386 U.S. 714 (1967), 214, Fleischmann Distilling Corp. v. Maier Brewing Co.

Docket Nº:No. 214
Citation:386 U.S. 714, 87 S.Ct. 1404, 18 L.Ed.2d 475
Party Name:Fleischmann Distilling Corp. v. Maier Brewing Co.
Case Date:May 08, 1967
Court:United States Supreme Court

Page 714

386 U.S. 714 (1967)

87 S.Ct. 1404, 18 L.Ed.2d 475

Fleischmann Distilling Corp.


Maier Brewing Co.

No. 214

United States Supreme Court

May 8, 1967

Argued February 14, 1967




Respondents were held to have deliberately infringed petitioners' Lanham Act trademark rights. The District Court then awarded petitioners reasonable attorney's fees, relying upon case authority to the effect that such an award is permissible when the infringement is "deliberate." The Court of Appeals, having granted an interlocutory appeal, reversed. The Lanham Act provides, in § 35, for compensatory recovery measured by the defendant's profits accruing from his infringement, the costs of the action, and damages which may be trebled in appropriate circumstances.

Held: Attorney's fees are not recoverable under the Lanham Act. The meticulous statutory provisions set forth in § 35 are exclusive of any other monetary remedies for violation of rights protected by the Act. Pp. 717-721.

359 F.2d 156, affirmed.

WARREN, J., lead opinion

MR. CHIEF JUSTICE WARREN delivered the opinion of the Court.

This is a trademark case arising under the Lanham Act (60 Stat. 427, 15 U.S.C. § 1051-1127), in which our sole concern is with the relief that may be granted when deliberate infringement of a valid trademark has been established. The question is whether federal courts have power, in that context, to award reasonable attorney's fees as a separate element of recovery in light of § 35 of

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the Act, which enumerates the available compensatory remedies.1

The scope of petitioners'2 trademark and the fact of respondents'3 infringement were determined by the Court of Appeals for the Ninth Circuit at an earlier stage of this litigation. 314 F.2d 149, cert. denied, 374 U.S. 830 (1963). The case was then remanded to the District Court for the Southern District of California which, after noting that the Court of Appeals had characterized respondents' infringing activities as deliberate, entered its own finding to that effect. In accord with prior rulings of certain [87 S.Ct. 1406] courts of appeals4 and district

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courts5 that attorney's fees could be recovered if deliberate or willful infringement were established, the District Court awarded petitioners $60,000 after determining that such sum constituted reasonable attorney's fees for prosecution of this litigation. Respondents sought an immediate interlocutory appeal, although petitioners' rights to an accounting and other relief remained for determination. The Court of Appeals first dismissed the appeal as premature, but, after the District Court issued a certificate under 28 U.S.C. § 1292(b),6 authorization was granted. Sitting en banc the Court of Appeals reversed the award of attorney's fees, holding that, under the Lanham Act, federal courts are without power to make such awards. 359 F.2d 156 (1966). We granted certiorari to resolve the conflict between that holding and the prior decisions of federal courts upon which the

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District Court had relied. 385 U.S. 809 (1966). For the reasons elaborated below, we affirm.

As early as 1278, the courts of England were authorized to award counsel fees to successful plaintiffs in litigation.7 Similarly, since 1607, English courts have been empowered to award counsel fees to defendants in all actions where such awards might be made to plaintiffs.8 Rules governing administration of these and related provisions have developed over the years. It is now customary in England, after litigation of substantive claims has terminated, to conduct separate hearings before special "taxing Masters" in order to determine the appropriateness and the size of an award of counsel fees. To prevent the ancillary proceedings from becoming unduly protracted and burdensome, fees which may be included in an award are usually prescribed, even including the amounts that may be recovered for letters drafted on behalf of a client.9

Although some American commentators have urged adoption of the [87 S.Ct. 1407] English practice in this country,10 our courts have generally resisted any movement in that direction. The rule here has long been that attorney's fees are not ordinarily recoverable in the absence of a statute or enforceable contract providing therefor. This Court first announced that rule in Arcambel v. Wiseman,

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3 Dall. 306 (1796), and adhered to it in later decisions. See, e.g., Haguenstein v. Lynham, 100 U.S. 483 (1880); Stewart v. Sonneborn, 98 U.S. 187 (1879); Oelrichs v. Spain, 15 Wall. 211 (1872); Day v. Woodworth, 13 How. 363 (1852). In support of the American rule, it has been argued that, since litigation is, at best, uncertain, one should not be penalized for merely defending or prosecuting a lawsuit, and that the poor might be unjustly discouraged from instituting actions to vindicate their rights if the penalty for losing included the fees of their opponents' counsel. Cf. Farmer v. Arabian American Oil Co., 379 U.S. 227, at 235 (1964); id. at 236-239 (concurring opinion of Mr. Justice Goldberg). Also, the time, expense, and difficulties of proof inherent in litigating the question of what constitutes reasonable attorney's fees would pose substantial burdens for judicial administration. Oelrichs v. Spain, supra, at 231.

Limited exceptions to the American rule have, of course, developed.11 They have been sanctioned by this Court when overriding considerations of justice seemed to compel such a result. In appropriate circumstances, we have held, an admiralty plaintiff may be awarded counsel fees as an item of compensatory damages (not as a separate cost to be taxed). Vaughan v. Atkinson, 369 U.S. 527 (1962). And in a civil contempt action occasioned by willful disobedience of a court order, an award of attorney's fees may be authorized as part of the fine to be levied on the defendant. Toledo Scale Co. v. Computing Scale Co., 261 U.S. 399, 426-428 (1923). The case upon which petitioners here place their principal reliance --

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Sprague v. Ticonic National Bank, 307 U.S. 161 (1939) -- involved yet another exception. That exception had previously been applied in cases where a plaintiff traced or created a common fund for the benefit of others as well as himself. Central Railroad & Banking Co. v. Pettus, 113 U.S. 116 (1885); Trustees v. Greenough, 105 U.S. 527 (1882). In that situation to have allowed the others...

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