Aromatique, Inc., Appellee/cross-Appellant v. Gold Seal, Inc., and Darrell Bufford, Appellants/cross-Appellees

HANSEN, Circuit Judge,

concurring.

I concur in the court’s judgment. I join parts I, II, and IIIA of the opinion filed by Judge Morris Sheppard Arnold. I write separately to explain why, in my view, Gold Seal is not entitled to attorney fees.

Judge Arnold has ably described, in part IIIA of his opinion, the general principles that apply to a claim for attorney fees under 15 U.S.C. § 1117. I respectfully differ with Judge Arnold, however, about the result of this case. For several reasons, I believe fees are not appropriate.

First, Gold Seal sought attorney fees not as a claim accompanying its own infringement action but in response to Aromatique’s infringement action. In Hartman v. Hallmark Cards, Inc., 888 F.2d 117 (8th Cir.1987), we held that under § 1117, “defendants will be allowed to recover fees in exceptional cases in order to ‘provide protection against unfounded suits brought ... for harassment and the like.’ ” Id. at 123 (quoting S.Rep. No. 93-1400, 93d Cong., 2d Sess., reprinted in 1974 U.S.C.C.A.N. 7132, 7136). Although Gold Seal has prevailed on appeal, Aromatique’s infringement claim was not completely unfounded and, as a whole, was pursued in good faith.

Second, Gold Seal sought attorney fees not for the conduct of Aromatique’s principals but rather for the pre-litigation conduct of Aromatique’s attorneys. Of course, an attorney is an agent of his or her client, but I believe an award of fees on this basis would not be prudent. Claims for attorney fees under § 1117(a) are best analyzed by focusing on the trademark infringement itself. See, e.g., Moore Business Forms, Inc. v. Ryu, 960 F.2d 486, 492 (5th Cir.1992); Ferrero U.S.A., Inc. v. Ozak Trading, Inc., 952 F.2d 44, 48-49 (3d Cir.1991); West Des Moines State Bank v. Hawkeye Bancorporation, 722 F.2d 411, 414-15 (8th Cir.1983); cf. Gorenstein Enter., Inc. v. Quality Care-USA, Inc., 874 F.2d 431, 435 (7th Cir.1989) (holding that award of attorney fees under § 1117 was harmless error on ground that infringer’s attorneys should have been sanctioned because they engaged in dilatory, bad-faith, perjurious, and “shameful” conduct during litigation). The infringement claim in this case was a close one; the district court held for Aromatique, but a divided panel of this court has held for Gold Seal. I believe it would be unfair to impose the considerable burden of attorney fees for this complex action on Aromatique’s principals, who sought to protect what they believed to be their exclusive right to use a particular trade dress. I prefer to rely on other measures to remedy suspect conduct by members of the bar.

Third, even if I were predisposed to award § 1117(a) attorney fees to a prevailing defendant based on the conduct of a plaintiffs attorneys, I would conclude that the conduct here does not make this case “exceptional.” Because that term is inherently vague, there is unlikely to be widespread agreement on its application unless an infringement action is either clearly garden-variety, see, e.g., Badger Meter, Inc. v. Grinnell Corp., 13 F.3d 1145, 1159 (7th Cir.1994) (affirming denial of fees where defendant did not deliberately infringe), or clearly beyond the pale, see, e.g., Joy Mfg. Co. v. CGM Valve & Gauge Co., 730 F.Supp. 1387, 1391, 1395 (S.D.Tex.1989) (holding that fees were appropriate where defendant reconditioned plaintiffs products, affixed plaintiffs nameplate to them, and marketed them as if they were marketed by plaintiff). I am not clearly convinced that Aromatique’s attorneys intended to deceive or defraud. I certainly do not intend to endorse their misstatements in their letters to Gold Seal or their contention that an applicant need not be candid in its trademark application, but other remedies exist to right those types of wrongs. See 15 U.S.C. § 1120; Copelands’ Enter., Inc. v. CNV, Inc., 945 F.2d 1563, 1566 (Fed.Cir.1991) (holding that PTO may deny registration if applicant has deceived consumers or competitors). In sum, I simply believe that this case is not the exceptional one for which the statute would authorize an award of fees to Gold Seal.

For these reasons, I would deny Gold Seal’s claim for attorney fees.