April 23, 2020
Decided April 23, 2020
Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233
Today, the Supreme Court unanimously held that under the Lanham Act, proof of willful trademark infringement is not a precondition to a mark holder’s recovery of the infringer’s profits.
Romag Fasteners, Inc. sells magnetic snaps used in handbags, including handbags manufactured and distributed by Fossil, Inc. Romag sued Fossil for trademark infringement under the Lanham Act after discovering that Fossil’s Chinese manufacturer had used counterfeit snaps bearing the Romag mark. Among other remedies, Romag sought an award of Fossil’s profits from sales of the infringing handbags under Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a). A jury found Fossil liable for trademark infringement. The jury also found that, although Fossil acted “in callous disregard” of Romag’s trademark rights, Fossil did not willfully infringe Romag’s trademarks. The district court held that Romag’s failure to prove willful infringement barred an award of profits under Section 35(a), and the Federal Circuit affirmed.
Whether, under Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a precondition for an award of an infringer’s profits for a violation of Section 43(a), id. § 1125(a).
No. A trademark defendant’s state of mind is a “highly important consideration” in determining whether to award profits, but willfulness is not an “inflexible precondition” to such an award.
“[W]e do not doubt that a trademark defendant’s mental state is a highly important consideration in determining whether an award of profits is appropriate. But acknowledging that much is a far cry from insisting on [an] inflexible precondition to recovery.”
Justice Gorsuch, writing for the Court
What It Means:
The Court’s opinion is available here.
Gibson Dunn’s lawyers are available to assist in addressing any questions you may have regarding developments at the Supreme Court. Please feel free to contact the following practice leaders:
Appellate and Constitutional Law Practice
|Allyson N. Ho
|Mark A. Perry
Related Practice: Intellectual Property
|Howard S. Hogan
© 2020 Gibson, Dunn & Crutcher LLP
Attorney Advertising: The enclosed materials have been prepared for general informational purposes only and are not intended as legal advice.