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  • Writer's pictureWendi Gundersen

Willfulness not required for profits in trademark infringement

In Romag Fasteners, Inc. v. Fossil, Inc., the Supreme Court held that a plaintiff in a trademark-infringement suit does not need to prove willfulness to recover the defendant's profits.

In Romag, Fossil had entered into an agreement with Romag to use its snap fasteners with Fossil handbags and other products. Romag then discovered that Fossil hired factories in China that used counterfeit Romag fasteners. The jury found that Fossil acted "in callous disregard" of Romag's trademark rights. But the jury also rejected Romag's accusation that Fossil acted willfully.

As a consequence, the district court rejected Romag's request for Fossil's profits based on the infringing sales because the controlling law in the Second Circuit requires a finding of willfulness before a plaintiff is entitled to lost profits. Critically, the statute authorizing lost profits does not expressly require a finding of willfulness to recover lost profits for a violation of 15 U. S. C. § 1125(a). See 15 U. S. C. § 1117(a).

Justice Gorsuch, writing for the Court, ultimately noted that Fossil's argument that willfulness is required to recover defendant's profits "rests on an appeal to policy." For that reason, the Court was not the right place to seek vindication of its argument, which is one for policymakers.

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