Posts Tagged: "Extraterritorial Application"

Solicitor General to Participate in Oral Arguments in Abitron v. Hetronic on Extraterritorial Applications of the Lanham Act

On February 27, the U.S. Supreme Court granted a motion for leave filed by the U.S. Solicitor General to participate in oral argument, as well as for divided argument and for enlargement of oral argument time, in Abitron Austria GmbH v. Hetronic International, Inc. While the Court’s decision to grant the motion shows its interest in the Solicitor General’s arguments in favor of limiting the extraterritorial reach of the Lanham Act, a reply brief filed the same day by petitioner Abitron argues that the federal government’s proposed legal tests still go too far in allowing Lanham Act claims to reach foreign infringing sales. Last September, the U.S. Solicitor General filed a brief representing the views of the federal government on the issues in Abitron Austria, a case which asks whether the U.S. Court of Appeals for the Tenth Circuit erred in awarding civil remedies under the Lanham Act for infringement of U.S. trademarks through purely foreign sales that neither reached the United States nor confused U.S. consumers. In its brief, the Solicitor General urged the Supreme Court to grant Abitron’s petition for writ of certiorari and rein in the Tenth Circuit’s approach toward awarding Lanham Act damages for foreign infringing sales.

Steve Brachmann

February 28, 2023

As Supreme Court Case on Extraterritorial Trademark Disputes Heats Up, ABA Asks Justices to Consider Three-Part Test

The American Bar Association (ABA) filed an amicus brief on February 3 with the U.S. Supreme Court asking the Court to clarify issues related to the application of the Lanham Act to trademark disputes that cross international borders. The ABA filed the brief in the Abitron Austria GmbH v. Hetronic International, Inc. trademark case, in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement that occurred almost entirely outside of the United States.

Alec Pronk

February 8, 2023

SCOTUS to decide if lost profits can be awarded for infringement committed on high seas

The Supreme Court will hear WesternGeco LLC v. ION Geophysical Corp., which asks whether the Federal Circuit erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f)… Because lost profits damages were awarded for lost contracts for services to be performed on the high seas, outside of the jurisdiction of U.S. patent law, the Federal Circuit reversed that $93.4 million award… In December 2017, the office of Solicitor General Noel Francisco filed a brief for the United States as amicus curiae. The Solicitor General argued that WesternGeco’s entitlement to damages should be informed by the traditional common-law rule that a victim of a tort should be returned to the position that victim would have occupied if not for the defendant’s legal wrong.

Steve Brachmann

February 1, 2018

The Extraterritorial Reach of U.S. Trade Secret Law

The current extraterritorial reach of U.S. trade secret law may seem ironic given trade secret law’s “local” roots. In the United States, common law trade secret principles emerged through a diverse patchwork of state court decisions addressing local commercial disputes. These local common law principles were first distilled in the Restatement of Torts and the Restatement of Unfair Competition and then codified in the Uniform Trade Secrets Act in 1979. Underscoring the local prerogative of trade secret law, state legislatures modified and tailored the Uniform Trade Secrets Act to reflect their state-specific concerns and needs. For many years, despite a push for national uniformity, a number of states chose not to adopt a statutory scheme at all (some still haven’t).

John M. Williamson & Paula E. Miller & Jon T Self

May 30, 2017