     Case: 14-11157   Document: 00513489438     Page: 1   Date Filed: 05/03/2016




        IN THE UNITED STATES COURT OF APPEALS
                 FOR THE FIFTH CIRCUIT     United States Court of Appeals
                                                                          Fifth Circuit

                                                                         FILED
                                                                       May 3, 2016
                                 No. 14-11157
                                                                      Lyle W. Cayce
                                                                           Clerk
CLARK BAKER; OFFICE OF MEDICAL AND SCIENTIFIC JUSTICE,
INCORPORATED,

             Plaintiffs - Appellees

v.

JEFFREY TODD DESHONG,

             Defendant - Appellant




                Appeals from the United States District Court
                     for the Northern District of Texas


Before STEWART, Chief Judge, and JONES, and DENNIS, Circuit Judges.
CARL E. STEWART, Chief Judge:
      Plaintiffs-Appellees Clark Baker and the Office of Medical and Scientific
Justice, Inc. (the “OMSJ”) brought this action against Defendant-Appellant
Jeffery Todd DeShong alleging, inter alia, trademark infringement in violation
of the Lanham Act, 15 U.S.C. § 1051 et seq., and the Texas Business and
Commerce Code. The district court dismissed the Lanham Act claim, declined
to exercise pendent jurisdiction over the state law claims, and denied
DeShong’s subsequent request for an award of attorney’s fees stemming from
Baker and the OMSJ’s allegedly frivolous trademark claims. DeShong appeals
the district court’s denial of attorney’s fees under the Lanham Act. In light of
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recent Supreme Court precedent illuminating the standard for “exceptional”
cases which warrant the award of attorney’s fees, we REVERSE and
REMAND.
                                        I.
      Clark Baker is a retired officer of the Los Angeles Police Department and
a licensed private investigator.    Relevant to this suit is his role as Chief
Executive Officer of the OMSJ, a non-profit corporation which investigates
medical and scientific corruption cases. In 2010, the OMSJ launched the
website www.omsj.org to promote numerous medical, legal and investigative
services for individuals involved in criminal or civil suits. One such service is
the OMSJ’s “HIV Innocence Group,” a non-profit organization that facilitates
the representation of individuals accused of the intentional or reckless
infection of another person with HIV.
      In   2011,     DeShong     launched         two   websites    of   his   own:
www.hivinnocencegrouptruth.com and www.hivinnocenceprojecttruth.com.
According to DeShong, each was created in order to deconstruct the OMSJ’s
alleged misrepresentation of the effects of HIV and AIDS and allegedly false
research that the OMSJ promulgated on its “HIV Innocence Group” webpage.
As DeShong’s website names clearly indicate, the use of the phrases “HIV
Innocence Group Truth” and “HIV Innocence Project Truth” are similar to the
“HIV Innocence Group” website published by the OMSJ.
                                        II.
      Baker and the OMSJ filed the underlying action against DeShong in the
District Court of the Northern District of Texas, Fort Worth Division.          The
complaint, as amended, asserted four claims against DeShong: (1) trademark
infringement under the Lanham Act; (2) trademark infringement under the


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Texas Business and Commerce Code; (3) defamation; and (4) business
disparagement.
      The district court dismissed the Lanham Act claims, concluding that
even taking Baker’s allegations as true, he failed to raise an inference that a
reasonable person could confuse the content of DeShong’s website with the
OMSJ’s “HIV Innocence Group” trademark. Weighing statutory and common
law factors, the district court declined to exercise jurisdiction over Baker’s
remaining state law claims.
      DeShong moved for attorney’s fees under § 1117(a) of the Lanham Act in
the amount of $49,706.86, which the court denied. Relying on current Fifth
Circuit precedent, the district court determined that DeShong failed to show
that this suit was an example of an “exceptional” case which warranted the
award of attorney’s fees. The court concluded that DeShong had not shown by
clear and convincing evidence that Baker and the OMSJ pursued this suit in
bad faith. DeShong timely appeals.
      On appeal, DeShong argues that this court should (1) adopt the Supreme
Court’s standard in Octane Fitness, LLC v. Icon Health and Fitness, Inc., 134
S. Ct. 1749 (2014), which expanded the standard under which a lawsuit
presents an “exceptional case” meriting the award of attorney fees; and (2)
conclude that the OMSJ’s groundless trademark claim is sufficient to deem
this case exceptional.
                                       III.
      We first address whether the district court erred in its interpretation of
15 U.S.C. § 1117(a) in denying DeShong’s motion for attorney’s fees under the
Lanham Act. Our analysis begins with the text of § 1117(a): “The court in
exceptional cases may award reasonable attorney fees to the prevailing party.”
In Scott Fetzer Co. v. House of Vacuums, we held that a case is “exceptional” if

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brought in bad faith. 381 F.3d 477, 490 (5th Cir. 2004); see also Robin Sing
Educ. Servs. Inc. v. Excel Test. Prep., 291 F. App’x 620, 621 (5th Cir. 2008).
“[T]he prevailing party must demonstrate the exceptional nature of the case
by clear and convincing evidence . . . .” CJC Holdings, Inc. v. Wright & Lato,
Inc., 979 F.2d 60, 65 (5th Cir. 1992).
       DeShong urges this court to adopt the Supreme Court’s holding in
Octane Fitness, which analyzed when a district court may award fees under
the “exceptional” case standard as established under the Patent Act. See 35
U.S.C. § 285; Octane Fitness, 134 S. Ct. at 1756. The Octane Fitness Court
unanimously decided that the word “exceptional” does not limit the award of
attorney’s fees in a patent lawsuit to cases in which a party’s bad faith conduct
is shown by clear and convincing evidence. Octane Fitness, 134 S. Ct. at 1756.
We adopt the Supreme Court’s construction of “exceptional” according to its
ordinary meaning:
             [W]hen Congress used the word in § 285 (and today, for that
       matter), “[e]xceptional” meant “uncommon,” “rare,” or “not
       ordinary.” Webster’s New International Dictionary 889 (2d ed.
       1934); see also 3 Oxford English Dictionary 374 (1933) (defining
       “exceptional” as “out of the ordinary course,” “unusual,” or
       “special”); Merriam–Webster’s Collegiate Dictionary 435 (11th ed.
       2008) (defining “exceptional” as “rare”); Noxell Corp. v. Firehouse
       No. 1 Bar–B–Que Restaurant, 771 F.2d 521, 526 (C.A.D.C.1985)
       (R.B. Ginsburg, J., joined by Scalia, J.) (interpreting the term
       “exceptional” in the Lanham Act’s identical fee-shifting provision,
       15 U.S.C. § 1117(a), to mean “uncommon” or “not run-of-the-mill”).

Id.
       Prior to Octane Fitness, the Federal Circuit held that patent litigants
may only recover attorney’s fees under § 285 with proof by clear and convincing
evidence of either (1) litigation-related misconduct of an independently
sanctionable magnitude or (2) a suit brought in subjective bad faith that is

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objectively baseless. Id. at 1754 (citing Brooks Furniture Mfg., Inc. v. Dutailier
Int’l, Inc., 393 F.3d 1378, 1381 (Fed. Cir. 2005)). Finding this framework
inconsistent with the text of § 285, the Court embraced an expansive reading
of the word “exceptional,” explaining that the current standard articulated by
the Federal Circuit was an inflexible framework superimposed onto statutory
text that is inherently flexible.   Id. at 1754, 1756 (“[T]he Federal Circuit
abandoned that holistic, equitable approach in favor of a more rigid and
mechanical formulation.”). In fact, the Court turned to the D.C. Circuit’s
reading of the Lanham Act, where it held that “it [is] fair to assume that
Congress did not intend rigidly to limit recovery of fees by a [Lanham Act]
defendant to the rare case in which a court finds that the plaintiff ‘acted in bad
faith, vexatiously, wantonly, or for oppressive reasons’ . . . . Something less
than ‘bad faith’ suffices to mark a case as ‘exceptional.’” Octane Fitness, 134 S.
Ct. at 1757 (alteration in original) (quoting Noxell, 771 F.2d, at 526). The Court
defined an “exceptional” case under § 285 as any case which “stands out from
others with respect to the substantive strength of a party’s litigating position
(considering both the governing law and the facts of the case) or the
unreasonable manner in which the case was litigated.” Id. at 1756.            For
example, in Fogerty, the court explained that in determining whether to award
fees under a similar provision in the Copyright Act, “district courts could
consider a ‘nonexclusive’ list of ‘factors,’ including ‘frivolousness, motivation,
objective unreasonableness (both in the factual and legal components of the
case) and the need in particular circumstances to advance considerations of
compensation and deterrence.’” Id. at 1756 n.6 (quoting Fogerty v. Fantasy,
Inc., 510 U.S. 517, 534 n.19 (1994)).
      The Court similarly made clear that such a bad faith requirement would
render § 285 superfluous: “We have long recognized a common-law exception

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to the general American rule against fee-shifting—an exception, inherent in
the power [of] the courts that applies for ‘willful disobedience of a court order
or when the losing party has acted in bad faith, vexatiously, wantonly, or for
oppressive reasons.” Id. at 1749 (alteration in original) (quotation marks
omitted) (quoting Alyeska Pipeline Service Co. v. Wilderness Soc’y, 421 U.S.
240, 258–259 (1975)).
       Finally, the Court rejected the “clear and convincing” evidentiary hurdle
established by the Federal Circuit and has yet to construe similar fee-shifting
statutes as requiring proof of entitlement to fees by clear and convincing
evidence. See id. at 1758 (“[N]othing in § 285 justifies such a high standard of
proof. Section 285 demands a simple discretionary inquiry; it imposes no
specific evidentiary burden, much less a high one.”)
       While Octane Fitness directly concerns the scope of a district court’s
discretion to award fees for an “exceptional” case under § 285 of the Patent Act,
the case guides our interpretation of § 1117(a) of the Lanham Act and is
instructive here.      See S. Rep. No. 93–1400, at 2 (1974) (highlighting the
identical language between § 285 and §1117(a), as well as Congress’ reference
to § 285 in passing §1117(a)). 1



       1 In 1946, Congress amended the Patent Act to add a discretionary fee-shifting
provision to award attorney’s fees to the prevailing party upon the entry of judgment in any
patent case. See 35 U.S.C. § 70 (1946 ed.) (recodified as 35 U.S.C. § 285); Act of Aug. 1, 1946,
Ch. 726 § 1, 60 Stat. 778. Like the Patent Act, the Lanham Act did not authorize the
awarding of attorney’s fees to the prevailing party in its originally enacted legislation. See
Act of Feb. 20, 1905, 33 Stat. 724. However, Congress recognized a compelling need for a
provision allowing for the award of attorney’s fees in the trademark litigation context in
response to the Supreme Court’s decision in Fleischmann Distilling Corp. v. Maier Brewing
Co., 386 U.S. 714 (1967). Fleischmann held that attorney’s fees were not available under the
Lanham Act absent express statutory authority. Id. at 721; see also Fair Wind Sailing, Inc.
v. Dempster, 764 F.3d 303, 313–14 (3d Cir. 2014). Because such a remedy existed in the
patent law and copyright law fields, but not yet in trademark law, Congress enacted a similar
provision under the Lanham Act in 1975. See Act of Jan. 2, 1975, Pub. L. No. 93–600, § 3, 88
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      Like the Patent Act, the Lanham Act’s text establishes a flexible
standard for whether a case is “exceptional.” The text of § 1117(a), identical to
§ 285, says in full that “[t]he court in exceptional cases may award reasonable
attorney fees to the prevailing party.” It creates no rigid standard of culpable
conduct. See, e.g., B & B Hardware, Inc. v. Hartgis Indus., Inc., 716 F.3d 1020,
1027 (8th Cir. 2013), rev’d on other grounds, 135 S. Ct. 1293 (2015) (defendant
can be awarded attorney’s fees when the plaintiffs’ suit meets one of four
criteria: “groundless, unreasonable, vexatious, or pursued in bad faith”);
Cairns v. Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir. 2002) (same); see
also Ji v. Bose Corp., 626 F.3d 116, 129 (1st Cir. 2010) (allowing the awarding
of attorney’s fees under the Lanham Act when there is “something less than . .
. bad faith”).
      Already in this court’s power is the ability to award attorney’s fees for
conduct that is done in bad faith. Accordingly, because this long-established
American common-law rule already provides for an award in such an instance,
“Congress [could not have intended] to permit the award of attorney’s fees to a
prevailing defendant only in a situation where the plaintiff was motivated by
bad faith in bringing the action” when it enacted § 1117(a). Christiansburg
Garment Co. v. Equal Emp’t Opportunity Comm’n, 434 U.S. 412, 417, 419
(1978).
      Finally, the Court has made clear its unwillingness to construe fee-
shifting provisions such as § 1117(a) as requiring a clear and convincing
evidence standard. See Octane Fitness, 134 S. Ct. at 1758. Because § 285 and
§ 1117(a) are clear “statutory equivalents,” we read their nearly identical
language to reflect the fact that the Court “think[s] it clear that Congress


Stat. 1955 (amending section 35(a) of the Lanham Act). The purpose of the fee-shifting
provision in the Lanham Act is best understood in light of this legislative history.
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intended the same language to have the same meaning in both statutes.” See,
e.g., Commc’ns Workers of Am. v. Beck, 487 U.S. 735, 745–7 (1988).
       In light of the Supreme Court’s clear guidance under § 285—and given
the parallel purpose, structure, and language of § 1117(a) to § 285—we join our
sister circuits in their reading of “exceptional” under Octane Fitness and
construe the same meaning here. See Georgia-Pac. Consumer Prods. LP v. von
Drehle Corp., 781 F.3d 710 (4th Cir. 2015), as amended (Apr. 15, 2015) (“[T]he
language of § 1117(a) and § 285 is identical, and we conclude that there is no
reason not to apply the Octane Fitness standard when considering the award
of attorneys fees under § 1117(a).”); Fair Wind Sailing, Inc. v. Dempster, 764
F.3d 303 (3d Cir. 2014) (importing the definition of “exceptionality” into its
interpretation of § [1117(a)] and holding that the district court should apply
the Octane Fitness standard when considering the award of attorney’s fees
under this provision). 2 See id. at 754 (“[O]nly the most compelling evidence
could persuade us that Congress intended the nearly identical language of
these two provisions to have different meaning); Levin v. United States, 133 S.
Ct. 1224, 1233 (2013) (“[I]t is generally presumed that Congress acts
intentionally and purposely in the disparate inclusion or exclusion.” (internal



       2 Other circuits have taken a similar approach in interpreting the Lanham Act
using the Octane Fitness framework:
       [W]e have “look[ed] to the interpretation of the patent statute for guidance” in
       interpreting § [1117(a)]. Id. Moreover, in its explication of the word
       “exceptional,” the Octane Fitness Court relied in part on the D.C. Circuit’s
       holding [defining] the term “exceptional,” as used in § [1117(a)] of the Lanham
       Act . . . Octane Fitness, 134 S.Ct. at 1756 (quoting Noxell Corp. v. Firehouse No.
       1 Bar–B–Que Rest., 771 F.2d 521, 526 (D.C. Cir.1985)). In so doing, the Octane
       Fitness Court noted that the Lanham Act fee provision is “identical” to § 285 of
       the Patent Act. Id. We believe that the Court was sending a clear message that
       it was defining “exceptional” not just for the fee provision in the Patent Act,
       but for the fee provision in the Lanham Act as well.
Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 315 (3d Cir. 2014).
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quotation marks omitted)). What’s more, it stands to reason that in overruling
the Federal Circuit’s inflexible statutory interpretation—the same precedent
upon which this court relied to require bad faith by clear and convincing
evidence in this circuit 3—the Octane Fitness Court has provided clear guidance
from which we do not stray.
       We merge Octane Fitness’s definition of “exceptional” into our
interpretation of § 1117(a) and construe its meaning as follows: an exceptional
case is one where (1) in considering both governing law and the facts of the
case, the case stands out from others with respect to the substantive strength
of a party’s litigating position; or (2) the unsuccessful party has litigated the
case in an “unreasonable manner.” See Octane Fitness, 134 S. Ct. at 1756. The
district court must address this issue “in the case-by-case exercise of their
discretion, considering the totality of the circumstances.” See id.
       DeShong also asks us to decide whether this case merits attorney’s fees
under § 1117(a) in light of the Octane Fitness standard. We decline to do so
because the district court has yet to decide this issue in the first instance.
                                            IV.
       We therefore REVERSE the district court’s denial of attorney’s fees and
REMAND for reconsideration of the propriety of awarding fees to DeShong in
light of the aforementioned standard.




       3“[W]e agree with the Federal Circuit that the prevailing party must demonstrate the
exceptional nature of a case by clear and convincing evidence before a district court should
decide whether to make the award.” CJC Holdings, Inc., 979 F.2d at 65.
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