Arlington-based language-learning software developer Rosetta Stone has filed a trademark infringement suit against Google in the United States District Court for the Eastern District of Virginia. "Rosetta Stone said in the lawsuit that when other firms buy Rosetta Stone's trademarks for keyword searches, ads for their own Web sites appear and unfairly mislead people into thinking they are going to the Arlington firm's site. Some of the company's trademarks include 'Rosetta Stone,' "global traveler,' 'language library,' and 'dynamic immersion.'"
In Flexible Benefits Council v. Feltman, 2009 WL 1351653 (E.D.Va. 2009), the Court granted Plaintiff's request for an award of statutory damages, attorney's fees, and costs based on Defendants' misconduct under 15 U.S.C. 1125(a)(the Lanham Act) and 15 U.S.C. 1125(d)(the Federal Anticybersquatting Consumer Protection Act). The Court awarded costs under 15 U.S.C. 1125(a)(3), attorney's fees under 15 U.S.C. 1117(a),and $20,000 in statutory damages under 15 U.S.C. 1125(d). The award of costs and attorney's fees was based on the fact that Defendants' conduct rose to the level of exceptional circumstances showing both willful and deliberate infringement and bad faith, and that such an award was within the Court's discretion given the circumstances.
Plaintiff The Flexible Benefits Council was incorporated in 1981 as "Employers Council on Flexible Compensation," a non-profit which promoted flexible benefits compensation programs through lobbying. Defendant Feltman was responsible for Plaintiff's management and operations between 1985 and July 2007. Feltman purposefully let Plaintiff’s corporate charter lapse in retaliation for Plaintiff’s allegations that Feltman had stolen millions from it. Feltman did not inform Plaintiff of this until March 31, 2008, after which Feltman and Defendant Hawk had formed a new company called "Employers Council on Flexible Compensation, Ltd.", applied to the United States Patent & Trademark Office for marks identical to those of Plaintiff, and set up a website at ecfc.com which was nearly identical to Plaintiff’s. Plaintiff filed for reinstatement on April 10, 2008 but was unable to reinstate under its former name and instead chose “The Flexible Benefits Council” although it kept its old website, “ecfc.org.” Plaintiff sued Defendants on a number of legal theories. Defendants admitted liability for trademark infringement and cybersquatting which left the Court to decide Plaintiff’s requests for two of the types of damages available: attorney’s fees and costs, and statutory damages.
15 U.S.C. 1117(a) provides for the possibility of an award of attorney’s fees to the prevailing party “in exceptional cases.” “An ‘exceptional case’ warranting attorney's fees is one that involves malicious, fraudulent, willful or deliberate conduct.” Flexible Benefits Council v. Feltman, 2009 WL 1351653, *3 (E.D.Va. 2009) (citing Scotch Whisky Ass'n v. Majestic Distilling Co., 958 F.2d 594, 599 (4th Cir.1991) cert. denied, 506 U.S. 862 (1992)). “Such conduct can occur during the infringement itself or during the course of litigation regarding the infringement.” Id.at *4.
The Fourth Circuit has a slightly higher standard for attorney’s fees than other circuits and also requires bad faith on the defendant’s part for an award of attorney’s fees. Id. at *3. Once a determination of exceptional circumstances is made, the court then has discretion to determine “whether awarding attorney’s fees is warranted given the circumstance of the case.” Id. After thoroughly examining Defendants’ conduct both during the infringement and during the litigation, the Court found that this was an exceptional case in which Defendants’ demonstrated willful and deliberate misconduct and bad faith and that in the Court’s discretion, the circumstances of the case weighed in favor of an award of attorney’s fees.
In Wynn v. Wachovia Bank, N.A., 2009 WL 1255464 (E.D. Va. 2009), the United States District Court for the Eastern District of Virginia was faced with a case in which a Wachovia Bank employee (who was also a Wachovia customer) was terminated based on allegations of issuing an invalid check on her Wachovia personal checking account, abandoning her employment at Wachovia when the invalid check was brought to her attention, and using unauthorized paid time off (PTO). Plaintiff, Ms. Kimberly W. Wynn, denied the allegations, instead alleging she knew nothing about the invalid check and only took PTO at the direction of her supervisor while the matter involving the invalid check was resolved. According to Plaintiff, while she was awaiting Wachovia’s resolution of the invalid check, she was terminated.
Plaintiff filed suit based on allegations of defamation and breach of fiduciary duty, among other theories. More specifically, the defamation allegation was based on alleged internal statements to bank employees involving the invalid check, abandonment of her employment, and use of unauthorized PTO. Plaintiff’s Complaint also alleged that she would be compelled to “self-publish” Wachovia’s allegedly defamatory accusations to future employers during employment interviews. Wachovia moved to dismiss the defamation claim on ground that failed to plead facts supporting a publication of the alleged defamatory statements. The Court granted Wachovia’s Motion and rejected Plaintiff's claim of defamation, refusing to accept the relatively new theory of “compelled self-publication” as sufficient publication to support a defamation claim.
Fed. R. Civ. 45(b)(2) provides that a federal subpoena "may be served at any place: (A) within the district of the issuing court; (B) outside that district but within 100 miles of the place specified for the deposition, hearing, trial, production, or inspection; (C) within the state of the issuing court if a state statute or court rule allows service at that place of a subpoena issued by a state court of general jurisdiction sitting in the place specified for the deposition, hearing, trial, production, or inspection; or (D) that the court authorizes on motion and for good cause, if a federal statute so provides." Now, there is an online tool that can assist attorneys in determining the reach of a federal subpoena.
Free Map Tools offers its free Radius Around Point Tool, which permits a user to enter a location and a radius (in miles or kilometers) and obtain a map showing a shaded circle showing those locations within the stated radius around the starting point. Attorneys can use the tool to determine (albeit, roughly) which cities and towns are within 100 miles of the place "specified in the subpoena for the deposition, hearing, trial, production, or inspection," under Fed. R. Civ. 45(b)(2)(B).
The maps are created using Google Maps. Given the fact that some courts have relied a similar map website, Mapquest, to establish distance and travel time between two points, the information obtained from the Radius Around Point Tool may actually be admissible to establish the reach of a federal subpoena.
Thanks to @jasnwilsn on Twitter for pointing out this possible use of the Radius Around Point Tool.
In Fells v. Virginia Dep’t of Trans., 2009 WL 866178 (E.D. Va. 2009), Plaintiff Frankie Fells, Sr., sued his former employer, defendant Virginia Department of Transportation, claiming unlawful discrimination against him on the basis of race, in violation of 42 U.S.C. § 2000e, et seq. On October 28, 2008, the Rocket Docket issued a memorandum final order granting defendant's motion for summary judgment, based on the applicable statute of limitations. The Court denied plaintiff's motion for reconsideration.
On November 4, 2008, defendant submitted a bill of costs, to which plaintiff objected on November 18, 2008. Defendant responded to the objection on November 25, 2008. On February 11, 2009, the Clerk issued a notice of taxing costs, and on February 23, 2009, the Clerk taxed costs in the amount of $1,739.60 against plaintiff. This amount included costs for depositions and copies of medical records, which were not contested. Defendant then filed a Motion for Costs asking the Court to review the Clerk's denial of costs in the amount of $15,741.50, which defendant paid for processing electronic data. Specifically, defendant paid this amount to a contractor for “electronic records initial processing, Metadata extraction, [and] file conversion.” These efforts were the first steps to creating a database that would facilitate discovery, but defendant abandoned the project after plaintiff did not provide terms to limit the scope of the data. Defendant sought to recover those initial electronic processing costs by claiming that they were taxable expenses under 28 U.S.C. § 1920(4), specifically comparing such costs to the expressly recoverable costs of copying and exemplification of records.
Section 1920 provides that “[a] judge or clerk of any court of the United States may tax as costs ... [f]ees for exemplification and the costs of making copies of any materials where the copies are necessarily obtained for use in the case [.]” While the Fourth Circuit has not addressed whether taxable expenses include electronic methods of exemplifying and copying documents, the Court noted that the Sixth Circuit has held that “electronic scanning and imaging could be interpreted as ‘exemplification and copies of papers.’” BDT Products, Inc., 405 F.3d at 419-20 (finding no abuse of discretion in the distract court's taxing of copying costs based on electronic scanning and imaging); see also Brown v. McGraw Hill Cos., Inc., 526 F.Supp.2d 950, 959 (N.D.Iowa 2007) (holding that “electronic scanning of documents is the modern-day equivalent of ‘exemplification and copies of paper,’ and therefore, can be taxed pursuant to § 1920(4).”).
The Court however concluded that even if it adopted the Sixth Circuit's analysis, defendant did not claim the expenses for electronic scanning of documents. Instead, defendant sought the costs of “electronic records initial processing, Metadata extraction, [and] file conversion.” As noted by the Court, scanning or imaging of documents converts a paper document into an electronic document. By contrast, defendant employed techniques that create electronically searchable documents and the Court refused to extend the definition of recoverable costs to include the costs of creating electronically searchable documents, as opposed to reproducing paper documents in electronic form.