## Facts

- Getty Petroleum Corp. held exclusive rights to use the “Getty” trademarks in the northeastern United States as successor to Getty Oil Company’s regional marketing business.
- Bartco Petroleum Corp. and related defendants operated three New York service stations under Getty franchise agreements.
- From February 1985 to April 1986, defendants sold non-Getty gasoline while continuing to use Getty signage, marks, and trade dress, creating the appearance that the fuel was Getty gasoline.
- Getty sued for federal trademark infringement under Lanham Act § 32, false designation/description under § 43(a), and related state-law unfair competition and deceptive practices.
- A jury found defendants’ infringement was “willful, intentional and with a callous and reckless disregard” of Getty’s rights.
- The district court treated the case as “exceptional” under Lanham Act § 35, awarded attorney’s fees, and allowed monetary relief that included punitive damages after a second trial limited to punitive damages.

## Issues

1. Whether Lanham Act § 35 (15 U.S.C. § 1117) authorizes punitive damages for willful infringement of a registered trademark.
2. Whether, and under what limits, a court may enhance monetary relief under § 35 without imposing an impermissible punitive remedy.
3. Whether the case qualified as “exceptional” to permit an award of attorney’s fees under § 35, and whether the fee determination required reconsideration.

## Decision

- The court held Lanham Act § 35 does not authorize punitive damages, even for willful infringement, and reversed the punitive damages award.
- The court vacated and remanded the attorney’s fee award for reconsideration because the district court’s fee analysis was intertwined with its erroneous view that punitive damages were available.
- The court remanded for reconsideration of any enhanced compensatory recovery to ensure adjustments were remedial and consistent with § 35’s statutory limits.
- The liability finding of willful trademark infringement was not disturbed; the appeal concerned remedies.

## Legal Principles

- Lanham Act § 35 provides a remedial scheme centered on recovery of infringer’s profits, plaintiff’s actual damages, and costs; it does not include punitive or exemplary damages.
- When Congress specifies remedies in a detailed federal statutory scheme, courts should not infer additional monetary remedies not stated in the statute, particularly punitive awards.
- Enhancements of monetary awards under § 35 must be tied to equitable, remedial objectives (compensation and preventing unjust enrichment) and may not function as disguised punishment.
- Attorney’s fees in Lanham Act cases are available only in “exceptional” cases; willful infringement may support that designation, but the fee award must rest on the statutory standard rather than a punitive rationale.

## Conclusion

The Second Circuit ruled that punitive damages are unavailable under Lanham Act § 35, reversed the punitive award, and remanded for the district court to reassess attorney’s fees and any enhancement of compensatory relief within the statute’s compensatory framework.


Getty Petroleum Corp. v. Bartco Petroleum Corp., 858 F.2d 103 (2d Cir. 1988)