NOT FOR PUBLICATION

UNITED STATES COURT OF APPEALS

FILED

FOR THE NINTH CIRCUIT

APR 20 2020

MOLLY C. DWYER, CLERK

U.S. COURT OF APPEALS

SAN DIEGO COMIC CONVENTION, a No. 18-56221 California non-profit corporation, D.C. No. Plaintiff-counter- 3:14-cv-01865-AJB-JMA defendant-Appellee,

v. MEMORANDUM*

DAN FARR PRODUCTIONS, a Utah limited liability company; et al.,

Defendants-counter- claimants-Appellants.

Appeal from the United States District Court for the Southern District of California Anthony J. Battaglia, District Judge, Presiding

Argued and Submitted February 5, 2020 Pasadena, California

Before: THOMAS, Chief Judge, and WARDLAW and NGUYEN, Circuit Judges.

Dan Farr Productions, Daniel Farr, and Bryan Brandenburg (“Defendants”)

appeal the district court’s orders granting summary judgment in favor of San Diego

* This disposition is not appropriate for publication and is not precedent except as provided by Ninth Circuit Rule 36-3. Comic Convention (“SDCC”) on Defendants’ “generic ab initio” argument;

denying judgment to Defendants on their unclean hands defense; and granting

SDCC’s motion for attorney fees and costs. We have jurisdiction under 28 U.S.C.

§ 1291, and we affirm in part and vacate and remand in part. Because the parties

are familiar with the history of this case, we need not recount it here.

We review orders granting summary judgment de novo. Weiner v. San

Diego County, 210 F.3d 1025, 1028 (9th Cir. 2000). We review a district court’s

refusal to apply the doctrine of unclean hands for abuse of discretion. Pinkette

Clothing, Inc. v. Cosmetic Warriors Ltd., 894 F.3d 1015, 1029 (9th Cir. 2018). A

district court’s decision on a motion for attorney fees under the Lanham Act is

reviewed for abuse of discretion. SunEarth, Inc. v. Sun Earth Solar Power Co.,

839 F.3d 1179, 1181 (9th Cir. 2016) (en banc) (per curiam).

I

The district court properly granted summary judgment. The district court

concluded that the evidence tendered by the Defendants was insufficient to support

their argument that the term “Comic-Con” was generic before SDCC’s first use,

and we find no error in that conclusion. See Park ‘N Fly, Inc. v. Dollar Park &

Fly, Inc., 718 F.2d 327, 329–30 (9th Cir. 1983) (discussing standard for

determining genericness), rev’d on other grounds, 469 U.S. 189 (1985). Thus,

2 because the record before the district court did not demonstrate a genuine issue of

material fact, the district court properly granted summary judgment. We need not,

and do not, reach the question of whether a “generic ab initio” theory of liability is

cognizable. We affirm the grant of summary judgment.

II

The district court did not abuse its discretion in denying Defendants’ motion

for judgment on their unclean hands defense. “[O]nly a showing of wrongfulness,

willfulness, bad faith, or gross negligence, proved by clear and convincing

evidence, will establish sufficient culpability for invocation of the doctrine of

unclean hands.” Pinkette Clothing, Inc., 894 F.3d at 1029 (quoting Pfizer, Inc. v.

Int’l Rectifier Corp., 685 F.2d 357, 359 (9th Cir. 1982)). Defendants have not

shown on appeal that the district court abused its discretion in finding no

“wrongfulness, willfulness, bad faith, or gross negligence” on the part of SDCC in

registering the marks at issue. See id. Thus, we must affirm the district court’s

denial of Defendants’ motion for judgment on their unclean hands defense.

III

The district court did not abuse its discretion in awarding reasonable

attorney fees, but we vacate the portion of the judgment awarding SDCC non-

3 taxable costs for expert witnesses, and we remand the case to the district court for

further proceedings consistent with this disposition.

A

Defendants argue that the district court erred in awarding attorney fees to

SDCC because this case is not “exceptional.” Under the Lanham Act, a district

court may award “reasonable attorney fees” in “exceptional cases.” 15 U.S.C.

§ 1117(a). “[D]istrict courts analyzing a request for fees under the Lanham Act

should examine the ‘totality of the circumstances’ to determine if the case was

exceptional,” using a preponderance of the evidence standard. SunEarth, 839 F.3d

at 1181. District courts may exercise equitable discretion and consider

nonexclusive factors including “frivolousness, motivation, objective

unreasonableness (both in the factual and legal components of the case) and the

need in particular circumstances to advance considerations of compensation and

deterrence.” Id. (quoting Octane Fitness, LLC v. ICON Health & Fitness, Inc., 572

U.S. 545, 554 n.6 (2014)).

Here, the district court applied the totality of the circumstances standard and

considered factors that align with those set forth in SunEarth and Octane Fitness.

The court focused on the “unreasonable manner” in which Defendants litigated the

case, see Octane Fitness, 572 U.S. at 554, highlighting Defendants’ failure to

4 comply with court rules, persistent desire to re-litigate issues already decided,

advocacy that veered into “gamesmanship,” and unreasonable responses to the

litigation. The court emphasized the need to advance considerations of

compensation and deterrence. We thus cannot say that the district court abused its

discretion in deeming this case “exceptional” and granting attorney fees under 15

U.S.C. § 1117(a).

B

Defendants did not, and do not now, challenge the rates of SDCC’s attorneys

or the reasonableness of their timesheets;1 instead, they argue that the district court

was required, but failed, to articulate causal connections between the misconduct

that rendered the case exceptional and the particulars of the fee award, which

resulted in an excessive fee. But Defendants cite no Ninth Circuit or Lanham Act

case law in support of this argument. In any case, the district court indicated that

Defendants’ exceptional conduct occurred at every stage of this litigation,

including prior to filing, and that such conduct caused SDCC to expend

unnecessary legal fees and the court to squander limited judicial resources

1 The district court nonetheless independently assessed the reasonableness of SDCC’s attorney fees through a lodestar analysis of the hours expended and the hourly rates charged, and made certain adjustments and deductions. 5 throughout the duration of the case. Therefore, it was not an abuse of discretion to

award fees related to the entirety of the case.

C

Finally, Defendants argue that the district court erred in awarding non-

taxable costs, specifically $212,323.56 for expert witnesses. We agree and vacate

and remand the portion of the award for non-taxable costs.

Under the Lanham Act, successful plaintiffs are entitled to “the costs of the

action” and, if the action is deemed “exceptional,” “reasonable attorney fees.” 15

U.S.C. § 1117(a). The Lanham Act does not, however, provide the “explicit

statutory authority” required to award litigation expenses beyond the six categories

of “costs” specified by Congress in the general costs statute, 28 U.S.C. §§ 1821,

1920. See Rimini St., Inc. v. Oracle USA, Inc., 139 S. Ct. 873, 877–78 (2019)

(holding that the Copyright Act’s authorization to award “full costs” does not

permit the award of expert fees); Arlington Cent. Sch. Dist. Bd. of Educ. v.

Murphy, 548 U.S. 291, 292 (2006) (“[N]o statute will be construed as authorizing

the taxation of witness fees as costs unless the statute ‘refer[s] explicitly to witness

fees.’”); W. Va. Univ. Hosps., Inc. v. Casey, 499 U.S. 83, 87 (1991) (holding that

the term “reasonable attorney’s fee” in 42 U.S.C. § 1988 does not provide the

“explicit statutory authority” required to award expert witness fees beyond those

6 provided by §§ 1920 and 1821), superseded by statute, Civil Rights Act of 1991,

Pub. L. No. 102-166, 105 Stat. 1071 (explicitly providing that a court may award

expert fees as part of the attorney’s fee under § 1988); Crawford Fitting Co. v. J.T.

Gibbons, Inc., 482 U.S. 437, 439 (1987) (holding that expert witness fees are not

available under Federal Rule of Civil Procedure 54(d) because “when a prevailing

party seeks reimbursement for fees paid to its own expert witnesses, a federal court

is bound by the limit of § 1821(b), absent contract or explicit statutory authority to

the contrary”). The Lanham Act thus conveys no authority to award costs or fees

related to expert witnesses, beyond those provided by §§ 1821 and 1920.

We vacate the portion of the district court judgment awarding expert witness

fees and remand for further proceedings consistent with this order.

IV

In sum, we affirm in part, vacate in part, and remand for further proceedings.

We need not, and do not, reach any other issue urged by the parties. Each party

shall bear its own costs.

AFFIRMED in part, VACATED in part, REMANDED.

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