Apple Denied Fees After Samsung Trade-Dress Win

     SAN JOSE, Calif. (CN) – The fame and beauty of Apple’s iPhone are not enough to warrant $16 million in attorneys’ fees in the trade-dress case against Samsung, a federal judge ruled Wednesday.
     Apple asserted four trade dresses against Samsung – one registered and three not – when it launched the global smartphone patent war in 2011. A jury ultimately found that six Samsung phones diluted two iPhone trade dresses, but largely agreed with Samsung that its products did little to harm the iPhone’s distinctiveness – or its sales.
     The Cupertino-based Apple lobbied U.S. District Judge Lucy Koh to award their attorneys at Morrison Foerster fees under the Lanham Act, the primary federal trademark law in the United States. The company argued that the stature of the case – and the strength of its win – made the case exceptional, a required finding for such relief.
     Koh noted Wednesday, however, that 9th Circuit rules typically require a jury to find willful infringement or bad faith. Neither concept was defined for the Apple-Samsung jury, she said. And defenses from Quinn Emmanuel – the famousness and functional beauty of the iPhone – bolstered its South Korean client’s belief that the trade dresses were not protectable.
     “Samsung presented several reasonable defenses that cause the court to conclude that this is not an exceptional case warranting an award of attorneys’ fees,” Koh wrote in her 20-page opinion. “The court already held at summary judgment that it was a ‘close question’ whether Apple had presented sufficient evidence for a reasonable jury to find that Apple’s trade dresses had achieved the requisite fame for trade dress protection. On this basis alone, Samsung could have reasonably thought that the elements of the iPhone Samsung copied were not owned by Apple. Samsung also presented evidence demonstrating that Apple’s trade dresses may have utilitarian and aesthetic functionality, two additional reasons why Samsung could have reasonably thought that its actions were not prohibited by the Lanham Act. Finally, the jury concluded that two of Apple’s asserted trade dresses were not protectable and that 11 of the 17 accused Samsung smartphones did not dilute Apple’s protectable trade dresses. The jury verdict thus casts some doubt on Apple’s assertion that the jury found that Samsung engaged in a ‘deliberate strategy of copying every aspect of the iPhone – including the whole look of the iPhone, which is the trade dress – without making any effort to avoid Apple’s protected IP.'”

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