Esposito v. Information Technology Corporation of the Tr-States
- Vincent Briccetti
- 7:19-cv-02025
- U.S. District Court · Southern District of New York
- 6
Esposito v. Information Technology Corp., Judge Briccetti denied plaintiffs’ attorney-fee application after an ACPA jury win, finding the case was not exceptional.
The plaintiffs were denied their request for $96,106.83 in attorney fees. The defendants were not ordered to pay those fees. The opinion otherwise describes the jury’s liability findings and damages awards but does not change them.
What happened
In Esposito v. Information Technology Corp. of the Tri-States, a jury found the defendants liable under the Anticybersquatting Consumer Protection Act and for conversion. The plaintiffs received $9,000 in statutory damages on the anticybersquatting claim, plus damages on the conversion claim.
The plaintiffs asked for $96,106.83 in attorney fees under the federal trademark statute. The court ruled that choosing statutory damages did not prevent the plaintiffs from seeking fees, but explained that fees are available only in an “exceptional” case—one involving an unusually strong legal position or unreasonable litigation.
Judge Vincent L. Briccetti denied the fee application. He found that neither side litigated unreasonably or in bad faith, and that the evidence supporting the plaintiffs’ anticybersquatting claim was sufficient but not overwhelming. The defendants’ willful violation and the jury verdict therefore did not make the case exceptional.
The detailed version
- Esposito v. Information Technology Corporation of the Tr-States · No. 7:19-cv-02025
- Vincent Briccetti
- Nov. 21, 2022
Background
On October 26, 2022, a jury found all defendants liable on the plaintiffs’ claim under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), and on the plaintiffs’ conversion claim. The plaintiffs elected statutory damages under 15 U.S.C. § 1117(d), instead of actual damages and profits. The court awarded the plaintiffs $9,000 in statutory damages on the ACPA claim. The jury awarded $10,000 in compensatory damages and $6,000 in punitive damages on the conversion claim. The punitive-damages award was $2,000 against each of three defendants; the jury awarded no punitive damages against Fireworks Extravaganza, Inc.
The plaintiffs then applied for $96,106.83 in attorney fees under 15 U.S.C. § 1117(a). The defendants opposed the application.
Legal Standard
Section 1117(a) allows a court to award attorney fees to the prevailing party in an “exceptional” case. The court applied the standard from Octane Fitness, under which a case is exceptional if it stands out because of the strength of a party’s legal position or because the case was litigated unreasonably. Courts evaluate the total circumstances and may consider frivolousness, motivation, objective unreasonableness, compensation, and deterrence.
The court also addressed whether the plaintiffs’ election of statutory damages under Section 1117(d) barred them from requesting attorney fees under Section 1117(a). Relying on Second Circuit precedent, the court held that attorney fees may be available even when a plaintiff elects statutory damages. The plaintiffs therefore had not lost the ability to seek fees merely by making that election.
Application
The plaintiffs argued that the case was exceptional because the court had determined that the defendants’ violations were willful and because the jury returned a verdict for the plaintiffs. The court rejected that argument. Willful infringement alone does not automatically make a case exceptional.
The court found that neither side had litigated unreasonably. Although each side blamed the other for failing to resolve the lawsuit before trial, the court found no bad faith or intent to pursue frivolous litigation. The court also found that the record contained sufficient, but not overwhelming, evidence supporting the verdict on all elements of the ACPA claim. The defendants’ decision to litigate through trial therefore did not support a finding that the case was exceptional.
Disposition
Judge Vincent L. Briccetti denied the plaintiffs’ application for attorney fees. The opinion did not alter the jury’s liability findings or the damages awards; it ruled only on the plaintiffs’ request for attorney fees.
Read the full 6-page opinion on CourtListener, the free public archive maintained by the Free Law Project.