# Amicus Curiae Brief — Contessa Premium Foods, Inc. v. Berdex Seafood, Inc.

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URL: https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_1048%3A7

## Record

- **Collection:** Supreme Court brief
- **Document type:** Amicus Curiae Brief
- **Published:** January 1, 2005
- **Citation:** 546 U.S. 957

## Text

covering a trademark infringer’s profits from the sale of
goods bearing the infnnging mark.

The Lanham Act, codified at 15 U.S.C. § 1051 ef seq.,
was enacted by Congress in 1946 to provide uniform, na-
tionwide rights for owners of trademarks, service marks, col-
lective marks, and certification marks,* thousands of whom
are members of INTA. Further to that purpose, Congress
codified in the Lanham Act the monetary remedies available
to mark owners against infringers in what is now
15 U.S.C. § 1117(a) (2000). Just as the Lanham Act should
guarantee mark owners uniform, nationwide nghts against
junior users, it should also guarantee a uniform standard for
the recovery of monetary remedies, including defendant’s
profits.

This purpose is frustrated by the current, fractured state
of the law regarding the standards for the recovery of an in-
fringer’s profits. Today, mark owners have an incentive to
bring infringement suits in circuits that do not require proof
of willful infringement as a prerequisite to the recovery of an
infringer’s ill-gotten profits. Similarly, parties that have
been accused of trademark infringement — but have not yet
been sued — have an incentive to file declaratory relief ac-
tions in those circuits that require mark owners to clear the
high evidentiary bar of proving willful infringement before a
court may consider whether to force the infringer to disgorge
its profits. This inconsistency in the application of the same
statutory language in 15 U.S.C. § 1117(a) undermines the
predictability and uniformity that the Lanham Act should
provide.

* Consistent with the convention adopted by the Lanham Act, this brief
refers to these designations collectively as “trademarks” or “marks.”
3

ARGUMENT

1. There Is a Clear Split in the Circuits on the Rele-
vance of an Infringer’s Willfulness to the Avail-
ability of Defendant’s Profits as a Remedy for
Trademark Infringement

The availability of monetary remedies to mark owners,
including disgorgement of an infringer’s profits from sales of
goods bearing the infringing mark, is governed by section 35
of the Lanham Act. That section provides, in part:

When a violation of any night of the registrant of a
mark registered in the Patent and Trademark Office, a
violation under section 43(a) [15 USC §1125(a) or
(d)], or a willful violation under section 43(c) [15
USC § 1125(c)], shall have been established in any
civil action arising under this Act, the plaintiff shall
be entitled, subject to the provisions of sections 29
and 32 [15 USC §§ 1111, 1114], and subject to the
principles of equity, to recover (1) defendant’s prof-
its, (2) any damages sustained by the plaintiff, and (3)
the costs of the action. The court shall assess such
profits and damages or cause the same to be assessed
under its direction.

15 U.S.C. § 1117(a). Despite the codification of remedies
for trademark infringement, the courts’ interpretation of sec-
tion 35(a) is fractured and conflicting. See generally Bryan
M. Otake, The Continuing Viability of the Deterrence Ra-
tionale In Trademark Infringement Accountings, 5 UCLA
ENT. L. REV. 221, 231 (1998) (noting that “[d]Jecisional
precedent is mixed and discordant” in discussing the varying
standards applied by courts in deciding when a disgorgement
of an infringer’s profits is appropriate).

As discussed at length in petitioners’ brief, there is a
three-way split among the Circuit Courts of Appeal on the
relevance of whether a defendant willfully infringed the
plaintiff's mark to the availability of a disgorgement of the
infringer’s profits as a remedy. Petitioners’ explication of
this three-way split is comprehensive, and INTA will not

4

burden this Court by repeating Petitioners’ analysis.” The
split can be summarized as follows:

1. The Third, Fifth, Seventh and Eleventh Circuits in-
terpret section 35(a) of the Lanham Act not to require a
showing of willfulness as a prerequisite to the disgorgement
of an infringer’s profits from the sale of infringing goods.
Although willfulness is a factor that the Court may consider
in deciding whether to award defendant’s profits, it is not a
requirement. See, e.g., Banjo Buddies, Inc. v. Renosky, 399
F.3d 168, 174 (3d Cir. 2005) (willfulness is not a prerequisite
to an award of infringer’s profits); Quick Techs., Inc., v. Sage
Group plc, 313 F.3d 338, 349 (Sth Cir. 2002) (“[W]e decline
to adopt a bright-line rule in which a showing of willful in-
fringement is a prerequisite to an accounting of profits.”);
Roulo v. Russ Berrie & Co., 886 F.2d 931, 941 (7th Cir.
1989) (“[T]here is no express requirement . . . that the in-

* The law in the First and Sixth Circuits on this issue is not as crystal-
lized as Petitioners’ brief implies. The Sixth Circuit case, Wynn Oil Co.
v. Am. Way Serv. Corp., 943 F.2d 595, 607 (6th Cir. 1991), cited by peti-
tioners for the proposition that that circuit does not require proof of will-
fulness for recovery of a defendant’s profits, makes that statement only in
dicta, which cited with approval the Seventh Circuit’s rule that willful-
ness is not required. (citing Roulo v. Russ Berrie & Co., 886 F.2d 931,
941 (7th Cir. 1989)). Nevertheless, the dispute in Wynn Oil was whether
the plaintiff was required to prove actual confusion to recover the defen-
dant’s profits, and the court cited the Seventh Circuit rule for the proposi-
tion that no such showing was required. Because the trial court had
found willful infringement, and the Sixth Circuit affirmed that finding,
the Sixth Circuit did not address whether willfulness was required for a
disgorgement of profits in its holding. In an earlier decision, Frisch’s
Rests., Inc. v. Elby's Big Boy, 849 F.2d 1012, 1016 (6th Cir. 1988), the
Sixth Circuit held that a plaintiff is required to prove willful infringement
before it may recover an infringer’s profits. The Sixth Circuit made no
effort to distinguish its earlier holding in Frisch’s.

It also is not clear that the First Circuit requires proof of willfulness for
disgorgement of profits if the trademark owner and trademark infringer
are not in direct competition. In 7amko Roofing Prods., Inc. v. Ideal
Roofing Co. Ltd., 282 F.3d 23, 36 (Ist Cir. 2002), cited by Petitioners,
the First Circuit expressly declined to decide whether willfulness is re-
quired in such circumstances. See id. at 29. Because willfulness had
been established in the trial court, the Court of Appeals did not need to
address the issue. See id.

5

fringer willfully infringe . . . to justify an award of profits.”);
Burger King Corp. v. Mason, 855 F.2d 779, 783 (11th Cir.
1988) (“Nor is an award of profits based on either unjust en-
richment or deterrence dependent upon a higher showing of
culpability on the part of the defendant... .”). The Third ©
Circuit in particular has held that Congress’ 1999 amend-
ment to 15 U.S.C. § 1117, which added the express require-
ment that the owner of a famous mark prove willfulness to
recover monetary’ relief for dilution under
15 U.S.C. § 1125(c), established that proof of willfulness is
not required for recovery of a defendant’s profits for trade-
mark infringement under 15 U.S.C. § 1125(a). See Banjo
Buddies, 399 F.3d at 174.

2. In contrast, the Second, Tenth and D.C. Circuits re-
quire a trademark owner to prove that the defendant willfully
infringed its mark in all circumstances. In those circuits,
proof of willfulness is a prerequisite to the recovery of prof-
its, not just one factor for the court to consider. See, e.g.,
Bishop v. Equinox Int’l Corp., 154 F.3d 1220, 1223 (10th
Cir. 1998) (“[A]n award of profits requires a showing that
defendant’s actions were willful or in bad faith.”); Banff, Ltd.
v. Colberts, Inc., 996 F.2d 33, 35 (2d Cir. 1993); ALPO Pet-
foods, Inc. v. Ralston Purina Co., 913 F.2d 958, 968 (D.C.
Cir. 1990). In these circuits, only after the trademark owner
establishes willful infringement may the court consider other
equities in deciding whether to order an accounting of defen-
dant’s profits.

3. Finally, the Ninth Circuit appears to employ a hybrid
standard for the disgorgement of an infringer’s profits. That
circuit permits a trademark owner to seek a disgorgement of
the infringer’s profits, without first proving willful infringe-
ment, where the trademark owner and infringer are in direct
competition, and the infringer’s profits are used as an ap-
proximation of the trademark owner’s actual monetary losses
caused by the infringement. See, e.g., Lindy Pen Co. v. Bic
Pen Corp., 982 F.2d 1400, 1406 (9th Cir. 1993).° If the par-

* It is not clear from the opinion of the Court of Appeals in this case
whether petitioners claimed any actual losses to the three respondents for
6

ties market non-competing products, or where they do not
compete in the same geographical regions, the trademark
owner must prove willful infringement as a prerequisite to
recovery of the infringer’s profits from its sales of the in-
fringing goods. The First Circuit has not yet expressly ruled
on whether a successful plaintiff is entitled to a disgorgement
of the defendant’s profits where the two parties were not in
direct competition. See Tamko Roofing Prods., 282 F.3d at
29 (declining to decide whether willfulness is required in
such circumstances).

This split requires resolution by this Court. In fact, this
case presents an opportunity for this Court to address the
remedies available to trademark owners under the Lanham
Act for the first time since 1967. See Fleischmann Distilling
Corp. v. Maier Brewing Co., 386 U.S. 714 (1967) (holding
that the Lanham Act, as then written, did not permit the
award of attorneys fees). All of the trademark cases that the
Court has reviewed in recent decades have addressed sub-
stantive nights of trademark owners, rather than the remedies
available to them for infringement. See, e.g., KP Permanent
Make-Up, Inc. v. Lasting Impression I Inc., 125 §. Ct. 542
(2004) (holding that accused trademark infringer does not
have the burden of proving absence of confusion to prevail
on a fair use defense); Qualitex Co. v. Jacobson Prods. Co.,
514 U.S. 159 (1995) (holding that colors may be subject to
trademark protection); Park ‘N Fly, Inc. v. Dollar Park &
Fly, Inc., 469 U.S. 189 (1985) (incontestable mark may not
be challenged as merely descriptive).

whom there was some evidence of distnbution of products bearing an
infringing mark.

” One of the issues raised in the petition for a writ of certiorari in Das-
tar Corp. v. Twentieth Century Fox Film Corp. was whether a court, ap-
plying the Lanham Act, could award twice a defendant’s profits for de-
terrent purposes. 539 U.S. 23, 25 (2003). The Court’s opinion did not
reach that issue, as it found that the plaintiff's claim for false designation
of origin failed on the mentts. /d. at 38.

7

II. The Court Should Grant Certiorari to Restore
Uniformity to Federal Trademark Law

The current split in authority runs counter to Congress’
purpose of providing uniform, nationwide nghts to trade-
mark owners when it passed the Lanham Act in 1946. Con-
gress designed the Lanham Act to provide a robust and con-
sistent, national scheme of protection for trademarks, to “se-
cur[e] to the [trademark] owner the good will of his business
and protect[] the public against spurious and falsely marked
goods.” S. Rep. No. 79-1333 (1946), as reprinted in 1946
U.S.C.C.A.N. 1274, 1274-75. As it became clear in the post-
war era that “trade [in the United States] is no longer local,
but is national,” protection of trademarks could no longer be
provided by the inconsistent amalgam of state law protec-
tions. Jd. at 1277. As a result, “a sound public policy re-
quire[d] that trademarks should receive nationally the great-
est protection that can be given them.” Jd. The Senate
Committee on Patents described this purpose as follows:

The purpose of this bill is to place all matters relat-
ing to trademarks in one statute and to eliminate ju-
dicial obscurity, to simplify registration and to make
it stronger and more liberal, to dispense with mere
technical prohibitions and arbitrary provisions, to
make procedure simple; and relief against infringe-
ment prompt and effective.

Id. at 1274 (emphasis added).

Despite the current split in the circuits on the standard
for recovering an infringer’s profits, courts have recognized
that Congress’ purpose in federalizing trademark law in the
Lanham Act was to create uniform, nationwide rights for a
national economy. Not long after the Lanham Act’s passage, _
Judge Learned Hand recognized that it “put federal trade-
mark law upon a new footing .. . and created rights uniform
throughout the Union, in the interpretation of which we are
not limited by local law.” S. C. Johnson & Son, Inc. v. John-
son, 175 F.2d 176, 178 (2d Cir. 1949).

More recently, this Court acknowledged Congress’s
goals by noting that “[nJational protection of trademarks is
desirable . . . because trademarks foster competition and the
maintenance of quality by securing to the producer the bene-
fits of good reputation.” Park ‘N Fly, 469 U.S. at 198; see
also Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763,
781-82 (1992) (Stevens, J., concurring) (“‘The purpose of
{the Lanham Act] is to protect legitimate business and the
consumers of the country,’ [and] [o]ne way of accomplishing
these dual goals was by creating uniform legal mghts and
remedies that were appropriate for a national economy.” (ci-
tation omitted)); Inwood Lab., Inc. v.. ves Lab., Inc., 456
U.S. 844, 861 n.2 (1982) (White, J., concurring) (noting pur-
pose of the Lanham Act to “codify and unify” the common
law of trademark protection).

When conflicting interpretations of the Lanham Act
among the Circuit Courts of Appeal have matured in the
past, this Court has granted certiorari to restore uniformity to
the law. Most recently, in its decision in KP Permanent
Make-Up, 125 S. Ct. 542 (2004), the Court noted that it
granted certiorari “to address a disagreement among the
Courts of Appeals on the significance of likely confusion for
a fair use defense to a trademark infringement claim, and the
obligation of a party defending on that ground to show that
its use is unlikely to cause consumer confusion.” See id. at
548; see also Moseley v. V Secret Catalogue, Inc., 537 U.S.
418, 428 (2003) (granting certiorari “because other Circuits
have also expressed differing views about the ‘actual harm’
issue” under the Federal Trademark Dilution Act); Qualitex
Prods., 514 U.S. at 161 (noting that the Court granted certio-
rari because “[t]he courts of appeals have differed as to
whether or not the law recognizes the use of color alone as a
trademark”’).

Uniform nghts are particularly important in a market-
place increasingly characterized by brands with national and
global reach. The current fractured state of the law frustrates
Congress’ purpose, and the Court should take the opportu-
nity that this case presents to resolve the split in the circuits
and restore uniformity to the law.

9

III. Resolution of the Split Will Discourage Forum
Shopping

In addition to frustrating nationwide uniformity to trade-
mark law, the present circuit split also encourages forum
shopping. The variation in standards for recovery across the
circuits provides both trademark owners and accused in-
fringers a strong motive to file suit in jurisdictions with a
standard for the recovery of _ profits under
15 U.S.C. § 1117(a) that is favorable to their particular posi-
tion. Specifically, plaintiffs have an incentive to seek relief
in circuits that allow recovery absent proof of willfulness,
while prospective defendants may seek declaratory judg-
ments in circuits that impose more exacting standards for
recovery.

This Court has consistently recognized the prevention of
forum shopping as necessary both to effectuate the will of
the legislature and to secure equity and efficiency in the ju-
diciary. See, e.g., Rumsfeld v. Padilla, 124 S. Ct. 2711, 2725
(2004) (finding that the requirement that habeas petitioners
challenging physical custody must file in the district of con-
finement “serves the important purpose of preventing forum
shopping”); Southland Corp. v. Keating, 465 U.S. 1, 15
(1984) (interpreting the Federal Arbitration Act so as to
avoid encouraging forum shopping); Walker v. Armco Steel
Corp., 446 U.S. 740, 745 (1980) (describing forum shopping
as an “undesirable result[]”); Hanna v. Plumer, 380 US.
460, 468 (1965) (describing “discouragement of forum-
shopping” as one of the twin aims of Erie R.R. v. Tompkins,
304 U.S. 64 (U.S. 1938)).

In the trademark context, the Court’s resolution of the
circuit split in Qualitex eliminated opportunities for forum
shopping that existed for owners of color trademarks. Be-
fore Qualitex, the threat of forum shopping loomed heavily
over trademark protection in color alone. See Craig Summer-
field, Color As A Trademark And The Mere Color Rule: The
Circuit Split For Color Alone, 68 CHI.-KENT. L. REV. 973,
978 (1993) (explaining that the split between the Ninth and
Seventh Circuits “[would] undoubtedly lead to forum shop-

10

ping due to the major difference in substantive rights”).
Qualitex clarified the potential trademark status of individual
colors and reduced potential forum shopping.

The Court’s condemnation of forum shopping is well-
founded. Permitting parties possibly to affect the substantive
outcome of infringement and unfair competition litigation by
selecting the forum with the standard for liability for profits
that is most favorable to their position results in uncertain
rights and obligations, and compromises the courts’ ability to
render like judgments under like facts. Under the current
state of the law, a trademark owner may be entitled to a dis-
gorgement of a defendant’s profits in one circuit, but may
not be entitled to the same remedy in a different circuit on
identical facts.

Inconsistent standards among the Courts of Appeals
have created uncertainty that is likely to bring about forum
shopping. This Court’s announcement of a clear, uniform
standard as to the relevance of willfulness to the disgorge-
ment of profits in a trademark case is the most effective way
to solve this problem.

CONCLUSION

Accordingly, INTA requests this Court to grant the peti-
tion for certiorari and restore national uniformity to federal
trademark law on this important issue.

Respectfully submitted, _

SALLY M. ABEL

TYLER G. NEWBY

CHRISTOPHER C. LARKIN

ALICE C. RICHEY

THEODORE H. DAVIS JR.*
* Counsel of Record

INTERNATIONAL TRADEMARK ASSOCIATION
655 Third Avenue, 10th Floor
New York, New York 10019
Telephone: (212) 768-9887
Attorneys for Amicus Curiae
International Trademark Association

1]

FILED |

Ser 205
No. 04-1693 OFFICE OF THE CLERK
S.

IN THE

Supreme Court of the United States

Contessa Premium Foods, Inc.,
Petitioner,

¥

Berdex Seafood, Inc., et al.

On Petition for a Writ of Certiorari
to the United States Court of Appeals
for the Ninth Circuit

REPLY BRIEF FOR THE PETITIONER

Laurence H. Tribe
(Counsel of Record)

Gregory J. Morrow
CONTESSA PREMIUM FOODS, INC.

222 West Sixth St.
San Pedro, CA 90731

Theodore A. Pianko
Gary Dukarich
Joel A. Kauth

CHRISTIE, PARKER & HALE, LLP

3501 Jamboree Road
Suite 6000
Newport Beach, CA 92660

September 14, 2005

Hauser Hall 420

1575 Massachusetts Ave.
Cambridge, MA 02138
(617) 661-9030

Thomas C. Goldstein
Amy Howe

Kevin K. Russell
GOLDSTEIN & Howe, P.C.
4607 Asbury Pl., NW
Washington, DC 20016

A tea RESENTMENT SS NEON A NR
WILSON-EPES PRINTING CO., INC. — (202) 789-0096 -— WASHINGTON, D.C. 20001

i

TABLE OF CONTENTS
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TABLE OF AUTHORITIES

Cases
ABKCO Music, Inc. v. LaVere, 217 F.3d 684 (CA9

Burger King Corp. v. Mason, 855 F.2d 779 (CAI11
NE itis cancch cakanseicsasguacaknidianicaakeniancmanesees RECO 8

Cartier, Inc. v. Four Star Jewelry Creations, Inc.,
S46 F. SUD: 24: ZE7 CS-DAY . 2004) vvccviwissscssscraisinvccencecs 5

Design Solange, Ltd. v. Lane Bryant, Inc., No. 99-
7805, 2000 U.S. App. LEXIS 1857 (CA2 Feb. 3,

iiss onde tension emake 5
Emco, Inc. v. Obst, No. 03-6432, 2004 U.S. Dist.

LEXIS 12,118 (C.D. Cal. May 7, 2004) .....0........ccsscsssseseees 5
Estate of Bishop v. Equinox int'l Corp., 256 F.3d

ROE CTE BED vies carta nciidsiisis Gadokicusesscsaiieeecuedes 5
First Savings Bank v. U.S. Bancorp, 117 F. Supp. 2d

Fe I A isch ce caksscapeilpcicincts added disnickinias 5
Frisch’s Restaurants, Inc. v. Elby’s Big Boy, 849 :

Ae SE ARE 1 MD 5 Goo hcanathiseasc eissamecige nds Gxeelpeuinitcdco 7
George Basch Co. v. Blue Coral, Inc., 968 F.2d

RPG BP Bh on 0 2: Geenietats Die tele Rem ee Or COE CNY RRO 5,8
Hot Wax, Inc. v. S/S Car Care, No. 97-6879, 1999

U.S. Dist. LEXIS 16,444 (D. Ill. Oct. 14, 1999) oe... 7

- Int'l Star Class Yacht Racing Ass'n v. Tommy
Hilfiger U.S.A., No. 99-7329, 2000 U.S. App.
LEXIS 060 (CAZ Fa. 12, DOO) osc ciscis sii jacsaposeias. 5,8

ISP.NET.LLC v. Qwest Communs. Int'l, Inc., No.
01-0480, 2004 U.S. Dist. LEXIS 20,237 (D. Ind.

SG, POs ative diana cteesasbans a chenuanmadiouse 7
Kassbaum v. Steppenwolf Productions, Inc., 236
FFE Be SE itaektinnicdaropabicagiibtpihinenaupentien 5

Landgraf v. USI Film Prods., 511 U.S. 244 (1994) ........... 3,4

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Mastercard Int’l, Inc. v. First Nat'l Bank of Omaha,
Inc., No. 02-3691, 2004 U.S. Dist. LEXIS 2485

CREE FM 2S, DO inks aaa aac hens hzcwani 5
MGM Studios, Inc. v. Grokster Ltd., 125 S. Ct. 2764

ERE See OEE eT I ON = POPE SENOS CEL SENN 10
New Colt Holding Corp. v. RJG Holdings of

Florida, 312 F. Supp. 2d 195 (D. Conn. 2004) .......0..... 5
Nutting v. Ram Southwest, Inc., 69 Fed. Appx. 454

[go " 2 mis: 1° SeeRWR RED EREY Oboe tees Rabon aren cise REEDS ORES SipECop aE SER 5

Oyster Software, Inc. v. Forms Processing, Inc., No.
00-0724, 2001 U.S. Dist. LEXIS 22,520 (N.D.
RR Ae Ree ED wasp hacacsnscladictcauindesntesuaconssniscscucebspibinscasattias 5
Pfizer, Inc. v. Y2K Shipping & Trading, Inc., No. 00-
5304, 2004 U.S. Dist. LEXIS 10,426 (E.D.N.Y.
RN SiR Ge saa access ss cs pokanckadaGarngudoddansorabetioeasescssnaieves 5

Professional Bull Riders, Inc. v. Autozone, Inc., Nos.
03-1544, 04-1029, 2005 U.S. App. Lexis 17,262

Re NE 0 ch Hasek ccss Lanes pocns ecceeadawasainss 5
Roulo v. Russ Berrie & Co., Inc., 886 F.2d 931 (CA7

Lg 0g SPR O AES IOG alte’ RAGS CAGE TLR Sr RCeOR PE TONNES oP Seat RAIE ST 7
Sands, Taylor & Wood Co. v. Quaker Oats Co., 978

Pe EA Be kisi sschesicdsnvanaccasnic4vs ses snkgaacenescaciios 7
Verizon Communs., Inc. v. FCC, 535 U.S. 467

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Wynn Oil Co. v. American Way Serv. Corp., 943

FA Te CR PMU PAS vcssten isk cuvdachapedscscoueiaedspuluccuiveachaceibberies 7

Statutes

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REPLY BRIEF FOR THE PETITIONER

Respondents acknowledge that there is a division among
the courts of appeals over whether willfulness is a
prerequisite to an award of profits for a violation of Section
43(a) of the Lanham Act. See Berdex BIO 12, 16; IFP BIO 9.
Moreover, respondents do not seriously contest that the
question is important, as demonstrated in the amicus brief of
the International Trademark Association. Instead,
respondents’ principal argument against certiorari is that a
1999 amendment to the Lanham Act does not apply to this
case, rendering the case a poor vehicle for construing the
statute as currently enacted. See Berdex BIO 11-13; IFP BIO
4-6. This argument founders on its premise: the 1999
amendment did not change the meaning of the Lanham Act.
The 1999 amendment was merely a technical change to revise
the Act’s remedies provision to reflect changes that had been
made to the statute by the Federal Trademark Dilution Act of
1996, changes that were already in effect when the alleged
infringement in this case took place. See Pub. L. No. 104-98,
109 Stat. 985 (1996). Because this and the other objections
respondents raise against the petition are meritless, certiorari
on the first question presented should be granted.

l. Respondents fundamentally misconstrue the
significance of the 1999 amendment to petitioner’s argument
and to the meaning of the Lanham Act.

a. Since 1988, Section 35(a) of the Lanham Act has
authorized an award of profits, subject to principles of equity,
in the case of “a violation under section 43(a).” Pub. L. No.
100-667, Title I, § 129, 102 Stat. 3945 (1988). That

' As discussed infra, petitioner no longer seeks review of the
copyright issue addressed in the second question presented. As a
result, petitioner does not seek review of the judgment below as it
applies to respondents Hanwa American Corp., Slade Gorton &
Co., Inc., Mazzetta Company, L.L.C., Sea Port Products, or
Admiralty Island Fisheries.

2

language, which governs the award of profits sought in this
case, has never been modified. However, in 1996 Congress
amended the statute to permit awards of profits for willful
dilution of famous marks. The Dilution Act of 1995 added to
the statute Section 43(c), part of which provided that

{iJn an action brought under this subsection, the
owner of the famous mark shall be entitled only to
injunctive relief unless the person against whom the
injunction is sought willfully intended to trade on the
owner’s reputation or to cause dilution of the famous
mark. Jf such willful intent is proven, the owner of
the famous mark shall also be entitled to the
remedies set forth in sections 35(a) and 36, subject
to the discretion of the court and the principles of
equity.
Pub. L. No. 104-98, § 3(a), 109 Stat. 985 (1996) (enacting 15
U.S.C. 1125(c)) (emphasis added). Accordingly, as of 1996,
the Act distinguished between the criteria for an award of
profits for a violation of Section 43(a) and the criteria for an
award for violations of Section 43(c), explicitly requiring
willfulness only for dilution claims.

Congress failed, however, to amend Section 35(a) to
reflect this new authorization for profit awards in cases of
willful dilution. The 1999 Amendment rectified this
oversight. See Pub. L. No. 106-43, § 3(b), 113 Stat. 219
(1999); H.R. Rep. No. 106-250, at 6 (1999) (noting that the
“language of the Dilution Act presented to the President for
signing did not include the necessary changes to section]
35(a)” and that the 1999 amendment to Section 35(a) was
therefore “an attempt to clarify Congress’ intent and to avoid
any confusion by courts trying to interpret the statute * * *.”).

b. Respondents argue that certiorari should be denied
because petitioner’s claim depends upon the 1999 amendment
to the Act — which, they argue, cannot be applied to this case
because the alleged infringement occurred in 1997 and 1998.
See Berdex BIO 13 (citing Landgraf v. USI Film Prods., 5\1

3

U.S. 244 (1994)); IFP BIO 5-6 (same). That argument fails
for two reasons.

First, Landgraf has no application to this case. Petitioner
does not argue that the 1999 amendment itself authorizes the
award of profits petitioner seeks. Neither the 1999
amendment nor the Dilution Act altered the language of the
statute that directly governs petitioner’s claims in this case.
That language, authorizing an award of profits for “a violation
of Section 43({a),” has been unchanged since 1988. The
subsequent amendments relating to dilution claims simply
shed indirect light on the meaning of parts of the statute that
do apply directly to petitioner’s claims. In fact, as petitioner
described in its opening brief (Pet. 17-19), it has long been
clear that Congress did not intend that courts impose a
willfulness requirement or any other invariable prerequisite
for an award of profits for violations of Section 43(a). For
example, Section 35(a) has always included a proviso
excluding an award of profits against those who innocently
print infringing material. See 15 U.S.C. 1117(a) (cross-
referencing 15 U.S.C. 1114). Respondents do not even
attempt to explain why such an exception would have been
necessary if the Act precluded profit awards in the absence of
willful infringement as a general matter.

Because the 1999 amendment does no more than
indirectly confirm the pre-existing meaning of the Act, the
Landgraf presumption has no application. See, e.g., ABKCO
Music, Inc. v. LaVere, 217 F.3d 684, 689 (CA9 2000) (“We
have long recognized that clarifying legislation is not subject
to any presumption against retroactivity and is applied to all
cases pending as of the date of its enactment * * * .”’).

Second, respondents’ argument would fail even if the
Landgraf analysis did apply. Landgraf makes clear that “a
court is to apply the law in effect at the time it renders its
decision,” unless doing so would have an impermissible
“retroactive effect” that Congress did not explicitly authorize.
511 U.S. at 264 (citation and internal quotation marks

4

omitted). A “statute does not operate ‘retrospectively’ merely
because it is applied in a case arising from conduct antedating
the statute’s enactment, or upsets expectations based in prior
law.” Jd. at 269 (citations omitted). “Rather, the court must
ask whether the new provision attaches new legal
consequences to events completed before its enactment.” /d.
at 269-70.

As described above, the 1999 amendment attached no
new legal consequences to respondents’ prior conduct.
Indeed, the amendment effected no substantive change to the
Statute at all. It simply revised Section 35(a) to reflect the
willfulness requirement for dilution claims that had existed in
Section 43(c) since 1996, well before the infringement
alleged in this case took place. Thus, respondents’ rights,
liabilities, and duties under the Lanham Act are exactly the
same now as they were before the 1999 amendment. The
amendment therefore had no “retroactive effect” under
Landgraf and, as a result, properly applies to cases pending at
the time of the revision. See Landgraf, 511 U.S. at 280.’

2. Respondents concede that, absent a _ distinction
between pre- and post-1999 cases, there is at least a four-two
split among the courts of appeals regarding whether
willfulness is a prerequisite for an award of profits in a
trademark infringement case. See Berdex BIO 12 (citing
cases from the Second, Ninth, Tenth, and D.C. Circuits
imposing willfulness requirement); id. 14 (acknowledging

? Indeed, none of the respondents ever argued otherwise in the
proceedings below. In fact, in their brief to the Ninth Circuit,
respondents Berdex and Coast to Coast specifically cited the
current version of the Act in arguing that their lack of willfulness
precluded an award of profits. See Brief of Appellees Berdex
Seafood, Inc. and Coast to Coast Seafood, Inc. 36 (citing “15
U.S.C.A. § 1117(a) (West 1998 & Supp. 2003)"). Respondents
advanced this argument notwithstanding that, elsewhere in their
brief, they contended that the current version of the Copyright Act
did not apply to petitioner’s claims under that Act. See id. 17-20.

5

that the Third and Fifth Circuits have rejected a willfulness
prerequisite). Given that the 1999 amendment had no
substantive effect, there is no reason to believe that the
amendment will itself resolve the split. Indeed, during the six
years since the passage of the 1999 amendment, only the
Third Circuit has discarded its willfulness requirement.
Courts in other circuits, however, continue to reaffirm their
willfulness prerequisites despite the 1999 revision.’ The very

* Second Circuit: Design Solange, Lid. v. Lane Bryant, Inc.,
No. 99-7805, 2000 U.S. App. LEXIS 1857, at *3 (CA2 Feb. 3,
2000) (unpublished) (noting the “well-settled law of this Circuit
regarding monetary recovery, which requires either a finding of
‘wilful deception’ (for an accounting of profits) or ‘actual
consumer confusion or deception’ (to recover damages)”); Jnt’l
Star Class Yacht Racing Ass'n v. Tommy Hilfiger U.S.A., No. 99-
7329, 2000 U.S. App. LEXIS 660, at *2 (CA2 Jan. 12, 2000)
(unpublished) (reaffirming prior rejection of argument that
willfulness is not a prerequisite); see also, e.g., Mastercard Int'l,
Inc. v. First Nat'l Bank of Omaha, Inc., No. 02-3691, 2004 U.S.
Dist. LEXIS 24854S.D.N.Y. Feb. 23, 2004) (acknowledging 1999
amendment and Fifth Circuit rejection of willfulness prerequisite
but concluding amendment did not warrant reconsideration of
Second Circuit precedent); Pfizer, Inc. v. Y2K Shipping & Trading,
Inc., No. 00-5304, 2004 U.S. Dist. LEXIS 10,426, at *34 (E.D.N.Y.
Mar. 30, 2004) (“A finding of defendant’s ‘willful deceptiveness is
a prerequisite for awarding profits’ * * * .”); Cartier, Inc. v. Four
Star Jewelry Creations, Inc., 348 F. Supp. 2d 217, 253 (S.D.N_Y.
2004) (“A finding of willful conduct is a prerequisite for an award
of profits.”); New Colt Holding Corp. v. RJG Holdings of Florida,
312 F. Supp. 2d 195, 232 n.15 (D. Conn. 2004) (“[A] plaintiff must
prove that an infringer acted with willful deception before the
infringer’s profits are recoverable by way of an accounting.”)
(quoting George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532,
1540 (CA2 1992)).

Ninth Circuit: Kassbaum v. Steppenwolf Productions, Inc.,
236 F.3d 487, 492 (CA9 2000) (“Actual consumer confusion is not
required for profit recovery; it is sufficient to show a likelihood of
confusion combined with willful infringement.”); Emco, Inc. v.

6

fact that the conflict continues unabated belies respondents’
claim that the 1999 amendment substantively changed the
Statute.

The split of authority is, in fact, even wider than
respondents acknowledge. As the petition explains (at 10-
11), the First and Ninth Circuits have adopted a unique hybrid
rule. Moreover, the Third and Fifth Circuits are not alone in
rejecting willfulness as a prerequisite to a profit award,
finding company in the decisions of the Sixth, Seventh, and
Eleventh Circuits. See Pet. 11-12.

Obst, No. 03-6432, 2004 U.S. Dist. LEXIS 12,118, at *10-*11
(C.D. Cal. May 7, 2004) (“In the absence of evidence that
[plaintiff] was damaged, it can receive an award of [defendant’s]
profits only by showing that [defendant’s] conduct was willful.”);
Oyster Software, Inc. v. Forms Processing, Inc., No. 00-0724, 2001
U.S. Dist. LEXIS 22,520, at *21 (N.D. Cal. Dec. 6, 2001) (“Courts
do not award an accounting unless there is some ‘deliberate and
wilful conduct.’”) (citation omitted).

Tenth Circuit: See Professional Bull Riders, Inc. v.
Autozone, Inc., Nos. 03-1544; 04-1029, 2005 U.S. App. Lexis
17,262, at *12 (CAIO Aug. 15, 2005) (unpublished) (reaffirming
that profit awards are available to “deter willful violations of the
trademark laws” and rejecting defendant’s contention that evidence
demonstrated lack of willfulness) (emphasis added); Estate of
Bishop v. Equinox Int’l Corp., 256 F.3d 1050, 1054-55 (CA10
2001) (reaffirming willfulness requirement); id. at 1060 (Baldock,
J., dissenting in part and concurring in part) (acknowledging circuit
rule that “[a] finding of willfulness or bad faith is a prerequisite to
an award of profits based on the deterrence theory of recovery,” but
disagreeing with majority’s application of the rule); see also
Nutting v. Ram Southwest, Inc., 69 Fed. Appx. 454, 459 (CAFC
2003) (unpublished) (“[W]illfulness of [the defendant’s] violation|]
* * * is a prerequisite to the award of any profits at all under Tenth
Circuit law.”); First Savings Bank v. U.S. Bancorp, 117 F. Supp. 2d
1078, 1088 (D. Kan. 2000) (“A plaintiff may not recover the
defendant’s profits without showing the ‘defendant’s actions were
willful or in bad faith.’”) (citation omitted).

7

Some of the respondents take issue with petitioner’s
reading of some of the circuit precedent (see Berdex BIO 16-
17), but their attempts to distinguish the cases cited by
petitioner are unconvincing. For example, respondents
Berdex and Coast to Coast argue (ibid.) that Roulo v. Russ
Berrie & Co., Inc., 886 F.2d 931, 941 (CA7 1989), did not
decide whether willfulness was required, but rather affirmed a
profit award in light of the district court’s finding of
willfulness. But the Seventh Circuit made clear that the
willfulness in that case was simply an equitable factor
supporting the award, not an absolute prerequisite. /bid.
Subsequent cases have applied the same rule. See, e.g.,
Sands, Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947,
961 (CA7 1992) (“The Lanham Act specifically provides for
the awarding of profits in the discretion of the judge subject
only to principles of equity.”); see also JSP.NET.LLC v.
Qwest Communs. Int'l, Inc., No. 01-0480, 2004 U.S. Dist.
LEXIS 20,237, at *12 (D. Ind. Sept. 24, 2004) (“The Seventh
Circuit view considers willfulness or bad faith as a factor in
deciding whether to award damages or profits, but it does not
require such as a condition precedent.”); Hot Wax, Inc. v. S/S
Car Care, No. 97-6879, 1999 U.S. Dist. LEXIS 16,444, at
*24 (D. Ill. Oct. 14, 1999) (“The Seventh Circuit does not
require a showing of willfulness in order to award defendant's
profits as a remedy * * * .”).4

* Respondents Berdex and Coast to Coast also argue (at 17) -
that the Sixth Circuit’s approving quotation of Roulo in Wynn Oil
Co. v. American Way Serv. Corp., 943 F.2d 595, 606-07 (1991),
should not be read as adopting the Seventh Circuit’s interpretation
of the Act because the district court in Wynn Oil had found
willfulness. Petitioner has not found any subsequent case clarifying
the Sixth Circuit’s position. Amicus International Trademark
Association, however, points out (Br. 5 n.S) that the standard
approved in Wynn Oil appears to conflict with the standard
described in a prior case, Frisch’s Restaurants, Inc. v. Elby’s Big
Boy, 849 F.2d 1012, 1015-16 (CA6 1988). This confusion within

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386007_1048%3A7. Public record. Not legal advice.