The Ninth Circuit Court of Appeals affirmed a Nevada District Court decision awarding Lerner $124,375 in attorney’s fees for the willful infringement of Lerner’s “ONE CALL. THAT’S ALL” slogan as well as infringement of Lerner’s copyrights. See Invision Production & Media Services, Inc. v. Glen J. Lerner Legal Services, No. 07-15778 (9th Cir. March 24, 2009) (unpublished).
While the Ninth Circuit previously affirmed the fees under copyright law, the Ninth Circuit remanded the case back to the district court for additional explanation by the court of the fees awarded under trademark law as well as a breakdown of what fees were for copyright infringement and what were for trademark infringement. The district court, on remand, was much more specific about its conclusion that the case was “exceptional” for purposes of award attorneys fees under the Lanham Act (15 U.S.C. 1117(a)). The district court also allocated 60 percent of the fees to the trademark issues and 40 percent to the copyright issue.
Those attorneys fees should come in handy in Lerner’s other trademark battle over his other well-known slogan “HEAVY HITTER” (previously blogged here). One interesting parallel between Lerner’s battle with Invision over “ONE CALL. THAT’S ALL” and his battle with Richard Sackett and LawCo USA, PLLC over “HEAVY HITTER” is the “naked license” argument. Invision had tried to argue that Lerner’s use of the “ONE CALL-THAT’S ALL” mark pursuant to a license agreement with the prior owner of the mark (before it was assigned to Invision) inured to Invision’s benefit – an argument that Invision lost because Invision could not show that it exerted any control over the quality of services provided under the mark – a prerequisite for a licensee’s use of a mark to inure to the licensor’s benefit. See Bancamerica Int’l USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 595 (9th Cir. 2002). In Lerner’s lawsuit against Sackett and LawCo, Lerner also argued that the license agreement he had with the owner of the “Heavy Hitters” mark was a naked license because the licensor failed to exercise any control over the quality of Lerner’s legal services.