IN THE UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

No. 14-11157

CLARK BAKER; OFFICE OF MEDICAL AND SCIENTIFIC JUSTICE, 

INCORPORATED, 

 Plaintiffs - Appellees

v.

JEFFREY TODD DESHONG, 

 Defendant - Appellant

Appeals from the United States District Court

for the Northern District of Texas

Before STEWART, Chief Judge, and JONES, and DENNIS, Circuit Judges.

CARL E. STEWART, Chief Judge:

Plaintiffs-Appellees Clark Baker and the Office of Medical and Scientific 

Justice, Inc. (the “OMSJ”) brought this action against Defendant-Appellant 

Jeffery Todd DeShong alleging, inter alia, trademark infringement in violation 

of the Lanham Act, 15 U.S.C. § 1051 et seq., and the Texas Business and 

Commerce Code. The district court dismissed the Lanham Act claim, declined 

to exercise pendent jurisdiction over the state law claims, and denied 

DeShong’s subsequent request for an award of attorney’s fees stemming from 

Baker and the OMSJ’s allegedly frivolous trademark claims. DeShong appeals 

the district court’s denial of attorney’s fees under the Lanham Act. In light of 

United States Court of Appeals

Fifth Circuit

FILED

May 3, 2016

Lyle W. Cayce

Clerk

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recent Supreme Court precedent illuminating the standard for “exceptional” 

cases which warrant the award of attorney’s fees, we REVERSE and 

REMAND.

I.

Clark Baker is a retired officer of the Los Angeles Police Department and 

a licensed private investigator. Relevant to this suit is his role as Chief 

Executive Officer of the OMSJ, a non-profit corporation which investigates 

medical and scientific corruption cases. In 2010, the OMSJ launched the 

website www.omsj.org to promote numerous medical, legal and investigative 

services for individuals involved in criminal or civil suits. One such service is 

the OMSJ’s “HIV Innocence Group,” a non-profit organization that facilitates 

the representation of individuals accused of the intentional or reckless 

infection of another person with HIV.

In 2011, DeShong launched two websites of his own: 

www.hivinnocencegrouptruth.com and www.hivinnocenceprojecttruth.com. 

According to DeShong, each was created in order to deconstruct the OMSJ’s 

alleged misrepresentation of the effects of HIV and AIDS and allegedly false 

research that the OMSJ promulgated on its “HIV Innocence Group” webpage. 

As DeShong’s website names clearly indicate, the use of the phrases “HIV 

Innocence Group Truth” and “HIV Innocence Project Truth” are similar to the 

“HIV Innocence Group” website published by the OMSJ.

II.

Baker and the OMSJ filed the underlying action against DeShong in the 

District Court of the Northern District of Texas, Fort Worth Division. The 

complaint, as amended, asserted four claims against DeShong: (1) trademark 

infringement under the Lanham Act; (2) trademark infringement under the 

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Texas Business and Commerce Code; (3) defamation; and (4) business 

disparagement.

The district court dismissed the Lanham Act claims, concluding that 

even taking Baker’s allegations as true, he failed to raise an inference that a 

reasonable person could confuse the content of DeShong’s website with the 

OMSJ’s “HIV Innocence Group” trademark. Weighing statutory and common 

law factors, the district court declined to exercise jurisdiction over Baker’s 

remaining state law claims. 

DeShong moved for attorney’s fees under § 1117(a) of the Lanham Act in 

the amount of $49,706.86, which the court denied. Relying on current Fifth 

Circuit precedent, the district court determined that DeShong failed to show 

that this suit was an example of an “exceptional” case which warranted the 

award of attorney’s fees. The court concluded that DeShong had not shown by 

clear and convincing evidence that Baker and the OMSJ pursued this suit in 

bad faith. DeShong timely appeals.

On appeal, DeShong argues that this court should (1) adopt the Supreme 

Court’s standard in Octane Fitness, LLC v. Icon Health and Fitness, Inc., 134 

S. Ct. 1749 (2014), which expanded the standard under which a lawsuit 

presents an “exceptional case” meriting the award of attorney fees; and (2) 

conclude that the OMSJ’s groundless trademark claim is sufficient to deem 

this case exceptional. 

III.

We first address whether the district court erred in its interpretation of 

15 U.S.C. § 1117(a) in denying DeShong’s motion for attorney’s fees under the 

Lanham Act. Our analysis begins with the text of § 1117(a): “The court in 

exceptional cases may award reasonable attorney fees to the prevailing party.” 

In Scott Fetzer Co. v. House of Vacuums, we held that a case is “exceptional” if 

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brought in bad faith. 381 F.3d 477, 490 (5th Cir. 2004); see also Robin Sing 

Educ. Servs. Inc. v. Excel Test. Prep., 291 F. App’x 620, 621 (5th Cir. 2008). 

“[T]he prevailing party must demonstrate the exceptional nature of the case 

by clear and convincing evidence . . . .” CJC Holdings, Inc. v. Wright & Lato, 

Inc., 979 F.2d 60, 65 (5th Cir. 1992).

DeShong urges this court to adopt the Supreme Court’s holding in 

Octane Fitness, which analyzed when a district court may award fees under

the “exceptional” case standard as established under the Patent Act. See 35 

U.S.C. § 285; Octane Fitness, 134 S. Ct. at 1756. The Octane Fitness Court 

unanimously decided that the word “exceptional” does not limit the award of 

attorney’s fees in a patent lawsuit to cases in which a party’s bad faith conduct 

is shown by clear and convincing evidence. Octane Fitness, 134 S. Ct. at 1756. 

We adopt the Supreme Court’s construction of “exceptional” according to its 

ordinary meaning: 

[W]hen Congress used the word in § 285 (and today, for that 

matter), “[e]xceptional” meant “uncommon,” “rare,” or “not 

ordinary.” Webster’s New International Dictionary 889 (2d ed. 

1934); see also 3 Oxford English Dictionary 374 (1933) (defining 

“exceptional” as “out of the ordinary course,” “unusual,” or 

“special”); Merriam–Webster’s Collegiate Dictionary 435 (11th ed. 

2008) (defining “exceptional” as “rare”); Noxell Corp. v. Firehouse 

No. 1 Bar–B–Que Restaurant, 771 F.2d 521, 526 (C.A.D.C.1985) 

(R.B. Ginsburg, J., joined by Scalia, J.) (interpreting the term 

“exceptional” in the Lanham Act’s identical fee-shifting provision, 

15 U.S.C. § 1117(a), to mean “uncommon” or “not run-of-the-mill”).

Id.

Prior to Octane Fitness, the Federal Circuit held that patent litigants 

may only recover attorney’s fees under § 285 with proof by clear and convincing 

evidence of either (1) litigation-related misconduct of an independently 

sanctionable magnitude or (2) a suit brought in subjective bad faith that is 

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objectively baseless. Id. at 1754 (citing Brooks Furniture Mfg., Inc. v. Dutailier 

Int’l, Inc., 393 F.3d 1378, 1381 (Fed. Cir. 2005)). Finding this framework 

inconsistent with the text of § 285, the Court embraced an expansive reading 

of the word “exceptional,” explaining that the current standard articulated by 

the Federal Circuit was an inflexible framework superimposed onto statutory

text that is inherently flexible. Id. at 1754, 1756 (“[T]he Federal Circuit 

abandoned that holistic, equitable approach in favor of a more rigid and 

mechanical formulation.”). In fact, the Court turned to the D.C. Circuit’s 

reading of the Lanham Act, where it held that “it [is] fair to assume that 

Congress did not intend rigidly to limit recovery of fees by a [Lanham Act] 

defendant to the rare case in which a court finds that the plaintiff ‘acted in bad 

faith, vexatiously, wantonly, or for oppressive reasons’ . . . . Something less 

than ‘bad faith’ suffices to mark a case as ‘exceptional.’” Octane Fitness, 134 S. 

Ct. at 1757 (alteration in original) (quoting Noxell, 771 F.2d, at 526). The Court 

defined an “exceptional” case under § 285 as any case 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.” Id. at 1756. For 

example, in Fogerty, the court explained that in determining whether to award 

fees under a similar provision in the Copyright Act, “district courts could 

consider a ‘nonexclusive’ list of ‘factors,’ including ‘frivolousness, motivation, 

objective unreasonableness (both in the factual and legal components of the 

case) and the need in particular circumstances to advance considerations of 

compensation and deterrence.’” Id. at 1756 n.6 (quoting Fogerty v. Fantasy, 

Inc., 510 U.S. 517, 534 n.19 (1994)).

The Court similarly made clear that such a bad faith requirement would 

render § 285 superfluous: “We have long recognized a common-law exception 

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to the general American rule against fee-shifting—an exception, inherent in 

the power [of] the courts that applies for ‘willful disobedience of a court order 

or when the losing party has acted in bad faith, vexatiously, wantonly, or for 

oppressive reasons.” Id. at 1749 (alteration in original) (quotation marks 

omitted) (quoting Alyeska Pipeline Service Co. v. Wilderness Soc’y, 421 U.S. 

240, 258–259 (1975)). 

Finally, the Court rejected the “clear and convincing” evidentiary hurdle 

established by the Federal Circuit and has yet to construe similar fee-shifting 

statutes as requiring proof of entitlement to fees by clear and convincing 

evidence. See id. at 1758 (“[N]othing in § 285 justifies such a high standard of 

proof. Section 285 demands a simple discretionary inquiry; it imposes no 

specific evidentiary burden, much less a high one.”)

While Octane Fitness directly concerns the scope of a district court’s 

discretion to award fees for an “exceptional” case under § 285 of the Patent Act, 

the case guides our interpretation of § 1117(a) of the Lanham Act and is 

instructive here. See S. Rep. No. 93–1400, at 2 (1974) (highlighting the 

identical language between § 285 and §1117(a), as well as Congress’ reference 

to § 285 in passing §1117(a)).1

 

1 In 1946, Congress amended the Patent Act to add a discretionary fee-shifting 

provision to award attorney’s fees to the prevailing party upon the entry of judgment in any 

patent case. See 35 U.S.C. § 70 (1946 ed.) (recodified as 35 U.S.C. § 285); Act of Aug. 1, 1946, 

Ch. 726 § 1, 60 Stat. 778. Like the Patent Act, the Lanham Act did not authorize the 

awarding of attorney’s fees to the prevailing party in its originally enacted legislation. See 

Act of Feb. 20, 1905, 33 Stat. 724. However, Congress recognized a compelling need for a 

provision allowing for the award of attorney’s fees in the trademark litigation context in 

response to the Supreme Court’s decision in Fleischmann Distilling Corp. v. Maier Brewing 

Co., 386 U.S. 714 (1967). Fleischmann held that attorney’s fees were not available under the 

Lanham Act absent express statutory authority. Id. at 721; see also Fair Wind Sailing, Inc. 

v. Dempster, 764 F.3d 303, 313–14 (3d Cir. 2014). Because such a remedy existed in the 

patent law and copyright law fields, but not yet in trademark law, Congress enacted a similar 

provision under the Lanham Act in 1975. See Act of Jan. 2, 1975, Pub. L. No. 93–600, § 3, 88 

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Like the Patent Act, the Lanham Act’s text establishes a flexible 

standard for whether a case is “exceptional.” The text of § 1117(a), identical to 

§ 285, says in full that “[t]he court in exceptional cases may award reasonable 

attorney fees to the prevailing party.” It creates no rigid standard of culpable 

conduct. See, e.g., B & B Hardware, Inc. v. Hartgis Indus., Inc., 716 F.3d 1020, 

1027 (8th Cir. 2013), rev’d on other grounds, 135 S. Ct. 1293 (2015) (defendant 

can be awarded attorney’s fees when the plaintiffs’ suit meets one of four 

criteria: “groundless, unreasonable, vexatious, or pursued in bad faith”);

Cairns v. Franklin Mint Co., 292 F.3d 1139, 1156 (9th Cir. 2002) (same); see 

also Ji v. Bose Corp., 626 F.3d 116, 129 (1st Cir. 2010) (allowing the awarding 

of attorney’s fees under the Lanham Act when there is “something less than . . 

. bad faith”).

Already in this court’s power is the ability to award attorney’s fees for 

conduct that is done in bad faith. Accordingly, because this long-established 

American common-law rule already provides for an award in such an instance,

“Congress [could not have intended] to permit the award of attorney’s fees to a 

prevailing defendant only in a situation where the plaintiff was motivated by 

bad faith in bringing the action” when it enacted § 1117(a). Christiansburg 

Garment Co. v. Equal Emp’t Opportunity Comm’n, 434 U.S. 412, 417, 419 

(1978).

Finally, the Court has made clear its unwillingness to construe feeshifting provisions such as § 1117(a) as requiring a clear and convincing 

evidence standard. See Octane Fitness, 134 S. Ct. at 1758. Because § 285 and 

§ 1117(a) are clear “statutory equivalents,” we read their nearly identical 

language to reflect the fact that the Court “think[s] it clear that Congress 

 

Stat. 1955 (amending section 35(a) of the Lanham Act). The purpose of the fee-shifting 

provision in the Lanham Act is best understood in light of this legislative history. 

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intended the same language to have the same meaning in both statutes.” See, 

e.g., Commc’ns Workers of Am. v. Beck, 487 U.S. 735, 745–7 (1988). 

In light of the Supreme Court’s clear guidance under § 285—and given 

the parallel purpose, structure, and language of § 1117(a) to § 285—we join our 

sister circuits in their reading of “exceptional” under Octane Fitness and 

construe the same meaning here. See Georgia-Pac. Consumer Prods. LP v. von 

Drehle Corp., 781 F.3d 710 (4th Cir. 2015), as amended (Apr. 15, 2015) (“[T]he 

language of § 1117(a) and § 285 is identical, and we conclude that there is no 

reason not to apply the Octane Fitness standard when considering the award 

of attorneys fees under § 1117(a).”); Fair Wind Sailing, Inc. v. Dempster, 764 

F.3d 303 (3d Cir. 2014) (importing the definition of “exceptionality” into its 

interpretation of § [1117(a)] and holding that the district court should apply 

the Octane Fitness standard when considering the award of attorney’s fees

under this provision).2 See id. at 754 (“[O]nly the most compelling evidence 

could persuade us that Congress intended the nearly identical language of 

these two provisions to have different meaning); Levin v. United States, 133 S. 

Ct. 1224, 1233 (2013) (“[I]t is generally presumed that Congress acts 

intentionally and purposely in the disparate inclusion or exclusion.” (internal 

 

2 Other circuits have taken a similar approach in interpreting the Lanham Act 

using the Octane Fitness framework:

[W]e have “look[ed] to the interpretation of the patent statute for guidance” in 

interpreting § [1117(a)]. Id. Moreover, in its explication of the word 

“exceptional,” the Octane Fitness Court relied in part on the D.C. Circuit’s 

holding [defining] the term “exceptional,” as used in § [1117(a)] of the Lanham 

Act . . . Octane Fitness, 134 S.Ct. at 1756 (quoting Noxell Corp. v. Firehouse No. 

1 Bar–B–Que Rest., 771 F.2d 521, 526 (D.C. Cir.1985)). In so doing, the Octane 

Fitness Court noted that the Lanham Act fee provision is “identical” to § 285 of 

the Patent Act. Id. We believe that the Court was sending a clear message that 

it was defining “exceptional” not just for the fee provision in the Patent Act, 

but for the fee provision in the Lanham Act as well.

Fair Wind Sailing, Inc. v. Dempster, 764 F.3d 303, 315 (3d Cir. 2014).

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quotation marks omitted)). What’s more, it stands to reason that in overruling 

the Federal Circuit’s inflexible statutory interpretation—the same precedent 

upon which this court relied to require bad faith by clear and convincing 

evidence in this circuit3—the Octane Fitness Court has provided clear guidance 

from which we do not stray.

We merge Octane Fitness’s definition of “exceptional” into our 

interpretation of § 1117(a) and construe its meaning as follows: an exceptional 

case is one where (1) in considering both governing law and the facts of the 

case, the case stands out from others with respect to the substantive strength 

of a party’s litigating position; or (2) the unsuccessful party has litigated the 

case in an “unreasonable manner.” See Octane Fitness, 134 S. Ct. at 1756. The 

district court must address this issue “in the case-by-case exercise of their 

discretion, considering the totality of the circumstances.” See id.

DeShong also asks us to decide whether this case merits attorney’s fees 

under § 1117(a) in light of the Octane Fitness standard. We decline to do so 

because the district court has yet to decide this issue in the first instance.

IV.

We therefore REVERSE the district court’s denial of attorney’s fees and 

REMAND for reconsideration of the propriety of awarding fees to DeShong in 

light of the aforementioned standard.

 

3 “[W]e agree with the Federal Circuit that the prevailing party must demonstrate the 

exceptional nature of a case by clear and convincing evidence before a district court should 

decide whether to make the award.” CJC Holdings, Inc., 979 F.2d at 65.

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