United States District Court, D. Nevada
M. NAVARRO, CHIEF JUDGE UNITED STATES DISTRICT JUDGE
before the Court is the Motion for Attorneys' Fees, (ECF
No. 59), filed by Defendant Consumer Opinion LLC
(“Defendant”). Plaintiff Abbey Dental Center,
Inc. (“Plaintiff”) filed a Response, (ECF No.
63), and Defendant filed a Reply, (ECF No. 67).
pending before the Court is the Motion for Determination as
to Entitlement to Costs and Attorneys' Fees, (ECF No.
71), filed by Defendant. Plaintiff filed a Response, (ECF No.
73), and Defendant filed a Reply, (ECF No. 74). For the
reasons discussed below, the Court DENIES
case arises out of Plaintiff's trademark dispute under
the Lanham Act, 15 U.S.C. §§ 1114, 1125, regarding
Plaintiff's registered trademark of “Abbey
Dental.” (First Am. Compl. (“FAC”)
¶¶ 9-10, ECF No. 28). On October 27, 2015,
Plaintiff filed its Complaint, (ECF No. 1), and on December
8, 2016, Plaintiff filed its First Amended Complaint.
Defendant filed Motions to Dismiss, (ECF Nos. 25, 30), for
both of Plaintiff's Complaints and alleged that
Plaintiff's suit is a Strategic Lawsuit Against Public
Participation (“SLAPP”) under Nevada Revised
Statute (“NRS”) § 41.635-70
(“Anti-SLAPP Statute”). (See, e.g., Sec.
Mot. to Dismiss 2:18-23, ECF No. 30). Additionally, Defendant
filed a Motion for Summary Judgment, (ECF No. 31).
20, 2017, Plaintiff filed a Motion to Dismiss without
Prejudice Pursuant to Federal Rule of Civil Procedure
(“FRCP”) 41(a). (ECF No. 48). Plaintiff sought to
dismiss its own action because it was “no longer
financially practicable to continue prosecuting this
matter.” (Pl.'s Mot. to Dismiss 2:9, 2:21). On
August 10, 2017, the Court granted Plaintiff's Motion to
Dismiss and dismissed the case without prejudice.
(See Order 6:5-6, ECF No. 51) (hereinafter
same day, Defendant filed a Motion to Alter or Amend
Judgment, (ECF No. 54), where Defendant requested
clarification on whether it can file a motion for
attorneys' fees. On November 19, 2017, the Court granted
Defendant's Motion and allowed it to file a separate
motion for attorneys' fees. Defendant now has two pending
Motions for Attorneys' Fees before the Court, (ECF Nos.
protect a defendant's interests when a dismissal is
without prejudice, a court can condition a dismissal upon the
payment of “appropriate costs and attorney fees.”
Westlands Water Dist. v. United States, 100 F.3d 94,
97 (9th Cir. 1996). However, the “[i]mposition of costs
and fees as a condition for dismissing without prejudice is
not mandatory.” Id.; accord. Stevedoring
Servs. of Am. v. Armilla Intern. B.V., 889 F.2d 919, 921
(9th Cir. 1989). Further, the Ninth Circuit has held that
“Fed. R. Civ. P. 41(a)(2) in itself is not
‘specific statutory authority' for the imposition
of sanctions against an attorney.” Heckethorn v.
Sunan Corp., 992 F.2d 240, 242 (9th Cir. 1993).
the presumption that an attorney is generally not liable for
fees unless that prospect is spelled out, it would be
incongruous to conclude from the broad language of
Fed.R.Civ.P. 41(a)(2) that an attorney could be sanctioned by
authority of this rule alone.” Id. at 242;
see also Int'l Union of Petroleum & Indus.
Workers v. Western Indus. Maintenance, Inc., 707 F.2d
425, 428 (9th Cir. 1983) (“[A]bsent contractual or
statutory authorization, a prevailing litigant ordinarily may
not collect attorneys' fees.”). Thus, the district
court must have an independent basis to impose fees and costs
as a condition of voluntary dismissal. Heckethorn,
922 F.2d at 242.
argues that it is entitled to $69, 912.50 in attorneys'
fees pursuant to 15 U.S.C. § 1117(a) (“Lanham
Act”) and Nevada Revised Statute (“NRS”)
§ 47.670(1)(a). (See Mot. for Att'ys'
Fees 8:11-15, ECF No. 59); (see also Mot. for
Determination as to Entitlement to Costs and Att'ys'
Fees (“Mot. for Det.”) 1:24-26, ECF No. 71). The
Court will address each in turn.
15 U.S.C. § 1117(a), a court may award reasonable
attorneys' fees to the prevailing party in
“exceptional cases.” Gracie v. Gracie,
217 F.3d 1060, 1068 (9th Cir. 2000) (quoting 15 U.S.C. §
1117(a)). While the statute does not define the term
“exceptional, ” generally a trademark case is
exceptional when the court finds that the defendant acted
maliciously, fraudulently, deliberately, or willfully.
Earthquake Sound Corp. v. Bumper Indus., 352 F.3d
1210, 1216 (9th Cir. 2003); Rio Props., Inc. v. Rio
Int'l Interlink, 284 F.3d 1007, 1023 (9th Cir. 2002)
(upholding an award of attorneys' fees under §
1117(a) based on finding that defendant acted
“knowingly, maliciously, and oppressively, and with
intent to . . . injure”). Exceptional circumstances
further include when “a plaintiff's case is
groundless, unreasonable, vexatious, or pursued in bad
faith.” Interstellar Starship ...