The Second Circuit last week decided an anticounterfeiting case with important guidance on the availability of attorney’s fees in cases where a brand owner opts for statutory damages as a remedy and not lost profits or recapture of defendant’s profits. In Louis Vuitton Malletier SA v. LY USA, Inc., 08-4483 (2d Cir. March 29, 2012), the Court resolved an issue that has divided district courts in the Second Circuit and, in so doing, created a possible circuit split with the Ninth Circuit, holding that attorney’s fees are available under 15 USC § 1117(a) even where a plaintiff elects to recover statutory damages under 15 USC § 1117(c).

In this counterfeiting case, Louis Vuitton sought the then-maximum statutory damages award of $8 million, plus attorney’s fees, costs, and investigative fees. Statutory damages are determined per counterfeit mark per type of goods or services sold, offered for sale, or distributed. At the present time, the statutory damage amount is between $1,000 and $200,000 per counterfeit mark per type of goods or services; or not more than $2 million per counterfeit mark per type of goods or services for willful counterfeiting. Those amounts were effective October 13, 2008, doubling the prior statutory damage amounts.