… this Comment argues the Supreme Court erred in its decision and that a plaintiff in a trademark infringement lawsuit should have the burden of showing the defendant infringed willfully before obtaining a judgment disgorging profits. This requirement is consistent with the 1999 amendments to section 1117(a), and public policy further justifies the interpretation. Part II provides the basic framework of the Lanham Act. Part III considers the requirement of willfulness, how it survived the 1999 amendment to the Lanham Act, and the split amongst the circuits. Part IV explores the issue of willful infringement in Romag Fasteners Inc v Fossil Inc and the impact the willful infringement requirement had in that case as well as the impact it has on monetary damages generally.
Part V argues that willfulness should remain a threshold requirement based on principles of statutory interpretation, the legislative history of section 1117(a), and the principles of equity. Part VI articulates that willfulness should remain a threshold requirement based on policy justifications, namely serving as a last barrier of protection to ensure fair damages. Part VII considers what Congress can do to remedy the issue pertaining to the willful infringement requirement. Lastly, Part VIII concludes by reiterating the premise that willfulness should be a requirement because it is the better approach to handling the disgorgement of a defendant’s profits in a trademark infringement case.
Amir Kallas, Not So Fast: Why Willfulness Should Remain a Requirement Prior to Disgorging Profits in a Trademark Infringement Case, 52 University of the Pacific Law Review 207 (2020).