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How the Romag decision changed the importance of willfullness

On Behalf of | Oct 12, 2021 | Business Litigation

A landmark Supreme Court case from April 2020, Romag Fasteners v. Fossil, has changed the way that “willfulness” plays into cases of intellectual property infringement. Prior to this ruling, a total of six circuit courts held willfulness as a requirement in intellectual property litigation, including the Second Circuit in New York. Now, in the post-Romag world, courts are putting a greater emphasis on the importance of an infringer’s mental state than ever before.

The groundbreaking outcome of the April 2020 SCOTUS decision was to remove willfulness as a precondition in trademark infringement cases for the defendant’s profits to be awarded. This is noteworthy for intellectual property litigators because it sets a precedent that resolves a long-standing circuit split on the issue. The law overturned by Romag impacts anyone practicing in the First, Second, Sixth, Ninth, Tenth, or D.C. Circuit Court of Appeals.

A greater emphasis on the defendant’s mental state

There have been two instances of concurrence in business litigation with the new opinion. Justices Kagan, Breyer, and Alito all concurred that willfulness is not an absolute precondition for awarding profits, citing relevant authorities like pre-Lanham Act case law, which is the United State’s primary federal trademark statute. These justices were of the opinion, though, that willfulness is still an extremely important factor to consider in these cases.

In cases since the Romag ruling, this new standard has already changed the way these decisions go. With Monster Energy Co. v. Integrated Supply Network, there was an emphasis on the defendant’s mental state when determining if awarding profits was the appropriate move. In this case, the plaintiff successfully proved to the court that the defendant acted with fraud, malice, or oppression in the act of infringement.

Since the Romag ruling in April 2020, willfulness is no longer a required precondition, so it may continue to impact whether a defendant’s profits are awarded in intellectual property infringement cases. Greater emphasis will continue to be placed on a defendant’s mental state in these rulings, so parties involved in business litigation need to keep this in mind.