United States District Court, D. New Jersey
KEVIN MCNULTY, District Judge.
The plaintiff, Tina Renna, who prevailed in a trademark declaratory judgment action, seeks an award of attorneys' fees from the defendant, the County of Union, New Jersey. Renna brought suit against Union County seeking a declaratory judgment that her use of the county seal on her localaccess television program did not violate trademark law. She also alleged that the County's assertion of trademark rights against her would constitute a First Amendment violation. In a prior opinion, I granted summary judgment for Renna. (Dkt. No. 32) Familiarity with that opinion is assumed.
Renna seeks attorneys' fees under both the Lanham Act and the Civil Rights Act. United States Magistrate Judge Michael A. Hammer issued a Report and Recommendation awarding attorneys' fees to Renna under the Lanham Act, but reduced the dollar amount requested. Judge Hammer found that this matter qualified as an "exceptional case" under the Lanham Act in that there was an unusually large discrepancy between the strengths of the arguments of the prevailing and losing parties. Both Renna and the County filed objections to Judge Hammer's Report and Recommendation. I will adopt Judge Hammer's Report and Recommendation with respect to the award of fees under the Lanham Act.
Facts as Procedural Background
Renna hosts a public access television program called "Union County Citizen's Forum." (Opinion,  1). The show displays an on-air a graphic illustration depicting the Seal of the County of Union with a spotlight shining on it. The illustration is meant to portray the show as casting a critical light on the workings of the Union County Board of Chosen Freeholders. (Opinion, 1) Union County issued Renna two cease and desist letters asserting that her use of the Seal violated federal and state trademark law. (Id. at 6, 7) The local television station then refused to run Renna's show unless she signed an agreement of indemnity.
Renna brought suit in this Court seeking a declaratory judgment that the County had no trademark rights in the seal, and that her use of the seal did not violated trademark law. Renna also alleged that the County's assertion of trademark rights against her would violate her First Amendment rights. (Opinion, 2) At the summary judgment stage, I ruled that the Seal was not eligible for trademark protection, and that Renna's use of the seal did not violate trademark law. (Opinion, 15) Those findings rendered the First Amendment issue moot; I therefore did not rule on it. (Id. at 19)
Renna filed a motion for attorneys' fees. She argued that she was entitled to attorneys' fees under both trademark law and civil rights laws, 15 U.S.C. § 1117(a) and 42 U.S.C. § 1988. (Dkt. No. 34) The County opposed the motion. United States Magistrate Judge Michael A Hammer issued a Report and Recommendation to the effect that Renna should recover fees under the Lanham Act. The Lanham Act provides that a prevailing party may recover attorneys' fees from the other side "in exceptional cases." 15 U.S.C. § 1117(a). Pursuant to the Third Circuit's decision in Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 314 (3d Cir. 2014), Judge Hammer explained that a case is "exceptional" where either: 1) "There is an unusual discrepancy in the merits of the positions taken by the parties, " or 2) "the losing party has litigated the case in an unreasonable manner." (R&R, 12, citing Fair Wind, 764 F.3d at 315)
Judge Hammer found that there was an unusual discrepancy in the merits of the positions taken by the County and Renna. The County, Judge Hammer said, had asserted trademark rights that it knew, or should have known, did not exist. (R&R, 14). It had relied on federal and state trademark law, neither of which provide trademark protection to the "insignia" of a municipality. (Id. at 15) Attorneys' fees, he therefore found, were appropriate.
Judge Hammer found that the hourly rates that plaintiff's counsel requested were reasonable. ( R&R, 17-18) He likewise found the time counsel spent preparing the complaint and the summary judgment motion to be reasonable. (Id. at 18-19) He found, however, that the time that counsel expended in preparing its attorneys' fee motion was unreasonably high. (Id. at 20-22) He recommended that plaintiffs counsel be awarded just over one-half of the fee they requested for the preparation of the motion for attorneys' fees. (Id. at 21-22)
Judge Hammer held that fees were not appropriate under the fee-shifting provision of the Civil Rights Act, because Renna did not prevail on her constitutional claims. 42 U.S.C. § 1988. (R&R, 10-11)
In total, plaintiffs counsel had requested fees of $45, 295 and costs of $550.65. (R&R, 5) Judge Hammer recommended that I award counsel fees of $39, 535 and costs of $550.65.
The County and Renna have each filed an objection to Judge Hammer's Report and Recommendation. The County argues that this case is not exceptional, and that therefore attorneys' fees are not appropriate. (County Obj., 2) Renna does not challenge Judge Hammer's rulings with respect to the Lanham Act (including his recommendation to reduce the fee award). Renna asserts what amounts to a backstop argument: that if I deny attorneys' fees under the Lanham Act, I should nonetheless find that they are available under the Civil Rights Act. (Renna Obj., 2)
I. Attorneys' fees under the ...