Trademark Law

ABA amicus brief urges SCOTUS to rule willfulness isn't required to award trademark profits

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The ABA filed an amicus brief with the U.S. Supreme Court on Thursday that urges the justices to rule that judges may award profits for trademark infringement without the need to show willful infringement.

The ABA points out in its brief that courts are split on the issue, according to an ABA press release. Some courts allow consideration of willful infringement as one of several factors to be considered. Others don’t allow an award of profits unless the plaintiff shows willful infringement.

The ABA urges the Supreme Court to adopt the more flexible approach. Nothing in the statutory language of the Lanham Act requires proof of willful infringement before an award of profits, the ABA argues. In addition, a “theme of flexibility permeates the Lanham Act,” the brief says.

Public policy considerations also support allowing courts to consider willfulness as one of several factors, the ABA says. Requiring willful infringement as a prerequisite “mechanically and artificially constrains the court’s remedial authority,” the brief says.

The case before the Supreme Court is Romag Fasteners v. Fossil Inc.

Romag Fasterners, which makes magnetic fasteners for purses and wallets, is seeking to reinstate a $6.7 million profit award in a patent and trademark infringement case against handbag and leather-goods maker Fossil. A judge tossed the award because jurors did not find willful infringement.

The SCOTUSblog case page for Romag Fasteners is here. The court granted cert on June 28.

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