IP Law Daily, TRADEMARK—D. Mass.: Attorney fees awarded in CrossFit infringement suit, (Jun 27, 2016)

By Jody Coultas, J.D.

The federal district court in Boston has awarded attorney fees and costs to CrossFit, Inc., in a trademark infringement suit filed against a gym owner that used the CrossFit mark without authorization (CrossFit, Inc. v. Mustapha, June 23, 2016, Saylor, D.). The requested attorney fee was reduced by the court to reflect meritless claims that were pursued, the simplicity of the case, and inefficiencies caused by using two law firms.

CrossFit filed suit against the owner and operator of the CrossTrain Sports Club in North Chelmsford, Massachusetts for trademark infringement, false designation of origin, and trademark dilution based on his use of the marks "CrossFit," "CrossBox," "CrossKick," and "CrossTrain."

The court enjoined Mustapha from using the "CrossFit" mark and any substantially similar variation, and granted CrossFit summary judgment as to its infringement claim for Mustapha’s use of the "CrossFit" mark. The false designation of origin and trademark dilution claims were dismissed, as was the trademark infringement claim concerning the "CrossBox," "CrossKick," and "CrossTrain" marks. The court also granted summary judgment for CrossFit on its Chapter 93A claim, but concluded that a trial was necessary for damages purposes to determine whether Mustapha acted willfully.

CrossFit moved for attorney fees and costs for the two law firms and eighteen attorneys that litigated the case. Mustapha noted that the request was more than 50 times the $10,000 statutory damages award under the Lanham Act.

Fees and costs for non-Chapter 93A claims are recoverable where those claims and the Chapter 93A claims arise from a single chain of events. Awards are based the nature of the case and the issues presented, the time and labor required, the amount of damages involved, the result obtained, the experience, reputation, and ability of the attorney, the usual price charged for similar services, and the amount of awards in similar cases.

CrossFit’s fee request was reduced by 55 percent to $229,881.08 and was awarded $24,016.45 in costs by the court. Mustapha filed numerous substantive motions, some of which were frivolous, forcing CrossFit to expend considerable time and resources. CrossFit’s attorneys had the experience, reputation, and ability to support a relatively high billing rate. However, CrossFIt received very limited monetary damages, and, as court noted, the case was (or should have been) a relatively simple case against a pro se defendant. Also, it was nearly impossible to distinguish time expended on meritorious claims as opposed to unmeritorious claims. CrossFit’s request was reduced by 25 percent for work related to claims without merit or that were not pursued; 20 percent based on the inefficiencies caused by the change of law firms, the use of multiple attorneys, and other apparent inefficiencies; and 10 percent based on the relative simplicity of the case and the limited recovery.

The case is No. 13-11498-FDS.

Attorneys: Laura Greenberg-Chao (Henshon Klein LLP) and Zachary C. Kleinsasser (Greenberg Traurig, LLP) for Crossfit, Inc. Donny Mustapha d/b/a Chelmsford Sports Club, pro se.

Companies: Crossfit, Inc.; Chelmsford Sports Club

Cases: Trademark MassachusettsNews