The opinion of the court was delivered by: Baylson, J.
MEMORANDUM RE: REMAND FROM THE THIRD CIRCUIT
In this trademark infringement case, the Court granted a preliminary and then a permanent injunction in favor of Plaintiffs, but declined to award attorneys fees under the "exceptional case" doctrine. See the Court's Memoranda dated April 18, 2007, 511 F. Supp. 2d 482, and August 24, 2007, 2007 WL 2463379, an Order dated May 10, 2007 (Doc. No. 153), and most importantly on this issue, a Memorandum dated January 31, 2008 (Doc. No. 259), 2008 WL 282742. On appeal, the Third Circuit affirmed the injunction and orders, except for one narrow issue, relating to the exceptional case doctrine. 318 Fed. App'x 146 (3d Cir. 2009).
I. Factual and Procedural Background
In the Third Circuit's opinion, Judge Roth concluded that although this Court had considered Defendants' alleged discovery misconduct, "the [district] court failed to explain whether it had considered the other examples of BCBG's chicanery, that Urban Outfitters has identified." Id. at 148.*fn1 At this point, a footnote delineated the following specific suggestions asserted by Plaintiffs as to "BCBG's chicanery," which the Court has slightly rephrased, as follows:
Specifically, Urban Outfitters suggests:
(1) Albert Papouchado lied about (a) not having heard of the Free People mark, (b) BCBG's plans to open freestanding stores to sell True People clothing, and © his promise to not distribute brochures for True People at the February 2007 Magic Show.
(2) Michael Amar lied about the pink True People tag that resembled a Free People tag.
(3) A third witness, Maryann Casale-Tooker, lied about Amar's whereabouts so he couldn't be questioned about the Parallel concept, saying he was in China when he was in fact in the United States.
(4) BCBG withheld the Parallel concept booklet for months and failed to produce numerous other documents responsive to discovery requests.
(5) Plaintiffs raise, as well, a variety of allegations of misconduct on behalf of BCBG's counsel.*fn2 See id. at 148 n. 2.
This Court's prior opinions show consideration of several factors on the exceptional case doctrine: first, Plaintiffs' allegations that Defendants had engaged in litigation misconduct; second, Defendants' actions which the Court found constituted infringement; and third, the fact that Plaintiffs did not seek damages.
The Court, after reexamining the record, will discuss each of these items in turn. Before doing so, it is also important that the Third Circuit noted "in remanding for further consideration of 'exceptional case' fees, we do not suggest a particular outcome must result." Id. at 149 n. 3.*fn3
The Court will not go into discovery misconduct any further. In addition to the Third Circuit's ruling that this Court had adequately considered it, any deeper inquiry into discovery misconduct would require reopening the record, perhaps taking testimony from the individual attorneys and/or paralegals who worked on ...