Escolar Documentos
Profissional Documentos
Cultura Documentos
No. 09-2085
HAWKS;
EMPLOYERS
COUNCIL
ON
Defendants Appellants.
Appeal from the United States District Court for the Eastern
District of Virginia, at Alexandria. James C. Cacheris, Senior
District Judge. (1:08-cv-00371-JCC-TRJ)
Argued:
Decided:
PER CURIAM:
In
2008,
the
Employers
Council
on
Flexible
Compensation
against
Kenneth
Feltman,
Anthony
W.
Hawks,
and
the
defendants),
cybersquatting.
alleging
trademark
infringement
and
Anticybersquatting
Deeming
the
Consent
Consumer
Order
Protection
concession
Act
of
(the
liability
ACPA).
on
the
awarded
ECFC
attorney
fees
under
the
Lanham
Act
and
Council v. Feltman, No. 1:08-cv-371 (E.D. Va. May 14, 2009) (the
Damages Opinion). 1
I.
ECFC a nonprofit lobbying organization dedicated to the
maintenance and expansion of private employee benefit programs
was incorporated in 1981 in the District of Columbia under the
name Employers Council on Flexible Compensation.
and
2008,
ECFC
continuously
and
exclusively
Between 1981
used
Employers
example,
in
1999,
ECFC
registered
the
domain
name
Defendant Kenneth
operations
indebtedness.
and
Accordingly,
minimize
Feltman
the
incorporated
organizations
Radnor,
Inc.
entered
(MSAs),
(including
ECFC.
under
into
separate
which
Feltman)
and
Radnor
to
management
service
agreed
hire
exercise
to
management
agreements
ECFCs
staff
services
for
to
terminate
initiated
District
an
of
the
2005
arbitration
Columbia,
MSA.
In
proceeding
alleging
November
against
that
Radnor
2007,
Radnor
and
ECFC
in
the
Feltman
had
Radnor thereafter
on
Flexible
Compensation.
Accordingly,
in
February
of
Columbia
under
the
name
Employers
Council
on
the
acronym
ecfc,
the
trade
name
Employers
Council
on
in
and
Council
on
March
2008,
Trademark
Flexible
Hawks
Office
applied
to
register
Compensation,
as
the
domain
name
to
the
the
well
United
mark
as
States
Employers
design
mark
ecfc.com
which
was
similar
to
Because
domain
2008,
ECFC
name
ecfc.org).
filed
this
Soon
lawsuit
thereafter,
against
the
on
April
defendants
in
17,
the
15
U.S.C.
1125(d).
By
its
complaint,
ECFC
sought
Employers
variation
Council
thereof,
as
on
well
Flexible
as
5
the
Compensation
acronym
ecfc,
and
any
and
(2)
ordering
name.
of
Lanham
[to]
party.
ECFC
defendants
to
relinquish
the
ecfc.com
domain
the
cases
the
Act,
award
which
authorizes
reasonable
attorney
15 U.S.C. 1117(a).
sought
up
to
court
fees
in
to
exceptional
the
prevailing
$100,000
cybersquatting claim.
in
statutory
damages
on
its
were
intent
on
disagreed on damages.
settling
the
lawsuit,
but
that
they
they had reasonably believed that they could legally use the
name Employers Council on Flexible Compensation and the ecfc
logo, their conduct did not warrant awarding ECFC attorney fees
under
the
Lanham
Act
or
statutory
damages
under
the
ACPA.
Because the only issue in dispute was whether attorney fees and
statutory
Consent
damages
Therein,
Order,
the
in
entered
warranted,
by
defendants
distinctiveness
rights
were
of
those
agreed
[ECFCs]
marks.
the
the
court
not
marks
J.A.
parties
on
to
or
974.
agreed
October
contest
its
The
to
22,
the
2008.
further
ownership
defendants
the
of
or
also
Id.
the defendants from using in any manner ECFCs marks and any
names affiliated with the organization, thereby allowing ECFC to
re-register
itself
Council
Flexible
on
with
the
DCRA
under
Compensation.
the
Finally,
name
Employers
the
defendants
Consent
Defendants
Order,
have
recognizing
admitted
liability
. . . and cybersquatting.
observed
that,
[a]s
[a]t
the
for
outset
trademark
Damages Opinion 6.
agreed
to
by
the
. . .
that
infringement
parties,
the
issues
remaining for the Court are [ECFCs] requests for two of the
types of damages available under these statutes:
fees . . . and statutory damages.
Id.
attorney[]
to
ECFCs
request
for
attorney
fees
under
the
Lanham Act, the district court found that the defendants had
willfully and deliberately copied ECFCs logo and other items
from
ECFCs
themselves.
website
in
order
to
divert
ECFCs
profits
to
that the defendants had acted in bad faith and that the dispute
amounted
to
an
exceptional
case,
warranting
an
award
of
ECFCs
request
for
statutory
under
the
ACPA,
As
the
May
29,
reconsideration
2009,
pursuant
the
defendants
to
Federal
Rule
filed
motion
of
Civil
for
Procedure
liability
under
simultaneous
the
with
Lanham
their
Act
and
motion
for
the
ACPA.
In
reconsideration,
2009,
the
court
denied
each
of
the
defendants
motions,
In denying
representing
reason
to
they
Id. at 8.
that
second-guess
the
have
resolved
all
of
the
representations
on
liability
Accordingly,
the
in
court
the
Consent
denied
the
Order.
defendants
Id.
at
motion
9.
for
jurisdiction
pursuant
to
15
U.S.C.
1121(a)
and
28
U.S.C. 1291.
II.
We review for abuse of discretion a district courts award
of attorney fees under the Lanham Act.
Any
case
are
reviewed
for
clear
error.).
Similarly,
in
error
discretion.
and
the
decision
to
award
damages
for
abuse
of
III.
On appeal, the defendants raise several challenges to the
district courts award of attorney fees and statutory damages.
The crux of the defendants appeal, however, is their contention
that the court rested its damages award on a clearly erroneous
10
and
the
ACPA.
Accordingly,
we
must
first
assess
the
whether
they
were
liable
on
ECFCs
trademark
court
abused
its
discretion
because
its
award
of
The
defendants
conclude
that,
because
the
court
made
no
such
belied
by
the
record,
however,
which
is
replete
with
October 15, 2008 before the parties had agreed to the Consent
Order ECFC informed the court that the parties had resolved
98 percent of the issues and that the only remaining issue was
ECFCs request for attorney fees and statutory damages.
960.
J.A.
no longer any need for a jury trial, which had been scheduled
for early December 2008, and that the damages issue could be
resolved
following
short
evidentiary
hearing.
Shortly
(1st
Cir.
2003)
(A
courts
interpretation
of
contract
or
on
extrinsic
(citation omitted)).
evidence
such
as
the
parties
intent.
Order did the defendants indicate to the court that the issue of
their liability on the trademark and cybersquatting claims was
outstanding and needed to be resolved.
asserted that
Order.
those
issues
had
been
by
the
Consent
court that the only thing left [after the Consent Order] was
the issue of willfulness and that [t]he only reason that was
an issue is because of [ECFCs request for] attorney[] fees).
Accordingly, the defendants cannot successfully claim that the
court erred in finding that, by agreeing to the Consent Order,
they had admitted liability.
13
B.
The defendants next contend that, in awarding attorney fees
pursuant to 35(a) of the Lanham Act, the district court erred
in finding this to be an exceptional case.
Section 35(a)
the
statute
does
not
15 U.S.C. 1117(a).
define
the
term
exceptional
the
willful
defendants
or
deliberate
conduct
in
was
nature.
malicious,
People
fraudulent,
for
the
Ethical
request
prevailing
plaintiff
to
succeed
in
for
attorney
fees, she must show that the defendant acted in bad faith.
Scotch Whisky Assn v. Majestic Distilling Co., Inc., 958 F.2d
594,
599
(4th
Cir.
1992).
If
the
court
deems
the
case
that,
reserved
when
Feltman
and
Hawks
Employers
Council
on
in good faith believed that ECFC had abandoned any rights it had
in that name.
that they could legally use ECFCs marks, the theory goes, the
court could not have made the requisite finding of bad faith.
The
record,
however,
provides
ample
support
for
the
from
reinstating
defendants
ill-will
itself
toward
under
ECFC
that
is
name.
Indeed,
highlighted
in
the
emails
J.A. 764.
Hawks and Feltman believed that ECFC had wrongly stolen the
company and its profits when it terminated the 2005 MSA, and
that the revocation of ECFCs corporate charter presented an
opportunity [for Feltman to] retrieve his business by competing
directly
support
against
for
the
ECFC.
courts
Id.
at
227.
There
determination
that
is
also
Hawks
ample
had
only
any
rights
to
the
name
Employers
Council
on
Flexible
he
two
spent
no
more
than
one
to
15
hours
researching
the
Id. at 107576.
discretion
in
determining
that
attorney
fees
were
warranted,
Accordingly, we
the
defendants
contend
that
the
district
court
That statute
15 U.S.C. 1125(d)(1)(A).
the ACPA, the owner of the protected mark may recover, instead
of actual damages and profits, an award of statutory damages in
the amount of not less than $1,000 and not more than $100,000
per domain name, as the court considers just.
16
Id. 1117(d).
The
district
court
acted
well
within
its
discretion
in
provisions.
The
court
carefully
weighed
several
conduct
warranted
that
award.
For
example,
the
name
for
only
profits therefrom.
been
only
one
domain
names.
factors
that
short
time
and
apparently
earned
no
occasion
of
actual
Nevertheless,
supported
the
confusion
the
award
court
of
between
the
identified
statutory
two
several
damages.
In
and
close
working
relationship
with
ECFC;
that
the
that
Hawks
had
only
briefly
researched
whether
ECFC
had
did
not
abuse
its
discretion
in
making
the
award
of
statutory damages.
IV.
Pursuant
to
the
foregoing,
we
reject
the
defendants