III. CONCLUSION A right as fundamental as the Seventh Amendment right to a jury trial should not be set aside easily, as Defendants assert, based on their misapplication of the Lanham Act. Even if Defendants were correct on the law (which they certainly are not), the jury in this case could render an advisory verdict regarding the appropriate amount of damages under 15 U.S.C. §1117(a). However, as indicated, Black & Decker most respectfully requests that Defendants’ motion to strike be denied in its entirety.

5 While an election to receive statutory damages under 15 U.S.C. § 1117(c) precludes an award of attorney’s fees under § 1117(b), see K & N Eng’g, Inc. v. Bulat, 510 F.3d 1079 (9th Cir. 2007), Plaintiff is nevertheless entitled to fees on its Lanham Act § 43(a) claims and the ACPA claim. 15 U.S.C. § 1117(a); see Int’l Bancorp, L.L.C. v. Societe des Baines de Mer et du Cercle des Etrangers a Monaco, 192 F. Supp. 2d 467, 490-91 (E.D. Va. 2002) (“exceptional” ACPA cases “warrant[] attorneys’ fees”); Aztar Corp. v. MGM Casino, No. NO. 00-833-A, 2001 WL 939070, at *6 (E.D. Va. Apr. 9, 2001) (awarding both $100,000 statutory damages and attorney’s fees on ACPA claim).

It is also less than damage awards for willful Case: 1:13-cv-07165 Document #: 136 Filed: 03/11/16 Page 14 of 18 PageID #:2514 14 behavior as set by the Lanham Act. 15 U.S.C. §1117(c) (allowing up to $2,000,000 per mark used per good for willful infringement). Fourth, this amount is enough to compensate Coach for Defendants’ infringing activities, and will convey the message to Defendants and others similarly situated that their infringing activities will not be tolerated by this Court in the future.

Section 35(a) of the Lanham Act authorizes the district court, in its discretion, to award attorneys’ fees to the prevailing party in “exceptional circumstances.” 15 U.S.C. § 1117(a). Such exceptional circumstances include “cases in which the act is fraudulent, deliberate, or willful.”

’”) (citation omitted). The other equitable issues that remain for the judge are: whether Gucci America’s trademark registrations should be cancelled, whether Gucci America’s pending applications at issue should mature to registration, whether an injunction is warranted or should be denied (and whether an injunction is moot), whether the totality of facts of the case weighs in favor of denying Gucci America any monetary relief, if any monetary relief is to be awarded to Gucci America, whether the award should be increased or reduced, and whether this is an “exceptional case” for which the “prevailing party” is entitled to recover attorneys’ fees pursuant to the Lanham Act. IV. ATTORNEYS’ FEES Forever 21 reserves the right to seek to recover attorneys’ fees if it is held to be the “prevailing party” in this “exceptional case,” pursuant to the Lanham Act. 15 U.S.C. § 1117(a). The factual basis for Forever 21’s claim to recover attorneys’ fees includes: Gucci America’s attempt to monopolize a basic, ordinary, decorative design of stripes colored blue-and-red and green-and-red on clothing.

What’s more, the Lanham Act provides that a plaintiff in an infringement action can recover the cost of the action. 15 U.S.C. §1117. See also Christus Health, 2014 WL 1092096, at *8 (awarding costs after default judgment on Lanham Act claim).

The Profits Award Was Just Compensation for adidas Section 35(a) of the Lanham Act requires that an award under that statute “shall constitute compensation and not a penalty.” 15 U.S.C. §1117(a). The Ninth Circuit’s well- settled view is that the overriding public policy concern associated with an accounting is to take all economic incentive out of trademark infringement.

Under the Lanham Act, attorneys fees may be awarded if the defendant’s conduct was willful. 15 U.S.C. §1117. Taco Bell has not moved for Summary Judgment on either element of damages.

As the prevailing party, TLDS could be entitled to reasonable attorneys’ fees and costs related to defense of the action if the “exceptional circumstances” apply: namely, if Plaintiff’s litigation was groundless, unreasonable, vexatious, or pursued in bad faith. In this case, all four factors apply, so the Court should exercise its discretion to award attorneys’ fees to TLDS under 15 U.S.C. § 1117(a)(3). 1.

The NFL further seeks an award of statutory damages under 15 U.S.C. § 1117(c)(2) for one hundred fifty million dollars ($150,000,000) against Defendants for willfully counterfeiting the NFL trademarks. The NFL further seeks an award of maximum statutory damages for willful cybersquatting under 15 U.S.C. § 1117(d) for one hundred thousand dollars ($100,000) per Infringing Domain Name (as defined below) registered and operated by Defendants. Large statutory damage awards of this nature have been granted in many cases involving an interrelated network of ‘rogue’ websites selling counterfeit goods.