©2021. Published in Landslide, Vol. 13, No. 3, January/February 2021, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.
On September 19, 2019, the ABA filed an amicus brief with the U.S. Supreme Court in support of the petitioner in Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233, concerning whether, under section 35(a) of the Lanham Act, willful infringement of a trademark is a prerequisite to be awarded an infringer’s profits. There is a fundamental split among the regional circuit courts on this issue, with six circuit courts allowing an award of profits without requiring proof of willfulness, while the other six circuits (including the Second Circuit, whose law was applied by the Federal Circuit in this case) require proof of willful infringement as a prerequisite to any profits award.
The ABA’s brief was based on ABA policy adopted in 2017, based on the Section of Intellectual Property Law’s report and recommendation, which favors taking willfulness into account as among the equitable considerations. The brief argued, among other things, that the ABA policy comports with the controlling statutory text and with the Lanham Act’s purposes, while still providing trial judges broad discretion to weigh the equities of each case.
The ABA’s brief was drafted by Travis Wimberly and Giulio Yaquinto of Pirkey Barber PLLC in Austin, Texas.
On April 23, 2020, the Supreme Court issued its opinion in Romag v. Fossil. The opinion sides with the position in the ABA’s amicus brief—willfulness is not an “inflexible precondition” to a profits award.