Page 8 - The Katten Kattwalk - Summer 2025 - Issue 29

Punitive Damages in Trademark Litigation:
A Shift in the Legal Landscape? (continued)
Getty Petroleum Corp. v. Bartco Petroleum Corp., 858
F.2d 103 (2d Cir. 1988), and Getty Petroleum Corp. v.
Island Transport Corp., 862 F.2d 10 (2d Cir. 1988), held
that punitive damages were not available under the
Lanham Act for trademark infringement. Similarly, in
Estate of Bishop v. Equinox International Corp., 256 F.3d
1050 (10th Cir. 2001), the Tenth Circuit declined to
grant punitive damages. However, the Seventh Circuit
in JCW Investments, Inc. v. Novelty, Inc., 482 F.3d 910
(7th Cir. 2007), found that while the Lanham Act does
not authorize punitive damages, such damages may
still be available for accompanying state law claims, a
reasoning echoed in Curry.
Another case that demonstrates an evolving stance
on punitive damages is Lontex Corp. v. Nike, Inc., 107
F.4th 139 (3d Cir. 2024), where the court upheld a
jury’s punitive damages award after finding that Nike
acted with reckless indifference to the plaintiff’s
rights. In that case, Nike continued using the “Cool
Compression” mark despite receiving a cease and
desist letter, and the court found that such conduct
justified punitive damages under Pennsylvania law.
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Implications for Trademark Disputes
The Curry decision highlights the significance of
both federal and state law in shaping the remedies
available in trademark litigation. While the Lanham
Act provides compensatory damages, disgorgement
of profits, and, in certain cases, enhanced statutory
damages, it does not authorize punitive damages.
However, this limitation does not preclude the
availability of punitive damages through state-law
claims where applicable legal standards are met.
The Seventh Circuit’s ruling confirms that plaintiffs
may seek punitive damages under state law when
they can establish willful or egregious conduct by the
defendant. At the same time, it underscores the need
for courts to carefully scrutinize such claims to ensure
that any punitive award aligns with constitutional
due process standards. The court’s reasoning follows
prior precedent, particularly JCW Investments,
Inc. v. Novelty, Inc., which affirmed that while the
Lanham Act itself does not provide for punitive
damages, state-law claims may allow for such relief in
appropriate circumstances.