Recent case law has made monetary remedies easier to achieve in trademark cases – even absent a finding of willful infringement. The recent Southern District of New York decision in Nike, Inc. v. Top Brand Co. Ltd., 2005 WL 1654859 (S.D.N.Y. 2005) has held that the prior Second Circuit rule in trademark cases requiring a showing of willful infringement for an award of an infringer’s profit is no longer good law and has in effect been overturned by Congress.
According to District Judge Kimba Wood’s decision, the 1999 amendments to the Lanham Act mean that willfulness is no longer a prerequisite to an award of profits. However, willfulness remains an important equitable factor to be considered. Procedurally, it remains unclear whether a trademark plaintiff can recover such an award on summary judgment, or whether the issue of willfulness will always necessitate a trial.