Ninth Circuit Report

• Jurisdiction: United States,Federal
• Citation: Vol. 45 No. 3
• Publication year: 2020
• Author: Anne-Marie Dao
• topic: Trademark,Intellectual Property,Civil Procedure

Ninth Circuit Report

Anne-Marie Dao

Troutman Sanders LLP

As our shelter-in-place continues, I hope everyone is staying healthy and safe. In this issue of New Matter, we have an update to Winter 2020's column, which discussed a split amongst the Circuits relating to trademark damages. Since that column, the Supreme Court issued its decision in Romag Fasteners, Inc.

WHAT WAS THE QUESTION?

Must plaintiffs establish willful infringement prior to recovering an infringer's profits under the Lanham Act? The Circuits were split in half in their response to this question.

THE CIRCUIT SPLIT

In Romag's petition for writ, which the U.S. Supreme Court granted on June 28, 2019, the circuit courts' deep split as to whether proof of willfulness is required to recover an infringer's profits is laid out:

• Six Circuit Courts did not require a showing of willfulness in order for a plaintiff to recover an award of an infringer's profits. These included the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits.
• Six Circuit Courts did require a showing of willfulness in order to recover profits from an...