use of its mark. Id. In addition, this court noted that the plaintiff had failed to respond to
discovery requests, had failed to respond to defendant’s statement of material facts filed in
support of defendants’ summary judgment motion, and had failed to address defendants’
affirmative defenses in plaintiff's cross-motion for summary judgment. Id.

In this case, although World Impressions’ decision to pursue its claims ultimately may
have been unrealistic, the court does not find its prosecution of its claims to be as egregious as

that of the plaintiff in S Industries, Inc. Nor does the court conclude that World Impressions’

conduct in this litigation created such a burden on defendants to defend against its claims as to
fairly be described as “oppressive.” To be sure, some of World Impressions’ counsel’s efforts,
especially at the summary judgment stage, were inexcusably sloppy, and undoubtedly resulted in

defendants incurring additional costs. However, the court did not observe a lack of cooperation

in the discovery stage here to the degree that occurred in S Industries, Inc. Moreover, Disney’s
conduct in this case was not entirely blameless, as noted in this court’s September 26, 2002 order
addressing Disney’s act of filing an amended answer that exceeded its leave to do so. In
addition, resolution of the parties’ motions for summary judgment was delayed when defendants
filed an excessively long summary judgment brief.

The court concludes that Disney has not shown that World Impressions’ case so lacked
merit and was so burdensome to defend against, that it could fairly be described as oppressive.
Accordingly, the court denies Disney’s motion for attorneys’ fees incurred in defending against
World Impressions’ claims.

ORDERED: Disney’s motion for attorneys’ fees [115-1] is granted in part and denied in

part. The parties are ordered to confer and attempt in good faith to agree on the amount of


defendant on World Impressions’ claims that defendants infringed World Impressions’
“CALIFORNIA ADVENTURE” mark, when Disney named a new theme park “Disney’s
California Adventure,” and McDonald’s advertised the theme park in its restaurants. Where a
defendant is the prevailing party, it must show that the case so lacked merit and was so
burdensome to defend against, that it could fairly be described as oppressive. Door Sys., Inc.,
126 F.3d at 1032. A prevailing defendant need not show that the plaintiff filed suit in bad faith.
Id.

Disney argues that World Impressions should have known early in the case that its claims
lacked merit, as evidenced by World Impressions’ failure to adequately refute that its mark was
merely descriptive, its failure to present evidence that its mark had acquired secondary meaning,
and its failure to show that its mark was famous. In addition, Disney argues that World
Impressions and its counsel needlessly increased the costs of litigation, making the case unfairly
burdensome to defend against, by filing certain groundless motions and failing to comply with
local rules in responding to Disney’s summary judgment motion.

Disney likens World Impressions’ conduct in this case to the plaintiff's conduct in S

Indus., Inc. v. Centra 2000, Inc., No. 96 C 3524, 1998 WL 395161 (N.D. Hl. July 9, 1998), aff'd,
249 F.3d 625 (7"" Cir. 2001). In that case, this court awarded attorneys’ fees to the prevailing
defendant, based on findings that the plaintiff should have known at the outset of the litigation
that its claim lacked merit, and that the plaintiff had needlessly increased the cost and
burdensome nature of its suit. Id. at * 2. Specifically, this court noted that the plaintiff had
pleaded a violation of Section 32 of the Lanham Act, which provides a remedy against the

infringement of a registered mark, when the plaintiff had never obtained a federal registration for



attorneys’ fees and expenses which Disney reasonably incurred in prosecuting its counterclaims
under the Lanham Act. If the reasonableness of any of Disney’s fees or expenses remains in
dispute after a good faith attempt has been made by the parties to agree on such fees or expenses,

the parties shall file a joint statement of agreed and contested matters as defined in Local Rule

54.3 no later than 60 days after entry of this order.

ENTER:

GeorghW . Lindberg
Senior United States District Judge

APR 21 2003

DATED:



Mifule Order Farm 96/97)

United States District Court, Northern District of Illinois

Name of Assigned Jud; i Sitting Judge if Ott
vor Magistrate Judge George W. Lindberg ‘than Asigned Judge
CASE NUMBER 01 C 9797 DATE 4/21/2003
CASE World Impressions, Inc. vs. McDonald’s Corporation, et al.
TITLE

[ln the following box (a) indicate the party filing the motion, ¢.g., plaintiff, defendant, 3rd party plaintiff, and (b) state briefly the nature

of the motion being presented.)

(e83)

MOTION:

DOCKET ENTRY:

qd) oO Filed motion of [ use listing in “Motion” box above.]

(2) a Brief in support of motiondue_

(3) oO Answer brief to motion due___. Reply to answer brief due.

(4) o Ruling/Hearingon__—_s set for__—_at

(5) im Status hearing[held/continued to] [set for/re-set for] ons set for at

(6) a Pretrial conference[held/continued to] [set for/re-set for]on__setfor__—at__

(7) im Trial[set for/re-set for] on__at

(8) Oo (Bench/Jury trial] [Hearing] held/continued toa

(9) oO This case is dismissed [with/without] prejudice and without costs[by/agreement/pursuant to]
OOFRCP4(m) CiLocal Rule 41.1 CIFRCP41(a)(1) [FRCP41(a)(2).

ao of [Other docket entry] | Disney’s motion for attorneys’ fees (115-1) is granted in part and denied in

part. Enter memorandum opinion and order.

i [For further detail see order attached to the original minute order.]

No notices required, advised in open court.

No notices required. number of notices _~

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Notified counsel by telephone.

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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION
WORLD IMPRESSIONS, INC., )
)
Plaintiff, >)
) 01 C 9797
Vv. ) (Consolidated with 02 C 1318)
)
McDONALD’S CORPORATION and ) Judge George W. Lindberg
DISNEY ENTERPRISES, INC., )
)
Defendants. )

MEMORANDUM OPINION AND ORDER

On December 5, 2002, this court entered summary judgment in favor of defendants
Disney Enterprises, Inc. (“Disney”) and McDonald’s Corporation (“McDonald’s) on plaintiff
World Impressions, Inc.’s (“World Impressions”) claims that defendants had violated the
Lanham Act by infringing World Impressions’ “CALIFORNIA ADVENTURE” mark. This
court also entered summary judgment in Disney’s favor on its counterclaims that World
Impressions had violated the Lanham Act by infringing Disney’s “DISNEYLAND” and
“CASTLE DESIGN” marks. Disney now moves for attorneys’ fees under the attorney fee
provision of the Lanham Act, 15 U.S.C. § 1117(a).!

The Lanham Act provides that the court “in exceptional cases may award reasonable
attorney fees to the prevailing party.” 15 U.S.C. § 1117(a). The standard the court must use to
determine whether a case is “exceptional,” and thus justifies an award of fees, differs according

to whether the plaintiff or the defendant is the prevailing party. See Door Sys., Inc, v. Pro-Line

' Disney states that it has borne the McDonald’s Corporation’s attormeys’ fees in this
action, as well as its own, and therefore only Disney brings this motion.

i


Door Sys., Inc., 126 F.3d 1028, 1031-32 (7" Cir. 1997). In the present case, Disney was both,
since it prevailed in defending against World Impressions’ claims, as well as prevailing in the
prosecution of its own counterclaims.

The court first examines Disney’s request for attorneys’ fees made as the prevailing
counter-plaintiff on its counterclaims. When the plaintiff is the prevailing party, the standard is
whether the defendant’s infringement of the plaintiff's mark was “malicious, fraudulent,
deliberate or willful.” Door Sys., Inc., 126 F.3d at 1031; BASF Coxp. v. Old World Trading Co.,
41 F.3d 1081, 1099 (7" Cir. 1994). Under this formulation, “deliberate” does not equal “in bad
faith”; attorneys’ fees may be awarded to a prevailing plaintiff when an infringer acts deliberately
but in good faith. Door Sys., Inc., 126 F.3d at 1031.

As this court noted in its ruling on the parties’ summary judgment motions, World
impressions created a map that showed the locations of various tourist attractions in California.
World Impressions sold advertising by many of the attractions that appeared on its tourist maps,
and the maps themselves were advertising for the attractions. World Impressions used a stylized
form of the word “Disneyland” and a distinctive castle design that were highly similar to
Disney’s marks as attention-getting symbols on its tourist maps. Although World Impressions’
policy was not to use logos of any attraction without first obtaining the attraction’s authorization,
it did not obtain Disney’s authorization to use Disney’s marks. The court concluded that World
Impressions intended to make it appear that Disney had sponsored its maps. Since World
Impressions’ infringement of Disney’s marks was deliberate, Disney is entitled to an award of
attorneys’ fees incurred in prosecuting its counterclaims against World Impressions.

The court next examines whether Disney is entitled to attorneys’ fees as a prevailing