No Fees Under SLAPP or Lanham Act Fee Shifting Provisions.
Well, everyone knows about James “Jim” Brown, maybe the best professional football running back of all time. In the next case, Jim Brown dodged fee exposure under the Lanham Act and under California’s SLAPP statute.
He brought a false exploitation of image case against a video game company for unauthorized use of his likeness in a series of sports-related video games. After some law and motion maneuvering, defendant was granted unopposed motions to dismiss the Complaint and SLAPP the state law claims. Mr. Brown filed an amended complaint including his previously filed Lanham Act claim and the SLAPPed state law claims. Similar defense motions were filed to the new pleading, with the district court dismissing the Lanham Act claim but refusing to rule on the SLAPP motion because it declined to exercise supplemental jurisdiction over the state law claims. That prompted defendant to file a motion for attorney’s fees under the Lanham Act and under the SLAPP fee shifting provision.
In Brown v. Electronic Arts, Inc., Case No. CV 09-01598 DMG (RZx) (C.D. Cal. July 13, 2010), District Judge Dolly M. Gee denied defendant’s fee requests. The Lanham Act predicate was not satisfied, because defendant failed to show that Mr. Brown’s claim was groundless, unreasonable, vexatious, or pursued in bad faith. (Classic Media, Inc. v. Mewborn, 532 F.3d 978, 990 (9th Cir. 2008).) With respect to the SLAPP win on the initial Complaint, District Judge Gee found that defendant did not “prevail” on the motion because it only obtained a technical victory in light of the court’s allowance of leave to amend—resulting in the filing of an amended complaint. Defendant’s “success” was relative given that the state claims were dismissed based on supplemental jurisdictional discretion, which means that the merits of the SLAPP motion did not reach the state claims re-pled in the amended complaint. Because Mr. Brown can re-file the claims in state court and SLAPP fees were only sought for work in connection with the initial Complaint, no fee recovery was justified. (Verizon Del., Inc. v. Covad Commc’ns Co., 377 F.3d 1097, 1091 (9th Cir. 2003); Gardner v. Martino, 563 F.3d 981, 991 (9th Cir. 2009).)
Hat Tip
to our friend Ben Shatz, an appellate specialist at Manatt, Phelps & Phillips, LLP, for sharing this decision with us. Mr. Shatz and other attorneys at his firm have appealed the prior dismissals of the Lanham Act and supplemental claims to the Ninth Circuit Court of Appeals on Mr. Brown’s behalf.