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Michael Greenberg Publishes Article on IPWatchdog.com

Fort Lauderdale, Fla. (January 17, 2020) - Ft. Lauderdale Associate Michael Greenberg recently authored a review of oral arguments before the Supreme Court in Romag Fasteners v. Fossil, Inc., Fossil Stores, I. Inc., Macy’s Inc, and Macy’s Retail Holdings, Inc. Greenberg’s article, “Supreme Court Poised to Reverse CAFC Trademark Decision on Willfulness as Prerequisite for Profits Award,” published on IPWatchdog.com, explored the ins and outs of this hotly contested clash over profit damages in Lanham Act cases.

The underlying suit in Romag is a Lanham Act dispute over counterfeit magnetic fasteners that Fossil’s Chinese manufacturer used in its products, in violation of an agreement between Fossil and Romag. In 2014, a District of Connecticut jury found that Fossil had demonstrated a “callous disregard” for Romag’s trademark rights, but the infringement was not “willful,” and therefore Romag was not eligible for a profit award under the Lanham Act. Romag’s subsequent appeal to the Federal Circuit and the Supreme Court has been based on whether or not the company was entitled to a profit award in this matter.

Oral arguments before the Supreme Court were held on Tuesday, January 14, and centered on the intent of the terms ‘willful violation’ and 'principles of equity' in the text of the Lanham Act. “The absence of the ‘willful’ modifier to violations under section 1125(a) and (d) as compared to the 'willful violation' needed for profits and damage under section 1125(c) has been interpreted by some courts to mean that a plaintiff need not establish a willfulf infringement under 1125(a) to be awarded an infringer’s profits,” Greenberg observed. “Other courts say that the omission of the willful modifier is explained by the [statute’s] reference to ‘principles of equity,’ as such principles prior to the Lanham Act included a willfulness requirement for profits to be awardable for infringement of the sort contemplated by 1125(a).”

Greenberg noted that “the overall focus of the Justices sensibly turned on whether the common law was settled on requiring willfulness prior to the Lanham Act,” and ultimately, he argued, “it seems likely the Court will reverse” the decision not to award Romag the disputed $6.8 million in Fossil’s profits. “Willfulness will not be a prerequisite to disgorgement of profits for infringement under section 1125(a), but it may be held out as the most important consideration in determining entitlement and/or the amount of profits to be awarded,” Greenberg concluded. 

The complete article is available here.

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