Xlear, Inc. v. Focus Nutrition, LLC
Opinion
Xlear, Inc. and Focus Nutrition, LLC are both in the business of selling sweeteners that use the sugar alcohol xylitol. Xlear filed a complaint raising a trade dress infringement claim under the Lanham Act, a claim under the Utah Truth in Advertising Act (UTIAA), and a claim under the *1231 common law for unfair competition. The claims all alleged that Focus Nutrition copied the packaging Xlear used for one of its sweetener products. Focus Nutrition moved to dismiss Xlear's Lanham Act claim. At a hearing on Focus Nutrition's motion to dismiss, the district court judge made several comments questioning the validity of Xlear's Lanham Act claim but, ultimately, denied the motion. Following the hearing, the parties, pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii), stipulated to the dismissal of all claims with prejudice. Under the stipulation, the parties reserved the right to seek attorneys' fees and Focus Nutrition exercised its right by filing a motion under Federal Rule of Civil Procedure 54 to recover its fees under the Lanham Act and the UTIAA. The district court concluded that Focus Nutrition was a prevailing party under both the Lanham Act and the UTIAA, and that Focus Nutrition was entitled to all of its requested fees.
On appeal, Xlear raises five challenges to the district court's order. We reverse the district court's award of attorneys' fees under the Lanham Act because Focus Nutrition is not a prevailing party under federal law. As to the UTIAA, we vacate the district court's award of attorneys' fees and remand for further proceedings to permit the district court to analyze the factors governing prevailing party status under Utah law and, if the court concludes Focus Nutrition is a prevailing party under the UTIAA, to determine what portion of the requested fees Focus Nutrition incurred in defense of the UTIAA claim and the reasonableness of the requested fees.
I. BACKGROUND
Xlear and Focus Nutrition both sell sweeteners containing the sugar alcohol xylitol. According to Xlear's complaint, several former employees of Xlear work for Focus Nutrition. Xlear further alleged that when Focus Nutrition struggled to sell its sweetener in a blue box, Focus Nutrition changed its packaging to resemble the packaging used by Xlear. The three-count complaint filed by Xlear alleged (1) trade dress infringement under the Lanham Act,
Focus Nutrition moved, under Federal Rule of Civil Procedure 12(c), to dismiss Xlear's Lanham Act claim on the pleadings. Focus Nutrition's Rule 12(c) motion, however, did not seek dismissal of Xlear's UTIAA claim or Xlear's common law unfair competition claim. The district court convened a hearing on the Rule 12(c) motion. By the hearing date, Xlear had not conducted any discovery or submitted any initial disclosures required by Federal Rule of Civil Procedure 26(a)(1). At the hearing, Focus Nutrition presented the district court with the packaging used by several of Focus Nutrition's and Xlear's competitors. Viewing the display, the district court judge expressed skepticism about the validity of Xlear's allegations and Xlear's ability to produce evidence in support of its Lanham Act claim. Relevant to Focus Nutrition's argument for recovering its attorneys' fees, the district court judge made three statements:
• "I have had dozens of trade dress cases through the years ... it just seems as weak a case as I can imagine from a company that is upset that some former employees went out and *1232 did exactly what it seems like a lot of other companies are doing with this same Xylitol product and artificial sweeteners."Id. at 107 .
• "[I]t wouldn't be hard for me today to say that no reasonable jury is going to find trade dress infringement based on the allegations ... and a lack of facts on your side, and that is why I asked what you're planning to do in discovery."Id. at 109 .
• "It is a little hard to believe that there are facts to support [the allegation that customers associate specific packaging with Xlear's products] when we just look at this display [of all the sweetener companies' packaging] here on the table."Id. at 110 .
Ultimately, however, the Rule 12(c) nature of the proceeding compelled the district court to focus on the pleadings and deny the motion.
Following the hearing, the parties engaged in settlement discussions, which culminated in a stipulation of dismissal pursuant to Federal Rule of Civil Procedure 41(a)(1)(A)(ii). 1 Under the stipulation of dismissal, all three of Xlear's claims, as well as Focus Nutrition's counterclaim, were dismissed with prejudice but the parties reserved the right to seek attorneys' fees. In accord with the stipulation of dismissal, the Clerk of Court terminated the case.
Within fourteen days of the entry of the stipulation of dismissal, Focus Nutrition filed a Federal Rule of Civil Procedure 54 motion seeking $26,674 in attorneys' fees. In its Rule 54 motion, Focus Nutrition argued that it was entitled to recover its attorneys' fees under both the Lanham Act and the UTIAA. Focus Nutrition supported the reasonableness of the requested attorneys' fees through an affidavit from lead counsel and a one-page billing record. The affidavit summarized the parties' conduct during the litigation, provided information about Focus Nutrition's attorneys' hourly rates and experience, and identified six broad tasks performed by counsel during the litigation. The billing record provided a month-by-month accounting of the requested attorneys' fees but did not indicate how much time counsel spent on a given task and did not separate the requested fees by claim-i.e., how much was attributable to the defense of the Lanham Act claim, the defense of the UTIAA claim, the defense of the common law unfair competition claim, or the pursuit of the counterclaim. In response to the Rule 54 motion, Xlear argued, in part, that Focus Nutrition was not a prevailing party under either the Lanham Act or the UTIAA and that Focus Nutrition failed to submit sufficient evidence to permit the district court to assess the reasonableness of the requested fees. In reply, Focus Nutrition did not provide any additional evidence in support of the requested fees; instead, it argued that the affidavit and one-page billing record were sufficient to permit the court to assess the reasonableness of the requested fees.
The district court commenced its analysis of Focus Nutrition's Rule 54 motion by finding that Xlear (1) filed a cursory complaint; (2) failed to provide initial disclosures as required by Federal Rule of Civil Procedure 26 ; (3) did not "conduct, respond to, or participate in any discovery to support its claims"; and (4) stipulated to the dismissal with prejudice after the fact discovery deadline and on the eve of Focus Nutrition filing a motion for summary judgment.
Xlear appeals the district court's award of attorneys' fees. On appeal, Xlear's arguments include: (1) a stipulation of dismissal pursuant to Rule 41(a)(1)(A)(ii) does not produce a judgment for purposes of a Rule 54 motion; (2) Focus Nutrition was not a prevailing party for purposes of the Lanham Act; (3) the district court did not consider the factors governing the prevailing party analysis under Utah law for purposes of awarding fees under the UTIAA; (4) even if Focus Nutrition was a prevailing party under the UTIAA, Focus Nutrition would be entitled to recover only fees related to the UTIAA claim and not the Lanham Act claim, the common law unfair competition claim, or the counterclaim; and (5) Focus Nutrition did not submit sufficient evidence to permit the district court to determine the reasonableness of the requested fees. In response, Focus Nutrition defends the merits of the district court's award of attorneys' fees and argues that Xlear did not preserve its argument that a Rule 41(a)(1)(A)(ii) stipulation of dismissal does not produce a judgment for purposes of a Rule 54 motion. After stating the standard of review, we address each of the above identified arguments.
II. STANDARD OF REVIEW
Generally speaking, "[w]e review the decision to award attorney fees, and the amount awarded, for abuse of discretion."
United Phosphorus, Ltd. v. Midland Fumigant, Inc.
,
Although the overarching standard of review is for an abuse of discretion, "[w]e review the statutory interpretation or legal analysis that formed the basis of the award de novo."
Malloy v. Monahan
,
III. DISCUSSION
A. Does a Fed. R. Civ. P. 41(a)(1)(A)(ii) Stipulation of Dismissal Produce a Judgment for Purposes of a Fed. R. Civ. P. 54 Motion?
A motion for attorneys' fees pursuant to Federal Rule of Civil Procedure 54 must:
(i) be filed no later than 14 days after the entry of judgment ;
(ii) specify the judgment and the statute, rule, or other grounds entitling the movant to the award;
(iii) state the amount sought or provide a fair estimate of it; and
(iv) disclose, if the court so orders, the terms of any agreement about fees for the services for which the claim is made.
Fed. R. Civ. P. 54(d)(2)(B) (emphasis added). Based on the use of the word "judgment" in subclauses (i) and (ii), entry of a judgment is a prerequisite for a Rule 54 motion for attorneys' fees. Put another way, if there was no judgment, then a Rule 54 motion was not a proper mechanism by which Focus Nutrition could seek attorneys' fees. 2
On appeal, Xlear contends that a Rule 41(a)(1)(A)(ii) stipulation of dismissal does not produce a judgment. In support of this contention, Xlear advances two distinct arguments: (1) we should extend the Supreme Court's recent holding in
Microsoft Corp. v. Baker
, --- U.S. ----,
1. Preservation
Generally, "[a]n issue is waived if it was not raised below in the district court."
Wilburn v. Mid-South Health Dev., Inc.
,
Considering each of Xlear's arguments in support of its contention that a Rule 41(a)(1)(A)(ii) stipulation does not produce a judgment for purposes of Rule 54 separately, we reach contrary conclusions on the issue of preservation. As Xlear's response to Focus Nutrition's Rule 54 motion preceded the Supreme Court's decision in
Microsoft
, appellate review of Xlear's argument under
Microsoft
is appropriate. This is particularly true where some district courts have recently applied
Microsoft
to hold that a Rule 41(a)(1)(A)(ii) stipulation of dismissal does not produce a judgment for purposes of a Rule 54 motion.
See
Keith Mfg. Co. v. Butterfield
,
We, however, conclude that appellate review of Xlear's second argument-that a Rule 41(a)(1)(A)(ii) stipulation of dismissal is self-executing and does not result in a physical judgment-is not preserved or subject to an exception to the preservation requirement. As early as 2011, we concluded that "[a] stipulation of dismissal filed under Rule 41(a)(1)(A)(i) or (ii) is self-executing and immediately strips the district court of jurisdiction over the merits."
De Leon v. Marcos
,
2. Microsoft Does Not Apply Within the Context of a Rule 54 Motion
In
Microsoft
, the district court denied the putative class plaintiff's motion for class certification, a denial that is not a final judgment and does not otherwise permit for an appeal as of right.
*1236
We read
Microsoft
as addressing the narrow situation where a hopeful class action plaintiff uses a stipulation of dismissal as a tactic to overcome the limitations placed on appellate jurisdiction by
Having established that Microsoft does not preclude Focus Nutrition from seeking attorneys' fees through a Rule 54 motion, we proceed by analyzing the district court's determination that Focus Nutrition was entitled to recover $26,674 in attorneys' fees, first considering the award under the Lanham Act and then considering the award under the UTIAA.
B. Attorneys' Fees Under the Lanham Act
Under the Lanham Act, "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party."
The Supreme Court has defined "prevailing party" as "a party in whose favor judgment is rendered, regardless of the amount of damages awarded."
Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human Res.
,
For our part, we have had at least three occasions to apply
Buckhannon
to the question of whether a litigant was a prevailing party for purposes of recovering attorneys' fees.
See
Biodiversity Conservation All. v. Stem
,
if a court does not incorporate a private settlement into an order, does not sign or otherwise provide written approval of the settlement's terms, and does not retain jurisdiction to enforce performance of the obligations assumed by the settling parties, the settlement does not bear any of the marks of a consent decree and does not confer prevailing party status on the party whose claims have been compromised.
In
Biodiversity Conservation Alliance
, we rejected the contention that comments by a district court favoring the merits of one party's position over another party's position constitute sufficient judicial
imprimatur
to convey prevailing party status onto a litigant.
requires more than a mere judicial statement favoring one party. Instead, in order for a party to prevail, the court's statement must lend judicial teeth to the merits of the case. More specifically, a party is entitled to attorneys'
*1238 fees only if it could obtain a court order to enforce the merits of some portion of the claim it made in its suit ....
....
... Judicial imprimatur , of the sort required in Buckhannon , gives a plaintiff substance it can rely on in enforcing the merits of its case.
In an effort to establish that it is a prevailing party, Focus Nutrition relies on Xlear's decision to enter into the stipulation of dismissal with prejudice and the district court's comments during the hearing on its Rule 12(c) motion. The stipulation of dismissal in this case does not bear any attributes of a consent decree and did not permit the district court to retain jurisdiction to enforce any aspect of the dismissal relative to the merits of case. Instead, the stipulation of dismissal, by the fact that it was a stipulation entered into under Federal Rule of Civil Procedure 41(a)(1)(A)(ii), did not permit the district court to take any action relative to the merits of Xlear's claims or Focus Nutrition's counterclaim.
See
Smith v. Phillips
,
We turn next to the comments by the district court judge at the hearing on the Rule 12(c) motion. While certainly favorable to Focus Nutrition's legal position because they signaled the district court was likely to grant a future motion for summary judgment by Focus Nutrition, the comments were not sufficient to allow Focus Nutrition to "obtain a court order to enforce the merits of some portion of the claim."
See
Biodiversity Conservation All.
,
*1239 In summation, under Buckhannon , Bell , and Biodiversity Conservation Alliance , to establish that it was a prevailing party, a litigant must demonstrate the existence of judicial imprimatur by identifying judicial action that altered or modified the legal rights of the parties. Focus Nutrition cannot satisfy this requirement and, therefore, is not entitled to recover attorneys' fees under the Lanham Act. Therefore, we reverse the district court's award of attorneys' fees under the Lanham Act.
C. Attorneys' Fees Under the UTIAA
Focus Nutrition argues that even if it was not a prevailing party under federal law for purposes of the Lanham Act, it was a prevailing party under Utah law for purposes of the UTIAA and that the UTIAA entitled it to recover its requested attorneys' fees of $26,674. For two independent reasons, we vacate the district court's award of attorneys' fees under the UTIAA and remand for further proceedings.
Under the UTIAA, "[t]he court shall award attorneys' fees to the prevailing party."
The Utah Supreme Court has adopted a "flexible," "reasoned," and "common-sense" approach to whether a litigant is a prevailing party.
Neff v. Neff
,
a party seeking fees must allocate its fee request according to its underlying claims. Indeed, the party must categorize the time and fees expended for "(1) successful claims for which there may be an entitlement to attorney fees, (2) unsuccessful claims for which there would have been an entitlement to attorney fees had the claims been successful, and *1240 (3) claims for which there is no entitlement to attorney fees."
Foote v. Clark
,
By incorrectly concluding that Focus Nutrition was a prevailing party under the Lanham Act, the district court never analyzed which of the requested fees stemmed from Focus Nutrition's defense of the UTIAA claim rather than the Lanham Act claim. Nor could the district court have attempted to perform this analysis where the affidavit and one-page billing record submitted by Focus Nutrition did not delineate time spent defending the UTIAA claim from time spent defending the Lanham Act claim and the common law unfair competition claim or time spent pursuing the counterclaim. That said, from the record before us, we know that Focus Nutrition's attorneys' fees relative to its Rule 12(c) motion are not recoverable under the UTIAA because the motion only sought dismissal of Xlear's Lanham Act claim. We also know that Focus Nutrition pursued a counterclaim under the Lanham Act. Thus, attorneys' fees attributable to the preparation and prosecution of the counterclaim cannot be recovered under the UTIAA. 7 Even assuming temporarily that Focus Nutrition is a prevailing party under Utah law for purposes of Xlear's UTIAA claim, therefore, would not permit an award of the full requested fees of $26,674. Accordingly, we must vacate the district court's award of attorneys' fees under the UTIAA and remand the matter to permit the district court to determine which of the requested fees are attributable to Focus Nutrition's defense of the UTIAA claim rather than to its defense of the non-UTIAA claims or to its pursuit of the counterclaim.
Apart from the fact that the UTIAA cannot support an award of the full requested fees, we conclude that the district court did not adequately state its findings with respect to the prevailing party analysis under Utah law. The entirety of the district court's analysis specific to Focus Nutrition's attorneys' fees request under the UTIAA reads:
The Utah Truth in Advertising Act provides that "[c]osts shall be allowed to the prevailing party unless the court otherwise directs. The court shall award attorneys' fees to the prevailing party." U.C.A. § 13-11a-4(2)(c). Federal courts have followed Utah law in determining whether a party is the "prevailing party" under this statute. See e.g. First Data Merch. Servs. Corp. v. SecurityMetrics Inc. ,672 Fed. Appx. 229 , 239 (4th Cir. 2016).
Under Utah law, the Court looks to whether there was a prevailing party "within the context of the case as a whole" in awarding attorneys' fees. See Neff v. Neff,247 P.3d 380 (Utah 2011) ; First Data ,672 Fed. Appx. at 239 . The Court is to employ a "flexible and reasoned approach" and "take into consideration 'the significance of the net judgment in the case' and 'the amounts actually sought ... balanc[ed] ... proportionally with what was recovered.' " Giles v. Mineral Res. Int'l, Inc .,320 P.3d 684 , 687-88 (Utah App. 2014) ( quoting A.K. & R. Whipple Plumbing & Heating v. Guy ,94 P.3d 270 (Utah 2004). "Courts should not ignore common sense when deciding which party prevailed." Giles ,320 P.3d at 687-88 .
The Court finds that Defendant prevailed within the context of this case as a whole. As discussed above, it succeeded *1241 in Plaintiff dismissing all of its claims with prejudice.
App'x at 151-52. This analysis, however, does not account for several of the factors identified in
Neff
, particularly the importance of the UTIAA claim relative to the entire litigation.
See
In summation, while it may be the case that Focus Nutrition is a prevailing party for purposes of the UTIAA, we vacate the district court's award of attorneys' fees under the UTIAA because the UTIAA cannot support an award of fees to Focus Nutrition for fees incurred in defense of the non-UTIAA claims or in pursuit of its counterclaim. Furthermore, on remand, the district court should analyze the factors identified in Neff to determine if Focus Nutrition remains a prevailing party under the UTIAA in light of our conclusion that Focus Nutrition is not a prevailing party under the Lanham Act.
D. Reasonableness of Requested Attorneys' Fees
Finally, because the matter is likely to arise again on remand, we discuss the parameters governing the issue of whether Focus Nutrition's requested attorneys' fees are reasonable. As noted earlier, in granting Focus Nutrition all of its requested fees, the district court did not explicitly comment on the reasonableness of the requested fees or address Xlear's argument that Focus Nutrition failed to submit adequate evidence to permit the district court to assess the reasonableness of the requested fees.
Because we have already determined that if Focus Nutrition is to recover any attorneys' fees it can only recover fees incurred in defense of the UTIAA claim, we start our analysis by considering the issue of whether federal or state law establishes the requirements for assessing the reasonableness of the requested fees. "The calculation of attorney fees is considered substantive law because 'the method of calculating a fee is an inherent part of the substantive right to the fee itself and reflects substantive state policy.' "
Chieftain Royalty Co.
,
Under Utah law, "an award of attorney fees must be supported by evidence in the record."
Dixie State Bank v. Bracken
,
1. What legal work was actually performed?
2. How much of the work performed was reasonably necessary to adequately *1242 prosecute [or defend] the matter?
3. Is the attorney's billing rate consistent with the rates customarily charged in the locality for similar services?
4. Are there circumstances which require consideration of additional factors, including those listed in the Code of Professional Responsibility?
Dixie State Bank
,
Additionally, "[a] party is ... entitled only to those fees resulting from its principal cause of action for which there is a contractual (or statutory) obligation for attorney's fees."
Utah Farm Prod. Credit Ass'n v. Cox
,
Now that Focus Nutrition's request for attorneys' fees rises and falls on the UTIAA, the particulars of Utah law relative to the calculation and reasonableness of the requested fees are essential to Focus Nutrition's ability to recover any of its initially-requested fees. On remand, and assuming the district court concludes Focus Nutrition is a prevailing party under the UTIAA, Focus Nutrition must submit additional evidence sufficient to permit the court to make the necessary findings relative to which fees were incurred in defense of the UTIAA claim and what a reasonable award of fees is relative to Focus Nutrition's defense of the UTIAA claim.
IV. CONCLUSION
We REVERSE the district court's award of attorneys' fees under the Lanham Act because Focus Nutrition cannot establish that it was a prevailing party under federal law. And we VACATE the district court's award of attorneys' fees under the UTIAA because the UTIAA cannot support an award of attorneys' fees incurred by Focus Nutrition when defending non-UTIAA claims or when prosecuting its Lanham Act counterclaim and because the district court did not make findings relative to the prevailing party factors outlined in Neff . We REMAND this case to permit the district court to determine whether Focus Nutrition is a prevailing party under the UTIAA and, if so, to determine the reasonableness of Focus Nutrition's requested fee relative to its defense of the UTIAA claim.
The parties filed the stipulation after the deadline for conducting fact discovery. Although Xlear represented at the hearing on Focus Nutrition's Rule 12(c) motion that it would engage in discovery by conducting depositions, it never did so.
This is not to say that the lack of a judgment would have nullified Focus Nutrition's ability to act on the reservation in the stipulation to seek attorneys' fees. Attorneys' fees may have been recoverable under other provisions in the Federal Rules of Civil Procedure, such as Rule 37, or through the inherent powers of the federal district court to sanction a party,
see
Goodyear Tire & Rubber Co. v. Haeger
, --- U.S. ----,
Our reading of
Microsoft Corp. v. Baker
, --- U.S. ----,
Although
Buckhannon
involved a party seeking attorneys' fees pursuant to the Fair Housing Amendments Act of 1988 and the Americans with Disabilities Act,
Buckhannon Bd. & Care Home, Inc. v. W. Va. Dep't of Health & Human Res.
,
Put another way, Focus Nutrition argues that because the district court's comments were the precipitating factor, or the catalyst, for Xlear engaging in settlement talks and entering into the stipulation of dismissal with prejudice, the comments qualify as judicial
imprimatur
. However,
Buckhannon
rejected the catalyst theory for determining if a litigant is a prevailing party and precluded courts from considering the "subjective motivations" of a party who voluntarily changed course during litigation when conducting the prevailing party analysis.
See
Buckhannon
,
Erie R. Co. v. Tompkins
,
Although we identify two examples of tasks that were part of the requested attorneys' fees and not incurred in defense of the UTIAA claim, other tasks not specifically identified here may also fall into this category.
Reference
- Full Case Name
- XLEAR, INC., a Utah Corporation, Plaintiff-Appellant, v. FOCUS NUTRITION, LLC, a Utah Limited Liability Company, Defendant-Appellee.
- Cited By
- 57 cases
- Status
- Published