9th Circuit: No Attorneys Fees When Plaintiff Elects to Recover Statutory Damages for Trademark Counterfeiting
UPDATE: See Likelihood of Confusion (the Nutty Ninth) citing Seattle Trademark Lawyer on this opinion.
(image links to washington post article on combating the importation of Chinese counterfeit goods)
In K&N Engineering, Inc. v Bulat, the Ninth Circuit ruled yesterday that "an award of statutory damages for trademark counterfeiting under 15 U.S.C. § 1117(c) precludes an award of attorney’s fees under 15 U.S.C. § 1117(b)."
Why is this important to remember when attempting to settle your counterfeiting action?
Because the more items of value you have to bargain over (particularly attorneys fees which only get worse over time) the more likely you are to maximize your bargaining position.
As Professor Leigh Thompson of the Kellogg School of Management at Northwestern University has instructed us:
One reason negotiations fail is because negotiators haggle over a single issue, such as price. By definition, if negotiations contain only one issue (e.g., price), they are purely distributive (i.e., fixed pie). Skilled negotiators are adept at expanding the set of negotiable issues.
Adding issues, unbundling issues, and creating new issues can transform a single-issue, fixed-pie negotiation into an integrative, multi-issue negotiation with win-win potential.
Integrative agreements require at least two issues and, in the case of negotiation issues (not parties) the more the merrier.
Why is this so?
As Roger Fisher, of Getting to Yes fame, notes, often the key to getting past impasse is understanding and then asking questions to ascertain what underlying needs that are not monetary your negotiation partner wants. He tells this story to explain:
[A corporate CEO wanted to sell a building because he] was retiring and wanted $2 million, which he considered a fair price. He had a buyer, but the buyer wouldn't pay that price. I asked the seller, 'What's the worst thing about selling this building?' And he said, 'All of my papers for 25 years are mixed up in my corner office. When I sell the building, I can't throw everything away. I've got to go through that stuff. That's the nightmare I have.
Thompson continues:
Then Fisher asked the buyer why he wanted the building. The buyer explained he hoped to sell it for hoteling. This knowledge gave Fisher the idea of suggesting that the seller offer the buyer a lease with an option to buy with one contingency: that the president's name be on the corner office for three years. The buyer agreed. In this example, Fisher notes that the key underlying needs are not about money, but more about convenience.
Thompson, The Heart and Mind of the Negotiator, 3rd Ed. at 80-81.
This example is as much about asking diagnostic questions as it is about having multiple items for which to bargain.
They key, of course, is to consider the probability in every case that there are undisclosed needs, fears and desires that would assist the parties in achieving a resolution that is of greater benefit to all parties than what appears to be the sum of the parts.
