Benjamin Appelbaum, Attorney at Law

Question of willful infringement headed to U.S. Supreme Court

Trademarks and patents are valuable assets for many New Jersey businesses and creators The award of damages in a case involving the infringement of magnetic fasteners developed by Romag has revolved around the question of whether Fossil, the infringing party, acted willfully. Interpretations of trademark law among various federal appellate courts have produced differing requirements concerning willful action. Romag's petition before the Supreme Court of the United States could lead to clarification on this issue.

Trademark law appears to provide clear guidance on the award of damages from the profits of infringement. However, six U.S. Court of Appeals districts have ruled that the holders of a trademark may collect profits derived from infringement without proving that the defendant willfully used the protected intellectual property. Rulings from five other districts required evidence of willfulness to justify the disgorgement of an infringer's profits. The 1st Circuit developed a mixed approach that required willfulness when opposing parties are not direct competitors.

In the Romag case, the jury had originally determined that the infringement by Fossil was not willful because the company's Chinese supplier had been responsible for the infringement. The jury, however, awarded $6.7 million from the defendant's profits to the plaintiff. On appeal, the award was struck down because of a lack of willfulness.

Disputes involving intellectual property often hinge upon the interpretation of details. A party who needs to defend a trademark or respond to a lawsuit alleging infringement might want legal representation. An attorney who practices trademark law could research the specific details of the case. A legal evaluation could prepare the client to go to court or to enter into negotiations for a settlement.

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Benjamin Appelbaum, Attorney at Law - Intellectual Property

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