On Monday, the Sixth Circuit hinted that the Supreme Court's decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., No. 12-1184, 572 U.S. ___ (2014), which evaluated the Patent Act's fee shifting provision, may apply to trademark cases brought under the Lanham Act. Slep-Tone Entm't Corp. v. Karaoke Kandy Store, Inc., et al., No. 14-3117 (6th Cir. Apr. 6, 2015).
In Octane Fitness, the Court found that "an 'exceptional' case [for purposes of shifting fees under the Patent Act] is simply one that stands out from others with respect to the substantive strength of a party's litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated." The Court's decision overturned a prior Federal Circuit decision (Brooks Furniture Mfg., Inc. v. Dutailier Int'l, Inc.), which provided a much more rigid framework for assessing whether to shift fees under §285 of the Patent Act.
Fast-forward one year. In Slep-Tone, the Sixth Circuit remanded a trademark infringement case to the United States District Court for the Northern District of Ohio (Cleveland) to "assess the applicability of Octane Fitness before determining whether it is necessary to reassess if the case qualifies as extraordinary under §1117(a) [of the Lanham Act]." The appellate court's guidance is clear: "The fee shifting provisions in 285 and 1117(a) are identical. And statutes using the same language should generally be interpreted consistently." (Internal citations omitted.)
Despite the Sixth Circuit's clarity, it is yet to be seen whether the District Court will (1) apply the Octane Fitness standard to a Lanham Act case; and (2) if applied, whether "exceptional circumstances" warrant fee shifting here. This case is one to keep an eye on.