Romag Fasteners, Inc. v. Fossil, Inc., et al. No. 18-1233, amicus brief filed 09/20/2019.

ARLINGTON, VA. The American Intellectual Property Law Association today filed an amicus brief with the Supreme Court today in Romag Fasteners, Inc. v. Fossil, Inc., et al. No. 18-1233, a case involving whether willful infringement is a prerequisite for a court to allow disgorgement of a defendant’s profits as a remedy for trademark infringement. The brief argues that proof of willfulness should not be required for an accounting of profits under Section 35(a) of the Lanham Act. 

The Lanham Act provides for an accounting, or disgorgement, of the defendant’s profits, subject to the principles of equity, as one possible remedy for violating the Act. Congress has required a showing of the defendant’s willfulness for such relief under other types of Lanham Act claims, but not for the Section 43(a) claim at issue. The brief argues that requiring willfulness for an accounting of defendant’s profits violates the statute’s direction that the availability of such a remedy rests on the equities of each case. The brief explains that equitable principles underlying the accounting remedy do not necessarily require willfulness, and argues that courts should be free to grant that remedy based on the facts and circumstances of each case. According to AIPLA, willfulness is and should remain an important equitable factor in determining appropriate remedies for violations of the Act, but it should not be a threshold requirement for an accounting.