– The U.S. Supreme Court has settled a long-standing split among federal appeals courts regarding trademark infringement under the Lanham Act.
– The Court ruled that a plaintiff alleging trademark infringement no longer needs to demonstrate the defendant acted willfully in order to recover disgorgement of profits.
– Justice Gorsuch, writing for the Court, rejected Second Circuit authority and held that a wrongful state of mind is not a prerequisite to a damages award in trademark infringement cases. 1. Fossil, Inc. hired manufacturers who produced counterfeit Romag fasteners, leading to a lawsuit from Romag.
2. The jury found that while Fossil acted in disregard of Romag’s rights, they did not act willfully.
3. Romag was initially awarded $6.7 million, but the Connecticut District Court reduced the award based on precedent requiring willful infringement for a profits award.
4. The Supreme Court ruled that the Lanham Act does not expressly require willfulness for damages in trademark infringement suits. 1. The Supreme Court clarified that a plaintiff in a trademark infringement suit is not required to show that the defendant willfully infringed the trademark in order to receive profits as damages.
2. The Court rejected the argument that a willfulness prerequisite should be applied based on language in Section 1117(a) of the Lanham Act.
3. Before the decision, some federal appeals courts required proof of willful misconduct for plaintiffs to be awarded profits in trademark infringement suits, but now this requirement has been eliminated. – Defendant’s mental state is still considered an important factor in determining damages in trademark infringement cases.
– Circuits that previously required willfulness may still heavily consider the defendant’s state of mind when awarding damages.
– Plaintiffs should be aware that mens rea is not entirely erased from consideration in determining damages.
Trademark Infringers Beware: Willful Infringement No Longer a Requirement for Damages
Leave a Reply