United States District Court, N.D. Illinois, Eastern Division
MEMORANDUM OPINION AND ORDER
MATTHEW F. KENNELLY UNITED STATES DISTRICT JUDGE
Investments, LLC, an investment management firm that owns
registered trademarks for various iterations of the term
"Ariel, " sued Ariel Capital Advisors LLC, a wealth
management firm, alleging trademark infringement, unfair
competition, and cybersquatting in violation of the Lanham
Act, and unfair trade practices in violation of the Illinois
Deceptive Trade Practices Act and Illinois common law. Before
trial, the Court granted summary judgment for Ariel Capital
on the cybersquatting claim.
bench trial, the Court found for Ariel Investments on its
remaining Lanham Act and state law claims. Ariel Invs.,
LLC v. Ariel Capital Advisors, LLC, No. 15 C 3717, 2017
WL 839481 (N.D. Ill. Mar. 3, 2017). The Court entered a
permanent injunction barring Ariel Capital from continuing to
use the term Ariel in connection with its business. The Court
overruled Ariel Investments' request for disgorgement of
Ariel Capital's profits, concluding that Ariel Capital
had shown that it did not earn its profits by infringing on
Ariel Investments' marks. The Court later denied Ariel
Capital's request for a stay of the injunction pending
appeal. Ariel Invs., LLC v. Ariel Capital Advisors,
LLC, No. 15 C 3717, 2017 WL 1049464 (Mar. 20, 2017).
decision, the Court considers Ariel Investments' request
to recover costs.
Investments has moved for nearly $110, 000 in costs. Federal
Rule of Civil Procedure 54(d) states that "unless a
federal statute, these rules, or a court order provides
otherwise, costs-other than attorney's fees-should be
allowed to the prevailing party." Fed.R.Civ.P. 54(d).
Expenses in six categories are available, three of which are
relevant here: 1) fees for transcripts necessarily obtained
for use in the case; 2) fees for disbursements for printing
and witnesses; and 3) fees for the exemplification and the
costs of making copies of any materials where the copies are
necessarily made for use in the case. 28 U.S.C. §1920.
Seventh Circuit has long recognized the "presumption
that the prevailing party will recover costs, and the losing
party bears the burden of an affirmative showing that taxed
costs [are inappropriate]." Beamon v. Marshall &
Ilsley Trust Co., 411 F.3d 854, 864 (7th Cir. 2005);
M.T. Bonk Co. v. Milton Bradley Co., 945 F.2d 1404,
1409 (7th Cir.1991). Although the Supreme Court has ruled
that the "concept of taxable costs under the Federal
Rules of Civil Procedure" is "limited, " the
non-prevailing party must nevertheless demonstrate the
inappropriateness of any taxed costs. Taniguchi v.
Kan.Pac. Saipan, Ltd., 132 S.Ct. 1997, 2006 (2012).
Capital contends that no costs should be awarded because
Ariel Investments only partially prevailed. Ariel Investments
argues that it was the prevailing party because it was
awarded substantial relief.
prevailing party for purposes of Rule 54(d) is the party that
prevails with regard to a substantial part of the litigation.
Testa v. Vill. of Mundelein, 89 F.3d 443, 447 (7th
Cir. 1996); see also, First Commodity Traders, Inc. v.
Heinold Commodities, Inc., 766 F.2d 1007, 1015 (7th Cir.
1985). There is no question that Ariel Investments prevailed
with regard to a substantial part of the litigation. Indeed,
it was the prevailing party on all of its claims other than
the cybersquatting claim. Although the Court did not order
disgorgement of Ariel Capital's profits, it found that
Ariel Capital had infringed Ariel Investments' trademarks
and entered a permanent injunction in favor of Ariel
Investments, which was the main relief it sought.
trademark infringement case like this one, permanent
injunction against the alleged infringer represents a
substantial part of the litigation, because "damage to a
trademark holder's goodwill can constitute irreparable
injury for which the trademark owner has no adequate legal
remedy." Re/Max North Cent., Inc. v. Cook, 272
F.3d 424, 432 (7th Cir. 2001). Furthermore, the Court held
that the factors of similarity between marks, similarity in
services, similarity in area and manner of concurrent use
between plaintiff and defendant, the strength of
plaintiff's mark, and evidence of actual confusion all
weighed in favor of a finding of a likelihood of confusion
arising from Ariel Capital's use of the term Ariel.
Because Ariel Investments prevailed with regard to a
substantial part of the litigation, the Court concludes that
it is the prevailing party and is therefore entitled to
Costs relating to depositions
Investments requests taxation of costs totaling $11, 194.28
for deposition-related expenses, including transcript costs,
video costs, and witness fees. "Fees for printed or
electronically recorded transcripts necessarily obtained for
use in the case" are recoverable as costs under section
Capital does not object to $7, 903.53 of the requested
deposition-related costs. It argues, however, that the costs
relating to the depositions of Ms. Kosier and Mr. Bray exceed
what was reasonably necessary and should be reduced.
regard to Ms. Kosier's deposition, Ariel Investments
seeks to recover $3, 594.41. This represents a higher
per-page rate than the one approved by the Judicial
Conference, but Ariel Capital, which took the deposition,
chose the court reporter, and this is the rate that the
reporter charged Ariel Investments for a copy of the
deposition. Ariel Capital argues that the rate should be
reduced to what it paid- $2, 228.40-but it is undisputed that
Ariel Capital got a preferred rate from the court reporter
that was not available to Ariel Investments. When the party
that has to bear the costs chose the court reporter, it
cannot object to the rates the reporter charged. See
Montanez v. Simon, 755 F.3d 547, 558 (7th Cir. 2014)
("Several decisions from the Northern District of
Illinois sensibly suggest that [the limitation to Judicial
Conference-approved rates] does not ...