Willfulness™.

• Author: Welkowitz, David
• Position: Different meanings of willfulness which can lead to expansion of trademark remedies - III. But What Does Willful Mean? E. Translating the Definitions into Action: What Do We Tell Juries About Willfulness? through V. Conclusion, with footnotes, p. 540-565

5. Translating the Definitions into Action: What Do We Tell Juries About Willfulness?

   Another way to address the question is to look at what we tell jurors. Naturally, jury instructions would be expected to reflect case law interpretations of willfulness. Hopefully we would try to be especially clear to jurors about what willful means. But that appears to be a vain hope, as indicated by both pattern jury instructions and ones from actual cases. (253) The American Bar Association ("ABA") has promulgated model jury instructions for copyright, trademark, and trade dress litigation, (254) as have several circuits. (255) As one example, willful behavior is expressly required when damages are sought in dilution cases. (256) The ABA's model instruction acknowledges this requirement. (257) Unfortunately, it provides no guidance to a jury other than to say "[o]nly if you find such willful dilution should you award damages." (258) The instructions nowhere define "willful" nor do they explain what "willful intent" means. The comment to the instruction references another group of instructions, dealing with awards of defendant's profits, which in many circuits also requires willful behavior. (259) The most relevant of that group of instructions states, unhelpfully: "If you find that defendant infringed plaintiff s trademark, you must also determine whether defendant intentionally or willfully used the trademark to trade on the goodwill and/or reputation of plaintiff." (260)

   It seems that "intentional" and "willful" are related, though perhaps not identical, but the instruction does not elaborate. The comment (equally unhelpfully) advises that "[a] finding of whether defendant willfully infringed plaintiffs trademark may be relevant in determining the appropriate monetary relief." (261) It goes on to discuss profits and to note that "willfulness will be relevant to a court's decision on whether to award enhanced damages ... and on whether the case is 'exceptional' so as to justify an award of attorney's fees." (262) The comment even suggests that a jury's input may be helpful (these are ultimately issues for the court, but the court may allow the jury to give advice). (263) But a jury can hardly be helpful if it does not understand the legal terminology.

   Pattern jury instructions from specific circuits naturally tend to follow decided cases, which does not necessarily serve to clarify matters. As discussed in Part D above, the Ninth Circuit professes to use a high standard for willfulness. (264) Unfortunately, the Ninth Circuit's model jury instructions are more obtuse on this issue. The most applicable instruction deals with "Trademark Damages--Intentional Infringement." (265) It provides as follows: "If you find that the defendant infringed the plaintiffs trademark, you must also determine whether the defendant used the trademark intentionally, knowing it was an infringement." (266)

   This instruction does provide some level of clarity, basically by avoiding the word willful entirely. However, the comment to this instruction cites a Ninth Circuit case that does use the phrase "willful infringement." (267) The comment further suggests that "willful blindness" might substitute for "willful infringement," citing only Seventh Circuit and Eleventh Circuit cases, indicating a lack of Ninth Circuit precedent on this issue. (268) But those cases are not available to jurors, and nothing in the model instruction even suggests that willful blindness (whatever it may mean) (269) is the equivalent of intentional infringement.

   Another set of model jury instructions from the Eleventh Circuit takes a position somewhat like the Ninth Circuit, but with important differences. Beginning with the possible award of defendant's profits, the relevant instruction provides as follows:

   Defendant's Profits and Calculation of Profits

   In addition to [name of plaintiffs actual damages, you may also make an award based on an accounting of [name of defendant]'s profits if you find that:

   * [Name of defendant's conduct was willful and deliberate;

   * [Name of defendant] was unjustly enriched; or

   * An award of [name of defendant's profits is necessary to deter [name of defendant]'s future conduct.

   A defendant commits a "willful violation" of a trademark when that defendant knowingly and purposefully capitalizes on and appropriates the goodwill of a plaintiff. (270) This instruction does not appear to permit "willful blindness" to substitute for actual knowledge and intent. Rather it requires a specific intent to "capitalize on and appropriate the goodwill of a plaintiff." (271) Note that this is not the same as deliberate deception--which is somewhat odd considering that confusion, not free-riding, is the linchpin of trademark infringement. (272)

   With regard to dilution, specifically monetary remedies for dilution, the Eleventh Circuit's instructions are as follows:

   If you find that [Name of defendant]'s use is likely to dilute [Name of plaintiff]'s trademark, and [Name of defendant] does not have a defense to the likely dilution, you must consider whether, and to what extent, monetary relief should be awarded. You may award [Name of plaintiff] monetary relief if:

   * [Name of defendant's mark was first used after October 6, 2006; and

   * [Name of defendant's conduct was willful. (273)

   There is nothing in this instruction that defines "willful": however, in a later portion of the instruction, dealing with the calculation of defendant's profits as a remedy, the instruction repeats the language included in the earlier instruction on awarding defendant's profits--using the identical "knowingly" and "purposefully" language. (274) Moreover, nothing in this instruction alludes to the "willful intent" language that is actually contained in the dilution statute. (275)

   Regarding trademark counterfeiting, the Eleventh Circuit instructions for awarding profits mimic those for ordinary infringement, including the notion and definition of willful conduct. (276) However, in its instructions regarding awards of statutory damages, the instructions seem to make a distinction between willful and knowing conduct, and the term willful is not defined. (277)

   The Eleventh Circuit, like most circuits, includes intent among the factors it uses to determine whether there is a likelihood of confusion. The relevant jury instruction on this factor is as follows:

   6. [Name of Defendant's Intent

   You may also consider whether [Name of defendant] intended to infringe on [Name of plaintiff's trademark. That is, did [Name of defendant] adopt [his/her/its] trademark with the intention of deriving a benefit from [Name of plaintiff's reputation? If you determine that [Name of defendant] intentionally ignored the potential for infringement, you may impute to [Name of defendant] an intent to infringe. (278) Here, the instructions allow for a kind of "willful blindness" determination, but without using the term "willful," although the parameters are not clear. (279) When we ask whether the defendant "intentionally ignored the potential for infringement," (280) how likely must infringement be for the risk to be considered culpable? But at least the instructions use the term "intentional" and not "willful," which may be clearer to jurors.

   A more helpful instruction is included in the Seventh Circuit's model jury instructions. It contains an instruction on "Intentional [Trademark] Infringement" that reads as follows:

   If you find that Defendant [infringed Plaintiffs [trademark: trade dress]] [engaged in false advertising], you must also determine whether Plaintiff has proven that, at the time Defendant [used the trademark; trade dress] [engaged in the false advertising] Defendant acted willfully. Defendant acted willfully if it knew that [it was infringing Plaintiffs [trademark; trade dress] [its advertising was [false] [or misleading]] or if it acted with indifference to [Plaintiffs trademark rights] [whether its advertising was false/misleading]. (281) This instruction appears to follow the model of "actual malice" used in defamation cases--knowledge of falsity or reckless disregard of truth or falsity. (282) In this case, it is knowledge that one's actions are infringing or reckless disregard of infringement. This standard is derived from Seventh Circuit case law, although some of the cases are not exactly on point. (283) As we shall see, some other circuits do not follow the Seventh Circuit's standard. (284) Moreover, this standard has its own deficiencies. It does not define the level of fault with respect to indifference. It does not use "reckless disregard," for example. So a juror is left without guidance as to whether negligent indifference is sufficient or whether (as suggested by Global-Tech) deliberate indifference is closer to the proper standard. Whether this standard should become the norm is a matter of some debate. (285)

   Looking at the different circuits' instructions, we can see that what we tell jurors is somewhat inconsistent and problematic. While the Ninth Circuit instructions are reasonably clear on intentional infringement (though they do nothing for the problem of dilution), the comment suggests that courts might waffle on the clarity and use "willful blindness" as a substitute for acting with knowledge that one's acts are infringing that the instruction entails. (286) The Seventh Circuit more explicitly uses a kind of willful blindness--which it defines as acting with indifference as to whether the acts were infringing (287)--but that will raise other, more doctrinal issues. The Eleventh Circuit uses the most obtuse definition of willfulness (288)--although at least it is consistent between counterfeiting and dilution.

   But the problem of possible juror bewilderment is best illustrated by two real cases, in which multiple uses of willfulness make for a confusing set of instructions. The first case is adidas-America, Inc. v. Payless Shoesource, Inc., where adidas sued...