The U.S. Supreme Court ruled unanimously Thursday, April 23, 2020 that a trademark infringement plaintiff doesn’t have to show willful infringement by the defendant to obtain an award of profits.
Justice Neil M. Gorsuch wrote the opinion for the court. Gorsuch said the Lanham Act’s wording does not support a willfulness requirement in suits for false or misleading use of trademarks—the kind of suit filed by Romag Fasteners against Fossil, a maker of leather goods.
Romag Fasteners makes magnetic fasteners for purses and wallets. It had alleged that factories in China were making Fossil handbags and other products using counterfeit Romag fasteners, and Fossil was doing little to stop it. A judge had tossed a $6.7 million profit award because jurors did not find willful infringement.
Gorsuch said a defendant’s mental state—its mens rea—is an important consideration in determining whether an award of profits is appropriate.
“But acknowledging that much is a far cry from insisting on the inflexible precondition to recovery Fossil advances,” he wrote.
Justice Samuel A. Alito Jr. wrote a concurring opinion, joined by Justices Stephen G. Breyer and Elena Kagan. Alito said willfulness is “a highly important consideration” in awarding profits in such suits “but not an absolute precondition.”
Justice Sonia Sotomayor concurred in the judgment but did not join Gorsuch’s opinion.
The American Bar Association (ABA) had filed an amicus brief that urged the court to allow a profits award without the need to show willful infringement. The case is Romag Fasteners Inc. v. Fossil Inc. Hat tip to the ABA and SCOTUSblog.
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