140 F. Supp.2d 111 (2001) | Cited 0 times | D. Massachusetts | May 14, 2001



The defendant, Bridgewater Candle Company, ("Bridgewater") has movedfor attorneys' fees and costs against plaintiff Yankee Candle Company("Yankee"). Yankee brought claims under the Copyright Act, the LanhamAct and Mass. Gen. Laws ch. 93A, as well as a common law claim oftortious interference with business relationships, regarding its"Housewarmer" line of scented candles. Summary Judgment was entered infavor of Bridgewater on the copyright and trade dress claims on June 8,2000, and on the Chapter 93A claim on July 27, 2000. These rulings arenow before the First Circuit Court of Appeals.

The court will allow most of the fees and costs defendant seeks in thiscase. Yankee Candle's pursuit of this litigation has served not todefend any colorable copyright or trade dress claim, but to intimidate,discourage and financially damage an upstart competitor. Awarding feeswill serve the purposes of the statutes, and is fair and reasonable underthe circumstances.


Yankee Candle's 26-page complaint asserts copyright and trade dressinfringement of its "Housewarmer" line of jarred, scented candles. Thecandles, which have scents including Eucalyptus, Cranberry, Gardenia andFrench Vanilla, carry labels with photographs depicting the particularscent of each candle. Bridgewater's candles have similar scents, and alsofeature photographic labels. Yankee alleged that Bridgewaterintentionally infringed the copyrighted labels and trade dress of the"Housewarmer" line, resulting in consumer confusion. Specifically, itcharged that Bridgewater's labels were so similar to Yankee's copyrightedlabels as to be nearly identical, and that Bridgewater had infringedYankee's trade dress in the overall "look and feel" of its candles, thedesign of its catalogue, and the use of a "vertical display system" forshowing candles in stores. Yankee also alleged common law trade dressinfringement, tortious interference with business relationships, andviolation of Mass. Gen. Laws ch. 93A.

On May 18, 1999, the court denied Yankee's request for a preliminaryinjunction, finding that it was unlikely to prevail on the merits. Aftercontentious discovery, the case reached summary judgment on all counts.The court allowed summary judgment on the copyright and Lanham Actclaims, ruling that no reasonable juror could find the labels on thecandles to be nearly identical, and that each element of alleged tradedress infringement was either not protectable or not likely to causeconsumer confusion about the origin of the goods.1

Summary judgment was denied as to the tortious interference and Chapter93A counts because Yankee had produced some evidence, "although minimal,"of actionable conduct. Yankee Candle Co., Inc. v. Bridgewater CandleCo., LLC, 99 F. Supp.2d 140, 157 (D.Mass. 2000). According toaffidavits, Bridgewater had falsely represented to a Yankee customer thatit had taken over Yankee, resulting in some customers leaving Yankee andmoving to Bridgewater. See id. A dispute remained, however, whetherthis actionable conduct had been committed "primarily and substantially"within Massachusetts for the purposes of Mass. Gen. Laws ch. 93A. On amotion for reconsideration, the court held that it had not, therebyeliminating the Chapter 93A claim. Only the tortious interference countsurvived, and this portion of the case was dismissed by agreement pendingthe outcome of Yankee's appeal.

As noted, appeal on the merits is now pending, but this court hasretained jurisdiction over Bridgewater's motion for attorneys' fees underthe Copyright and Lanham Acts.


A. Attorneys' Fees Under the Copyright Act

Defendant seeks attorneys' fees under § 505 of the Copyright Act,which allows the court in its discretion to award costs and "a reasonableattorney's fee" to "the prevailing party" in a copyright case.17 U.S.C. § 505 (1996). Unlike many fee statutes, the Copyright Actrequires courtsto exercise their discretion in favor of prevailingplaintiffs and prevailing defendants in an evenhanded manner. See Fogertyv. Fantasy, Inc., 510 U.S. 517, 534 (1994) (holding that under the Act,"[p]revailing plaintiffs and prevailing defendants are to be treatedalike, but attorney's fees are to be awarded to prevailing parties onlyas a matter of the court's discretion").

There are no rigid standards to guide the court's discretion incopyright cases, but certain equitable factors must be addressed.

They include "frivolousness, motivation, objective unreasonableness(both in the factual and legal components of the case) and the need insome cases to advance considerations of compensation and deterrence."Id. at 534 n. 19, quoting Lieb v. Topstone Indus., Inc., 788 F.2d 151,156 (3d Cir. 1986); see also Lotus Dev. Corp. v. Borland Intern., Inc.,140 F.3d 70, 73 (1st Cir. 1998). The Court has cautioned that thesefactors may be used only so long as they are faithful to the purposes ofthe Copyright Act, that is, to encourage "the production of originalliterary, artistic, and musical expression for the good of the public."2 Fogerty, 510 U.S. at 524.

An award of attorneys' fees in this case is fully supported by thefactors courts must consider in copyright cases, as well as the purposesof the Copyright Act. The court will treat each consideration in turn.

1. Equitable Factors.

a. Objective Unreasonableness.

The First Circuit has accorded the factor of "objectiveunreasonableness" substantial weight in the determination of whether toaward attorneys' fees. See Lotus, 140 F.3d at 74 (affirming denial offees because copyright holder's claims "were neither frivolous norobjectively unreasonable").3 To determine objectiveunreasonableness, a court must examine the factual and legal assertionsadvanced by the non-prevailing party and determine whether they werereasonable. An unreasonable claim need not be frivolous to becompensable, Matthews v. Freedman, 157 F.3d 25, 29 (1st Cir. 1998), nordoes a finding ofunreasonableness imply culpability on the part of thelosing party, as with Fed.R.Civ.P. 11. "Had Congress intended tocondition the award of fees on the presence of bad faith, the statutoryprovision would have been surplusage." Lieb, 788 F.2d at 155. Indeed,unreasonableness is not even a requirement of a fee award. "Depending onother circumstances, a district court could conclude that the losingparty should pay even if all of the arguments it made were reasonable."Matthews, 157 F.3d at 29.

Taking Yankee's copyright claim in its totality, the court finds thatit was objectively unreasonable, especially as to its factualunderpinnings. At both the preliminary injunction and summary judgmentstage, the court noted the marked weakness of Yankee's claim that thephotographs on the labels were "identical," or even nearly so. See YankeeCandle, 99 F. SUPP.2d at 148-50 (ruling for Bridgewater on everyallegation of copyright infringement). There were substantialdissimilarities between Bridgewater's labels and each of its Yankeeanalogues. The labels employed different uses of lighting, focus, colorand positioning; the companies' names appeared in different places on thelabels; they sometimes even depicted different subjects.4 Noreasonable juror acting as an ordinary observer could have found thephotographs to be substantially similar. Plaintiff's choice to bring sucha factually weak claim, frivolous or not, is a relevant consideration inthe determination of whether to award attorneys' fees. See Matthews, 157F.3d at 29.

b. Motivation.

Another factor the Court has emphasized is the plaintiff's motivationin bringing the suit. Fogerty, 510 U.S. at 534 n. 19. Should it appearthat plaintiff's motivation was not a good faith intent to protect avalid interest, but rather a desire to discourage and financially damagea competitor by forcing it into costly litigation, an award of fees ismore likely. See NFLC, Inc. v. Devcom Mid-America, Inc., 916 F. SUPP.751, 759-60 (N.D. Ill. 1996) (awarding fees partly because suit motivatedby bad faith attempt to harm competitor).

There is some evidence of anti-competitive motivation in Yankee'sprosecution of this suit. This case was filed without notice toBridgewater and without any meaningful pre-litigation attempt to resolvethe companies' differences. The claim was not brought in an unsettledarea of law, nor did it ever have a reasonable likelihood of success, asthe court held early on in its denial of plaintiff's motion for apreliminary injunction. Yet Yankee appeared determined to make thelitigation as damaging as possible for Bridgewater's business. In aparticularly revealing instance, Yankee scheduled depositions forBridgewater marketing personnel on the exact day of an important candletrade show, a conflict of which Yankee had previously been informed. Whenreminded of the conflict, Yankee's counsel did not respond byrescheduling. Rather, in a series of letters remarkable for their snideand unprofessional tone,5 Yankee's counsel threatenedto forceBridgewater into contempt proceedings in South Carolina to enforce thesubpoenas for those dates. See Fourth Affidavit of Ilan D. Barzilay,Docket No. 200, Ex. A (Correspondence between Gregory Baker and MichaelAlbert, August 6-16, 1999). Yankee was apparently trying to prevent thesekey Bridgewater employees from attending a trade show important toBridgewater's business. This is persuasive evidence of impropermotivation.

An inference of improper motivation can also be drawn from theeconomically coercive manner in which the case was prosecuted. Although,of course, counsel had the obligation zealously to represent Yankee,there comes a point where zealotry becomes abuse. To name a fewexamples, Yankee moved to take an unlimited number of depositions beyondthose allowed by the Rules. (Magistrate Judge Neiman allowed anadditional ten). Though it sought special dispensation to extend its owndiscovery, Yankee made discovery exceedingly difficult for Bridgewater.At the preliminary injunction stage, it refused to produce its Rule30(b)(6) witness from Springfield for deposition in Boston, claiming thatthe location was inconvenient. The cities lie less than 100 milesapart. On Bridgewater's motion to compel, Magistrate Judge Neiman ruledthat Boston was not an inconvenient location for a Springfield witness— not a surprising outcome, since the Magistrate Judge had authoredthe only precedent directly on point: that Boston is not per seinconvenient for a Springfield witness. See Littman v. Walgreen EasternCo., Inc., No. Civ. A. 96-30018-MAP, 1998 WL 812399 (D.Mass., Nov. 6,1998).

Later, Bridgewater sought to depose Yankee's Rule 30(b)(6) witness onthe tortious interference and ch. 93A claims. Yankee refused to appear,claiming that because the witness had been deposed once at thepreliminary injunction stage,he did not have to be deposed again.However, the preliminary injunction deposition had been limited byagreement of the parties to preliminary injunction issues, which did notinclude the tortious interference claim. Bridgewater was forced to bringa motion to compel for this obviously necessary deposition, whichMagistrate Judge Neiman allowed. This repeated insistence on motionpractice over minor issues tends to show a motivation by Yankee to inflicteconomic harm on Bridgewater by employing egregiously aggressivelitigation tactics.6

The failure seriously to consider settlement, either before or afterthe case was filed, is another factor contributing to an inference ofimproper motivation. Despite the weakness of its claims, Yankeeconsistently refused to accept mediation with someone having intellectualproperty expertise. Although refusal to negotiate or mediate obviouslydoes not always merit fee-shifting, in the context of this case,combined with other factors, it serves as evidence of Yankee'smotivation.

Instead of considering settlement, Yankee proceeded to summary judgmentwhere it burdened the court with unnecessarily prolix and repetitivebriefs. For example, Yankee filed a 100-page Memorandum of Law inOpposition (Docket No. 139) and a 114-page "response" to Bridgewater's10-page statement of undisputed facts (Docket No. 140). Filing suchenormous (and often unenlightening) documents unduly burdened bothdefendant and this court.

Taken as a whole, Yankee's hardball conduct in pursuing this litigationprovides evidence of an improper motivation: to drain as much profit aspossible out of a far smaller competitor. The attorneys' fees provisionin the copyright act should serve to deter litigation conduct of thiskind.

c. Compensation and Deterrence.

The final equitable factor noted in Fogerty is "the need in particularcircumstances to advance considerations of compensation and deterrence."Fogerty, 510 U.S. at 534 n. 19. This factor is especially pertinentwhere, as here, a large industry leader brings unreasonable claimsagainst a much smaller competitor. See Lotus, 140 F.3d at 74-75.Denying attorneys' fees in such cases encourages dominant players to burycompetitors in meritless lawsuits intended to lower profit margins. Theexpense for Bridgewater was substantial — it was forced to retainthe specialized services of intellectual property attorneys in threedifferent cities. An undisputed affidavit confirms that the cost of thelitigation has cut into Bridgewater's profit margin tremendously, pushingit further into the red. See Affidavit of Scott Morris, Docket No. 191(noting that since its founding, Bridgewater has operated at a loss of$629,444.20, even absent the impact of this litigation).

Attorneys' fees can only partly remedy the harm this case has done toBridgewater's business. Fees, of course, cannot compensate Bridgewaterfor having existed under a cloud of litigation since almost itsinception,nor for the substantial distraction of Bridgewater's personnelin dealing with this case. To the extent fees can go, however, they arewarranted. The award should also serve to deter Yankee Candle and othermarket leaders from bringing overly aggressive and meritless suitsagainst their smaller competitors.

2. Purposes of the Copyright Act.

Finally, in judging whether the equitable factors merit an award ofattorneys' fees, the court must consider whether such an award willfurther the interests of the Copyright Act. This has been called the"touchstone" of the § 505 inquiry. See Mitek Holdings, Inc. v. ArceEngineering Co., Inc., 198 F.3d 840, 842-43 (11th Cir. 1999). Thepurpose of the Act, as noted, is "to encourage the production of originalliterary, artistic, and musical expression for the good of the public."Fogerty, 510 U.S. at 524. To do so, the act must enable "the raising ofobjectively reasonable claims and defenses, which may serve not only todeter infringement, but also to ensure that the boundaries of copyrightlaw are demarcated as clearly as possible in order to maximize the publicexposure to valuable works." Mitek, 198 F.3d at 842-43 (internalquotations and citations omitted, emphasis added).

The purposes of the Copyright Act provide the most compelling reasonsfor shifting fees here. Copyright defendants like Bridgewater must bepermitted to mount meritorious defenses against the kind of claims broughthere without fear of crippling fees. An overly restrictive approachwould ignore the realities of litigation and force small competitors tosettle weak claims like Yankee's solely because the fight will be toocostly to wage. This result would hinder legitimate competition andwould chill original artistic expression. See Fogerty, 510 U.S. at 524.Had Yankee Candle's complaint raised a novel issue of law or fact, oreven put forward claims which could be called objectively reasonable, anaward of fees might not serve the purposes of copyright law. See, e.g.,Lotus, 140 F.3d at 75. But in the circumstances of this case, denyingfees here would seriously undermine the purposes of the Copyright act,not promote them.

For these reasons, reasonable attorneys' fees will be granted forBridgewater's defense under the Copyright Act.

B. Attorneys' Fees for Prevailing Defendants Under the Lanham Act

In "exceptional cases" brought under the Lanham Act, a court "may awardreasonable attorney fees to the prevailing party." 15 U.S.C. § 1117(a) (1998). When the prevailing party is the plaintiff, an "exceptional"case is one involving "malicious, fraudulent, deliberate, or willfulinfringement." Schroeder v. Lotito, 747 F.2d 801, 802 (1st Cir. 1984);see also Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812, 821(1st Cir. 1987). The Court of Appeals so far has not had occasion toexplain what makes a case "exceptional" where the prevailing party is adefendant.7 15 U.S.C. § 1117(a).

Other Circuits are sharply split on this question. A rainbow ofstandards has been promulgated to define the word "exceptional" in theLanham Act, some seemingly requiring bad faith or other culpability,others following a less stringent approach. See, e.g., Nat. Ass'n. ofProf'l Baseball v. Very Minor Leagues, 223 F.3d 1143, 1149 (10th Cir.2000) (holding fees justified where suit was "unfounded" or brought for"harassment and the like," rejecting strict "bad faith" standard);Stephen W. Boney, Inc. v. Boney Services, Inc., 127 F.3d 821, 827 (9thCir. 1997) (bad faith is sufficient, but not always necessary); DoorSystems, Inc. v. Pro-Line Door Systems, Inc., 126 F.3d 1028, 1032 (7thCir. 1997) (rejecting bad faith as standard, holding "oppressive" suits"in which the case for an award of fees to the defendant is compelling"to be standard for "exceptional"); Conopco, Inc. v. Campbell Soup Co.,95 F.3d 187, 194 (2d Cir. 1996) (allowing recovery only "on evidence offraud or bad faith,"); Scotch Whiskey Ass'n v. Majestic Distilling Co.,Inc., 958 F.2d 594, 599 (4th Cir. 1992) (holding that presence of badfaith is not prerequisite of award of fees); Noxell Corp. v. FirehouseNo. 1 Bar-B-Que Rest., 771 F.2d 521, 526 (D.C. Cir. 1985) ("Somethingless than `bad faith' . . . suffices to mark a case as `exceptional'").Simply put, judges' efforts to construe this term "exceptional" in theLanham Act has caused exceptional variation among the circuits.8

Though it has not decided the issue squarely, the Court of Appeals haspointed away from a strict standard of bad faith in the fees inquiry. InVolkswagenwerk, a case concerning an award of fees to a plaintiff, theCourt interpreted the legislative history to require consideration of theequities involved.

Legislative history, though sparse, indicates that attorney's fees may be appropriate `where justified by equitable considerations,' including those where the acts of infringement were `malicious,' `fraudulent,' `deliberate,' or `willful.' Under the statute, the award of attorney's fees is left to the discretion of the district court, and it may as well award attorney's fees to a prevailing defendant.

Volkswagenwerk, 814 F.2d at 821, quoting S.Rep. No. 1400, 93rd Cong., 2dSess. 5, reprinted in 1974 U.S. Code Cong. & Admin. News 7132-33(internal citations omitted). Further examination of the Senate Reportcited by the First Circuit suggests that something less than a strictstandard of bad faith or frivolousness should guide the court's equitablediscretion.

The bill would also permit prevailing defendants to recover attorney fees in exceptional cases. This would provide protection against unfounded suits brought by trademark owners for harassment and the like.

Section 3 provides that attorney fees may be awarded to the prevailing party in actions under the federal trademark laws, when equitable considerations justify such awards. It would . . . give defendants a remedy against unfounded suits.

Id. at 7136-37.

The legislative history thus mentions both a subjective inquiry, thesuit's motivation of "harassment and the like," and an objectiveconsideration, the "unfounded" nature of the suit, all to be evaluatedunder "equitable considerations." Id. Nowhere does the text or historyof the statute necessarily restrict an award of fees to a showing ofoutright bad faith.

Indeed, courts have always had the inherent power to award attorneys'fees for suits brought "in bad faith, vexatiously, wantonly, or foroppressive reasons." Alyeska Pipeline Service Co. v. Wilderness Society,421 U.S. 240, 258-59 (1975); 1 ROBERT L. ROSSI, ATTORNEYS' FEES 346 (2dEd. 1995). The statute, which was passed against this backgroundprinciple, should not be presumed to enact mere surplusage. See Noxell,771 F.2d at 526; cf. Lieb, 788 F.2d at 155.

The most persuasive cases on the standard for attorneys' fees areconsistent with the Senate Report cited in Volkswagenwerk: that courtsshould consider the exceptional nature of the case under the totality ofthe circumstances, applying traditional principles of equity. SeeSecuracomm Consulting, Inc. v. Securacomm, Inc., 224 F.3d 273, 281 (3d.Cir. 2000); Very Minor Leagues, 223 F.3d at 1146-49 (10th Cir. 2000);Noxell, 771 F.2d at 526-27 (D.C. Cir. 1985). By using the phrase"equitable considerations" in the Senate Report to describe what is"exceptional," "Congress intended to invoke the tradition of equity, ahallmark of which is the ability to assess the totality of thecircumstances in each case." Securacomm, 224 F.3d at 281. As the ThirdCircuit has stated, "whether a case qualifies as exceptional ultimatelyturns on consideration of the equities in full." Id. The court mayexamine the plaintiff's "litigating conduct," id. at 280; whetherplaintiff's behavior included "economic coercion," Noxell, 771 F.2d at526; plaintiff's use of "groundless argument[s]," id. at 527; failure tocite controlling law, id., and the generally "oppressive" nature of thecase, Door Systems, 126 F.3d at 1032. A showing of bad faith wouldsatisfy this standard, but is not necessary. See Boney, 127 F.3d at827.

Whatever the uncertainty of the law, this case is easy, because it is"exceptional" under virtually any standard. In addition to the abusiveand expensive litigation conduct noted above, Yankee's claims under theLanham Act were unfounded — that is, "the plaintiff's suit [lacked]any reasonable foundation." Very Minor Leagues, 223 F.3d at 1147. Thestrongest of these claims (at least at the time it was made) was probablyfor infringement of the overall "look and feel" of the candles,9yeteven this argument bordered on frivolous. To meet this test, the"design, shape or combination of elements" of the Housewarmer candles hadto be "so unique, unusual or unexpected in this market that one canassume without proof that it will automatically be perceived by customersas an indicator of origin a trademark." I.P. Lund Trading ApS v. KohlerCo., 163 F.3d 27, 40 (1st Cir. 1998), quoting 1 MCCARTHY ON TRADEMARKS§ 8:13.

Absolutely no evidence was produced in support of this theory. Indeed,even if the Supreme Court had not subsequently deprived plaintiff of theentire legal basis for this claim, see Wal-Mart Stores, Inc. v. SamaraBros., Inc., 120 S.Ct. 1339 (2000), it was doomed at the outset, becausethere was no evidence that the overall look and feel of the candles ortheir labels was at all "source-identifying," or "likely to serveprimarily as a designator of origin of the product." Lund, 163 F.3d at41. Considering all the circumstances, including Yankee's aggressivepursuit of unfounded claims and use of predatory litigation strategies,this is an exceptional case meriting a shift in fees.

C. Attorneys' Fees Under State Claims

Bridgewater also seeks attorneys' fees for Yankee's three stateclaims. As noted above, these include a count for common law trade dressinfringement, for tortious interference with business relations, and fordeceptive trade practices pursuant to Mass. Gen. L. 93A, § 11.Ordinarily, recovery of attorneys' fees is only granted when there isexplicit statutory authorization, or the case fits into one of therecognized non-statutory exceptions to the "American Rule" ofnon-recovery. See generally 1 ROBERT L. ROSSI, ATTORNEYS' FEES 335-354(2d ed. 1995). None of the state or common law claims brought hereexpressly provides for attorneys' fees, and the state claims were notpursued "in bad faith, vexatiously, wantonly, or for oppressive reasons."Alyeska Pipeline, 421 U.S. at 258-59. Thus, it would appear Bridgewatercould not recover fees defending the state law claims had they beenbrought alone.

However, Bridgewater argues that its defense of the state claims was sointertwined with its defense of the federal copyright and trademarkcounts that trying to segregate them would be futile. The Supreme Courthas recognized that where a state law claim overlaps or is intertwinedwith a federal claim, it may be impossible to parse out hours reasonablyexpended for each. See Hensley v. Eckerhart, 461 U.S. 424, 435 (1983).Much of counsel's time in such cases "will be devoted generally to thelitigation as a whole, making it difficult to divide the hours expendedon a claim-by-claim basis." Id. See also Phetosomphone v. Allison ReedGroup, Inc., 984 F.2d 4, 7 (1st Cir. 1993). Indeed, many of the claims inthis case centered around the same nucleus of alleged facts:Bridgewater's supposed copying of Yankee's labels, catalogue and displaysystem. See Plaintiff's Opp. to Defendant's Motions for SummaryJudgment, Docket No. 139, at 96.

Yankee objects to treating the state and federal claims asinseparable. In one respect, the court will accept its argument. Thetortious interference claim, as narrowed by the court, survived summaryjudgment. Despite Yankee's attempt to blend the issues, this countcentered on a different nucleus of facts than the copyright and tradedress claims — that of an alleged misrepresentation by Bridgewaterto one of Yankee's customers to the effect that Bridgewater had takenover Yankee. Although this aspect of Yankee's case never made it totrial, the court will reducethe amount of fees Bridgewater has sought byten percent to account for Yankee's partial success. In all otherrespects, however, the state law claims rested on violations of federaltrademark and copyright law, making the claims sufficiently interwoven tomake further segregation impossible. See Hensley, 461 U.S. at 435.

D. Amount of Fees.

Finally, the court must determine how large an award to grant. Courtsin this Circuit must apply the "lodestar" approach to calculation of feeawards: a determination of the hours reasonably spent on this case,multiplied by a reasonable rate. See Coutin v. Young & Rubicam PuertoRico, Inc., 124 F.3d 331, 337 (1st Cir. 1997). To determine the hoursreasonably expended, courts typically look at the actual hours spent bycounsel as established by adequate contemporaneous billing records, then"subtract from that figure hours which were duplicative, unproductive,excessive or otherwise unnecessary." Grendel's Den v. Larkin,749 F.2d 945, 950 (1st Cir. 1984). A reasonable rate is "that prevailingin the community for similar work." Maceira v. Pagan, 698 F.2d 38, 40(1st Cir. 1983).

Bridgewater has submitted detailed billing records to support itsrequest for $1,131,369 in attorneys' fees and $132,652 in costs. The feerequest represents 6,541.1 hours of attorney work over two years, billedat rates ranging from $125 to $320 per hour. Also included in therequest is 962.5 hours of work by clerks and paralegals, billed at ratesof $45 to $140 per hour. See Affidavit of Michael A. Albert, Docket No.203. After the billing records are examined and a lodestar has beenidentified, courts may raise or lower the award in certaincircumstances. Coutin, 124 F.3d at 337. For example, courts mayexercise discretion "to tailor fee awards in light of the behavior of theparties during litigation." Lotus, 140 F.3d at 76, n. 5; see also MatthewBender & Co., Inc. v. West Pub. Co., 240 F.3d 116, 124 (2d Cir. 2001).Judges may also look to the level of success the prevailing partyobtained: the more impressive the results, the more reasonable the hoursexpended on the case will be. See Hensley, 461 U.S. at 435 (1983).

1. Attorneys' Fees.

a. Reasonable Rate.

To determine a reasonable rate of payment, courts generally begin withthe fee application itself. The rates actually billed by the attorneysin this case increased over the course of the litigation, along with therates of Boston attorneys generally. Attorney Albert, for example, beganhis work on the case billing at $225 per hour; by the time the case wasover, his rate was $320 per hour.

The court is satisfied that the rates charged by Bridgewater's counselare reasonable, and represent prevailing market rates for services of thekind that counsel performed here. Yankee suggests that the rates chargedby Boston counsel are too high, and that local Springfield rates shouldprevail.

However, this was an intellectual property case. The First Circuit hasheld that where the client reasonably hires counsel from outside thecommunity to perform specialized work, a reasonable rate in theattorney's city of origin will be awarded. Maceira, 698 F.2d at 40; seealso Stanton v. Southern Berkshire Reg'l Sch. Dist, 28 F. Supp.2d 37, 42(D.Mass. 1998).

Bridgewater, a South Carolina company, can certainly be forgiven forlooking to a large Boston law firm to defend an intellectual propertysuit in Springfield. Yankee itself does not arguethat the claimed ratesare greater than those billed in the Boston legal market generally duringthe course of this lawsuit. In fact, the rates ($135 to $200 forassociates and $300 to $320 for partners) are quite reasonable for theBoston area. See Guckenberger v. Boston University, 8 F. Supp.2d 91, 105(D.Mass. 1998) (approving rates ranging from $140 to $325 for civilrights attorneys); Arthur D. Little Int'l, Inc. v. Dooyang Corp.,995 F. Supp. 217, 224 n. 1 (D.Mass. 1998) (finding rate of $325 per hourreasonable for litigation partner in large Boston firm). These rates willtherefore be used in calculating the lodestar amount.

Yankee does not specifically challenge the rates charged for the SouthCarolina attorneys who worked on this case, which range between $150 and$225 per hour. The court will accept them as reasonable.

b. Hours Reasonably Spent.

The court must next determine the number of hours reasonably spent inthe litigation and multiply it by the reasonable hourly rate. The courtmust calculate the time counsel spent on the case and subtractduplicative, unproductive or excessive hours. See Gay Officers ActionLeague v. Commonwealth of Puerto Rico, ___ F.3d ___, No. 00-1983,slip op. at 12 (1st Cir., April 23, 2001). In calculating such hours, thecourt begins with counsel's actual billing sheets.

As noted above, counsel billed for 6,541.1 hours of work in this case.Yankee strenuously objects to this amount of time. Indeed, their attitudetoward justifiable fees is illustrative of their "take no prisoners"approach to this entire litigation. Although the Supreme Court has advisedthat "[a] request for attorney's fees should not result in a second majorlitigation," Yankee has attempted to do just that, by seeking to fileinterrogatories demanding billing information from opposing counsel, andeven asking for leave to depose them. Hensley, 461 U.S. at 437. Yankeehas also taken an unreasonably sharp position about the amount of timenecessary for Bridgewater to defend against this aggressive suit. Forexample, Yankee labels literally all the time billed by Attorney Albertand his colleagues in preparing Bridgewater's able Reply at the summaryjudgment stage as "[u]nproductive, duplicative or excessive timereviewing, drafting, editing, or filing." See Highlighted and AnnotatedBilling Sheets, Docket No. 209, Ex. C, Billing Sheets dated April 5,2000. Never mind that this clear and well-organized 50-page brief wasfiled in response to Yankee's own 100-page Opposition and 114-page"response" to defendant's statement of undisputed facts, and was followedby yet another 20-page surreply from Yankee. See Defendant's Reply,Docket No. 150.

In fact, Bridgewater has shown considerable restraint in its feerequest. Numerous redactions appear in the time sheets, representingtime spent on the case for which Bridgewater is not seekingcompensation. Though plaintiff's claim was weak, the stakes in thismatter were high: the lawsuit could have spelled the end of theBridgewater Candle Company. It is thus understandable that Bridgewaterresponded vigorously. Given the redactions, and the decision to claimnothing for the time spent preparing its fee request, Bridgewater'soverall claim for $1.1 million emerges generally as more than fair.

In three respects, however, the court will depart from Bridgewater'srequest in identifying the lodestar. First, the court will strikebillings for travel time associated with this case. Although travel is anecessary consequence of litigation where a party has been sued in adistant jurisdiction, the First Circuit has declined to award fees at aprofessional rate fortime spent in transit. See Furtado v. Bishop,635 F.2d 915, 922 (1st Cir. 1980). The court has calculated thenon-compensable travel time billed in this case as follows.

Dority & Manning Attorney Richard M. Moose: $19,945 Clerk, Dority & Manning $203

Foley, Hoag & Eliot Michael Albert $3,795 Katherine M. Hamill $405 Margaret E. McKane $125

Wolf, Green & Sacks Michael Albert $8,415 Ilan D. Barzilay $1,020

Total: $33,908

Accordingly, Bridgewater's fee request will be reduced by $33,908.00.

Second, as noted above, the court will reduce the requested fee amountby ten percent because of the continued vitality of Yankee's tortiousinterference claim. This works out to a reduction of $103,589.30 fromthe total fee request. This ten percent is calculated after subtractingthe award for clerks and paralegals, below, and the travel reduction.

Third, the court will reduce the amount Bridgewater has sought by anadditional ten percent to account for excessive hours, duplication ofservices, and fruitless pursuits. See Gay Officers Action League v.Commonwealth of Puerto Rico, — F.3d —, No. 00-1983, Slip.Op. at 13 (1st Cir. April 23, 2001). The primary reason for thisreduction is the rather substantial amount of time Bridgewater'sattorneys spent in conferences with each other. Although communicationwith co-counsel is a necessary function of a multiple-attorney defense,the time here appeared to have passed the excessive mark, though by amodest margin. See In re Olson, 884 F.2d 1415, 1429 (reducing fee awardbecause of excessive hours spent conferencing).

There were also certain inefficiencies in the representation thatcontribute to the ten percent reduction. For example, Attorney Albert,the chief Boston counsel for Bridgewater, changed firms mid-stream,reducing efficiency somewhat. Counsel also appear to have spent sometime pursuing issues of dubious relevance, such as Yankee's possibleenvironmental troubles. The court will not attempt to reduce feesattorney-by-attorney. The run-on nature of the billing sheets submittedby counsel makes an exact tabulation of the time spent on theseactivities impractical. Several different tasks are mentioned in most ofthe billing entries. Additionally, no one attorney appears to have spenta greater percentage of his or her time in excessive conferences or infruitless efforts.

The total fee request will be reduced by an additional ten percent, ata cost of $103,589.30 (after subtraction of the paralegal award andtravel time). Under the circumstances, the total of $828,714.40 is afair and reasonable result. See Grendel's Den, 749 F.2d 945, 952 (1stCir. 1984). Yankee will be ordered to pay a total of $828,714.40 inattorneys' fees.

2. Clerks and Paralegals.

Bridgewater has also requested compensation for the work of clerks andparalegals. Contrary to Yankee's claims, the time of clerks andparalegals is compensable in this Circuit. See In re San Juan DupontPlaza Hotel Fire Litigation, 111 F.3d 220, 231 n. 10 (1st Cir. 1997).

Bridgewater's affidavit seeks compensation for 962 hours of paralegaltime, billed at rates ranging from of $45 to $140 per hour. From thecourt's review of the hours billed by the paralegals and clerks, thereappeared to be an unusually large number of hours spent "indexing" files,discovery, and other papers. The court will accordingly reduce thenumber ofparalegal hours by twenty percent, to 769.6 hours. However,the requested rates of $45 and $60 per hour are on the extreme low end ofthe scale for paralegals, while $140 per hour seems quite high. See,e.g., In re LearningSMITH, Inc., 247 B.R. 581, 583 (D.Mass. 2000)(finding $110 per hour to be reasonable Boston paralegal rate). Thecourt will multiply the reasonable hours, 769.6, by a reasonablemid-range rate for paralegals, $80 per hour. This works out to $61,568for paralegal and clerk time.

3. The Lodestar.

Based on the foregoing, the lodestar is $828,714.40 in attorneys' feesand $61,568 for clerk and paralegal fees, for a total of $890,282.40.Neither party has moved to depart from the lodestar, and there is noreason to do so. There certainly is no call to lower it; Bridgewater'ssuccess here was almost absolute in that Yankee's major claims were alldispatched on summary judgment. In this situation, defendant shouldreceive "a fully compensatory fee." Hensley, 461 U.S. at 435.

Plaintiff will be ordered to pay defendant $890,282.40 in fees.

E. Costs.

Both the Copyright and Lanham Acts allow for the assessment of costsfor prevailing parties. See 17 U.S.C. § 505; 15 U.S.C. § 1117.Bridgewater has submitted a detailed and contemporaneous itemization ofthe costs of the litigation, down to each photocopy and facsimilecharge. See Affidavit of Michael A. Albert, Ex. A-D (Docket No. 205).The request amounts to $132,652. Yankee has not leveled any specificchallenges to the request for costs.

In one respect, however, the request for costs will be reduced. Thefirms of Foley, Hoag & Eliot and Wolf, Greenfield & Sacks both includedcosts of computer-aided research in their requests. The growingconsensus of the courts is that such expenditures are more properlyconsidered firm overhead, not a compensable cost. See, e.g., In reContinental Illinois Sec. Litig., 962 F.2d 566, 570 (7th Cir. 1992)(holding computer assisted legal research to be firm overhead); FleetBank of Maine v. Steeves, 793 F. Supp. 18, 24 (D.Me. 1992) (same); butsee Aloha Tower Assoc. Piers 7, 8 and 9, Ltd. P'ship v. MillenniumAloha, Inc., 938 F. Supp. 646 (D.Haw. 1996) (holding computer-assistedresearch to be a "cost"). The court has calculated the amount billed forelectronic research as follows.

Foley, Hoag, & Eliot $8,660.63

Wolf, Greenfield & Sacks $6,593.30

Total: $15,253.93

The court will therefore order plaintiff to pay the defendant thefollowing in costs: $63,814.00 for costs paid by Dority & Manning, P.A.;$26,627.37 for Foley, Hoag & Eliot; $26,935.70 for Wolf, Greenfield &Sacks, P.C.; and $21.00 for the McQueen Law Firm, P.C., for a total of$117,398.07.


To summarize the above calculations, the court has awarded defendantits request for fees with the following modifications. First, the courtreduced the request by $33,908 to account for time spent in travel. Itthen separated out from the fee request the award it granted for clerksand paralegals, $61,568, which represents 769.6 hours of work at $80 perhour. It subsequently reduced the modified attorneys' fees amount by tenpercent, or $103,589.30, to account for the continued viability of thetortious interference claim, and an additional ten percent for excessivehours and duplication of services. This comes to a lodestar fee total,including paralegal fees, of $890,282.40.

Finally, the court is assessing $117,398.07 in costs,which comprisesdefendant's request minus the costs charged for computer-assisted legalresearch.

A separate order will issue.


For the reasons stated in the accompanying memorandum, plaintiff ishereby ordered to pay defendant $890,282.40 in attorneys' fees and$117,398.07 in costs. Plaintiff's Motion for Leave to Take AdditionalDiscovery (Docket No. 208) has been DENIED.

MICHAEL A. PONSOR U.S. District Judge

1. This ruling also eliminated the common law trade dress claim, theanalysis of which was nearly identical to that of the Lanham Act. SeeYankee Candle Co., Inc. v. Bridgewater Candle Co., LLC, 99 F. Supp.2d 140,156-57 (D.Mass. 2000).

2. Bridgewater, relying largely on pre-Fogerty decisions, suggeststhat fees should be granted "as a matter of course" or "routinely" infavor of prevailing defendants. See Micromanipulator Co., Inc. v.Bough, 779 F.2d 255, 259 (5th Cir. 1985). The Court's opinion inFogerty, however, casts a pall over this argument: the Court expresslyrefused to import the "British rule," that fees should be awarded "as amatter of course, absent exceptional circumstances," into the CopyrightAct. Fogerty, 510 U.S. at 533. Other courts have similarly read Fogertyto mean "that fees should not be awarded as a matter of course, but inlight of various equitable factors, keeping in mind the purpose of theCopyright Act. . . ." Fasa Corp. v. Playmates Toys, Inc.,1 F. Supp.2d 859, 862 (N.D.Ill. 1998). On the other hand, one Court ofAppeals has held that Fogerty does not interfere with its own standard:that fee awards are "discretionary but routinely awarded." See HoganSys. v. Cybersource Int'l, Inc., 158 F.3d 319, 325 (5th Cir. 1998).Though there may be a semantic distinction between "as a matter ofcourse" and "discretionary but routinely awarded," the Supreme Court'ssimpler formulation seems preferable: fees will be awarded as a matter ofthe court's discretion. See Fogerty, 510 U.S. at 534.

3. Several other Circuits have also found objective reasonableness tobe a significant factor. See Harris Custom Builders Inc. v. Hoffmeyer,140 F.3d 728, 730-31 (7th Cir. 1998) (vacating award of fees because,inter alia, losing party's claims were objectively reasonable); MaljackProds., Inc. v. GoodTimes Home Video Corp., 81 F.3d 881, 890 (9th Cir.1996) (awarding fees because, inter alia, plaintiff's claims were"factually unreasonable"); Diamond Star Bldg. Corp. v. Freed, 30 F.3d 503,506 (4th Cir. 1994) (affirming award of fees because, inter alia, "theobjective reasonableness factor strongly weighs in favor of awardingattorney's fees and costs").

4. See Yankee Candle, 99 F. Supp.2d at 149 (noting that label forYankee's "Cinnamon" Housewarmer candle featured prominent cinnamonstick, while Bridgewater's "Cinnamon Roll" candle showed only cinnamonrolls).

5. See Fourth Affidavit of Ilan D. Barzilay, Docket No. 200, Ex. A,(Correspondence between Attorney Michael A. Albert and Gregory L. Baker,August, 1999). After Gregory Baker, Yankee's counsel, noticeddepositions of Bridgewater personnel for August, 1999, Attorney Albert ofBridgewater responded with scheduling concerns: "[T]here is a separateissue of individuals' scheduling conflicts. . . . we are also aware of atrade show scheduled for approximately August 16th through 19th whichsome of the individuals you have listed will be attending. We will doour best to work with you to resolve these scheduling issues." (Letter ofAlbert to Baker, August 6, 1999). In response, Attorney Baker wrote,"[Y]our effort to introduce `scheduling conflicts' as a method ofdelaying the depositions is transparent. . . . Accordingly, we plan togo forward with the noticed depositions." (Letter of Baker to Albert,August 13, 1999, at 2). Albert objected that Bridgewater employees Aspyand Ruehl could not be deposed because of the trade show in New York, andsuggested, "Why not just give me a call and see if we can agree on somedates that will work for everyone?" (Letter of Albert to Baker, August13, 1999, at 2). Baker responded, by letter, "The depositions will goforward as noticed. . . . Of course, you knew that anyway, and aresimply playing games. . . . Finally, you are in error when you suggestthat we were previously told of `scheduling conflicts' involving Aspy andRuehl being at a trade show in New York. With each passing day,Bridgewater's excuses change, but its objective of avoiding discoveryremains constant." (Letter of Baker to Albert, August 14, 1999). Albertresponded, "the August 16-19 trade show that you continue to claim wenever told you about was referenced in my letter to you of August 6, aswell as in conversations prior to that date." (Letter of Albert toBaker, August 16, 1999).

Baker replied, "Where in my letter did I say you had not told us of atrade show? Answer: my letter does not say that. My letter states thatwe were not told of scheduling conflicts involving Aspy and Ruehl beingat a trade show in New York. Your letter of August 6 . . . is perfectlyopaque regarding who and where. . . . Where is there any reference [in theletter] to Aspy, Ruehl, or New York? Answer: there is none. Let me justadd that the subsidiary reference in your letter of August 16 conjures upnon-existent conversations from whole cloth. (If you persist inpursuing your fanciful story, tell me who discussed this matter withwhom.) . . . Hence, your witnesses should either show up and sit forquestions or secure a court ruling prior to such depositions excusingthem from attending." (Letter of Baker to Albert, August 16,1999.)

6. Yankee's counsel's discourteous litigation style emerged in thevery first argument, on plaintiff's motion for a preliminary injunction.Attorney Baker arrived in court with a reply memorandum in hand that hehad not yet served on Bridgewater's counsel. The court was delayedapproximately twenty minutes in hearing argument. Counsel sat in thecourtroom for this entire period, no more than six feet from brothercounsel, yet chose not to hand him a copy of the reply until the courttook the bench, putting Bridgewater's lawyer in the position of having tolisten to argument and flip through a new brief at the same time. Thiskind of rudeness is the font of infinite lawyer jokes.

7. Although plaintiff asks the court to apply the standards forprevailing plaintiffs to this case, it is unclear how this could beaccomplished. One of the factors making a case "exceptional" whereplaintiffs prove infringement is the deliberateness of the violation. SeeSchroeder, 747 F.2d at 802. But while infringement of a trademark is onlysometimes deliberate, prosecution of a lawsuit always is. To apply thisfactor to prevailing defendants could mean that all prevailing defendantsare entitled to fees, a result that fails to do justice to the word"exceptional." See National Ass'n of Prof'l Baseball Leagues, Inc. v.Very Minor Leagues, Inc., 223 F.3d 1143, 1148 (10th Cir. 2000) (rejectingargument for parity in Lanham Act fees inquiry on ground that underlyingconduct under scrutiny is different); Door Systems, Inc. v. Pro-Line DoorSystems, Inc., 126 F.3d 1028, 1031-32 (7th Cir. 1997) (same); but seeConopco, Inc. v. Campbell Soup Co., 95 F.3d 187, 194-95 (2d Cir. 1996)(rejecting different standards for prevailing plaintiffs and defendants,and requiring bad faith for both).

8. District Court Judges in this Circuit have also wrestled with thisissue. Compare Gillette Co. v. Norelco Consumer Prods. Co.,69 F. Supp.2d 246, 267-68 (D.Mass. 1999) (declining to award fees becauseplaintiff not motivated by bad faith and achieved some success on themerits) and Ultra-Temp Corp. v. Advanced Vacuum Sys., Inc., 189 F.R.D.17, 21-25 (D.Mass. 1999) (declining to award fees against plaintiff inpatent case, construing identical standard of "exceptional cases" in35 U.S.C. § 285 to require showing of frivolousness by clear andconvincing evidence) with La Amiga del Pueblo, Inc. v. Robles,748 F. Supp. 61, 63 (D.P.R. 1990) (holding that "exceptional" means"slightly less than bad faith," such that defendant may recover "whereplaintiff's claims are designed to harass or are so unfounded as to befrivolous or patently baseless").

9. The other two Lanham Act claims were rejected more summarily.Yankee's "Vertical Display System," the court held, was simply a methodof displaying candles by color and therefore was entirely functional. SeeYankee, 99 F. Supp.2d at 151-52. As for the layout of Bridgewater'scatalogue, the court stated: "No fair minded person, looking atBridgewater's document, could possibly view it as an attempt to `passoff' the Bridgewater catalogue as the Yankee one." Yankee, 99 F. 156.

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