*Breaking News*
U.S. Supreme Court Rules that ‘Willful’ Trademark Infringement
Not Necessary to Recover Profits
The U.S. Supreme Court ruled today that willfulness is not a pre-requisite for plaintiffs to recover profits from trademark infringers.
Although lower courts have taken the position that willfulness is a pre-requisite to receiving an infringer’s profits, the Supreme Court ruled today that the federal trademark act (Lanham Act) does not include that limitation. Read summary of decision below.
- This decision highlights the importance of conducting proper trademark searches before new trademarks are launched in an effort to avoid trademark infringement and claims of willful trademark infringement.
- To read more about proper trademark searches and clearance, click here and here.
SUPREME COURT OF THE UNITED STATES
ROMAG FASTENERS, INC. v. FOSSIL GROUP, INC., FKA FOSSIL, INC., ET AL.CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
No. 18–1233. Argued January 14, 2020—Decided April 23, 2020
Supreme Court Held:
1. A plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.
2. The Lanham Act provision governing remedies for trademark violations, §1117(a), makes a showing of willfulness a precondition to a profits award in a suit under §1125(c) for trademark dilution, but §1125(a) has never required such a showing.
3. Reading words into a statute should be avoided, especially when they are included elsewhere in the very same statute. That absence seems all the more telling here, where the Act speaks often, expressly, and with considerable care about mental states. See, e.g., §§1117(b), (c), 1118. Pointing to §1117(a)’s language indicating that a violation under§1125(a) can trigger an award of the defendant’s profits “subject to the principles of equity.
4. Fossil argues that equity courts historically required a showing of willfulness before authorizing a profits remedy in trademark disputes. But this suggestion relies on the curious assumption that Congress intended to incorporate a willfulness requirement here obliquely while it prescribed mens rea conditions expressly elsewhere throughout the Act.
5. Nor is it likely that Congress meant to direct “principles of equity”—a term more naturally suggesting fundamental rules that apply more systematically across claims and practice areas—to a narrow rule about a profits remedy within trademark law.
6. Even crediting Fossil’s assumption, all that can be said with certainty is that Pre-Lanham Act case law supports the ordinary principle that a defendant’s mental state is relevant to assigning an appropriate remedy. The place for reconciling the competing and in commensurable policy goals advanced by the parties is before policymakers.
Vacated and remanded.
JUSTICE ALITO, with whom JUSTICE BREYER and JUSTICE KAGAN join, concurring.
We took this case to decide whether willful infringement is a prerequisite to an award of profits under 15 U. S. C.§1117(a). The decision below held that willfulness is such a prerequisite. App. to Pet. for Cert. 32a. That is incorrect. The relevant authorities, particularly pre-Lanham Act case law, show that willfulness is a highly important consideration in awarding profits under §1117(a), but not an absolute precondition. I would so hold and concur on that ground.
Read full decision here.