim that Robert had breached the non-disparagement clause of the 2011 Settlement
`Agreement. Id.
`Defendants maintain that, because they prevailed on Plaintiff’s copyright, trademark
`infringement, and unfair competition claims, they are entitled to attorneys’ fees pursuant to
`Section 505 of the Copyright Act, 17 U.S.C. § 505, and Section 1117(a) of the Lanham Act, 15
`U.S.C. § 1117(a). Doc. [489]. Meanwhile, Robert Hoffmann asserts that he is entitled to
`attorneys’ fees pursuant to the fee-shifting clause in the 2011 Settlement Agreement. Doc. [491].
`LEGAL STANDARDS
`In a copyright action, a district court “in its discretion may . . . award a reasonable
`attorney’s fee to the prevailing party.” 17 U.S.C. § 505. “[A] district court may not award
`attorney’s fees as a matter of course,” but instead must make a case-by-case assessment.
`Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. 197, 202 (2016) (citing Fogerty v. Fantasy, Inc.,
`510 U.S. 517, 533 (1994)). Regardless of whether the prevailing party is a plaintiff or a
`defendant, a court should treat the prevailing party the same, as “defendants should be
`encouraged to litigate meritorious copyright defenses to the same extent that plaintiffs are
`encouraged to litigate meritorious claims of infringement.” Id. In deciding whether to make an
`award, a court has to “giv[e] substantial weight to the reasonableness of [the losing party’s]
`litigating position [and] . . . tak[e] into account all other relevant factors,” Designworks Homes,
`Inc. v. Thomson Sailors Homes, L.L.C., 9 F.4th 961, 964 (8th Cir. 2021) (quoting Kirtsaeng, 579
`U.S. at 210), such as “whether the lawsuit was frivolous or unreasonable, the losing litigant’s
`motivations, the need in a particular case to compensate or deter, and the purposes2 of the
`Copyright Act,” Killer Joe Nevada, LLC v. Does 1-20, 807 F.3d 908, 911 (8th Cir. 2015) (citing
`
`2 The “primary objective” of the Copyright Act is “[t]o promote the Progress of Science and useful Arts.”
`Fogerty v. Fantasy, Inc., 510 U.S. 517, 526 (1994); U.S. Const., Art. I, § 8, cl. 8.
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`Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994)). “There is no precise rule or formula
`for making these determinations”; rather, “equitable discretion should be exercised in light of the
`considerations [that have been] identified.” Fogerty, 510 U.S. at 534.
`The Lanham Act permits courts to award attorney fees to “the prevailing party” in
`“exceptional” cases. 15 U.S.C. § 1117(a). An “exceptional” case stands out from others with
`respect to “(1) the substantive strength of a party’s litigating position (considering both the
`governing law and the facts of the case) or (2) the unreasonable manner in which the case was
`litigated.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572 U.S. 545, 554 (2014)
`(applying similar language to the patent statutes); Safeway Transit LLC v. Disc. Party Bus, Inc.,
`954 F.3d 1171, 1182 (8th Cir. 2020) (applying the Octane Fitness analysis to Lanham Act
`claims); Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., 908 F.3d 313, 346 (8th
`Cir. 2018). District courts determine whether a case is “exceptional” in the case-by-case exercise
`of their discretion, considering the totality of the circumstances. Octane Fitness, 572 U.S. at
`554. The factors a court may consider include, but are not limited to, “frivolousness, motivation,
`objective unreasonableness (both in the factual and legal components of the case) and the need in
`particular circumstances to advance considerations of compensation and deterrence.” Id. at n.6
`(citations omitted). A case that presents “either subjective bad faith or exceptionally meritless
`claims may sufficiently set itself apart from mine-run cases” to warrant a fee award. Octane
`Fitness, 572 U.S. at 555. But there is no requirement that a case be “groundless, unreasonable,
`vexatious or pursued in bad faith” in order to be “exceptional.” B&B Hardware, Inc. v. Hargis
`Industries, Inc., 912 F.3d 445, 454 (8th Cir. 2018).
`DISCUSSION
`Defendants are not entitled to attorneys’ fees on Plaintiff’s copyright claims.
`Defendants claim to be entitled to fees and costs under the Copyright Act due to the
`Court’s grant of summary judgment in their favor on Plaintiffs’ copyright infringement claim.
`Doc. [489] at 5. Defendants assert that such fees are “routinely” awarded to prevailing copyright
`litigants, and that all relevant factors militate in favor of the Court exercising its discretion to
`grant them here. Id. They cite several grounds for finding that Plaintiff’s claim for copyright
`infringement was factually and legally unreasonable from the outset, for example: Plaintiff
`failed to register the photographs with the Copyright Office until the eve of litigation, even
`though the photographs had been taken years before; the photos are mere stock photographs
`
`I.
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`showing two men in Hoffmann Brothers uniforms working on HVAC equipment; and while
`Defendants admit that the photos were used in connection with advertising their business, they
`claim it was without Defendants’ knowledge or consent, as they were posted on their website by
`a third-party advertising agency that found the photos on the internet. Id. at 2, 6-7. Moreover,
`Defendants contend, they used the photographs only briefly, ceased use of the photos before this
`litigation commenced, and never sold the photos or otherwise profited from their use Id. at 7-8.
`Defendants believe that context shows that Plaintiff’s copyrights claim was brought for the
`improper purpose of imposing unwarranted litigation costs on Defendants. Id. They assert that
`Plaintiff “must be deterred” from bringing such baseless copyright claims, and that they should
`be compensated for their fees to further such deterrence. Id. at 8-9.
`Plaintiff denies that the copyright claim was either legally or factually unreasonable, and
`notes to the contrary the undisputed facts that the photos were subject to a valid copyright owned
`by Plaintiff and that Defendants used the photos without permission. Doc. [516] at 11. Plaintiff
`notes that, contrary to Defendants claim that the photos were used without their “knowledge or
`consent,” Nick Hoffmann, Tom’s son, admitted that he approved of the photos being posted. Id.
`Plaintiff argues that its copyright claim was brought not to multiply fees but rather to vindicate
`the undisputed illegal use of its photos. Id. Plaintiff also argues that its damages claim, while
`ultimately found wanting by this Court, was not unreasonable, and courts have long recognized
`that solid proof of financial harm caused by an infringer is difficult to prove or quantify. Id. at
`13. Plaintiff also argues that an award of fees is not necessary to deter frivolous claims, as
`Plaintiff does not have a history of filing numerous or unreasonably aggressive copyright suits.
`Id. Finally, Plaintiff rejects Defendants’ argument that attorneys’ fees are “routinely awarded” to
`prevailing parties under the Copyright Act, noting that the Eighth Circuit has repeatedly held that
`such fees should not be awarded as a matter of course. Id. at 14.
`After considering the overall reasonableness of Plaintiff’s litigating position and taking
`into account the relevant factors under Kirtsaeng, 579 U.S. at 210, the Court finds that this is not
`a case in which an award of attorneys’ fees is justified under the Copyright Act. As an initial
`matter, Defendants’ claim to be “entitled” to attorneys’ fees because such fees are “routinely”
`awarded to prevailing parties in copyright cases is mistaken. Doc. [489] at 5-6. In fact, the
`Eighth Circuit has cautioned district courts not to award such fees “routinely” or as “the rule
`rather than the exception.” Designworks Homes, Inc. v. Thomson Sailors Homes, L.L.C., 9 F.4th
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`961, 965 (8th Cir. 2021) (“district court was wrong to say that attorney fees are the rule rather
`than the exception and should be awarded routinely in cases like this one”) (quotation marks
`omitted). A district court has “broad discretion” in deciding whether to fee-shift, and it must
`give “substantial weight to the reasonableness” of Plaintiff’s litigating position, “but also tak[e]
`into account all other relevant factors, Kirtsaeng, 579 U.S. at 210, such as “whether the lawsuit
`was frivolous . . . , the losing litigant’s motivations, the need in a particular case to compensate
`or deter, and the purpose of the Copyright Act,” Designworks Homes, Inc., 9 F.4th at 964.
`Plaintiff’s copyright claim was not unreasonable. Unlike other copyright cases in the
`Eighth Circuit where fees were awarded, there is no question here that the copyrighted photos at
`issue were owned by Plaintiff and Defendants used them to advertise their HVAC business. See
`Designworks Homes, 9 F.4th at 964-65 (approving award of fees where plaintiff pursued its
`claims despite “significant objective differences” between its work and defendant’s designs).
`Additionally, Plaintiff’s registration of its copyright just before bringing suit has no legal
`significance or bearing on whether the Court should award fees to Defendants. See Vivid Sites,
`LLC v. Millsap, 2017 WL 1187636, at *6 (Mar. 29, 2017 E.D. Mo.) (court rejected argument that
`it should award prevailing defendant fees because plaintiff did not register its copyright until
`after initiating lawsuit, noting that the Copyright Office allowed plaintiff to register its code
`during the proceeding and the delay in registration did not weigh in favor of fee-shifting). And
`Defendants provide no account of how a delay in registration impacts the Court’s exercise of its
`equitable discretion under § 505. Defendants’ claim that the photos were used without their
`knowledge or consent also does not render Plaintiff’s copyright claim unreasonable, as courts
`have long held that “innocent” infringement is nonetheless infringement under § 505. Pinkham
`v. Sara Lee Corp., 983 F.2d 824, 829 (8th Cir. 1992) (“The defendant’s intent is simply not
`relevant: The defendant is liable even for innocent or accidental infringements.”).
`Considering the objectively reasonable factual and legal bases for Plaintiff’s copyright
`claim, the Court does not agree with Defendants that Plaintiff’s decision to sue was frivolous or
`attributable to improper motives. See Mary Ellen Enters. v. Camex, Inc., 68 F.3d 1065, 1072
`(8th Cir. 1995) (While “[b]ad faith or willfulness are not prerequisites to an award of attorneys’
`fees, they are factors that may guide the courts’ discretion.”). Although the Court ruled against
`Plaintiff on the issue of damages, the fact that Defendant prevailed does not make Plaintiff’s
`claim objectively unreasonable. The parties devoted significant briefing to the copyright claim at
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`the summary judgment stage, and the Court carefully analyzed the parties’ arguments and
`evidence before ultimately concluding that a reasonable jury could not rule in Plaintiff’s favor.
`That result was hardly an obvious or foregone conclusion.
`“[O]bjective reasonableness is a factor that should be given substantial weight in
`determining whether an award of attorneys’ fees is warranted [because] the imposition of a fee
`award against a copyright holder with an objectively reasonable litigation position will generally
`not promote the purposes of the Copyright Act.” Matthew Bender & Co. v. West Publishing Co.,
`240 F.3d 116, 121–22 (2d Cir. 2001). The Supreme Court has instructed that district courts,
`when deciding whether to award fees, must be “faithful to the purposes of the Copyright Act[,]”
`Fogerty, 510 U.S. at 535 n.19, which include “‘to promote the Progress of Science and useful
`Arts,’” Feist Publications, Inc. v. Rural Tel. Serv. Co., Inc., 499 U.S. 340, 349 (1991) (quoting
`U.S. Const., Art. I, § 8, cl. 8). Section 505 furthers the purpose of the Copyright Act by
`encouraging the litigation of meritorious copyright claims and defenses. See Fogerty, 510 U.S.
`at 517 (“[b]ecause copyright law ultimately serves the purpose of enriching the general public
`through access to creative works, it is peculiarly important that the boundaries of copyright law
`be demarcated as clearly as possible”). The purposes of the Copyright Act would not be served
`by applying its fee-shifting provision so liberally as to deter litigants with objectively reasonable
`claims from bringing suit.
`Finally, the Court agrees with Plaintiff that an award of fees is not necessary in this
`particular case to deter frivolous claims, as Plaintiff has not made a practice of filing
`unreasonable or improper copyright suits. See Designworks Homes, Inc., 9 F.4th at 964 (The
`Court, in deciding whether to fee-shift, must also “tak[e] into account all other relevant factors,
`such as “the need in a particular case to . . . deter . . . .”). Therefore, Defendants’ request for fees
`under the Copyright Act is denied.
`Defendants are not entitled to attorneys’ fees on Plaintiff’s trademark claims.
`II.
`Defendants also maintain that they are entitled to attorneys’ fees under Section 35(a) of
`the Lanham Act, 15 U.S.C. § 1117(a). Plaintiff brought multiple trademark-related claims,
`including claims for cyberpiracy, unfair competition, and trademark infringement, and
`Defendants ultimately prevailed on all claims. At the summary judgment stage, Plaintiff
`voluntarily withdrew its cyberpiracy claim, and at trial the jury found for Defendants on the
`unfair competition and trademark infringement claims. Accordingly, Defendants argue that the
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`Court should award them attorneys’ fees as the prevailing party. The Lanham Act, like the
`Copyright Act, allows a court to award reasonable attorneys’ fees to the prevailing party. The
`standard for granting attorneys’ fees to a prevailing defendant in a trademark case differs
`considerably from that applicable to a copyright case, however, as the Lanham Act requires that
`the case be an “exceptional” one in order to justify fee-shifting. 15 U.S.C. § 1117(a) (In
`“exceptional cases,” a district court “may award reasonable attorney fees to the prevailing
`party.).
`According to Plaintiff, in order for a case to be considered “exceptional,” a plaintiff must
`have “brought an action that was groundless, unreasonable, vexatious, or was pursued in bad
`faith.” Doc. [516] at 6-7 (citing B&B Hardware, Inc. v. Hargis Indus., Inc., 912 F.3d 445, 454
`(8th Cir. 2018)). But according to the Eighth Circuit, “‘an exceptional case is simply one that
`stands out from others with respect to the substantive strength of a party’s litigating position
`(considering both the governing law and the facts of the case) or the unreasonable manner in
`which the case was litigated.” Pocket Plus, LLC v. Pike Brands, LLC, 53 F.4th 425, 435 (8th
`Cir. 2022) (quoting Octane Fitness, 572 U.S. at 554); see also Sturgis Motorcycle Rally, Inc.,
`908 F.3d at 346 (evaluating whether a case was “exceptional” with respect to either the
`substantive strength of a litigating position or the unreasonable manner in which the case was
`litigated); Safeway Transit, 954 F.3d at 1182–83 (same); SnugglyCat, Inc. v. Opfer Commc’ns,
`Inc., 953 F.3d 522, 527 (8th Cir. 2020) (same). So, while “[r]elevant factors for a district court
`to consider include ‘frivolousness, motivation, objective unreasonableness (both in the factual
`and legal components of the case) and the need in particular circumstances to advance
`considerations of compensation and deterrence,’” Pocket Plus, LLC, 53 F.4th at 435, it is not
`necessary, as Plaintiffs argue, that a lawsuit be “groundless, unreasonable, vexatious, or . . .
`pursued in bad faith” in order to be “exceptional.” Still, in order to justify fee-shifting, the case
`must be outside the typical “mine-run cases.” Octane Fitness, 572 U.S. at 555. It is the “rare”
`case that warrants an award of attorneys’ fees. Safeway Transit, 954 F.3d at 1182.
`Defendants argue that this case is exceptional due to the weakness of Plaintiff’s litigating
`positions. Doc. [489] at 10. First, Defendants assert that Plaintiff had no evidence to support its
`cyberpiracy claim, which alleged that Plaintiff used multiple URLs containing the term
`“hoffman” to divert customers from plaintiff’s website to Tom’s primary business website. Id.;
`Doc. [516] at 8-9. Defendants claim that Tom believed he had the right to use his last name in
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`connection with an HVAC business, and he was not trying to confuse and divert customers away
`from Plaintiff. Doc. [489] at 10. And Defendants contend that Plaintiff effectively conceded
`that it had no evidence to the contrary when it withdrew the claim at summary judgment. Id.
`Plaintiff counters that Defendants’ conduct fit within the contours of a typical
`cyberpiracy claim, and it was reasonable for it to assert that Defendants were attempting to profit
`by diverting consumers through the use of confusingly similar domain names. Doc. [516] at 8-9.
`Plaintiff claims to have withdrawn the claim in order to narrow the issues for trial, not because it
`had no evidence or believed the claim unfounded, and maintains it should not be punished for
`having done so. Id. at 10. The Court agrees that the cyberpiracy claim was not so clearly
`groundless or unreasonable as to be “exceptional” for purposes of the Lanham Act. And the
`Court would be loath to discourage parties from sensibly allocating their resources by penalizing
`them for withdrawing claims even when those claims were not groundless or unreasonable.
`With respect to Plaintiff’s unfair competition and trademark infringement claims,
`Defendants argue that Plaintiff knew those claims were entirely baseless and objectively
`unreasonable from the outset. Doc. [489] at 11. According to Defendants, the 2011 Settlement
`Agreement clearly gave Tom the right to use his name in connection with an HVAC company
`after four years had passed, and Plaintiff understood that interpretation of the Settlement
`Agreement to be correct. Id. “Consistent with the parties’ understanding of the 2011
`Agreement, Thomas Hoffmann complied with its terms—waiting until 2017 to change his
`HVAC business name to Hoffmann Air Conditioning & Heating,” but despite Tom’s compliance
`and Plaintiff’s consent, Plaintiff unreasonably determined to sue Defendants for unfair
`competition and trademark infringement. Id. And then, Defendants argue, Plaintiff compounded
`the unreasonableness of its decision to bring suit by aggressively pursuing its claims in bad faith
`for over three years, only to have the jury find in Defendants’ favor. Id. at 12.
`The Court, being well-acquainted with the terms of the 2011 Settlement Agreement,
`cannot agree with Defendants’ characterization of the strength or reasonableness of Plaintiff’s
`trademark claims. Defendants have consistently charged throughout this litigation that the
`Settlement Agreement granted Tom the right to use the name “Hoffmann” in connection with
`HVAC services after the four-year limitation period in the Settlement Agreement had passed,
`and that Plaintiff consented to Defendants’ allegedly infringing use. Meanwhile, Plaintiff has
`maintained that the Settlement Agreement had no bearing on how trademark protections might
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`apply to Tom’s use of the “Hoffmann” name in the future, and thus, the Agreement did not allow
`him to use the name in an infringing manner. And this Court has, on multiple occasions, found
`that the 2011 Agreement was unclear on this point and could reasonably be interpreted to support
`either position. See Docs. [314] at 22, [362] at 22, [530] at 18 (“The Court concluded long ago
`that the trade name clause in the Settlement Agreement was ambiguous as a matter of law.”).
`Additionally, as Plaintiff points out, the district judge assigned to this matter before the
`undersigned told the parties that he believed the 2011 Settlement Agreement did not sanction
`Defendants’ conduct. See Doc. [92] at 2. While that was only a preliminary statement of his
`general sense of the strength of the parties’ positions, it supports the objective reasonableness of
`Plaintiff’s claims. The fact that the jury ultimately concluded that Plaintiff should not prevail
`does not place this case so far outside the “mine-run” of cases as to render it one of the “rare”
`and “exceptional” cases in which an attorneys’ fees award would be justified. Plaintiff’s claims
`were not so weak as to “stand[ ] out from others,” nor were they litigated in an “unreasonable
`manner,” and accordingly, fee-shifting under the Lanham Act is not warranted. Pocket Plus,
`LLC, 53 F.4th at 435.
`III. Robert is not entitled to attorneys’ fees under the 2011 Settlement Agreement.
`Robert maintains that he is entitled to his attorneys’ fees and costs as the prevailing party
`on Tom’s breach of contract counterclaim. Doc. [491] at 1. The 2011 Settlement Agreement,
`states in relevant part:
`Prevailing Party Attorney’s Fees. If any Party files any legal action under or
`arising out of, or to enforce, this Agreement, the prevailing Party shall be
`entitled to recover its reasonable attorney’s fees, costs, and expenses.
`Id.; see also Doc. [251-2] at 9. Both Robert and Tom are “Parties” as that term is defined in the
`Agreement, and Tom filed an action against Robert for breaching the non-disparagement clause
`of the Agreement on which Robert prevailed at trial. Therefore, Robert believes he is entitled to
`fees under the quoted clause. Doc. [491] at 1; [492] at 4-5. He claims to have incurred
`$1,784,149.24 in costs and attorneys’ fees related solely to Tom’s breach of contract
`counterclaim. Id. at 2. This amount appears to include approximately 65% of all of the fees
`billed by attorneys for Plaintiff and Counterclaim Defendants in this matter since its inception,3
`
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`3 Robert is seeking $1,575,321.07 out of $2,420,520.98 in total fees billed in the matter. Doc. [508-1] at
`379.
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`including approximately 75% of all fees billed for trial preparation. Robert acknowledges that
`he is not entitled to recover fees for work done on other claims in the case, such as Plaintiff’s
`claims for trademark infringement and unfair competition. Doc. [524] at 9. Nevertheless, he
`claims that it is appropriate to impute the bulk of all fees to this single breach of contract
`counterclaim, arguing that “the majority of the time” spent on trial preparation “is time that
`would have been spent even if the breach of contract counterclaim against Robert was the only
`claim being tried in the case.” Id. at 20. He also seeks to recover fees for 50% of all time billed
`during the trial itself, arguing that “there was no simple way to divide the time between
`prosecution of Hoffmann Brothers’ claims and defense of Tom’s counterclaim,” and that 50% is
`a “very fair, reasonable request” and “if anything, is under-, not over-reaching.” Id. at 20-21.
`Having presided over this matter for several years, including the eight-day trial, the
`undersigned finds these arguments astonishing. Based on the 500+ docket entries in this matter,
`it is readily apparent that the breach of contract counterclaim against Robert consumed a
`relatively small fraction of the parties’ time and attention throughout the litigation. The
`trademark claims consumed the lion’s share of the parties’ motion practice and trial. See Doc.
`[530] at 40 (“Plaintiff’s trademark claims were the gravamen of this lengthy litigation.”). Had
`there been a lawsuit limited to the counterclaim on which Robert prevailed, the trial of that case
`(in the unlikely event that it went to trial) would have taken a fraction of the time that was
`expended by counsel in this matter. Moreover, the elements of the counterclaim do not
`appreciably overlap with the elements of any of the other claims that were litigated at trial, and
`the parties are privy to a detailed trial transcript. Therefore, it beggars belief that the same
`attorneys who produced a 396-page post-trial motion with briefing and exhibits, Docs. [492],
`[492-1], [492-2], [508-1], and spent 159 pages dissecting opposing counsel’s billing statements,
`Docs. [514], [516], [516-1-6], could not possibly have analyzed more precisely what proportion
`of their own work during trial was spent on presenting evidence and argument relating to the
`breach of contract counterclaim. The claim that 50% is the best approximation these attorneys
`could provide of the time they spent on the counterclaim during trial is as incredible as the
`suggestion that it may be an underestimate.
`Fortunately, the Court need not do the work to reduce Robert’s fee request to something
`more reasonable, because none of the fees claimed are actually compensable under the 2011
`Settlement Agreement. As Tom correctly points out, because Robert is a Party to the
`
`
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`11
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`Case: 4:19-cv-00200-SEP Doc. #: 535 Filed: 01/12/24 Page: 12 of 13 PageID #: 12896
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`Agreement, not Hoffmann Brothers,4 only Robert can seek an award of his fees under the fee-
`shifting provision. See Doc. [512] at 5-7. Tom argues that the attorneys’ fees at issue here were
`incurred by Hoffmann Brothers, not Robert, and because Robert has incurred no attorneys’ fees,
`he is not entitled to recover any amount. Id. The Court agrees.
`Under Missouri law, where the language of a contract is clear and unambiguous, the
`Court must enforce the contract as written. See Burns v. Smith, 303 S.W.3d 505, 509 (Mo.
`2010). The Settlement Agreement could have been drafted to state that a prevailing Party would
`be entitled to recover attorney fees that were incurred as a result of or in connection with any
`lawsuit brought to enforce a provision of the Agreement, in which case it would not matter who
`incurred the fees. But that is not what the Settlement Agreement states. Rather, the Agreement
`clearly specifies by whom the fees must be incurred, stating that a prevailing Party is “entitled to
`recover its reasonable attorney’s fees.” Doc. [491] at 1 (emphasis added). So, pursuant to the
`plain language of the Agreement, Robert may only recover his own fees, costs, and expenses.
`“The party seeking attorney fees bears the burden of establishing entitlement to the award
`of fees and of documenting the hours and hourly rates, as well as showing that its request is
`reasonable.” Orduno v. Pietrzak, 932 F.3d 710, 719-20 (8th Cir. 2019). Here, Robert has not
`met that burden. The evidence of record in this matter indicates that Hoffmann Brothers, not
`Robert, incurred and p