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Romag Fasteners, Inc. v. Fossil Grp., Inc.

Supreme Court of the United States

January 14, 2020, Argued; April 23, 2020, Decided

No. 18-1233.

Opinion

Justice Gorsuch delivered the opinion of the Court.

] When it comes to remedies for trademark infringement, the Lanham Act  [*676]  authorizes many. A district court may award a winning plaintiff injunctive relief, damages, or the defendant’s ill-gotten profits. Without question, a defendant’s state of mind may have a bearing on what relief a plaintiff should receive. An innocent trademark violator often stands in very different shoes than an intentional one. But some circuits have gone further. These courts hold a plaintiff can win a profits remedy, in particular, only after showing the defendant willfully infringed its trademark. The question before us is whether that categorical rule can be reconciled with the statute’s plain language.

The question comes to us in a case involving handbag fasteners. Romag sells magnetic snap fasteners for use in leather goods. [**4]  Fossil designs, markets, and distributes a wide range of fashion accessories. Years ago, the pair signed an agreement allowing Fossil to use Romag’s fasteners in Fossil’s handbags and other products. Initially, both sides seemed content with the arrangement. But in time Romag discovered that the factories Fossil hired in China to make its products were using counterfeit Romag fasteners—and that Fossil was doing little to guard against the practice. Unable to resolve its concerns amicably, Romag sued. The company alleged that Fossil had infringed its trademark and falsely represented that its fasteners came from Romag. After trial, a jury agreed with Romag, and found that Fossil had acted “in callous disregard” of Romag’s rights. At the same time, however, the jury rejected Romag’s accusation that Fossil had acted willfully, as that term was defined by the district court.

For our purposes, the last finding is the important one. By way of relief for Fossil’s trademark violation, Romag sought (among other things) an order requiring Fossil to hand over the profits it had earned thanks to its trademark violation. But the district court refused this request. The court pointed out that controlling [**5]  Second Circuit precedent requires a plaintiff seeking a profits award to prove that the defendant’s violation was willful. Not all circuits, however, agree with the Second Circuit’s rule. We took this case to resolve that dispute over the law’s demands. 588 U. S. ___, 139 S. Ct. 2778, 204 L. Ed. 2d 1157 (2019).

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206 L. Ed. 2d 672 *; 2020 U.S. LEXIS 2408 **; 28 Fla. L. Weekly Fed. S 176

Romag Fasteners, Inc., Petitioner v. Fossil Group, Inc., fka Fossil, Inc., et al.

Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.

Prior History:  [**1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

Romag Fasteners, Inc. v. Fossil, Inc., 2019 U.S. App. LEXIS 19723 (Fed. Cir., Feb. 5, 2019)

Disposition: Vacated and remanded.

CORE TERMS

profits, trademark, willfulness, infringement, principle of equity, cases, mens rea, innocent, courts, Lanham Act, awarding, violations, fasteners, damages

Trademark Law, Damages, Types of Damages, Profits, Business & Corporate Compliance, Trademark Law, Causes of Action Involving Trademarks, Dilution of Famous Marks, Antitrust & Trade Law, Consumer Protection, Likelihood of Confusion, False Designation of Origin, Equitable Relief, Injunctions, Preliminary Injunctions, Statutory Damages, Civil Procedure, Preliminary Considerations, Equity, Governments, Legislation, Interpretation