Supreme Court Justice Elena Kagan ruled that a prevailing plaintiff in a trademark dispute between real estate marketing firms cannot claim profits from a competitor’s affiliates if they were not named in the complaint. Haynes Boone Trademark Partner David Bell discussed the impact of the decision with World IP Review and IPWatchdog.
Read an excerpt from World IP Review below:
According to David Bell, partner at Haynes Boone, the most interesting aspect of the decision is that the court did not take a position against (or for) these various options.
“The court avoided a broad-sweeping ruling as to whether the Lanham Act allows for disgorgement of related companies’ profits,” he says.
Instead, the justices have left “the door fully open for trademark plaintiffs to pursue the just sum theory and other alternative methods of obtaining damages from non-party related entities”.
Read an excerpt from IPWatchdog below:
Supreme Court Justice Elena Kagan today handed down an opinion in a trademark case holding that the prevailing plaintiff in a trademark infringement suit between two marketing real estate development services companies is not entitled to the profits of its competitor’s affiliates because it did not name them in its complaint….
David Bell of Haynes Boone added that the impact of the decision “might come more from what the Court didn’t say.”
He explained: “It did not repudiate or outright dismiss any of the potential theories for a remedy to exceed the named defendant’s profits. This in turn may open the door to more plaintiffs trying the just-sum provision or other alternative methods of obtaining profits from non-party related entities.”
