IN THE UNITED STATES DISTRICT COURT
`FOR THE WESTERN DISTRICT OF MISSOURI
`WESTERN DIVISION
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`HEALTHMATE INTERNATIONAL, LLC,
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`TIMOTHY W.T. FRENCH, and
`RAMPANT LION LLC,
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`Defendants.
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`ORDER AND OPINION DENYING PARTIES’ CROSS MOTIONS FOR ATTORNEY
`FEES AND COSTS
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`Plaintiff Healthmate International, LLC initiated this suit, asserting three claims of
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`copyright infringement against Rampant Lion LLC and one of its co-owners, Timothy French.
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`Defendants asserted several counterclaims, including one for false advertising under the Lanham
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`Act. Plaintiff prevailed on two of its three copyright claims against Rampant Lion and on the
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`Lanham Act counterclaim. Rampant Lion prevailed on one of the three copyright claims, and
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`French prevailed on all three of the copyright claims asserted against him. Now pending are the
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`parties’ cross motions for attorney fees and costs, in which the parties contest who prevailed and
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`the extent to which each party engaged in inappropriate conduct during the litigation.1 Both
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`motions, (Doc. 255 and Doc. 262), are DENIED.2
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`I. BACKGROUND
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`Healthmate and Rampant Lion are in the business of selling TENS units. “TENS” stands
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`for Transcutaneous Electrical Nerve Stimulation, and generally speaking TENS units administer
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`1 The Court will not address this latter category of arguments, other than to observe that both parties engaged in
`conduct that made the discovery process difficult and inefficient, so neither party gains anything from this issue.
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` 2
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` Defendants’ separate request for a hearing on Healthmate’s motion is also denied.
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`Case 4:15-cv-00761-BP Document 281 Filed 10/31/17 Page 1 of 8
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`Plaintiff,
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`v.
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` Case No. 15-0761-CV-W-BP
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`electrical current to portions of the body in order to relieve pain. Healthmate has a Certificate of
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`Registration for three copyrights for graphical displays used on TENS units it sells. All three
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`displays contain a series of picture-based icons that symbolize the TENS unit’s various
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`functions. Healthmate alleged that each of the Defendants infringed on all three copyrights by
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`copying them for use on TENS units sold by Rampant Lion.
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`Healthmate operates a website through which it sells its products, and its website
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`described some of its products as “FDA approved.” As the Court explained in its Order on the
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`summary judgment motions, “[g]iven the technical meanings accorded to the phrases, Plaintiff’s
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`products are ‘FDA cleared’ but not ‘FDA approved.’ Thus, it was incorrect to say that Plaintiff’s
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`products were FDA approved, at least as that phrase is understood in terms of FDA regulations
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`and procedures.” (Doc. 176, p. 9.)3 This false statement gave rise to Defendants’ counterclaim
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`under the Lanham Act.
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`The Lanham Act and the Copyright Act each have separate fee-shifting provisions, and
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`both are at issue. For ease of discussion, the Court will address the Lanham Act first. Additional
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`facts about the claims will be discussed as well.
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`II. DISCUSSION
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`A. Rampant Lion’s Lanham Act Counterclaim4
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`Healthmate relies on its victory on Rampant Lion’s Lanham Act counterclaim to justify
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`its fee request. The Lanham Act provides that “[t]he court in exceptional cases may award
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`reasonable attorney fees to the prevailing party.” 17 U.S.C. § 1117(a). There is no question that
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`3 The Court rejected Healthmate’s argument that its statement was not false or constituted non-actionable puffery.
`(Doc. 176, p. 11 & n.10.)
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` 4
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` The Counterclaim was ostensibly presented by both Rampant Lion and French, (e.g., Doc. 30, p. 13, ¶ 33), but the
`nature of the dispute suggests only Rampant Lion had the ability to assert the claim. For ease of discussion, the
`Court will refer to it as Rampant Lion’s counterclaim.
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`Case 4:15-cv-00761-BP Document 281 Filed 10/31/17 Page 2 of 8
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`2
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`Healthmate was the prevailing party on Rampant Lion’s Lanham Act claim; the question is
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`whether this was an “exceptional case.” Interpreting similar language in the patent statutes, the
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`Supreme Court held that an exceptional case is “one that stands out from others with respect to
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`the substantive strength of a party’s litigating position (considering both the governing law and
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`the facts of the case) or the unreasonable manner in which the case was litigated. District courts
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`may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion,
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`considering the totality of the circumstances.” Octane Fitness, LLC v. ICON Health & Fitness,
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`Inc., 134 S. Ct. 1749, 1756 (2014). Before Octane Fitness addressed the Patent Act’s fee
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`provision, the Eighth Circuit held (in a case involving the Lanham Act) that “[a]n exceptional
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`case is one where the plaintiff’s claim is groundless, unreasonable, vexatious, or pursued in bad
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`faith.” Blue Dane Simmental Corp. v. American Simmental Ass’n, 178 F.3d 1035, 1043 (8th Cir.
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`1999) (quotation omitted). In addition, “[b]ecause the statute states that the court ‘may’ award
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`attorney’s fees in exceptional cases, the district court retains discretion as to the award of
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`attorney’s fees even if it finds a case to be exceptional.” First Nat’l Bank in Sioux Falls v. First
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`Nat’l Bank S. Dakota, 679 F.3d 763, 771 (8th Cir. 2012).
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`Healthmate argues that this was an exceptional Lanham Act case because Rampant Lion
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`had no evidence of customer confusion, the Lanham Act claim was asserted as a litigation tactic
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`solely to increase the cost of litigation, and Rampant Lion unreasonably rejected Healthmate’s
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`settlement offers. Rampant Lion contends that the fact that it lost the Lanham Act claim does not
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`make it frivolous, and there was nothing exceptional justifying imposition of fees and costs. The
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`Court agrees with Rampant Lion.
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`In its summary judgment ruling the Court held that Healthmate’s statement that its
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`products were “FDA approved” was inaccurate, so to that extent there was a basis for Rampant
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`Case 4:15-cv-00761-BP Document 281 Filed 10/31/17 Page 3 of 8
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`3
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`Lion’s claim. Rampant Lion had no evidence of customer confusion, but it sought to avoid the
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`need for it by contending – as permitted by such cases as United Indus. Corp. v. Clorox Co., 140
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`F.3d 1175, 1180 (8th Cir. 1998) – that Healthmate’s statement that its TENS units were “FDA
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`approved” was literally false.5 The Court rejected this characterization of Healthmate’s
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`representation, and held that the general public would not necessarily and unavoidably
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`understand Healthmate’s statement to be false. (Doc. 176, pp. 12-13.) Thus, summary judgment
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`was granted because (1) the Court held that Rampant Lion had to present evidence of customer
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`deception and (2) Rampant Lion conceded that it had no evidence of customer deception.
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`The fact that the Court disagreed with Rampant Lion’s analysis does not make the case
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`exceptional; to hold otherwise would make every case in which a party loses “exceptional” and
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`destroy the distinction between the Lanham Act’s fee provision and other fee-shifting provisions
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`that merely require that a party prevail to recover fees. Similarly, the fact that Healthmate had to
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`participate in the discovery process did not make this case extraordinary. Finally, the Court
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`declines Healthmate’s invitation to consider Defendants’ unwillingness to settle. Even if the
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`parties’ settlement negotiations could be considered, the relevance of such facts are dubious: the
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`settlement discussions involved a myriad of claims, including Healthmate’s copyright claims,
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`and it appears that Healthmate obtained less relief at trial than it would have received in any of
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`its settlement demands, which seems to vindicate Defendants’ refusal to settle. Defendants’
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`rejection of a global settlement in this case does not demonstrate that the Lanham Act claim was
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`exceptional.
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`5 “If a plaintiff proves that a challenged claim is literally false, a court may grant relief without considering whether
`the buying public was actually misled; actual consumer confusion need not be proved.” United Indus. Corp., 140
`F.3d at 1180.
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`Case 4:15-cv-00761-BP Document 281 Filed 10/31/17 Page 4 of 8
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`4
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`Healthmate prevailed on the Lanham Act claim, but there was nothing extraordinary
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`about the claim that justifies imposition of fees and costs. Healthmate’s request for fees and
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`costs under the Lanham Act is therefore denied.
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`B. Healthmate’s Copyright Claims
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`The copyright claims were resolved at trial. The jury was provided six different Verdict
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`Forms: three for Rampant Lion, related to each of Healthmate’s three infringement claims, and
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`three for French, also related to each of Healthmate’s three infringement claims. The jury found
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`for Healthmate on two of the three copyright infringement claims against Rampant Lion and
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`awarded Healthmate $750 on each, but found for Rampant Lion on the third infringement claim.
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`(Doc. 241, pp. 1-3.) The jury found for French on all three copyright claims. (Doc. 241, pp. 4-
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`6.). Healthmate requested equitable relief after the trial, but its request was denied. (Doc. 280.)
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`The Copyright Act provides that “the court may allow the recovery of full costs by or
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`against any party” and “may also award a reasonable attorney’s fee to the prevailing party as part
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`of the costs.” 17 U.S.C. § 505. “The decision to award attorneys’ fees to a prevailing party
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`under § 505 is a matter for the district court’s ‘equitable discretion,’ to be exercised in an
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`evenhanded manner by considering factors such as whether the lawsuit was frivolous or
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`unreasonable, the losing litigant’s motivations, the need in a particular case to compensate or
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`deter, and the purposes of the Copyright Act.” Action Tapes, Inc. v. Mattson, 462 F.3d 1010,
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`1014 (8th Cir. 2006) (citing Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 & n.19 (1994). The
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`Court should also consider the objective reasonableness of the losing party’s litigation position.
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`Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979, 1986-89 (2016). However, the initial step
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`remains identification of the prevailing party.
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`1. Defendants’ Entitlement to Fees Under § 505
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`French and Rampant Lion contend that each of them, viewed separately, are prevailing
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`parties on the copyright claims, (e.g., Doc. 276, p. 7), and for that reason they are entitled to the
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`fees they collectively incurred. They first point out that French successfully defended all three
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`copyright claims against him. Defendants then acknowledge that Rampant Lion lost two of the
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`three copyright claims, but insist that it was nonetheless a prevailing party because (1) the relief
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`awarded was minimal in comparison to the relief Healthmate requested and (2) Rampant Lion
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`prevailed on one of the three copyright claims. Defendants then present a total bill for their
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`combined defense without differentiating between work done on behalf of French and work done
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`on behalf of Rampant Lion. Healthmate contests Rampant Lion’s status as a prevailing party,
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`and further contends Defendants’ motion should be denied because there is no distinction
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`between Rampant Lion’s and French’s fees. The Court agrees with Healthmate.
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`French and Rampant Lion were separate defendants, but the case was presented without
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`much differentiation between them. The focal point of the litigation was whether the three
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`copyrights were infringed, and there was little discussion or consideration of the separate parties.
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`Because French and Rampant Lion were not treated by either side as separate parties for much of
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`this litigation, the Court believes it inappropriate to consider French and Rampant Lion
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`separately for purposes of determining whether either of them prevailed. Given the issues and
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`the manner in which this case was litigated, Defendants are more appropriately viewed as a
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`single unit, and from that perspective Plaintiff demonstrated that two of its three copyrights were
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`infringed. Therefore, Defendants were not prevailing parties, see Christopher & Banks Corp. v.
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`Dillard’s, Inc., 805 F. Supp. 2d 693, 696-97 & n.3 (S.D. Iowa 2011) (collecting cases to discuss
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`what it means to be a prevailing party), so they are not eligible for a fee award.
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`The Court’s decision would not change even if it considered French and Rampant Lion
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`separately. Under this approach to the issue, Rampant Lion would not be a prevailing party
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`because it lost two of the three claims asserted against it and was ordered to pay Healthmate
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`money. Defendants emphasize the (minimal) degree of relief Healthmate received. The extent
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`of Healthmate’s success might be a factor in determining how much to award Healthmate for
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`attorney fees, but the fact that Healthmate prevailed on two of the three claims precludes a
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`determination that Rampant Lion prevailed over Healthmate. Therefore, Rampant Lion is not
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`entitled to any of its fees. French, considered alone, could be considered a prevailing party, but
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`Defendants presented a single bill for their collective fees and provided no method for
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`determining how much of the bill was for French’s defense. There is no suggestion that counsel
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`engaged in any “extra” legal effort because there were two defendants and not one, or that
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`French incurred any fees over and above what was necessary for Rampant Lion’s unsuccessful
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`defense. Defendants failed to provide a basis for determining French’s reasonable fees, so the
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`Court cannot award French fees even if he should be considered separately from Rampant Lion.6
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`2. Healthmate’s Entitlement to Fees Under Section 505
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`Healthmate did not request fees pursuant to section 505. Its motion does not cite section
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`505, identify and apply the statute’s governing standards to this case, or otherwise seek
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`attorney’s fees because it prevailed on two of the copyright claims. Healthmate’s motion
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`mentions its victory on two of the three copyright claims against Rampant Lion, but only to (1)
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`further justify its request for fees under the Lanham Act, (Doc. 255, p. 6), and (2) argue that the
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`copyright claims and the Lanham Act claims were inextricably intertwined so its requested fees
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`for prevailing under the Lanham Act should include the fees related to the copyright claims.
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`6 The Court’s conclusions make it unnecessary to consider the factors listed in Action Tapes, Fogerty, and
`Kirtsaeng.
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`(Doc. 255, pp. 6-7.)7 Because of Healthmate’s failure to seek fees under section 505 or apply the
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`cases construing § 505, the Court is disinclined to rely on the Copyright Act as a basis for
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`awarding fees to Healthmate.8
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`III. CONCLUSION
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`For the reasons stated above, both motions for fees and costs are DENIED.
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`IT IS SO ORDERED.
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`DATE: October 31, 2017
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`/s/ Beth Phillips
`BETH PHILLIPS, JUDGE
`UNITED STATES DISTRICT COURT
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`7 The Court does not necessarily agree that the copyright and Lanham Act claims were inextricably intertwined, but
`the Court’s rulings make it unnecessary to fully consider this issue.
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` 8
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` Healthmate cites section 505 in its reply suggestions in support of its motion for fees, (Doc. 271, p. 1), but does not
`discuss the governing standards applicable to a fee award under that statute. Regardless, the Court generally does
`not consider arguments presented for the first time in a party’s reply suggestions. Healthmate also discusses the
`matter in response to Defendants’ motion for fees under section 505, but only to dispute Rampant Lion’s claim that
`it was the prevailing party. (Doc. 270, p. 7.) This discussion does not constitute a request for fees by Healthmate.
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