The US Supreme Court ruled on Romag Fasteners, Inc. V. Fossil Group, Inc., FKA Fossil, Inc., et al. 590 U. S. ____ (2020), holding that that the Lanham Act does not require a plaintiff to show that an infringer “willfully” infringed in order to award plaintiff defendant’s wrongful profits.
The Court noted that the Lanham Act expressly references mental states in relation to infringement and remedies, but does not require willfulness for an award of profits under 15 USC §1125(a), false designations of origin. The Court instead held that the Lanham Act provision governing remedies for trademark violations, 15 USC §1117(a), does not require plaintiff to show willfulness by the defendant as a precondition to awarding profits in a suit under 15 USC §1125(a).
The Lanham Act dictates that where a court has found a defendant to have infringed on a trademark, the plaintiff may recover defendant’s profits, subject to equity considerations. In the past, some circuits have held that such equity considerations provide an award of profits only where there is a finding that a defendant willfully infringed a trademark. At the same time, other circuits have held that willfulness was a single factor to consider among others, and is not necessarily a requirement to an award of profits, per se.
Now plaintiffs know that a showing of a defendant’s willfulness is not a requirement to be awarded profits. But while this issue has been settled, plaintiffs should be aware that the mental state of the infringer is still an important consideration in the award of an infringer’s profits. The bar to seeking profits has certainly been lowered in those circuits that had required a showing of “willfulness,” and the Court clarified that willfulness was never a prerequisite for a profit award under 15 USC §1125(a), but plaintiffs should still be ready to show a defendant’s mental state in committing an infringement. As noted by the Court: “Without question, a defendant’s state of mind may have a bearing on what relief a plaintiff should receive.”