TED STEWART, District Judge.
This matter is before the Court on Defendant Fort Knox Security Products, Inc.'s Motion for Attorney's Fees.
Approximately twenty-five years ago, Plaintiff Charles E. "Chuck" Yeager and Defendant entered into an oral agreement whereby Defendant provided Yeager a safe in exchange for authorization to use Yeager's proprietary rights to market Defendant's products. Over the years, the parties' agreement evolved to include additional obligations and benefits. Eventually the relationship deteriorated. Plaintiffs filed suit in January 2011, seeking damages for claims arising from Defendant's use of Yeager's proprietary rights.
Plaintiffs' Complaint asserted multiple causes of action, including the following two claims: (1) a violation of Plaintiff's statutory right to privacy and publicity, under California Civil Code § 3344, Nevada Revised Statutes §§ 597.770-.810, and Utah Code §§ 45-3-2 to 45-3-4; and (2) false endorsement, under the Lanham Act, 15 U.S.C. § 1125(a).
Defendant submitted two motions for summary judgment. Before addressing the motions, the Court requested supplemental briefing regarding the parties' positions as to whether California, Nevada, Utah, or some other state's laws govern this suit. The parties agreed that Utah law applies and the Court granted summary judgment in favor of Defendant. Defendant now moves for attorney's fees.
Defendant moves for attorney's fees under California Civil Code § 3344(a) and the Lanham Act, and for costs under Federal Rule of Civil Procedure 54 and 28 U.S.C. § 1920.
Defendant moves for an award of attorney's fees, pursuant to California Civil Code § 3344(a). Defendant argues that because Plaintiffs asserted a right-to-privacy claim based on a California statute, Defendant is entitled to attorney's fees under that statute. Defendant argues that this result is proper even though this Court concluded that California's statute did not apply. Plaintiffs argue that because Utah law governs the suit, California's statute is inapplicable.
Defendant argues that it is entitled to attorney's fees under California's statute because it defended against Plaintiffs' claims—including Plaintiffs' claim based on California's statute— for three years. In support of this position, Defendant urges the Court to follow the Ninth Circuit's holding in Love v. Associated Newspapers, Ltd.
Love involved, in relevant part, a statutory right-to-privacy claim asserted pursuant to California Civil Code § 3344 by a musician against companies involved in a British marketing campaign.
The only authority cited in support of Love's holding was another Ninth Circuit decision, Cairns v. Franklin Mint Co.
This Court is neither bound nor persuaded by the Ninth Circuit's conclusion that the claims in Cairns and Love were actions under the California statute within the meaning of section 3344. Moreover, the Court is convinced that it is not prudent to extend these holdings to the instant suit.
Section 3344(a) states, "The prevailing party in any action under this section shall also be entitled to attorney's fees and costs."
The Ninth Circuit's holding creates a perverse incentive for plaintiffs to invoke section 3344 when asserting statutory right-to-privacy claims, even when California law clearly would not apply. Doing so would ensure an award of attorney's fees to the prevailing party regardless of potentially contradictory governing law. The instant case illustrates the potential for the Ninth Circuit's rule to allow California's statute to overwhelm the governing state's law.
Utah's Abuse of Personal Identity Act provides for attorney's fees in a right-to-privacy claim as follows: "An individual whose personal identity has been abused under Section 45-3-3 of this act may bring an action against a person who caused the publication of the advertisement, and is entitled to injunctive relief, damages alleged and proved, exemplary damages, and reasonable attorney's fees and costs."
Based on the foregoing, the Court declines to award attorney's fees based on section 3344.
Defendant also seeks attorney's fees under the Lanham Act, 15 U.S.C. § 1117(a). The Lanham Act states, "The court in exceptional cases may award reasonable attorney fees to the prevailing party."
In deciding whether a case is exceptional under this provision, the Court looks "to both the objective strength of a plaintiff's Lanham Act claim and the plaintiff's subjective motivations."
Defendant argues that Plaintiffs acted in an exceptional manner because Plaintiff Yeager had consented to the Defendant's use of Yeager's proprietary rights, Plaintiff Yeager's deposition testimony indicated that he was satisfied with the parties' arrangement, and Plaintiffs' claims were not timely filed. The Court does not agree. The issues of consent and Yeager's satisfaction with the parties' agreement were disputed at summary judgment and not resolved by the Court. Moreover, Plaintiffs advanced good faith arguments concerning the timeliness of the suit. Based on the foregoing, the Court is unable to conclude that Plaintiffs acted in an exceptional manner by filing the suit. Therefore, the Court will not award attorney's fees under the Lanham Act.
Defendant also moves for an award of costs, pursuant to Federal Rule of Civil Procedure 54 and 28 U.S.C. § 1920. Under both Rule 54(d) and local rule DUCivR 54-2, it is the Clerk of Court who may tax costs, if any. Defendant must make a request for these costs to the Clerk of the Court in accordance with Rule 54(d) and DUCivR 54-2. Although a judge or Clerk of Court may award costs under 28 U.S.C. § 1920, the Court instructs Defendant to combine its requests for costs under Rule 54 and § 1920 in a single Bill of Costs filed with the Clerk of the Court. Therefore, the Court will not address Defendant's request for costs at this time. Either party may, however, move to review whatever costs are ultimately taxed, if any.
It is therefore
ORDERED that Defendant's Motion for Attorney's Fees (Docket No. 125) is DENIED.
The hearing set for June 26, 2014, is STRICKEN.
