Eighth Circuit Notes Split Re Whether Lanham Act Requires Willful Infringement

Per Masters v. UHS of Delaware, Inc., --- F.3d ----, 2011 WL 31524 (8th Cir. Jan. 6, 2011):

A circuit split exists concerning whether a Lanham Act plaintiff must prove willful infringement, rather than mere infringement, to be eligible for monetary damages under 15 U.S.C. § 1125(a). The question turns on the effect of amendments to the Lanham Act Congress made in 1999. Compare Synergistic Int'l., LLC v. Korman, 470 F.3d 162, 175 n. 13 (4th Cir.2006) (concluding that amendments removed willfulness as a prerequisite for awarding profits under § 1125(a)); Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 174-75 (3d Cir.2005) (same) with W. Diversified Servs., Inc. v. Hyundai Motor Am., Inc., 427 F.3d 1269, 1272-73 (10th Cir.2005) (adhering to pre-amendment precedent regarding § 1125(a) and requiring proof of willfulness to sustain the cause of action); Contessa Foods Prods. Inc. v. Lockpur Fish Processing Co., 123 F. Appx. 747, 751 (9th Cir.2005) (same). See also 5 J. McCarthy, McCarthy on Trademarks and Unfair Competition § 30:62 (4th ed.2010) (criticizing circuit courts that have removed the willfulness requirement from § 1125(a) on the basis of the 1999 amendments and arguing that such circuits “have leveraged this statutory change beyond its intended scope”). For purposes of adjudicating this appeal, we assume, without deciding, that willful infringement is a prerequisite of monetary relief.