If someone has violated your intellectual property rights, it's only natural that you'd want to get your attorneys' fees back when the case is finalized. Depending on the jurisdiction, the circumstances of the case and the type of intellectual property at stake, this may be possible. As always, the best way to find out whether you can recover your attorneys' fees in an intellectual property case is to consult with an intellectual property lawyer—but this overview may help you gauge what to expect.

When can I recover attorneys' fees in patent and trademark cases?

35 U.S.C. §285 of the Patent Act states in its entirety, “The court in exceptional cases may award reasonable attorney fees to the prevailing party.” Courts have extended that right under patent law to other types of intellectual property law. For example, the Tenth Circuit was the last circuit court to adopt the “exceptional case” standard for trademark cases as well as patent cases. That means that circuit courts now have a unified standard as of June 8, 2021, thanks to a Tenth Circuit case called Derma Pen, LLC v. 4EverYoung Limited.

What is an “exceptional case”?

In Octane Fitness v. ICON Health & Fitness, 572 U.S. 545 (2014), the U.S. Supreme Court held that for a case to be deemed ”exceptional,” the case need only be ”one that stands out from others.” And that the burden of proof is “preponderance of the evidence,” rather than the prior, more strict, “clear and convincing evidence” standard.” This gives judges more flexibility in finding a case to be exceptional that would justify awarding attorney's fees.

When can I recover attorneys' fees in copyright cases?

Under 17 U.S.C. § 411(a), a copyright holder must have a registered copyright in order to file a copyright infringement case in federal court. If that requirement is satisfied, 17 U.S.C. § 412 allows an author to seek statutory damages and/or attorneys' fees if the copyright was registered prior to the alleged infringement, or registered within the first three months of publication of the copyrighted work under a safe harbor provision in 17 U.S.C. § 412(2).

The Copyright Act allows courts to award a “reasonable” attorneys' fee to the winning party. Section 505 and relevant caselaw suggests the courts should consider “the degree of success obtained on the claim; frivolousness; motivation; objective reasonableness of factual and legal arguments; and need for compensation and deterrence.” Other factors might include whether the awarding of fees would have a “chilling effect” on an impoverished plaintiff. Judges have broad discretion to consider each of these factors, as long as they're applied in an evenhanded manner. Some legal scholars argue that the courts should pay special attention to the financial burden of paying attorneys' fees on either party.

To find out whether you're likely to succeed at getting attorneys' fees back in your intellectual property case, call Thomas P. Howard, LLC today.