Two weeks after a jury found in favor of Pennsylvania State University on its trademark infringement claims against Vintage Brand, the school is looking to recoup the attorney’s fees it expended on the case. The tab is likely quite high considering the duration and complexity of the litigation but, in a twist, those same factors could make it less likely a US judge will grant the request.
Pennsylvania State University moved today for attorney’s fees in a protracted trademark battle with apparel maker Vintage Brand and its chief executive, Chad Hartvigson.Under Section 1117 of the Lanham Act, the school must now show it was the prevailing party in an “exceptional” case. That standard is satisfied by the defendants “disregard for Penn State’s rights and the judicial process,” the motion states (see here).
The case began with a June 2021 complaint by the school over hoodies, hats and other apparel sold by Vintage Brand and manufactured by Sportswear Inc. that made unauthorized use of various word marks and logos including “PENN STATE,” “THE PENNSYLVANIA STATE UNIVERSITY” and the “University Seal,” among others.
Vintage Brand are no strangers to claims their business model runs afoul of federal trademark laws, having settled similar litigation initiated by the University of Illinois and Purdue University.
However, when it came to Penn State, the defendants dug in — with varying degrees of success.
In a 109-page summary judgment issued in February 2024, US Judge Matthew Brann of the Middle District of Pennsylvania sided with Vintage Brand on several important issues, rejecting Penn State’s claims of trademark dilution, counterfeiting and false advertising. The same order also granted a defense request to exclude portions of a Hartvigson supplemental declaration.
That paved the way for a six-day jury trial in November on trademark infringement where the defendants scored another big, albeit temporary, win.
At the close of Penn State’s case, Brann granted judgment as a matter of law in favor that the school showed no direct liability by Sportswear. The school promptly moved for reconsideration, which Brann granted, reinstating Sportswear as a defendant in time for the jury to begin their deliberations on Nov. 19 (see here).
By the time a verdict was rendered later the same day, from the inception of the case, the parties filed over one dozen original and amended pleadings and counterclaims, along with three motions-to-dismiss, dueling motions for summary judgment, 10 motions in limine and multiple motions for reconsideration, all of which were fully briefed.
Those filings yielded numerous rulings from Brann on everything from aesthetic functionality to the use of trademarks in a public domain work, rulings that prompted briefing from numerous amici curiae, in addition to Brann’s mixed rulings on summary judgment.
What the filings did not yield, however, was a sizable damage award — certainly not one commensurate with the work Penn State presumably put into the case. The jury awarded the plaintiff just $28,000 in compensatory damages for willful infringement by Vintage and Hartvigson and cleared Sportswear of allegations it infringed “THE PENNSYLVANIA STATE UNIVERSITY” mark.
It makes sense, then. that a motion for fees under Section 1117 would be forthcoming from the school and that that request would stress the “flexible” approach endorsed by the US Supreme Court in Octane Fitness, LLC v. ICON Health & Fitness.
Per Octane, there is no “specific evidentiary burden” on the prevailing party in proving a case was “exceptional.” Instead, an exceptional case is simply one which “stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.”
On that score, Penn State — as evidenced by Brann’s rulings, and the defendants pre-trial and mid-trial wins — has work to do.
But the Supreme Court didn't stop there, and Penn State makes a compelling case for why an underwhelming jury award doesn't tell the whole story. Octane further counsels that lower courts should take “considerations of compensation and deterrence” into account when assessing exceptionality.
That message features heavily in the school’s Section 1117 motion.
“From Mr. Hartvigson’s bad-faith selection and use of Penn State’s trademarks for Defendants’ products to Defendants’ alteration and attempted concealment of evidence during discovery and leading up to trial, Defendants’ bad faith is plain and justifies a finding that this case is exceptional,” Penn State argues.
A footnote then lists the lawsuits, some still pending, that name Hartvigson and Vintage Brand as trademark infringement defendants while, later, the school points out that despite their legal clash infringing Penn State merchandise “remains available on the Vintage Brand website.”
Leaving little doubt as to which considerations the school is appealing to, Penn State concludes its motion by calling the defendants “serial infringers who spent years profiting off of the hard earned reputations of educational institutions of all sizes.”
"Defendants’ willful infringement, particularly when paired with their bad faith selection and adoption of Penn State’s trademarks for use on the infringing products and their unreasonable litigation conduct, justifies a finding that this case is exceptional under the Lanham Act," the school adds.
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