Horphag Research Ltd. v. Pellegrini
| Decision Date | 09 May 2003 |
| Docket Number | No. 01-56733.,No. 02-55142.,01-56733.,02-55142. |
| Citation | 337 F.3d 1036 |
| Parties | HORPHAG RESEARCH LTD, Plaintiff-Counter-Defendant-Appellee, v. Mario PELLEGRINI, dba Healthdiscovery.Com, Defendant, and Larry Garcia, dba Healthierlife.Com, Defendant-Counter-Claimant-Appellant. Horphag Research Ltd, Plaintiff-Counter-Defendant-Appellee, v. Larry Garcia, dba Healthierlife.Com, Defendant-Counter-Claimant-Appellant. |
| Court | U.S. Court of Appeals — Ninth Circuit |
v.
Mario PELLEGRINI, dba Healthdiscovery.Com, Defendant, and
Larry Garcia, dba Healthierlife.Com, Defendant-Counter-Claimant-Appellant.
Horphag Research Ltd, Plaintiff-Counter-Defendant-Appellee,
v.
Larry Garcia, dba Healthierlife.Com, Defendant-Counter-Claimant-Appellant.
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COPYRIGHT MATERIAL OMITTED
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Joe Izen, Bellaire, TX (argued); Larry Garcia, Pro Se, Houston, TX (brief), for the defendant-counter-claimant-appellant.
Marvin S. Gittes, Cobrin & Gittes, New York, NY, for the plaintiff-counter-defendant-appellee.
Appeal from the United States District Court for the Central District of California; Virginia A. Phillips, District Judge, Presiding. D.C. No. CV-00-00372-VAP.
Before: PREGERSON and THOMAS, Circuit Judges, and OBERDORFER,1 Senior District Judge.
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PREGERSON, Circuit Judge.
Defendant-Appellant Larry Garcia, proceeding largely pro se, appeals from the district court's grant of Plaintiff-Appellee Horphag Research, Ltd.'s (Horphag) motion for judgment as a matter of law following a four-day jury trial. In a separate appeal, Garcia challenges the district court's award of attorneys' fees to Horphag. Horphag brought an action against Garcia, doing business as "Healthierlife.com," for trademark infringement under 15 U.S.C. § 1114 (1999) and trademark dilution under 15 U.S.C. § 1125(c) (1999). The action was prompted by Garcia's use on his websites of the word "Pycnogenol," a trademark owned by Horphag.
We have jurisdiction to hear this appeal under 28 U.S.C. § 1291. We affirm the judgment of the district court both on the trademark infringement claim and the award of attorneys' fees related to this claim. There is ample evidence in the record to support Horphag's trademark infringement claim, even viewing the facts in the light most favorable to Garcia. Moreover, the district court did not abuse its discretion in awarding Horphag attorneys' fees related to the infringement claim, because the district court properly found that Garcia's infringement was willful and deliberate and that Garcia's counterclaims were groundless. With respect to the trademark dilution claim, we vacate the district court's judgment and remand to the district court to reconsider its holding in light of the recent Supreme Court opinion in Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 123 S.Ct. 1115, 155 L.Ed.2d 1 (2003). We remand the related portion of the attorneys' fees award for reconsideration as well.
Horphag applied to register the trademark "Pycnogenol" for its pine bark extract product in 1990. In May 1993, the United States Patent and Trademark Office granted Horphag the trademark. Plaintiff has not authorized any other individual or entity to use its mark. Garcia is an entrepreneur who has used the Internet site "healthierlife.com," among others, to advertise and sell various pharmaceutical products, including "Pycnogenol" and "Masquelier's: the original French Pycnogenol." Garcia, allegedly to compare his product to Horphag's, repeatedly used Horphag's trademark "Pycnogenol" as a "meta-tag."2
On June 18, 1999, Horphag filed an action against Garcia alleging trademark infringement, false designation of origin, and trademark dilution under federal law, as well as trademark dilution and unfair competition under California law. After a long series of motions between the parties, the case went to a jury trial on July 24-27, 2001. On July 27, 2001, after both sides rested their respective cases, and before the case was submitted to the jury, the district court granted Horphag's motion for judgment as a matter of law under Fed.R.Civ.P. 50(a).3 The district court
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held that Garcia infringed and unlawfully diluted Horphag's trademark, Pycnogenol. On August 28, 2001, the district court entered judgment in Horphag's favor. On August 15, 2001, Garcia filed a motion for reconsideration under Fed.R.Civ.P. 59(e), which the district court denied on September 14, 2001. On January 4, 2002, the district court awarded attorneys' fees to Horphag. Garcia now appeals from the judgment as a matter of law and also challenges the award of attorneys' fees.
I. Standard of Review
A grant of a motion for judgment as a matter of law is reviewed de novo. See Howard v. Everex Sys., Inc., 228 F.3d 1057, 1060 (9th Cir.2000). In reviewing a judgment as a matter of law, the evidence must be viewed in the light most favorable to the nonmoving party, and all reasonable inferences must be drawn in favor of that party. See Reeves v. Sanderson Plumbing Prod., Inc., 530 U.S. 133, 149-50, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).
An award of fees under the Lanham Act is reviewed for an abuse of discretion. Cairns v. Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir.2002). The district court has discretion to award attorneys' fees for actions to enforce trademarks, but only in "exceptional cases." McClaran v. Plastic Indus., Inc., 97 F.3d 347, 364 (9th Cir.1996). This court has held that "exceptional cases" include cases that are "either groundless, unreasonable, vexatious or pursued in bad faith." Cairns, 292 F.3d at 1156 (emphasis in original) (internal quotation marks and citation omitted). Such fee awards are reviewed for an abuse of discretion. Rio Prop. Inc. v. Rio Int'l Interlink, 284 F.3d 1007, 1023 (9th Cir.2002).
II. Horphag's...
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