trial. Regarding plaintiff's unsuccessful claim that it had a common law trademark right in the name "clamshell" as it applies to plaintiff's Type C starch washer, this court held that no such right existed for the reasons discussed at 894 F. Supp. at 1196-1197. Although the court rejected plaintiff's claims (a ruling that was not appealed), the court does not regard this part of the case to be "exceptional" as that term is used in § 35(a).
With respect to the second point, this court found both that plaintiff had a protectable trade dress interest in the configuration of its clamshell starch washer, and that that interest had been infringed by defendants. The court of appeals disagreed with this court's conclusion regarding infringement, although it did not disturb the finding that plaintiff had a protectable interest in the design. Regardless of the reviewing court's ultimate decision, the fact that this court, as an objective tribunal, found for plaintiff on the basis of the evidence presented at the trial makes it impossible to conclude that plaintiff was "malicious, fraudulent, deliberate or wilful" in bringing its claim for trade dress infringement. NuPulse, 853 F.2d at 547.
With respect to the third point, while it is true that plaintiff economically dwarfs defendants and no doubt sought to protect its market position (whether labeled "monopoly" or otherwise), such motives are common in intellectual property disputes and cannot form the basis of concluding that a case is "exceptional." The reporters are filled with cases (some of which are unsuccessful) filed by companies that are dominant in their industries to protect their patent, trademark and copyright interests.
The court might reach a different conclusion if, during the course of administration and trial of the case, it had reason to conclude that plaintiff was acting in a predatory, unreasonable manner to harass defendants or take advantage of their lesser economic ability to litigate an obviously meritless case. This court observed no such conduct on the part of plaintiff or its counsel, and concludes that plaintiff did not intentionally bring a case that it knew was unlikely to succeed. To the contrary, this court is convinced that plaintiff sincerely believed in its cause and sought in good faith to protect intellectual property interests it regarded (incorrectly, as it turned out) as belonging exclusively to it. Accordingly, the court holds that this case is not an exceptional one which would justify the imposition of attorneys' fees in favor of the successful defendants.
Finally, even were the court to conclude that this case was somehow "exceptional," it would exercise its discretion to refuse an award of fees to defendants. In addition to the reasons discussed above, the court notes that in the more than four years since this case was filed both parties expended significant resources, time and money on behalf of their positions. The first trial before Judge Conlon ended in a mistrial, with the court assessing jury costs personally against the attorneys for plaintiff and defendants pursuant to 28 U.S.C. § 1927. Although plaintiff may have more resources than defendants, both sides were equally litigious and, in Judge Conlon's view, equally at fault for causing the mistrial. Cross motions for summary judgment were denied, and numerous discovery and other pretrial disputes were won and lost by each side.
It appears from this court's review of the record during the period the case was before Judge Conlon and its observations of the parties' conduct thereafter that there were many hotly contested issues of great concern to each side. Plaintiff's belief that it had trademark rights to the term "clamshell," while unfounded, was understandable given the history of the invention and industry acceptance of this starchwasher that was developed and marketed exclusively by plaintiff for many years. Likewise, plaintiff was justified in its belief that it had a protectable interest in the shape of the outer housing of the clamshell (an issue with which this court found in favor of plaintiff and which was not disturbed on appeal). Finally, plaintiff's claim that its trade dress was infringed, although ultimately denied by the court of appeals, was colorable enough to convince this court of its merit.
It is time this litigation came to a close. Under our system of civil justice each side must bear its own attorneys' fees absent a statute or contract provision to the contrary. Alyeska Pipeline Service Co. v. Wilderness Society, 421 U.S. 240, 258-259, 95 S. Ct. 1612, 1622, 44 L. Ed. 2d 141 (1975). Section 35(a) allows a possible exception to the "American Rule" if the court in the exercise of its discretion agrees to award fees. Just as this court deemed it inappropriate -- when deciding to enter judgment for plaintiff on its trade dress claim -- to award attorneys' fees to plaintiff, it deems inappropriate any such award to defendants now that they have succeeded in their defense. In this court's judgment there would be no purpose served other than to penalize by hindsight a party that pursued its position aggressively but in good faith.
ILLINOIS CONSUMER FRAUD ACT
Section 10(a) of the CFA, like § 35(a) of the Lanham Act, allows the court, in its sole discretion, to award reasonable attorneys' fees to the prevailing party -- plaintiff or defendant. Although there is some disagreement on whether the Illinois courts would award fees absent a showing of bad faith by the losing party,
this court's reasoning with respect to § 35(a) leads to the same result with respect to the CFA.
For the foregoing reasons, defendants' motion for an award of attorneys' fees under § 35(a) of the Lanham Act and § 10(a) of the Illinois Consumer Fraud Act is denied.
ENTER: June 5, 1997
Robert W. Gettleman
United States District Judge