Fleischmann Distilling Corporation v. Maier Brewing Company/Dissent Stewart

by Potter Stewart

United States Supreme Court

386 U.S. 714

Fleischmann Distilling Corporation  v.  Maier Brewing Company

 Argued: Feb. 14, 1967. --- Decided: May 8, 1967

Mr. Justice STEWART, dissenting.

Until this case, every federal court that has faced the issue has upheld judicial power to award counsel fees in trademark infringement cases. ^[1] In order to overrule that unbroken line of authority, I would have to be satisfied that Congress has clearly declared that counsel fees may not be awarded. The Court's opinion does not convince me that Congress has made any such declaration. ^[2]

It is not enough to say that Congress did not expressly provide for counsel fees in the original Lanham Act and has not subsequently amended the Act to authorize their allowance. There are many reasons for rejecting that kind of approach to statutory interpretation in this case. The Court acknowledges that a pre-Lanham Act decision-Aladdin Mfg. Co. v. Mantle Lamp Co., 116 F.2d 708 (C.A.7th Cir.)-held counsel fees were recoverable in a trademark action. ^[3] It seems to me reasonable to assume that when Congress in the Lanham Act empowered courts to grant relief 'subject to the principles of equity' ^[4] it was aware of the Aladdin decision and intended to preserve the rule of that case. Other provisions of the statute support this view of the underlying congressional intent. For example, the Act provides:

'If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case.' ^[5]

Allowing the court to consider the 'circumstances of the case' to arrive at the amount of the judgment for the plaintiff hardly comports with the Court's view that Congress rigidly limited the scope of remedies available in trademark litigation. I cannot say, in view of these provisions, that Congress intended sub silentio to overrule the Aladdin case. ^[6]

The argument that Congress has declined to amend the Act to provide explicitly for counsel fees is hardly determinative. For Congress can be assumed to have known that the federal courts were consistently exercising the power to award counsel fees after the Act's passage. The failure to amend the statute to do away with this judicial power speaks as loudly for its recognition as the failure to pass the bills referred to by the Court speaks for the contrary conclusion.

I respectfully dissent.

Notes

1. Footnotes 4 and 5 of the Court's opinion, ante, pp. 715-716, set out the copious authority supporting the power in trademark litigation to awrd counsel fees in appropriate circumstances.
2. This case does not involve the 'adoption of the English practice in this country,' but simply whether the established American practice of awarding counsel fees in appropriate trademark cases is to be repudiated.
3. See, ante, pp. 715-716, n. 4.
4. Section 35 of the Lanham Act, 60 Stat. 439, 15 U.S.C. § 1117.
5. Ibid.
6. This was the reasoning of the District Court in A. Smith Bowman Distillery, Inc. v. Schenley Distillers, Inc., 204 F.Supp. 374, 377:

'Mere silence and inaction by Congress cannot be held to have repealed what has been found to be a well-established judicial power. Even though the Lanham Act may have been intended to be an integrated and comprehensive set of rules for trademark regulation and litigation to the exclusion of all conflicting rules, the retention of discretionary judicial power over the fixing of costs does not seem such a threat of inconsistency that it should be implication be held pre-empted or repealed by the Act. Some more positive action on the part of the legislature is necessary to indicate the Congressional intent to regulate what has long been an orthodox judicial function.' (Footnote omitted.)