Election of Statutory Damages Did Not Preclude Attorneys' Fee Award in Louis Vuitton Counterfeit Trademark Case
Louis Vuitton sued defendants for trademark counterfeiting and infringement under the Lanham Act and the district court awarded it $3 million in statutory damages and more than $500,000 in attorneys' fees.
On appeal, defendants argued, in part, that by electing to receive statutory damages under 15 U.S.C. 1117(c), Louis Vuitton waived its ability to receive an attorneys' fee award because subsection (c), unlike subsections (a) and (b), did not explicitly provide for such an award.
Subsection (a) provides that a plaintiff may be entitled "to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action." 15 U.S.C. 1117(a). The last sentence in subsection (a) states that the "court in exceptional cases may award reasonable attorney fees to the prevailing party."
Subsection (c), dealing with the use of counterfeit marks, provides that the plaintiff may elect to recover statutory damages "instead of actual damages and profits under subsection (a)[.]" No explicit mention is made to an award of attorneys' fees (or costs for that matter).
Acknowledging that district courts had gone both ways on the issue (and in some cases have simply avoided explicitly answering the question) and noting that the Ninth Circuit had explicitly identified but not answered this specific question, the Second Circuit ultimately concluded that an election of statutory damages under subsection (c) did not preclude an award of attorneys' fees in "exceptional cases" under subsection (a).
The case cite is Louis Vuitton Malletier S.A. v. LY USA, Inc., Docket No. 08-4483-cv(L) (2d Cir. March 29, 2012).