The Supreme Court of the United States granted writ of certiorari to consider the issue of profit disgorgement under 15 USC § 1117(a). Romag Fasteners, Inc. v. Fossil, Inc., et al., Case No. 18-1233 (S. Ct. June 28, 2019). According to Romag’s petition, the circuits are evenly split on whether a showing of willfulness is a prerequisite to an award of an infringer’s profits.

Section 117(a) provides for profit disgorgement as a remedy for trademark infringement “subject to the principles of equity.” In relevant part, the statute reads as follows:

When a violation of any right of the registrant of a mark registered in the [Pat & TM Ofc], a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, 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.

In its decision, the US Court of Appeals for the Federal Circuit (applying Second Circuit law) held that profit disgorgement could only be awarded if associated with a more egregious activity—such as willful infringement. Here, because the jury found no willful infringement, disgorgement was denied (IP Update, Vol. 20, No. 9).

The question, as presented in Romag’s certiorari petition, is as follows:

Whether, under section 35 of the Lanham Act, 15 USC § 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).