Hark’n Technologies, Inc. v. Orange Whip Fitness X, LLC

              IN THE UNITED STATES DISTRICT COURT                        
          FOR THE DISTRICT OF UTAH, NORTHERN DIVISION                    
HARK’N TECHNOLOGIES, INC.,                           M   E   M    O   R   A   N   D   U  M     DECISION AND 
                                  ORDER GRANTING IN PART AND             
     Plaintiff,                       DENYING IN PART [386]              
                                    DEFENDANT’S MOTION FOR               
v.                                      ATTORNEY FEES                    
ORANGE WHIP FITNESS X, LLC,                                C  a  s  e    N  o  .   1  :  2  1  - c  v-00054-CMR 
     Defendant.                  Chief Magistrate Judge Cecilia M. Romero 

      Before the court is Defendant Orange Whip Fitness X, LLC’s (Orange Whip) Motion 
for Award of Attorney Fees (Motion) (ECF 386) incurred from the defense of the first, second, 
fourth, fifth, and ninth claims of relief, as well as the claims against two individuals. The court has 
also considered Plaintiff Hark’n Technologies, Inc.’s (Hark’n) Opposition (ECF 403) and Orange 
Whip’s Reply (ECF 418). Having carefully considered the relevant filings, the court finds that oral 
argument is not necessary and will decide this matter on the materials presented in the written 
memoranda. See DUCivR 7-1(g). For the reasons herein, the court GRANTS IN PART and 
DENIES IN PART Orange Whip’s Motion.                                      
                        I.  BACKGROUND1                                  
      Following a weeklong trial, a jury reached a verdict in favor of Hark’n on its claims for 
trade dress infringement, unfair competition, and unjust enrichment (ECF 300). Specifically, the 
jury found that Orange Whip willfully infringed on Hark’n’s protectable trade dress and that 
Orange Whip willfully engaged in unfair competition (id.). The jury further found that the amount 

1 Given the court and the parties’ familiarity with the facts and procedural history of this dispute, the court will reiterate 
only the facts and procedural history relevant to the instant motions. A more fulsome description is included in 
previous court orders (see, e.g., ECF 160 & ECF 251 (memorandum decisions ruling on the motions for summary 
judgment)).                                                               
of profits that Orange Whip received as a result of its willful trade dress infringement and/or unfair 
competition was $978,024.00 (id.). As for unjust enrichment, the jury found Plaintiff was entitled 
to receive $37,500.00 in damages (id.).                                   
      Thereafter, Orange Whip filed this Motion seeking an award of attorney fees and costs 

for defending the seven causes of action that were dismissed by summary judgment, as well as the 
two causes of action against Wald and Newman (ECF 386 at 1). Defendant asserts various claims 
of recovery: First, that the Product Design and Manufacturing Agreement (PDMA), although not 
a binding contract, still permits the recovery of fees related to defending against Hark’n’s breach 
of contract and fraud claims (id. at 15–23). Second, the trade secret statutes allow it to recover fees 
for defending against Hark’n’s state and federal trade secret misappropriation claims (id. at 23–
31). Third, the Bad Faith Exception to the American Rule allows it to recover fees for Hark’n’s 
trademark infringement, false designation of origin claims, and fees for bad faith refusal to produce 
a representative sample (id. at 31–39).                                   
      For the reasons explained below, the court finds that Orange Whip cannot recover fees 

under the PDMA or the Bad Faith Exception to the American Rule. The court, however, finds that 
Orange Whip is entitled to fees for defending against the two secret trade claims.  
                         II.  DISCUSSION                                 
      A.   Orange Whip is entitled to fees for defending against the trade secret claims.   
      Hark’n brought two claims for trade secret misappropriation against Orange Whip, in 
the Eighth Cause of Action for misappropriation of trade secrets under the Utah Uniform Trade 
Secrets Act (UUTSA), Utah Code § 13-24-1, and the Ninth Cause of Action for misappropriation 
of trade secrets under the Defend Trade Secrets Act (DTSA), 

18 USC § 1836

 (ECF 418 at 23). 
Both claims were dismissed by summary judgment (ECF 251). Orange Whip asserts that under 
these two statutes, it can recover fees from prevailing over these claims because they were made 
in bad faith (ECF 386 at 18).                                             
      The court may award the prevailing party reasonable attorney fees under the DTSA and 
the UUTSA, “[i]f a claim of misappropriation is made in bad faith[.]” 

Utah Code Ann. § 13-24-5

; 

see also 

18 U.S.C. § 1836

(b)(3)(D) (allowing a claim of bad faith). Neither statute defines bad 
faith. This court recently found that bad faith under both statutes requires a two-step inquiry: “The 
court must find that (1) the plaintiff’s claims were objectively specious or frivolous, and (2) there 
is evidence of subjective misconduct.” Applied Predictive Techs., Inc. v. Marketdial, Inc., No. 
2:19-CV-00496-JNP-CMR, 

2025 WL 906182

, at *2 (D. Utah Mar. 25, 2025) (citing Hammerton, 
Inc. v. Heisterman, No. 2:06–CV–806 TS, 

2008 WL 4057010

, at *7 (D. Utah 2008)). Furthermore, 
“the award of attorney fees is subject to the trial court’s discretion, to be overturned only for abuse 
of discretion.” 

Id.

 (quoting Lam, Inc. v. Johns-Manville Corp., 

668 F.2d 462, 476

 (10th Cir. 1982)).  
      As a preliminary matter, both parties raise arguments regarding which party was the 
“prevailing party” in this suit. However, under the DTSA and the UUTSA, it is only required that  

a party prevail over a “claim” of trade secret misappropriation. There is no requirement that a party 
be the prevailing party over the entire case. As such, Orange Whip was clearly the prevailing party 
over Hark’n’s state and federal trade secret misappropriation claims, as they were successfully 
dismissed by summary judgment. Thus, finding that Orange Whip prevailed on both claims, the 
court then considers whether Hark’n brought them in bad faith.            
         1.   Hark’n’s trade secret claims were objectively specious.    
      Orange Whip argues that the trade secret claims were objectively specious because 
Hark’n could not identify the asserted trade secret and could not provide any evidence to support 
the theory of trade secret misappropriation (ECF 386 at 25). Hark’n claims that it did identify its 
trade  secrets,  but  the  court  dismissed  its  claims  due  to  the  lack  of  a  finding  that  it  had 
“communicated” its trade secrets (ECF 403 at 23). Hark’n further asserts the trial results prove that 
Orange Whip acquired its trade secrets through improper means and had them reverse-engineered, 
indicating that there was at least some evidence to support the trade secret claims (id. at 24).  

      Courts  have  defined  “objective  speciousness”  as  “a  complete  lack  of  evidence 
supporting  Plaintiff’s  claims.”  Applied  Predictive,  

2025 WL 906182

,  at  *4  (quoting  SGS 
Acquisition Co. Ltd. v. Linsley, 

2023 WL 2681946

, at *3 (D. Colo. 2023)). “A specious claim is 
one that ‘superficially appears to have merit but there is a complete lack of evidence to support 
[it].’” 

Id.

 at *4 (quoting Workplace Techs. Research, Inc. v. Project Mgt. Inst., Inc., 

664 F. Supp. 3d 1142

, 1159 (S.D. Cal. 2023) (interpreting the “speciousness” requirement under the California 
Uniform Trade Secrets Act)). “[A] specious claim may even sound logical or convincing, but it is 
ultimately hollow and lacks substantiation.” 

Id.

                          
    Also helpful to the court’s analysis of this prong is Applied Predictive, in which the court 
found that the defendant had access to the plaintiff’s confidential information; however, the 

plaintiff could not provide any evidence of any trade secret implicated by that information. 

Id. at *2

. The court further found that the plaintiff’s trade secret claims, while not objectively frivolous 
from the outset, were objectively specious considering that the plaintiff “was never able to define 
the trade secret at the heart of its claim.” 

Id. at *4

. The plaintiff failed to provide a clear explanation 
of the trade secret and only offered broad assertions, vague and ambiguous definitions, and 
conclusory statements. 

Id. at *3

. Furthermore, “rather than dismissing the claims or litigating the 
case in a professional manner, [the plaintiff] doubled down on its assertions” despite the lack of 
evidentiary support. 

Id. at *2

.                                           
    Here, review of the record shows that Hark’n, like the plaintiff in Applied Predictive, did 
not clearly define the trade secret at the center of its claims. It is undisputed that Shon Harker 
(Harker), Hark’n’s president, spent time developing prototypes and that prototypes were sent to 
Orange Whip. While these prototypes could include trade secrets, Hark’n did not identify the trade 

secret(s) included in the prototypes. Hark’n broadly argued that the trade secret information 
included:                                                                 
    [T]he  specifications  for  the  bands  and  attachments  used  in  the  GFX-PPR 
    prototypes. . . the selection of materials from which the attachments are made (e.g., 
    plastic, Velcro, and/or metal); the type, size, and design of the various straps, clips, 
    handles, and rings used in the prototypes, and the resistance levels of the elastic 
    bands.                                                               

(ECF 144 at 47). This court, when ruling on Orange Whip’s summary judgment motion, found 
that “[w]hile a prototype itself could potentially constitute a trade secret, Plaintiff has not alleged 
facts or pointed to evidence that would support such a position regarding the prototypes given to 
Defendants. In fact, Harker’s testimony on this point demonstrates the opposite to be true” (ECF 
251 at 34 (emphasis added)). Therefore, a primary reason for dismissing the trade secret claims 
was that Hark’n’s definition of its trade secrets was incompatible with Harker’s sworn testimony. 
This inconsistency is crucial because it prevents the court from concluding that Hark’n defined its 
trade secrets.                                                            
    During his deposition, Harker claimed that the prototypes contained trade secrets (ECF 
120-6 at 114). However, when asked whether he shared any “confidential” or “proprietary” 
information with Orange Whip, Harker stated, “No,” and “not that I recall” (id.). Harker knew that 
Orange Whip had the prototypes, yet testified, under oath, that no confidential or proprietary 
information was shared with Orange Whip. While Harker’s testimony indicates that no trade 
secrets were “communicated,” it also cuts against Hark’n’s definition of its trade secrets. 
    Hark’n cannot simultaneously credibly assert that: (1) the prototypes contained trade 
secrets; and (2) no confidential or proprietary information was shared with Orange Whip, who was 
clearly in possession of the prototypes. Because of this inconsistency, the court, like when it 
dismissed the trade secret claims, remains uncertain about which pattern, compilation, program, 

device, method, technique, or process of the prototype (if any) constitutes the alleged trade secret 
at the core of Hark’n’s claims. Therefore, the court finds that Hark’n’s trade secret claims were 
objectively specious for failure to define the trade secret at the heart of its claims.  
    Furthermore, Hark’n’s assertion that its claims were dismissed solely because they were 
uncommunicated is unfounded. The court, when dismissing Hark’n’s trade secret claims, stated: 
“[W]ith respect to what is alleged to be the trade secret, Plaintiff’s position has not been entirely 
clear, or properly supported” (ECF 251 at 33). Like the plaintiff in Applied Predictive, Hark’n, in 
support of its trade secret claims, only offered broad assertions, vague and ambiguous definitions, 
and conclusory statements that it could not support. As previously mentioned, to this day, it is still 
unclear what Hark’n’s trade secrets are. To prove a claim under the DTSA and the UUTSA, the 

plaintiff must first show that a trade secret exists, a requirement Hark’n failed to meet. Thus, even 
though the claim superficially appeared to have merit from the outset, it ultimately lacked any 
evidentiary support. See Applied Predictive, 

2025 WL 906182

, at *4.       
    Lastly, Hark’n’s claim that the trial results prove that Orange Whip “acquired” its trade 
secrets through improper means is unfounded (ECF 251 at 24). The jury found that Orange Whip 
willfully infringed on Hark’n’s protectable trade dress, not that it had acquired or misappropriated 
any trade secrets (ECF 300). The trial results offer no support for Hark’n’s trade secret claims.  
         2.   Hark’n engaged in subjective misconduct.                   
      Orange Whip asserts that Hark’n engaged in subjective misconduct because “[i]t was 
apparent from the outset that [Hark’n’s] trade secrets claims were fruitless, yet [Hark’n] recklessly 
went ahead with bringing the claim and took no steps to act in good faith” (ECF 386 at 29). 

According to Hark’n, the events leading up to this litigation indicate that there was no subjective 
misconduct (see ECF 403 at 27). Hark’n specifically argues that, before this litigation, Orange 
Whip created prototypes for Orange Whip using industry technology and know-how for over 20 
years; that Orange Whip withdrew from negotiations after accepting the prototypes; and that 
products with a similar appearance entered the market without sourcing from Hark’n (id.). Under 
these facts, to Hark’n, it appeared that Orange Whip had another supplier reverse engineer 
Hark’n’s products; so, at a very minimum, the trade secret claims were brought in good faith (id.).  
      A court may find subjective misconduct “where a plaintiff knows or is reckless in not 
knowing that its claim for trade secret misappropriation has no merit.” Applied Predictive, 

2025 WL 906182

, at *5 (quoting Contract Materials, 222 F. Supp. 2d at 744). “Subjective misconduct 

may be proven by direct evidence of actual knowledge or may be inferred from the speciousness 
of plaintiff's trade secret claim and its conduct during litigation.” Id. 
      In Applied Predictive, the court contrasted the plaintiff’s actions with the actions of the 
plaintiff in Hammerton, Inc. v. Heisterman, No. 2:06-CV-806 TS, 

2008 WL 4057010

 (D. Utah 
Aug. 25, 2008). 

2025 WL 906182

, at *5. In Hammerton, when the deficiencies in the plaintiff’s 
trade secret claims were pointed out in the defendants’ summary judgment motion, the plaintiff 
withdrew all its trade secret claims except for one. 

Id. at *8

. The plaintiff’s remaining trade secret 
claim survived summary judgment; nonetheless, the plaintiff moved to dismiss that claim with 
prejudice to avoid a fruitless trial. 

Id.

 The Hammerton defendants argued that the trade secret 
claims were brought in bad faith, as evidenced by the plaintiff’s voluntary withdrawals. See 

id.

 
The Hammerton court, applying the two-pronged definition of bad faith, found that the “withdrawn 
claims were objectively without merit”; however, there was insufficient evidence to find subjective 
misconduct. 

Id.

                                                           

      The court reasoned that although the plaintiff had taken a broad approach in pleading its 
trade secret claims, the plaintiff’s surviving claim “was clearly not baseless” as evidenced by the 
fact that it survived summary judgment. 

Id.

 The fact that the plaintiff broadly framed the trade 
secret claims surrounding the surviving claim did not, by itself, constitute a finding of subjective 
misconduct. 

Id.

 The court further reasoned that the plaintiff acted in good faith by withdrawing 
the  earlier  claims  when  their  deficiencies  were  pointed  out  in  summary  judgment.  See  

id.

 
Therefore, because one of the plaintiff’s trade secret claims survived summary judgment, and there 
was evidence of good faith on the part of the plaintiff, the court found there was insufficient 
evidence of subjective misconduct.                                        
      In contrast, the court in Applied Predictive found subjective misconduct because, “rather 

than dismissing the claims or litigating the case in a professional manner, [the plaintiff] doubled 
down on its assertions” despite the lack of evidentiary support. Applied Predictive, 

2025 WL 906182

, at *2, 5 (“But unlike the Hammerton plaintiff, APT did not take any steps to withdraw its 
trade secret claims when it became apparent that it had no evidence to support them. Instead, APT 
did the opposite. It sought to aggressively litigate the issue.”). Like the plaintiff in Applied 
Predictive, when it became apparent that there was no evidence to support its trade secret claims, 
Hark’n continued to litigate the issue.                                   
      In this case, Harker admitted that no confidential or proprietary information was shared 
with Orange Whip on July 31, 2024 (see ECF 120-6); this was also the date that fact discovery 
ended (see ECF 90). Despite evidence to the contrary and no time left for discovery, on December 
11, 2024, five months after Harker’s admission and the close of fact discovery, Hark’n opposed 
Orange  Whip’s  summary  judgment  motion,  claiming  there  was  “no  question  regarding  the 
existence of Plaintiff’s trade secrets or the fact that Plaintiff shared them with defendants” (ECF 

144 at 46). Like the plaintiff in Applied Predicative, Hark’n continued to litigate the issue. Unlike 
Hammerton, Hark’n had no trade secret claims survive summary judgment, and there is no 
evidence of good faith actions for the court to rely on. Thus, while there may not have been any 
subjective bad faith when the claims were first made, Hark’n acted in subjective bad faith by 
continuing to assert its trade secret claims despite knowing they lacked merit.  
      Furthermore, Hark’n’s assertion that the trial results indicate that there was no subjective 
misconduct regarding the trade secret claims is unfounded. As previously stated, the jury found 
that Orange Whip willfully infringed on Hark’n’s protectable trade dress, not that it had acquired 
or misappropriated any trade secrets, as the trade secrets issue was never before the jury (see ECF 
300).                                                                     

      Finally, Hark’n argues even if there is a finding of bad faith, the court should exercise 
its discretion to deny fees given Orange Whip’s behavior. While it is true the jury found trade dress 
infringement and unfair competition, that does not diminish Hark’n’s obligation to bring forth 
claims in good faith. While at the beginning of a case that assessment may not be complete, here 
Hark’n had an opportunity to evaluate its case after the close of discovery and failed to take 
corrective action.  The court therefore declines the request to not impose fees.    
         3.   Orange  Whip’s  fees  incurred  defending  the  trade  secret  claims  are 
              reasonable.                                                

      Under the DTSA and the UUTSA, the court may “award reasonable attorney fees to the 
prevailing party” if it finds “a claim of misappropriation is made in bad faith.” 

18 U.S.C. § 1836

(b)(3)(D); see also 

Utah Code Ann. § 13-24-5

. Finding Hark’n’s trademark claims were made 
in bad faith, the court now turns to what fees are reasonable. The Declaration of Scarlet R. Smith 
(ECF 386-2), which was attached to Orange Whip’s Motion, specifically indicates that Orange 
Whip incurred $7,076.00 in attorney fees defending Hark’n’s trademark claims (id. at 6). The 

Declaration further specifies that 36.6 hours were allocated to these claims, resulting in an average 
hourly rate of $193.33 ($7,076.00 ÷ 36.6 hours = $193.33 per hour) (id.). For the reasons stated 
below, the court finds that Orange Whip’s request for attorney fees in the amount of $7,076.00 is 
reasonable.                                                               
      “‘An award of attorney fees must be supported by evidence in the record,’ which ‘should 
include the hours spent on the case, the hourly rate or rates charged for those hours, and usual and 
customary rates for such work.’” JTP Recovery Servs., Inc. v. Hilti, Inc., No. 2:19-CV-00738-JNP, 

2022 WL 16948768

, at *1 (D. Utah Nov. 15, 2022) (quoting Xlear, Inc. v. Focus Nutrition, LLC, 

893 F.3d 1227, 1241

 (10th Cir. 2018)). In determining the reasonableness of the fee request, the 
court considers: “[T]he difficulty of the litigation, the efficiency of the attorneys in presenting the 

case, the reasonableness of the number of hours spent on the case, the fee customarily charged in 
the locality for similar services, the amount involved in the case and the result attained, and the 
expertise and experience of the attorneys involved.” 

Id.

 at *2 (quoting Dixie State Bank v. Bracken, 

764 P.2d 985, 989

 (Utah 1988)). Further, “the court will not scrutinize in detail every entry made 
by Defendants. This is not an audit.” Applied Predictive, 

2025 WL 906182

, at *6.  
      The court finds that Orange Whip’s attorney fees incurred are supported by the record. 
The 36.6 hours spent are reasonable, given the amount of research, discovery, and briefing required 
to dismiss these claims. The court further finds that an average hourly rate of $198.33 is reasonable 
compared to the usual and customary rates for such work. See Mrs. Fields Franchising, LLC v. 
MFGPC, Inc., No. 2:15-CV-00094-DAK, 

2021 WL 5086377

, at *8 (D. Utah Nov. 2, 2021) 
(holding that rates less than $500 per hour “are reasonable and consistent with local market rates”).  
      Hark’n in its Opposition raises several issues regarding Orange Whip’s allocation of 
fees, primarily asserting that Orange Whip “has engaged in an egregious attempt to over-allocate 

fees to unsuccessful claims” (ECF 403 at 31). While Hark’n provides detailed arguments regarding 
the manner in which Orange Whip allocated fees regarding defending the contract and fraud 
claims,  there  are  no  specific  allegations  contesting  the  reasonableness  of  the  fees  incurred 
defending the trade secret claims (see 

id.

 at 31–37). Therefore, the court finds that Hark’n’s 
arguments are not persuasive enough to diminish the amount claimed by Orange Whip. Thus, an 
award of attorney fees in the amount of $7,076.00 for the defense of Hark’n’s trade secret claims 
is reasonable.                                                            
      For the reasons stated above, Orange Whip’s motion for attorney fees is GRANTED 
only concerning the fees it incurred defending against Hark’n’s two trade secret claims.  
      B.  Orange Whip cannot recover fees under the PDMA.2               

      Orange Whip asserts that although the PDMA was deemed unenforceable, because 
Hark’n’s breach of contract claim is based on the enforcement of the PDMA, the fee provision 
within it may still be enforced under Utah Code § 78B-5-826 (ECF 386 at 15). Orange Whip 
further asserts that because Hark’n’s First Cause of Action for Fraud and Second Cause of Action 
for Breach of Contract were inextricably intertwined, Orange Whip can recover the fees incurred 
defending the fraud claim (id. at 14).                                    


2 “A federal court exercising supplemental jurisdiction over state-law claims ‘applies the substantive law, including 
choice of law rules, of the forum state.’” Nunes v. Rushton, 

299 F. Supp. 3d 1216, 1224

 (D. Utah 2018) (quoting 
BancOklahoma Mortg. Corp. v. Capital Title Co., 

194 F.3d 1089, 1103

 (10th Cir. 1999)). Because the relevant events 
underlying Hark’n’s claims occurred in Utah, and the parties seemingly agree that Utah law applies to Hark’n’s state 
law claims, the court applies Utah’s substantive law to Orange Whip’s claims for fees under the PDMA. 
      Because unilateral attorney fee provisions grant one side a financial advantage in 
litigation, Utah Code § 78B-5-826 (the Reciprocal Attorney Fees Statute) was “designed to create 
a level playing field” in contract disputes by making unilateral fee provisions mutual in certain 
circumstances. Bilanzich v. Lonetti, 

160 P.3d 1041, 1046

 (Utah 2007). The statute states that:  

     A court may award costs and attorney fees to either party that prevails in a civil 
     action  based  upon  any  promissory  note,  written  contract,  or  other  writing 
     executed after April 28, 1986, when the provisions of the promissory note, written 
     contract, or other writing allow at least one party to recover attorney fees. 

Utah Code Ann. § 78B-5-826. Judge J. Frederic Voros, Jr., of the Utah Court of Appeals, in his 
concurrence to Torres v. Madsen, 

344 P.3d 652

 (Utah Ct. App. 2015), noted that the Reciprocal 
Attorney Fee Statute “clearly states at least three distinct requirements: (1) a writing executed after 
a certain date, (2) a civil action based upon that writing, and (3) a provision allowing at least one 
party to recover fees[.]” Torres, 

344 P.3d 652, 654

 (Utah Ct. App. 2015) (Voros, J., concurrence) 
(emphasis added). Though neither party identified this case, here, the first requirement, which 
requires the writing to be “executed” is of particular importance.        
      Judge Voros’ concurrence in Torres, while not binding, provides highly persuasive 
authority regarding the application of the Reciprocal Attorney Fee Statute. In Torres, Anthony B. 
Torres and Yvette Torres (Torreses) brought a complaint against the defendants who had signed a 
letter of intent to sell their restaurant to the Torreses. Torres, 

344 P.3d at 652

. The Torreses, relying 
on the letter of intent, prepared a purchase agreement, which the defendants rejected and never 
signed. 

Id.

 On summary judgment, the district court ruled in favor of the defendants, finding the 
letter of intent unenforceable. 

Id.

 The defendants filed a counterclaim seeking recovery of attorney 
fees, asserting that the Torreses’ complaint “relied on the unsigned Purchase Agreement, which 
contained a provision for payment of attorney fees.” 

Id.

 The defendants argued that because the 
Torreses “sought to enforce a contract which had an attorney fee provision,” the defendants were 
“entitled to recover their attorney fees and costs” even though the contract was unenforceable. 

Id.

  
      In response, the Torreses argued that all their contract-related claims were based on the 
letter of intent, not the unsigned purchase agreement. 

Id. at 653

. The district court found that the 

Torreses’ contract-related claims were based upon the letter of intent, which did not contain an 
attorney fee provision. 

Id.

 Alternatively, the court found that the Reciprocal Attorney Fee Statute 
did not apply to the purchase agreement because it was never “executed.” 

Id.

 The defendants 
appealed, citing Hooban v. Unicity International, Inc., 

285 P.3d 766

 (Utah 2012), and argued that 
execution was not necessary. 

Id.

                                          
      On appeal, the Utah Court of Appeals affirmed the district court’s denial of fees but did 
not decide whether an unsigned document could support fees under the statute. The court noted 
that it did not have to reach this issue because the Torreses’ contract-related claims were based on 
the letter of intent, not the unsigned purchase agreement. 

Id.

 at 653–654. Judge Voros agreed with 
the result but addressed whether an unexecuted document could support fees under the Reciprocal 

Attorney Fee Statute.                                                     
      As stated above, Judge Voros emphasized that the statute requires the writing to be 
“executed after April 28, 1986.” Id. at 654 (Voros, J., concurrence) (emphasis added). Any other 
reading of the clear statutory language would “override the clear terms of the statute.” Id. at 655. 
Judge Voros also noted that requiring that the writing be “executed” does not conflict with the 
Utah  Supreme  Court’s  opinion  in  Hooban,  because  Hooban  “addresses  only  the  statutory 
requirement that the action be ‘based upon’ a writing, not the statutory requirement that the writing 
be ‘executed.’” Id. He further noted that the Hooban opinion “does not mention, much less 
abrogate, the portion of the Reciprocal Attorney Fees Statute limiting the statute’s application to 
writings ‘executed after April 28, 1986.’ In fact, the [Hooban Court’s] quotation of the statutory 
text elides that phrase.” Id. (citing Hooban, 

285 P.3d at 768

). The court agrees with Judge Voros 
and finds his reasoning to be highly persuasive.                          
      The court also observes that any other interpretation of the “execute” language within 

the Statute would render the phrase “after April 28, 1986” meaningless and unworkable. Such a 
view could lead to needless debates over when an unsigned document was allegedly “executed.” 
Because contracts often go through multiple drafts and iterations before signatures are ever added, 
parties would point to different moments of execution. The legislature’s choice to include the term 
“executed” and a clear cutoff date reflects an intent to avoid this kind of uncertainty. Therefore, 
the court finds that the Reciprocal Attorney Fees Statute does not apply to writings that are not 
“executed.” Here, it is undisputed that the PDMA was not “executed,” as this court already ruled 
that a “meeting of the minds was never reached between the parties.” (ECF 160 at 11, 14). Orange 
Whip’s assertion that it can recover fees under the unexecuted PDMA is unfounded.  
      This ruling is consistent with Bilanzich v. Lonetti, 

160 P.3d 1041

 (Utah 2007), and Wing 

v. Code, 

387 P.3d 601

 (Utah Ct. App. 2016); two cases Orange Whip relies on for recovery under 
the PDMA. In each of the cases, the primary concern was whether the litigation was “based” on 
the writing, not whether the writing in question was “executed.”          
      Orange Whip argues that the holding in Bilanzich that “the statute’s plain language does 
not require that the writing actually be enforceable,” 

160 P.3d at 1045

, means it does not need to 
be executed. In Bilanzich, the writing in question was a personal guaranty for business debt signed 
by the guarantor. 

Id.

 at 1043–4. The guaranty was found unenforceable due to a failure of a 
condition precedent. 

Id.

 Thus, the primary concern was whether the unenforceable guaranty could 
serve as a basis for fees under the Reciprocal Attorney Fees Statute. The Utah Supreme Court held 
that even though the guaranty was unenforceable, the statute allowed the guarantor to recover 
attorney fees because the action was “based” on a writing that allowed at least one party to recover 
fees. 

Id. at 1047

.                                                        
      Bilanzich does not, however, eliminate the Reciprocal Attorney Fees Statute’s execution 

requirement. The Bilanzich opinion recognizes that an “executed” writing, which is later found 
unenforceable on other grounds, can still serve as the basis for reciprocal attorney fees. See 

id. at 1047

. Any other reading of the Bilanzich opinion would “override the clear terms of the statute.” 
Torres, 

344 P.3d at 655

 (Voros, J., concurrence).                         
      In Wing, the writing at issue was a For Sale by Owner Agreement (the FSBO), which 
was clearly “executed.” Wing, 

387 P.3d at 602

. The main issue was whether the FSBO’s fee clause 
could be enforced against an individual who was not a party to the FSBO but nonetheless initiated 
litigation under the “right to enforce the [FSBO].” 

Id. at 603

. Wing provides no support for Orange 
Whip’s assertion that the unexecuted PDMA can be the basis for fees under the Reciprocal 
Attorney Fees Statute.                                                    

      For these reasons, the court DENIES Orange Whip’s claim for fees under the PDMA. 
Furthermore, Orange Whip’s sole basis for recovery of fees under its fraud claim was the PDMA. 
Because the court denies the claim for fees under the PDMA and there is no other basis for Orange 
Whip to recover fees related to dismissing Hark’n’s fraud claim, the court denies any claim for 
fees as to the fraud claim.                                               
      C.  Orange  Whip  cannot  recover  fees  under  the  American  Rule’s  Bad  Faith 
        Exception.                                                       

      Orange  Whip  argues  the  Bad  Faith  Exception  to  the  American  Rule  (Bad  Faith 
Exception) allows it to recover fees. In support, Orange Whip asserts the following evidence of 
Hark’n’s alleged bad faith throughout this litigation: (1) Hark’n failed to produce a representative 
sample; and (2) Hark’n’s Fourth Cause of Action for False Designation of Origin and Fifth Cause 
of Action for Trademark Infringement were brought in bad faith (ECF 386 at 31–39). Before 
continuing, the court addresses two preliminary matters.                  
      First, it is unclear whether Orange Whip is claiming that the Bad Faith Exception permits 

it to recover fees incurred from defending all the claims it successfully dismissed, or whether it is 
only claiming that the exception is limited to the recovery of fees incurred for defending against 
Hark’n’s trademark infringement and false designation of origin claims. Despite this lack of 
clarity, because the court ultimately finds that the Bad Faith Exception does not apply here, the 
court’s ruling is not affected by whether the exception is limited to two causes of action or more.  
      Second, Orange Whip appears to seek fees not only under the Bad Faith Exception under 
federal law, but also under Utah Code § 78B-5-825, which is Utah’s bad-faith statute (see ECF 
386 at 26 (“Consistent with the common law principles discussed above, Utah Code section 78B-
5-825 states that a district court may award attorney fees. . .”)). To the extent that Orange Whip is 
seeking fees under § 78B-5-825, this assertion fails as a matter of law as § 78B-5-825 has no 

application in federal court. See Taylor v. Nat’l Collegiate Student Loan Tr. 2007-1, Case No. 
2:19-CV-00120-BSJ, 

2021 WL 872494

, at *2 (D. Utah Mar. 9, 2021) (“[T]he Tenth Circuit has 
explained that in diversity cases, fees that are based on a litigant’s bad faith conduct are procedural 
fees and are thus governed by the federal rules . . . [Thus, § 78B-5-825 is] inappropriate to justify 
[a] sanction . . . for bad faith.”) (citing Chieftain Royalty Co. v. Enervest Energy Institutional Fund 
XIII-A, L.P., 

888 F.3d 455

, 460–61 (10th Cir. 2017)). Therefore, the court makes no mention of § 
78B-5-825 in the analysis below and only analyzes whether the Bad Faith Exception applies under 
federal law. For the reasons stated below, the court finds that it does not.  
      When considering the circumstances under which a court may award attorney fees, the 
basic point of reference is “the bedrock principle known as the ‘American Rule’: Each litigant 
pays his own attorney fees, win or lose, unless a statute or contract provides otherwise.” Kornfeld 
v. Kornfeld, 393 Fed. App’x, 575, 578 (10th Cir. 2010) (quoting Hardt v. Reliance Standard Life 

Ins. Co., 

130 S.Ct. 2149

, 2156–57 (2010)). “An exception to this general rule, however, grants 
courts the power to award attorney fees when the interests of justice so require, particularly where 
a litigant has acted ‘in bad faith, vexatiously, wantonly, or for oppressive reasons.’” Mt. W. Mines, 
Inc. v. Cleveland-Cliffs Iron Co., 

470 F.3d 947

, 953–54 (10th Cir. 2006) (quoting Sterling Energy, 
Ltd. v. Friendly Nat’l Bank, 

744 F.2d 1433, 1435

 (10th Cir. 1984)). The district court has broad 
discretion in determining whether this exception applies. Sterling Energy, 744 F.2d at 1435–6 
(10th Cir. 1984) (citing Ryan v. Hatfield, 

578 F.2d 275, 277

 (10th Cir. 1978)).  
      The Tenth Circuit “sets a high bar for bad faith awards, ‘otherwise those with colorable, 
albeit novel, legal claims would be deterred from testing those claims in a federal court.’” Mt. W. 
Mines, 

470 F.3d at 954

 (quoting Sterling Energy, 

744 F.2d at 1435

). Consequently, the Tenth 

Circuit has repeatedly held that this exception only applies in the most exceptional circumstances 
and only when there is clear evidence that the party acted with bad intent or improper purpose. See 

id.

 (“Accordingly, ‘we have insisted that a trial judge make a finding of bad intent or improper 
motive.’” (quoting Sterling Energy, 

744 F.2d at 1437

)); see also F.D.I.C. v. Schuchmann, 

319 F.3d 1247, 1254

 (10th Cir. 2003) (reversing the district court’s award of fees under the bad faith 
exception because the evidence of bad faith “fell short of the clear evidence of bad intent that is 
required to award attorney fees and costs.”).                             
      When a party is asserting that a specific claim was brought in bad faith, as opposed to 
specific conduct, the Tenth Circuit employs the following two-pronged test to determine whether 
the claim was brought in bad faith: “A party acts in bad faith only when the claim brought ‘is 
entirely without color and has been asserted wantonly, for purposes of harassment or delay, or for 
other improper reasons.’” Freecom, 401 F.3d at 1201 (quoting Sterling Energy, 

744 F.2d at 1435

). 
The district court must find that “clear evidence” supports each prong. 

Id.

 (“‘[Attorney fees] are 

awarded only when there is “clear evidence” that challenged actions are taken entirely without 
color and are pursued for [improper] reasons [.]’”) (quoting Autorama, 802 F.2d at 1288).  
         1.   There is no clear evidence that Hark’n acted with bad intent by failing to 
              produce a representative sample.                           

      Orange Whip alleges that Hark’n acted in bad faith by failing to produce representative 
samples during discovery despite multiple assurances that it would do so, and then later claiming 
it had no memory of discussing the samples (ECF 386 at 32). Orange Whip asserts that withholding 
the samples deprived Orange Whip of a meaningful defense and deprived the jury of the ability to 
make an accurate conclusion (id). Hark’n gives many reasons why it did not act in bad faith by 
failing to produce representative samples, but it primarily relies on the assertion that Orange Whip 
only made “informal requests” for the samples (ECF 403 at 28–30; ECF 352 at 26–33).  
      The history regarding the parties’ discussion of representative samples is as follows. In 
January 2023, Orange Whip served its first set of discovery requests requesting for production 
“[r]epresentative samples of all tags, labels, signs, and packaging that have displayed or that will 
display the Asserted Marks, including documents sufficient to show every manner of presentation 
of the Asserted Marks in such materials” (ECF 218-5 at 9 request No. 4 and ECF 386 at 28). 
Hark’n indicated that it would “produce responsive documents” (ECF 193-3 and ECF 386 at 28). 
Over a year later, after not receiving the samples, Hark’n repeated its request in May and July of 
2024 (ECF 193-3 at 3; ECF 193-4 at 2; ECF 386 at 32–39). At a meet and confer, which took place 
on May 9, 2024, Hark’n’s counsel expressly stated that he would provide Orange Whip with the 
samples (see ECF 246). Despite Orange Whip’s multiple requests, representative samples were 
never  produced.  Hark’n’s  counsel  asserted  that  they  had  no  recollection  of  discussion  on 
representative samples and substantiated this assertion by submitting declarations from attorneys 
Alan Bradshaw (Bradshaw), Carson Fuller (Fuller), and Hark’n’s former attorney Stephen Bean 

(Bean), stating no recollection of a discussion on representative samples (ECF 218-2, 3 & 4). 
      Accordingly, Orange Whip filed Motion in Limine No. 11 (ECF 193) requesting the 
court to “exclude representative samples from trial” because Hark’n “failed or refused to produce 
them in discovery” (ECF 193). This court granted Orange Whip’s Motion in Limine, because the 
introduction of the samples so close to trial would create prejudice with insufficient time before 
the trial to cure the prejudice (ECF 277 at 13). In addition to finding prejudice, this court noted 
that: “failure to produce these samples also appears to have been willful and not in good faith” 
because the declarations of Bradshaw, Fuller, and Bean were directly contradicted by Bean’s 
agreement to send “five or six different configurations” to Orange Whip, at the close of the meet 
and confer on May 9, 2024 (ECF 248).                                      

      The record indicates that Hark’n, despite multiple assertions that it would send a sample, 
never actually did so. The record also indicates that attorneys Bradshaw, Fuller, and Bean provided 
inaccurate  sworn  declarations  regarding  the  parties’  discussions  about  the  samples. 
Notwithstanding, the court does not find the Tenth Circuit’s high bar of clear evidence of 
subjective bad intent. In the Tenth Circuit, a party acts in bad faith “‘only when there is “clear 
evidence” that challenged actions are taken entirely without color and are pursued for reasons of 
harassment or delay.’” Schuchmann, 

319 F.3d at 1250

 (quoting Autorama, 802 F.2d at 1288). 
Thus, district courts in this circuit are “required to explicitly find improper motive. ‘Suspicions’ 
or the ‘appearance’ of such a motive is not enough.” Id. at 1253 (10th Cir. 2003). Hark’n’s actions 
do not meet this standard.                                                
      The jury was instructed to determine whether Orange Whip had infringed upon Hark’n’s 
trade dress, which Orange Whip alleges was the “configuration” of Hark’n’s bands. Orange 

Whip’s main contention is that without the physical samples, the jury was confused about “the 
actual product configuration” (ECF 386 at 34). Orange Whip, however, never formally requested 
representative samples of Hark’n’s product configurations. Orange Whip’s only formal request for 
samples was in January 2023, where it specifically asked for “[r]epresentative samples of all tags, 
labels, signs, and packaging that have displayed or that will display the Asserted Marks, including 
documents sufficient to show every manner of presentation of the Asserted Marks in such 
materials” (ECF 218-5 at 5 (emphasis added)). In this formal request, Orange Whip sought 
representative samples of Hark’n’s “Asserted Marks,” not asserted trade dress. 
      Although Hark’n’s counsel agreed to provide Hark’n with representative samples of 
“five or six configurations,” this was an informal agreement between the parties not linked to any 

formal discovery request. Orange Whip’s decision not to obtain a court order requiring production 
further suggests this was, at most, an informal discovery dispute. While Hark’n’s actions were 
unprofessional,  the  court  cannot  find  “clear  evidence”  of  subjective  bad  faith,  wantonness, 
harassment, or any improper motive. Rather, the court’s ruling finding the “failure to produce these 
samples also appears to have been willful and not in good faith” was limited to the conflict in the 
attorney declarations versus the transcript, and not broader bad faith, wantonness, or harassment. 
      Moreover, the court’s assertion of an “appearance” of bad faith is not dispositive. 
According to Schuchmann, an “appearance” of bad faith is insufficient; the court must establish 
actual improper intent, supported by clear evidence. Schuchmann, 

319 F.3d at 1253

 (ruling that 
district courts in this circuit are “required to explicitly find improper motive. ‘Suspicions’ or the 
‘appearance’ of such a motive is not enough”). Furthermore, when the court made its passing 
statement on bad faith, it was not reviewing the record under the Tenth Circuit’s stringent 
definition of bad faith, which requires an explicit finding of improper motive. As detailed above, 

when the record is examined under this standard, it shows no clear evidence of improper intent. 
         2.   There is no clear evidence that Hark’n brought its trademark and false 
              designation of origin claims in bad faith.                 

      Orange Whip argues that Hark’n’s claims for false designation of origin and trademark 
infringement were brought in bad faith because they lacked any “evidentiary and legal foundation” 
and were made without “an honest belief in the propriety of the activities in question.” (ECF 386 
at 37 (quoting Laws v. Grayeyes, 

498 P.3d 410, 419

 (Utah 2021))). Accordingly, Orange Whip 
requests an award of attorney fees incurred in defending against these claims. 
      Hark’n’s trademark and false designation of origin claims were dismissed by summary 
judgment because the court determined that there was no evidentiary support for either claim (see 
ECF 251 at 25, 29). Although these claims were dismissed, Orange Whip must show that the 
claims were (1) brought entirely without color and (2) have been asserted for improper reasons. 
Freecom, 401 F.3d at 1201 (quoting Sterling Energy, 

744 F.2d at 1435

).    
      Orange Whip’s argument is flawed for two reasons. First, to support its position, Orange 
Whip relies on Laws, but it is a Utah Supreme Court case exclusively addressing Utah’s bad-faith 
statute, Utah Code § 78B-5-825. 

498 P.3d at 418, 423

 (finding that the district court did not err by 
relying on section 78B-5-825).                                            
      Second, even if Orange Whip had supported its arguments with valid authority, its 
Motion primarily asserts that the claims were brought without evidence (i.e., without color) but 
fails to make any reasonable arguments that they were brought for improper reasons (see ECF 386 
at 37–39). Orange Whip’s main argument is that fees are warranted because Hark’n “had no 
evidence and lacked ‘an honest belief in the propriety of the activities in question.’” (ECF 386 at 
37) (quoting Laws, 

498 P.3d at 419

). However, even if Orange Whip were correct and the claims 
were brought without color, the court must still find subjective wrongdoing. See Mt. W. Mines, 

Inc., 

470 F.3d at 954

 (finding that even when a claim is “so frivolous as to reflect impermissible 
conduct,” the court must still make a finding of subjective wrongdoing. (quoting Rutledge v. 
Sunderland, 

671 F.2d 377, 382

 (10th Cir. 1982))).                         
      The only evidence suggesting these claims were brought for improper reasons is that 
they were dismissed for lack of evidentiary support. This alone is insufficient to support a finding 
of improper motive. See Mt. W. Mines, Inc., 

470 F.3d at 954

. In fact, the record indicates that 
Hark’n asserted these claims under a good faith belief that Orange Whip had given customers the 
impression that they had received a product sourced by Hark’n, and that Orange Whip had used 
Hark’n’s trademarks to sell its products. Although Hark’n could not support these claims, there is 
no evidence indicating conscious wrongdoing by Hark’n in bringing these claims. See Sterling 

Energy, 

744 F.2d at 1437

. The court thus concludes there is no clear evidence that Hark’n brought 
its trademark and false designation of origin claims in bad faith.        
                    III.  CONCLUSION AND ORDER                           
      For the foregoing reasons, Orange Whip’s Motion for Attorney Fees (ECF 386) is 
GRANTED IN PART and DENIED IN PART, and the court ORDERS as follows:      
 1.  Orange Whip’s requests for fees under the PDMA and the Bad Faith Exception to the 
    American Rule are DENIED.                                            
2.  Orange Whip’s fees under the Defend Trade Secrets Act (DTSA), and the Utah Uniform 
  Trade Secrets Act (UUTSA) are GRANTED. The court ORDERS Hark’n to pay Orange 
  Whip $7,076.00 in attorney fees. 
  IT IS SO ORDERED 
        DATED this 24 March 2026. 

                                Chief Magistrate Judge Cecilia M. Romero 
                                United States District Court for the District of Utah 

                                  23