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Crossfit, Inc. v. Mustapha

United States District Court, D. Massachusetts

June 23, 2016

CROSSFIT, INC., Plaintiff,
v.
DONNY MUSTAPHA, individually and d/b/a CROSSTRAIN SPORTS CLUB, f/k/a CHELMSFORD SPORTS CLUB, Defendant.

          MEMORANDUM AND ORDER ON PLAINTIFF'S MOTION FOR ATTORNEYS' FEES

          F. DENNIS SAYLOR IV, District Judge.

         This is a motion for attorneys' fees, arising out of a protracted trademark infringement action against a pro se defendant. Plaintiff CrossFit, Inc., a fitness-training company, filed suit against defendant Donny Mustapha, who runs the CrossTrain Sports Club in North Chelmsford, Massachusetts.[1] The complaint asserted four claims: (1) trademark infringement under the Lanham Act; (2) false designation of origin under the Lanham Act; (3) trademark dilution under the Lanham Act; and (4) violation of Mass. Gen. Laws ch. 93A.

         In September 2013, the Court entered a preliminary injunction enjoining Mustapha from using the "CrossFit" mark and any substantially similar variation.[2] In July and August 2014, both parties moved for summary judgment. CrossFit moved for summary judgment on its trademark infringement claim, contending that Mustapha's use of the marks "CrossFit, " "CrossBox, " "CrossKick, " and "CrossTrain" infringed on its trademark as a matter of law. It also moved for summary judgment on its Chapter 93A claim. Mustapha moved for summary judgment solely on the ground that CrossFit's claims were barred by the doctrine of unclean hands.

         The Court denied Mustapha's motion for summary judgment. It granted CrossFit's motion for summary judgment as to its infringement claim for Mustapha's use of the "CrossFit" mark. However, the Court, denied CrossFit's motion as to its infringement claims for the "CrossBox", "CrossKick", and "CrossTrain" marks (the "new marks"), concluding that CrossFit had not established a likelihood of confusion as a matter of law. The Court granted summary judgment for CrossFit on its Chapter 93A claim, but concluded that a trial was necessary for damages purposes to determine whether Mustapha acted willfully.

         CrossFit then moved for an entry of judgment, stating that it intended to proceed before the Trademark Trial and Appeal Board ("TTAB") in order to oppose Mustapha's application for the "CrossBox" mark. Specifically, CrossFit requested that the Court (1) enter judgment on the trademark infringement claim for the "CrossFit" mark (Count One) and the Chapter 93A claim (Count Four), (2) convert the existing preliminary injunction into a permanent injunction, and (3) award CrossFit statutory damages pursuant to 15 U.S.C. § 1117(c). CrossFit agreed to dismiss its claims for trademark infringement as to the new marks, its claim for treble damages under Chapter 93A, and its claims for Lanham Act false designation (Count Two) and trademark dilution (Count Three).

         The Court granted that motion and entered judgment against Mustapha on CrossFit's Chapter 93A claim and its trademark infringement claim for the "CrossFit" mark. The Court also converted the preliminary injunction into a permanent injunction and awarded CrossFit $10, 000 in statutory damages under the Lanham Act for partially prevailing on its trademark infringement claim. The Court dismissed Counts Two and Three, as well as the trademark infringement claim concerning the new marks.

         CrossFit has now moved to recover the fees and costs that it incurred in prosecuting its Chapter 93A claim and its related trademark infringement claim. Specifically, CrossFit is seeking attorneys' fees in the amount of $510, 846.85, and costs in the amount of $24, 016.45, for the two law firms and eighteen attorneys that litigated the case. For the following reasons, CrossFit's motion will be granted in the amount of $253, 897.53 ($229, 881.08 in attorneys' fees and $24, 016.45 in costs), and otherwise denied.

         I. Background

         The relevant facts are set forth in the Court's November 16, 2015 summary judgment order and its February 11, 2016 order entering judgment. The following background is provided only for summary purposes.

         CrossFit, Inc., is a fitness-training company. The trademark for the "CrossFit" trade name and service mark used in connection with fitness-training services, Registration No. 3, 007, 458, was issued on October 18, 2005.

         The CrossTrain Sports Club is a fitness facility in Chelmsford that is owned by Donny Mustapha. In May 2012, Mustapha contacted CrossFit to determine the process for becoming an affiliate. At some point between June and October 2012, Mustapha's club began offering "CrossFit" classes, although it was not in fact affiliated with CrossFit. After discovering Mustapha was using the "CrossFit" mark in 2012, CrossFit sent Mustapha multiple cease-anddesist letters demanding that he remove all references to "CrossFit" on the club's website and promotional materials. In January 2013, CrossFit discovered that Mustapha was still using the "CrossFit" mark. CrossFit again demanded that he immediately cease any use of the name. Mustapha responded by promising to remove all references to "CrossFit" from the club's website and advertising materials.

         In June 2013, CrossFit discovered that Mustapha had begun to use the term "CrossFit" again. CrossFit filed this action on June 21, 2013. The complaint asserted claims for (1) trademark infringement in violation of the Lanham Act, 15 U.S.C. § 1114(1); (2) false designation of origin in violation of the Lanham Act, 15 U.S.C. § 1125(a)(1); (3) trademark dilution in violation of the Lanham Act, 15 U.S.C. § 1125(c); and (4) unfair and deceptive trade practices in violation of Mass. Gen. Laws ch. 93A.

         In September 2013, the Court granted CrossFit's motion for a preliminary injunction, enjoining Mustapha from using the "CrossFit" mark, including any substantially similar variation, in connection with his fitness-training services.

         After the Court entered the preliminary injunction, Mustapha changed the name of his club from the "Chelmsford Sports Club" to the "CrossTrain Sports Club." He also began promoting fitness-training classes that he referred to as "CrossBox, " "CrossKick, " and "CrossTrain." He also started using the slogan, "Fitness isn't a sport it's a lifestyle"- a takeoff on ...


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