SCOTUS grapples with ‘wilfulness’ in TM infringement
US Supreme Court justices presiding over a closely-watched case are so far struggling with the notion of “wilfulness” as a requirement for awarding profits in trademark infringement cases.
The court yesterday, January 14, heard oral arguments in Romag Fasteners v Fossil, which centres on whether courts can award profits as a remedy for trademark infringement where it has not found that the infringement was wilful.
Romag is set to have major implications for brand owners, said Mark Sommers, partner at Finnegan, Henderson, Farabow, Garrett & Dunner.
“Assuming the court rules that wilfulness is required to obtain profits, trademark owners will be left to establish the notoriously high standard of wilful infringement,” Sommers said.
“If the court removes the wilfulness gatekeeper and opens profits disgorgement as the equities so dictate, then profit awards become a more viable and workable option in trademark cases and will presumably serve as a greater deterrent and, of course, settlement motivator,” he explained.
Sommers said the justices seemed to struggle with the lack of clarity surrounding the notion of willful infringement.
“Many justices, including Ginsburg, Sotomayor, and Kavanaugh, were concerned over the lack of a clear definition of wilfulness, with district courts having inconsistently interpreted that word differently over two centuries of case law.”
Sommers said that, in his opinion, both side’s efforts at defining the term “failed to abate the concerns shared throughout the bench”.
Justice Breyer suggested the parties were “making much ado about nothing”, Sommers said. This was in light of trial courts having statutory discretion to increase or decrease profits awards regardless of any “wilfulness” requirement.
“The parties disagreed on the application of this provision, but Justice Breyer’s questions might signal one possible direction of a ruling—or a concurrence/dissent if the majority does not address such statutory language,” Sommers said.
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