Romag Fasteners, Inc. v. Fossil, Inc.
979 F. Supp. 2d 264
| D. Conn. | 2013Background
- Romag Fasteners owns U.S. Patent No. 5,722,126 ("'126 patent") covering magnetic snap fasteners and a ROMAG trademark registration; it sued Fossil, Macy’s and several retailers for patent and trademark infringement and counterfeiting.
- Romag alleges defendants sold Fossil-branded handbags containing snap fasteners bearing counterfeit ROMAG marks and that Fossil’s handbags practice the '126 patent claims (which recite attachment legs that are “rotatable” relative to a base washer).
- Defendants moved for partial summary judgment: (1) that Romag is not entitled to defendants’ profits as a trademark remedy; and (2) that the '126 patent is invalid as indefinite because the term “rotatable” lacks a measurable standard.
- The court held a Markman hearing and construed "rotatable" as "capable of being rotated and not rigidly secured (i.e., the connection between the legs and the base washer allows for a change of position about the rotational axis)."
- The court denied defendants’ motions for partial summary judgment on the profits issue and, sua sponte, granted summary judgment for Romag on indefiniteness, holding the patent sufficiently definite as a matter of law.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Entitlement to defendants' profits under Lanham Act | Romag: profits are proper where defendants used counterfeit ROMAG marks; unjust enrichment, injury to goodwill, and deterrence support an accounting | Defs: any profits award must be limited to profits attributable to the ROMAG mark; evidence shows buyers did not purchase Fossil handbags because of the ROMAG mark, so attributable profits = zero | Denied summary judgment for defendants. Court held profits may be awarded under unjust enrichment or deterrence in indirect-competition/counterfeiting contexts; defendants did not carry their burden to show no profits were attributable and factual disputes remain. |
| Measurement / attribution of profits (direct vs. indirect competition) | Romag: in indirect-competition and counterfeiting cases, plaintiff need not show direct diversion of sales; consumer confusion/goodwill injury or defendant's intent suffice to justify profits or deterrence-based award | Defs: follow Mishawaka; recovery limited to portion of profits attributable to the infringing use (no attribution shown here) | Court applied Second Circuit precedent (Monsanto, George Basch) allowing profits awards for indirect competitors on unjust-enrichment or deterrence grounds; Mishawaka’s attribution rule is narrow to direct-competition cases. |
| Burden of proof on attribution and confusion in counterfeiting | Romag: counterfeit use gives rise to an inference of intent/confusion; burden to disprove confusion shifts to defendant | Defs: submitted surveys and declarations arguing no purchasers care about ROMAG mark; assert they met burden to show no attributable profits | Court found defendants' evidence (surveys/declarations) insufficient to eliminate genuine factual dispute; in counterfeiting cases inference of confusion matters and defendants must rebut. |
| Patent indefiniteness of term "rotatable" under 35 U.S.C. §112 | Romag: a person of ordinary skill can understand "rotatable" in light of specification; no numeric force or test is required where claim describes a type of movement | Defs (Fossil & Macy’s): term indefinite because patent doesn’t quantify force needed or supply a test; multiple tests yield differing results | Court granted summary judgment sua sponte for Romag: term "rotatable" is amenable to construction (court already construed it) and defendants failed to present the clear-and-convincing, substantive evidence required to show indefiniteness. |
Key Cases Cited
- Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co., 316 U.S. 203 (1942) (plaintiff not entitled to defendant profits demonstrably not attributable to unlawful mark use; burden on defendant to prove non-attribution)
- Monsanto Chem. Co. v. Perfect Fit Prods. Mfg. Co., 349 F.2d 389 (2d Cir. 1965) (second circuit permits profits awards for non-competitors; unfair-competition/ deterrence rationale and unjust-enrichment approach)
- George Basch Co. v. Blue Coral, Inc., 968 F.2d 1532 (2d Cir. 1992) (summarizes three rationales for profits awards: unjust enrichment, plaintiff damages, and deterrence)
- Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251 (1916) (equitable ‘‘trust ex maleficio’’ rationale: infringer holds profits as constructive trustee)
- Honeywell Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332 (Fed. Cir. 2003) (indefiniteness where claim requires a measurement and multiple tests yield different results)
- Int’l Star Class Yacht Racing Ass’n v. Tommy Hilfiger U.S.A., Inc., 146 F.3d 66 (2d Cir. 1998) (profits award available to deter willful infringers even absent proof of actual injury or confusion)