Willfulness should not be required for profits award: AIPLA
A body representing US IP lawyers has urged the US Supreme Court to rule that willful infringement is not required for an award of profits.
In an amicus brief filed on Friday, September 20, the American Intellectual Property Lawyers Association (AIPLA) said that “courts should be free to grant that remedy based on the facts and circumstances of each case”.
“Requiring willfulness for an accounting of defendant’s profits violates the statute’s direction that the availability of such a remedy rests on the equities of each case,” the filing said.
The US Supreme Court agreed to tackle the issue after it granted certiorari in Romag Fasteners v Fossil in June this year.
The US Court of Appeals for the Federal Circuit had previously found that fashion brand Fossil infringed Romag’s trademark, but did not award profits.
Romag appealed against the decision not to award profits at the Supreme Court, highlighting a split in the circuits over the issue.
The Second Circuit, along with the First, Eighth, Ninth, Tenth, and D.C. circuits, currently require a finding of willful infringement as a prerequisite for an award of profits, while the remaining six circuits do not apply this rule.
AIPLA has backed Romag’s bid, arguing that requiring a finding of willful infringement is overly restrictive on the courts.
“Willfulness is and should remain an important equitable factor in determining appropriate remedies,” AIPLA said in a statement, “but it should not be a threshold requirement for an accounting [of profits]”.
Fossil had argued that an award of profits was an “extraordinary and often draconian measure”, which should be subject to the principle of equity.
AIPLA, however, has argued that requiring a finding of willful infringement to award profits would undermine that very principle.
“The nature of equity requires flexibility to address the facts of each matter,” the association said.
According to AIPLA, “adding an extra-statutory willfulness requirement for any possible accounting is antithetical to having courts apply principles of equity based on the facts and circumstances of each case”.
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