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Bodum USA, Inc. v. La Cafetière

June 17, 2009


The opinion of the court was delivered by: Matthew F. Kennelly, District Judge


Bodum USA, Inc. sued La Cafetière, Inc., for infringement of its trade dress in violation of 15 U.S.C. § 1125(a), common law unfair competition, and violations of the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS § 510/2(a). Bodum alleged that La Cafetière sold, promoted, and advertised products that were imitations of Bodum's distinctive "Chambord" trade dress. On March 24, 2009, the Court granted La Cafetière's motion for summary judgment based on the 1991 Stock Purchase Agreement between Bodum Holdings A/S and Société des Anciens Etablissements Martin S.A. La Cafetière now seeks attorneys fees pursuant to 15 U.S.C. § 1117(a); sanctions pursuant to 28 U.S.C. § 1927 and Federal Rule of Civil Procedure 11; and costs pursuant to Federal Rule of Civil Procedure 54(d) and 28 U.S.C. § 1920.


The factual basis for plaintiffs' claims is set forth in this Court's decision dated March 24, 2009, Bodum USA, Inc. v. La Cafetière, Inc., No. 07 C 6302, 2009 WL 804050 at *1-3 (N.D. Ill. Mar. 24, 2009), in which the Court granted La Cafetière's motion for summary judgment.

A. Attorney's Fees

The Lanham Act authorizes the Court to award reasonable attorney's fees to the prevailing party "in exceptional cases." 15 U.S.C. § 1117(a). A suit is exceptional "if it lacked merit, had elements of an abuse of process claim, and plaintiff's conduct unreasonably increased the cost of defending against the suit." S Indus., Inc. v. Centra 2000, Inc., 249 F.3d 625, 627 (7th Cir. 2001) (citing Door Sys., Inc. v. Pro-Line Door Sys., Inc., 126 F.3d 1028, 1031 (7th Cir. 1997)). Although an award of attorney's fees may be "[b]ased solely on the weakness of [the plaintiff's] claims," id. at 627, the simple fact that the defendant prevailed is not sufficient to impose attorney's fees on a losing plaintiff. Door Sys., 126 F.3d at 1032.

La Cafetière contends that it is entitled to attorney's fees because its victory on summary judgment demonstrates that Bodum's claims were frivolous and had no plausible legal basis. The Court disagrees. Although the Court found that there was no genuine issue of material fact, it did not indicate or imply that Bodum's claim or its arguments were frivolous. Bodum presented evidence and an expert opinion that, while ultimately insufficient to survive summary judgment, supported its legal position. There is no indication that Bodum filed or pressed its claims in bad faith. As a result, the case does not qualify as exceptional.

Next, La Cafetière contends that the case became "exceptional" after Bodum's arguments were rejected by a Danish court on February 8, 2008. Because the Danish court rejected arguments that La Cafetière contends were identical to those asserted by Bodum in its opposition to summary judgment, La Cafetière argues that Bodum's continued prosecution of this case renders it exceptional under the Lanham Act.

The Danish court denied Bodum's request for a preliminary injunction, finding that "the conditions for issuing an injunction ha[d] not been fulfilled." Mot. for Summ. Judg. Based on Stock Purchase Agr., Ex. 6 at LaCaf00881. Although the Danish court agreed with La Cafetière's interpretation of the stock purchase agreement, the ruling-issued about three months after Bodum initiated this suit-was based on Danish law governing the issuance of preliminary injunctions. As such, the ruling did not render Bodum's trade dress claims baseless or frivolous in an American court.

Finally, La Cafetière contends that Bodum's delay in filing the suit makes the case exceptional under the Lanham Act. La Cafetière fails to cite, however, any authority supporting an award of costs for what is essentially a laches defense upon which the Court did not rule. Because it granted La Cafetière's summary judgment motion based on the stock-purchase agreement, the Court denied as moot its summary judgment motion based on equitable defenses. In short, the Court did not find that Bodum unreasonably delayed its initiation of the suit. Furthermore, Bodum presented evidence that La Cafetière was inactive in the American market before 2006 and that its marketing of the allegedly infringing model was limited and sporadic. As a result, the Court cannot find that the purported delay was oppressive to La Cafetière.

For similar reasons, the Court denies La Cafetière's motion for sanctions under Rule 11. The arguments La Cafetière makes under Rule 11 are the same ones it made in support of its motion for attorneys' fees under the Lanham Act. As stated above, the Court disagrees with La Cafetière's characterization of Bodum's claims baseless or frivolous.

In addition, the Court finds no basis to award fees under section 1927. Such sanctions are appropriate only in the face of unreasonable and vexatious conduct, which was not present in this case. See Kotsilieris v. Chalmers,966 F.2d 1181, 1183-85 (7th Cir. 1993). Again, the fact that Bodum lost on summary judgment-even combined with its loss in the Danish court-does not render its pursuit of this case vexatious.

B. Costs

Rule 54(d)(1) provides that "costsother than attorney's fees shall be allowed as of course to the prevailing party unless the court otherwise directs." Fed. R. Civ. P. 54(d)(1). Allowable costs include fees for transcripts and copies of papers "necessarily obtained for use in the case." 28 U.S.C. 1920 (2) & (4). Rule 54 creates a "presumption that the losing party will pay costs but grants the ...

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