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15 U.S.C.S. § 1117(a) does make a showing of willfulness a precondition to a profits award when the plaintiff proceeds under 15 U.S.C.S. § 1125(c). That section, added to the Lanham Act some years after its initial adoption, creates a cause of action for trademark dilution - conduct that lessens the association consumers have with a trademark.
Romag Fasteners, Inc., and Fossil, Inc., signed an agreement to use Romag's fasteners in Fossil's leather goods. Romag eventually discovered that factories in China making Fossil products were using counterfeit Romag fasteners. Romag sued Fossil and certain retailers of Fossil products (collectively, Fossil) for trademark infringement pursuant to 15 U.S.C. § 1125(a). Relying on Second Circuit precedent, the district court rejected Romag's request for an award of profits, because the jury, while finding that Fossil had acted callously, rejected Romag's accusation that Fossil had acted willfully.
Was willfulness of trademark defendant a precondition to award of profits under 15 U.S.C.S. § 1117(a) for claimed violation of 15 U.S.C.S. § 1125(a)?
The court held that a plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff's trademark as a precondition to a profits award. The Lanham Act provision governing remedies for trademark violations, § 1117(a), makes a showing of willfulness a precondition to a profits award in a suit under § 1125(c) for trademark dilution, but § 1125(a) has never required such a showing. Reading words into a statute should be avoided, especially when they are included elsewhere in the very same statute. That absence seems all the more telling here, where the Act speaks often, expressly, and with considerable care about mental states. Pointing to § 1117(a)'s language indicating that a violation under § 1125(a) can trigger an award of the defendant's profits “subject to the principles of equity,” Fossil argues that equity courts historically required a showing of willfulness before authorizing a profits remedy in trademark disputes. But this suggestion relies on the curious assumption that Congress intended to incorporate a willfulness requirement here obliquely while it prescribed mens rea conditions expressly elsewhere throughout the Act. Nor is it likely that Congress meant to direct “principles of equity”—a term more naturally suggesting fundamental rules that apply more systematically across claims and practice areas—to a narrow rule about a profits remedy within trademark law. Even crediting Fossil's assumption, all that can be said with certainty is that Pre-Lanham Act case law supports the ordinary principle that a defendant's mental state is relevant to assigning an appropriate remedy. The place for reconciling the competing and incommensurable policy goals advanced by the parties is before policymakers.