Romag Fasteners, Inc. v. Fossil, Inc.

Whether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of section 43(a), id. § 1125(a).

Petitioner and Respondent had an agreement to use Petitioner’s fasteners in some of Respondent’s goods manufactured overseas. Petitioner later discovered that some products sold in the United States by Respondent had counterfeit fasteners with Petitioner’s trademark. Petitioner brought suit for patent and trademark infringement seeking injunctive relief and monetary damages. A jury found for Petitioner on trademark and patent infringement and awarded damages. The district court, however, found that Petitioner was not entitled to any award of Respondent’s profits because Petitioner had failed to prove that the infringement was willful, in accordance with section 35 of the Lanham Act. Petitioner appealed to the United State Court of Appeals Federal Circuit which affirmed the district court’s ruling. Petitioner then appealed to the United States Supreme Court, which vacated and remanded, and the district court awarded damages in full except for the prejudgment profits issue. Petitioner requests that the Court resolve the six to six split between the circuits on whether a showing of willfulness is required under the Lanham Act, as the courts are presented with this issue at a high frequency. Furthermore, Petitioner argues that the decision below, and those circuits that require a willfulness showing, misinterpret the statutory language and undermine the policies of the Lanham Act.