FLIR Systems, Inc. v. Sierra Media, Inc. et al, No. 3:2010cv00971 - Document 463 (D. Or. 2013)

Court Description: OPINION AND ORDER: Fluke Corporation's redaction request 422 is DENIED; Sierra Media Inc.'s motion 431 for attorney's fees under § 1117(a) is DENIED; Fluke Corporation's motion 433 re: post-trial issues is GRA NTED in part and DENIED in part; and FLIR System Inc.'s motion 435 for post-trial relief, judgment as a matter of law, or alternatively, for a new trial, is GRANTED in part and DENIED in part. Signed on 8/8/13 by Magistrate Judge Dennis J. Hubel. (kb)

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FLIR Systems, Inc. v. Sierra Media, Inc. et al Doc. 463 1 2 3 4 5 6 7 UNITED STATES DISTRICT COURT 8 DISTRICT OF OREGON 9 PORTLAND DIVISION 10 11 12 FLIR SYSTEMS, INC., an Oregon corporation, 13 Plaintiff, 14 v. 15 SIERRA MEDIA, INC., a Washington 16 corporation, and FLUKE CORPORATION, a Washington corporation, 17 Defendants. 18 No. 3:10-cv-00971-HU OPINION AND ORDER 19 COUNSEL 20 Devon Zastrow Newman, Schwabe, Williamson & Wyatt P.C., Portland, 21 Oregon, for Plaintiff FLIR Systems, Inc. 22 William A. Brewer III, John W. Bickel II, Michael J. Collins and Robert M. Millimet, Bickel & Brewer, Dallas, Texas, for Plaintiff 23 FLIR Systems, Inc. 24 Kenneth R. Davis II and Parna A. Mehrbani, Lane Powell P.C., Portland, Oregon, for Defendant Fluke Corporation. 25 Dane H. Butswinkas and Matthew V. Johnson, Williams & Connolly LLP, 26 Washington, District of Columbia, for Defendant Fluke Corporation. 27 Benjamin N. Souede and David H Angeli, Angeli Law Group LLC, Portland, Oregon, for Defendant Sierra Media, Inc. 28 Page 1 - OPINION AND ORDER Dockets.Justia.com 1 HUBEL, Magistrate Judge: 2 If ever there were a case where the Court hoped that the 3 parties [would just decide] to chill, Mattel, Inc. v. MCA 4 Records, Inc., 296 F.3d 896, 908 (9th Cir. 2002), this would be it. 5 Indeed, it is an understatement to say that this case has been 6 hotly contested, or that there is some animosity between the two 7 business competitors involved. The parties have had a multitude of 8 disagreements long before this case, and their contentious 9 relationship resulted in protracted litigation here and acrimonious 10 discovery disputes. Tit-for-tat arguments were raised at every 11 conceivable opportunity. Conferral did not always occur. At one 12 point, the Court was compelled to remind counsel to be courteous 13 and professional in their dealings with one another. And the 14 kitchen-sink approach to trial, offering every conceivable piece of 15 evidence and raising as many objections as possible, led to 16 laborious, seemingly never-ending pretrial sessions to resolve the 17 raft of unfocused issues raised by the parties. To adapt an old 18 saying, Too many lawyers spoil the case. 19 In December 2012, the Court conducted a nine-day jury trial on 20 Plaintiff FLIR System, Inc s ( FLIR ) claim of false advertising 21 and on Defendant Fluke Corporation s ( Fluke ) counterclaims of 22 false advertising (six counts), trademark infringement, and unfair 23 competition. The jury returned a verdict in favor of FLIR on its 24 false advertising claim and awarded $103,000 in damages. The jury 25 also returned a verdict in favor of Fluke on all but three counts 26 of false advertising and awarded $4,136,975 in damages. In January 27 and February 2013, the parties filed the following post-trial 28 motions which are now before the Court: (1) Fluke s redaction Page 2 - OPINION AND ORDER 1 request; (2) Defendant Sierra Media s ( Sierra ) motion for an 2 award of attorney s fees pursuant to 15 U.S.C. § 1117(a); (3) 3 Fluke s motion re: post-trial issues; and (4) FLIR s motion for 4 post-trial relief, judgment as a matter of law, or alternatively, 5 for a new trial. I. LEGAL STANDARD 6 7 A. Judgment as a Matter of Law 8 Under Federal Rule of Civil Procedure ( Rule ) Rule 50(b), a 9 party who has moved for judgment as a matter of law ( JMOL ) at the 10 close of all the evidence may renew the motion after entry of 11 judgment. Fed. R. Civ. P. 50(b). However, [a] party cannot raise 12 arguments in its post-trial motion for judgment as a matter of law 13 under Rule 50(b) that it did not raise in its pre-verdict Rule 14 50(a) motion. Freund v. Nycomed Amersham, 347 F.3d 752, 761 (9th 15 Cir. 2003). 16 When considering a Rule 50(b) motion, the court must view the 17 evidence in the light most favorable to the nonmoving party, and 18 all reasonable inferences must be drawn in favor of that party. 19 Horphag Research, Ltd. v. Pellegrini, 337 F.3d 1036, 1040 (9th Cir. 20 2003). Judgment as a matter of law is proper when the evidence 21 permits only one reasonable conclusion and the conclusion is 22 contrary to that reached by the jury. Ostad v. Oregon Health 23 Scis. Univ., 327 F.3d 876, 881 (9th Cir. 2003). Because the court 24 may not substitute its view of the evidence for that of the jury, 25 it neither 26 evidence. makes credibility determinations, nor weighs the Costa v. Desert Palace, Inc., 299 F.3d 838, 859 (9th 27 Cir. 2002), aff d, 123 S. Ct. 2148 (2003). Indeed, the court must 28 disregard all evidence favorable to the moving party that the jury Page 3 - OPINION AND ORDER 1 is not required to believe. Reeves v. Sanderson Plumbing Prods., 2 Inc., 530 U.S. 133, 151 (2000). 3 B. New Trial 4 The court may grant a new trial for any of the reasons for 5 which new trials have heretofore been granted. FED. R. CIV. P. 59. 6 Those reasons include when the verdict is contrary to the clear 7 weight of the evidence, or is based upon evidence which is false, 8 or to prevent, in the sound discretion of the trial court, a 9 miscarriage of justice. Silver Sage Partners, Ltd. v. City of 10 Desert Hot Springs, 251 F.3d 814, 819 (9th Cir. 2001) (quoting 11 United States v. 4.0 Acres of Land, 175 F.3d 1133, 1139 (9th Cir. 12 1999)). While 13 credibility of the the trial court witnesses, may the weigh court is the evidence and not justified in 14 granting a new trial merely because it might have come to a 15 different result from that reached by the jury. Roy v. 16 Volkswagen of Am., Inc., 896 F.2d 1174, 1176 (9th Cir. 1990) 17 (quoting Wilhelm v. Associated Container Transp. (Australia) Ltd., 18 648 F.2d 1197, 1198 (9th Cir 1981)). II. DISCUSSION 19 20 A. Sierra s Entitlement to Fees 21 Sierra has moved for an award of attorney s fees based on the 22 Court s conclusion at the summary judgment stage that FLIR lacked 23 prudential standing to sue Sierra for false advertising under the 24 Lanham since they are not competitors. FLIR opposes Sierra s 25 motion for attorney s fees on the grounds that (1) Sierra is not 26 entitled to fees under the applicable legal standard, (2) FLIR had 27 substantial legal and factual support for claiming that Sierra was 28 jointly and severally liable with Fluke for false advertising, and Page 4 - OPINION AND ORDER 1 (3) it would be inequitable to award Sierra attorney s fees because 2 Sierra failed to raise its contention that FLIR lacked prudential 3 standing prior to summary judgment and Sierra admitted during 4 discovery that Fluke voluntarily agreed to, and did in fact, pay 5 Sierra s attorney s fees in this case. 6 Section 35 of the Lanham Act permits an award of attorney s 7 fees to a prevailing party in exceptional cases. 8 1117(a). 15 U.S.C. § The Ninth Circuit has held that the exceptionality 9 requirement is met when the case is either 10 unreasonable, vexatious, or pursued in bad faith. groundless, Cairns v. 11 Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir. 2002) (citation 12 and internal quotation marks omitted). Under § 1117(a), an award 13 of attorney s fees is never automatic and may be limited by 14 equitable considerations. Adidas Am., Inc. v. Payless Shoesource, 15 Inc., No. 01-1655-KI, 2009 WL 302246, at *1 (D. Or. Feb. 9, 2009) 16 (quoting Rolex Watch, U.S.A., Inc. v. Michel Co., 179 F.3d 704, 711 17 (9th Cir. 1999)). 18 Sierra proceeds on the theory that FLIR s Lanham Act false 19 advertising claim against it was groundless. As Sierra points out, 20 FLIR opposed its motion for summary judgment by relying primarily, 21 either directly or indirectly, on Second Circuit case law. In an 22 Opinion and Order dated October 9, 2012, this Court agreed with 23 Sierra s argument that FLIR s reliance on such cases was misplaced 24 and tantamount to ignoring Ninth Circuit precedent in favor of the 25 Second Circuit s directly conflicting standard. That decision was 26 based upon the Court s reading of Jack Russell Terrier Network of 27 Northern California v. American Kennel Club, Inc., 407 F.3d 1027 28 (9th Cir. 2005), where the Ninth Circuit stated that different Page 5 - OPINION AND ORDER 1 causes of action alleged pursuant to the different subsections of 2 15 U.S.C. § 1125(a) have different standing requirements. 3 1037. Id. at Under the false association prong of § 43 of the Lanhan 4 Act, 15 U.S.C. § 1125(a)(1)(A), the parties are not required to be 5 competitors in the traditional sense. 6 1031. By contrast, for standing Jack Russell, 407 F.3d at pursuant to the false 7 advertising prong of § 43(a) of the Lanham Act, 15 U.S.C. § 8 1125(a)(1)(B), a plaintiff must show: (1) a commercial injury 9 based upon a misrepresentation about a product; and (2) that the 10 injury is competitive, or harmful to the plaintiff s ability to 11 compete with the defendant. Jack Russell, 407 F.3d at 1037; 12 Barrus v. Sylvania, 55 F.3d 468, 470 (9th Cir. 1995) (explaining 13 that standing under the false advertising prong requires a 14 commercial injury based upon a misrepresentation about a product, 15 and also that the injury was competitive, i.e., harmful to the 16 plaintiff's ability to compete with the defendant. )1 17 This dichotomy is not present in the Second Circuit because, 18 under its reasonable interest approach, a plaintiff asserting a 19 false advertising claim under § 43(a) need not be a competitor. 20 Phoenix of Broward, Inc. v. McDonald s Corp., 489 F.3d 1156, 1166 21 22 23 24 25 26 27 28 1 As now-Justice Alito explained in Conte Bros Automotive, Inc. v. Quaker State-Slick 50, Inc., 165 F.3d 221 (3d Cir 1998), the Ninth Circuit s approach will produce divergent results depending on which of § 43(a) s prongs is at issue: Applying this dichotomous approach, the Ninth Circuit has held that a plaintiff who alleged his name was replaced with that of another actor had standing to sue the movie s producer under the false association prong even though he was not in competition with the producer. . . . On the other hand, a movie producer lacked standing under the false advertising prong to bring a § 43(a) suit against various movie theaters who falsely described the movie as bearing an R rating as opposed to a PG rating because the parties were not competitors. Id. at 232 (internal citations omitted). Page 6 - OPINION AND ORDER 1 (11th Cir. 2007) (citing PDK Labs, Inc. v. Friedlander, 103 F.3d 2 1105, 1111 (2d Cir. 1997)). Indeed, as the district court stated 3 in Grant Airmass Corp v. Gaymar Industries, Inc., 645 F. Supp. 1507 4 (S.D.N.Y. 1986), a case heavily relied upon by FLIR at the summary 5 judgment stage, [o]ur Court of Appeals has held that competitive 6 injury is not required for recovery under section 1125(a). Id. at 7 1511 (citation and internal quotation marks omitted). 8 FLIR claims that its reliance on Second Circuit case law was 9 merely a good faith attempt to extend the law of this circuit, 10 which should preclude a finding of exceptionality under the Lanham 11 Act. The district court s decision in Cairns v. Franklin Mint Co., 12 115 F. Supp. 2d 1185 (C.D. Cal. 2000), and the Fifth Circuit s 13 decision in Procter & Gamble Co. v. Amway Corp., 280 F.3d 519 (5th 14 Cir. 2002), are instructive in this regard. In Cairns, the court 15 concluded that the plaintiffs false endorsement claim was not 16 exceptional under § 1117(a) of the Lanham Act, stating: Although 17 it is clear that this case was well outside the bounds of any 18 previous decision, plaintiffs claim could be considered an attempt 19 to extend existing law. Cairns, 115 F. Supp. 2d at 1188. The 20 Amway court vacated and remanded the district court s award of 21 attorney s fees under § 1117(a) on similar grounds: The question 22 of standing under the Lanham Act to sue for an illegal pyramid 23 scheme was difficult and novel. A party that predicates its legal 24 claim on a controversial and unsettled legal theory should not face 25 sanctions under . . . § 1117(a) when the court ultimately rejects 26 the claim. 27 Amway, 280 F.3d at 531-32. In a recent decision from the Central District of California, 28 the district court explained that a Lanham Act claim is considered Page 7 - OPINION AND ORDER 1 legally groundless where there is no legal basis for the claim 2 itself, which instead rests on absurd or just short frivolous 3 contentions of law. Brown v. Elec. Arts, Inc., 722 F. Supp. 2d 4 1148, 1152 (C.D. Cal. 2010) (quoting Cairns, 115 F. Supp. 2d at 5 1188-89). [W]hen the Ninth Circuit has affirmed a denial of 6 attorneys fees based on a finding that the case was not 7 exceptional, the key factors appear to be that the party against 8 whom attorneys fees are sought raised debatable issues and had 9 a legitimate reason for bringing its claims. Icebreaker Ltd. v. 10 Gilmar S.p.A., No. 3:11-cv-00309-BR, 2013 WL 638926, at *3 (D. Or. 11 Feb. 20, 2013) (collecting cases). 12 Here, in addition to the contention that FLIR had no legal 13 basis to pursue its claim, Sierra argues that FLIR s false 14 advertising claim was factually groundless because FLIR knew Sierra 15 was not its competitor. In the Court s view, however, it is 16 apparent FLIR was attempting to rely on a legal theory that the 17 Court determined was not sufficient to survive summary judgment 18 (i.e., that Sierra was jointly and severally liable with Fluke), 19 not assert that Sierra was in fact its competitor. Nor does the 20 Court believe that FLIR engaged in bad faith or unreasonable 21 conduct in pursuing its claim against Sierra. The Court will 22 therefore limit its analysis to whether FLIR s Lanham Act claim was 23 legally groundless. 24 Certainly the language used in this Court s October 9, 2012 25 Opinion and 26 position. Order suggests a strong endorsement of Sierra s This was based, in large part, on FLIR arguing that the 27 principle on which Sierra relie[d] the competitive prong of Jack 28 Russell did not apply where, as here, a co-defendant is jointly Page 8 - OPINION AND ORDER 1 and severally liable with [the] plaintiff s competitor for false 2 advertising, (FLIR s Resp. Opp n Sierra s Mot. Summ. J. [Docket 3 No. 194] at 7), and then proceeding to direct the Court s attention 4 to Second Circuit case law without acknowledging that the Second 5 Circuit and Ninth Circuit analyze the standing of commercial 6 plaintiffs by applying differing standards (e.g., the reasonable 7 interest approach versus the Ninth Circuit s so-called dichotomous 8 approach). 9 Nevertheless, the Court cannot say that FLIR s Lanham Act 10 false advertising claim was legally groundless or that it rested on 11 absurd or just short of frivolous contentions of law. In fact, 12 at the summary judgment stage, FLIR cited several cases that 13 provided some support for its position, even though the cases were 14 distinguishable from the present case. See Coastal Abstract Serv., 15 Inc. v. First Am. Title Ins., Co., 173 F.3d 725, 734 (9th Cir. 16 1999) (concluding that injury was competitive under the Lanham Act 17 since the defendant s corporate officer sought by his statements to 18 divert business from the plaintiff to the defendant which is type 19 of injury the Lanham Act was intended to remedy and was not 20 entitled to hide behind the corporation where he is an actual 21 participant in the tort); see also Transgo, Inc. v. Ajac 22 Transmission Parts Corp., 768 F.2d 1001, 1021 (9th Cir. 1985) ( A 23 corporate officer or director is, in general, personally liable for 24 all torts which he authorizes or directs or in which he 25 participates, notwithstanding that he acted as an agent of the 26 corporation and not on his own behalf. ) (internal quotation marks 27 omitted). Accordingly, the Court denies Sierra s request for 28 Page 9 - OPINION AND ORDER 1 attorney s fees under § 1117(a) because this was not an exceptional 2 case. 3 B. FLIR s False Advertising Claim 4 In its motion for post-trial relief, Fluke asks the Court to 5 adopt the jury s factual findings relating to Fluke s unclean hands 6 defense and enter judgment for Fluke dismissing FLIR s false 7 advertising claim. 8 1. Unclean Hands 9 FLIR sued Fluke for false advertising under the Lanham Act, 10 alleging that a drop test video published by Fluke falsely depicted 11 the abilities of both the FLIR and Fluke cameras to withstand a 12 two-meter drop onto a concrete floor. The jury found for FLIR on 13 that claim, but also found that FLIR falsely advertised its E14 series cameras ability to pass a two-meter drop test.2 15 Verdict Form [Docket No. 394] Interrog. No. 4 at 2.) (Special Fluke 16 requests that the Court adopt the jury s factual finding and hold 17 that FLIR s false advertising claim with regard to the drop test 18 video is precluded by its unclean hands. See generally Bartee v. 19 Michelin N. Am., Inc., 374 F.3d 906, 912-13 (10th Cir. 2004) 20 ( Pursuant to the Seventh Amendment to the Federal Constitution, in 21 fashioning equitable relief, a district court is bound by a jury s 22 explicit findings of fact and those findings that are necessarily 23 implicit in the jury s verdict. . . . [T]he subsequent findings by 24 the trial judge in deciding the equitable claims [cannot] conflict 25 with the jury s [explicit and implicit] determinations. ) (internal 26 quotations omitted). 27 2 The clear weight of the evidence supported the jury s 28 finding. Page 10 - OPINION AND ORDER 1 As an initial matter, the parties dispute which evidentiary 2 standard applies in evaluating an unclean hands defense. In the 3 joint proposed jury instructions, FLIR s instruction on unclean 4 hands did not reference any evidentiary standard, while Fluke s 5 indicated that unclean hands must be proved by a preponderance of 6 the evidence. See Kelley Blue Book, 802 F. Supp. 278, 292 (C.D. 7 Cal. 1992) (applying a preponderance of the evidence standard to 8 unclean hands); see also Fuddruckers, Inc. v. Doc s B.R. Others, 9 Inc., 826 F.2d 837, 847 (9th Cir. 1987) (not referencing any 10 evidentiary standard). The instructions that went to the jury with 11 respect to the evidentiary standard for unclean hands referenced 12 the preponderance of the evidence. Ultimately, however, the Court 13 decided that 14 15 16 17 the best thing to do on th[e] issue [wa]s to . . . present a [special interrogatory] to the jury about whether the E-Series ad is false or not, and if they determine it is not, we don t have an unclean hands issue to worry about. If we do, we can unravel the[] arguments and make a decision about what it means with respect to the ultimate outcome of FLIR s claim . . . . 18 (Trial Tr. vol. 8b [Docket No. 415], 1853:11-18, Dec. 18, 2012.) In 19 other words, it was ultimately determined that the equitable 20 defense of unclean hands would be decided by the Court, and if the 21 jury determined that FLIR did not falsely advertise its E-series 22 cameras ability to pass a two-meter drop test, a finding of 23 unclean hands would clearly be inappropriate because FLIR did not 24 act inequitably. 25 After thoroughly reviewing the relevant case law post-trial, 26 the Court has confirmed that it should apply the clear, convincing 27 evidence standard enunciated in TrafficSchool.com, Inc. v. Edriver 28 Inc., 653 F.3d 820, 833 (9th Cir. 2011), in deciding whether the Page 11 - OPINION AND ORDER 1 unclean hands defense was established and should result in the loss 2 of FLIR s damages award. A finding by the jury that FLIR s E- 3 series advertisements were false by a preponderance of the evidence 4 leaves the Court to decide if that conduct was sufficiently 5 inequitable to support an unclean hands defense. Had Fluke brought 6 a false advertising claim based on FLIR s E-series advertisements, 7 a preponderance of the evidence decision by the jury on the falsity 8 of the advertisements would be enough. To block FLIR s claim, 9 however, this conduct must be sufficiently egregious by clear and 10 convincing evidence. This determination the Court reserved for 11 itself. 12 Unclean hands closes the doors of a court of equity to one 13 tainted with inequitableness or bad faith relative to the matter in 14 which he seeks relief, however improper may have been the behavior 15 of the defendant. Adler v. Fed. Republic of Nigeria, 219 F.3d 16 869, 877 (9th Cir. 2000) (quoting Precision Instrument Mfg. Co. v. 17 Auto. Maint. Mach. Co., 324 U.S. 806, 814 (1945)).3 The doctrine 18 bars relief to a plaintiff who has violated conscience, good faith 19 or other equitable principles in his prior conduct, as well as to 20 a plaintiff who has dirtied his hands in acquiring the right 21 presently asserted. Seller Agency Council, Inc. v. Kennedy Ctr. 22 for Real Estate Educ., Inc., 621 F.3d 981, 986 (9th Cir. 2010) 23 (internal quotation and citation omitted); see also Ellenburg v. 24 Brockway, Inc., 764 F.2d 1091, 1097 (9th Cir. 1985) (stating that 25 what is material is not that the plaintiff s hands are dirty, but 26 27 3 (But cf. FLIR s Resp. Opp n Fluke s Mot. [Docket No. 440] at 11) ( FLIR s good faith is even more pronounced when compared to 28 Fluke s intentionally false advertising. ) Page 12 - OPINION AND ORDER 1 that . . . the manner of dirtying renders inequitable the assertion 2 of such rights against the defendants. ) (internal quotation marks 3 omitted; brackets deleted). 4 In order 5 defendant to must prevail on demonstrate an that unclean the hands defense, plaintiff s the conduct is 6 inequitable and that the conduct relates to the subject matter of 7 its claims. 4 Fuddruckers, 826 F.2d at 847. The defense should 8 only be applied where some unconscionable act of one coming for 9 relief has immediate and necessary relation to the equity that he 10 seeks in respect of the matter in litigation. U Haul Int l, Inc. 11 v. Jartran, Inc., 522 F. Supp. 1238, 1254 (D. Ariz. 1981), aff d, 12 681 F.2d 1159 (9th Cir. 1982) (citing Ames Publ g Co. v. 13 Walker Davis Publ ns, Inc., 372 F. Supp. 1, 13 15 (E.D. Pa. 1974)). 14 In an action for false advertising, the unclean hands of the 15 plaintiff must relate to the same type of product the defendant 16 allegedly falsely advertised. Healthpoint, Ltd. v. Ethex Corp., 17 273 F. Supp. 2d 817, 849 (W.D. Tex. 2001). [W]hile the Ninth 18 Circuit has recognized that the extent of the harm caused by the 19 plaintiff s misconduct is a highly relevant consideration, it has 20 not held that a defendant asserting an unclean hands defense is 21 required to demonstrate prejudice. Lenz v. Universal Music Corp., 22 23 24 25 26 27 28 4 The district court s decision in Infineon Technologies AG v. Volterra Semiconductor Corp., No C 11-6239 MMC, 2013 WL 1832558, at *4 n.7 (N.D. Cal. May 1, 2013), also provides instructive guidance. There, the plaintiff argued that unclean hands only applies where a plaintiff acted with fraudulent intent. Id. The Infineon court disagreed, stating: Although the doctrine of unclean hands requires a showing of more than negligence, [plaintiff] cites to no case holding such defense always requires a showing of fraud. Rather, the cases on which [plaintiff] relies are limited to the specific circumstances presented therein. Id. (internal citations omitted). Page 13 - OPINION AND ORDER 1 No. C 07-3783 JF, 2010 WL 702466 *7 (N.D. Cal. 2010) (internal 2 quotation marks omitted) (emphasis added). 3 Fluke argues that the sufficiency of the relation between 4 FLIR s conduct and its claim is demonstrated by the case law. To 5 support its argument, Fluke relies primarily on Stokely-Van Camp, 6 Inc. v. Coca-Cola Co., 646 F. Supp. 2d 510 (S.D.N.Y. 2009), and 7 Emco, Inc. v. Obst, No. CV03-6432-R (RZX), 2004 WL 1737355 (C.D. 8 Cal. July 29, 2004). 9 preliminary In Stokely-Van, the court concluded, at the injunction stage, that the maker of Gatorade who 10 complained about Coca-Cola s claims regarding the presence of 11 calcium and magnesium in Powerade had unclean hands because it 12 marketed the advantage of adding calcium and magnesium to its 13 product first, only later to disavow that claim and assert that 14 Coca-Cola must follow suit. 15 34. Stokely-Van, 646 F. Supp. 2d at 533- Similarly, in Emco, the court concluded that a Lanham Act 16 claim was barred by unclean hands, where the counterclaimant-seller 17 of industrial cutting tools, who used the brand name Americut and 18 American symbols in advertisements for products that were not 19 manufactured in the United States, alleged that its competitor 20 misled its customers as to the geographic origin of its goods by 21 removing country-of-origin labels. Emco, 2004 WL 1737355, at *4-5. 22 FLIR advances several arguments as to why an unclean hands 23 finding would be inappropriate, including one that relates to 24 Fluke s counterclaim concerning FLIR s practice of superimposing 25 higher resolution images onto the liquid crystal display ( LCD ) of 26 lower resolution cameras in its advertisements. At the hearing on 27 the parties motions in limine, the Court made clear that FLIR s 28 unclean hands defense could Page 14 - OPINION AND ORDER only pertain to Fluke s use of 1 superimposed images in order to be sufficiently related to the 2 subject matter of Fluke s counterclaim. In FLIR s view, a 3 determination that it has unclean hands would be inconsistent with 4 that ruling. 5 What FLIR neglects to mention, and what the Court addressed in 6 denying one of FLIR s motions to compel discovery, is that many (if 7 not all) of these advertisements referred to both higher and lower 8 resolution cameras. 9 190] at 12.) (Op. & Order on Mots. to Compel [Docket No. This is important because Fluke s false advertising 10 claim based on FLIR s use of images in its advertisements was 11 predicated almost exclusively, if not entirely, on advertisements 12 where FLIR superimposed images produced by higher resolution 13 cameras onto the view finder of lower resolution cameras that could 14 not produce the images depicted on their view finders. The display 15 of high resolution images (predominantly stand-alone images) in 16 advertisements for cameras, some of which are capable of producing 17 images of that resolution and some which are not, is quite 18 different from superimposing high resolution images onto the view 19 finders of only low resolution cameras incapable of producing the 20 image. Indeed, the vast majority of the advertisements challenged 21 by Fluke did not include any camera capable of producing the 22 superimposed images.5 23 FLIR also argues that (1) its conduct was not inequitable 24 because it acted in good faith when it believed, more than six 25 months in advance of its new E-series cameras being offered for 26 sale to the public, that it could meet the two-meter drop test 27 5 And of course the jury determined FLIR did not falsely 28 advertise its cameras in this fashion. Page 15 - OPINION AND ORDER 1 specification that it submitted for inclusion in the 2011 Grainger 2 catalog; and (2) the advertisement of its E-series cameras in the 3 2011 Grainger catalog is not related in any way, much less 4 directly, to the drop test video and accompanying methodology 5 because FLIR did not falsely depict the results of a particular 6 drop test, deceptively compare FLIR s and Fluke s thermal imaging 7 cameras, or deliberately include the stamp of approval of a 8 purportedly independent, third party like Sierra. (FLIR s Resp. 9 Opp n Fluke s Mot. at 5, 7.) 10 The Court is not persuaded by FLIR s arguments. In this case, 11 there is clear, convincing evidence that [FLIR s] conduct was 12 inequitable and related to the subject matter of [its] false 13 advertising claims. TrafficSchool, 653 F.3d at 833 (internal 14 citation and quotation marks omitted; brackets deleted). The jury 15 was only asked and indeed found that FLIR falsely advertised the 16 ability of its E-series cameras to pass a two-meter drop test, and 17 that finding was supported by the evidence. 18 uncontroverted. Indeed, it was (See Trial Ex. 1015 at 1) (email dated March 18, 19 2010, stating [i]t will take some time before our complete volume 20 line can do 2m drop. ); (Trial Ex. 1126 at 4) (results from 21 September 2010 drop test conducted by FLIR, indicating [s]erious 22 failures in every drop ); (Trial Ex. 1129 at 1) (internal email 23 among high-ranking FLIR employees dated October 12, 2010, stating 24 at launch we don t we think we can have [a] camera that 25 withstand[s] [a] 2m drop. ) 26 At trial, FLIR attempted to explain the problem away by 27 presenting evidence that it had developed a rubber boot that 28 resolved any issues with the E-series ability to withstand a twoPage 16 - OPINION AND ORDER 1 meter drop test.6 This boot was supplied to customers even though 2 they were never informed prior to purchase of an E-series camera 3 that the boot was necessary to survive a two-meter drop. However, 4 FLIR s vice president of product management, TorbjÃ¶rn Hamrelius 5 ( Hamrelius ), testified that, even with the rubber boot, the E6 series still failed its two-meter drop test. (Hamrelius Dep. 47:37 11.) This removes any doubt that FLIR s advertisement of its E- 8 series cameras in the 2011 Grainger catalog (published in both 9 print and online versions) falsely represented that they could 10 withstand a two-meter drop test. And these false statements were 11 disseminated to millions of potential customers, including two 12 million individuals who received the catalog in hard copy form. 13 (Trial Tr. vol. 2b [Docket No. 401], 415:6-8, 415:23-25, 416:1-15, 14 Dec. 10, 2012.) Thus, FLIR falsely advertised its camera s ability 15 to withstand a two-meter drop just as it alleged Fluke did with 16 respect to various cameras ability to withstand such a drop. 17 FLIR claims its good faith handling of this situation is 18 demonstrated by its efforts to correct the print version of the 19 2011 Grainger catalog. Grainger, however, informed FLIR that it 20 was too late to remove the two-meter drop test specification 21 because th[e] catalog had already gone to print. (FLIR s Resp. 22 23 24 25 26 27 28 6 FLIR also claims that it warranted the E-series cameras sold by Grainger against any damage from being dropped. (FLIR s Resp. Opp n Fluke s Mot. at 10); (Hamrelius Dep. [Docket No. 382-1] 46:21-47:2) ( We . . . thought that, of course, we will warrant anyone that s come out and dropped the camera, we will, well, warrant it. ) (emphasis added). As Fluke notes, [t]o the extent some actual warranty program was put into effect, it was never advertised to Grainger customers. (Fluke s Reply Mem. [Docket No. 450] at 9.) Without evidence that the warranty program was, in fact, put into effect and that customers were made aware of it, it is illusory. Page 17 - OPINION AND ORDER 1 Opp n Fluke s Mot. at 8-9.) As Fluke points out, notably absent 2 from the record is any evidence that FLIR ever attempted to ask 3 Grainger to remove the two-meter drop specification from the 4 Grainger website, which, presumably, would have been possible even 5 if the catalog already had gone to print. (Fluke s Reply Mem. at 6 8); (Hamrelius Dep. 49:15-17) ( Well, at least we said we should 7 [attempted to correct the online version]. I haven t checked that 8 we actually did it. ); (Trial Tr. vol. 2b, 427:25-428:3) ( Yeah, I 9 don t think [Grainger] changed the . . . language [on the website] 10 because I think at that point we felt . . . comfortable, with the 11 [rubber boot] as a solution, that it met the requirements that were 12 printed. ) In fact, the two-meter drop specification was still 13 available online in November 2011. (Trial Tr. vol. 2b, 422:25- 14 423:20.) 15 The fact that the FLIR s advertisement in the 2011 Grainger 16 catalog was not comparative does not make it any less related to 17 subject matter of Fluke s drop test video. Both concerned the same 18 product (a thermal imaging camera) and its ability to withstand a 19 two-meter drop test. 20 (applying unclean See Stokley-Van, 646 F. Supp. 2d at 533 hands even though one advertisement was 21 comparative and one was not); see also Pom Wonderful LLC v. Welch 22 Foods, Inc., 737 F. Supp. 2d 1105, 1110 (C.D. Cal. 2010) ( [T]he 23 crux of [plaintiff s] Lanham Act claim is that [defendant] misleads 24 consumers to believe that its [white grape pomegranate] product 25 contains more pomegranate juice than it actually does, and that the 26 [white grape pomegranate] product in fact contains very little 27 pomegranate juice. Thus, to prove unclean hands, [Defendant] must 28 demonstrate that [plaintiff] misleads consumers into believing its Page 18 - OPINION AND ORDER 1 juice products contain more pomegranate juice than they actually 2 do, or that its products misrepresent the amount of juice(s) in 3 them. ), aff d, 468 F. App x 688 (9th Cir. 2012). 4 Perhaps most importantly, FLIR s advertisement was in response 5 to the advantage FLIR perceived Fluke to have in ruggedness, and 6 which it expected Fluke to try and capitalize 7 capitalization was the drop test video. on. Fluke s (Trial Ex. 1015 at 1) 8 ( I ve always felt the drop test exposes a vulnerability in our 9 camera design and I have been surprised it has taken Fluke this 10 long to expose this weakness. . . . Fluke is trying to play 11 hardball and I would like to make them regret they ever made this 12 [drop test] video. ); (Trial Ex. 1027 at 1) ( Almost all tradeshows 13 Fluke s distributor has no other sales pitch except the droop proof 14 ability. ); (Trial Ex. 1027 at 2) ( Seems that product management 15 is also aware of [the drop test video] and that our cameras are 16 indeed not built to withstand a 2 meter drop test. ) Indeed, the 17 FLIR advertisement came out after the false drop test video. 18 Moreover, the Court is not persuaded by FLIR s argument 19 pertaining to the timing of its inequitable conduct. This is not 20 a case where Fluke is attempting to dredge up inequitable conduct 21 of [FLIR] which has been discontinued for some time prior to the 22 suit. Pom Wonderful, 737 F. Supp. 2d at 1109 (quoting 6 McCarthy 23 on Trademarks & Unfair Competition § 31:55 (4th ed. 2010)). FLIR 24 made a representation to a major distributor in August 2010 the 25 same month that this suit was filed knowing at the time that it was 26 not yet true. The failure of FLIR to ensure that its E-series 27 cameras could withstand the two-meter drop test led to the 28 publication of a statement in the 2011 Grainger catalog that the Page 19 - OPINION AND ORDER 1 jury determined was false a finding that is consistent with the 2 testimony provided by Hamrelius and for which FLIR offered no 3 evidence the statement was ever true. 4 FLIR also suggests that the events related to its Grainger 5 advertisements were rectified prior to entry of judgment. (FLIR s 6 Resp. Opp n Fluke s Mot. at 12) (citing McCarthy on Trademarks & 7 Unfair Competition § 31:55 (4th ed. 2012)). Setting aside the fact 8 that neither party has cited, nor has research revealed, a case 9 from the Ninth Circuit where an unclean hands defense was deemed 10 unavailable based on contemporaneous conduct that ceased prior to 11 entry of judgment, FLIR fails to cite evidence in the record 12 showing this actually occurred. FLIR only points to: (1) a chain 13 of emails from May 2011 (i.e., in the midst of this litigation), 14 wherein FLIR s vice president of sales and marketing, Arpineh 15 Mullaney, asked a Grainger representative for an opportunity to 16 refine its catalog pages and FLIR s products manager, Mats 17 AhlstrÃ¶m ( AhlstrÃ¶m ), drew a line through drop proof (6.5 ft), 18 (Trial Ex. 1075 at 1, 4); and (2) trial testimony provided by 19 FLIR s president of commercial sales, Andrew Teich ( Teich ), where 20 he discussed a drop apparatus developed in 2010 and concluded by 21 stating that the E-series continued to function throughout the 22 drops, although early prototypes sustained some damage. (Trial 23 Tr. vol. 7b [Docket No. 410], 1566:6-1569:19, Dec. 17, 2012.) 24 Even if the Court assumes Grainger altered FLIR s pages in the 25 2012 catalog in accordance with AhlstrÃ¶m s email, this still says 26 nothing about the two million hard copy versions of the 2011 27 catalog that are presumably still in circulation. Nor does it 28 explain why the drop test specification was still present on the Page 20 - OPINION AND ORDER 1 Grainger website as late as November 2011. 2 422:25-423:1-20); (Trial Ex. 1084) (Trial Tr. vol. 2b (August 31, 2011 email 3 indicating that FLIR did d[id]n t know when the E-series would be 4 able to pass the two-meter drop test).7 5 In summary, the jury concluded that Fluke s drop test video 6 constituted false advertising and awarded FLIR $103,000 in damages. 7 Nevertheless, FLIR is not entitled to any damages in light of its 8 false advertising related to the same subject matter. See U Haul 9 Int l, 522 F. Supp. at 1254 (unclean hands should be applied where 10 some unconscionable act of one coming for relief has immediate and 11 necessary relation to the equity that he seeks in respect of the 12 matter in litigation. ) In other words, FLIR s false advertising 13 claim based on Fluke s drop test video being false regarding the 14 ruggedness of various cameras in a two-meter drop test is barred, 15 in light of FLIR s false advertising on the same subject matter, by 16 the doctrine of unclean hands.8 17 2. 18 While Injunctive Relief FLIR may come with unclean hands, this does not 19 foreclose the possibility it is entitled to injunctive relief: 20 21 22 [W]here the law invoked by the plaintiff is really for the protection of the public, unclean hands is not a defense. That is, if the evidence shows that plaintiff is engaging in inequitable practices, but defendant is also guilty of the unfair competition charged, an injunction should be granted notwithstanding the unclean 23 24 7 The August 31, 2011 email refers to the E-series ability to (Trial Ex. 1084.) As explained above, 25 pass without a boot. Hamrelius testified that, even with the rubber boot, the E-series 26 still failed its two-meter drop test. (Hamrelius Dep. 47:3-11.) 27 8 Based on this finding, the Court concludes that FLIR is not entitled to an award of increased damages in connection with its 28 false advertising claim. Page 21 - OPINION AND ORDER 1 2 3 hands maxim. It is better to remedy one wrong than to leave two wrongs at large. If defendant thinks that plaintiff is guilty of inequitable conduct, he should raise it in a counterclaim or in a separate suit against plaintiff. 4 6 McCarthy on Trademarks & Unfair Competition § 31:53 (4th ed. 5 2013). Fifty years ago, in Republic Molding Corp. v. B.W. Photo 6 Utilities, 319 F.2d 347 (9th Cir. 1963), the Ninth Circuit made 7 similar observations: 8 9 10 11 12 13 14 15 Unclean hands . . . does not stand as a defense that may be properly considered independent of the merits of the plaintiff s claim . . . . Its assertion does not eliminate the need for the court to ascertain the soundness of the plaintiff s claim. In the interests of right and justice the court should not automatically condone the defendant s infractions because the plaintiff is also blameworthy, thereby leaving two wrongs unremedied and increasing the injury to the public. Rather the court must weigh the substance of the right asserted by plaintiff against the transgression which, it is contended, serves to foreclose that right. The relative extent of each party s wrong upon the other and upon the public should be taken into account, and an equitable balance struck. 16 Id. at 350. 17 Pursuant to 15 U.S.C. § 1116(a), the Court has the power to 18 grant injunctions, according to the principles of equity and upon 19 such terms as the court may deem reasonable, . . . to prevent a 20 violation of subsection (a), (c), or (d) of Section 43 of the 21 Lanham Act. 15 U.S.C. § 116(a). Here, the jury found that Fluke 22 made a literally false statement in a commercial advertisement, 23 that it was material, and that it had a tendency to deceive the 24 relevant purchasing public. (See Jury Instructions [Docket No. 25 395] at 24-26) (setting forth the elements of a false advertising 26 under the Lanham Act). Rather than leave this wrong at large, the 27 Court concludes that FLIR is entitled to an injunction. See Nat l 28 Prods., Inc. v. Gamber-Johnson LLC, 734 F. Supp. 2d 1160, 1171 Page 22 - OPINION AND ORDER 1 (W.D. Wash. 2010) (granting injunction for the same reasons), 2 aff d, 449 F. App x 638 (9th Cir. 2011). 3 In light of the declaration submitted by Zachary Field on May 4 3, 2013, which provides hyperlinks where the drop test video can 5 still be found online, the Court disagrees with Fluke s contention 6 that the voluntarily removal of the drop test video moots FLIR s 7 claim for injunctive relief.9 See Polo Fashions, Inc. v. Dick 8 Bruhn, Inc., 793 F.2d 1132, 1135 (9th Cir. 1986). 9 will be granted to FLIR. An injunction The Court will set a hearing at a later 10 date to address the terms/ scope of FLIR s injunction. 11 3. Attorney s Fees and Costs 12 The court in exceptional [false advertising] cases may award 13 reasonable attorney fees to the prevailing party. 14 1117(a). 15 U.S.C. § Whether a case is exceptional is question of law for the 15 court, not the jury. Watec Co., Ltd. v. Liu, 403 F.3d 645, 656 16 (9th Cir. 2005). According to the Ninth Circuit, [i]t s not clear 17 [whether an] award of attorney s fees [under the Lanham Act] is 18 subject to equitable doctrines 19 TrafficSchool, 653 F.3d at 833 n.9. such as unclean hands. What is clear, however, is 20 that district courts must do more than simply examine the relief 21 awarded to 22 exceptional; plaintiffs in they also must determining consider whether whether 23 conduct was fraudulent, deliberate, or willful. 24 the the case is defendants Id. at 832. Citing Shum v. Intel Corp., 629 F.3d 1360 (Fed. Cir. 2010), 25 Fluke claims that the Lanham Act envisions only one prevailing 26 party since the plain language of § 1117(a) uses the singular of 27 9 The Court was still able to find the drop test video online 28 in late-July 2013. Page 23 - OPINION AND ORDER 1 party and the definite article the. See 15 U.S.C. § 1117(a) 2 ( The court in exceptional cases may award reasonable attorney fees 3 to the prevailing party. ) Relying primarily on the wording of 4 Rule 54(d), see FED. R. CIV. P. 54(d) ( Unless a federal statute, 5 these rules, or a court order provides otherwise, costs other than 6 attorney s fees should be allowed to the prevailing party. ), the 7 Shum court held that in patent cases there can be, by definition, 8 only one prevailing party, regardless of the fact that the outcome 9 of a particular lawsuit might be mixed. See Shum, 629 F.3d at 10 1366-67. 11 As FLIR points out, Fluke . . . cites no Ninth Circuit or 12 Lanham Act decisions in support of its contention that a suit must 13 be viewed in its entirety and not on a claim-by-claim basis to 14 determine whether a, or which, party prevailed. [sic] (FLIR s 15 Reply Supp. [Docket No. 451] at 13.) 16 and the Court s research has not The parties have not cited, revealed, controlling 17 persuasive authority addressing this specific issue. or Fortunately, 18 Congress has authorized the award of attorney s fees to the 19 prevailing party in a number of statutes in addition to the Lanham 20 Act. Cases interpreting other federal fee-shifting statutes provide 21 meaningful comparisons. See Ketterle v. B.P. Oil, Inc., 909 F.2d 22 425, 429 (11th Cir. 1990) ( Many times the courts have used cases 23 interpreting one fee shifting statute when faced with the 24 interpretation of another. ) 25 Under 42 U.S.C. § 1988, the court may award a reasonable 26 attorney s fee to the prevailing party in various kinds of civil 27 28 Page 24 - OPINION AND ORDER 1 rights cases, including suits brought under § 1983.10 In Fox v. 2 Vice, 131 S. Ct. 2205 (2011), the Supreme Court explained that a 3 court can properly award fees to both parties under § 1988, despite 4 its reference to the prevailing party : 5 In Hollywood, litigation most often concludes with a dramatic verdict that leaves one party fully triumphant and the other utterly prostrate. The court in such a case would know exactly how to award fees (even if that anti-climactic scene is generally left on the cutting-room floor). But in the real world, litigation is more complex, involving multiple claims for relief that implicate a mix of legal theories and have different merits. Some claims succeed; others fail. Some charges are frivolous; others (even if not ultimately successful) have a reasonable basis. In short, litigation is messy, and courts must deal with this untidiness in awarding fees. 6 7 8 9 10 11 12 . . . . 13 . . . [W]e [have previously] noted the possibility that a plaintiff might prevail on one contention in a [civil rights] suit while also asserting an unrelated frivolous claim. In this situation, we explained, a court could properly award fees [under § 1988] to both parties to the plaintiff, to reflect the fees he incurred in bringing the meritorious claim; and to the defendant, to compensate for the fees he paid in defending against the frivolous one. We thus made clear that a court may reimburse a defendant for costs under § 1988 even if a plaintiff s suit is not wholly frivolous. Fee-shifting to recompense a defendant . . . is not all-or-nothing: A defendant need not show that every claim in a complaint is frivolous to qualify for fees. 14 15 16 17 18 19 20 21 Id. at 2213-14. 22 As the Supreme Court observed in Hensley v. Eckerhart, 461 23 U.S. 424 (1983), a single civil rights lawsuit can contain 24 10 There are similarities between Lanham Act and civil rights cases when it comes to awarding fees. See, e.g., Harris v. 26 Maricopa County Superior Court, 631 F.3d 963, 987 (9th Cir. 2011) (Bybee, J., concurring in judgment in part, but mostly dissenting) 27 (arguing that a Lanham Act fee case should have controlled in a civil rights case because the standard for exceptionality was 28 analogous). 25 Page 25 - OPINION AND ORDER 1 distinctly different claims for relief that are based on different 2 facts and legal theories, and as a result, these unrelated claims 3 [must] be treated as if they had been raised in separate lawsuits. 4 Id. at 435. 5 that both In such circumstances, there is a real possibility parties could be a 6 attorney s fees under § 1988. prevailing party entitled to See id. at 435 n.10 ( If the 7 unsuccessful claim is frivolous, the defendant may [also] recover 8 attorney s fees incurred in responding to it. ) 9 These civil rights cases, of course, are distinguishable 10 insofar as they did not involve a situation where both parties 11 initially succeeded on the merits of a claim and/or were awarded 12 injunctive relief by the court. They do demonstrate, however, that 13 a federal fee-shifting statute s use of the definite article the 14 and singular of party does not necessarily foreclose the 15 possibility that there can be more than one prevailing party. 16 Almost all cases under the [Lanham] Act . . . , whether they 17 are suits for trademark infringement or for false advertising, are 18 between competitors. Nightingale Home Healthcare, Inc. v. 19 Anondyne Therapy, LLC, 626 F.3d 958, 962 (7th Cir. 2010) (internal 20 citations omitted). At times, these competitors use Lanham Act 21 litigation for strategic purposes not to obtain a judgment or 22 defeat a claim but to obtain a competitive advantage independent of 23 the outcome of the case. Id. For example, [t]he owner of a 24 trademark might bring a Lanham Act suit against a new entrant into 25 his market, alleging trademark infringement but really just hoping 26 to drive out the entrant by imposing heavy litigation costs on 27 him. Id. With these strategic motivations at play, a single 28 Lanham Act lawsuit can (and often times will) contain distinctly Page 26 - OPINION AND ORDER 1 different claims for relief that are based on different facts and 2 legal theories. That is precisely what took place here, and these 3 unrelated claims [should] be treated as if they had been raised in 4 separate lawsuits. 5 Hensley, 461 U.S. at 435. Indeed, to be a prevailing party entitled to an attorney s 6 fees award under the Lanham Act, the party must have achieved a 7 material alteration in the legal relationship of the parties i.e., 8 relief that 9 monetary the judgment 10 judicially would-be prevailing and/or sanctioned. permanent Fifty-Six party sought, injunctive Hope Road such as a relief that Music, Ltd. is v. 11 A.V.E.L.A., Inc., 915 F. Supp. 2d 1179, 1183-84 (D. Nev. 2013). 12 When both parties advance some meritorious claim in a Lanham Act 13 suit, they will inevitably satisfy the definition of a prevailing 14 party unless there is a sufficient basis for denying a monetary 15 judgment and permanent injunctive relief a rare situation in Lanham 16 Act litigation. 17 This does not mean that both parties would automatically 18 qualify for an award of fees, but it does mean that court must 19 undertake what appears to be a situation-specific exceptionality 20 inquiry that turns on the nature of the conduct for which the 21 opposing party was held liable or which was enjoined, and not, for 22 example, on FLIR s conduct that barred recovery of damages or 23 resulted in a damages award or injunction for Fluke on its claims. 24 See TrafficSchool, 653 F.3d at 832-33 (holding that the district 25 court applied the wrong legal standard by failing to consider the 26 opposing party s conduct that warranted the grant of injunctive 27 relief). For these reasons, the Court concludes that there can be 28 more than one prevailing party in the same Lanham Act suit. Page 27 - OPINION AND ORDER 1 Here, the Court concludes that FLIR was a prevailing party on 2 its claim and that this case was exceptional. See Watec, 403 F.3d 3 at 656 (exceptionality is question of law for the district court). 4 Importantly, although FLIR failed to recover damages, it obtained 5 a judgment and injunction that is beneficial to consumers and 6 vindicate[s] [its] right to a market free of false advertising. 7 TrafficSchool, 653 F.3d at 832 (quoting Johnson & Johnson v. 8 Carter-Wallace, Inc., 631 F.2d 186, 192 (2d Cir. 1980)). Moreover, 9 the Court finds that Fluke s conduct warrants the imposition of 10 attorney s fees. There is no doubt that Fluke deliberately 11 published a literally false advertisement.11 12 To prove literal falsity, FLIR only needed to demonstrate that 13 the drop test was not sufficiently reliable to permit one to 14 conclude with reasonably certainty that the test established the 15 proposition for which it was cited. Riddell, Inc. v. Schutt 16 Sports, Inc., 724 F. Supp. 2d 963, 971 (W.D. Wisc. 2010) (emphasis 17 in the original) (citation and internal quotation marks omitted).12 18 There was an abundance of evidence to support the conclusion that 19 the drop test was not sufficiently reliable, including, among 20 11 That is not to say that Fluke s primary purpose was to maliciously injure FLIR. Simply put, Fluke deliberately published 22 an advertisement based on a test that was clearly not reliable (i.e., a literally false advertisement). 23 12 See also Southland Sod Farms v. Stover Seed Co., 108 F.3d 24 1134, 1145 (9th Cir. 1997) ( [A] competitor need not prove injury when suing to enjoin conduct that violates section 43(a). Thus, 25 even if [a] [p]laintiff[] . . . fail[s] to raise a triable issue as to causation and injury, [its] Lanham Act claim would still be 26 viable to the extent it sought an injunction. ) (internal citation and quotation marks omitted); Comm. for Idaho's High Desert, Inc. 27 v. Yost, 92 F.3d 814, 818 19, 825 (9th Cir.1996) (plaintiff was entitled to attorney s fees when district court only awarded an 28 injunction). 21 Page 28 - OPINION AND ORDER 1 others: (1) Fluke used what was essentially a home-made drop 2 apparatus; (2) Fluke did not subject its own comparable 3 articulating camera to the drop test; (3) FLIR s cameras were 4 placed in far more precarious positions on the drop apparatus; (4) 5 Fluke s own employee extensively participated in what was supposed 6 to be a test conducted by an independent third party; and (5) Fluke 7 was never able to locate the Fluke Ti32 shown in the drop test 8 video. 9 Accordingly, the Court will exercise its discretion and award 10 attorney s fees and costs to FLIR. See World Triathalon Corp. v. 11 Dunbar, 539 F. Supp. 2d 1270, 1288 (D. Haw. 2008) (concluding that 12 a prevailing party was entitled to costs and attorney s fees under 13 § 1117(a)); Derek Andrew, Inc. v. Proof Apparel Corp., 528 F.3d 14 696, 702 (9th Cir. 2008) ( An award of reasonable attorneys fees 15 and costs is expressly provided for in exceptional cases. ) FLIR 16 is ordered to submit its fee application with appropriate 17 supporting materials not later than August 19, 2013. 18 4. Prejudgment and Postjudgment Interest 19 FLIR seeks an award of prejudgment and postjudgment interest. 20 (FLIR s Mot. Post-Trial Relief at 2); (but cf. FLIR s Reply Supp. 21 at 1) ( FLIR requests that the Court . . . award . . . prejudgment 22 interest. ) FLIR does not specify whether its requests is limited 23 to the jury s damages award and/or an award of attorney s fees. 24 In the Ninth Circuit, an award of prejudgment interest in a 25 case under federal law is a matter left to the sound discretion of 26 the trial court. Cyclone USA, Inc. v. LL & C Dealer Servs., LLC, 27 No. CV 03-992, 2010 WL 2132378, at *1 (C.D. Cal. May 24, 2010) 28 (quoting Twin City Sportservice, Inc. v. Charles O. Finley & Co., Page 29 - OPINION AND ORDER 1 Inc., 676 F.2d 1291. 1310 (9th Cir. 1982)). The Court has 2 determined that FLIR is not entitled to prejudgment interest in 3 light of the applicability of an equitable defense and the lack of 4 a damages judgment in FLIR s favor. See Brittingham v. Jenkins, 5 914 F.2d 447, 457 (4th Cir. 1990) (reversing award of prejudgment 6 interest on Lanham Act claim based on application of equitable 7 defense).13 8 As to postjudgment interest, the governing statute provides 9 that [i]nterest shall be allowed on any money judgment in a civil 10 case recovered in a district court. 28 U.S.C. § 1961(a). This 11 language is mandatory, not discretionary. See Air Separation, Inc. 12 v. Underwriters at Lloyd's of London, 45 F.3d 288, 290 (9th Cir. 13 1995). [T]he majority of the courts that have addressed the 14 definition of the term money judgment in § 1961(a) have held that 15 a judgment that unconditionally entitles a party to reasonable 16 attorney fees is [a] money judgment contemplated by § 1961. 17 Boehner v. McDermott, 540 F. Supp. 2d 310, 322 (D.D.C. 2008); see 18 also Auto. 19 2576(SHS), Club 2010 of WL New York, 3529235, at Inc. *5 v. Dykstra, (S.D.N.Y. No. Aug. 04 24, Civ. 2010) 20 ( [O]ther circuits have held correctly, in this Court's view that 21 prior to the date the amount of attorneys fees is actually 22 quantified, the damages are unliquidated and therefore are not a 23 money judgment within the meaning of section 1961. ) 24 If and when a judgment for attorney s fees is entered, the 25 Court will address postjudgment interest. 26 /// 27 13 FLIR cites Brittingham in support of its argument that 28 Fluke s request for prejudgment interest should be denied. Page 30 - OPINION AND ORDER 1 C. Fluke s Trademark-Related Claims 2 Fluke moves the Court for entry of a final judgment in its 3 favor and against FLIR on its trademark-related claims. 4 cross-moves for entry of a take-nothing judgment on FLIR Fluke s 5 trademark-related claims on the grounds that those claims are 6 barred by the doctrine of laches and/or because Fluke s IR Fusion 7 trademark is invalid. 8 1. Laches 9 Laches is an equitable defense to Lanham Act claims that 10 embodies the principle 11 knowledge that another that a company plaintiff cannot is its using sit on trademark the [and 12 confusingly similar terms], and then later come forward and seek to 13 enforce its rights. Internet Specialties W., Inc. v. Milon Di 14 Giorgio Enters., Inc., 559 F.3d 985, 989 90 (9th Cir. 2009). [T]he 15 existence of laches is a question primarily addressed to the 16 discretion of the trial court. 17 351 U.S. 525, 534 (1956). Czaplicki v. Hoegh Silvercloud, It is well settled that laches is a 18 valid defense to Lanham act claims. Jarrow Formulas, Inc. v. 19 Nutrition Now, Inc., 304 F.3d 829, 835 (9th Cir. 2002). 20 for laches is a two-part inquiry: first, did the The test plaintiff 21 unreasonably delay in filing suit; and second, was the defendant 22 prejudiced by the delay. 23 Internet Specialties, 559 F.3d at 990. A court s laches determination is made with reference to the 24 limitations period for the analogous action at law. 25 F.3d at 835. Jarrow, 304 This court has looked to the two year statute of 26 27 28 Page 31 - OPINION AND ORDER 1 limitations for fraud claims, OR. REV. STAT. § 12.110, by analogy.14 2 Adidas America, Inc. v. Payless Shoesource, Inc., 540 F. Supp. 2d 3 1176, 1180 n.1 (D. Or. 2008); Johannsen v. Brown, 797 F. Supp. 835, 4 839 40 (D. Or. 1992); Or. Ethiopian Cmty. Org. v. Gessesse, No. 065 109-JE, 2007 WL 1887402, at *9 (D. Or. June 27, 2007). 6 The two-year laches period starts when the party knew or 7 should have known about its potential cause of action. 8 Specialties, 559 F.3d at 990. Internet In this case, the jury determined 9 that Fluke knew or should have known of its potential trademark10 related claims by April 15, 2008. (Special Verdict Form, Interrog. 11 11 at 4.) Fluke did not pursue its trademark-related claims until 12 after FLIR initiated this lawsuit in August 2010 and clearly after 13 the two-year laches period had expired. 14 Ordinarily, [a] presumption of both unreasonable delay and 15 prejudice arises if a plaintiff files suit more than two years 16 after the plaintiff knew or should have known of the alleged 17 infringer s activity. Adidas, 540 F. Supp. 2d at 1180. However, 18 the presumption evaporates when there are disputed issues of 19 material fact as to when the [claimant] knew or should have known 20 of the alleged infringer s activity, and thus whether the 21 [claimant] filed suit outside the analogous statute of limitations 22 period. Adidas, 540 F. Supp. 2d at 1181; A.C. Aukerman Co. v. 23 R.L. Chaides Constr. Co., 960 F.2d 1020, 1037-38 (Fed. Cir. 1992). 24 At the summary judgment stage, the Court determined that there was 25 26 14 (See Joint Pretrial Order [Docket No. 370] at 3-4) 27 (stipulation that FLIR is an Oregon corporation with its principal place of business in Oregon; this Court has jurisdiction over the 28 case and parties; and Oregon law provides the governing law). Page 32 - OPINION AND ORDER 1 a genuine issue of fact as to whether Fluke filed its trademark2 related claims outside of the laches period. See generally Couveau 3 v. Am. Airlines, Inc., 218 F.3d 1078, 1083 (9th Cir. 2000) (stating 4 that laches 5 judgment. ) is seldom susceptible of resolution by summary The case law required little of Fluke to raise a 6 material issue of fact with respect to FLIR s laches defense. The 7 Court presented what it perceived to be a weak question of fact as 8 to when Fluke knew or should have known of the alleged 9 infringement. In any event, Fluke presented evidence in opposition 10 to the laches defense resulting in FLIR being required to 11 affirmatively prove both elements of laches by a preponderance of 12 the evidence. Church & Dwight Co., Inc. v. Abbott Laboratories, 13 Civ. No. 05-2142, 2008 WL 5416383, at *5 (D.N.J. Dec. 23, 2008); 14 see also A.C. Aukerman, 960 F.2d at 1038 ( Elimination of the 15 presumption does not mean the [claimant] precludes the possibility 16 of a laches defense; it does mean, however, that the presumption of 17 laches plays no role in the ultimate decision. 18 unreasonable delay and prejudice then must be The facts of proved [by a 19 preponderance of the evidence] and judged on the totality of the 20 evidence presented. ) The Court is convinced that FLIR has done so 21 here. 22 23 a. Unreasonable Delay The Court must balance six factors to determine whether 24 Fluke s delay in filing suit was unreasonable: (1) strength and 25 value of the trademark rights asserted; (2) [the] plaintiff s 26 diligence in enforcing mark; (3) harm to senior user if relief is 27 denied; (4) good faith ignorance by junior user; (5) competition 28 between senior and junior users; and (6) extent of harm suffered by Page 33 - OPINION AND ORDER 1 the junior user because of senior user s delay. Tillamook Country 2 Smoker, Inc. v. Tillamook County Creamery Ass n, 465 F.3d 1102, 3 1108 (9th Cir. 2006) (quoting E-Systems, Inc. v. Monitek, Inc., 720 4 F.2d 604, 607 (9th Cir. 1983)). While a court is guided by [the 5 E-System] factors, ultimately, the doctrine of laches requires a 6 consideration of the circumstances of each particular case and a 7 balancing of the interests and equities of the parties. Tillamook 8 Country Smoker, Inc. v. Tillamook County Creamery Ass n, 311 F. 9 Supp. 2d 1023, 1030-31 (D. Or. 2004) (citation omitted). Indeed, 10 as Chief Judge Kozinski explained in his dissent in American 11 International Group, Inc. v. American International Bank, 926 F.2d 12 829 (9th Cir. 1991): E-Systems contemplates more than simple bead13 counting. The issue is not how many factors favor each party but 14 their weight. 15 Id. at 838. In this case, the balance tips in favor of FLIR. The timeline 16 of events leading up to FLIR s filing of this suit and totality of 17 the evidence at trial is instructive. 18 Fluke s senior product marketing On September 16, 2007, manager, Michael Stuart 19 ( Stuart ), sent an email to over sixty Fluke employees, stating: 20 On September 5th, [FLIR] officially introduced some new thermal 21 imagers with what they say is F[LIR] Fusion. 22 1.) (Trial Ex. 173 at Seven months later, on April 15, 2008, Fluke s counsel, Heidi 23 Sachs ( Sachs ), sent a cease and desist letter to FLIR s general 24 counsel, William Davis ( Davis ), stating: 25 26 27 It has come to our attention that F[LIR] recently commenced using IR FUSION for a camera that directly competes with Fluke s thermal imagers containing IR Fusion technology. . . . Such use constitutes an infringement of Fluke s state and federal trademark rights and a violation of unfair competition laws. 28 Page 34 - OPINION AND ORDER 1 . . . [I]n an the interest of an amicable resolution of this matter, please confirm that F[LIR] will: 2 1. Immediately cease use of IR confusingly similar mark . . . . 2. Provide an accounting of the materials distributed, . . . Fluke will determine whether corrective advertising is necessary to rectify this situation. 3. Confirm that F[LIR] will not use, register or seek to register IR Fusion or any confusingly similar mark. . . . 3 4 5 FUSION, or any 6 7 8 9 (Trial Ex. 142.) The jury determined that Fluke knew or should 10 have known of its trademark-related claims no later than the date 11 of this cease and desist letter. 12 On April 22, 2008, Richard O Brien ( O Brien ) of Sidley 13 Austin LLP in Chicago, Illinois, responded to Sachs letter, 14 stating: 15 16 17 18 19 20 21 22 FLIR disputes that IR FUSION is a valid trademark and disputes that it had made any use of that term in a trademark sense, versus a descriptive, generic, or other sense. Nonetheless, in order to avoid devoting further attention or incurring any expense with respect to this issue, FLIR has taken reasonable steps to avoid any use of the term IR FUSION in any way that could even be argued to be a trademark use. Specifically, FLIR has taken steps to remove all of the uses on its website of the term IR FUSION that existed at the time you sent your letter and has taken reasonable steps to recall and avoid further dissemination of any marketing materials that so use the term. We also assure you that although FLIR plans to aggressively promote its own fusion functionality, FLIR has no intention of registering IRFUSION as a trademark or domain name. 23 We trust that these steps bring this matter to an 24 end. 25 (Trial Ex. 143) (emphasis added). It is clear on this record that 26 Fluke knew FLIR contested the validity of the Fluke trademark and 27 that FLIR intended to continue to promote its products fusion 28 functionality aggressively. Page 35 - OPINION AND ORDER All FLIR agreed to do was stop using 1 the specific term IR Fusion. There is no evidence in the record 2 before the Court of any communication by Fluke to FLIR about FLIR s 3 positions as expressed in its April 22, 2008 response letter. 4 In December 2008, Fluke conducted a consumers survey that 5 indicated that those surveyed expect[ed] thermal imagers to have 6 [f]usion, which they [a]ttributed to F[LIR], and found NO 7 differentiation in performance of [f]usion by brand. 8 146 at 32.) (Trial Ex. As noted infra, despite this knowledge both pre- and 9 post-April 15, 2008, Fluke did not send its second cease and desist 10 letter to FLIR until August 5, 2010 almost four months after the 11 latest date the two-year laches period could have expired and not 12 until after FLIR had expressed concerns regarding Fluke s drop test 13 video. 14 In June 2009, Kirsten Paust ( Paust ) became Fluke s general 15 manager of thermography and started to monitor the advertising 16 that FLIR was doing that competed with Fluke. (Trial Tr. vol. 6a 17 [Docket No. 405], 1148:22-25, Dec. 14, 2012.) As Paust explained, 18 [i]t s just standard practice that anyone 19 position . . . would watch this stuff. 20 1149:1-2.) coming into this (Trial Tr. vol. 6a, During the remainder of that year, Paust observed that 21 FLIR continued to run advertisements that contained the term 22 fusion or a derivation of fusion, as it said it would do in its 23 April 22, 2008 response letter. (Tr. Tr. vol. 6a, 1149:23-1150:3.) 24 Over the course of the next year and a half, Paust was personally 25 aware of at least ten FLIR advertisements where the term fusion 26 was used. 27 2012.) (Trial Tr. vol. 6b [Docket No. 409], 1275:3-22, Dec. 14, Paust was not aware of any instances where FLIR used the 28 Page 36 - OPINION AND ORDER 1 term IR-Fusion post-2008, however. (Trial Tr. vol. 6b, 1273:1- 2 3.) 3 Despite Paust s knowledge of FLIR s continued use of allegedly 4 confusingly similar terms, and the results of the late-2008 Fluke 5 consumer survey showing, in Fluke s view, arguable dilution of 6 Fluke s trademark 7 intellectual 8 itself.15 that property, it Fluke considered did its nothing important further to protect Instead, Fluke appears to have set out on a course of 9 almost vigilante-like punishment of FLIR. 10 its most perceived ruggedness advantage and It decided to exploit produce a comparative 11 advertisement focused nearly exclusively on FLIR s less rugged 12 cameras, the drop test video advertisement which the jury 13 determined was false. 14 In late-January 2010, Sierra performed and filmed a drop test 15 video involving five thermal imaging cameras: a Fluke Ti32; a FLIR 16 i7, i60, and T400; and a Testo 880-3. Beginning in March 2010, 17 Fluke published the video on Youtube, Facebook, and Twitter; made 18 the video available to view and download on its website; and 19 displayed the video at various trade shows. 20 In May 2010, FLIR hired outside counsel to look into Fluke s 21 publication of the drop test video. (Trial Tr. vol. 2a [Docket No. 22 417], 282:15-18, 291:5-10, Dec. 10. 2012.) Teich testified that in 23 mid-July 2010 FLIR s internal counsel had [the] external law firm 24 ask Sierra Media . . . for information about the video and to hold 25 any documents that they had relative to the drop test video. 26 27 15 The Court notes the survey could well be showing that the public never identified fusion with Fluke for reasons quite apart 28 from infringement of the Fluke mark. Page 37 - OPINION AND ORDER 1 (Trial Tr. vol. 2a, 281:22-25, 282:5-6, 291:5-11); (Jury Trial R. 2 [Docket No. 378], Ex. 1 at 72, 381:08-381:18, Dec. 10, 2012) ( Q. 3 Now, [Mr. Cardenas,] how did you learn that [your company, Sierra 4 Media,] was being sued over the - over the drop test video? A. 5 Somebody from FLIR s counsel called me demanding I turn over all 6 the footage. I had a brief conversation with the them a[nd] - 7 basically I said, [n]o, it s not yours. You can t have the 8 footage. They were insisting that I had to turn it over to them. ) 9 Teich testified that he believes Sierra Media referred FLIR s 10 mid-July 2010 request to Fluke s general counsel. 11 2a, 282:19-24.) (Trial Tr. vol. During the hearing on the post-trial motions, the 12 Court asked the parties to submit record citations concerning 13 Sierra Media s referral of FLIR s pre-litigation demand to Fluke s 14 general counsel. FLIR pointed to Trial exhibit 2121, which was 15 marked for identification, but not admitted into evidence, as 16 demonstrating the basis for Teich s testimony. (Trial Ex. 2121) 17 (indicating that FLIR s external counsel spoke with Sierra Media s 18 president on July 2, 2010, and told him to contact Fluke s general 19 counsel, whose contact information was provided, for assistance on 20 July 11, 2010). 21 At trial, Fluke argued that FLIR never complained about its 22 drop test video until after the second cease and desist letter. The 23 following excerpt of counsel s opening statement on behalf of Fluke 24 lays out this strategy: 25 26 27 Now, the video played on March 10, 2010. And despite the fact that [FLIR s counsel] told you in his opening that we had to get that video off there, there was no letter in March complaining about the video. No call. 28 Page 38 - OPINION AND ORDER 1 There was no letter or call, the evidence will show, in April, the next month, from FLIR. No complaint at all. 2 3 The evidence will show that there was no complaint or letter or call complaining about the video in May. Or in June. Or in July. 4 5 And then on August 17th, 2010, FLIR filed the complaint that brought us here today. 6 7 . . . . So you may be left asking yourself when you hear the evidence, well, how come this lawsuit? 8 9 10 11 12 And I think [FLIR s counsel] showed you a piece of evidence that will be helpful for you to decide that. He showed you that letter that was sent to FLIR, complaining about the fact that they had stolen Fluke s trademark. And I don t know if you remember, but it was [dated] August 5th, 2010, just 12 days before they filed this complaint relating to this drop video about which they knew they had suffered no harm. 13 14 We had already warned them, in 2008, about taking the trademark and using it. 15 16 . . . . But then in 2010 the evidence will show they were at it again. 17 18 And when we sent them a letter on August 5th, 2010, saying, if you don t stop it this time, we re going to have to sue you. 19 20 They wanted, the evidence will show, the first strike. And so they filed this lawsuit . . . . 21 (Trial Tr. vol. 1b [Docket No. 400], 192:5-15, 193:7-18, 193:2422 194:5, 23 Dec. 7, 2012.) As discussed above, the evidence supports a much different 24 conclusion. With respect to the laches analysis, this evidence 25 strongly suggests and the Court finds that rather than enforce its 26 trademark, Fluke chose to ignore those rights in favor of a frontal 27 assault on the FLIR product line as less rugged than the Fluke 28 thermal imagers, and the jury determined it did this with false Page 39 - OPINION AND ORDER 1 advertising. Only when Fluke heard from its media and marketing 2 company that it had received inquiries seeking preservation of 3 documents regarding the drop test video did Fluke decide to seek 4 protection for its trademark. This was more than two years after 5 Fluke complained about any use of the term IR Fusion or fusion, and 6 even longer since Fluke was first aware of FLIR s use of allegedly 7 offending fusion-related terms. It was also well after FLIR 8 expressed its clear intention to keep using the term fusion. The 9 record is clear that Fluke knew throughout the latter half of 2008 10 and during 2009 that FLIR in fact continued using the term fusion 11 as it said it would. 12 On August 5, 2010, Fluke sent its second cease and desist to 13 FLIR, wherein Sachs only cited one example a September 1, 2008 14 press release of an alleged infringing use by FLIR that 15 appear[ed] to (1) have been posted after FLIR s April 22, 2008 16 response to the original cease and desist letter and (2) violate 17 the representations made therein. (Trial Ex. 144 at 1-2.) 18 Nowhere in the letter does Sachs mention when she first became 19 aware of the September 1, 2008 press release. Twelve days later, 20 on August 17, 2010, after Fluke declined FLIR s proposed thirty-day 21 standstill period to allow the parties an opportunity to resolve 22 their differences, (Trial Ex. 1012 at 2), FLIR commenced this 23 action, asserting federal and state law claims based on the drop 24 test video, and seeking declarations of invalidity, non- 25 infringement, and unenforceability of Fluke s IR Fusion trademark. 26 When presented with Fluke s December 2008 consumer survey and 27 August 5, 2010 cease and desist letter, Fluke s own branding 28 Page 40 - OPINION AND ORDER 1 expert, Dr. Erich Joachimsthaler ( Joachimsthaler ), testified at 2 trial that Fluke was less than diligent in enforcing its mark: 3 Q. Does [Trial Ex. 146] demonstrate [that] in December of 2008 . . . Fluke was aware that the marketplace viewed fusion technology as attributed to FLIR? A. Yes. 4 5 6 (Trial Tr. vol. 5a [Docket No. 404], 1010:16-19, Dec. 13, 2012.) 7 Q. [Trial Ex. 144] is a letter that was sent in August of 2010. Correct? A. Yes. Q. And it s referencing the fact that . . . Fluke found a use of the words IR-Fusion, apparently by FLIR, in September of 2008? A. Yes. Q. Almost two years prior. A. Yes. Q. And in your opinion, is that proactively managing your valuable brand? A. No. That s a big miss . . . . 8 9 10 11 12 Correct? 13 14 15 16 17 (Trial Tr. vol. 5a, 1013:4-15.) In a colloquy outside the presence 18 of the jury, the Court confirmed what Dr. Joachimsthaler meant when 19 he said, [t]hat s a big miss : 20 23 THE COURT: Sir, I wanted to clear up the transcript in one respect. There were two or three times that you were asked a question and you gave an answer . . . [regarding] the topic of waiting [over] two years to . . . send a second letter [cease and desist letter] . . . [a]nd you said something like, [t]hat was a big miss or big mess. Which were you saying . . . ? 24 THE WITNESS: It s . . . a big miss. 21 22 25 (Trial Tr. vol. 5a, 1033:25-1034:7.) 26 THE WITNESS: Yeah, it s a missed opportunity . . . . 27 (Trial Tr. vol. 5a, 1034:13.) 28 Page 41 - OPINION AND ORDER 1 According to Teich, during that same time period, FLIR 2 extensively marketed its own fusion functionality by using the term 3 fusion : 4 5 6 7 During that period of time, [between April 2008 and August 2010], since we did not hear anything relative to the statement that we said that we were going to continue to aggressively promote our fusion functionality, we felt that Fluke would not have any objection to us using the term fusion. So we invested a considerable amount of money in marketing FLIR fusion functionality during that period of time. 8 9 10 Had we known that there was going to be an issue with that, we would have either resolved the issue at that time or chose some other means of marketing functionality [or not spent the money at all]. 11 (Trial Tr. vol. 7b, 1605:12-23, 1606:9-10.) No evidence was 12 presented contradicting the fact that FLIR invested a considerable 13 amount of money in marketing its own fusion functionality. 14 In addition, Fluke only identified four instances at trial 15 where FLIR used the term IR Fusion, all of which were in small 16 print on the specification page of the advertisement, and two of 17 which indisputably occurred prior to the end of 2008. (See Trial 18 Ex. 1101 at 2, using the phrase IR Fusion Picture in Picture 19 (PIP), which was printed in about size 8 font in a FLIR press 20 release dated September 1, 2008); (Trial Ex. 1227 at 12, FLIR 21 advertisement stating IR fusion picture in picture (PIP), which 22 is printed in about size 8 font); (Trial Ex. 1227 at 21, FLIR 23 advertisement stating IR fusion picture in picture (PIP) in a 24 similar font size); (Trial Ex. 1227 at 77, FLIR advertisement, 25 copyright 2008, using the phrase IR Fusion . . . Picture in 26 Picture (PIP)-scalable IR image in visible light image in an even 27 smaller font size). 28 Page 42 - OPINION AND ORDER 1 Based on the foregoing, the Court concludes that Fluke s delay 2 in bringing suit was unreasonable. Fluke offered no credible 3 explanation for its delay in light of its claim the IR Fusion mark 4 is its most prized intellectual property. 5 Corp., 263 F.3d 942, 955 (9th Cir. See Danjaq LLC v. Sony 2001) (holding that the 6 unreasonable delay element of laches was satisfied because the 7 claimant offered no viable justification for the delay ); see also 8 Am. Int l Group, 926 F.2d at 834 (Kozinski, J., dissenting) 9 ( Companies expecting judicial enforcement of their marks must 10 conduct an effective policing effort. ) b. 11 12 Prejudice FLIR must still satisfy the second prong of the laches test: 13 prejudice 14 Internet from Fluke s Specialties, unreasonable 559 F.3d at delay 991.16 in The bringing Ninth suit. Circuit 15 generally recognizes two forms of prejudice in a laches context: 16 evidentiary and expectations-based. Evergreen Safety Council v. 17 RSA Network, Inc., 697 F.3d 1221, 1227 (9th Cir. 2012). 18 As described above, Fluke s delay here caused expectations- 19 based prejudice because FLIR took actions or suffered consequences 20 that it would not have, had Fluke brought suit promptly. Id.; 21 cf. Miller v. Glenn Miller Prods., Inc., 454 F.3d 975, 999 (9th 22 Cir. 2006) ( A defendant may establish prejudice by showing that 23 during the delay, it invested money to expand its business or 24 entered into business transactions based on his presumed rights. ) 25 26 16 Conversely, in Grupo Gigante SA De CV 391 F.3d 1088, 1101-05 (9th Cir. 2004), the 27 the two laches elements and considered System s sixth factor (harm suffered by the 28 the plaintiff s delay). Page 43 - OPINION AND ORDER v. Dallo & Co., Inc., Ninth Circuit merged prejudice under Edefendant because of 1 Indeed, had Fluke filed sooner, or at least explained that it 2 objected to FLIR s use of the term fusion after receiving its April 3 22, 2008 response letter, FLIR may have chosen an alternative 4 marketing position. 5 (emphasis added). Jarrow, 304 F.3d 829 (citation omitted) The Court rests its holding on, among other 6 things, the public association that FLIR has built between the term 7 fusion and its thermal imagers, as demonstrated (at its infancy) by 8 Fluke s December 2008 consumer survey. See Internet Specialties, 9 559 F.3d at 992 (recognizing that a finding of prejudice can rest 10 on a similar conclusion).17 11 Moreover, while expectation-based prejudice alone is 12 sufficient, see Petrella v. Metro-Goldwyn-Mayer, Inc., 695 F.3d 13 946, 953 (9th Cir. 2012) ( We conclude that expectations-based 14 prejudice exists 15 prejudice ), here, Fluke s so delay we also need not caused consider evidentiary evidentiary prejudice. 16 Evidentiary prejudice includes such things as lost, stale, or 17 degraded evidence. Danjaq, 263 F.3d at 955. At trial, Fluke s 18 counsel took FLIR s secondary meaning survey to task, arguing that 19 it lacked any evidentiary or legal significance as to the alleged 20 invalidity of Fluke s trademark because it was conducted in early 21 2012 several years after the marketplace had been subjected to the 22 effects of FLIR s trademark infringement. 23 vol. 6b, 1365:19-1366:21.) (See, e.g., Trial Tr. Based on the lack of an objection to 24 25 17 The Court also notes that there is evidence in the record 26 to support a conclusion that the result of the December 2008 Fluke consumer survey was as much or more due to FLIR s earlier 27 development of the fusion functionality, as it was due to any FLIR advertising in the 2008 time period after FLIR s April response to 28 the first cease and desist letter. Page 44 - OPINION AND ORDER 1 FLIR s claim to be legitimately using the term fusion, and the use 2 of that term from April 2008 through August 2010, it is hardly 3 surprising that FLIR did not have a secondary meaning survey 4 conducted until after Fluke filed its claim for trademark 5 infringement. 6 As Fluke itself points out, deficiencies in the timeliness of 7 the survey . . . goes to the weight afforded the survey. 8 Nightlight Sys., Inc. v. Nitelites Franchise Sys., Inc., No. 1:049 CV-2112-CAP, 2007 WL 4563873, at *9 (N.D. Ga. July 17, 2007). Which 10 is why Fluke was adamant that the jury be provided an instruction 11 indicating that timing is important because the crucial date for 12 determining whether a mark has secondary meaning through acquired 13 distinctiveness is the date on which the alleged infringer entered 14 the market with the disputed mark or term. 18 Learning Internet 15 v. Learn.com, Inc., No. CV 07-227-AC, 2009 WL 6059550 (D. Or. Nov. 16 25, 2009) (quoting Yellow Cab Co. of Sacramento v. Yellow Cab of 17 Elk Grove, Inc., 419 F.3d 925, 928 (9th Cir. 2005)). Fluke cannot 18 argue to the jury on the one hand that this survey by FLIR is 19 entitled to little weight given its timing, and later argue that 20 FLIR s evidence was not negatively affected by the delay in its 21 origination. The Court finds any delay and lesser weight to be 22 given to FLIR s survey was factually due to Fluke s failure to 23 object to FLIR s April 2008 response and assertion of its rights 24 until August 2010. 25 The weight accorded to FLIR s survey was vital to its defense 26 because, in the Court s view, IR Fusion is at best a descriptive 27 18 Here there is evidence of FLIR s use of the term FLIR 28 Fusion as early as September 2007. (Trial Ex. 173.) Page 45 - OPINION AND ORDER 1 term that required the acquisition of secondary meaning in order to 2 enjoy trademark protection. See Brookfield Commc ns, Inc. v. W. 3 Coast Entm t Corp., 174 F.3d 1036, 1058 n.19 (9th Cir. 1999) 4 ( Descriptive terms directly describe the quality or features of 5 the product. ) (emphasis added); Rudolph Intern., Inc. v. Realys, 6 Inc., 482 F.3d 1195, 1197 (9th Cir. 2007) (descriptive terms 7 generally do not enjoy trademark protection, unless they have 8 acquired secondary meaning in the minds of consumers). c. 9 10 Fluke Willfulness Exception to Laches claims that FLIR s bad faith alone defeats its 11 affirmative defense of laches. (Fluke s Opp n FLIR s Mot. [Docket 12 No. 443] at 30.) Over the past eighty-five years, various courts 13 have held that laches does not bar a suit against a deliberate 14 infringer. Danjaq, 263 F.3d at 956. This willfulness exception 15 has been applied by the Ninth Circuit in the trademark arena. See 16 id. at 957 ( The attempted proof of laches is too trivial to 17 require serious consideration. In the light of the intentional and 18 fraudulent use of appellant s trade mark, the defense here is a 19 frivolous one. (quoting Nat l Lead Co. v. Wolfe, 223 F.2d 195, 202 20 (9th Cir. 1955))). For the purposes of this exception, the term 21 willful refers to conduct that occurs with knowledge that the 22 defendant s conduct constitutes [trademark] infringement. Id. 23 (internal quotation marks and citation omitted). 24 In this case, the evidence is insufficient to demonstrate that 25 FLIR engaged in conduct 26 trademark infringement. 27 following story. with knowledge that it constituted The record before the Court tells the On April 15, 2008, outside counsel for Fluke 28 wrote the first cease and desist letter to FLIR complaining of Page 46 - OPINION AND ORDER 1 FLIR s use of IR Fusion and fusion. On April 22, 2008, FLIR 2 responded to Fluke stating that FLIR planned on aggressively 3 promoting its own fusion functionality and agreeing to no longer 4 use IR Fusion. FLIR s use of the term fusion, which it believed 5 described a feature of its thermal imaging cameras, continued 6 unabated (as Fluke was well aware) until August 2010, not long 7 after FLIR asked Sierra Media to preserve and/or turn over evidence 8 pertaining to the drop test video. Perhaps most tellingly, on July 9 1, 2010, before FLIR made its demand on Sierra Media, Fluke 10 submitted an application to the United States Patent and Trademark 11 Office ( PTO ), which stated the following: 12 Those skilled in the art [of thermography] call th[e] merging of images fusion[.] . . . A variety of methods for presenting a thermal image fused with a corresponding visible light image are known in the art, one example of which is known as FLIR Triple Fusion . . . , wherein an infrared image may be moved, resized and reshaped inside a visible light image. 13 14 15 16 (Trial Ex. 197 at 4) (emphasis added). Clearly FLIR did not 17 knowingly engage in conduct that it believed constituted trademark 18 infringement. See Danjaq, 263 F.3d 942 (willfulness exception 19 inapplicable where party can show at most only infringement, not 20 willful infringement. ) 21 In sum, the Court concludes that FLIR has demonstrated both an 22 unreasonable delay and that it was prejudiced such that the laches 23 defense applies here. Because Fluke s trademark-related claims are 24 barred, the Court denies Fluke s request for the Court to enter 25 judgment in its favor on those claims. Instead, judgment 26 dismissing the trademark-related damages claims is appropriate. 27 /// 28 /// Page 47 - OPINION AND ORDER 1 2. Injunctive Relief 2 It has often been said that laches is generally not a bar to 3 prospective injunctive relief. Jarrow Formulas, 304 F.3d at 840. 4 Often times the defendant will not be prejudiced by a bar on 5 future conduct because [l]aches stems from prejudice to the 6 defendant occasioned by the plaintiff s past delay . . . [and] the 7 plaintiff s past dilatoriness is [typically] unrelated 8 defendant s ongoing behavior that threatens future harm. to a Id. 9 (citation omitted). Injunctive relief is the remedy of choice for 10 trademark . . . cases, since there is no adequate remedy at law for 11 the injury caused by a defendant s continuing infringement. 12 Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th 13 Cir. 1988). In the Court s view, prospective injunctive relief can 14 be fashioned in such a way that will not prejudice FLIR and will 15 protect Fluke against any continued use of its trademark. The 16 Court will set a hearing at a later date to address the terms/ 17 scope of Fluke s injunction. 18 3. Attorney s Fees and Costs 19 For the reasons discussed supra, Part II.B.3., the Court will 20 examine the relief awarded to Fluke and the unlawfulness of FLIR s 21 conduct in assessing Fluke s request for attorney s fees under § 22 1117(a). [G]enerally a trademark case is exceptional for purposes 23 of an award of attorneys fees when the infringement is malicious, 24 fraudulent, deliberate or willful. Lindy Pen Co. v. Bic Pen 25 Corp., 982 F.2d 1400, 1409 (9th Cir. 1993); see also Watec, 403 26 F.3d at 656 (exceptionality is question of law for the district 27 court). In this case, the Court has determined that Fluke is 28 entitled to an injunction which weighs heavily in favor of awarding Page 48 - OPINION AND ORDER 1 attorney s fees. See TrafficSchool, 653 F.3d at 832 (citing cases 2 where plaintiffs were entitled to attorney s fees when the district 3 court awarded an injunction but not damages). As to the 4 unlawfulness of FLIR s conduct, it will be considered at the time 5 of the hearing on the terms of the injunction and if fees are to be 6 awarded, Fluke will then be directed to submit its fee application 7 with appropriate supporting materials. 8 4. Prejudgment Interest 9 Fluke requests that the Court order prejudgment interests on 10 the $4,136,975 awarded by the jury. 11 No. 434] at 20.) As stated in (Fluke s Mem. Supp. [Docket Part II.B.4., an award of 12 prejudgment interest is a matter left to the discretion of the 13 district court. Cyclone USA, 2010 WL 2132378, at *1. As with 14 FLIR, the Court has determined that Fluke is not entitled to 15 prejudgment interest since Fluke s trademark-related claims are 16 barred by laches. See Brittingham v. Jenkins, 914 F.2d at 457 17 (reversing award of prejudgment interest on Lanham Act claim based 18 on application of equitable defense). 19 5. Invalidity 20 In the alternative, FLIR argues that it is entitled to JMOL 21 that Fluke s mark is invalid or, alternatively, a new trial on the 22 issue of invalidity. In support of this assertion, FLIR claims 23 that IR Fusion and fusion are descriptive of the technological 24 process of blending infrared and visible light images, and no 25 secondary meaning exists with either of these terms. (FLIR s Mem. 26 Supp. [Docket No. 436] at 34.) 27 Without deciding the issue, the Court notes that it has little 28 difficulty concluding that IR Fusion is a descriptive term. Page 49 - OPINION AND ORDER 1 Descriptive terms directly describe the quality or features of the 2 product. Brookfield, 174 F.3d at 1058. They convey an immediate 3 idea of the ingredients, qualities or characteristics of the 4 goods. Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 5 4, 11 (2d Cir. 1976). Throughout the course of the litigation, 6 Fluke has represented and the evidence has clearly established that 7 IR Fusion signifies a feature that enables a handheld thermal 8 imager equipped with a digital camera to overlay . . . a visible 9 and thermal image. (Fluke s Resp. Opp n FLIR s Mot. Summ. J. 10 [Docket No. 200] at 2) (emphasis added). 11 survey in December 2008 indicates Indeed, Fluke s own consumers consider fusion 12 technology table stakes (i.e., a basic feature included on a 13 thermal imager) and expect products to have Fusion. 14 146 at 32.) (Trial Ex. The real issue, then, is whether Fluke proved 15 secondary meaning at trial. See Lahoti v. Vericheck, Inc., 636 16 F.3d 501, 505-06 (9th Cir. 2011) ( [A] descriptive mark that lacks 17 secondary meaning is not distinctive and is not entitled to 18 trademark protection. ) 19 The Second Circuit faced similar circumstances in PaperCutter, 20 Inc. v. Fay s Drug Co., Inc., 900 F.2d 558 (2d Cir. 1990). There, 21 following a bench trial, the district court held that there was no 22 infringement of the plaintiff s trademark, but upheld the 23 registration of the mark because it had acquired secondary meaning. 24 Id. at 559. On review, the Second Circuit granted the cancellation 25 of the plaintiff s trademark because it failed to meet the burden 26 of establishing that its descriptive mark had acquired secondary 27 meaning. Id. at 565. The Second Circuit emphasized that (1) it 28 had no doubt the plaintiff s trademark was purely descriptive; Page 50 - OPINION AND ORDER 1 and (2) the burden [to prove secondary meaning] d[id] not shift 2 upon a decision of the [PTO] to register the mark, absent evidence 3 that the [PTO] registered the mark upon finding that it had 4 acquired secondary meaning. 5 Here, the PTO Id. at 563-64. registered the IR Fusion mark, without 6 requiring proof of secondary meaning, in early June 2008. Thus, as 7 in PaperCutter, 8 preponderance 9 secondary Fluke of the meaning at bore the evidence the time burden that [its] [FLIR] of proving mark began had [its] by a acquired allegedly 10 infringing activities. Morgans Group LLC v. John Doe Co., No. 1011 CV-5225, 2012 WL 1098276, at *5 (S.D.N.Y. Mar. 31, 2012) (citation 12 omitted). 13 FLIR contends Fluke did not meet its burden. Whether FLIR meets the standard for JMOL or a new trial on the 14 issue of validity is a close issue. While Fluke presented some 15 evidence on various factors considered for secondary meaning, 16 significantly, a little over a year after Fluke became aware that 17 FLIR introduced some new thermal imagers with what [it said was] 18 F[LIR] Fusion, (Trial Ex. 173 at 1), and just six months after 19 the PTO registered the IR Fusion mark, Fluke conducted a survey 20 which indicated that consumers expect thermal imagers to be 21 equipped with fusion technology. See Official Airline Guides, Inc. 22 v. Goss, 6 F.3d 1385, 1395 (9th Cir. 1993) ( Consumer perceptions 23 are relevant in determining whether a non-inherently distinctive 24 mark has acquired secondary meaning and should therefore be treated 25 as a strong mark. ) 26 In order to establish that a descriptive term has secondary 27 meaning, the plaintiff must show that the primary significance of 28 the term in the minds of the consuming public is not the product Page 51 - OPINION AND ORDER 1 [or feature of the product] but the producer. Transgo, Inc. v. 2 Ajac Transmission Parts Corp., 768 F.2d 1001, 1015 (9th Cir. 1985) 3 (emphasis added). If consumers considered fusion technology table 4 stakes, expect[ed] products to have Fusion, and saw NO 5 differentiation in performance of Fusion by brand in December 6 2008, (Trial Ex. 146 at 32), it seems highly unlikely that the 7 significance of the term IR Fusion in the minds of the consuming 8 public could have been anything other than a feature of the product 9 or any thermal imager a little over a year earlier. 10 FLIR s secondary meaning survey lends credence to this 11 interpretation. Many cases recite that proof of secondary meaning 12 is sufficient if it shows that a significant or substantial 13 part of the buying class use the designation to identify a single 14 source. 6 McCarthy on Trademarks & Unfair Competition § 32:190 15 (4th ed. 2013). Although figures over 50% are regarded as clearly 16 sufficient, figures of 46% and 37% have also been found sufficient. 17 Id. In this case, FLIR s secondary meaning survey indicated that: 18 (1) 34% of respondents associated the term IR Fusion with thermal 19 imaging cameras; (2) 9% associated the term IR Fusion with Fluke; 20 and (3) the measured level of secondary meaning in the term IR 21 Fusion was only 7%. 22 778 F.2d 1352, 1358 See Levis Strauss & Co. v. Blue Bell, Inc., (9th Cir. 1985) ( An expert survey of 23 purchasers can provide the most persuasive evidence on secondary 24 meaning. ) Even though FLIR s secondary meaning survey was 25 conducted in early 2012, it seems doubtful that a significant or 26 substantial part of thermal imager buyers used the designation to 27 identify a single source in September 2007 or at any other time 28 based on the evidence in this record. Page 52 - OPINION AND ORDER Fluke s own survey in 1 December of 2008 showed the buying class considered fusion 2 technology table stakes and expect[ed] products [i.e., all 3 thermal imagers] to have Fusion. [T]he evidentiary burden 4 necessary to establish secondary meaning is substantial where the 5 mark applie[s] to an article designate[d] a principal ingredient 6 desired by the [buying class]. Aloe Creme Laboratories, Inc. v. 7 Milsan, Inc., 423 F.2d 845, 850 (5th Cir. 1970), cert. denied, 398 8 U.S. 928 (1970). 9 Ultimately, however, given the record in this case, the laches 10 defense discussed above is the clearest reason Fluke s damages 11 award cannot be upheld. The laches analysis (1) moots the closer 12 question of whether Fluke established secondary meaning for its 13 mark; (2) accounts for any prejudice FLIR may have suffered in 14 defending itself; and (3) allows the Court to address Fluke s 15 injunctive relief claim as an appropriate framework to address the 16 protection Fluke may be entitled to, and FLIR s ability to promote 17 its own fusion technology. Thus, it is not necessary to rule on 18 whether FLIR is entitled to JMOL that Fluke s mark is invalid or a 19 new trial on the issue of invalidity. 20 D. Fluke s Remaining False Advertising Claims 21 The jury found that two FLIR advertisements T-Series Line Up, 22 Comparison to the Fluke Ti32, (Trial Ex. 1171), and Why FLIR for 23 Architectural Testing?, (Trial Ex. 1183) were false in violation 24 of the Lanham Act. (Special Verdict Form at 6, Interrogs. 19-20.) 25 Fluke therefore argues that it is entitled to entry of judgment and 26 permanent injunctive relief with respect to those advertisements. 27 FLIR, on the other hand, argues that the Court should not issue any 28 injunctive relief to Fluke because (1) Fluke presented no evidence Page 53 - OPINION AND ORDER 1 at trial demonstrating the scope of FLIR s use of these two 2 PowerPoint presentations, such as where, when, or for how long 3 those two promotional materials were actually disseminated to the 4 public in interstate commerce; (2) the two PowerPoint presentations 5 have copyright dates of 2009 and were intended to be used only for 6 internal sales training purposes and not interstate commerce; and 7 (3) FLIR has ceased all use of those two materials and instituted 8 controls to prevent their further use and dissemination. 9 [A] plaintiff is not automatically entitled to an injunction 10 even if it proves its affirmative claims. Contessa Food Prods., 11 Inc. v. Lockpur Fish Processing Co., Ltd., Civ. Nos. 9808218, 9912 4783, 2003 WL 25778704, at *7 (C.D. Cal. Jan. 29, 2003). As Fluke 13 appropriately notes in opposition to FLIR s request for permanent 14 injunctive relief with regard to the drop test video, a defendant s 15 voluntary cessation of its alleged unlawful conduct moots the need 16 for a permanent injunction, so long as the defendant s reform is 17 irrefutably demonstrated and total. 18 at 1135. See Polo Fashions, 793 F.2d According to FLIR s director sales in the United States, 19 Brent Lammert ( Lammert ), FLIR has instructed all its sales and 20 marketing personnel that those two power point presentations may 21 never be used again, to any extent. (Lammert Decl. ¶ 4.) Unlike 22 the supposed cessation of the drop test video, the Court has not 23 been provided with supplemental declarations citing examples that 24 refute Lammert s statements. 25 injunctive relief is now moot. Accordingly, Fluke s claim for See Contessa, 2003 WL 25778704, at 26 *8 (stating that the court finds that [the defendant] s claim for 27 injunctive relief is now moot, as the allegedly wrongful behavior 28 cannot reasonably be expected to recur. ) Page 54 - OPINION AND ORDER 1 E. Renewed Motions for JMOL 2 Consistent with the prior rulings, the Court (1) denies FLIR s 3 renewed motion for JMOL on Fluke s unclean hands defense; (2) 4 denies Fluke s renewed JMOL on FLIR s false advertising claim; (3) 5 denies Fluke s renewed JMOL on FLIR s laches defense; and (4) 6 denies as moot FLIR s renewed motions for JMOL concerning laches 7 and Fluke s entitlement to injunctive relief as to the two 8 advertisements discussed in Part II.D., (see FLIR s Mot. Post-Trial 9 Relief at 3.) 10 Fluke has also renewed its motion for JMOL on its false 11 advertising claim regarding FLIR s use of superimposed imagery. 12 Fluke s argument, in its entirety, is as follows: [T]he jury s 13 verdict . . . is contrary to the evidence. 14 26.) (Fluke s Mem. Supp. at This argument is entirely unpersuasive. A jury s verdict 15 must be upheld if it is supported by substantial evidence, which is 16 evidence adequate to support the jury s conclusion, even if it is 17 also possible to draw a contrary conclusion. 18 F.3d 915, 918 (9th Cir. 2002). Pavao v. Pagay, 307 Because substantial evidence 19 supported the jury s verdict here, Fluke s renewed motion for JMOL 20 is denied. 21 F. Fluke s Redaction Request 22 On January 4, 2013, Fluke filed a notice of intent to redact 23 the trial transcripts, and subsequently filed its redaction request 24 on January 22, 2013. In that request, Fluke sought redaction of 25 certain trial testimony regarding its sales and profits. FLIR s 26 opposition to Fluke s request aptly summarizes the Court s position 27 on this matter: [T]he Court was clear . . . [at] the start of 28 trial that if the parties intended to seek to exclude the public Page 55 - OPINION AND ORDER 1 from any part of the trial or would later seek to seal particular 2 trial testimony or evidence, they would need to submit legal 3 authority for that position. Fluke, however, failed to do so. 4 (FLIR s Resp. Fluke s Redaction Request [Docket No. 426] at 2.) 5 Fluke s redaction request is denied. III. CONCLUSION 6 7 For the reasons stated, Fluke s redaction request (Docket No. 8 422) is DENIED; Sierra s motion (Docket No. 431) for attorney s 9 fees under § 1117(a) is DENIED; Fluke s motion (Docket No. 433) re: 10 post-trial issues is GRANTED in part and DENIED in part; and FLIR s 11 motion (Docket No. 435) for post-trial relief, judgment as a 12 matter of law, or alternatively, for a new trial is GRANTED in part 13 and DENIED in part. 14 IT IS SO ORDERED. 15 Dated this 8th day of August, 2013. 16 /s/ Dennis J. Hubel _________________________________ DENNIS J. HUBEL United States Magistrate Judge 17 18 19 20 21 22 23 24 25 26 27 28 Page 56 - OPINION AND ORDER

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