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Abitron Austria GmbH v. Hetronic International, Inc.

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Abitron Austria GmbH v. Hetronic International, Inc. | |
Term: 2022 | |
Important Dates | |
Argued: March 21, 2023 Decided: June 29, 2023 | |
Outcome | |
vacated and remanded | |
Vote | |
9-0 | |
Majority | |
Samuel Alito • Clarence Thomas • Neil Gorsuch • Brett Kavanaugh • Ketanji Brown Jackson | |
Concurring | |
Sonia Sotomayor • Chief Justice John Roberts • Elena Kagan • Amy Coney Barrett • Ketanji Brown Jackson |
Abitron Austria GmbH v. Hetronic International, Inc. is a case that was decided by the Supreme Court of the United States on June 29, 2023, during the court's October 2022-2023 term. The case was argued before the court on March 21, 2023.
The court affirmed the decision of the United States Court of Appeals for the Tenth Circuit in a 9-0 ruling, holding that the application of the "presumption against extraterritoriality, §1114(1)(a) and §1125(a)(1) of the Lanham Act are not extraterritorial and extend only to claims where the infringing use in commerce is domestic."[1] Justice Samuel Alito delivered the majority opinion of the court.[1] Click here for more information about the ruling.
The case came on a writ of certiorari to the United States Court of Appeals for the 10th Circuit. To review the lower court's opinion, click here.
Timeline
The following timeline details key events in this case:
- June 29, 2023: The U.S. Supreme Court affirmed the decision of the United States Court of Appeals for the Tenth Circuit
- March 21, 2023: The U.S. Supreme Court heard oral argument.
- November 4, 2022: The U.S. Supreme Court agreed to hear the case.
- January 21, 2022: Abitron Austria GmbH appealed to the U.S. Supreme Court.[3]
- August 24, 2021: The United States Court of Appeals for the Tenth Circuit affirmed the lower court's ruling in part, reversed it in part, and remanded the case for further proceedings.[4]
Background
Tenth Circuit opinion
On August 24, 2021, the U.S. Court of Appeals for the 10th Circuit affirmed the lower court's ruling in part, reversed it in part, and remanded the case for further proceedings. Judge Gregory Alan Phillips authored the court's majority opinion:[4]
“ | Hetronic International, Inc., a U.S. company, manufactures radio remote controls—the kind used to remotely operate heavy-duty construction equipment (think cranes). Defendants, none of whom are U.S. citizens, distributed Hetronic's products, mostly in Europe. That relationship worked well for nearly a decade. But then one of Defendants’ employees stumbled across an old research-and-development agreement between the parties. Embracing a creative legal interpretation of the agreement endorsed by Defendants’ lawyers, Defendants concluded that they—not Hetronic—owned the rights to Hetronic's trademarks and other intellectual property.
|
” |
Lanham Act of 1946
According to the Cornell Law School Legal Information Institute:[6]
“ | The Lanham Act, 15 U.S.C. §§ 1051 et seq., was enacted by Congress in 1946. The Act provides for a national system of trademark registration and protects the owner of a federally registered mark against the use of similar marks if such use is likely to result in consumer confusion, or if the dilution of a famous mark is likely to occur. [5] | ” |
Questions presented
The petitioner presented the following questions to the court:[2]
Questions presented:
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Oral argument
Audio
Audio of oral argument:[7]
Transcript
Transcript of oral argument:[8]
Outcome
In a 9-0 opinion, the court vacated and remanded the judgment of the United States Court of Appeals for the Tenth Circuit, holding that the application of the "presumption against extraterritoriality, §1114(1)(a) and §1125(a)(1) of the Lanham Act are not extraterritorial and extend only to claims where the infringing use in commerce is domestic."[1] Justice Samuel Alito delivered the opinion of the court.[1]
Opinion
In the court's majority opinion, Justice Samuel Alito wrote:[1]
“ |
In sum, we hold that §1114(1)(a) and §1125(a)(1) are not extraterritorial and that the infringing “use in commerce of a trademark provides the dividing line between foreign and domestic applications of these provisions. Under the Act, the “term ‘use in commerce’ means the bona fide use of a mark in the ordinary course of trade,” where the mark serves to “identify and distinguish [the mark user’s] goods. . . and to indicate the source of the goods.” §1127.6 Because the proceedings below were not in accord with this understanding of extraterritoriality, we vacate the judgment of the Court of Appeals and remand the case for further proceedings consistent with this opinion. [5] |
” |
—Justice Samuel Alito |
Concurring opinion: Jackson
Justice Ketanji Brown Jackson filed a concurring opinion.
In her concurring opinion, Justice Jackson wrote:[1]
“ |
I agree with the Court that 15 U. S. C. §1114(1)(a) and §1125(a)(1) do not apply extraterritorially. Ante, at 7. I also agree that the “‘use in commerce’ of a trademark” that both statutory sections describe “provides the dividing line between foreign and domestic applications” of these provisions. Ante, at 14. The Court has no need to elaborate today upon what it means to “use [a trademark] in commerce,” §1127, nor need it discuss how that meaning guides the permissible-domestic-application question in a particular case. I write separately to address those points. [5] |
” |
—Justice Ketanji Brown Jackson |
Concurring opinion: Sotomayor
Justice Sonia Sotomayor also filed a concurring opinion, joined by Chief Justice John Roberts, and Justices Elena Kagan and Amy Coney Barrett.
In her concurring opinion, Justice Sotomayor wrote:[1]
“ |
Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act prohibit trademark infringement and unfair competition activities that are “likely to cause confusion, or to cause mistake, or to deceive.” 60 Stat. 437, 441, as amended, 15 U. S. C. §§1114(1)(a), 1125(a)(1)(A).1 The issue in this case is whether, and to what extent, these provisions apply to activities that occur in a foreign country. I agree with the majority’s conclusion that the decision below must be vacated. I disagree, however, with the extraterritoriality framework that the Court adopts today. In my view, §§32(1)(a) and 43(a)(1)(A) of the Lanham Act extends to activities carried out abroad when there is a likelihood of consumer confusion in the United States. [5] |
” |
—Justice Sonia Sotomayor |
Text of the opinion
Read the full opinion here.
October term 2022-2023
The Supreme Court began hearing cases for the term on October 3, 2022. The court's yearly term begins on the first Monday in October and lasts until the first Monday in October the following year. The court generally releases the majority of its decisions in mid-June.[9]
See also
External links
- Search Google News for this topic
- U.S. Supreme Court docket file - Abitron Austria GmbH v. Hetronic International, Inc. (petitions, motions, briefs, opinions, and attorneys)
- SCOTUSblog case file for Abitron Austria GmbH v. Hetronic International, Inc.
- The Lanham Act of 1946
Footnotes
- ↑ 1.0 1.1 1.2 1.3 1.4 1.5 1.6 United States Supreme Court, "ABITRON AUSTRIA GMBH ET AL. v. HETRONIC INTERNATIONAL, INC.," decided June 29, 2023
- ↑ 2.0 2.1 U.S. Supreme Court, "21-1043 ABITRON AUSTRIA GMBH V. HETRONIC INTERNATIONAL, INC. QUESTION PRESENTED," CERT. GRANTED November 4, 2022
- ↑ U.S. Supreme Court, "Abitron Austria GmbH v. Hetronic International, Inc., On Petition for a Writ of Certiorari to the United States Court of Appeals for the Tenth Circuit," filed January 21, 2022
- ↑ 4.0 4.1 U.S. Court of Appeals for the Tenth Circuit, Hetronic Int'l v. Hetronic Ger. Gmbh, decided August 24, 2021
- ↑ 5.0 5.1 5.2 5.3 5.4 5.5 Note: This text is quoted verbatim from the original source. Any inconsistencies are attributable to the original source.
- ↑ Cornell Law School Legal Information Institute, "Lanham Act," accessed November 8, 2022
- ↑ Supreme Court of the United States, "Oral Argument - Audio," argued March 21, 2022
- ↑ Supreme Court of the United States, "Oral Argument - Transcript," argued March 21, 2022
- ↑ SupremeCourt.gov, "The Supreme Court at Work: The Term and Caseload," accessed January 24, 2022