Intellectual Property Law

Ninth Circuit Affirms Award of Fees to World Triathlon Corporation

By Michael Atkins

In 2006, the District of Hawaii granted summary judgment in favor of World Triathlon Corporation on its trademark infringement claims against John Dunbar and a number of other individual defendants doing business as the “Hawaiian Ironman Triathlon Organizing Committee.” The court found the case was exceptional and awarded the plaintiff $161,147.05 in attorney’s fees.

Pro se defendants John Dunbar and Archie Hapai appealed.

On April 2, the Ninth Circuit dismissed Mr. Hapai’s appeal because he did not sign his notice of appeal. It affirmed the district court’s award of fees on the merits against Mr. Dunbar. 

The Ninth Circuit found: “The district court properly determined that this case is ‘exceptional’ under 15 U.S.C. § 1117(a), because the record shows that Dunbar’s infringement was ‘willful and deliberate, and therefore, sufficient to justify an award of attorneys’ fees.’ Horphag Research Ltd. v. Pellegrini, 337 F.3d 1036, 1042 (9th Cir. 2003); see Earthquake Sound Corp. [v. Bumper Indus.,] 352 F.3d [1210] at 1042 [(9th Cir. 2003)](affirming award of attorneys’ fees under section 1117(a) because the infringement ‘was not a particularly close case’ and defendant ‘did not establish that it took reasonable measures … to investigate possible infringement liability’ when it had reason to believe that it may have been infringing on a trademark). Moreover, the district court did not abuse its discretion in awarding attorneys’ fees once it determined that the case was ‘exceptional.’ See Horphag Research, 337 F.3d at 1042 (affirming award of attorneys’ fees where ‘[t]he district court’s findings regarding … trademark infringement [we]re supported fully by the record’ and there was no indication that the district court ‘committed a clear error of judgment in awarding’ the fees).

The case cite is World Triathlon Corp. v. Hapai, Nos. 08-16470, 08-16475, 2009 WL 890911 (9th Cir.) (April 2, 2009). 

Full post as published by Seattle Trademark Lawyer on April 09, 2009 (boomark / email).