Since 1947, the Lanham Act (also known as the Trademark Act of 1946) has governed trademark infringement litigation in the United States. When a defendant is found to have infringed on a plaintiff’s trademark under § 1125 of the Act, § 1117(a) allows the plaintiff to recover the defendant’s profits from the violation. It was never entirely clear whether the infringement must be willful in order for the plaintiff to recover. However, in 1999, Congress added to the confusion. That year, Congress amended § 1117 of the Act, allowing profits, damages to the plaintiff, and costs to be recovered for a violation under section 43(a) or (d), or a willful violation under section 43(c).
The statutory construction of §1117(a) appears to attach the word “willful” only to dilution-related violations under §1125(c). However, the statute requires recovery to be “subject to the principles of equity,” which suggests judicial discretion on the matter. If the courts decide that willful conduct is required for plaintiffs to recover, will that result in unjust enrichment of unwittingly infringing defendants? Or do the principles of equity point the courts away from punishing unintentional violators?
The question dividing the courts is as follows: Does §1117(a) allow a plaintiff to recover a defendant’s profits from an unintentional violation of a trademark?
There are two sides to this split: The first view generally requires the defendant’s conduct to be willful in order for a plaintiff to recover profits. This includes the First, Second, Eighth, Ninth, Tenth, and D.C. Circuits. The treatment of willfulness does have some variation within this side. For example, the First Circuit only requires evidence of willful infringement in cases where the parties were not direct competitors. In Fishman Transducers, Inc. v. Paul (2012), the First Circuit described the direct competition rule as an exception to the willfulness requirement.
The second view does not require willfulness for a plaintiff to recover. Instead, willfulness is often treated as one factor in a multi-factor test for recovery, and in other circuits, one situation in which recovery is warranted. This general side is represented by the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits. The Eleventh Circuit illustrated its multiple-situations approach in Optimum Techs., Inc. v. Home Depot U.S.A., Inc. (2007). In this opinion, the court listed as potential circumstances leading to recovery: “(1) the defendant’s conduct was willful and deliberate, (2) the defendant was unjustly enriched, or (3) it is necessary to deter future conduct.” Based on the logic of the Optimum opinion, the absence of willful conduct may yield a requirement of causation between the infringement and the enrichment of the defendant through sales. There is a strong consideration of unjust enrichment in these circuits.
It should be noted that in no Circuit can a plaintiff automatically recover profits from an infringing defendant. Even when willfulness is not a requirement, recovery is still “subject to the principles of equity” through varying tests.
The Supreme Court will directly address this issue in the upcoming term. On June 28, the Court granted the petition for certiorari to hear Romag Fasteners, Inc. v. Fossil, Inc. In this case, Fossil was found to have unwilfully infringed on Romag’s trademark. The Second Circuit applied its longstanding willfulness requirement and affirmed a judgment barring recovery of profits from Fossil. In its respondent brief, Fossil argued that “no meaningful conflict exists,” asserting that in the Circuits hearing the majority of trademark cases (the Second and Ninth), the willfulness requirement prevails. Fossil also claims that even in circuits treating willfulness as a factor, it is rare for a plaintiff to recover in its absence.
As the case awaits adjudication, the Intellectual Property Owners Association has filed an amicus brief in favor of the interpretation requiring willfulness for recovery. In its brief, the Association argued that prior to the addition of the word “willful” in 1999, courts largely held willfulness as a requirement based on the “principles of equity” language of the statute. The American Intellectual Property Law Association disagreed with that statement in its amicus brief, calling a willfulness requirement “antithetical to the principles of equity.” The majority of amicus briefs already filed appear to align more closely with the latter view.
If the petitioners prevail, there is no guarantee that they will recover. However, a verdict for either party would most likely change the standard for recovery in half of the circuits. The decades-long difference in approaches will hopefully be resolved and provide a more uniform law nationwide.