respect to the Gucci belts. It is undisputed that this is an issue for the jury.
(4) The determination of the amount of actual damages proximately caused by any of the violations for which defendants are liable. It is undisputed that this is an issue for the jury. Dairy Queen, Inc. v. Wood, 369 U.S. 469, 476-479, 8 L. Ed. 2d 44, 82 S. Ct. 894 (1962).
(5) The determination of any injunctive relief to be granted on any violations for which defendants are found liable. It is undisputed that this is an issue for the Court.
(6) The determination of whether defendants' trademark infringement was conducted with willful deceptiveness, so as to permit plaintiff to recover defendants' profits (in addition to plaintiffs' actual damages) pursuant to 15 U.S.C. § 1117(a). See George Basch Co., Inc. v. Blue Coral, Inc., 968 F.2d 1532, 1540 (2d Cir. 1992).
(7) If such willful deceptiveness is found, the determination of the amount of defendants' profits recoverable by plaintiffs.
(8) The determination of whether defendants' trademark counterfeiting was intentional, so as to entitle the plaintiffs (absent extenuating circumstances) to recover treble the amount of plaintiffs' actual damages and treble the amount of defendants' profits, pursuant to 15 U.S.C. § 1117(b).
The parties dispute whether issues # 6, # 7 and # 8 are for the Court or the jury. Existing precedent is likewise divided. Compare, e.g., Oxford Industries, Inc. v. Hartmarx Corp., 1990 U.S. Dist. LEXIS 5979, No. 88 C 0322, 1990 WL 65792 (N.D. Ill. May 2, 1990) (claim for profits properly tried to jury) with G.A. Modefine S.A. v. Burlington Coat Factory Warehouse Corp., 888 F. Supp. 44, 46 (S.D.N.Y. 1995) (claim for profits did not require jury trial). In this Court's view, the key to resolving these disputes lies in determining the purpose of these additional remedies. See Tull v. United States, 481 U.S. 412, 95 L. Ed. 2d 365, 107 S. Ct. 1831 (1987).
Unlike the provision for statutory damages under § 1117(c), see supra fn. 3, which provides plaintiffs with an alternative, equitable remedy in situations where the legal remedy of actual damages proves problematic, speculative, or inadequate, plaintiffs' additional recovery of defendants' profits on top of plaintiffs' actual damages, under § 1117(a), and the trebling of plaintiffs' entire recovery upon proof of defendants' wrongful intent, under § 1117(b), largely serve retributive and deterrent purposes. That is why their award is dependent on findings of, respectively, willful deceptiveness and intentional counterfeiting, quasi-criminal states of mind the determination of which has historically been the particular province of the jury. Indeed, both before and after the enactment of the Seventh Amendment, the determination of similar remedies, such as punitive damages and multiple damages, were the province of courts of law, not courts of equity. See Curtis v. Loether, 415 U.S. 189, 39 L. Ed. 2d 260, 94 S. Ct. 1005 (1974); Ross v. Bernhard, 396 U.S. 531, 24 L. Ed. 2d 729, 90 S. Ct. 733 (1970).
Here, to be sure, even where there have been findings of willful deceptiveness or intentional counterfeiting, section 1117 provides that the Court may still exercise discretion to deny recovery beyond actual damages, either (in the case of defendants' profits) pursuant to general "principles of equity," under § 1117(a), see George Basch Co., 968 F.2d at 1540, or (in the case of trebling the entire recovery) by finding "extenuating circumstances" under § 1117(b). But this in no way alters the conclusion that the threshold determinations of willful deceptiveness and intentional counterfeiting -- issues # 6 and # 8 above -- are for the jury.
By contrast, determination of the actual amount of defendants' profits (issue # 7), being more akin to a determination of a fixed amount after liability has been established, does not so clearly impinge on the historical prerogatives of the jury. See Tull, 481 U.S. at 427. If, therefore, Congress had expressed a clear intent that such an "accounting" be made by the Court, there would be no violation of the Seventh Amendment in effectuating this intention. See id. at 426-427. Instead, however, § 1117(a) simply provides that "The court shall assess such profits and damages or cause the same to be assessed under its direction." This clearly empowers a court, in the exercise of its discretion, to leave the assessment of the amount of such profits to the same jury that will be determining whether there is willful deceptiveness. In the instant case, where such a determination involves none of the unusual complexities that led the Supreme Court in Tull to leave a somewhat similar determination to the court, see id. at 427, this Court will leave the determination to the jury.
Accordingly, the Court holds that determination of each of issues # 6, # 7 and # 8 above will be for the jury in the forthcoming trial of this case.
JED S. RAKOFF, U.S.D.J.
Dated: New York, New York
February 23, 1998