Id. The West Virginia court concluded that in the case before it there was no ambiguity regarding whether witness fees were included in the term "attorney's fees." They were not. Consequently, for the above reasons, the court rejects plaintiff's analogy to Jenkins.
Plaintiff also cites two district court cases where expert witness fees have been awarded under the Lanham Act. Manildra Milling Corp. v. Ogilvie Mills, Inc., 797 F. Supp. 874, 889 (D. Kan. 1992); Conopco, Inc. v. May Dep't. Stores Co., No. 90-1475C(3), 1992 U.S. Dist. LEXIS 18614 (E.D. Mo. 1992). However, the opinions of district courts are not binding on this court. Colby v. J.C. Penney Co., Inc., 811 F.2d 1119, 1124 (7th Cir. 1987). Nor does this court find either decision persuasive. The Manildra opinion devotes a single sentence to the issue of expert witness fees, stating that Manildra was entitled to recover witness fees because witnesses were necessary in the case. Manildra, 797 F. Supp. 874, 889. The Conopco court awarded witness fees in accordance with its equitable power to do so. Conopco, 1992 U.S. Dist. LEXIS 18614, *10.
The court does not find that the Lanham Act mandates the award of witness fees in addition to attorney's fees. The court also declines to invoke its equitable power to authorize the shifting of expert witness fees. Consequently, the court will not award witness fees beyond that permitted by 28 U.S.C. §§ 1920 and 1821, and granted in the court's Memorandum and Opinion Order of September 11, 1992.
B. Attorneys Fees for the Firm of Pennie & Edmonds
Defendant argues that plaintiff should not be awarded attorney's fees for the work done in this case by the law firm of Pennie & Edmonds. Plaintiff retained this firm to advise and assist its primary legal counsel on matters pertaining to the Lanham Act.
Defendant contests these charges on two grounds. First, defendant argues that the firm of Pennie and Edmonds has submitted invoices for "unnecessary and unwarranted charges" (i.e., for the preparation of jury instructions where plaintiff failed to make a jury demand). Second, and more important, defendant is opposed to the award of fees for the work done by the firm Pennie & Edmonds because the retention of the firm undercuts the claim of plaintiff's chief legal counsel, Baker & McKenzie, that it is an expert in Lanham Act claims.
Defendant cites no authority to support its position. The court notes that Baker & McKenzie retained the services of Pennie & Edmonds because a partner in that firm is an expert on the Lanham Act. Plaintiff is not barred from putting together as expert a legal team as possible. Nor is it barred from recovering attorney's fees under the Lanham Act for retaining more than one law firm. Consequently, the court will not automatically disallow the costs associated with the firm of Pennie & Edwards. The court will consider defendant's other objections to the work done by Pennie & Edmonds in a manner consistent with section "E" of this memorandum.
C. LEXIS Database
Plaintiff seeks $ 384,506 for a privately-prepared computerized database of documents. The database was created by LEXIS and was designed to create an "extremely cost-efficient means of searching for and retrieving relevant documents." Plaintiff's Reply Brief, 17.
Plaintiff argues that these fees are recoverable because the investment in the database resulted in the saving of time and money to plaintiffs because plaintiff was spared having to find and retrieve documents manually. Plaintiff analogizes to Missouri v. Jenkins, 491 U.S. 274, 109 S. Ct. 2463, 2470, 105 L. Ed. 2d 229 (1989), arguing that if paralegals' fees are recoverable as attorney's fees, these database costs should also be considered as attorney's fees because, like paralegals, the database saves time and costs for law firms. Plaintiff also cites Matter of Continental Ill. Securities Litigation, 962 F.2d 566 (7th Cir. 1992), in support of the proposition that LEXIS legal research costs are recoverable.
The court concedes that legal research costs incurred using a computerized research system such as LEXIS are recoverable. See Harman v. Lyphomed, Inc., 945 F.2d 969, 976 (7th Cir. 1991). However, in the instant case, plaintiff is not seeking costs associated with actual legal research. Rather, plaintiff seeks to recover the costs for the development of a computerized document recovery system. The court finds that the rationales cited by the Seventh Circuit for the reimbursement of the costs associated with computerized research are not applicable here.
The Continental Ill. court cited two reasons for allowing attorneys to recover their LEXIS costs. First, the court argued that disallowing LEXIS research costs and treating them as part of attorneys' overhead it would have the effect of increasing the hourly rates charged by attorneys, requiring an adjustment of the lodestar.
The second reason and "more important point" according to the Seventh Circuit is that:
The market -- the paying, arms' length market -- reimburses lawyers' LEXIS and WESTLAW expenses, just as it reimburses their paralegal expenses, rather than require these items be folded into overhead. Markets know market values better than judges do. And, as with paralegals, so with computerized research: if reimbursement at market rates is disallowed, the effect will be to induce lawyers to substitute their own, more expensive time for the paralegal or the computer.