The Impact of Fogarty, Octane Fitness and Tobinick on Mediation
In 1994, the Supreme Court established principles for a discretionary award of attorney fees under the Copyright Act. Non-exclusive factors to be considered are “frivolousness, motivation, objective unreasonableness” and the need in particular circumstances to advance considerations of compensation and deterrence. Plaintiffs and defendants are treated the same. But attorney fee awards are not automatic. Fogarty v. Fantasy, Inc., 510 U.S. 517, 527, 533, 534 n. 19 (1994). The parties, their counsel, the courts, and the copyright mediator have lived with these principles for over a decade.
Ten years later, the Supreme Court defined an “exceptional case” under the Patent Act, relying on Fogarty, as one that “simply stands out from others with respect to the substantive strength of the party’s litigating position, considering both the governing law and the facts of the case, or the unreasonable manner in which the case was litigated. An “exceptional case” for an award of attorney fees is one that stands out from the others, namely, “not uncommon” or “not run of the mill.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749, 1756 (2014). This was a lower standard for an award of attorney fees than had previously been applied under Section 285 of the Patent Act. Again, the parties, their counsel, the courts and the patent mediator have lived with these principles for a number of years.
In 2018, the landscape became uniform across the three major categories of intellectual property law. In Tobinick v. Novella, 884 F.3d 1110, 1117-18 (11th Cir. 2018) the Eleventh Circuit applied Octane Fitness to cases brought under the Lanham Act.
Now, the parties, their counsel, and the mediator have broad uniform guidelines to be factored into patent, trademark and copyright mediation.