United States District Court, D. Minnesota
Wing Enterprises, Inc., d/b/a Little Giant Ladder Systems, a Utah corporation, Plaintiff,
Tricam Industries, Inc., a Minnesota corporation, Defendant.
A. Miller, Brett L. Foster, and Elliot James Hales, Dorsey
& Whitney LLP, Salt Lake City, UT, and Clint Conner and
Caitlin L. D. Hull, Dorsey & Whitney LLP, Minneapolis,
MN, for Plaintiff Wing Enterprises, Inc.
H. Chadwick, Patterson Thuente Christensen Pedersen, PA,
Minneapolis, MN, for Defendant Tricam Industries, Inc.
OPINION AND ORDER
C. Tostrud United States District Judge
9, 2019, the Court granted Defendant Tricam Industries'
summary-judgment motion on Plaintiff Wing Enterprises'
state and federal false-advertising claims. See SJ
Order, Wing Enters., Inc. v. Tricam Indus., Inc.,
No. 17-cv-1769 (ECT/ECW), 2019 WL 2994465 (D. Minn. July 9,
2019) (“SJ Order”) [ECF No. 370]. Judgment was
entered in this matter the following day. ECF No. 371. Tricam
then moved for an award of attorneys' fees and nontaxable
costs [ECF No. 372], and Wing moved to stay resolution of
that motion [ECF No. 375] until its appeal, which is now
pending in the Federal Circuit [ECF No. 405], is resolved.
While those motions were pending, Tricam filed a bill of
costs, as contemplated by Local Rule 54.3, seeking a total of
$31, 727.44 in costs. ECF No. 404. Wing objected to that bill
of costs in certain limited respects. ECF No. 413. The Clerk
entered a cost judgment in Tricam's favor, but in a
lesser amount than Tricam had requested [ECF No. 417], and
Tricam moved for a review of that cost judgment [ECF No.
419]. The Parties' disputes on Tricam's fee motion,
its motion to review the cost judgment, and Wing's motion
to stay have now been fully briefed. For the reasons
described below, Wing's motion to stay will be denied,
Tricam's motion for attorneys' fees will be denied,
its motion to review the cost judgment will be granted, and
it will be awarded the additional $3, 416.24 it now seeks in
motion to stay resolution of the motion for attorneys'
fees pending resolution of its appeal will be denied because
it is more efficient “to address the issue now with the
underlying facts and circumstances of this litigation freshly
in mind, rather than deferring consideration for” a
year or more while this case awaits a decision on appeal.
Upsher-Smith Labs., Inc. v. Pan American Labs.,
Inc., No. Civ.01-352 ADM/AJB, 2004 WL 902176, *3 (D.
Minn. Apr. 26, 2004) (citing D. Minn. LR 54.3(b) and Comments
thereto). As Wing itself notes, deciding the motion now
further serves the goal of efficiency because, for the
reasons discussed below, the Court will deny the fee motion,
and to the extent Tricam might wish to argue that denial
constitutes an abuse of discretion, it will be able to do so
in connection with the pending appeal rather than through
some separate process in the distant future. See
Wing Fee Br. at 5-6 [ECF No. 398].
standard for awarding a prevailing defendant attorneys'
fees under either the Lanham Act or under Minn. Stat. §
325D.45, subd. 2, is that such an award is appropriate
“only . . . in exceptional cases.” B&B
Hardware, Inc., v. Hargis Indus., Inc., 912 F.3d 445,
454 (8th Cir. 2018) (citing 15 U.S.C. § 1117(a)); Minn.
Stat. § 325D.45, subd. 2 (attorneys' fees permitted
in false-advertising case “if . . . the party
complaining of a deceptive trade practice has brought an
action knowing it to be groundless”); Fair Isaac
Corp. v. Experian Info. Sols. Inc., 711 F.Supp.2d 991,
1010 (D. Minn. 2010) (denying motion for attorneys'
fees). “An exceptional case is one in which a plaintiff
brought an action that ‘was groundless, unreasonable,
vexatious, or was pursued in bad faith.'”
B&B, 912 F.3d at 454 (quoting Hartman v.
Hallmark Cards, Inc., 833 F.2d 117, 123 (8th Cir.
1987)). “Where the defendant is the prevailing party,
the standard is not whether the claimant filed suit in good
faith but rather whether plaintiff's action was
oppressive.” Mt. Mktg. Grp., LLC v. Heimerl &
Lammers, LLC, No. 14-cv-846 (SRN/BRT), 2016 WL 2901735,
at *2 (quotation omitted).
carefully reviewed a stack of double-sided summary-judgment
and Daubert submissions more than two feet thick,
the Court can say with a rare degree of confidence that this
is not an exceptional case within the meaning of the Lanham
Act. The Court awarded Tricam summary judgment on a very
narrow basis: after the Court ruled that the expert testimony
of one of Wing's experts, Hal Poret, must be excluded,
Wing did not have evidence sufficient to create a genuine
issue of material fact as to whether the ANSI-conformance
statement (as distinct from the OSHA-conformance statement)
on its ladders was material to consumers' purchasing
decisions. See generally SJ Order, 2019 WL 2994465,
at *5-13. The Daubert motion itself presented the
Court with a complicated question, and if the circumstances
were slightly different-for example, if the Parties'
differing understandings about whether the OSHA-conformance
statements on the ladder necessarily depended on the
ANSI-conformance statements on the ladder had crystalized and
been presented to the Court a bit earlier in the litigation,
see generally Discovery Order, Wing Enters.,
Inc. v. Tricam Indus., Inc., No. 17-cv-1769 (ECT/ECW),
2018 WL 6326416 (D. Minn. Dec. 4, 2018) [ECF No. 151]
(granting Tricam's motion to strike Wing's
interrogatory responses as untimely)-the admissibility of
Poret's testimony would have presented a much closer
call. Had that testimony come in, it would have created a
triable issue of fact as to the materiality element of
Wing's claims. Moreover, in the same order excluding
Poret's expert testimony, the Court ruled that the expert
testimony of another expert, Donald Bloswick, was admissible.
SJ Order, 2019 WL 2994465, at *3-4. That testimony created a
triable fact as to the literal falsity of Tricam's
ANSI-conformance statements. And, as the Court has already
observed, analyzing the other elements of Wing's
false-advertising claims in the context of the
would [have] require[d] the Court to consider novel or
substantially unsettled legal issues, including: (1) whether
statements provided by a supplier to a retailer and published
on the retailer's website might constitute a statement
“by” the supplier; (2) whether a dispute over the
literal falsity of a statement presents a question of law or
one of fact; (3) whether, in a non-comparative case, a
presumption of deception survives the Eighth Circuit's
decision in Everest Capital Ltd. v. Everest Funds Mgmt.,
L.L.C., 393 F.3d 755 (8th Cir. 2005); and (4) whether
Wing has met whatever unknown standard now applies to the
remedy of disgorgement following the Eighth Circuit's
decision in Martinizing International, LLC v. BC
Cleaners, LLC, 855 F.3d 847 (8th Cir. 2017).
SJ Order, 2019 WL 2994465, at *12. The Court will not
speculate which Party might have come out on top with respect
to any of those issues, but the mere existence-and sheer
number-of such “novel or substantially unsettled legal
issues, ” id., makes it impossible for the
Court to conclude that Wing's claims were
“groundless, unreasonable, vexatious, or [ . . .]
pursued in bad faith, ” such that an award of
attorneys' fees might be warranted. B&B, 912
F.3d at 454 (quoting Hartman, 833 F.2d at 123).
timely filed a bill of costs claiming a total of $31, 727.44
in taxable costs, of which the Clerk awarded $15, 870.20. ECF
Nos. 404 at 1, 417. The costs Tricam sought for transcripts
and disbursements for printing were awarded in their
entirety. ECF No. 417. It was awarded $160.00 of the $248.40
it sought for witnesses, and was awarded nothing for the $15,
768.84 it claimed for certain copying fees relating to
e-discovery. Id. The Clerk explained that Tricam had
not provided sufficient explanation and documentation of its
witnesses' mileage costs, and further found that
“[e]lectronic discovery costs are not taxable by the
Clerk.” ECF No. 417-1.
Parties briefed Tricam's subsequent motion to review the
cost judgment, the issues narrowed. Tricam's motion seeks
the $88.40 the Clerk denied in witness costs relating to
mileage, and $3, 327.84 of the larger amount Tricam
previously claimed as copying fees. Cost Judgment Mot. at 1
[ECF No. 420]; Mem. in Supp. of Cost Judgment Mot. at 4 [ECF
No. 422]. Wing does not oppose Tricam's motion insofar as
it seeks an additional $88.40 for witness-mileage costs, and
Tricam will be awarded that amount. See Mem. in
Opp'n to Cost Judgment Mot. at 4 [ECF No. 425]. But Wing
argues that the e-discovery expenditures Tricam seeks are not
taxable because they were done for the mutual convenience of
the Parties, not pursuant to any court order or agreement.
Id. at 1-2. The Clerk's order denying the costs
at issue is reviewed de ...