     Case: 18-30759   Document: 00514882154        Page: 1   Date Filed: 03/21/2019




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

                                    No. 18-30759                          FILED
                                                                     March 21, 2019
                                                                     Lyle W. Cayce
ALLIANCE FOR GOOD GOVERNMENT,                                             Clerk

             Plaintiff - Appellee

v.

COALITION FOR BETTER GOVERNMENT,

             Defendant - Appellant




                Appeals from the United States District Court
                    for the Eastern District of Louisiana


Before HIGGINBOTHAM, SMITH, and HIGGINSON, Circuit Judges.
PATRICK E. HIGGINBOTHAM, Circuit Judge:
      The district court granted Alliance for Good Government summary
judgment on its trademark infringement claim against Coalition for Better
Government, enjoined Coalition from the use of both its logo and its trade
name, and then awarded Alliance attorney’s fees incurred in bringing the
lawsuit. It did not abuse its discretion in finding that Alliance is entitled to
fees, and so we affirm that portion of its order. Because we have since modified
the district court’s injunction to permit Coalition to use its trade name,
however, we remand for the district court to reassess the amount of fees.
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                                           No. 18-30759
                                                  I
         Our earlier opinion describes this case’s background. 1 In short, Alliance
and Coalition are both nonprofit organizations that endorse political
candidates in New Orleans. Alliance began using a logo featuring a bird with
wings outstretched in the late 1960s; Coalition began using a similar logo in
the 1980s or 1990s, then changed its logo in 2008 to be virtually identical to
Alliance’s. 2 Below are the Alliance and post-2008 Coalition logos:




         Alliance sued Coalition for trademark infringement in Louisiana court
in 2008, then voluntarily dismissed its suit, believing Coalition had ceased
using the logo to endorse candidates. 3 When Coalition resumed the use of its
logo in 2016, Alliance sued Coalition in the Eastern District of Louisiana,
claiming federal and state trademark infringement and unfair trade
practices. 4 It argued that both Coalition’s “word mark”—its trade name,
“Coalition for Better Government”—and its “composite mark”—its logo—
infringed Alliance’s marks. The district court granted Alliance’s motion for




         1   See All. for Good Gov’t v. Coal. for Better Gov’t (Alliance I), 901 F.3d 498 (5th Cir.
2018).
        Id. at 503. In 2013, Alliance registered both the trade name “Alliance for Good
         2

Government” and its logo with the U.S. Patent and Trademark Office. Id.
      3 See id. at 504.
      4 See id.

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                                       No. 18-30759
partial summary judgment, enjoining Coalition from using both its name and
logo. 5 Alliance voluntarily dismissed its other claims.
       Coalition appealed the summary judgment. While the appeal was
pending, Alliance moved for attorney’s fees under the Lanham Act. The district
court awarded Alliance everything it requested—$68,237.25 in fees,
encompassing fees already incurred and projected fees from replying to
Coalition’s opposition to the fees motion. Coalition separately appealed the fee
award. 6
       During briefing in this fees appeal, we affirmed Alliance’s entitlement to
summary judgment on its claim that Coalition’s logo infringed its composite
mark. 7 We concluded that based on the summary judgment record, however,
Coalition’s trade name did not by itself generate a likelihood of confusion with
Alliance’s “differently-worded” trade name. 8 We therefore modified the district
court’s injunction to permit Coalition to continue using its name.




       5  The parties had cross-moved for summary judgment: Coalition argued that Alliance’s
suit was barred by laches, while Alliance argued that it was entitled to partial summary
judgment on its federal trademark infringement claim. While Coalition had initially asserted
twelve affirmative defenses in its Answer, its motion for summary judgment and opposition
to Alliance’s motion focused on laches. Coalition also averred that there was no likelihood of
confusion between the marks as a matter of law and that Alliance had fraudulently obtained
its federal trademark registration. Along with granting Alliance’s motion for partial
summary judgment, the district court granted Alliance’s separate motion to dismiss
Coalition’s counterclaims, including the fraudulent-registration claim.
        6 The notice of appeal of the fee order was filed approximately two weeks before oral

argument in the summary judgment appeal, and we denied Alliance’s emergency motion to
consolidate the appeals, explaining that either party could seek a stay of the fees appeal if it
believed that unnecessary resources would be expended in the fees appeal during the
pendency of the summary judgment appeal.
        7 Alliance I, 901 F.3d at 513.
        8 Id. at 513–14. We observed that our decision was based purely on the summary

judgment record and was without prejudice to Alliance’s opposition to Coalition’s pending
application to register its name with the USPTO. Id. at 513 n.15.
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                                     No. 18-30759
                                            II
       The Lanham Act authorizes the award of “reasonable attorney fees to
the prevailing party” in “exceptional cases.” 9 In Octane Fitness, LLC v. ICON
Health & Fitness, Inc., the Supreme Court established that an “exceptional”
case meriting fees under the Patent Act does not require a prevailing party to
demonstrate bad faith. 10 Rather, a party seeking fees under the Patent Act
must demonstrate that the case “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.” 11 Recognizing that the Lanham Act’s fee-shifting
provision is identical to the Patent Act’s, we have extended Octane Fitness’s
disjunctive standard for “exceptional” cases to claims for fees brought under
the Lanham Act. 12
       Before Octane Fitness, we “review[ed] the district court’s determination
as to whether a case is ‘exceptional’ under § 1117(a) for clear error, but . . .
review[ed] the . . . ultimate decision [on] attorney’s fees for an abuse of
discretion.” 13 The same day Octane Fitness was decided, the Supreme Court
recognized that because Octane Fitness commits the determination about
whether a case is “exceptional” to the district court’s discretion, “an appellate
court should review all aspects of a district court’s [fees determination under
the Patent Act] for abuse of discretion.” 14 Since the Lanham Act’s fee-shifting



      9  15 U.S.C. § 1117(a).
      10  572 U.S. 545, 555 (2014).
       11 Id. at 554.
       12 Baker v. DeShong, 821 F.3d 620, 622–25 (5th Cir. 2016); see also Octane Fitness,

572 U.S. at 554 (observing that the two provisions are identical).
       13 E.g., Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 537 (5th

Cir. 2012).
       14 Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 572 U.S. 559, 561 (2014)

(emphasis added).
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                                        No. 18-30759
provision is identical to the Patent Act’s—as we recognized in Baker—we
conclude that this same standard of review applies to district court fee
determinations under the Lanham Act. We will therefore review all aspects of
the district court’s fee determination, including its conclusion that this was an
“exceptional” case, for abuse of discretion. 15
                                               III
       As we have explained, a fee award may be warranted either where the
prevailing party stood out in terms of the strength of its litigating position or
where the non-prevailing party litigated the case in an “unreasonable
manner.” The district court found that both grounds justified an award of fees
to Alliance. We conclude that with respect to Alliance’s claim that Coalition’s
logo infringed Alliance’s composite mark, the district court did not abuse its
discretion in concluding that this was an “exceptional” case warranting fees. 16
                                               A
       The district court first found that the case stood out due to the strength
of Alliance’s litigating position: Alliance adopted its logo at least 15 years
before Coalition began using its similar logo; Alliance’s composite mark was
strong; the marks were very similar; and both parties provided the same
“product,” used the same advertising channels, and targeted the same
“customers.” In sum, “[t]he likelihood of confusion [was] so great that it would


       15  Two circuits have already extended Highmark’s articulation of the proper standard
of review to the review of fee awards under the Lanham Act. See Romag Fasteners, Inc. v.
Fossil, Inc., 866 F.3d 1330, 1334 (Fed. Cir. 2017); SunEarth, Inc. v. Sun Earth Solar Power
Co., Ltd., 839 F.3d 1179, 1181 (9th Cir. 2016) (en banc).
        16 Coalition does not directly contest that Alliance is a prevailing party, nor can it. We

have recognized that in the Lanham Act context, a prevailing party is “a party in whose favor
judgment is rendered” or “one who has been awarded some relief by the court.” Kiva Kitchen
& Bath Inc. v. Capital Distrib., Inc., 319 F. App’x 316, 322 (5th Cir. 2009). Alliance has
received a judgment in its favor and relief in the form of an injunction prohibiting Coalition
from using its logo, and therefore is a prevailing party potentially entitled to fees. We will
later address the relevance of the fact that Alliance did not prevail on all aspects of the relief
it sought.
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                                         No. 18-30759
appear that customer confusion was Coalition’s motivation for adopting the
Coalition Mark.” Further, Coalition presented meritless defenses at the
summary judgment stage: a laches argument that was not supported by “any
credible evidence,” as well as the bare assertion that the composite marks were
different because one depicted an eagle while the other depicted a hawk.
       We find no abuse of discretion in the district court’s conclusion that
Alliance had an exceptionally strong infringement claim. Indeed, many of the
district court’s observations also underpinned our decision to affirm the grant
of summary judgment to Alliance. 17 While Coalition attempts to repackage
several of the defenses it raised to summary judgment as reasons why this case
is not “exceptional” under the Lanham Act, we have already concluded that
those arguments were either waived in the district court or plainly meritless—
or both. 18
                                                 B
       The district court also determined that this case was exceptional because
Coalition litigated it in an unreasonable manner. Coalition behaved
unreasonably at several points during the litigation, filing an unsupported




       17  For example, we were not just struck by the fact that Alliance and Coalition “have
the same logo”—we also flatly rejected Coalition’s attempt to “distinguish the two logos[ ] not
by appearance, design, color, or font[,] but by the birds’ species.” See Alliance I, 901 F.3d at
511. Ultimately, we “agree[d] with the district court: the birds are identical. Whether that
bird is a haliaeetus leucocephalus (bald eagle), a buteo jamaicensis (red-tailed hawk), or some
other bird, we need not determine.” Id. at 512.
        18 See id. at 505–06 (finding that Coalition waived its arguments about political speech

and non-engagement in commerce by failing to press them before the district court); id. at
507 n.9 (finding that Coalition’s counterclaim that Alliance fraudulently obtained its
trademark registration was both waived and “easily resolved”); id. at 512–13 (agreeing with
the district court that “while there was no evidence of ‘actual intent to infringe’ . . . . [the only
plausible explanation for the marks’ similarity was] Coalition’s intent to benefit from
Alliance’s pre-existing reputation”).
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                                        No. 18-30759
laches defense; 19 a “counterclaim without any actionable conduct”; and a
meritless motion to dismiss that was rendered moot by a summary judgment
motion filed two weeks later. 20 The district court also found that Coalition’s
behavior during discovery was unreasonable, especially its refusal to postpone
depositions after the district court ruled on the parties’ cross-motions for
summary judgment.
       Coalition urges that it was the unwilling defendant in a lawsuit initiated
by Alliance. To the extent that Coalition argues that only prevailing defendants
should be awarded fees under the Lanham Act, we cannot agree. 21 The district
court did not abuse its discretion in concluding that taken as a whole,
Coalition’s litigation conduct rendered this case exceptional.
                                               C
       We pause to address Coalition’s argument that as a nonprofit entity
engaged in political speech, its First Amendment rights are threatened by the
imposition of attorney’s fees. This is a variant of Coalition’s earlier argument,
made during the summary judgment appeal, that the First Amendment
protected it from liability for trademark infringement. We declined to address
this argument on the summary judgment appeal because “Coalition never
developed the argument beyond [a cursory statement] and, by the time of the



       19  Specifically, Coalition was unable to point to any evidence beyond a bare-bones
affidavit to show that Coalition used its logo to endorse candidates between 2010 and 2016—
a critical aspect of its laches defense.
        20 While Coalition points out that Alliance also filed a motion to dismiss alongside its

motion for summary judgment, it fails to acknowledge the difference in context. Alliance filed
a motion to dismiss Coalition’s counterclaims for failure to state a claim after moving for
partial summary judgment on its own federal trademark infringement claim.
        21 This suggestion is both waived by Coalition’s failure to argue it in its opening brief

and contradicted by a wealth of cases granting fees to prevailing Lanham Act cases. See
“Recovery of Attorney’s Fees—Award to a Prevailing Plaintiff,” 5 McCarthy on Trademarks
& Unfair Competition § 30:100 (5th ed.) (collecting cases awarding fees to prevailing
plaintiffs, including many decided even before Octane Fitness clarified that a prevailing
plaintiff did not need to show willful infringement to recover fees under the Patent Act).
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                                    No. 18-30759
summary judgment proceedings, the issue had vanished.” 22 Ultimately, we
observed, “[t]he interplay between the Lanham Act and the First Amendment’s
political and commercial speech doctrines raises a thicket of issues we decline
to enter when the issues were not preserved or ruled on below.” 23 Here too,
Coalition fleetingly raises the slightly different argument that a fees award
might interfere with its First Amendment rights, but it did not so contend
before the district court in its opposition to attorney’s fees, nor did it present a
fully developed argument in its briefing on this appeal. We will not reach the
issue.
                                           IV
         We have concluded that the district court did not abuse its discretion in
finding Alliance to be entitled to attorney’s fees. We agree with Coalition,
however, that the district court must reassess their amount given our decision
to modify the district court’s injunction to allow Coalition to continue the use
of its trade name.
         When a party advances both Lanham Act and non-Lanham Act claims,
a district court should make efforts to award fees only for successful Lanham
Act claims. 24 This reflects “the background rule in America . . . [that] the
prevailing party usually cannot recover fees absent statutory authority.” 25 The
same apportionment principle should apply “when in one lawsuit some
Lanham Act claims qualify for an attorney’s fee award and other Lanham Act
claims do not.” 26




          Alliance I, 901 F.3d at 506.
         22

          Id. at 506 n.8.
         23
       24 Procter & Gamble Co. v. Amway Corp., 280 F.3d 519, 527 (5th Cir. 2002).
       25 Id.
       26 See “Recovery of Attorney’s Fees—Apportionment Among Claims,” 5 McCarthy on

Trademarks & Unfair Competition § 30:103; see also Cairns v. Franklin Mint Co., 292 F.3d
1139, 1157–58 (9th Cir. 2002) (affirming a twenty-six-percent reduction in fees where the
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                                      No. 18-30759
       Here, Alliance prevailed on its claim that Coalition’s logo infringed
Alliance’s composite mark—and, as we have explained, the district court did
not abuse its discretion in holding that Alliance was entitled to fees on this
claim. Alliance did not prevail, however, in its effort to enjoin Coalition from
using the “Coalition for Better Government” designation. 27 Further, Alliance
voluntarily dismissed its other counts after prevailing on the main trademark
infringement claim; the district court’s fee award did not distinguish between
time spent on the infringement claim and time Alliance’s attorneys spent—
however limited—on these other counts. Alliance is only entitled to fees for
work its attorneys performed on its claim that Coalition’s logo infringed its
composite mark.
       While Alliance’s composite-mark claim may be intertwined with its other
claims to some extent, 28 “the impossibility of making an exact apportionment
does not relieve the district court of its duty to make some attempt to adjust
the fee award in an effort to reflect an apportionment.” 29 We remand to the
able district court to account for billed time for claims on which Alliance did
not prevail, and to adjust the fee award accordingly.




losing party brought some Lanham Act claims that merited fees alongside other claims that,
although unsuccessful, were not groundless).
       27 While Alliance frequently referred to the marks collectively and addressed federal

trademark infringement of both marks in a single count of its complaint, we analyzed the
composite and word marks separately for the purposes of summary judgment.
       28 Cf. Procter & Gamble, 280 F.3d at 527 (explaining that where a party has brought

both Lanham Act and non-Lanham Act claims, “[a] court should permit recovery for work on
non-Lanham Act claims only if ‘the Lanham Act and non-Lanham Act claims are so
intertwined that it is impossible to differentiate between work done on claims’” (quoting
Gracie v. Gracie, 217 F.3d 1060, 1069 (9th Cir. 2000)).
       29 Gracie, 217 F.3d at 1070.

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                                       No. 18-30759
                                              V
       We affirm the district court’s determination that Alliance is entitled to
attorney’s fees, vacate the amount of fees awarded, and remand for the district
court to assess the amount of the award of fees in light of this opinion. 30
       Affirmed in part and remanded in part.




       30We do not address Coalition’s argument that the district court erred in denying its
motion to strike, as Coalition failed to identify this as one of the issues presented for review
and did not present legal authority to support its contention. See, e.g., Procter & Gamble Co.
v. Amway Corp. 376 F.3d 496, 499 n.1 (5th Cir. 2004) (“Failure adequately to brief an issue
on appeal constitutes waiver of that argument.”).
                                              10
