12625949_concurrence_sotomayor.txt

Justice SOTOMAYOR , concurring in the judgment .
I agree that 15 U.S.C. § 1117 ( a ) does not impose a " willfulness " prerequisite for awarding profits in trademark infringement actions .
Courts of equity , however , defined " willfulness " to encompass a range of culpable mental states - including the equivalent of recklessness , but excluding " good faith " or negligence .
See 5 McCarthy on Trademarks and Unfair Competition § 30:62 ( 5th ed . 2019 ) ( explaining that " willfulness " ranged from fraudulent and knowing to reckless and indifferent behavior ) ; see also , e.g. , Lawrence - Williams Co. v. Societe Enfants Gombault et Cie , 52 F.2d 774 , 778 ( C.A.6 1931 ) ; Regis v. Jaynes , 191 Mass. 245 , 248 - 249 , 77 N.E. 774 , 776 ( 1906 ) .
The majority suggests that courts of equity were just as likely to award profits for such " willful " infringement as they were for " innocent " infringement .
Ante , at 1496 - 1497 .
But that does not reflect the weight of authority , which indicates that profits were hardly , if ever , awarded for innocent infringement .
See , e.g. , Wood v. Peffer , 55 Cal . App.2d 116 , 125 , 130 P.2d 220 ( 1942 ) ( explaining that " equity constantly refuses , for want of fraudulent intent , the prayer for an accounting of profits " ) ; Globe - Wernicke Co. v. Safe - Cabinet Co. , 110 Ohio St. 609 , 617 , 144 N.E. 711 , 713 ( 1924 ) ( " By the great weight of authority , particularly where the infringement ... was deliberate and willful , it is held that the wrongdoer is required to account for all profits realized by him as a result of his wrongful acts " ) ; Dickey v. Mutual Film Corp. , 186 A.D. 701 , 702 , 174 N.Y.S. 784 ( 1919 ) ( declining to award profits because there was " no proof of any fraudulent intent upon the part of the defendant " ) ; Standard Cigar Co. v. Goldsmith , 58 Pa. Super . 33 , 37 ( 1914 ) ( reasoning that a defendant " should be compelled to account for ... profits " where " the infringement complained of was not the result of mistake or ignorance of the plaintiff 's right " ) .
Nor would doing so seem to be consistent with longstanding equitable principles which , after all , seek to deprive only wrongdoers of their gains from misconduct .
Cf . Duplate Corp. v. Triplex Safety Glass Co. , 298 U.S. 448 , 456 - 457 , 56 S.Ct . 792 , 80 L.Ed . 1274 ( 1936 ) .
Thus , a district court 's award of profits for innocent or good - faith trademark infringement would not be consonant with the " principles of equity " referenced in § 1117(a ) and reflected in the cases the majority cites .
Ante at 1496 - 1497 .
Because the majority is agnostic about awarding profits for both " willful " and innocent infringement as those terms have been understood , I concur in the judgment only .