Hypnotic Hats, Ltd. v. Wintermantel Enterprises LLC
- Andrew Carter
- 1:15-cv-06478
- U.S. District Court · Southern District of New York
- 15
In Hypnotic Hats v. Wintermantel, Judge Carter denied attorney’s fees and granted the costs appeal in part and denied it in part, awarding Defendants $3,088.50.
The ruling affected Wintermantel Enterprises, LLC, Hype Socks, LLC, and Hype Cheer, LLC by denying their attorney’s-fee request, partially changing the Clerk’s cost award, and awarding them $3,088.50 in costs; it limited the costs Hypnotic Hats, Ltd. had to pay.
What happened
Hypnotic Hats, Ltd. v. Wintermantel Enterprises, LLC, Hype Socks, LLC, and Hype Cheer, LLC involved Hypnotic Hats’ claims that Defendants’ HYPE marks infringed its HYP trademark. The court had previously entered summary judgment for Defendants on all claims.
Defendants asked for $77,046.45 in attorney’s fees and appealed the Clerk’s award of $2,805.00 in costs. The court denied attorney’s fees because Hypnotic Hats’ claims were not frivolous or objectively unreasonable and there was no showing of bad faith or a need for deterrence. The court allowed some additional deposition costs but rejected costs that were duplicative, inadequately documented, or unpaid by Defendants.
Judge Andrew L. Carter, Jr. denied Defendants’ attorney’s-fee motion and granted their costs appeal in part and denied it in part. He affirmed the Clerk’s taxation in part, reversed it in part, and awarded Defendants $3,088.50 in costs.
The detailed version
- Hypnotic Hats, Ltd. v. Wintermantel Enterprises LLC · No. 1:15-cv-06478
- Andrew Carter
- Mar. 26, 2020
Background
Hypnotic Hats, Ltd. sued Wintermantel Enterprises, LLC, Hype Socks, LLC, and Hype Cheer, LLC, alleging federal trademark infringement, federal unfair competition and false designation of origin, and common-law unfair competition. Hypnotic Hats alleged that Defendants’ HYPE SOCKS and HYPE CHEER marks infringed its HYP trademark.
The court previously granted Defendants’ summary-judgment motion on all claims. It held that Hypnotic Hats had a valid, protectable trademark, but found no triable infringement issue concerning HYPE SOCKS after applying the multi-factor likelihood-of-confusion test. As to HYPE CHEER, the court concluded that infringement was impossible because Hypnotic Hats did not use the HYP mark in connection with its athletic bras.
After judgment closed the case, Defendants sought $77,046.45 in attorney’s fees under the Lanham Act and related procedural rules. They also sought $14,639.03 in taxable costs. The Clerk awarded $2,805.00 in costs, and Defendants asked the court to review that taxation.
Attorney’s Fees
The Lanham Act permits attorney’s fees in an “exceptional” case. The court applied the totality-of-the-circumstances approach, considering factors including whether the claims were frivolous, objectively unreasonable, improperly motivated, or pursued in a way requiring deterrence.
The court denied Defendants’ attorney’s-fee motion. It found that Hypnotic Hats’ claims were not frivolous because they involved a valid, incontestable trademark and legal theories with a basis in law. The claims were also objectively reasonable. The likelihood-of-confusion analysis involved multiple factual factors, and Hypnotic Hats had colorable arguments concerning similarity, market overlap, and two instances of temporary confusion. Although the HYPE CHEER claim was weak because Hypnotic Hats did not use the HYP mark on its bras, Hypnotic Hats presented some evidence that the mark appeared in magazines and possibly on packaging. The court also found no evidence of bad faith, improper motivation, or a need to deter Hypnotic Hats.
Costs
The court reviewed the Clerk’s cost award without deference. It affirmed or rejected individual costs as follows:
- Pro hac vice admission: The court affirmed the $200.00 award for admission of Defendants’ lead counsel because the fee was a taxable clerk’s fee. - Joshua Wintermantel deposition: The court affirmed $1,557.50 for the original transcript. It rejected additional minimum-transcript, condensed-transcript, and digital-transcript costs as unnecessary or inadequately supported. - Wintermantel Enterprises, LLC deposition: The court awarded $283.50 for the original transcript because the deposition transcript had been filed and therefore had been used for purposes of the summary-judgment proceeding. It rejected the $30.00 condensed-transcript charge. - Anthony Garber and Hype Cheer, LLC depositions: The court affirmed awards of $774.50 and $273.00 for the original transcripts, respectively, and rejected the digital- and condensed-transcript charges. - Howard Levy deposition: The court affirmed the Clerk’s $0 award. Defendants had initially double-counted the cost and did not provide adequate documentation with their original request. - Dr. Melissa Pittaoulis deposition: The court affirmed the Clerk’s $0 award because Defendants’ documentation was inadequate and the requested amount exceeded the actual itemized transcript and video charges, apparently because of late-payment interest. - Dr. Melissa Pittaoulis witness fees: The court affirmed the Clerk’s $0 award because Defendants had not paid the fees and Hypnotic Hats had paid the invoice. Awarding those costs to Defendants would have created an unfair windfall.
Disposition
Judge Andrew L. Carter, Jr. denied Defendants’ Motion for Attorney’s Fees. He granted Defendants’ Motion to Appeal the Clerk’s Taxation of Costs in part and denied it in part. The court’s conclusion states that the Clerk’s Taxation of Costs was affirmed in part and reversed in part, and that Defendants were awarded $3,088.50 in costs.
Read the full 15-page opinion on CourtListener, the free public archive maintained by the Free Law Project.