    11-1055-cv
    Mister Softee of Brooklyn, Inc. v. Boula Vending Inc.


                              UNITED STATES COURT OF APPEALS
                                  FOR THE SECOND CIRCUIT

                                          SUMMARY ORDER
RULINGS BY SUMMARY ORDER DO NOT HAVE PRECEDENTIAL EFFECT. CITATION TO A SUMMARY ORDER
FILED ON OR AFTER JANUARY 1, 2007, IS PERMITTED AND IS GOVERNED BY FEDERAL RULE OF APPELLATE
PROCEDURE 32.1 AND THIS COURT’S LOCAL RULE 32.1.1. WHEN CITING A SUMMARY ORDER IN A
DOCUMENT FILED WITH THIS COURT, A PARTY MUST CITE EITHER THE FEDERAL APPENDIX OR AN
ELECTRONIC DATABASE (WITH THE NOTATION “SUMMARY ORDER”). A PARTY CITING TO A SUMMARY
ORDER MUST SERVE A COPY OF IT ON ANY PARTY NOT REPRESENTED BY COUNSEL.

           At a stated term of the United States Court of Appeals for the Second Circuit, held
    at the Daniel Patrick Moynihan United States Courthouse, 500 Pearl Street, in the City of
    New York, on the 12th day of June, two thousand twelve.

    Present:   BARRINGTON D. PARKER,
               PETER W. HALL,
               J. CLIFFORD WALLACE,*
                     Circuit Judges.
    _____________________________________

    MISTER SOFTEE OF BROOKLYN, INC., MISTER SOFTEE, INC.,

                               Plaintiffs-Appellants,

                      v.                                                        11-1055-cv

    BOULA VENDING INC. t/a Mister Softee, STAVROS SERGIADIS t/a
    Mister Softee, MEHMET SUMBULTEPE t/a Mister Softee, SINAN
    SUMBULTEPE,

                     Defendants-Appellees.
    _____________________________________

    Appearing for Plaintiffs-Appellants:                    Michael Einbinder, Einbinder & Dunn,
                                                            LLP, New York, NY.

    Appearing for Defendants-Appellees:                     No appearance.

             *
              Judge J. Clifford Wallace, of the United States Court of Appeals for the Ninth Circuit,
    sitting by designation.
       Appeal from a judgment of the United States District Court for the Eastern District

of New York (Ross, J.).

       UPON DUE CONSIDERATION IT IS HEREBY ORDERED, ADJUDGED,

AND DECREED that the judgment of the district court be AFFIRMED.

       Appellants Mister Softee of Brooklyn Inc. and Mister Softee, Inc. appeal from a

judgment of the district court denying, in part, their motion pursuant to 15 U.S.C. §

1117(a) for, inter alia, an award of attorneys’ fees and private investigator costs arising

out of their trademark infringement action against Appellees. We assume familiarity with

the underlying facts, the procedural history of the case, and the issues on appeal.

       We review a district court’s decision whether to award attorneys’ fees for abuse of

discretion. See Herman v. Davis Acoustical Corp., 196 F.3d 354, 356 (2d Cir. 1999). In

doing so, our review is “highly deferential,” Matthew Bender & Co., Inc. v. West Publ’g

Co., 240 F.3d 116, 121 (2d Cir. 2001), because the district court “is intimately familiar

with the nuances of the case, [and thus] is in a far better position to make [such]

decisions,” Goldberger v. Integrated Res., Inc., 209 F.3d 43, 48 (2d Cir. 2000) (quotation

marks omitted).

       Under the Lanham Act, which governs the request for fees and costs in this case,

“[t]he court in exceptional cases may award reasonable attorney fees to the prevailing

party.” 15 U.S.C. § 1117(a). On appeal, Appellants first contend that, because the

district court found that Appellees willfully infringed their trademark, they are entitled to

attorneys’ fees on the basis that a finding of willfulness or bad faith automatically renders

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a case “exceptional” within the meaning of section 1117(a). Appellants are wrong.

While we have said that a finding of willfulness, fraud, or bad faith is a “prerequisite” to

finding a case “sufficiently ‘exceptional’ to warrant an award of fees” under section

1117(a), Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83, 108-09 (2d Cir. 2012),

we have never held that a finding of willfulness, fraud, or bad faith automatically requires

an award of fees under that section. After all, section 1117(a) “provides only that the

district court ‘may’ award attorneys’ fees.” Patsy’s Italian Rest., Inc. v. Banas, 658 F.3d

254, 268 (2d Cir. 2011) (emphasis added); see also Int’l Star Class Yacht Racing Ass’n v.

Tommy Hilfiger, U.S.A., Inc., 80 F.3d 749, 753 (2d Cir. 1996) (“[A]n award of attorney

fees may be justified when bad faith infringement has been shown”) (emphasis added);

Goodheart Clothing Co., Inc. v. Laura Goodman Enter., Inc., 962 F.2d 268, 272 (2d Cir.

1992) (stating that when bad faith infringement is shown, a district court is “authorized”

to award attorneys’ fees and that a district court abuses its discretion if it does not

“consider” awarding attorneys’ fees in such circumstances). Accordingly, the district

court properly rejected Appellants’ flawed legal theory as a basis on which to award

attorneys’ fees under section 1117(a).

       Nor, as Appellants also contend, did the district court rest its decision on clearly

erroneous factual findings.



              If the district court’s account of the evidence is plausible in light of
              the record viewed in its entirety, the court of appeals may not reverse
              it even though convinced that had it been sitting as the trier of fact, it

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              would have weighed the evidence differently. Where there are two
              permissible views of the evidence, the factfinder’s choice between
              them cannot be clearly erroneous.

Anderson v. City of Bessemer City, N.C., 470 U.S. 564, 573-74 (1985). Our review of the

record reveals that, while the evidence before the district court could have been weighed

differently, the district court’s account of the evidence was plausible. See id. We cannot

conclude, therefore, that the district court’s factual findings were clearly erroneous.

       Finally, Appellants argue that the district court abused its discretion in denying

reimbursement for private investigator costs. The only basis for Appellants’ assertion

that they are entitled to this reimbursement is that it is recoverable as part of an award of

attorneys’ fees. Because the district court did not abuse its discretion in declining to

award attorneys’ fees, Appellants’ argument fails.

       We have considered Appellants’ remaining arguments and find them to be without

merit. For the foregoing reasons, the judgment of the district court is hereby

AFFIRMED.

                                           FOR THE COURT:
                                           Catherine O’Hagan Wolfe, Clerk




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