Northern District of Texas Blog

On January 3, 2013, Judge Ferguson issued four rulings, denying defendants’ motion for taxable costs (ruling available here), motion for attorney’s fees (copyright claim) (ruling available here), motion for attorney’s fees (trademark claim) (ruling available here), and motion relating to adverse expert deposition fees (ruling available here).

In denying defendants’ cost motion, Judge Ferguson noted that, although there is a strong presumption that the prevailing party will be awarded costs, courts have been justified in withholding costs from a prevailing party for a wide range of reasons. In this instance, the court withheld costs because of unprofessional behavior. For example, defendants’ counsel, without permission, “turn[ed] Plaintiff’s exhibits so that the jury could not see them as . . . Plaintiff’s counsel[] questioned his witness.” The court had to instruct defendants’ counsel “to never touch opposing counsel’s exhibits without permission.”

The court was also required “to issue several corrective jury instructions throughout the trial because of improper arguments and failure to follow the rules of evidence and procedure.” For example, defendants’ counsel “[went] to the edge of propriety sometimes seeming to suggest that the jury search the Internet and go to stores to see how many other companies selling the products in which the plaintiff asserted trade dress rights.” Judge Ferguson had to remind the jury members several times that they were not permitted to conduct independent investigations into the case. Defendants’ counsel also displayed an unredacted personal tax return to the jury although it was not admitted into evidence. The court also had to verbally sanction defendants’ counsel for arguing with the court regarding an evidentiary ruling.

Judge Ferguson found that the misconduct was sufficient to overcome the presumption that defendants, as the prevailing parties, should be awarded taxable costs.

In denying the defendants’ attorneys fees motion (for copyright claims), Judge Ferguson found that, although the plaintiff withdrew its copyright infringement claims, “Defendants’ argument would require the court to find that a party prevails at the opposing party withdraws a copyright claimant any point after the litigation has been initiated.” In this instance, “[d]iscovery was still in the very early stages and there was still time under the court’s scheduling order for the parties to amend. There were no motions to dismiss filed or any threat of an adverse judgment. Therefore, the court cannot find that the Plaintiff withdrew its claims to avoid an unfavorable judgment. Because the court finds that there was no object to or subjective threat of an unfavorable judgment at the time the Plaintiff withdrew its copyright claims, the court finds that Defendants have not established prevailing party status at the time Plaintiff voluntarily withdrew its copyright claims.”

Judge Ferguson denied defendants’ motion for attorney’s fees related to plaintiff’s trademark claims as well. Defendant sought approximately $560,000 in attorney’s fees, and claimed that attorney’s fees should be awarded because the case was “exceptional.” Judge Ferguson disagreed, as he found no evidence of the case having been litigated in bad faith.

Finally, defendants’ motion for adverse experts’ deposition fees involved defendants seeking to recover the fees defendants paid to plaintiff’s experts for preparing and participating in depositions. The court found that the defendants had agreed to pay the expert fees up front, and that the defendants were not justified in seeking to recover a portion of such fees after trial. Specifically, Judge Ferguson held that the payment of fees by the defendants in this case did not constitute “manifest injustice.”