미국 상표법상 피고의 이익액에 근거한 손해배상액 산정방법에서 피고의 고의 필요여부 ―연방대법원 Romag Fasteners 판결을 중심으로―

Section 1117(a) of the U.S. Trademark Act stipulates various methods of calculating damages, including the method of calculating damages based on defendant’s profits, in the event of a confusion of origin, false advertising, trade dress infringement under Section 1125(a), a willful dilution under Section 1125(c), and a cybersquatting under Article 1125(d). Until the Romag Fasteners decision of the U.S. Supreme Court had been decided on April 2, 2020, there was a disagreement between the regional circuit courts of appeals as to whether the defendant's willfulness was necessary for calculating damages based on defendant’s profits, in the case of a confusion of origin. Accordingly, the Supreme Court held that Section 1117(a) has not required the defendant's willfulness in order to calculate damages based on the defendant's profits for a confusion of origin as stipulated in Section 1125(a), therefore defendant’s willfulness was not required to calculate damages based on the defendant’s profits. This decision is significant in that it adopted a uniform legal principle applied throughout the U.S. with respect to the method of calculating damages based on the defendant's profits. Eventually, the intention of the Supreme Court to block “forum shopping” for trademark infringement lawsuits is inherent in this judgment.