Fleischmann Distilling Corporation v. Maier Brewing Company

PETITIONER: Fleischmann Distilling Corporation
RESPONDENT: Maier Brewing Company
LOCATION: Leon County Jailhouse

DECIDED BY: Warren Court (1965-1967)
LOWER COURT: United States Court of Appeals for the Ninth Circuit

CITATION: 386 US 714 (1967)
ARGUED: Feb 14, 1967
DECIDED: May 08, 1967

Facts of the case


Media for Fleischmann Distilling Corporation v. Maier Brewing Company

Audio Transcription for Oral Argument - February 14, 1967 in Fleischmann Distilling Corporation v. Maier Brewing Company

Earl Warren:

Number 214, the Fleischmann Distilling Corporation et al., Petitioners, versus Maier Brewing Company, et al.

Mr. Lasky.

Moses Lasky:

Mr. Chief Justice, may it please the Court.

It was nearly nine years ago that the makers and American distributors of the famous ‘Black & White' whiskey sought to have the respondents discontinue an infringement of the ‘Black & White' label on alcoholic beverages.

As the District Court has said in the record, “We used every reasonable effort to obtain some reasonable accord about that without bringing a suit.

But we were defied.”

The suit was brought for trademark infringement.

And as a result of the decision of the Ninth Circuit about three years ago to which this Court then denied review in 1963, we obtained an injunction against the respondents pirating the ‘Black & White' trademark on alcoholic beverages.

Upon concurrent findings of both courts below, it is the law of this case that the respondents' conduct was not only an infringement but that it was willful, fraudulent, and bad faith.

And that the only rational explanation of respondents' conduct in adopting the name ‘Black & White' in the first place and then in persistently defying the petitioners when asked to cease and even of carrying the case or attempting to carry it up to this Court was that they were trying to trade on the real ‘Black & White's goodwill, in other words if this was a case of a careless and recalcitrant attitude, a willful and persistent defiance.

Now, if the Court please, for years, it has been accepted indeed as harmful blow that in trademark infringement suits in the federal courts in equity, federal courts have the power in appropriate and proper circumstances to assess against the infringing defendants, the litigation expenses including attorney's fees which their conduct has imposed upon the plaintiff.

The circumstance on which that power could be and should be exercised has been variously expressed.

But I think they can all be summed up in terms of willful conduct -- willful misconduct where the infringer has acted knowingly and with deliberate purpose to fill the goodwill of the trademark owner and in persistent defiance of the owner's rights.

Now, until this case now before the Court came to the court below, every Federal Court of Appeals had to dealt with this matter, every -- at least every Court of Appeals in which there is any report of the matter, and numerous District Courts have upheld the power.

And it has been repeatedly been exercised below and above where awards of fees have been affirmed and additional awards have been granted.

Our briefs cites to the Court decisions of the First, Second, Third and Seventh Circuits in trademark cases indeed from the First -- from the Second Circuit, a decision on which this Court denied review just last term.

We cite decisions on unfair competition cases from the Sixth and the Seventh Circuit.

And one from the Second Circuit handed down just two months ago, a week or two after the petitioner's opening brief was filed in this Court where an award of attorney's fees was justified by the Court because defendant's conduct was described as intentional, vexatious, and fraudulent.

We cited decisions from the Fourth Circuit which relies on these very trademark decisions.

And until this case, that had also been the settled law in the whole series of decisions in the Ninth Circuit.

There were no cases to the contrary.

And so after the remand from the Court of Appeals several years ago, we applied to the District Court to enter judgment accordingly and we got our injunction against infringement.

And proceeding upon this solid and unanimous chain of authority, the District Court then appraised the circumstances and determined in the exercise of its discretion and its appraisal of the facts that an award of fees and litigation expenses should be made and an award was entered.

An interlocutory appeal was taken to the Ninth Circuit, from that order it allowed and the Ninth Circuit reversed.

It overruled its prior decisions.

In so many words, it said they were bad law.

And it looked at the decisions from the other Courts of Appeals.

And it said as to them, they are not well considered.

It said it would not follow them and its conclusion was this, “We hold that attorney's fees are not recoverable in trademark infringement cases under the Lanham Act primarily because the Congress has not provided for them”.

In other words, the case as it now comes before this Court for consideration presents about as fundamental question in the administration of justice as you could find, namely, a question of the power, of an equity court because the Court of Appeals has held that in no circumstances whatever, has the federal court the power to award attorney's fees.