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Guantanamera Cigar Co. v. Corporacion Habanos

December 10, 2009

GUANTANAMERA CIGAR CO., PLAINTIFF,
v.
CORPORACION HABANOS, S.A., DEFENDANT.



The opinion of the court was delivered by: Royce C. Lamberth, United States District Judge

MEMORANDUM OPINION

This matter comes before the Court on the defendant's Application [51] for Court-Ordered Attorney's Fees and Costs as well as plaintiff's motion for reconsideration of the Court's August, 18, 2009, order awarding attorney's fees and costs. Upon consideration of defendant's Application [51], plaintiff's Response [58] thereto, defendant's Reply [64] brief, plaintiff's Motion for Reconsideration [59], defendant's opposition [64], plaintiff's reply [65] thereto, the applicable law, and the entire record herein, the Court concludes that the defendant's motion will be GRANTED and plaintiff's motion will be DENIED. The Court's reasoning is set forth below.

BACKGROUND

This case came before the Court for a de novo review of an Order issued by the Trademark Trial and Appeal Board ("TTAB") on February 29, 2008, denying plaintiff Guantanamera Cigar Company's application for a U.S. trademark. The application was opposed by defendant Corporacion Habanos, S.A.. Ultimately, the TTAB found plaintiff's mark geographically deceptively misdescriptive. 86 U.S.P.Q.2d 1473, 1479 (T.T.A.B. 2008). After the TTAB's ruling plaintiff filed this case.

For over a year now, plaintiff and defendant have been in a discovery process battle, failing to cooperate. Plaintiff gave defendant a list of thousands of possible persons or companies that may serve as witnesses, without providing names and addresses. (Def.'s Mot. to Preclude, Compel, and for Sanctions Ex. B at 2-3.) Although plaintiff narrowed the possible categories, plaintiff still provided a list of fifty-six potential witnesses stating the lists "include, but are not limited to" those specific persons or companies. (Def.'s Mot. Ex. E at 2-8.) After attempting for months to obtain compliance without court intervention, defendant then moved to preclude plaintiff from using any witnesses from the large categories provided by plaintiff because plaintiff did not adhere to a reasonable inquiry and the specific requirements of the Fed. R. Civ. P. (Memo. Op. at 2, Aug. 18, 2009; see also Def.'s Mot. at 1-6.) Even after a Protective Order was requested and issued by the Court, plaintiff still failed to respond to various interrogatories and document requests. (Def.'s Mot. at 5.)

On April 22, 2009 defendant filed a Motion to Preclude, Compel, and for Sanctions with the Court. (Def.'s Mot. to Preclude, Compel and for Sanctions.) Then on August 18, 2009 the Court ordered that plaintiff pay defendant's reasonable attorney's fees and costs for filing the Motion to Preclude, Compel, and for Sanctions and the Reply. (Order at 3, Aug. 18, 2009.) The Court also limited plaintiff to 15 witnesses or of the list of 56 persons, those that plaintiff has actually interviewed (whichever is greater). (Id. at 2.) Plaintiff was further limited to paying up to $500 in reasonable expenses for each deposition that defendant completed, up to 15 depositions. (Id.) In response to that Order defendant filed this Application asking for $16,615.00 in fees and $439.79 in Westlaw research expenses. (Def.'s Application for Court-Ordered Fees and Costs at 1.) The fees are for hours spent trying to obtain compliance, writing the entire motion, writing the reply, and for writing the application for fees. (Id. at 4-5.) The associated costs are for Westlaw research completed for the motion and the application. (Id. at 6.)

DISCUSSION

I. The Fees are Reasonable

Defendant's Application for attorney's fees shall be granted because the fees stated and hours worked are reasonable. This Court has the authority to determine the applicable fee. "If the motion [for an Order Compelling Disclosure or Discovery] is granted-or if the disclosure or requested discovery is provided after the motion was filed-the court must, after giving an opportunity to be heard, require the party . . . whose conduct necessitated the motion . . . to pay the movant's reasonable expenses incurred in making the motion, including attorney's fees." Fed. R. Civ. P. 37(a)(5)(A). The Court has already determined that an award is necessary in this case. (Memo. Op. at 9, Aug. 18, 2009; Order at 2-3, Aug. 18, 2009.) Therefore, the Court need not look today at whether plaintiff's actions justify ordering attorney fees, that has already been decided, the Court need only look at whether the fees requested by defendant are reasonable.

a. The Order and Memorandum are Not Conflicting

Plaintiff argues that defendant's request for $16,615.00 in application fees and $437.79 for costs is unreasonable for a variety of reasons. (Pl.'s Resp. and Mot. for Recons. at 7-8.) Plaintiff argues that the Court's Order and accompanying Memorandum Opinion are potentially conflicting. (Id. at 7.) The Court's August 18, 2009 Order [49] ordered that "the Motion to Preclude, to Compel and for Sanctions [19] is GRANTED as follows: . . . 5) Pursuant to Fed. R. Civ. P. 37(a)(5) and (c)(1)(A), plaintiff shall pay defendant's reasonable attorney's fees and costs for bringing this motion." (Order at 2-3, Aug. 18, 2009.) The Memorandum Opinion [48] issued the same day states that "[p]laintiff will also pay defendant's reasonable attorney's fees for the filing of the Motion to Preclude and the Reply, as stated above." (Memo. Op. at 9, Aug. 18, 2009.) Plaintiff argues that there is confusion between these two documents, claiming the Order [49] is "vague" and asks the Court to clarify. (Pl.'s Resp. and Mot. for Recons. at 7.) Plaintiff advances that defendant's requested payment is unreasonable because only time spent on the motion to preclude and not the motion to compel should be included. (Id.) However, it seems clear that the Court awarded attorney fees and expenses associated with the entire Motion to Preclude, to Compel and for Sanctions [19] in both the Order and the accompanying Memorandum Opinion. In both documents the Court granted defendant's "Motion to Preclude, Compel, and for Sanctions" which asks for fees associated with the entire motion. (Memo. Op. at 9, 14, Aug. 18, 2009; Order at 2-3, Aug. 18, 2009; Def.'s Application for Court-Ordered Att'ys Fees and Costs at 1.) In the Order the Court stated, "[i]t is further ORDERED that the Motion to Preclude, to Compel and for Sanctions [19] is GRANTED as follows: . . . plaintiff shall pay defendant's reasonable attorney's fees and costs for bringing this motion." (Order at 2-3, Aug. 18, 2009.) Again, the Court granted the entire motion, not part of the motion as the Court did not break down the motion into sections in the Order but kept the entire motion together. (Id.) Further, Fed. R. Civ. P. 37(a)(5), which was addressed in the Order, specifically applies to motions to compel. (Def.'s Application for Court-Ordered Att'ys Fees and Costs at 3-4.) The accompanying Memorandum Opinion also applies to both the motion to compel and the motion to preclude despite the statement on page 9 that "[p]laintiff will also pay defendant's reasonable attorney's fees for the filing of the Motion to Preclude and the Reply" because page 14 clarifies that the entire Motion to Preclude, Compel, and for Sanctions is granted. (Memo. Op. at 9, 14, Aug. 18, 2009.) Nowhere in the opinion does the Court attempt to separate the motion. (Id. at 1-14.)

b. The Claimed Hours Worked are "Reasonable"

The hours defendant spent working on the motion and reply are reasonable. Defendant spent 7.9 hours trying to obtain compliance with plaintiff before going to the Court, 17.8 hours working on the Motion, 7 hours working on the Reply, and 6.6 hours working on the fee application. (Id. at 4-5.) "A party is only entitled to compensation for the work that is 'useful and of a type ordinarily necessary' to secure the final result obtained from the litigation." Pennsylvania v. Del. Valley Citizens' Counsel for Clean Air, 478 U.S. 546, 561 (1986) (quoting Webb v. Board of Ed. of Dyer County, 471 U.S. 234, 243 (1985)) (discussing some reasonable compensable fees). In the determination of whether hours are reasonable, a fee petitioner must provide detailed documentation that supports its request. See National Ass'n of Concerned Veterans v. Secretary of Defense, 675 F.2d 1319, 1327 (D.C. Cir. 1982); see also Hensley v. Eckerhart, 461 U.S. 424, 433 (1983) (explaining evidence must be submitted that supports the hours worked). "The district court can exercise discretion in reducing the fee award by specific amounts in response to specific objections." DL v. Dist. of Columbia, 256 F.R.D. 239, 243 (D.D.C 2009) (Lamberth, C.J.); see alsoDonnell v. United States, 682 F.2d 240, 250 (D.C. Cir. 1982).

Further, defendant prevailed on all issues on the motion. A court must take into account the relationship between the results obtained and the fee awarded, excluding fees when the applicant did not prevail in the litigation. See INS v. Jean, 496 U.S. 154, 163 n.10 (1990). No reductions need to be taken for any part of the motion because defendant prevailed on all issues. (Order at 1-3, Aug. 18, 2009.) Therefore, fees associated with the entire motion may be ...


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