## Facts

- K & N Engineering, Inc. (K&N) owns federally registered trademarks in its stylized “K&N” logo used on aftermarket automotive products and promotional decals.
- Sarah Bulat and Steven Dale Wandel sold unauthorized vinyl decals bearing the K&N logo on eBay.
- Defendants sold 89 sets of decals (two decals per set) for a total of $267.
- K&N sued under the Lanham Act for trademark infringement, counterfeiting, and dilution, plus related state-law claims.
- K&N elected statutory damages for counterfeiting under 15 U.S.C. § 1117(c) rather than proving actual damages or profits under § 1117(a).

## Issues

1. Whether a plaintiff’s election of statutory damages for trademark counterfeiting under 15 U.S.C. § 1117(c) precludes an award of attorney’s fees under 15 U.S.C. § 1117(b) in the same action.

## Decision

- The Ninth Circuit affirmed the district court’s attorney’s fee award.
- The court held that statutory damages under § 1117(c) do not preclude attorney’s fees under § 1117(b).
- The court concluded the district court correctly interpreted § 1117 and did not abuse its discretion in awarding $100,000 in fees in addition to $20,000 in statutory damages.
- Defendants did not establish “extenuating circumstances” that would permit denial of fees under § 1117(b).

## Legal Principles

- In willful trademark-counterfeiting cases, 15 U.S.C. § 1117(b) requires an award of reasonable attorney’s fees and costs absent extenuating circumstances.
- 15 U.S.C. § 1117(c) provides an alternative measure of damages (statutory damages) in counterfeiting cases and does not eliminate other remedies authorized by § 1117(b).
- Statutory interpretation of § 1117 requires harmonizing subsections so each provision retains effect; § 1117(c) addresses damages measurement, not fee-shifting.
- Appellate review of statutory interpretation is de novo; review of the fee award is for abuse of discretion.

## Conclusion

Election of statutory damages for trademark counterfeiting under 15 U.S.C. § 1117(c) does not bar attorney’s fees under § 1117(b); when § 1117(b) applies and no extenuating circumstances exist, fees may be awarded in addition to statutory damages.


K & N Eng’g, Inc. v. Bulat, 510 F.3d 1079 (9th Cir. 2007)