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SCOTUS Rules Willfulness Not Required to Recover Trademark Infringer's Profits

By Dianne Smith-Misemer

The U.S. Supreme Court has clarified that a trademark infringement plaintiff need not show willfulness to recover defendant's profits, resolving a long circuit split on the issue.

The plain language of the Lanham Act, 15 U.S.C. ยง 1117, makes no reference to a defendant's state of mind for recovery of profits in a trademark infringement case. But the express willfulness requirement for dilution claims and several other statutory references to a defendant's mental state resulted in a split among the circuits. Some circuits required an express willfulness showing for a plaintiff to recover a defendant's profits in likelihood of confusion cases, others did not.

The case originated from the Second Circuit, which required trademark infringement plaintiffs to show that the defendant acted willfully to recover profits. In the underlying case, the plaintiff established a likelihood of confusion, but the jury found that defendant acted only with "callous disregard," not willfully, thus precluding a recovery of profits.

Writing for the majority, Justice Gorsuch relied on a plain reading of the Lanham Act to conclude that willfulness is not required to recover profits in a trademark infringement case. Specifically, violations of sections 1125(a) or (d) entitle a successful plaintiff -- subject to the provisions of sections 1111 and 1114 of this title, and subject to the principles of equity -- to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The Court declined to read words into the Lanham Act that aren't there.

This is welcome news for trademark infringement plaintiffs who often face tough evidentiary challenges for monetary recovery, even in the strongest cases. Now, without the extra willfulness showing, recovery of profits just got easier.

The opinion can be found at https://www.supremecourt.gov/opinions/19pdf/18-1233_5he6.pdf.

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