## Facts

- Romag Fasteners, Inc. (Romag) makes magnetic snap fasteners used in products such as leather handbags and owns trademark rights associated with its fasteners.
- Fossil Group, Inc. (Fossil) designs and sells fashion accessories, including leather goods.
- Romag and Fossil entered into an agreement under which Romag would supply fasteners and Fossil would use them in Fossil products.
- Romag later learned that factories producing Fossil products were using counterfeit “Romag” fasteners and that Fossil did not respond seriously to the counterfeiting problem.
- Romag sued Fossil in federal district court under the Lanham Act, including 15 U.S.C. § 1125(a), and sought (among other relief) an award of Fossil’s profits under 15 U.S.C. § 1117(a).
- A jury found Fossil liable for trademark infringement and found that Fossil had acted in “callous disregard” of Romag’s trademark rights, but the jury did not find that Fossil acted willfully (as willfulness was defined in the jury instructions).
- Relying on controlling Second Circuit precedent requiring willfulness to award an infringer’s profits for a § 1125(a) violation, the district court denied Romag’s request for a profits award.
- The Federal Circuit, applying Second Circuit law, affirmed the denial of profits.
- The Supreme Court granted certiorari to decide whether willfulness is required before a court may award the defendant’s profits for a § 1125(a) violation.

## Issues

1. Whether 15 U.S.C. § 1117(a) requires proof that a defendant willfully violated 15 U.S.C. § 1125(a) as a precondition to awarding the defendant’s profits.
2. Whether § 1117(a)’s phrase “subject to the principles of equity” imports a categorical willfulness requirement for profits in § 1125(a) cases.

## Decision

- The Supreme Court vacated the Federal Circuit’s judgment and remanded.
- The Court held that § 1117(a) does not impose a blanket willfulness prerequisite for an award of the defendant’s profits for a § 1125(a) violation.
- The Court stated that a defendant’s mental state remains an important consideration in equity when deciding whether to award profits and, if so, in what amount.

## Legal Principles

- Statutory text controls: when Congress expressly requires a mental state in one part of a statute’s remedial scheme but omits that requirement elsewhere, courts should not add the omitted requirement.
- Section 1117(a) authorizes profits for specified Lanham Act violations, including § 1125(a), “subject to the principles of equity,” which preserves equitable discretion rather than creating a fixed threshold rule.
- Congress’s express willfulness requirement for profits in other Lanham Act contexts (such as certain dilution claims) supports the conclusion that willfulness is not automatically required for § 1125(a) profits.
- Historical equity practice regarding trademark profits was mixed; it did not supply a single, uniform rule that profits were available only for willful infringement.
- Although not a strict prerequisite, the infringer’s mental state (including whether conduct was willful, reckless, or in bad faith) may carry significant weight in deciding whether profits are appropriate.

## Conclusion

In *Romag Fasteners, Inc. v. Fossil Group, Inc.*, the Supreme Court held that the Lanham Act’s profits provision, 15 U.S.C. § 1117(a), does not require a plaintiff to prove willful infringement before a court may award the defendant’s profits for a § 1125(a) violation; instead, willfulness is one equitable factor among others, and the Court vacated and remanded for further proceedings consistent with that reading of the statute.


Romag Fasteners, Inc. v. Fossil Group, Inc., 590 U.S. 212, 140 S. Ct. 1492 (2020)