United States District Court, W.D. Washington, Seattle
GLENN P. FISCHEL, d/b/a OLYMPIC CHIROPRACTIC, Plaintiff,
FOX CHIROPRACTIC, P.S., and DARCY K. FOX, Defendants.
ORDER GRANTING PLAINTIFF'S MOTION FOR VOLUNTARY
RICARDO S. MARTINEZ, CHIEF UNITED STATES DISTRICT JUDGE
matter comes before the Court on Plaintiff Glenn P. Fischel,
d/b/a Olympic Chiropractic (“Dr. Fischel”)'s
Motion for Voluntary Dismissal. Dkt. #12. The parties agree
that the relief requested in this Motion, voluntary
dismissal, should be granted. However, Defendants argue that
dismissal should be with prejudice, and that it should be
conditioned on an award of attorney's fees. See
Fischel registered a logo of a “human spine, morphing
into a person celebrating” with the U.S. Patent and
Trademark Office on December 25, 2012, after having used it
for many years in connection with his chiropractic clinic.
Dkt. #13 (“Fischel Decl.”) at ¶ 2-3 and Ex.
A. In January 2018, Dr. Fischel learned that Defendants were
using a strikingly similar logo in connection with the
chiropractic clinic Fox Chiropractic. In January and February
2018, Dr. Fischel asserts that he repeatedly contacted Dr.
Fox in an effort to avoid the instant lawsuit, but Dr. Fox
did not respond to any of these repeated overtures. See
Id. at ¶¶ 5-8; Exs. B and C.
claim Dr. Fox did not receive the above communications. Dkt.
#16 (“Fox Decl.”) at ¶ 6. However,
Defendants admit they received what they characterize as
threatening emails and harassing phone calls from Dr. Fischel
about this trademark claim. Id. at ¶ 7. The
parties communicated at least once prior to this suit. On
February 5, 2018, Dr. Fox told Dr. Fischel in a phone call
that she had been using the trademark since 1989.
February 19, 2018, this suit was filed. Dkt. #1. On March 6,
2018, Defendants filed an answer asserting counterclaims and
alleging prior use of the logo. Dkt. #7. This answer
characterizes Dr. Fischel's prior attempts at
communication with Defendants as “harassment.”
Id. at 3.
about March 12, 2018, Dr. Fischel's attorney called Dr.
Fox's attorney. Among other things, he asked for evidence
to support Dr. Fox's claim of prior use of her logo.
Counsel stated that Dr. Fischel would likely not want to
pursue his claims if Dr. Fox had support for her alleged
prior use. Dkt. #14 (“Atkins Decl.”) at ¶ 3.
On March 21, 2018, Dr. Fox provided the requested evidence.
Id. at ¶ 4. On March 22, Dr. Fischel responded
by offering to voluntarily dismiss his claims. Id.
at ¶ 5.
action may be dismissed at the plaintiff's request by
court order “on terms that the court considers
proper.” Fed.R.Civ.P. 41(a)(2). If a defendant has
pleaded a counterclaim before being served with the
plaintiff's motion to dismiss, the action may be
dismissed over the defendant's objection only if the
counterclaim can remain pending for independent
adjudication.” Id. Unless the order states
otherwise, a dismissal under the above rule is without
prejudice. Id. “A district court should grant
a motion for voluntary dismissal under Rule 41(a)(2) unless a
defendant can show that it will suffer some plain legal
prejudice as a result.” Smith v. Lenches, 263
F.3d 972, 975 (9th Cir. 2001).
are often awarded as a condition of dismissal without
prejudice. “In determining whether to award costs ...
to [a] defendant [ ] after a voluntary dismissal without
prejudice, courts generally consider the following factors:
(1) any excessive and duplicative expense of a second
litigation; (2) the effort and expenses incurred by a
defendant in preparing for trial; (3) the extent to which the
litigation has progressed; and (4) the plaintiff's
diligence in moving to dismiss.” Williams v.
Peralta Cmty. Coll. Dist., 227 F.R.D. 538, 540 (N.D.
Cal. April 28, 2005) (quoting 8 James Wm. Moore et al.,
Moore's Federal Practice § 41.40[d][i] (3d ed.
1999)). “Courts have also considered whether
attorneys' fees and costs would be available to the
defendants had they prevailed at trial and the effect that
awards of fees and costs would have in discouraging good
faith voluntary dismissals.” Atigeo LLC v. Offshore
Ltd. D, 2014 WL 3846087, at *4 (W.D. Wash. Aug. 5,
argue that they will suffer prejudice if this case is not
dismissed with prejudice because Defendants will continue to
face the threat of further prosecution. Dkt. #15 at 5-6. Both
parties go through the above factors, spending significant
time on the question of whether attorney fees would have been
obtainable had this action progressed to resolution.
Plaintiff argues that Defendants “do not cite a single
case… justify[ing] conditioning the voluntary
dismissal of a newly-filed case on the award of the
defendant's attorney's fees, ” and that
Defendants “wishful thinking notwithstanding, ”
none of their arguments makes this case
“exceptional” under 15 U.S.C. § 1117(a).
Dkt. #19 at 6.
only cited basis for eventually obtaining attorney fees in
this case is 15 U.S.C. § 1117(a). This case does not
appear to the Court to qualify as “exceptional”
under that statute, even if Defendants arguments demonstrate
a likelihood that Plaintiff would not succeed on the merits.
More importantly, the Court finds that Defendants have failed
to convince the Court that fees are justified in this case
under the above Williams factors. Dr. Fischel
communicated with Defendants prior to filing suit in an
attempt to avoid litigation, Defendants claim they did not
receive those communications or that they were harassing. The
Court concludes that such communications demonstrate
reasonable diligence. Dr. Fischel was mistaken in the
validity of his copyright claims, and when he became aware of
that fact, he filed this Motion immediately. This again
demonstrates reasonable diligence. This case has not
proceeded far. Defendants were not overly prejudiced by any
of this, and are free to pursue their counterclaims or use
the legal work done so far in future litigation between these
parties. Given all of the above, fees are not warranted.
Fischel does not directly address Defendants' request for
dismissal with prejudice. While it would appear that the
parties agree Dr. Fischel cannot succeed on these claims, the
Court declines to dismiss Plaintiff's claims with
prejudice because no party has actually moved for that
relief, because voluntary dismissal is by default granted
without prejudice, because Defendants may still pursue their
counterclaims, and because the Court is not convinced that
such dismissal is “proper” under Rule 41(a)(2)
given the particular facts of this case. The mere risk of a
second litigation is present in every case that is
voluntarily dismissed without prejudice.
all of the above, and having reviewed the relevant briefing,
the declarations and exhibits attached thereto, and the
remainder of the record, the Court hereby finds and ORDERS
that Plaintiff Fischel's Motion for Voluntary Dismissal,
Dkt. #12, is GRANTED. Plaintiff's claims ...