Amicus Curiae Brief — Cirrus Design Corporation, Petitioner v. Great Western Air, LLC, dba Cirrus Aviation Services, LLC

No. 25-18

In the Supreme Court of the United States

__________

CIRRUS DESIGN CORPORATION,

Petitioner,

v.

GREAT WESTERN AIR, LLC

DBA CIRRUS AVIATION SERVICES, LLC,

Respondent.

__________

On Petition for a Writ of Certiorari to the

United States Court of Appeals for the Ninth Circuit

__________

BRIEF OF THE CATO INSTITUTE AS AMICUS

CURIAE IN SUPPORT OF PETITIONER

__________

Thomas A. Berry

Counsel of Record

Dan Greenberg

Caitlyn A. Kinard

CATO INSTITUTE

1000 Mass. Ave., N.W.

Washington, DC 20001

(443) 254-6330

tberry@cato.org

Dated: August 6, 2025

i

QUESTION PRESENTED

The question presented is:

Whether, as this Court held in Dairy Queen, the

Seventh Amendment jury-trial right applies in

trademark-infringement actions seeking monetary

relief in the form of the infringer’s profits.

ii

TABLE OF CONTENTS

Page

QUESTION PRESENTED ........................................... i

TABLE OF AUTHORITIES ....................................... iii

INTEREST OF AMICUS CURIAE ............................. 1

SUMMARY OF ARGUMENT ..................................... 2

ARGUMENT ................................................................ 5

I.

THE EXTRAORDINARY

IMPORTANCE OF THE JURY TRIAL

REQUIRES THIS COURT TO GRANT

IT EXTRAORDINARY WEIGHT. .................. 5

II. THIS COURT SHOULD GRANT THIS

PETITION SO THAT IT CAN

REAFFIRM ITS HOLDING IN DAIRY

QUEEN. ........................................................... 7

III. THE SEVENTH AMENDMENT

GUARANTEES THE RIGHT TO A

JURY TRIAL FOR RECOVERY OF

AN INFRINGER’S PROFITS UNDER

THE LANHAM ACT. .................................... 12

A. Trademark actions and the profit

remedy were historically legal

actions...................................................... 12

B. The purpose of the profit remedy

under the Lanham Act is most

analogous to a legal remedy. .................. 16

C. Because the profit remedy rests on

factual considerations, jury

resolution is appropriate......................... 19

CONCLUSION .......................................................... 21

iii

TABLE OF AUTHORITIES

Page(s)

Cases

4 Pillar Dynasty LLC v. N.Y. & Co., 933 F.3d

202 (2d. Cir. 2019) ............................................ 18, 20

Balt. & Carolina Line, Inc. v. Redman, 295

U.S. 654 (1935) ....................................................... 20

Beacon Theatres v. Westover, 359 U.S. 500

(1959) .................................................................. 6, 15

Byrd v. Blue Ridge Coop., 356 U.S. 525 (1958) ........ 19

CFE Racing Prods. v. BMF Wheels, Inc., No.

11-13744, 2013 U.S. Dist. LEXIS 203251

(E.D. Mich. May 23, 2013) ..................................... 11

City of Monterey v. Del Monte Dunes, 526 U.S.

687 (1999) ............................................................... 12

Dairy Queen, Inc. v. Wood, 369 U.S. 469

(1962) .................................................... 3, 7, 8, 14, 15

Dimick v. Schiedt, 293 U.S. 474 (1935)................. 5, 19

Feltner v. Columbia Pictures TV, 523 U.S. 340

(1998) .................................................................. 8, 19

Ferrari S.P.A. v. Roberts, 944 F.2d 1235

(6th Cir. 1991) .................................................... 4, 10

Foley v. Hill, 2 H. L. Cas. 28 (1848) .......................... 15

George Basch Co. v. Blue Coral, Inc., 968 F.2d

1532 (2d Cir. 1992) ........................................... 16, 17

Hard Candy, LLC v. Anastasia Beverly Hills,

Inc., 921 F.3d 1343 (11th Cir. 2019) .................. 4, 11

iv

Kennedy v. Lakso Co., 414 F.2d 1249

(3d Cir. 1969) ............................................................ 9

La Bamba Licensing, LLC v. La Bamba

Authentic Mexican Cuisine, Inc., 75 F.4th

607 (6th Cir. 2023) ................................................. 16

Lord Townshend v. Hughes, 86 Eng. Rep. 994

(C. P. 1677)) ............................................................ 19

Markham v. Westview Instruments, Inc., 517

U.S. 370 (1996) ....................................................... 12

McCullough v. Dairy Queen, Inc., 194 F.

Supp. 686 (E.D. Pa. 1961) ...................................... 11

Nat’l Presto Indus., Inc. v. U.S. Merchs. Fin.

Grp., Inc., 121 F.4th 671 (8th Cir. 2024) ........... 4, 10

Oxford Indus., Inc. v. Hartmax Corp., No. 88

C 0322, 1990 U.S. Dist. LEXIS 5979

(N.D. Ill. May 2, 1990) ................................. 9, 17, 18

Perttu v. Richards, 145 S. Ct. 1793 (2025).......... 20, 21

Romag Fasteners, Inc. v. Fossil Grp., Inc.,

590 U.S. 212 (2020) ................................................ 20

S.E.C. v. Jarkesy, 603 U.S. 109 (2024)

.......................................................... 5, 16, 18, 19, 21

Sid & Marty Krofft TV Prods. v. McDonald’s

Corp., 562 F.2d 1157 (9th Cir. 1977) ............... 10, 11

Singleton v. Bolton, 99 Eng. Rep. 661 (1783) ........... 13

Skidmore v. Led Zeppelin, 952 F.3d 1051

(9th Cir. 2020) ........................................................ 10

Swofford v. B & W, Inc., 336 F.2d 406

(5th Cir. 1964) .................................................... 9, 18

v

Tandy Corp. v. Malone & Hyde, Inc., 769 F.2d

362 (6th Cir. 1985) ................................................. 10

Statutes

15 U.S.C. § 1117 .......................................................... 9

15 U.S.C. § 1117(a) ...................................................... 2

15 U.S.C. § 1117(b) .................................................... 20

Other Authorities

ANNALS OF CONG. (Joseph Gales ed., 1789) ................ 6

Charles W. Wolfram, The Constitutional

History of the Seventh Amendment, 57

MINN. L. REV. 639 (1973) ......................................... 6

Declaration of Independence: A Transcription,

NAT’L ARCHIVES ........................................................ 6

Edmund O. Belsheim, The Old Action of

Account, 45 HARV. L. REV. 466 (1932) ................... 15

Gary M. Ropski, The Federal Trademark Jury

Trial—Awakening of a Dormant

Constitutional Right, 70 TRADEMARK REP.

177 (1980) ......................................... 7, 12, 13, 14, 15

Lionel Bently, The First Trademark Case at

Common Law? The Story of Singleton v.

Bolton (1783), 47 U.C. DAVIS L. REV. 969

(2014) ...................................................................... 13

Mark A. Thurmon, Confusion Codified: Why

Trademark Remedies Make No Sense,

17 J. INTELL. PROP. L. 245 (2010) .................... 13, 14

Mark W. Bennett, Judges’ Views on

Vanishing Civil Trials, 88 JUDICATURE 306

(2005) ........................................................................ 6

vi

WILLIAM BLACKSTONE, COMMENTARIES....................... 6

1

INTEREST OF AMICUS CURIAE1

The Cato Institute is a nonpartisan public policy

research foundation founded in 1977 and dedicated to

advancing the principles of individual liberty, free

markets, and limited government. Cato’s Robert A.

Levy Center for Constitutional Studies was

established in 1989 to promote the principles of limited

constitutional government that are the foundation of

liberty. Toward those ends, Cato publishes books and

studies, conducts conferences, produces the annual

Cato Supreme Court Review, and files amicus briefs.

Cato’s interest in this case lies in ensuring that the

fundamental right to a jury trial that is enshrined in

the Seventh Amendment receives appropriate

protection and support from this Court.

1 Rule 37 statement: All parties were timely notified of the filing

of this brief. No part of this brief was authored by any party’s

counsel, and no person or entity other than amicus funded its

preparation or submission.

2

SUMMARY OF ARGUMENT

The Seventh Amendment provides that “[i]n Suits

at common law, where the value in controversy shall

exceed twenty dollars, the right of trial by jury shall be

preserved.” U.S. CONST. amend. VII. This case is about

whether that right applies for plaintiffs who seek an

award of profits for trademark infringement.

This case began with an action for trademark infringement under the Lanham Act. Cirrus Aviation

Services, LLC (“Respondent”) sought declaratory relief

through a finding that its name did not infringe the

mark of Cirrus Design Corporation (“Petitioner”), and

Petitioner countersued for infringement. App. 25–26.

Under the Lanham Act, a plaintiff suing for trademark

infringement can recover: (1) the defendant’s profits,

(2) the damages sustained by the plaintiff, and (3) the

costs of the action. 15 U.S.C. § 1117(a). If Petitioner

had opted to recover actual damages, it would indisputably have been entitled to a jury trial.

Instead, Petitioner opted to recover Respondent’s

profits, which teed up the question presented in this

case. Petitioner demanded a jury trial to determine

both trademark infringement liability and the amount

of defendant’s profits under the Lanham Act. But the

Ninth Circuit held that Petitioner was not entitled to

a jury trial on either issue, solely because Petitioner

had opted to recover defendant’s profits rather than

actual damages under the Lanham Act. See App. 1–4.

Petitioner now asks this Court to grant certiorari and

ultimately vindicate its Seventh Amendment right to

a jury trial.

3

How should courts decide whether litigants in Petitioner’s position are entitled to a jury trial? Sixty

years ago, in Dairy Queen, Inc. v. Wood, this Court answered that question. In Dairy Queen, this Court determined that litigants like Cirrus Design Corporation

are entitled to a jury trial—even if the litigant is seeking an “accounting of profits.” See Dairy Queen, Inc. v.

Wood, 369 U.S. 469, 477–78 (1962). The Court in Dairy

Queen held that when “owners of [a] trademark” bring

an “infringement” claim seeking “a money judgment,”

the “claim . . . is unquestionably legal.” Id. at 473–77.

In other words, such claims qualify as a “Suits at common law” and trigger the Seventh Amendment jury

right. The Court’s unambiguous identification of the

nature of that claim—namely, that it is “unquestionably legal” rather than equitable—settles the question

at hand today.

Regrettably, some lower courts have failed to apply the straightforward holding of Dairy Queen. Instead, they have made the constitutional right to a jury

trial in trademark cases dependent upon whether the

infringer seeks “an accounting” of profits rather than

seeking “damages.” See id. at 477. These courts erred

by applying Dairy Queen only to claims for trademark

damages, but that case affirmed the right to a jury

trial even when the plaintiff opts to recover defendant’s profits under the Lanham Act. Notably, the Court

in Dairy Queen sought to avoid this problem when it

reasoned that the substance of the remedy controlled

whether a jury trial was appropriate—and upheld the

right to a jury trial in cases similar to the one here. See

id.

4

The Ninth Circuit’s disregard of Dairy Queen’s

central holding warrants this Court’s review. Regrettably, however, the Ninth Circuit is not the only Court

that has denied a jury trial to litigants who seek recovery of the profits of patent infringement. The Sixth,

Eighth, and Eleventh Circuits have also held that

there is no right to a jury trial if the owner of a trademark seeks the recovery of an infringer’s profits under

the Lanham Act.2 Because these circuits have misinterpreted the holding of Dairy Queen, they have deprived the trademark owners of their constitutional

right to a jury trial.

A proper understanding of the right to a jury trial

in this context requires attention to text, history, and

tradition. An action for trademark infringement is

most analogous to an “action on the case” or an “action

in deceit”: Such actions were considered legal, not equitable, and they therefore would have been heard by

a jury. Furthermore, the profit remedy is also more

analogous to a remedy at law than a remedy in equity,

because of both its historical roots and its modern purpose. The profit remedy under the Lanham Act was designed as an alternative method to approximate the

trademark owner’s damages and as a means to deter

future unlawful use of the mark—both characteristics

of legal remedies. Finally, a jury is particularly well2 See Hard Candy, LLC v. Anastasia Beverly Hills, Inc., 921 F.3d

1343, 1348 (11th Cir. 2019) (“a plaintiff seeking the defendant’s

profits in lieu of actual damages is not entitled to a jury trial”);

Nat’l Presto Indus., Inc. v. U.S. Merchs. Fin. Grp., Inc., 121 F.4th

671, 680 (8th Cir. 2024) (rejecting an “expansive” interpretation

of Dairy Queen and holding that there is no jury trial right); Ferrari S.P.A. v. Roberts, 944 F.2d 1235, 1248 (6th Cir. 1991) (holding that there was no jury trial right for a disgorgement of profits

remedy).

5

equipped to decide both liability and the scope of the

profit remedy, because both inquiries entail factual determinations.

Ideally, this Court’s long-standing Dairy Queen

precedent would already have been universally applied. But because of erroneous decisions in lower

courts, this Court’s review is necessary to provide additional guidance to lower courts and ensure a uniform

nationwide rule, so that a trademark owner’s right to

a jury trial does not hinge on a litigant’s choice of forum. Accordingly, this Court should grant the petition

to preserve the fundamental right to a jury trial in

trademark infringement cases.

ARGUMENT

I.

THE EXTRAORDINARY IMPORTANCE OF

THE JURY TRIAL REQUIRES THIS COURT

TO GRANT IT EXTRAORDINARY WEIGHT.

This Court has acknowledged that “[t]he right to

trial by jury is ‘of such importance and occupies so firm

a place in our history and jurisprudence that any

seeming curtailment of the right’ has always been and

‘should be scrutinized with the utmost care.’” S.E.C. v.

Jarkesy, 603 U.S. 109, 110 (2024) (quoting Dimick v.

Schiedt, 293 U.S. 474, 486 (1935)). This case represents one such “curtailment” of the right to trial by

jury that is worthy of this Court’s attention, particularly given lower-court decisions that appear to have

overlooked this Court’s holdings.

The jury trial is deeply rooted in American law because its processes prevent arbitrary and wrongful

deprivations of individual rights. Instead of concentrating judicial power into the hands of a single judge,

the Constitution protects our substantive liberties by

6

dispersing that power into a jury of our peers. In short,

the Constitution makes the jury trial the predominant

mechanism for adjudication because it embodies the

collective wisdom and experience of the people.

The right to a civil jury trial predates the Constitution’s adoption. In 1768, William Blackstone wrote

that the jury trial was “the glory of the English law,”

which possesses “so great an advantage over others in

regulating civil property . . . .”3 One of the “injuries and

usurpations” named in the Declaration of Independence is that the King deprived the colonists “in many

cases, of the benefits of Trial by Jury.”4 James Madison

argued that the jury trial was as “essential to secur[ing] the liberty of the people as any one of the preexistent rights of nature.”5 The Anti-Federalists vociferously criticized the absence of the right to a jury trial

in the original Constitution: They contended that establishing this right was necessary for “the protection

of debtor defendants; the frustration of unwise legislation; the overturning of the practices of courts of viceadmiralty . . . and the protection of litigants against

overbearing and oppressive judges.”6

Given the importance of the right to a jury trial,

courts should resolve any doubt in favor of preserving

it. See Beacon Theatres v. Westover, 359 U.S. 500, 510

(1959) (“Since the right to [a] jury trial is a constitutional one” discretion should “wherever possible, be

3 3 WILLIAM BLACKSTONE, COMMENTARIES *379.

4 Declaration of Independence: A Transcription, NAT’L ARCHIVES,

available at https://tinyurl.com/4hsdsx5h.

5 Mark W. Bennett, Judges’ Views on Vanishing Civil Trials, 88

JUDICATURE 306, 307 (2005) (quoting 1 ANNALS OF CONG. 454 (Joseph Gales ed., 1789) (discussing civil cases)).

6 Charles W. Wolfram, The Constitutional History of the Seventh

Amendment, 57 MINN. L. REV. 639, 670–71 (1973).

7

exercised to preserve [a] jury trial.”). This Court

should therefore grant the petition and resolve the circuit split by preserving the right to a jury trial when

trademark owners seek a profit remedy under the Lanham Act.

II. THIS COURT SHOULD GRANT THIS PETITION

SO THAT IT CAN REAFFIRM ITS HOLDING IN

DAIRY QUEEN.

This Court’s decision in Dairy Queen held that

trademark actions are legal in nature. See Dairy

Queen, 369 U.S. at 477 (“an action for damages based

upon a charge of trademark infringement . . . would be

no less subject to cognizance by a court of law.”); see

also Gary M. Ropski, The Federal Trademark Jury

Trial—Awakening of a Dormant Constitutional Right,

70 TRADEMARK REP. 177, 205 (1980). Furthermore,

Dairy Queen “firmly established that the labels used

in requesting relief do not make the action either legal

or equitable.” Ropski, supra, at 186. Instead, the “real

test” for determining whether a remedy is equitable is

“the absence of an adequate remedy at law,” and the

right to a jury trial can only be denied where “accounts

between the parties are of such a complicated nature

that only a court of equity can satisfactorily unravel

them.” Id. (internal quotation marks omitted). Here,

as in Dairy Queen, a monetary claim for trademark infringement is “unquestionably legal,” and therefore

appropriate for jury resolution. Dairy Queen, 369 U.S.

at 476.

In Dairy Queen, the owners of the trademark

“Dairy Queen” sued the defendant for failing to make

payments under an exclusive licensing agreement and

continuing to use the mark after the contract’s termination. Id. at 473–75. The trademark owners sued for

8

injunctive relief and an “accounting to determine the

exact amount of money owing by petitioner and a

judgement for that amount.” Id. at 475. The defendant

requested a jury trial, which was denied by the lower

courts, and this Court took the case on mandamus. The

Court did not specify whether the theory of recovery

was specific to the owners’ claim for breach of contract

or for trademark infringement; instead, the Court issued a more general holding, explaining that the owners’ “claim for a money judgment is a claim wholly legal in its nature however the complaint is construed.”

Id. at 477.

The Court acknowledged the trademark owners’

argument that an “accounting” is traditionally an equitable term, but it emphasized that “the constitutional right to trial by jury cannot be made to depend

upon the choice of words used in the pleadings.” Id. at

477–78. Furthermore, the Court explained that a

“jury, under proper instructions from the court, could

readily determine the recovery” and that a legal remedy is not considered “inadequate because the measure

of damages may necessitate a look into petitioner’s

business records.” Id. at 478–79. In short, the Court

permitted a jury to award defendant’s profits to plaintiff under the Lanham Act.

This Court later relied on its holding in Dairy

Queen to similarly preserve the right to a jury trial in

copyright actions where the claimant sought statutory

damages rather than actual damages. Feltner v. Columbia Pictures TV, 523 U.S. 340, 346, 353 (1998) (citing Dairy Queen for the proposition that an award of

actual damages and profits are “generally thought to

constitute legal relief.”).

9

Most district courts after Dairy Queen interpreted

its holding properly. For instance, in Oxford Indus.,

Inc. v. Hartmarx Corp., the Northern District of Illinois provided a careful application of Dairy Queen’s

reasoning. It explained:

Because trademark actions were historically legal, because an equitable accounting for profits was not granted except

when there was some other basis of equitable jurisdiction, because an award of

profits in the trademark context is more

like an award of damages than restitution and because any doubts should be resolved in favor of the policy expressed in

Beacon Theatres and Dairy Queen favoring jury trials of factual issues, we believe

that Dairy Queen, Ross and Curtis entitled Hartmarx to a jury trial on its claim

for profits under 15 U.S.C. § 1117.

Oxford Indus., Inc. v. Hartmax Corp., No. 88 C 0322,

1990 U.S. Dist. LEXIS 5979, at *25 (N.D. Ill. May 2,

1990).

In other intellectual property cases, circuit courts

relied on Dairy Queen to uphold the right to a jury trial

in patent and copyright actions. The Fifth Circuit held

that there was a jury trial right in a patent suit in

which the claimant sought an “accounting for profits.”

Swofford v. B & W, Inc., 336 F.2d 406, 408 (5th Cir.

1964). Similarly, the Third Circuit held that there was

a jury trial right in a patent suit in which the claimant

requested profits as compensation for an infringement.

Kennedy v. Lakso Co., 414 F.2d 1249 (3d Cir. 1969) (“no

distinction can be drawn which would justify recognition of the right to jury trial for ‘damages’ and its

10

denial in a claim for ‘profits’ on the theory that ‘damages’ are recoverable in an action at law whereas ‘profits’ have their origin in equitable principles . . . .”). Indeed, the Ninth Circuit held that there was a jury trial

right in a copyright suit, finding that the “[p]laintiffs

in this case had a right to a jury trial” because an accounting of profits is considered a legal remedy.7 Sid

& Marty Krofft TV Prods. v. McDonald’s Corp., 562

F.2d 1157, 1174–75 (9th Cir. 1977), overruled on other

grounds by Skidmore v. Led Zeppelin, 952 F.3d 1051

(9th Cir. 2020) (en banc).

However, other courts have interpreted Dairy

Queen in a way that cannot be reconciled with the

plain text of that decision. The Sixth Circuit held that

a request for an injunction and an accounting were equitable remedies and that there was no right to a jury

trial, which contradicted its earlier decision that held

the opposite under Dairy Queen. See Ferrari, 944 F.2d

at 1248; But see Tandy Corp. v. Malone & Hyde, Inc.,

769 F.2d 362, 364 (6th Cir. 1985) (citing Dairy Queen

for the proposition that “the damages or accounting aspect of trademark actions are considered legal actions

for purposes of the jury trial clause of the Seventh

Amendment.”). The Eighth Circuit similarly held that

there was no jury trial right to determine profits under

the Lanham Act, rejecting an “expansive” interpretation of Dairy Queen. Nat’l Presto Indus., 121 F.4th at

680. Further, the Eleventh Circuit rejected a

7 The parties in Sid & Marty Krofft TV Prods. did not intend for

the jury to consider profits. See 562 F.2d at 1175. The Ninth Circuit thus did not find the district court in error because “a right

is not an obligation.” Id. While Dairy Queen decided that the parties have a right to a jury trial, “[i]t certainly cannot be read to

hold that the parties are required to have a jury determination

even if they do not wish it.” Id.

11

straightforward reading of Dairy Queen, arguing that

“it would have been strange for the Court to have implicitly held, without any historical analysis, that it

deemed accounting and disgorgement of profits to be a

legal remedy requiring a jury trial.” See Hard Candy,

LLC, 921 F.3d at 1358.

In short, these conflicting decisions “attempt to

distinguish Dairy Queen as holding only that claims

for an accounting in a contract dispute amount to legal

damages.” CFE Racing Prods. v. BMF Wheels, Inc., No.

11-13744, 2013 U.S. Dist. LEXIS 203251, at **8–9

(E.D. Mich. May 23, 2013). However, “those cases misread the Supreme Court’s clear language,” because

this Court has affirmed the right to a jury trial to determine an accounting of defendant’s illegal profits irrespective of whether the action rests on breach of contract or trademark infringement. Id. Indeed, the district court decision leading up to Dairy Queen characterized the remedy as “profits illegally obtained by the

defendant,” not legal damages. See McCullough v.

Dairy Queen, Inc., 194 F. Supp. 686, 687 (E.D. Pa.

1961). In short, those decisions of the Sixth, Eighth,

and Eleventh Circuit are erroneous, and their errors

invite this court to articulate once again the principles

of law that inform the application of the Seventh

Amendment.

Notably, even though the Ninth Circuit correctly

applied Dairy Queen’s holding in a copyright action,

see Sid & Marty Krofft TV Prods., 562 F.2d at 1175, it

failed to do so in the case at hand. The Ninth Circuit

chose the wrong path: It should have granted a jury

trial to determine the infringer’s illicit profits, because

its reasoning should have rested on the plain language

of Dairy Queen. It chose instead to follow the lead of a

12

few other lower courts that have given insufficient attention to Dairy Queen’s text and reasoning. Here, Petitioner requests the same right to a jury trial that the

Court has already affirmed in Dairy Queen. This

Court’s review is necessary to ensure that its decision

in Dairy Queen is appropriately relied on and respected by the circuit courts now and in the future.

III. THE SEVENTH AMENDMENT GUARANTEES

THE RIGHT TO A JURY TRIAL FOR RECOVERY

OF AN INFRINGER’S PROFITS UNDER THE

LANHAM ACT.

Judicial interpretation of the Seventh Amendment

requires a two-pronged approach to determine

whether the historical right to a jury trial applies in

the concrete circumstances of the case at hand. First,

the court must analyze whether the cause of action “either was tried at law at the time of the founding or is

at least analogous to one that was”; second, the court

must ask “whether the particular trial decision must

fall to the jury in order to preserve the substance of the

common-law right as it existed in 1791.” City of Monterey v. Del Monte Dunes, 526 U.S. 687, 708 (1999)

(quoting Markham v. Westview Instruments, Inc., 517

U.S. 370, 376 (1996)) (internal citations and quotation

marks omitted). This suit satisfies both prongs. Both

the trademark action and the profits remedy were historically decided in courts of law, and the jury trial

right is necessary here to preserve trademark rights

as they existed in 1791.

A. Trademark actions and the profit remedy

were historically legal actions.

Trademark actions were “historically legal.” Ropski, supra, at 180–81. Indeed, “[t]he first case report

13

referring to trademark rights states that, sometime

before 1617, an action at law (trespass on the case for

deceit) was maintainable.” Id. at 179. Although some

elements of trademark law are arguably present in

older reported cases, the seminal 1783 case, Singleton

v. Bolton, is typically cited by scholars as the first reported case for trademark infringement. See Lionel

Bently, The First Trademark Case at Common Law?

The Story of Singleton v. Bolton (1783), 47 U.C. DAVIS

L. REV. 969, 969 (2014); see also Singleton v. Bolton, 99

Eng. Rep. 661, 661 (1783). In that case, the judge

stated that “if the defendant had sold a medicine of his

own under the plaintiff’s name or mark, that would be

a fraud for which an action [at law] would lie.” Bently,

supra, at 989 (internal citations omitted). In any

event, what is certain is that trademark actions are

deeply rooted in courts of law.

In comparison, “[t]rademark actions in equity are

relative latecomers.” Id. at 179. Because the common

law historically did not allow for discovery proceedings, damages were difficult to quantify if trademark

actions were brought in courts of law. Mark A. Thurmon, Confusion Codified: Why Trademark Remedies

Make No Sense, 17 J. INTELL. PROP. L. 245, 260–61

(2010). Furthermore, injunctions were only available

in courts of equity. Id. at 261. The result was that

“[t]he damages remedy provided in early common law

trademark actions was grossly inadequate.” Id. at 262.

However, even when a trademark action was brought

in equity, “the Court of Chancery rarely ever grant[ed]

an injunction until the legal right to the trade mark

ha[d] been established by an action or issue at law.”

Bently, supra, at 984 (internal citations omitted). The

“popularity of the injunction to remedy the continuing

wrong” in trademark actions may have “obliterated”

14

the “memory of the legal genesis of the trademark action,” but the origins of the trademark action lie in

courts of law. Ropski, supra, at 181.

Although trademark actions became popular in equity because they permitted litigants to conduct discovery, obtain an injunction, and receive competent

adjudication in complex cases, the merger of law and

equity eliminated the reasons for litigants to bring

such suits in equity. Today, courts of law allow for both

discovery and the issuance of injunctions in the same

action. Additionally, modern courts trust juries to determine complex cases: Today, the suggestion that a

case contains legal issues that are just too difficult for

a jury to understand is heavily disfavored. See Dairy

Queen, Inc., 369 U.S. at 478. Any requirement to bring

trademark suits in equity is long gone: what remains

is the historical fact that such actions were originally

brought in courts of law.

The upshot of all of this is that the Ninth Circuit

erred in its assignment of decision-making power with

respect to the question of liability. Because trademark

infringement is a legal—not an equitable—issue, the

proper decider was the jury and not the judge. This

would be so even if Respondent were right to argue

that the profit remedy under the Lanham Act sounds

in equity. See Thurmon, supra, at 266–67 n. 99 (detailing cases wherein an injunction was only awarded in

equity after a successful action at law determined the

issue of liability).

Further, like the trademark action, the profit remedy was also heard by courts of law before being heard

by courts of equity. See Ropski, supra, at 184. The “Action of Account” for lost profits was one of the original

common law actions that was historically tried by a

15

jury. See generally Edmund O. Belsheim, The Old Action of Account, 45 HARV. L. REV. 466 (1932). To be

sure, the accounting remedy at law was “cumbrous,

awkward, and dilatory.” Id. at 493–99. Juries had to

resolve factual disputes about the size of damages in a

special verdict after finding liability. Sometimes this

was a challenging prospect, given the absence of discovery in legal proceedings. Id. at 497–99. For that

reason, courts of equity entertained suits where “the

question had turned entirely upon an account so complicated, and so long, as to make it inconvenient to

have it taken at law.” Id. at 500 (quoting Foley v. Hill,

2 H. L. Cas. 28 (1848)). These obstacles to accounting

at law no longer exist today “in view of the powers

given to District Courts by [the] Federal Rule[s] of

Civil Procedure.” Dairy Queen, 369 U.S. at 478.

In the era of the merger between law and equity,

the “clean-up doctrine permitted a chancellor deciding

injunctive relief to award legal relief such as an accounting without a jury,” but an accounting was considered “incidental” to the equitable claim. Ropski, supra, at 184. However, in Beacon Theatres, this Court

narrowed the scope of the clean-up doctrine to an almost imperceptible point: That decision now requires

that “only under the most imperative circumstances,

circumstances which in view of the flexible procedures

of the Federal Rules we cannot now anticipate, can the

right to a jury trial of legal issues be lost through prior

determination of equitable claims.” 359 U.S. at 510–

11. Perhaps, long ago, it might have been more fitting

to tie the profit remedy to injunctive relief and courts

of equity, but modern developments necessitate a different path. This Court should follow Beacon Theatres

by preserving the right to a jury trial when a claimant

recovers profits under the Lanham Act.

16

To sum up: Of course it is true that both trademark

actions and profit remedies were once considered in

courts of law as well as courts of equity, but both of

these devices were originally found in courts of law,

where they would have been considered by a jury. To

the extent that there is ambiguity about whether this

action and this remedy are fundamentally legal or equitable, this Court should grant the petition so that it

can resolve this uncertainty in favor of preserving the

right to a jury trial.

B. The purpose of the profit remedy under

the Lanham Act is most analogous to a

legal remedy.

Monetary remedies are considered the “prototypical common law remedy.” Jarkesy, 603 U.S. at 123. But

this Court should also look to the purpose of the remedy in determining whether it is legal or equitable. See

id. Courts that assign profits to plaintiffs under the

Lanham Act have offered the following justifications:

(1) preventing unjust enrichment; (2) compensating

the plaintiff as a proxy for damages; and (3) deterring

the defendant from future unlawful use of the mark.

See La Bamba Licensing, LLC v. La Bamba Authentic

Mexican Cuisine, Inc., 75 F.4th 607, 613 (6th Cir. 2023)

(recognizing these theories as “commonly-recognized,

nonpunitive, theories of trademark recovery); see also

George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532,

1537 (2d Cir. 1992). Although preventing unjust enrichment is an equitable matter, the Lanham Act’s

mechanism more closely resembles a legal remedy:

that is because the Lanham Act’s remedy approximates damages that are difficult to quantify and deters the infringer from future unlawful use.

17

Unlike other actions in which damages are often

easily quantified, “damages from trademark or trade

dress infringement are often hard to establish,” because of “the inherent difficulty in isolating the causation behind diverted sales and injured reputation.” Id.

at 1539. In trademark actions, actual damages resulting from the defendant’s unlawful use of a mark are

difficult to approximate, so an award of defendant’s

profits is recoverable as a “surrogate for damages.” See

Oxford Indus, Inc., 1990 U.S. Dist. LEXIS 5979, at *23.

In other words, some remedies require innovative

methods to calculate damages, and the award of profits is one such method. Here, the award of profits rests

on a theory of trademark dilution, which itself suggests a workable way to make the plaintiff whole. Dilution occurs when an inferior competitor uses the

mark to gain a reputational advantage while simultaneously harming the plaintiff’s goodwill. Someone

harmed by trademark dilution might be insufficiently

compensated by an award for actual damages. The

Lanham Act allows for the recovery of the defendant’s

profits—which may be greater than actual damages.

Although the profit remedy may “restore the status

quo” in some contexts, the Lanham Act use of the profit

remedy ensures that the plaintiff who is harmed by

trademark dilution is fully compensated.

Indeed, the Fifth Circuit’s decision in Swofford follows the same logic for patent suits. The court reasoned that “[t]he profits which were recoverable in equity against an infringer of a patent were compensation for the injury the patentee had sustained from the

invasion of his rights. Such profits were considered the

measure of the patentee’s damages[,] [so] [i]t was very

early recognized that, ‘though called profits, they are

really damages.’” Swofford, 336 F.2d 406, 411 (5th Cir.

18

1964) (internal citations omitted). Although an accounting for profits may have been a “creature of equity,” the remedy was only incidental to an injunction

brought in equity courts and was “justified historically

to avoid multiplicity of litigation.” Id. Thus, the Fifth

Circuit treated an “accounting of profits” as a legal

remedy for Seventh Amendment purposes, allowing

the jury to award profits. Id.

Another justification for profit recovery under the

Lanham Act rests on the deterrence of future trademark infringement. The remedy allows greater recovery for plaintiffs if the defendant intentionally infringes on their mark. Even if a plaintiff has no evidence of actual confusion, they may seek the defendant’s profits if they can show that the defendant willfully or fraudulently used the trademark. See 4 Pillar

Dynasty LLC v. N.Y. & Co., 933 F.3d 202, 212 (2d. Cir.

2019). A monetary remedy is considered legal if it is

“designed to punish or deter the wrongdoer, or on the

other hand, solely to ‘restore the status quo.’” Jarkesy,

603 U.S. at 123. Because the profit remedy under the

Lanham Act also functions as a deterrent and does not

restore the status quo, it is most like a legal remedy.

Under either justification of the profit remedy, a

recovery of defendant’s profits for trademark infringement “is arguably more in the nature of compensatory

damages than restoring the trademark owner’s own

property to him, which is what is normally understood

by restitution.” Oxford Indus., Inc., 1990 U.S. Dist.

LEXIS 5979, at *23. Furthermore, even if an accounting of profits sounds in equity in other contexts, it does

not follow that the profit remedy is equitable generally. Rather, the Court should consider the purpose of

the remedy to determine whether it is legal or

19

equitable in this context, as it did in Jarkesy. See

Jarkesy, 603 U.S. at 123. Because the profit remedy

under the Lanham Act acts as both a proxy for damages and a deterrent, it most resembles a legal remedy

and should be treated as such for Seventh Amendment

purposes. This Court should therefore grant the petition to preserve the right to a jury trial under the Lanham Act.

C. Because the profit remedy rests on factual

considerations, jury resolution is appropriate.

When the Constitution was adopted, it was considered “so peculiarly within the province of the jury” to

assess “uncertain” damages that “the Court should not

alter” the jury’s assessment. Dimick, 293 U.S. at 480

(internal quotation marks and citations omitted). Furthermore, “there is overwhelming evidence that the

consistent practice at common law was for juries to

award damages.” Feltner, 523 U.S. at 353. Indeed,

“there is historical evidence that cases involving discretionary monetary relief were tried before juries.” Id.

In short, “[i]t has long been recognized that ‘by the law

the jury are judges of the damages.’” Id. (quoting Lord

Townshend v. Hughes, 86 Eng. Rep. 994, 994–95 (C. P.

1677).

This is especially true where an assessment of

damages rests on factual considerations. Indeed, “[a]n

essential characteristic of [the federal] system is the

manner in which, in civil common-law actions, it distributes trial functions between judge and jury, and

under the influence—if not the command—of the Seventh Amendment, assigns the decisions of disputed

questions of fact to the jury.” Byrd v. Blue Ridge Coop.,

356 U.S. 525, 538 (1958). Jurors should determine

damages that rest on factual considerations because

20

they, not judges, are the constitutionally designated

fact-finders. See Balt. & Carolina Line, Inc. v. Redman, 295 U.S. 654, 657 (1935) (affirming that “issues

of law are to be resolved by the court and issues of fact

are to be determined by the jury under appropriate instructions by the court.”). Even when factual disputes

are mixed with the merits of a legal claim, this Court

has upheld the right to a jury to make factual determinations—and that requires judges to defer to juries.

See Perttu v. Richards, 145 S. Ct. 1793, 1802 (2025).

In determining an infringer’s profits, a fact question—willfulness—is paramount. See Romag Fasteners, Inc. v. Fossil Grp., Inc., 590 U.S. 212 (2020) (“we

do not doubt that a trademark defendant’s mental

state is a highly important consideration in determining whether an award of profits is appropriate.”). Notably, the Lanham Act permits a plaintiff to recover

treble damages for intentional trademark infringement. See 15 U.S.C. § 1117(b). A finding of willfulness

mirrors the tests of copyright cases: The plaintiff must

show that the defendant was “actually aware” of the

infringement or that the defendant’s actions were the

result of reckless disregard or willful blindness. See 4

Pillar Dynasty LLC, 933 F.3d at 209–10. Because

these determinations are highly fact-sensitive, they

should be assessed by a jury rather than a judge. In

short, an award of profits for patent infringement

must rest on material factual determinations—and

such circumstances make the jury the best decisionmaker.

The jury’s unique role as fact-finder in our legal

system deserves respect. The Court should grant the

petition so that it can reaffirm the right to a civil jury

21

trial when a trademark owner seeks the profit remedy

under the Lanham Act.

CONCLUSION

This Court has “held in various contexts . . . [that]

district courts should structure their order of operations to preserve the jury trial right.” Perttu, 145 S. Ct.

at 1802. The Ninth Circuit erred by allowing the judge

to determine the issue of liability and the profit remedy—both of these matters should have been decided

by a jury.

The immense importance of the constitutional right

to a jury trial should not rest on geographical

happenstance. This looming reduction of the right to

trial by jury requires this Court to scrutinize its

curtailment “with the utmost care.” Jarkesy, 603 U.S.

at 110. For the foregoing reasons, this Court should

grant the petition and resolve this circuit split on an

important constitutional issue in favor of preserving

the right to a jury trial.

Respectfully submitted,

Thomas A. Berry

Counsel of Record

Dan Greenberg

Caitlyn A. Kinard

CATO INSTITUTE

1000 Mass. Ave., N.W.

Washington, DC 20001

(443) 254-6330

tberry@cato.org

Dated: August 6, 2025