Is Quibi liable for patent infringement and trade secret misappropriation of its turnstyle technology?

            Eko, an interactive video company, accused Quibi of infringing one of its patents as well as misappropriating its trade secrets. In response, Quibi preemptively filed a complaint in the United States District Court for the Central District of California seeking a declaratory judgment of non-inringement of Eko’s patent and no misappropriation of trade secrets. The following day, Eko filed a complaint for patent infringement in the same court.

            In Quibi’s original complaint, the mobile-video company seeks relief from Eko’s attempts to tarnish Quibi’s brand and interfere with the highly anticipated launch of its platform. Quibi argues Eko’s allegations result solely from the widespread advertisement of Quibi’s high-profile novel service. In particular, Quibi believes Eko is attempting to capitalize on Quibi’s early acclaim through “demonstrably false claims of intellectual property infringement.”

            Quibi explains that two weeks after it announced its innovative platform at CES, an industry conference, Eko’s attorneys sent a demand letter to Quibi asserting that its turnstyle feature employs technology disclosed in Eko’s patent, thereby demanding Quibi immediately cease use of this proprietary technology. Quibi responded to the letter asserting its position but Eko proceded to contact a technology reporter to reiterate its false allegations and also, sent a notice to Apple, Inc. alleging Quibi’s app infringes Eko’s patent. Finally, Eko repeated its allegations to a reporter and editor of the Wall Street Journal. As a result of the foregoing, Quibi maintains its reasonably apprehended a lawsuit against it  that could wrongfully impact its ability to release its service.

            Quibi is an upcoming short-form mobile video platform set to launch April 6^th. Quibi utilizes an innovative technology designed to display television shows and movies on a small screen, such as that found on a smartphone. The platform was designed to optimize customer-viewing experience on a mobile device regardless of whether the phone was being held in portrait or landscape mode. As such, Quibi strove to create new technology capable of streaming video content that seamlessly adapted to those changes in orientation. Moreover, each episode is delivered in ten minutes or less, known as a “quick bite.” This service is targeted toward a younger demographic who commonly experience decreasing time and attention spans and increasing use of mobile devices. As of its launch, Quibi plans to offer more than fifty titles.

            In its complaint, Eko complains that Quibi’s turnstyle mobile-video technology infringes United States Patent No. 10,460,765 for “systems and methods for adaptive and responsive video.” Unlike the prior art, Eko’s patented feature does not crop or letterbox a presentation but instead, provides seamless transition from a first state of a video presentation to a second state of a video presentation. Eko asserts that, starting in 2015, and through 2018, Bloch met with three former Snap, Inc. employees under a nondisclosure agreement to integrate Eko’s technology into the Snapchat application. Three of those former Snap employees joined Quibi mere weeks prior to Quibi filing for its own patent on the turnstyle feature.

            Both complaints address meetings that took place between the founders of the respective companies. In its separate complaint, Eko argues that, in 2017, Quibi’s founder, Jeff Katzenberg, met with Eko’s founder/Chief Executive Officer, Yoni Bloch, to discuss a potential investment in Eko. Eko claims to have demonstrated its horizontal-to-vertical video technology. Ultimately, however, Katzenberg declined to invest in Eko. Quibi, in its complaint, asserts that no confidential information was requested nor provided during the one-time meeting of the companies’ founders.

            Traditionally, patents and trade secrets have presented opposite choices. Trade secrets derive protection through reasonable efforts to maintain secrecy and could theoretically last indefinitely. On the other hand, patents are only protectable through public disclosure. Indeed, patents are obtained through filing a patent application which discloses exactly what the inventor purports to be his invention. In addition, a patent only lasts a period of twenty years, upon the expiration of which the inventor’s monopoly is released for public use. Moreover, while one cannot legally use verbatim an inventor’s patent, reverse engineering of a trade secret is permissible.

Is “Panda Libre,” an Arizona-based restaurant offering Mexican and Asian fusion, likely to be confused with Panda Express?

            In August 2019, Panda Express sent a cease and desist letter to a Gilbert, Arizona-based restaurant, Panda Libre, which offers “Mexican and Asian Fusion” cuisine. In this correspondence, the fast food giant advised Panda Libre of its trademark rights and demanded that it cease using the mark, PANDA LIBRE. The proprietors of Panda Libre failed to respond to this letter in writing. However, attorneys on behalf of Panda Libre advised Panda Express’ counsel that it is unwilling to change its name and intends to continue use of the same.

            Panda Express was originally founded in 1973 as “Panda Inn.” The “panda” concept of the restaurant was inspired by the emerging friendship between the United States and China at the time, which was symbolized by two panda bears, Ling-Ling and Hsing-Hsing. The two famous pandas were provided as gifts to people of the United States by China after President Nixon’s historic 1972 visit, which marked the culmination of the Nixon administration’s resumption of harmonious relations between this country and mainland China after years of diplomatic isolation. In 1983, “Panda Express,” the fast-service version of the Panda Inn, was opened and within ten years, there were nearly one hundred Panda Express restaurants. Now, Panda Express is the largest Asian-American restaurant chain and family-owned restaurant in the United States with nearly 2,000 stores.

            Panda Express currently possesses over thirty federal trademark registrations. Indeed, the chain owns registration for PANDA, PANDA EXPRESS, PANDA PANDA, PANDA CAFÉ, GREAT PANDA, PANDA MANIA, PANDA KIDS, PANDA KITCHEN, and others. Moreover, several of Panda Express’ marks have acquired incontestability status due to their length of use. The restaurant claims to have expended significant resources to advertise its service and acquired substantial goodwill in its brand, including its marks. According to the complaint, of its offerings, Panda Express invented the “orange chicken burrito,” after introducing “The Original Orange Chicken” to the United States market in the late 1980s. Panda Express also asserts that this product was widely publicized as being an exclusive item.

            Last week, Panda Express filed a lawsuit in the United States District Court for the District of Arizona alleging federal trademark infringement, false designation of origin, unfair competition, federal trademark dilution, and unfair competition. In order to prevail, the restaurant chain will need to demonstrate that consumers are likely to be confused, mistaken, or deceived as to the source or origin of the goods or services offered by Panda Libre in that consumers are likely to believe or assume that Panda Libre is sponsored by, affiliated with, or otherwise connected to Panda Express. In assessing this likelihood of confusion, courts analyze several factors including the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; relatedness of the goods or services offered by the parties; similarity or dissimilarity of established, likely-to-continue trade channels; and the conditions under which the sales are made.

            Because Panda Express filed its complaint mere days ago, Panda Libre has yet to file an answer thereto. Pursuant to the Federal Rules of Civil Procedure, Panda Libre is allowed twenty-one days from being served with the summons and complaint within which to file a responsive pleading. In its response, Panda Libre will either admit or deny the allegations asserted by Panda Express and state in short and plain terms its defenses, if any, to each of the asserted claims. While Panda Libre did not formally respond to Panda Express’ written threats, it seems doubtful the single-location establishment will admit the restaurant chain’s allegations. Instead, Panda Libre owner, Paul Fan, has expressed his dismay with the lawsuit on the restaurant’s social media accounts indicating that it will “hold on as long as [they] can” but that the litigation “has put a heavy burden” on Fan and his family.

Is a San Francisco-based artist entitled to compensation or other remedies for Disney and Pixar’s alleged theft of her “vanicorn” copyright?

            A San Francisco-based tattoo artist, known as Sweet Cicely Daniher, is suing the Walt Disney Motion Pictures Group, Pixar Animation Studios and Kori Rae, producer of the movie Onward, for creating an animated version of her unicorn van without her permission. Moreover, Daniher alleges that her “vanicorn” was copied under “wickedly misleading pretenses.” As such, the plaintiff demands compensatory damages, statutory damages, and an injunction, such as to restrain the defendants from promoting, selling, or marketing the allegedly infringing motion picture, which is set to release in March.

            Daniher is an artist, photographer and tattooist based in San Francisco’s Mission District since the late 1990’s. According to her complaint, she regularly posts photographs of her work, as well as of random objects that look like unicorns via her various social media profiles and websites. As part of her fascination with unicorns, the plaintiff published a book consisting of her photographs of random objects appearing similar to unicorns, titled “I See Unicorns.” Overall, Daniher claims that unicorns have long been a central theme and subject matter of her artistic work.

            At issue in the present lawsuit is Daniher’s dark blue/purple 1972 Chevrolet G10 van. Since Daniher purchased her van in 2014, she has consistently posted images and expressed her intention to paint a unicorn mural on the side thereof. Later in 2014, after implementing tremendous specificity regarding the coloring and appearance of the van’s unicorn mural, Daniher applied her design to the side of her van. Around the same time, she posted a photograph on Instagram of the mobile mural, thereafter christening it as the “Vanicorn.” Following the “vanicorn’s” publication revelation, Daniher and her vehicle have enjoyed considerable press and media attention

            Subsequent to publication of her vehicle’s creative mural, Daniher was contacted by a representative from Pixar inquiring about renting the “vanicorn” for a one-day social event/musical festival taking place at Pixar’s facility for its employees in September of 2018. In the correspondence that followed, the Pixar agent allegedly represented that the van would be used as a “show piece” and “not used in any way other than a visual prop.” In addition, the parties’ agreement expressly limited the van’s use to the production of Pixar’s one day music festival/activity day for employees and their families only. The parties agreed to the exchange of the vanicorn for three and a half days for a confidential sum of money.

            A few months later, around May 2019, Daniher learned that Pixar was producing a 3D computer animated motion picture, entitled “Onward,” about two blue elves who are searching for a magical way to reunite with their deceased father. In pursuit of this goal, the elves use the services of a third character, “Guinevere,” a dark blue/purple van with a large mural of a unicorn on its side. Daniher alleges that the mural featured in the film is “a direct copy and/or visual duplication and/or doppelganger” of her vanicorn. Daniher published on her Instagram account that the van featured in the defendants’ motion picture infringed her van’s copyright. A few days after Daniher posted on her social media, Kori Rae allegedly called Daniher and apologized for the theft of the vanicorn, openly admitting to such theft.

            In her complaint, Daniher alleges copyright infringement of her vanicorn, for which she has registered a copyright with the United States Copyright Office. Under the Copyright Act, Daniher possesses the exclusive right to publish, copy, and distribute her work and these rights vested from the time of creation of her vanicorn. Because the tattoo artist is likely to argue direct copying, due to Pixar’s immediate access to her vanicorn (in addition to the van’s extensive online publication), she will need to prove that the two unicorn vans are substantially similar. Disney/Pixar has not yet responded to Daniher’s allegations.

Can San Francisco 49ers’ linebacker Kwon Alexander defeat Dallas Cowboys’ defender DeMarcus Lawrence’s allegations of trademark infringement?

            In this weekend’s Super Bowl LIV, the San Francisco 49ers face the Kansas City Chiefs. Meanwhile, off the field, the Dallas Cowboys are prepared to take on the 49ers in a court of law. In the 49ers’ long march to the Super Bowl, linebacker Kwon Alexander filed two trademark applications for “HOT BOYZZ” and “HOT BOYZZ UNIVERSITY.” Cowboys’ defenders and, namely, DeMarcus Lawrence claim they have been using the moniker since 2018 and that the 49ers copied it one year later.

            In October 2018, Tankland Ventures, LLC, an entity owned by DeMarcus Lawrence, filed a trademark application for “HOT BOYZ” in International Class 025 for athletic shirts, athletic shorts, hats, hooded pullovers, and other types of clothing. The application is an intent to use, or § 1(b), application, which means the trademark is not currently being used in commerce. Interestingly, the term “BOYS” has been disclaimed from the mark, meaning that this portion of the mark has been deemed unregistrable in that the word merely describes a category of clothing intended for male children. Because the application did not limit the goods to a specific category of user, children’s clothing for males is therefore included within its scope. While Lawrence’s application for “HOT BOYS” has been approved for publication by an examining attorney and has indeed completed its publication period, no statement of use has been filed yet. Once Lawrence files a statement of use alleging that the mark is currently being used in commerce, the USPTO will likely proceed to register the mark.

            On the other hand, Kwon Alexander filed applications for “HOT BOYZZ” and “HOT BOYZZ UNIVERSITY” mere months after Lawrence’s filing. However, Alexander claims a date of first use of January 1, 2016, while Lawrence has not filed any allegation of use for its mark. Identical to Lawrence’s “HOT BOYS” application, Alexander seeks registration for its marks in International Class 025 for athletic shirts, athletic shorts, hats, hooded pullovers, etc. Earlier this season, Alexander created shirts with “HOT BOYZZ” for his teammates and shouted out “HOT BOYZZ UNIVERSITY” during player introductions. While Alexander filed his applications last week, it will likely be months before the USPTO takes any official action related thereto.

            To challenge Alexander’s mark, if the United States Patent and Trademark Office (USPTO) approves the same for publication, DeMarcus Lawrence may initiate an opposition proceeding before the Trademark Trial and Appeal Board (TTAB). Once the USPTO determines that a party’s mark is registrable, a thirty-day opposition period is initiated during which third parties may oppose the mark’s registration. The third party filing the opposition must allege a belief that he or she would be damaged by the registration of the mark. Here, Lawrence could oppose Alexander’s mark on the ground that there exists a likelihood of confusion due to the existence of his prior application for “HOT BOYZ.”

            Because Alexander’s mark has not been published for opposition yet, Lawrence may file a letter of protest, which is an informal procedure that allows third parties to bring to the attention of the USPTO evidence bearing on the registrability of a mark. The most common ground for a letter of protest is a likelihood of confusion with a United States trademark registration or prior pending application, such as Lawrence’s HOT BOYZ application. While letters of protest may be submitted after the mark has been published, it is only accepted if the evidence supports a clear error on the part of the USPTO in approving the mark for publication. After the thirty-day publication period, a letter of protest will be denied as untimely.

            After the publication period has expired and a trademark registers, a third party who objects to registration of the mark may initiate a cancellation proceeding. A third party, such as Lawrence, may attempt to cancel a trademark registration that it believes may be damaging to its own trademark rights. Similar to oppositions and letters of protest, grounds for cancelation may include priority and likelihood of confusion based thereon. Trademark cancellations may be filed at any time within five years of the trademark registration date, or at any time if the trademark become abandoned, fraud is alleged in the mark’s procurement, or the mark becomes merely descriptive or generic of the goods or services for which it is registered.

            While no official legal action has been taken yet, Lawrence tweeted that his “legal team has been monitoring the situation, and has already taken the steps to protect our [trademark].” Other Cowboys players, including Jaylon Smith, have spoken out to support Lawrence in this dispute. However, it remains to be seen whether Lawrence, or his counsel, will proceed with action against Alexander before the USPTO or a federal court.

Does laCalifornienne’s colorful customization of authentic Rolex timepieces constitute fair use?

            Late in 2019, Rolex filed a lawsuit in the United States District Court for the Central District of California alleging that California-based laCalifornienne has been marketing and offering for sale counterfeit timepieces bearing Rolex’s trademarks. Rolex has been offering for sale its iconic timepieces for more than 114 years, including one of its most popular designs, the Rolex Oyster Perpetual. Rolex possesses trademark rights in and to ROLEX, OYSTER, and OYSTER PERPETUAL, in addition to trade dress in the designs of its timepieces. The lawsuit lists causes of action for trademark infringement, counterfeiting, and false designation of origin.

            Since its inception in 2016 in Los Angeles, laCalifornienne’s business model has comprised taking vintage Rolex and Cartier timepieces, replacing the original watch crystals, refashioning the bezels, and altering the dials by stripping the paint and finish therefrom and repainting and refinishing them in various vibrant colors. However, such watches still contain all original Rolex indicia. As a result, Rolex asserts that such altered watches “no longer attain the aesthetic” nor “perform or function to the same quality standards” as unaltered, original pre-owned Rolex watches. laCalifornienne sells its timepieces to consumers for between $6,500 to $14,000.

            Prior to bringing suit, Rolex received possession of two laCalifornienne timepieces bearing the Rolex trademark and indicia. The first, an original Oyster Perpetual, was purchased directly from an authorized-laCalifornienne retailer. The second was received at a Rolex service center in Pennsylvania for servicing. The first watch did not contain the alleged infringer’s name while the second did contain “laCalifornienne” added to the dial at the six o’clock position. Rolex alleges that laCalifornienne’s printing of its name on the dial of its altered watches, which continue to bear one or more of Rolex’s registered trademarks, including ROLEX and OYSTER PERPETUAL, cannot dispel their liability for infringement.

            Rolex alleges that laCalifornienne’s use of Rolex’s trademarks in this manner creates the erroneous impression that its products and services emanate or originate from Rolex, and/or that said products and services are authorized, sponsored, or approved by Rolex, though this is not the case. Moreover, Rolex is unable to monitor, enforce or maintain its quality control standards on the altered Rolex products assembled and offered for sale by laCalifornienne. In this way, Rolex alleges laCalifornienne has been unjustly enriched by illegally using and misappropriating Rolex’s intellectual property for their own financial gain.

            In its answer to Rolex’s complaint, laCalifornienne not only denies the allegations but also argues its watch modifications constitute fair use. Nominative fair use allows for the reasonably necessary use of another party’s trademark solely to identify that party or its products. Such fair use is allowable so long as the use is descriptive and does not suggest sponsorship or endorsement by the trademark holder. To prevail on this defense, the court will need to determine whether, by adorning Rolex timepieces in this manner, laCalifornienne has attempted to deliberately confuse and deceive the consuming public and appropriate the cachet of Rolex. Rolex is likely to argue laCalifornienne is making use of its marks in an attempt to benefit from the proven reputation and sheer appeal of Rolex’s watches.

            Unlike the majority of counterfeiting cases in which brands file lawsuits against individuals or companies for marketing and offering for sale outright knock-offs, Rolex alleges laCalifornienne’s watches are counterfeit despite the fact that they contain authentic Rolex parts. Specifically, Rolex does not take issue with laCalifornienne swapping out its traditional metal wristbands for colorful leather ones because this does not impair the functioning of the watches themselves. Instead, Rolex particularly takes issue with the fact that laCalifornienne customizes the watches with colorful parts, such as dials and crystals. Rolex claims such substituted parts are not properly fitted to the watch and are likely to adversely affect the dial and movement of the watch. This position is consistent with Rolex’s long-standing policy dictating that the alteration of its timepieces to include non-authentic Rolex parts, that is, parts not approved by Rolex, transforms an authentic watch into a counterfeit.

Can Google escape consequences for allegedly infringing Sonos’ patented technology?

            Last week, Sonos filed two separate lawsuits against Google alleging the search engine giant knowingly infringed upon its patented technology in the development of Google’s own smart speaker systems. One lawsuit was filed in the Central District of California, seeking damages and an injunction, and the other with the International Trade Commission, seeking a ban on Google’s infringing devices. In particular, Sonos complains of the Google Home series as infringing multiple of its issued patents.

            Patent owners possess the exclusive legal right to exclude others from making, using, selling, or offering for sale the invention described in the claims. Patent infringement occurs when a product or service meets all of the limitations of at least one independent claim of the patent. There is no requirement that the allegedly infringing party have knowledge of the existence of the patent in order to be held liable. However, if the infringing party did have knowledge of the patent prior to the accused-of conduct, that party may be liable to the patent owner for up to three times the amount of damages assessed.

            In its complaint, Sonos alleges to have pioneered the wireless multi-room audio system in the early 2000s. The company brought its first commercial product to market in 2005. The Santa Barbara-based company has been granted more than 750 patents by the United States Patent and Trademark Office and currently has 420 pending patent applications. These patents cover various aspects of Sonos’ wireless multi-room audio system, including setting up a playback device on a wireless local area network, managing and controlling groups of playback devices, and synchronizing playback of audio within groups of playback devices.

            Prior to Sonos’ innovation, multi-room audio systems were dependent on a centralized receiver hard-wired to each individual passive speaker throughout a home or business. Sonos changed this landscape by relying on intelligent, networked playback devices to deliver sound wirelessly. Sonos alleges its system is easy to set up and use and is customizable and is readily integrated with other technologies and services. Moreover, Sonos’ products are compatible with numerous third-party music streaming services, many of which have integrated their services into the Sonos platform.

            In 2013, Google and Sonos worked together through a partnership to integrate Google Play Music into the Sonos platform. During this partnership, Google gained knowledge of Sonos’ patented multi-room technology. In particular, Google was able to view Sonos’ proprietary technology in great detail due to the especially deep integration of Google Play Music therewith. In 2014, Google’s Google Play Music was launched on the Sonos platform.

            Two years after Google and Sonos partnered together, Google launched its first wireless multi-room audio product, Chromecast Audio, which is an audio adapter/dongle that can turn a speaker with an auxiliary port into a wireless, networked speaker. This is the first device which Sonos claims infringes its patents. Since Chromecast Audio’s release, Google has, according to Sonos, proliferated its use of Sonos’ patented technology. Indeed, Google has produced more than a dozen allegedly infringing products, including Google Home, Google Home Mini, Google Home Max, and Pixel phones, tablets, and laptops.

            In the complaint, Sonos lists five patents that were allegedly infringed by Google, though Sonos alleges that it believes Google violated roughly 100 different patents. Some of the features alleged by Sonos to be infringed by Google include setting up a playback device on a wireless local area network, adjusting group volume of playback devices, and synchronizing playback of audio within groups of playback devices. To make matters worse for Sonos, Google sells its Google Home Mini at a fraction of the cost of a Sonos comparable product. Google sells the Mini for $49 and has even offered them for free in a partnership with Spotify, thereby causing a massive influx of Google smart speakers that will enter the market.

            Sonos has warned Google of its infringement on at least six separate occasions dating back to 2016. Specifically, Sonos first raised the issue of infringement in August 2016 and most recently by providing a pre-filing copy of the complaint to Google. In addition, Sonos alleges Google has been aware of Sonos’ patents well before August 2016. This is due, in part, to Sonos’ previously-filed patent litigation against D&M, another competitor of Sonos and Google, in a lawsuit which garnered media attention and resulted in a jury verdict for Sonos.

            Interestingly, Sonos publicly maintains that Amazon has similarly infringed upon its patented technology but claims it decided to sue only Google as they “couldn’t risk battling two tech giants in court at once.” Unsurprisingly, similar to Google, Amazon denies such claims and maintains that the Echo family of devices was developed independently by Amazon. For its part, Google also denies Sonos’ infringement claims and has stated that it is “disappointed” by this lawsuit.

When can trademark infringers be forced to forfeit their ill-begotten profits?

            In 2010, Romag Fasteners, a company that produces and sells magnetic snaps, fasteners and closures, brought suit in the United States District Court for the District of Connecticut against Fossil Inc., as well as Macy’s, alleging patent and trademark infringement. According to the lawsuit, Fossil had been a licensee of Romag’s patent-protected magnetic closures but had switched to an unapproved supplier, which Romag alleges sold counterfeit Romag magnetic snaps. Thus, certain Fossil handbags sold in the United States were found to contain said counterfeit snaps. In this manner, not only did Fossil run afoul of Romag’s patents for the metal components, Fossil was also accused of violating Romag’s trademarks because the knock-off parts bore the “ROMAG” mark. Moreover, due to the existence of the agreement between the two parties in connection with which Fossil agreed to use Romag closures for its profits, Romag contends that Fossil knowingly adopted and used the Romag mark without its consent.

            Trademark infringement involves the unauthorized use of a trademark on or in connection with goods and/or services in a manner that is likely to cause consumers to be confused, deceived, or mistaken as to the source of the goods and/or services. When trademark infringement is found to be willful, the infringer is required to forfeit any profits realized from sale under the infringing mark.

            After a jury trial, Fossil was found liable for both patent and trademark infringement. The jury rendered advisory awards, including a reasonable royalty award of $51,000 for patent infringement and an award of $6.7 million of Fossil’s profits for willful trademark infringement. Thereafter, the District Court reduced the patent damages award and simultaneously decided that Romag could not recover Fossil’s profits for trademark infringement because the jury had not found the infringement to be willful. Rather, the jury had determined that Fossil had acted with “callous disregard” for Romag’s trademark rights. Upon appeal, the United States Court of Appeals for the Federal Circuit affirmed the award.

            In the Federal Circuit appeal, Romag argued that Fossil cannot invoke a laches defense to patent infringement and that the District Court erred in disallowing it from recovering Fossil’s profits without proving that the infringer acted willfully. Laches is a defense when the plaintiff has unreasonably delayed in making a claim and the defending party is prejudiced as a result. Regarding this argument, the Federal Circuit determined that laches remains a defense to legal relief in patent infringement cases because Congress codified the same. As to Romag’s contention that it is entitled to Fossil’s profits regardless of whether it proved that Fossil acted willfully, the Federal Circuit followed Second Circuit precedent in finding that because Romag did not prove that Fossil acted willfully, Romag is not entitled to recover Fossil’s profits. The decision regarding Fossil’s profits was then appealed to the United States Supreme Court.

            Through this case, the Supreme Court will decide whether, under Section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of Section 43(a), 15 U.S.C. § 1125(a). Currently, across the twelve circuit courts, there exists a split of precedents. In particular, six circuits, including the first, second, eight, ninth, tenth, and District of Columbia, strictly require willful infringement in order to recover an award of infringer’s profits. On the other hand, the remaining six circuits, including the third, fourth, fifth, sixth, seventh, and eleventh, have interpreted amendments to the statute to permit an award of the infringer’s profits absent a finding of willful infringement, reasoning that Congress’ failure to include the word “willfulness” in the relevant section of the statute indicated a desire to supersede the judicially created doctrine which requires willfulness. Instead, these circuits consider intent to be merely one of several factors to be considered in balancing the equities. To resolve this circuit court split regarding willfulness, the Supreme Court granted Romag’s petition for writ of certiorari in June 2019. Oral arguments are set to begin January 14, 2020.