Haas Automation, Inc. v. Brian Denny , 521 F. App'x 626 ( 2013 )

FILED
NOT FOR PUBLICATION MAY 28 2013
MOLLY C. DWYER, CLERK
UNITED STATES COURT OF APPEALS U .S. C O U R T OF APPE ALS
FOR THE NINTH CIRCUIT
HAAS AUTOMATION, INC. No. 11-56991
Plaintiff - Appellee, D.C. No. 2:09-cv-08336-CBM-
PLA
v.
BRIAN DENNY, an individual; MEMORANDUM *
CNCPROS.NET, INC., an Idaho
corporation; AUTOMATED
SOLUTIONS, INC., an Idaho corporation
Defendants - Appellants,
___________________
ASI MACHINE AND SUPPLY, an
unknown entity,
Defendant.
Appeal from the United States District Court
for the Central District of California
Consuelo B. Marshall, Senior District Judge, Presiding
Argued and Submitted May 9, 2013
Pasadena, California
*
This disposition is not appropriate for publication and is not precedent
except as provided by 9th Cir. R. 36-3.
Before: WARDLAW and MURGUIA, Circuit Judges, and RESTANI, Judge.**
Defendants Brian Denny, CNCPros.net, Inc. (“CNCPros”), and Automated
Solutions, Inc. (“ASI”) appeal the district court’s order awarding attorneys’ fees to
Haas Automation, Inc. (“Haas”) and denying them to CNCPros and ASI. The
order followed a jury verdict in favor of Haas on claims under the
Anticybersquatting and Consumer Protection Act (“ACPA”). We affirm.
Under the Lanham Act, “[t]he court in exceptional cases may award
reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a) (2006). An
exceptional case is one “where the acts of infringement can be characterized as
‘malicious’, ‘fraudulent’, ‘deliberate’, or ‘willful’.” Playboy Enters., Inc. v.
Baccarat Clothing Co., 692 F.2d 1272, 1276 (9th Cir. 1982) (quoting S. Rep. No.
93-1400, at 2 (1974), reprinted in 1974 U.S.C.C.A.N. 7132, 7133). We also have
held that “[e]xceptional circumstances can be found when the non-prevailing
party’s case is groundless, unreasonable, vexatious, or pursued in bad faith.”
Gracie v. Gracie, 217 F.3d 1060, 1071 (9th Cir. 2000) (citation and internal
quotation marks omitted); see also Earthquake Sound Corp. v. Bumper Indus., 352
F.3d 1210, 1217 (9th Cir. 2003) (“[W]hile a finding that the losing party has acted
in bad faith may provide evidence that the case is exceptional, other exceptional
**
The Honorable Jane A. Restani, Judge for the U.S. Court of
International Trade, sitting by designation.
2
circumstances may warrant a fee award.”) (internal quotation marks omitted).
Considering all of the circumstances of this case, including the jury's verdict,
Watec Co. v. Liu, 403 F.3d 645, 656 (9th Cir. 2005), we agree with the district
court that the threshold standard for awarding fees has been met, and further that
the district court did not abuse its discretion in awarding attorneys’ fees.1
Turning to the claim for attorneys’ fees raised by ASI and CNCPros, even if
ASI and CNCPros were determined to be “prevailing parties” within the meaning
of the Lanham Act, Haas’ actions would not have made this an exceptional case.
Denny concedes that he is the sole owner of ASI and “the president of CNCPros,
his closely-held corporation, and was essentially the only person acting on behalf
of CNCPros when he registered the domains in CNCPros’s name.” Because Haas’
ACPA claims against ASI and CNCPros were not groundless, unreasonable,
vexatious, or brought in bad faith, ASI and CNCPros are not eligible for an award
of attorneys’ fees.
In its brief, Haas seeks attorneys’ fees on appeal, pursuant to Ninth Circuit
Rule 39-1. Although Denny’s appeal was ultimately unsuccessful, it raised serious
questions of law regarding the standards for awarding attorneys’ fees in an ACPA
1
We deny Haas’ request for judicial notice because it does not satisfy
the requirements of Federal Rule of Evidence 201. Fed. R. Evid. 201 (“The court
may judicially notice a fact that is not subject to reasonable dispute . . . .”).
3
case. See U-Haul Int’l, Inc. v. Jartran, Inc., 793 F.2d 1034, 1044 (9th Cir. 1986)
(highlighting the “difficult issues” raised on appeal in deciding not to award
appellate attorneys’ fees). Accordingly, we do not award Haas attorneys’ fees on
appeal.
AFFIRMED.
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