Thursday, April 23, 2020

The Supreme Court in Romag v. Fossil: showing of willfulness not mandated to recover lost profits under the Lanham Act

The Supreme Court decision of Romag v. Fossil held that plaintiffs do not need to show willful infringement as a prerequisite for an award of an infringer’s profits under the Lanham Act. Intent is a significant factor but a showing of willful intent is not required. The previous decision of the CAFC was vacated and remanded. The Supreme Court decision was 9-0, with concurring opinions expressed. The opinion of Justice Gorsuch ended with the text:

With little to work with in the statute’s language, structure, and history,
Fossil ultimately rests on an appeal to
policy. The company tells us that stouter restraints on profits awards are needed to deter “baseless” trademark suits.
Meanwhile, Romag insists that its reading of the statute
will promote greater respect for trademarks in the “modern
global economy.” As these things go, amici amplify
both sides’ policy arguments. Maybe, too, each side has a
point. But the place for reconciling competing and incommensurable policy
goals like these is before policymakers.
This Court’s limited role is to read and apply the law those
policymakers have ordained, and here our task is clear.
The judgment of the court of appeals is vacated, and the
case is remanded for further proceedings consistent with
this opinion.

The concurring opinion of Justice Alito was brief:

We took this case to decide whether willful infringement
is a prerequisite to an award of profits under 15 U. S. C.
§1117(a). The decision below held that willfulness is such
a prerequisite. App. to Pet. for Cert. 32a. That is incorrect.
The relevant authorities, particularly pre-Lanham Act case
law, show that willfulness is a highly important consideration
in awarding profits under §1117(a), but not an absolute
precondition. I would so hold and concur on that ground.

A separate case Ramos v. Louisiana concerned the incorporation of the requirement of unanimous juries under the Bill of Rights onto the states via the 14th Amendment. A ticklish question was the overruling of prior Supreme Court precedent, which issue will likely materialize in other subject areas.


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