In a recent decision of considerable importance for trademark practitioners, the U.S. Supreme Court finally resolved a longstanding split among the circuits when the Court held that willfulness is not required to award the plaintiff profits in a trademark infringement action. Romag Fasteners, Inc v. Fossil, Inc., No. 18-1233, 2020 WL 1942012 (U.S. Apr. 23, 2020). Justice Gorsuch delivered the majority opinion in the unanimous decision, expressly rejecting the willfulness prerequisite to profit awards adopted by the Second and Ninth Circuits, which both handle a high volume of the nation’s trademark cases.
The case before the Court involved a dispute over handbag fasteners between Romag Fasteners, Inc., a company that manufacturers the fasteners, and Fossil, Inc., a company that uses the fasteners on its handbags. For years, Romag and Fossil worked together under an agreement that permitted Fossil to use Romag’s fasteners on its handbags. As Romag later discovered, however, factories in China making Fossil products were using counterfeit fasteners, instead of Romag’s products. Believing that Fossil was not policing these factories, Romag sued Fossil for trademark infringement and false representation (along with other claims, including patent infringement).
The issues of fact went to the jury, which agreed with Romag’s view and found that, while Fossil had acted with callous disregard, its actions were not willful. Though the jury made its advisory awards, the Judge Janet Bon Arterton of the U.S. District Court for the District of Connecticut determined that Romag could not recover Fossil’s profits on the trademark infringement claim without a finding of willfulness. On appeal to the Federal Circuit, the Court upheld the district court’s decision, finding that it was consistent with Second Circuit precedent (the District of Connecticut sits within the Second Circuit). Romag’s writ of certiorari to the Supreme Court followed, and the Court granted the writ, presumably to resolve the outstanding circuit split that has persisted for more than 20 years.
The Court did just that in its recent decision, which fully and finally rejected the view that a showing of willfulness is a prerequisite to a profit award in trademark infringement actions. As the Court explained, while the infringer’s state of mind is certainly an important and valuable consideration, it is by no means a requirement for a court to award a trademark owner the infringer’s profits.
In reaching the decision, the Court relied heavily on the text of the Lanham Act, the statute governing recovery of federal trademark violations, and, specifically, 15 U.S.C. § 1117, the Lanham Act’s damages provision. The Court pointed out that states of mind, or mens rea, are carefully addressed in that section of the statute, as they are throughout the entirety of the Lanham Act. For example, the plain text of § 1117(a) provides for recovery of an award of the infringer’s profits for any violations of 15 U.S.C. § 1125(a) (i.e., trademark infringement), but for violations of § 1125(c) (trademark dilution) the statute clearly requires a willful violation for such an award:
When a violation of any right of the registrant of a mark registered in the Patent and Trademark Office, a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. . . .
17 U.S.C. § 1117(a) (emphasis added).
The Court determined that the use of the term “willful” in one instance in § 1117(a), but not in another, indicated Congress’ intent with regard to how mental states should be treated vis á vis profit awards for particular violations. Likewise, in other sub-sections of § 1117, mental states are included judiciously in certain instances, but not others. As the Court, in its interpretation of the law, is careful not to read words into statutes that are not present, it declined to adopt the Second and Ninth Circuit’s interpretations and read in a “willful” requirement for violations of § 1125(a).
The Court similarly rejected other arguments lodged by Fossil, again turning to the text of the statute. For instance, Fossil argued a profit award was appropriate pursuant to “principles of equity” in § 1117(a). The Court discussed the definition and meaning of “principles of equity,” finding it unlikely that Congress intended for this language to denote such a narrow rule regarding profit awards. Even considering pre-Lanham Act case law, the Court again noted that there was no clear rule regarding a willfulness prerequisite, leading the Justices to the conclusion that, at most, mens rea was an historically important consideration in awarding profits but never a requirement. As the Court pointed out, the importance of mens rea has continued under the Lanham Act, as reflected in the provision of greater statutory damages for willful violations in § 1117(c). Finally, the Court briefly rejected Fossil’s policy argument, stating that the Court would instead leave the policy decisions to the policymakers in Congress.
With this decision, trademark plaintiffs will face one less obstacle when establishing their entitlement to an award of a defendant’s profits. In practical terms, courts will likely see fewer motions for summary judgment on willfulness, as defendants may no longer use this tool to foreclose a plaintiff’s ability to obtain the defendant’s profits. Though the Court’s decision that courts may award profits absent a finding of willfulness may, in theory, open the doors to more profit awards, it is unlikely to result in windfalls to plaintiffs. As courts have long recognized, the infringer’s state of mind bears on the relief the trademark owner should receive.
The Supreme Court echoed the well-established notion that an infringer’s state of mind bears on the relief the plaintiff should receive when it clearly articulated that a defendant’s mental state “is a highly important consideration in determining whether an award of profits is appropriate” in trademark infringement actions. Romag, 2020 WL 1942012, at *4. There is just no particular mental state required for profit awards, so it remains in the discretion of the courts, and juries, to determine what is appropriate under the circumstances.
This article was published by the Media Law Resource Center (MLRC) on May 6, 2020