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The Supreme Court, settling a circuit split, held that, although highly important, willfulness is not a prerequisite for a trademark infringement plaintiff to obtain a profits award.
On April 23, 2020, the Supreme Court rendered a decision in Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. ___ (2020), settling a circuit split and holding that, although highly important, willfulness is not a prerequisite for a trademark infringement plaintiff to obtain a profits award. In a relatively short decision, Justice Gorsuch, writing for the majority and joined by Chief Justice Roberts and Justices Thomas, Ginsburg, Breyer, Alito, Kagan, and Kavanaugh, rejected the Second Circuit’s denial of disgorgement of profits after a jury found that a trademark infringer callously, but not willfully, infringed a business partner’s trademark. Relying in large part on a textual distinction within the Lanham Act’s damages provision, 15 U.S.C. Section 1117(a), the Court ruled that while there is a mens rea requirement to a profits award for trademark dilution under 15 U.S.C. 1125(c), Section 1125(a) has no such statutory language for trademark infringement, and reading in such language must be avoided. Justice Alito filed a one-paragraph concurring opinion, in which Justices Breyer and Kagan joined. Justice Sotomayor also filed a concurring opinion, agreeing only in the judgment that a plaintiff in a trademark infringement suit need not show that a defendant willfully infringed the plaintiff’s trademark to obtain a profits award.
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By Howard Shire and Sean McConnell
On June 29, 2023, the U.S. Supreme Court set new geographic limits for infringement and false designation of origin claims raised under Sections 1114 and 1125(a) of the Lanham Act. Given the global nature of business today, the decision highlights the need for trademark owners to continually reassess and, perhaps, expand their international trademark registration strategy as product lines and brands become more international in scope.
The Power, Perils and Pitfalls of Lookalikes
By Steven James and Hattie Chessher
In April 2021, a food fight broke out between two of the UK’s largest supermarkets. Marks and Spencer launched legal action against Aldi over the latter’s alleged copy of its signature “Colin the Caterpillar” cake. This article takes a look at the issues surrounding lookalikes, what the English courts have said about them and what can be done by brand owners to protect against the risks they present.
A Diverse Patent Portfolio Better Protects Artificial Intelligence Inventions
By Amir Kashani, Xuechen (Rebecca) Ding and Aseet Patel
Takeaways from 'IBM v. Zillow' from a Patent Drafting Perspective
Part Two of a Two-Part Article
In Part One of this article we discussed the IBM v. Zillow case, where IBM sued Zillow for infringing on seven IBM’s patents directed to artificial intelligence (AI) algorithms for estimating property value. The focus was on the difficulties in establishing patent infringement on specific AI algorithms, as well as the strategic advantages of including additional patent claims that target ancillary features of an AI system. In this segment, we analyze the claims made in the Zillow case and present some tips for drafting AI-related claims from the perspective of patent infringement.
By Jeffrey S. Ginsberg and Joyce L. Nadipuram
Federal Circuit Clarifies Motivation to Combine to Achieve the Claimed Invention and Holds IPR Petitioner Must Be Given Opportunity to Reply Where Patent Owner First Proposes Claim Construction In a Response
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