Episode description

Welcome to Supreme Court Opinions. In this episode, you’ll hear the Court’s opinion in Abitron Austria GmbH v Hetronic International, Inc.

In this case, the court considered this issue: Does the Lanham Act permit the owner of a U.S.-registered trademark to recover damages for the use of that trademark when the infringement occurred outside the United States and is not likely to cause confusion in the United States?

The case was decided on June 29, 2023.

The Supreme Court held that the Lanham Act extends trademark protection only to claims where the infringing “use in commerce” is domestic. Justice Samuel Alito authored the majority opinion of the Court.

Unless Congress explicitly states otherwise, U.S. laws are generally presumed to apply only within the territorial jurisdiction of the United States. This presumption helps avoid conflicts with other countries and is premised on the idea that Congress typically legislates with domestic matters in mind. To apply the presumption against extraterritoriality, courts apply a two-step framework. First, a court must ask whether Congress has explicitly indicated that the statute should apply to foreign conduct. If not, then the second step is to ask whether the lawsuit seeks a permissible domestic or impermissible foreign application of the law.

Applying that two-step framework here, the Court concluded that the Lanham Act applies only to claims where the infringing use is domestic. First, neither § 1114(1)(a) nor § 1125(a)(1) explicitly indicates that the statute should apply to foreign conduct. They prohibit the use “in commerce” of protected marks that are likely to cause confusion. A mere reference to “foreign commerce” does not make a statute extraterritorial. Second, the focus of the statute is on the “use in commerce” that is likely to cause confusion, which is domestic conduct.

Justice Ketanji Brown Jackson filed a concurring opinion to elaborate on what it means to “use a trademark in commerce.”

Justice Sonia Sotomayor filed an opinion concurring in the judgment, in which Chief Justice John Roberts and Justices Elena Kagan and Amy Coney Barrett joined, arguing that while the majority reached the correct conclusion, in her view the Lanham Act extends to activities carried out abroad when there is a likelihood of consumer confusion in the United States.

The opinion is presented here in its entirety, but with citations omitted. If you appreciate this episode, please subscribe. Thank you.