The U.S. Supreme Court building in Washington, D.C./photo by Diego Radzinschi
In Romag Fasteners v. Fossil Group, the U.S. Supreme Court resolved a long-standing circuit split in holding that a trademark infringement plaintiff is not required to show that the defendant acted willfully in order to receive an award disgorging the defendant’s profits. The court reasoned that while the Lanham Act requires plaintiffs to show that a violation was “willful” to disgorge profits from trademark dilution claims, “the statutory language has never required a showing of willfulness to win a defendant’s profits” for trademark infringement claims. Because Congress did not impose a willfulness requirement for an award of profits in infringement cases, the court refused to create one.
In the decision, however, the court did not discuss the reasons why Congress might have created this disparate treatment. The Lanham Act creates several types of remedies to effectuate different purposes, including monetary damages, disgorgement, costs, fees and injunctive relief. Which remedy fits a particular violation depends on the circumstances: the nature and consequences of the infraction, the role of the violator and the goals the Lanham Act attempts to advance.
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