SIMON PROPERTY GROUP, L.P.

v.

TAYLOR

Before the Hon. Roy K. Altman:

Sawgrass Mills—the owner of a large shopping mall—contracted with Casino for bussing services to and from its mall. To advertise that partnership, Casino displayed various Sawgrass Mills trademarks on its busses and website. When Casino’s financial condition declined, it partnered—in clear violation of the contract’s anti-assignment clause—with John Sansac and Sansac’s company (Half Price), who took over Casino’s Sawgrass Mills-branded busses and website. What’s worse, even after Sawgrass Mills terminated its agreement with Casino, Sansac and Half Price continued to use the Sawgrass Mills marks. In this trademark-infringement action, Sawgrass Mills (primarily) sought injunctive relief. Because Sansac and Half Price never appeared in the case, the Court entered a final default judgment and permanent injunction against them. That injunction expressly applied to Sansac, Half Price, and “any persons acting in concert and participat[ing] with them.” When Sawgrass Mills terminated its contract with Casino, Casino was acting only through Sansac and Half Price. As a result, Sawgrass Mills received precisely what it sought from this lawsuit: an injunction barring all Defendants (including Casino) from using its marks. Having achieved that result—and wisely hoping to avoid the needless expenditure of time and money—Sawgrass Mills voluntarily dismissed its case as to Casino. That’s when things took a strange turn. Despite playing only a (very) minimal role in the case—and ignoring the fact that it, too, like Sansac and Half Price, was subject to the Court’s injunction—Casino moved for over $90,000 in attorneys’ fees, arguing (illogically) that, in fact, it was the prevailing party. This Court referred that motion to U.S. Magistrate Judge Patrick M. Hunt, who (unsurprisingly) concluded that, if anything, Sawgrass Mills—and not Casino—had prevailed. As this summary should have made clear, this Court will AFFIRM the Magistrate Judge’s decision.

THE FACTS

On March 27, 2019, the Plaintiffs, Simon Property Group, L.P., Simon-Mills III, LLC, and Sunrise Mills (MLP), L.P. (collectively, “Sawgrass Mills”), brought this action for injunctive relief and damages against the Defendants, Casino Travel, Inc. (“Casino Travel”); Tour95, LLC (“Tour95”); Half Price Tour Tickets, LLC (“Half Price”); and John Sansac (“Sansac”).¹ See Compl. [ECF No. 1]. Sawgrass Mills owns and operates a large shopping mall in Sunrise, Florida. See Preliminary Injunction Order [ECF No. 69] (“PI Order”) at 2. Casino Travel and Tour95 (together, “Casino”) are commonly owned and provide bussing services. Id. at 4, 6–7.2

The contract allowed Casino to use Sawgrass Mills’s trademarks to promote its services. Id. The contract also (1) prohibited Casino from assigning any of its rights under that agreement without Sawgrass Mills’s prior written consent, (2) allowed Sawgrass Mills to terminate the contract for any reason, and (3) required Casino to stop using Sawgrass Mills’s marks on the agreement’s expiration (or termination).

Id. at 4–5. During the course of this service contract, Casino’s financial condition deteriorated. Id. at

4.

To continue providing shuttle services, Casino partnered with Sansac—a South Florida tourism services provider who owned Half Price. Id. As part of that partnership, Casino transferred to Sansac and Half Price both (1) the Sawgrass-branded shuttle busses and (2) a website Casino had previously operated, which displayed the Sawgrass Mills marks and advertised the company’s shuttle services. Id. at 4–5. Learning of this arrangement, Sawgrass Mills demanded that the Defendants stop infringing on their marks and (then) promptly terminated its service contract with Casino. Id. at 5.

Casino Travel later went out of business and dissolved. Id. at 5–6.3

But, even after Sawgrass Mills terminated the service contract, Sansac and Half Price continued to operate the Sawgrass-branded busses and website. Id. at 5. The quality of the shuttle service substantially declined during this time, and the continued operation resulted in a significant increase in marketplace confusion. Id. So, on March 27, 2019, Sawgrass Mills—left with no choice—brought this action, through which it (mainly) sought temporary and permanent injunctive relief against the Defendants. See generally Compl. The Complaint asserted federal claims of trademark infringement, false designation of origin, and unfair competition—in addition to some supplemental state-law claims. See generally

[ECF Nos. 63, 65, 80]. Crucially, the injunction applied broadly to Half Price, Sansac, and “any persons acting in concert and participation with them.” Permanent Injunction Against Half Price [ECF No. 63]. In full, that injunction provided as follows: A permanent injunction is entered against Half Price, enjoining it, its managing members, officers, directors, agents, employees, and any persons acting in concert and participation with them from using any mark, name, slogan, word, phrase, Internet domain, trade name, business name, or device that is identical or confusingly similar to the Plaintiffs’ trademarks, for any purpose . . . .

Id. at 1.4 Second, on July¹⁰, 2019, after conducting evidentiary hearings,5 the Court—having already granted an injunction against Half Price and Sansac—denied Sawgrass Mills’s Motion for Preliminary Injunction as to Casino, the only remaining Defendant in the case. See generally PI Order. But this decision—to deny the request for a preliminary injunction against Casino—was (notably) not based on the merits. Id. at 7–9. Instead, the Court ruled that Sawgrass Mills had not

A permanent injunction is entered against Sansac, enjoining him and any persons acting in concert and participation with him from using any mark, name, slogan, word, phrase, Internet domain, trade name, business name, or device that is identical or confusingly similar to the Plaintiff’s trademarks, for any purpose . . . .

Permanent Injunction Against Sansac [ECF No. 65] at 1. 5 Casino did not appear in this case until one day before the preliminary injunction hearing and, as a result, filed no written response to the motion. shown a “substantial threat of irreparable injury” because—by that point—the Sawgrass-marked shuttles and website were operated entirely through Half Price and Sansac, who had already been enjoined from further infringing on Sawgrass Mills’s intellectual property. Id. at 7. A few days after this Court entered its Preliminary Injunction Order, Sawgrass Mills— satisfied that it had obtained the relief it was after—voluntarily dismissed Casino from the case.

See Notice of Voluntary Dismissal [ECF No. 70]. Because Sawgrass Mills voluntarily dismissed Casino before Casino answered to the Complaint, Sawgrass Mills did not need leave of court. See

FED. R. CIV. P. 41(a)(1)(A)(i). Casino thus received no ruling in its favor on the merits; and, indeed, Sawgrass Mills remains free to re-file its claims against Casino. Despite having participated in only two hearings—and filing a single motion to dismiss (which never ripened)—Casino seeks over $90,000 in attorneys’ fees. See Motion for Attorneys’ Fees [ECF No. 73] (the “Motion”) at 14. This Court referred that Motion to U.S. Magistrate Judge Patrick M. Hunt, who (noting that Casino had not prevailed) recommended that this Court deny Casino’s request. See Report and Recommendation [ECF No. 81] (the “Report”). Casino timely objected to the Report. See Objections [ECF No. 82]. For the reasons set out below, the Court now affirms.

THE LAW

A district court “may refer a motion for attorney’s fees to a magistrate judge under Rule 72(b) as if it were a dispositive pretrial matter.” FED. R. CIV. P. 54(d); FED. R. CIV. P. 72. “The district judge must determine de novo any part of the magistrate judge’s disposition that has been properly objected to.” FED. R. CIV. P. 72(b)(3). But, when no party has timely objected, “the court need only satisfy itself that there is no clear error on the face of the record in order to accept the recommendation.” FED. R. CIV. P. 72 advisory committee’s notes. Although Rule 72 itself is silent on the standard of review, the Supreme Court has acknowledged that Congress’s intent was to require de novo review only when objections have been properly filed—and not when neither party objects. See Thomas v. Arn, 474 U.S. 140, 150 (1985) (“It does not appear that Congress intended to require district court review of a magistrate [judge]’s factual or legal conclusions, under a de novo or any other standard, when neither party objects to those findings.”). And so, the “[f]ailure to object to the magistrate [judge]’s factual findings after notice precludes a later attack on these findings.” Lewis v. Smith, 855 F. 2d 736, 738 (11th Cir. 1988) (citing Nettles v. Wainwright, 677 F. 2d 404, 410 (5th Cir. 1982)).

ANALYSIS

This dispute over attorneys’ fees rapidly devolved into a (misguided) quarrel over the application of state verses federal law—along with a doubly unnecessary back-and-forth over the meaning of Erie R.R. Co. v. Tompkins, 304 U.S. 64 (1938). So, Casino cited Fla. Stat. § 817.41(6)—a provision that awards attorneys’ fees to prevailing parties in misleading advertising suits—for its position that its fee request is governed by state law. See Motion at 5. Sawgrass Mills,

on the other hand, pointed to the Lanham Act’s fee provision—15 U.S.C. § 1117—for its view that federal law applies. See Response [ECF No. 77] at 2. Ultimately, of course, this Erie dispute is beside the point because Casino isn’t entitled to fees under either standard.⁶

A. Casino Is Not Entitled to Fees Under Federal Law

The Lanham Act provides that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 15 U.S.C. § 1117(a) (emphases added); see also N. Am. Clearing, Inc. v. Brokerage Computer Sys., Inc., 395 F. App’x 563, 565 (11th Cir. 2010) (“Parties

As a preliminary matter, Casino has never even suggested that this case is exceptional. It has thus waived any such argument—a waiver that’s sufficient to dispose of any claim it may have had to fees under § 1117. See Hamilton v. Southland Christian Sch., Inc., 680 F. 3d 1316, 1319 (11th Cir. 2012) (“[T]he failure to make arguments and cite authorities in support of an issue waives it.”); In re Egidi, 571 F. 3d 1156, 1163 (11th Cir. 2009) (“Arguments not properly presented

. . . are deemed waived.”).

But, even if Casino had not waived this argument, absolutely nothing “stands out” about the strength of Sawgrass Mills’s claims or its strategy in litigating this case. Indeed, on the merits, Sawgrass Mills got exactly what it wanted—an injunction directly against two Defendants and indirectly against the two others. Nor did Sawgrass Mills act (in any way) unreasonably during the litigation. It did not (for instance) generate needless motions practice, delay matters, fail to comply with court orders, or employ vexatious discovery tactics. To the contrary, because of Sawgrass Mills’s diligence and professionalism, the case was closed in under four months. On these facts, there is nothing exceptional about this run-of-the-mill trademark case.⁷ Second, any claim to fees under § 1117 is (doubly) doomed because Casino did not prevail in the case. Under federal law, to determine whether a party has prevailed, we must assess “whether a ‘court-ordered . . . material alteration of the legal relationship of the parties’ has occurred.” First

Time Videos, LLC v. Oppold, 559 F. App’x 931, 932 (11th Cir. 2014) (quoting Buckhannon Bd. & Care Home, Inc. v.

W. Va. Dep’t of Health & Human Res., 532 U.S. 598 (2001)). “In other words, there must be: (1) a situation where a party has been awarded by the court ‘at least some relief on the merits of his claim’ or (2) a ‘judicial imprimatur on the change’ in the legal relationship between the parties.” Smalbein v. City of Daytona Beach, 353 F. 3d 901, 905 (11th Cir. 2003) (quoting Buckhannon, 532 U.S. at 603, 605). In our case, Casino received neither court-awarded “relief on the merits” nor any “judicial imprimatur” on “the change” in its “legal relationship” with Sawgrass Mills. Sawgrass Mills voluntarily dismissed Casino from the case under Federal Rule of Civil Procedure 41(a)(1)(A)(i).

This provision specifically allows a plaintiff to voluntarily dismiss a defendant “without prejudice” (i.e., not on the merits), see FED. R. CIV. P. 41(a)(1)(B), and “without a court order” (i.e., without judicial imprimatur), see FED. R. CIV. P. 41(a)(1)(A). And the Eleventh Circuit has been pellucid on this point. In First Time Videos, for instance, the defendant—who had been voluntarily dismissed under Rule 41(a)(1)(A)(i) (the very same provision at issue here)—sought fees as the

B. Casino Is Not Entitled to Fees Under State Law

Casino’s retreat to state law fares no better. Florida Statutes § 817.41—Florida’s misleading-advertising statute—provides, in pertinent part, that “[a]ny person prevailing in a civil court action for violation of this section shall be awarded costs, including reasonable attorney’s fees.” FLA. STAT. § 817.41(6) (emphasis added). “In general, when a plaintiff voluntarily dismisses an action, the defendant is the prevailing party.” Thornber v. City of Ft. Walton Beach, 568 So. 2d 914, 919 (Fla. 1990). But Florida courts routinely acknowledge that “this rule does not apply without exception and that a court may look behind a voluntary dismissal at the facts of the litigation to determine if a party has prevailed.” Residents for a Better Community v. WCI Communities, Inc., 291 So. 3d 632, 634 (Fla. 2d DCA 2020); Kelly v. Bankunited, FSB, 159 So. 3d 403, 406 (Fla. 4th DCA 2015) (recognizing that “strictly apply[ing] the general rule [of

DCA 2013).

In assessing the effect of a voluntary dismissal, then, the question is “whether the party succeeded on any significant issue in litigation which achieves some of the benefit the parties sought in bringing suit.” Padow v. Knollwood Club Ass’n, Inc., 839 So. 2d 744, 745 (Fla. 4th DCA 2003) (cleaned up).

Crucially, a plaintiff’s decision to voluntarily dismiss an action will not confer prevailing-party status where the plaintiff “recovered the majority of what it sought by filing suit.” Wilson, 170 So. 3d at 139. At that point, to forge forward with “needless litigation” would be a “waste of resources”—something fee-shifting statutes do not condone. Valencia Golf & Country Club Homeowners’ Ass’n, Inc. v. Cmty. Res. Servs., Inc., 272 So. 3d 850, 852–53 (Fla. 2d DCA 2019) (quoting Padow, 839 So. 2d at 746).

Here, Sawgrass Mills prevailed on every significant issue. And, indeed, it obtained precisely the relief it sought when it initially filed its lawsuit: an injunction preventing all Defendants (including Casino) from further using its trademarks on either the Sawgrass-branded shuttles or the website. Specifically, in entering a permanent injunction against the two defaulted Defendants—Half Price and Sansac—this Court also enjoined “any persons acting in concert and

Report at 4.10 As a result, rather than press on, Sawgrass Mills—having already obtained the relief it needed—voluntarily dismissed its action against Casino. If any party prevailed, in short, it was Sawgrass Mills, not Casino.11 Florida courts have denied requests for fees in similar circumstances. In Padow, for example, a condominium association sued one of its members for failing to pay the maintenance fees. 839 So. 2d at 745. Months into the litigation, the member paid the association $2,000 in maintenance fees. Id. Having received what it viewed as some (but not all) of what it was due, the association eventually voluntarily dismissed the case. Id. Like Casino, the member then moved for attorneys’ fees. Id. The Fourth DCA denied that motion, reasoning that the association only voluntarily dismissed the case after the member had “paid the substantial part of the association’s claim for delinquent assessments.” Id. at 746. At that point, to continue the lawsuit “would have been a waste of resources.” Id. Despite the voluntary dismissal, in other words, the member had

Nevertheless, the Court here adds that, by now, Sawgrass Mills has waived any right it might have had to attorneys’ fees—and the Court would not look kindly on any belated attempt to collect those fees. See S.D. FLA. L.R. 7.3(a)(1) (providing that a motion for attorneys’ fees “shall . . . be filed and served within sixty (60) days of the entry of final judgment or order giving rise to the claim; regardless of the prospect or pendency of supplemental review or appellate proceedings”). not prevailed. Id. That reasoning is dispositive here. Once this Court entered permanent injunctions against Half Price and Sansac—injunctions that applied with equal force to Casino—Sawgrass Mills got the relief it had been seeking. To continue to litigate the case at that point would thus have been a complete waste of everyone’s time. The Court will not punish a party for conserving the litigants’—and this Court’s—resources.

In its Objections, Casino cites three cases—all inapposite. First, Casino relies on Black Diamond Properties, Inc. v. Haines, 36 So. 3d 819 (Fla. 5th DCA 2010). Although that court awarded fees to a voluntarily-dismissed defendant, that case—unlike ours—was one in which “there [was] no confusion over which party prevailed below.” Id. at 822. Here, though, the parties (obviously) disagree over who prevailed—a reasonable disagreement given our injunctive quirk, which was nowhere present in Black Diamond.¹² Second, Casino points to Yampol v. Schindler

And the Florida Supreme Court already rejected any such per se rule when it explicitly said that a voluntary dismissal “[i]n general”—not always—will confer prevailing party status. See Thornber, 568 So. 2d at 919. The ineluctable inference, therefore, is that (as other DCAs have recognized) there are exceptions to the voluntary-dismissal rule. See, e.g., WCI Communities, Inc., 291 So. 3d at 632 (noting that there are exceptions); Bankunited, FSB, 159 So. 3d at 406 (same).

And, for two reasons, this makes sense.

First, we begin with the plain meaning of the word “prevailing” as that term appears in the statute. Nesbitt v. Candler Cty., 945 F. 3d 1355, 1358 (11th Cir. 2020) (“In construing a statute we must begin, and often should end as well, with the language of the statute itself.” (quoting United States v. Steele, 147 F. 3d 1316, 1318 (11th Cir. 1998) (en banc))); cf.

A. SCALIA & B. GARNER, READING LAW: THE INTERPRETATION OF LEGAL TEXTS 69 (2012) (“The ordinary-meaning rule is the most fundamental semantic rule of interpretation.”). “Prevailing” means that which “is or proves to be superior in any contest; victorious; ruling; effective, influential.” OXFORD ENGLISH DICTIONARY (3d ed. 2007).

Given this meaning, it would seem absurd to conclude that a party—like Casino—was “superior” or “victorious” in a lawsuit when (1) it received no favorable ruling on the merits, (2) the opposing side got all the relief it Elevator Corp., 186 So. 3d 616 (Fla. 3d DCA 2016).

In that case, however, the court explicitly recognized that “[t]here are undoubtedly cases in which the general [Thornber] rule may be inapplicable to a particular set of circumstances.” Id. at 617.

But, because the plaintiff had not pointed to any such circumstances, the court granted the defendant’s motion.13 Id. In our case, by contrast, Sawgrass Mills has pointed to the kinds of circumstances that, as mentioned, render the

Thornber rule inapplicable. Third, Casino directs the Court to Alhambra Homeowners Ass’n, Inc. v. Asad, 943 So. 2d 316 (Fla. 4th DCA 2006). But that case—unlike ours—involved a plaintiff that voluntarily dismissed its case only after the defendant had filed a sure-to-be-granted motion for summary judgment.14 Id. at 317. Again, Sawgrass Mills dropped this case—not in the face of near-certain defeat—but because it had gotten what it wanted. * * * Having carefully considered the Motion, the briefing, the record, and the governing law, the Court hereby ORDERS AND ADJUDGES as follows: 1. The Report [ECF. No. 81] is AFFIRMED AND ADOPTED in full.

2. The Motion [ECF No. 73] is DENIED.

wanted, (3) the opposing party remains free to re-file its action, and (4) the court entered an unfavorable injunction against that party.

Second, the Florida Supreme Court—in this Court’s view—would be unlikely to adopt a per se rule that a voluntary dismissal automatically confers prevailing-party status because of the perverse incentives such a rule would create. Such a rule, after all, would encourage a plaintiff who has already obtained all (or nearly all) the relief it sought to (needlessly) press on with its case. See Padow, 839 So. 2d at 746. The Florida Supreme Court is unlikely to adopt such an inefficient rule. 13 The Yampol Court also based its ruling on the fact that the plaintiff had voluntarily dismissed its case in the face of a (likely) adverse ruling on summary judgment. 186 So. 2d at 617. Here, Sawgrass Mills dismissed the case because it obtained the relief it needed—not because it feared losing on the merits. 14 The plaintiff in that case had (unambiguously) failed to comply with a condition precedent before its lawsuit. DONE AND ORDERED in Fort Lauderdale, Florida, this 19th day of October 2020.

ROY K. ALTMAN

UNITED STATES DISTRICT JUDGE cc: counsel of record