D. Expansion of Inwood Standard to “Non-Product” Cases: The “Direct Control and Monitoring” Test: 4. Transporters
A carrier who delivers trademark-infringing goods to someone it knows is engaging in trademark infringement can be held contributorily liable for that infringement. See Getty Petroleum Corp., v. Aris Getty, Inc., 55 F.3d 718, 719 (1st Cir. 1995). In Getty, one of the defendants, “Aris Getty,” was a gas station whose owner was licensed by the plaintiff “Getty” to operate a Getty filling station. After a few years of operation, Aris Getty terminated its relationship with the plaintiff and began to purchase unbranded gasoline through the other defendant “Noonan,” a common carrier. Getty, supra at 719. Although Aris Getty was no longer an authorized Getty franchise, it made no changes in the appearance of its station, signs or employee uniforms to indicate that change with the exception of changing the markings on its pumps to “Aris Gas,”. Id. Getty brought a trademark infringement action against both defendants, and settled with each of them independently. The carrier then sought indemnification from Aris by way of cross-claim. The district court rejected the motion, granting summary judgment for Aris, and the common carrier appealed.
The First Circuit agreed with the district court, based on that court’s finding that Noonan ““knowingly delivered unbranded gasoline to Aris Getty” while fully aware that Aris “was not an authorized Getty franchise.”” Id. It further noted that “Noonan knew that many Aris customers believed they were receiving Getty gasoline.” Id. Citing the plain language in Inwood, supra at 853-854, it therefore agreed with the district court that Noonan, jointly with Aris Getty, had violated the Lanham Act and was contributorily liable. Id.
Arguably, regarding the issue of contributory liability, Getty should be viewed as an extension of Inwood, insofar as the defendant in this case provided a service, i.e. transporting, not a product. The First Circuit however, did not address the product/service distinction that had already been articulated in Hard Rock Café, supra, and later recognized in Fonovisa and Lockheed Martin, discussed supra. It simply applied Inwood directly to the facts of this case, the facts notwithstanding. It is not at all clear whether Noonan also functioned as a distributor, given the court’s explicit reference to it as a common carrier. See also, Cartier Int’l B.V. v. Liu, 2003 WL 1900852 (S.D.N.Y. 2003) (sustaining preliminary injunction against defendant who facilitated the marketing of counterfeit goods by arranging for shipment to customers).