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June 5, 1997


The opinion of the court was delivered by: GETTLEMAN

 Defendants seek attorneys' fees as the prevailing parties in this trademark/unfair competition litigation pursuant to Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a) ("§ 35(a)"), and the Illinois Consumer Fraud and Deceptive Business Practices Act, 815 ILCS 505/10(a)(c) (the "CFA"). The court should exercise its discretion to award such fees, defendants argue, because this is an "exceptional case" that was filed and prosecuted by plaintiff for improper purposes and without any foundation in the law or the facts. Plaintiff, which has seen its case whittled down first by this court and then by the court of appeals, protests that it was justified in bringing and pursuing in good faith its claims of trademark and trade dress infringement and violations of the CFA, thus removing the case from the ambit of "exceptional."

 Having reviewed the record, the briefs of the parties and the decisions of this court and the Seventh Circuit, the court concludes that an award of attorneys is not warranted in this case. Although plaintiff ultimately lost all that it was attempting to achieve in the litigation, it did so in the pursuit of a legitimate goal (protection of intellectual property interests) and in good faith. It would be impossible to distinguish this case from many other unsuccessful lawsuits brought by parties who believed they had protectable trademarks and trade dress, only to find that the courts disagreed. To award fees to defendants in this action would be to convert § 35(a) and the CFA into the English rule that routinely awards fees in most cases to successful litigants. This the court refuses to do.


 The facts and history of this litigation are amply set forth in the opinions of this court, reported at 894 F. Supp. 1190, and the court of appeals, reported at 94 F.3d 376, and will not be repeated here. The only thing the court would add to those opinions is that, based on many months of pretrial proceedings and many days of trial, the court saw no evidence of unprofessional conduct by the parties or counsel on either side. Simply put, this court was in a unique position to observe whether plaintiff's litigation tactics both before and during the trial were predatory or designed to overwhelm defendants with a case that plaintiff knew was without merit. The court can draw no such conclusion from the record and the proceedings conducted in this case.

 With this in mind, the court will briefly address defendants' arguments.


 Section 35(a) provides various remedies for a successful plaintiff who proves violations of any right in its registered mark or a violation of Section 1125(a) of the Lanham Act. The last sentence of that statute provides: "The court in exceptional cases may award reasonable attorneys' fees to the prevailing party." Thus, even if the case is "exceptional," the decision to grant attorneys' fees remains within the discretion of the trial court. Burger King Corp. v. Pilgrim's Pride Corp., 15 F.3d 166 (11th Cir. 1994).

 Defendants rely on the legislative history of § 35(a) and several decisions of other circuits in arguing that it need not demonstrate plaintiff's bad faith to warrant an award of attorneys' fees. *fn1" "Exceptional," in the context of this statute, means "uncommon, not run of the mill." Noxell Corp. v. Firehouse No. 1 Bar-B-Que Restaurant, 248 U.S. App. D.C. 329, 771 F.2d 521, 526 (D.C. Cir. 1985). Defendants cite Scotch Whisky Association v. Majestic Distilling Co., 958 F.2d 594, 600 (4th Cir. 1992), in which the court noted that the Senate Report "speaks of acts characterized as 'malicious, fraudulent, deliberate and wilful.' Notably absent in the discussion relating to fee awards to prevailing defendants is language suggesting a requirement of bad faith." The Noxell court also quoted from the Senate Report, noting that "Congress endeavored to afford protections 'against unfounded suits brought by trademark owners for harassment and the like,'" 771 F.2d at 524. See also, NuPulse, Inc. v. Schlueter Co., 853 F.2d 545, 547 (7th Cir. 1988) ("an 'exceptional case' is one in which the acts of infringement can be characterized as 'malicious, fraudulent, deliberate, or wilful'").

 Defendant bases its contention that this is an exceptional case that warrants the exercise of the court's discretion to grant attorneys' fees primarily on three factors: (1) plaintiff's claims for actual damages and of trademark rights in the term "clamshell" were rejected by this court; (2) plaintiff's claim of infringement of a protectable right in its trade dress for the clamshell configuration of its starch washer was rejected by the court of appeals, which found that there was no plausible theory for claiming likelihood of confusion; (3) plaintiff, a large, multi-million dollar corporation, was abusing its "monopoly" position in the industry in pursuing this litigation against defendant, a small, "startup" competitor that was attracted to enter the field by plaintiff's own customers.

 With respect to the first point, plaintiff was unable to seek damages for lost profits as a result of the parties' stipulation, based on this court's interlocutory ruling, that there was no actual confusion at the point of sale as to the source of defendants' clamshell. See, 894 F. Supp. at 1195, 1198-1199. Thus, this issue dropped from the case at a relatively early, pretrial stage, leaving the more important issue of likelihood of confusion to be addressed by the parties and the court at 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. *fn2" 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. *fn3"

 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, ...

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