Getty Petroleum Corp v. Noonan Trans.

• Court: Court of Appeals for the First Circuit
• Decided: June 13, 1995
• Docket: 94-2241
• Status: Published

Opinion

USCA1 Opinion

UNITED STATES COURT OF APPEALS
                            UNITED STATES COURT OF APPEALS

                                FOR THE FIRST CIRCUIT
                                FOR THE FIRST CIRCUIT

                                 ____________________



        No. 94-2241



                             GETTY PETROLEUM CORPORATION,



                                 Plaintiff, Appellee,



                                          v.



                              ARIS GETTY, INC., ET AL.,



                                Defendants, Appellees.



                                 ____________________


J.P. NOONAN TRANSPORTATION, INC.,



                                Defendant, Appellant.



                                 ____________________


APPEAL FROM THE UNITED STATES DISTRICT COURT



                          FOR THE DISTRICT OF MASSACHUSETTS



                   [Hon. Douglas P. Woodlock, U.S. District Judge]
                                              ___________________



                                 ____________________



                                        Before



                                Boudin, Circuit Judge,
                                        _____________

                      Aldrich and Bownes, Senior Circuit Judges.
                                          _____________________



                                 ____________________


Natasha  C.  Lisman  with whom  William  L.  Boesch  and Sugarman,
            ___________________             ___________________      _________

        Rogers, Barshak & Cohen, P.C. were on brief for appellant.
        _____________________________

            Dimitrios Ioannidis  with whom  Michael S. Field, Beth  Pirro Cook
            ___________________             ________________  ________________

        and  Field & Schultz were on brief  for appellees Aris Getty, Inc., et
             _______________

        al.



                                 ____________________



                                    June 13, 1995

                                 ____________________



-2-



ALDRICH,  Senior  Circuit Judge.    Two defendants,
                                _____________________



            J.P. Noonan Transportation, Inc.,  a common carrier, and Aris



            Getty, Inc., jointly with its owner, George Varelis ("Aris"),



            were found liable to Getty Petroleum Corporation ("Getty"), a



            well-known  vendor  of gasoline,  under  the  Lanham Act,  15



            U.S.C.      1114  and   1125,  for   trademark  infringement.



            Plaintiff's  damages were  settled via  separate negotiations



            with each defendant.   Noonan then cross-claimed against Aris



            for  indemnification.   In  a thorough  opinion the  district



            court disagreed and  granted summary judgment  for Aris.   We



            affirm.



                      The facts are simple.   In 1981 Varelis formed Aris



            Getty, Inc., and  was licensed  by Getty to  operate a  Getty



            filling station.   It  prominently displayed the  usual Getty



            pole  sign, and  its gasoline  pumps and  service attendants'



            uniforms  bore the  Getty  name  and  marks.    Aris  had  an



            arrangement with a local distributor to supply  it with Getty



            gasoline.   In  1984  Aris terminated  its relationship  with



            Getty  and thereafter  began to  purchase  unbranded gasoline



            through  J.P. Noonan  from  another distributor.   Except  to



            change  the markings on its pumps to "Aris Gas," Aris made no



            change in  the appearance of its station,  signs, or employee



            uniforms.



                      The  court found  that Noonan  "knowingly delivered



            unbranded gasoline to Aris Getty" while fully aware that Aris


-3-



"was not an authorized Getty franchise."  Although it murmurs



            at  the  court's  conclusion,  Noonan  knew  that  many  Aris



            customers believed  they were receiving Getty  gasoline.  Any



            other  contention  would be  fanciful.   Thus,  as  the court



            found, Noonan, jointly with Aris, violated the Lanham Act, 15



            U.S.C.    1114(1),  and  was   contributorially  responsible.



            Inwood Laboratories Inc. v. Ives Laboratories, Inc., 456 U.S.
            ________________________    _______________________



            844 (1982).



                           [L]iability       for      trademark

                      infringement can extend beyond  those who

                      actually  mislabel goods with the mark of

                      another.  Even if a manufacturer does not

                      directly  control others in  the chain of

                      distribution, it can be  held responsible

                      for  their  infringing  activities  under

                      certain  circumstances.     Thus,  if   a

                      manufacturer or distributor intentionally

                      induces another to infringe  a trademark,

                      or if it continues  to supply its product

                      to  one whom  it knows  or has  reason to

                      know    is    engaging    in    trademark

                      infringement,    the   manufacturer    or

                      distributor      is      contributorially

                      responsible for any harm done as a result

                      of the deceit.



            456 U.S. at 853-54.



                      It is true that,  as a distributor, Noonan  did not



            have title to the  gasoline.  However, it had,  and supplied,



            an essential factor -- physical possession of the property to



            which the trademark was  to be attached.  Liability  -- which



            is not questioned -- was thus direct, for an affirmative act,



            and not merely vicarious by  operation of law for the  act of



            another.


-4-



In this circumstance  Noonan's much  cited case  of



            Garbincius  v. Boston  Edison Co.,  621  F.2d 1171  (1st Cir.
            __________     __________________



            1980), is of no assistance to it, but quite the contrary.  In



            general indemnity is not allowed when liability is based upon



            one's own fault.1



                      Noonan claims  two other  strings to its  bow, both



            based  on the great disparity  between Aris's profits and its



            own meager ones.   We  assume the disparity.2   However,  the



            Massachusetts court's dictum of a claimed  indemnitee's fault



            being  disregardable in  "exceptional  cases" is  limited  to



            fault that  is  "insignificant in  relation  to that  of  the



            indemnitor."   Rathbun v. Western Massachusetts Electric Co.,
                           _______    __________________________________



            395 Mass.  361, 364, 479 N.E.2d 1383, 1385 (1985).  We regard



            this as  relating to conduct, not  to profits.  We  could not



            label  wrongful   delivery  for  five   years  insignificant.



            Equally we see  no basis  for Noonan's claim  that its  small


____________________



            1.        Indemnity is permitted only when one does

                      not  join in  the  negligent  act but  is

                      exposed   to   derivative  or   vicarious

                      liability   for   the  wrongful   act  of

                      another.   In  such cases  the  court has

                      held  that  plaintiffs  in the  indemnity

                      actions  had  no  participation   in  the

                      negligence of the defendants.



            Garbincius, 621 F.2d at 1176 (citation omitted).
            __________



            2.  How Aris succeeded in obtaining a much smaller settlement

            figure than Noonan  escapes us, but  we think it  irrelevant.

            These were independent agreements, separately arrived at, and

            there  is  no question  of  Noonan's  payment having  reduced

            Aris's.



                                         -5-



profits were "special circumstances"  that implied a right of



            indemnity.  If  Noonan wanted protection it could  have asked



            for it as part of its contract.



                      Affirmed.
                      ________


-6-