A recent Daily Business Review story by Raychel Lean, “FNU’s Miami Attorneys Could Land More than $1 Million in Fees Winning Trademark Fight with FIU,” reports that Peretz Chesal & Herrmann’s successful defense of the private Florida National University against crosstown giant Florida International University’s trademark infringement suit has put him in line for more than $1 million in attorney fees.  U.S. District Judge Kathleen M. Williams issued an order that the parties attempt to agree on an amount.  As FNU’s legal fees exceeded $1 million, that’s likely to be the base figure.

Miami attorney Steven Peretz said his firm calculated its tab by applying a base market rate for the attorneys multiplied by the number of hours spent on the matter.  Peretz has represented Hialeah’s for-profit Florida National University since 2013 when FIU, Miami’s public university, sued over the similarity in names.  The 55,000-student FIU claimed FNU’s name caused unwarranted confusion in the marketplace and led to losses in admissions and tuition for FIU.

In response, FNU maintained, “The plaintiff has no enforceable rights against the defendant arising from defendant’s use of ‘university’ and ‘Florida’ to accurately identify itself as a university located in Florida.”  Williams ruled against FIU in 2015, deciding college applicants weren’t likely to confuse the two and finding no “compelling or persuasive evidence of intent to piggyback on FIU’s name or goodwill.”  FIU appealed, which piled onto the Peretz Chesal fees after it won.

Fee awards like this one are rarely granted in trademark cases since the law restricts them to  exceptional cases.  To be labeled exceptional, the court must find that the lawsuit lacked merit or litigation was unreasonably pursued.  In this case, FIU was tripped up by its own testimony.  “When we took the deposition of the senior administrators at FIU, the marketing counsultant said she had not heard of Florida National before this lawsuit,” Peretz said.  Adding insult to injury, an outside marketing consultant who’d worked for FIU for four years stated FNU was “not on my radar screen at all.”

“It should have been made known to FIU by the decision-makers, as they interviewed their own witnesses ahead of time, that they didn’t have any basis for saying there was confusion,” Peretz said.  Rafael Paz, associate general counsel at Florida International University, conceded in a deposition that he was unaware of “any instance where somebody applied to FIU thinking that FIU was associated with FNU.”

“At that point, this became a man-bites-dog case because although every side has a loser, in this case the losing side lost because their own witnesses gave bad testimony,” Peretz said.  Since much of the case rested on how much revenue was generated by each school, FIU’s argument fell apart without proof that FNU gained a dollar in tuition or donations intended by students for FIU.

“After we got those admissions, there was no reason to pursue a claim for damages, but FIU pursued a claim for damages until the bitter end,” Peretz said.  Williams ordered the parties to meet and confer to see if the fees can be hashed out cordially.  A mediation session will follow if they disagree.  Two previous attempts at mediation have been unsuccessful.

At the district court level, the Peretz Chesal attorneys expended about 2,750 hours over a two-year period. At the appellate level, the attorneys added about 700 hours in six months. The principal attorneys involved were partners Steven Peretz and Michael Chesal and associate Moish Peltz.  The attorney’s hourly rates changed over the course of the case.