Trademark infringement is serious and can result in a whole host of benefits for the plaintiff. According to AEI Law, as a plaintiff, “you may be entitled to remedies such as monetary relief, disgorgement of the infringer’s profits, your actual damages, interest or even punitive damages and attorney’s fees in some instances.”
But that wasn’t the case in the trademark battle between two Florida Universities recently. The defense prevailed.
A years-long legal fight between Florida International University and Florida National University ended on June 17, 2019, with FNU as the victor. FIU is a state school with thousands upon thousands of students, whereas FNU is considerably smaller.
Legal Fees Don’t Add Up According to FIU
The U.S. District Court recommended that FNU receive approximately $1.2 million in legal fees from FIU, although FNU had requested in excess of $1.6 million. Prior to this recent ruling, a federal appeals court had rejected a trademark infringement lawsuit filed by FIU against FNU in 2016.
As far as legal fees, FIU argued that FNU was entitled to much less — only about $700,000.
A team of six lawyers and one legal assistant worked on the FNU defense, with Peretz, Chesal & Herrmann partners. Peretz, Chesal and associate Moish Peltz worked the most on the case.
Hourly partner rates charged for the district court case totaled as much as $480 and associate rates were as much as $262. In the appellate case, partner rates totaled as much as $650, with associate rates topping $251. The legal assistant fees were $125.
Peretz and his team did seek to recover more than what they billed FNU — a strategy that failed. Their justification for the higher billing rate was because they discounted their usual rate. For example, Peretz’s top hourly billing rate of $480 is usually billed at $525.
But FIU contended that FNU was “requesting compensation for top-of-the-line lawyering, when the case did not require top-of-the-line lawyers.” The U.S. District Court ruled that FIU was misunderstanding case law.
The court ended up approving an award for the total amount FNU paid in legal fees, not the total amount that was requested, however, “Although the court finds that there is insufficient support in the case law to award FNU more than it actually paid in fees, there is no support in the facts or the case law to decrease the award,” U.S. Magistrate Judge Jacqueline Becerra wrote, who made the recommendation to U.S. District Judge Kathleen M. Williams, who adjudicated the dispute between FNU and FIU.
Trademark Infringement Lawsuit Details
Regarding the trademark infringement lawsuit, FIU filed suit against the smaller university in 2013 following a name change by the latter. In 2012, FNU changed its name from Florida National College to Florida National University due to growth and beneficial adjustments to its curriculum.
The complaint filed by FIU against FNU, according to court records, included six counts, which claimed the following:
- Federal trademark infringement
- Trademark dilution and injury to business reputation
- Federal unfair competition
- State trademark infringement
- Trademark infringement and unfair competition in violation of Florida common law
- Florida trademark registration cancellation
The appeals court panel upheld the court’s decision due to 12 other Florida schools using the words “Florida” and “University” in their names, such as University of Florida, Florida Atlantic University, Florida Memorial University and Florida Gulf Coast University. In addition, the court noted that the definitions of “international” and “national” differ.
Judge Stanley Marcus stated in his appeals-court ruling, “Moreover, in a crowded field of similar acronyms, the district court reasonably found that the addition of one more school identifying itself with an acronym containing the letters F and U would not materially add to the confusion.”
“This is especially true in a field like post-secondary education, where the primary consumers —potential students [and likely their parents too] — generally spend a substantial amount of time and energy learning about their options before choosing a school and are, therefore, unlikely to be confused by similar names.”
Some legal experts believe the fault lies with Florida International University for choosing a name that is indistinctive. “This is FIU’s own fault,” Miami patent and trademark attorney Mark Terry told the Florida Record in 2016. “They should have come up with something more unique.”
Trademark infringement case decisions depend heavily on the level of confusion the so-called infringing mark causes or the likelihood of such confusion, according to Terry.
Both sides are legally able to file an appeal for two-weeks following the June 17th decision.
