Abitron Austria GmbH v. Hetronic International, Inc. (21-1043)

argument 21-1043

Abitron Austria GmbH v. Hetronic International, Inc.

Supreme Court of the United States 1h 27m 8 speakers 8 chapters transcribed 8 days ago official recording ↗

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What is the Supreme Court’s position on the Lanham Act’s extraterritorial application?

John G. Roberts 0:00

We will hear argument first this morning in case twenty one ten forty three, Abertron Austria GMBH versus Hetronic International.

Unknown 0:11

Mr Walker. Mr. Chief Justice, and may it please the Court, the Lanham Act does not apply to petitioners' use of trademarks in foreign countries because nothing in the Act provides the clear, affirmative and unmistakable indication needed to overcome the presumption against extraterritoriality, especially as to foreign defendants like petitioners. The text of the statute never says it applies to uses of trademarks outside the United States. And it is a foundational principle of both U.S. and international trademark law, embodied in multiple treaties, that trademark protections are inherently territorial and do not extend beyond the borders of the country granting protection. Any argument that the Act extends, departs from that longstanding principle, would have to be based on especially compelling evidence.

Unknown 1:00

But here, Hetronic International offers only the text definition. Definition of commerce, and this court has repeatedly rejected the notion that commerce language is enough to extend a law to foreign conduct, even if that language otherwise invokes the full scope of a constitutional commerce power. International also invokes this Court's decision in Steele, but Steel, by its terms, addressed only the Act's application to U.S. citizens acting abroad. There is no reason to discard that self imposed limit and extend Steel to reach foreign defendants like petitioners. To the contrary, extending the Lanham Act's reach into foreign countries would create the very risk of international friction that this Court's current extraterritoriality does.

Unknown 1:44

doctrine seeks to avoid. That leaves the suggestion that imposing liability for foreign sales to foreign buyers by foreign companies somehow qualifies as a domestic application of the Act. But as international itself concedes, applying U.S. law to conduct abroad based on effects in the United States is an extraterritorial application of the law. It is not a way of applying a non-extraterritorial law domestically. Both the text and the focus of the Lanham Act require a domestic use of the mark in commerce. Because petitioners' foreign sales involved only uses outside the United States, they fall outside the Act's scope. I welcome the Court's questions.

Clarence Thomas 2:25

Could you imagine any set of circumstances where a sale that involves uh an international transaction could also involve conduct in the United States that violates the Lanham Act?

Unknown 2:38

So I think one example here would be the the €202,000 worth of direct sales to U.S. customers. So those sales involve foreign buyers, the petitioners, who were overseas at the time, but they were sold into the United States to foreign buyers. I think in that situation, the mark is being used on those goods in commerce within the territory of the United States. And so we have not disputed that that's a permissible domestic application of the Lanham Act here.

Elena Kagan 3:05

I don't understand what that difference is from the sales to um people in foreign countries who designated the United States as the mailing address. You know that they're buying it to ship it into the US. Why aren't you aiding and abetting and isn't that an effect? as direct as the land can ask for. You're interfering with commerce in the United States.

Unknown 3:30

So to two points on that. So the the the the three percent of sales of the goods that ev may have eventually reached the United States.

Elena Kagan 3:37

No, no, no. There was a bunch of goods in that second category. that you sold to foreign buyers deliver for delivery to an address in the United States.

Unknown 3:47

So the the delivery w was actually in the foreign country. They had delivered to the buyers in the foreign country. The delivery address on there actually meant that it had to be compatible with, say, FCC regulations so it could be used in the United States. And so it was being sold to, for example,

Elena Kagan 4:02

you are begging the question

Unknown 4:03

But so uh so uh e e even apart from that, I I I think what you would have there is the use of the mark in the United States is going to be when that is imported or maybe resold in the United States, when it reaches the territory of the United States.