Advisory News Hubb
Advertisement Banner
  • Home
  • Laws & Ethics
  • Financial Advisory
  • Contact
No Result
View All Result
  • Home
  • Laws & Ethics
  • Financial Advisory
  • Contact
No Result
View All Result
Gourmet News Hubb
No Result
View All Result
Home Laws & Ethics

Abitron v. Hetronic: Extraterritorial Application of U.S. Trademark Law

admin by admin
March 22, 2023
in Laws & Ethics


by Dennis Crouch

The Supreme Court held oral arguments on March 21, 2023 in the international trademark case of Abitron Austria GmbH v. Hetronic International, Inc. and will be holding arguments on March 22, 2023 in the whisky dog toy trademark case of Jack  Daniel’s Property v. VIP Products.

Abitron was formerly the international distributor for Hetronic radio-remote-control products used largely for heavy machinery.  Hetronic products have a distinctive yellow-black coloring pattern.  At some point, Abitron began selling a competing product using the same pattern and same product names.  (Image above).  Hetronic sued and won a $90 million judgment based upon willful  trademark infringement and goodwill injury.  Hetronic also won on a contract claim, but contract law would not support this disgorgement remedy.

The $90 million award reflected the entire gross revenue of Abitron’s knockoff sales, 97% of those sales were outside of the USA.  As Abitron wrote in it its brief: these “were sales in foreign countries, by foreign sellers, to foreign customers, for use in foreign countries, that never reached the United States or confused U.S. consumers.”  Of course, this foreign anaphora omits a key domestic conclusion: the harm was directed to the USA and felt in the USA by the TM owner.  Of course, the leading justifications for TM law are tied to customer harm, and we only assign rights to the business unit because it quickly solves a collective action problem.  In that framework, any harm caused by Abitron is also felt abroad — with confusion of its non-us customers.

On appeal, the 10th Circuit sided with Hetronic and confirmed the award.  The U.S. Supreme Court then granted certiorari on the following question:

Whether the court of appeals erred in applying the Lanham Act extraterritorially to petitioners’ foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.

Petition.  At oral arguments, Lucas Walker (MoloLamken and former Gorsuch clerk) argued on behalf of the adjudged infringer; Matthew Hellman (Jenner & Block and former Souter clerk) argued on the other side; and Masha Hansford (SG’s office) largely sided with petitioner.

Although U.S. law is generally thought to not apply extraterritorially, trademark law has had a somewhat different path triggered by the Court’s decision in Steele v. Bulova Watch Co., 344 U.S. 280 (1952), which allowed for collection of damages for foreign infringement.  Petitioners here both distinguish Steele and suggest that it could be overruled.

In my view, this level of extraterritorial application creates a sovereignty conflict, with the USA extending its reach unduly into the realm covered by trademark and competition laws of other nations.  Sovereignty principles recognize the independence of each nation and are built upon principles of non-interference — that nations should not interfere with the internal affairs of other nations.  This is a situation that calls for the court to exercise comity and abstain from extending its reach absent a clear statement and authorization from Congress. Rather, if a trademark holder wants to sue for confusing sales made in Europe, Europe is the location where the parties should deal with the issue.



Source link

Previous Post

Biden Asks Congress to Go After Failed Bank Executives Who Cashed Out

Next Post

Kitces & Carl Episode 108: Crafting A (Marketing) Manifesto To Show What You Really Stand For

Next Post

Kitces & Carl Episode 108: Crafting A (Marketing) Manifesto To Show What You Really Stand For

Recommended

What Is the Size of the Average Retirement Nest Egg?

9 months ago

Compliance Calendar For A Solo RIA: Staying On Top Of Compliance Tasks While Serving Clients

1 month ago

529 Savings Plan vs. Roth IRA for College

4 weeks ago

Can I Have Both a 403(b) and a 401(k)?

4 months ago

Are Managed Mutual Funds or Index Funds Better for Roth IRAs?

8 months ago

4 Steps to Get Started

9 months ago
Advisory-(-White-)

© Advisory News Hubb All rights reserved.

Use of these names, logos, and brands does not imply endorsement unless specified. By using this site, you agree to the Privacy Policy and Terms & Conditions.

Navigate Site

  • Home
  • Laws & Ethics
  • Financial Advisory
  • Contact

Newsletter Sign Up.

No Result
View All Result
  • Home
  • Laws & Ethics
  • Financial Advisory
  • Contact

© 2022 Advisory News Hubb All rights reserved.