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Abitron Austria GmbH v. Hetronic International, Inc./Opinion of Justice Sotomayor

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Abitron Austria GmbH et al. v. Hetronic International, Inc.
Supreme Court of the United States
4331502Abitron Austria GmbH et al. v. Hetronic International, Inc.Supreme Court of the United States
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SUPREME COURT OF THE UNITED STATES

No. 21–1043

ABITRON AUSTRIA GMBH, ET AL., PETITIONERS v. HETRONIC INTERNATIONAL, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE TENTH CIRCUIT
[June 29, 2023]

Justice Sotomayor, with whom The Chief Justice, Justice Kagan, and Justice Barrett join, concurring in the judgment.

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.

I

This Court previously considered the extraterritoriality of the Lanham Act in Steele v. Bulova Watch Co., 344 U. S. 280 (1952). There, the Court applied the Lanham Act to trademark infringement and unfair competition activities that occurred abroad but confused consumers in the United ​States. See id., at 281, 286–287. Because the Court decided Steele 70 years ago, it had no occasion to apply the two-step framework that the Court has since developed for evaluating the extraterritorial reach of a statute. A proper application of that framework, however, leads to a result consistent with Steele: Although there is no clear indication that the Lanham Act provisions at issue rebut the presumption against extraterritoriality at step one, a domestic application of the statute can implicate foreign conduct at step two, so long as the plaintiff proves a likelihood of consumer confusion domestically.

A

In Steele, the Bulova Watch Company, Inc., a New York corporation that marketed watches under the registered U. S. mark “Bulova,” sued Sidney Steele, a U. S. citizen and resident of Texas with a watch business in Mexico City. Id., at 281, 284. Upon discovering that the mark “Bulova” was not registered in Mexico, Steele obtained the Mexican registration of the mark, assembled watches in Mexico using component parts he had procured from the United States and Switzerland, and “stamped his watches with ‘Bulova’ and sold them as such.” Id., at 281, 284–285. As a result, “spurious ‘Bulovas’ filtered through the Mexican border into this country,” causing a Bulova Watch Company’s sales representative in the United States to “receiv[e] numerous complaints from retail jewelers in the Mexican border area [of Texas] whose customers brought in for repair defective ‘Bulovas’ which upon inspection often turned out not to be products of that company.” Id., at 285–286. Steele “committed no illegal acts within the United States.” Id., at 282.

The Court held that, because Steele’s “operations and their effects were not confined within the territorial limits of a foreign nation,” the Lanham Act applied to Steele’s activities. Id., at 286. The Court emphasized that Steele’s conduct had the potential to “reflect adversely on Bulova ​Watch Company’s trade reputation” in the United States. Ibid. By contrast, the fact that Steele “affixed the mark ‘Bulova’ in Mexico City rather than here” was not “material.” Id., at 287.

B

Following Steele, the Courts of Appeals developed various tests, modeled after Steele’s facts, to address the Lanham Act’s extraterritorial reach.[2] This Court also subsequently adopted a two-step framework for determining when a statute can apply extraterritorially to foreign conduct. That framework implements “a canon of statutory construction known as the presumption against extraterritoriality.” RJR Nabisco, Inc. v. European Community, 579 U. S. 325, 335 (2016). The presumption reflects the “longstanding principle of American law that legislation of Congress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States.” Morrison v. National Australia Bank Ltd., 561 U. S. 247, 255 (2010) (internal quotation marks omitted). That is, courts presume that, “in general, ‘United States law governs domestically but does not rule the world.’ ” RJR Nabisco, 579 U. S., at 335 (quoting Microsoft Corp. v. AT&T Corp., 550 U. S. 437, 454 (2007)).

Under this framework, the Court first asks “whether the presumption against extraterritoriality has been rebutted” by “a clear, affirmative indication that [the statute] applies extraterritorially.” RJR Nabisco, 579 U. S., at 337. If the presumption is not rebutted at that first step, the Court ​then proceeds to determine at step two “whether the case involves a domestic application of the statute.” Ibid. To determine whether a domestic application exists, the Court must ascertain the statute’s “focus,” i.e., “the objec[t] of the statute’s solicitude.” Morrison, 561 U. S., at 266–267.

As I explain below, although I agree with the result the Court reaches with respect to the first step, I disagree with its analysis at step two.

1

Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act impose civil liability on a defendant who “use[s] in commerce” a trademark in a manner that is “likely to cause confusion, or to cause mistake, or to deceive.” 15 U. S. C. §§1114(1)(a), 1125(a)(1)(A). The Act in turn defines “commerce” as “all commerce which may lawfully be regulated by Congress.” §1127.

Under this Court’s precedents, this language is insufficient to rebut the presumption against extraterritoriality at step one. The Court has “repeatedly held that even statutes that contain broad language in their definitions of ‘commerce’ that expressly refer to ‘foreign commerce’ do not apply abroad” to all foreign conduct. Morrison, 561 U. S., at 262–263 (internal quotation marks omitted); see also RJR Nabisco, 579 U. S., at 344 (a statute’s reference to “foreign commerce” does not “mean literally all commerce occurring abroad”). The Court has also explained “that generic terms like ‘any’ or ‘every’ do not rebut the presumption.” Kiobel v. Royal Dutch Petroleum Co., 569 U. S. 108, 118 (2013). The term “all” is not meaningfully different. While “the word conveys breadth,” Peter v. NantKwest, Inc., 589 U. S. ___, ___ (2019) (slip op., at 7), it does not rebut the presumption either.

2

The Court’s inquiry at step two centers on the “focus” of ​the statutory provisions. Like the Court’s analysis at step one, this inquiry is contextual; the Court “do[es] not analyze the provision at issue in a vacuum.” WesternGeco LLC v. ION Geophysical Corp., 585 U. S. ___, ___ (2018) (slip op., at 6). Rather, the Court looks at the provision “in concert” with other relevant provisions and considers “how the statute has actually been applied.” Ibid. The aim of determining the statutory focus is to assess what constitutes a domestic application of the statute. An application is domestic when the object of the statute’s focus is found in, or occurs in, the United States. See, e.g., Morrison, 561 U. S., at 266–267, 273 (where the “focus of the Exchange Act” is “purchases and sales of securities,” there is no domestic application of the statute when those purchases and securities “occurred outside the United States,” regardless of “the place where the deception originated”).

The parties offer different interpretations of the focus of §§32(1)(a) and 43(a)(1)(A). Petitioners argue that the focus of the statute is the “use” of the mark “in commerce.” Brief for Petitioners 39. Under petitioners’ theory, the Lanham Act does not reach any infringing products sold abroad; instead, the defendant must sell the products directly into the United States. Id., at 44–45. Respondent, by contrast, argues that the Act has two distinct focuses: protecting mark owners from reputational harm and protecting consumers from confusion. Brief for Respondent 45–48. Under respondent’s view, reputational harm to the mark owner “is not necessarily tied to the locus of [consumer] confusion or the locus of the [defendant’s] conduct.” Id., at 47. Instead, respondent asserts, harm to a mark owner’s reputation “is felt where [the mark owner] resides.” Ibid. The Government, as amicus curiae supporting neither party, offers a middle ground. In its view, the focus of the statute is consumer confusion. See Brief for United States as Amicus Curiae 14 (United States Brief). Accordingly, “[w]here such effects are likely to occur in the United States, application ​of Sections 32(1)(a) and 43(a)(1)(A) is a permissible domestic application of the Act, even if the defendant’s own conduct occurred elsewhere.” Ibid.

I agree with the Government’s position. Sections 32(1)(a) and 43(a)(1)(A) of the Act prohibit specific types of “use[s] in commerce”: uses that are “likely to cause confusion, or to cause mistake, or to deceive.” 15 U. S. C. §§1114(1)(a), 1125(a)(1)(A). The statute thus makes clear that prohibiting the use in commerce is “merely the means by which the statute achieves its end” of protecting consumers from confusion. WesternGeco LLC, 585 U. S., at ___ (slip op., at 8). Stated differently, “a competitor’s use does not infringe a mark unless it is likely to confuse consumers.” Patent and Trademark Office v. Booking.com B.V., 591 U. S. ___, ___ (2020) (slip op., at 12); see 4 J. McCarthy, Trademarks and Unfair Competition §23:1, p. 23–9 (5th ed. 2023) (McCarthy) (“[L]ikelihood of confusion is the keystone of trademark infringement”). Because the statute’s focus is protection against consumer confusion, the statute covers foreign infringement activities if there is a likelihood of consumer confusion in the United States and all other conditions for liability are established. See infra, at 12.

Treating consumer confusion as the focus of the Act is consistent with Steele, which focused on the domestic “effects” of the defendant’s foreign conduct. 344 U. S., at 286. Steele emphasized that, although the defendant did not affix the mark or sell the products in the United States, “spurious ‘Bulovas’ filtered through the Mexican border into this country,” causing consumer confusion here. Id., at 285–287. These domestic effects, the Court reasoned, could “reflect adversely on Bulova Watch Company’s trade reputation” in the United States. Id., at 286. In other words, consistent with the statutory text, Steele focused on the impact of the defendant’s foreign conduct on the consumer market in the United States (in accord with the Government’s view here), not the location of the original sale of the infringing ​product or the location of the trademark owner’s business (contrary to petitioners’ and respondent’s views here).

The Court’s precedent also supports the view that an application of a statute can be considered domestic even when foreign conduct is implicated. In Morrison, for example, the Court concluded that §10(b) of the Securities Exchange Act of 1934, 48 Stat. 891, “does not punish deceptive conduct, but only deceptive conduct ‘in connection with the purchase or sale of’ ” securities in the United States. 561 U. S., at 266 (quoting 15 U. S. C. §78j(b)). Thus, “the focus of the Exchange Act is not upon the place where the deception originated, but upon purchases and sales of securities in the United States.” 561 U. S., at 266. “Those purchase-and-sale transactions are the objects of the statute’s solicitude.” Id., at 267. Under Morrison, a domestic application of §10(b) covers misrepresentations made abroad, so long as the deceptive conduct bears the requisite connection to the statute’s focus: the domestic purchase or sale of a security. Similarly, under §§32(1)(a) and 43(a)(1)(A) of the Lanham Act, uses of a mark in commerce are actionable when they cause a likelihood of consumer confusion in the United States, even when the conduct originates abroad.

II

The Court agrees with petitioners’ bottom line that the Lanham Act requires a domestic “use in commerce.” See ante, at 7–10. According to the majority, the “ ‘use in commerce’ provides the dividing line between foreign and domestic applications of these Lanham Act provisions.” Ante, at 10. Yet the majority does not actually take a stance on the focus of the Act or apply this Court’s settled law. Instead, to reach its conclusion, the majority transforms the Court’s extraterritoriality framework into a myopic conduct-only test.

Specifically, instead of discerning the statute’s focus and assessing whether that focus is found domestically, as the ​Court’s precedents command, the majority now requires a third step: an assessment of whether the “conduct relevant to the focus” occurred domestically, even when the focus of the statute is not conduct. Ante, at 9. Making matters even more confusing, the majority skips over the middle step of this new framework, concluding that it is unnecessary to discern the focus of the Lanham Act because “the conduct relevant to any potential focus” that “the parties have proffered” must be “use in commerce,” since that is conduct mentioned in the statute. Ibid.[3] In other words, under the Court’s unprecedented three-step framework, no statute can reach relevant conduct abroad, no matter the true object of the statute’s solicitude.

The Court’s novel approach transforms the traditional inquiry at step two into a conduct-only test, in direct conflict with this Court’s jurisprudence. The Court has expressly recognized that a statute’s “focus” can be “conduct,” “parties,” or “interests” that Congress sought to protect or regulate. WesternGeco LLC, 585 U. S., at ___ (slip op., at 8) (internal quotation marks omitted); see also Morrison, 561 U. S., at 266 (“the focus of the Exchange Act is not upon the place where the deception originated”). After all, not every federal statute subject to an extraterritoriality analysis “directly regulate[s] conduct.” Kiobel, 569 U. S., at 116.

Because precedent does not support the Court’s recitation of the extraterritoriality framework, the majority retreats to a distorted reading of the Court’s past decisions. The majority relies on RJR Nabisco, see ante, at 9, but that case does not support the majority’s course. The Court in RJR Nabisco noted that the Racketeer Influenced and Corrupt Organizations Act’s civil suit provision requires an “injury ​to business or property.” 579 U. S., at 354. The Court then concluded that there is a domestic application of that provision so long as there is a “domestic injury.” Ibid. In other words, the Court held that the focus of the statute had to occur domestically. It did not require a third step.

The Court also repeatedly quotes from cases where the Court has said that a domestic application requires that “the conduct relevant to the statute’s focus occurred in the United States.” Ante, 4–5, 10. In those cases, however, the Court first concluded (or assumed without deciding) that the focus of the provision at issue was conduct, and only then proceeded to consider whether the relevant conduct occurred domestically. In WesternGeco, for example, the Court considered the extraterritorial application of §271(f)(2) of the Patent Act, which formed “the basis for [the plaintiff’s] infringement claim.” 585 U. S., at ___ (slip op., at 7). The “focus” of that provision, the Court concluded, is the “act of ‘suppl[ying] in or from the United States,’ ” so the conduct “relevant to that focus” was the defendant’s “domestic act of supplying the components that infringed [the plaintiff’s] patents.” Id., at ___–___ (slip op., at 7–8); see also Nestlé USA, Inc. v. Doe, 593 U. S. ___, ___–___ (2021) (slip op., at 4–5) (assuming without deciding that “the ‘focus’ of the [statute] is conduct that violates international law” and then concluding that conduct relevant to that focus “occurred in Ivory Coast”). In other words, the Court looked to whether the focus of the statute at issue occurred domestically.

In sum, none of the cases upon which the majority relies establish categorically that there must be domestic conduct in order for there to be a domestic application of a statute. Calling this requirement “straightforward,” “established precedent” does not make it so. Ante, at 10–11.[4]

​The Court’s transformative approach thwarts Congress’ ability to regulate important “interests” or “parties” that Congress has the power to regulate. WesternGeco LLC, 585 U. S., at ___ (slip op., at 6). Some statutes may have a statutory focus that is not strictly conduct and that implicates some conduct abroad. Cf., e.g., F. Hoffmann-La Roche Ltd v. Empagran S. A., 542 U. S. 155, 165 (2004) (recognizing the long-established view that U. S. antitrust laws “reflect a legislative effort to redress domestic antitrust injury that foreign anticompetitive conduct has caused” (emphasis deleted)). Under the Court’s new categorical rule, those statutes may not cover relevant conduct occurring abroad, even if that conduct impacts domestic interests that Congress sought to protect. At bottom, by reframing the inquiry at step two as a conduct-only test, the Court’s new rule frustrates a key function of the presumption against extraterritoriality: to discern congressional meaning and “preserv[e] a stable background against which Congress can legislate with predictable effects” to protect domestic interests, Morrison, 561 U. S., at 261, including those of U. S. trademark owners and consumers.

The Court’s analysis is also inconsistent with Steele. ​According to the Court, “Steele implicated both domestic conduct and a likelihood of domestic confusion,” so it offers no guidance in resolving this case. Ante, at 8. No court of appeals has read Steele that way, and for good reason: Steele clearly recognized that infringing acts consummated abroad fall under the purview of the Lanham Act when they generate consumer confusion in the United States. See supra, at 2–3, 6–7.[5] Finding Steele “of little assistance” to its blinkered approach, the majority reduces Steele to a “narrow” case with no application beyond its facts. Ante, at 8. Steele is no such thing. It addressed the weighty question whether the Lanham Act “extend[s] beyond the boundaries of the United States,” 344 U. S., at 285, and has guided the lower courts’ extraterritoriality analysis for more than 70 years. The Court should not “put aside” the Court’s precedent merely because it is convenient to do so. Ante, at 8.

Because the Court cannot ground its holding in precedent, it turns to abstract policy considerations. According to the majority, the focus of the Lanham Act cannot center on consumer confusion, despite Steele and the statute’s clear textual clues, because any focus other than conduct is too uncertain and “would create headaches for lower courts.” Ante, at 11. The Court’s conclusion, however, is based on the incorrect assumption that “merely a likelihood of an effect in this country” would be sufficient to hold a defendant liable under the Act. Ante, at 12 (emphasis ​deleted). What the Lanham Act requires is a likelihood of confusion in the United States, not some abstract and undefined “effect.” The likelihood-of-confusion test comes straight from the statute’s text. As petitioners and the Court acknowledge, it is at the very core of the inquiry under §§32(1)(a) and 43(a)(1)(A). See Brief for Petitioners 47–48; ante, at 9. Assessing likelihood of confusion may require a nuanced test, but it is the test that Congress chose and that courts already apply.

In addition, any plaintiff would need to do more than point to mere likelihood of confusion; as with any cause of action, the plaintiff must establish all necessary elements for recovery. For example, although “use in commerce” is not the statute’s focus, the statute still requires that the plaintiff establish a “use in commerce.” §§1114(1)(a), 1125(a)(1)(A). As Steele shows, because “commerce” includes all commerce that Congress has the power to regulate, §1127, some foreign sales can fall under the statute’s reach. See also RJR Nabisco, 579 U. S., at 344 (the term “ ‘foreign commerce’ ” does not “mean literally all commerce occurring abroad,” but it includes “commerce directly involving the United States,” including “commerce between the United States and a foreign country”).[6] Plaintiffs must also generally show, for example, that their “injuries are proximately caused by violations of the statute.” Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U. S. 118, 132 (2014). The Court is thus mistaken that “abstract consumer confusion is sufficient” to recover under the Lanham Act. Ante, at 14.

​The Court also incorrectly concludes that a test that focuses on domestic consumer confusion conflicts with the territoriality principle of trademark law. See ante, at 12–14. That principle recognizes that a trademark has separate legal existence in each country where the mark “is registered or legally recognized.” 5 McCarthy §29:1, at 29–5; see Ingenohl v. Olsen & Co., 273 U. S. 541, 544 (1927) (noting that a trademark secured in one country “depend[s] for its protection” there and “confer[s] no rights” elsewhere). Thus, to obtain the benefits that flow from trademark rights, such as the “right to a non-confused public,” the plaintiff must secure those rights in the country where it wants protection. 1 McCarthy §2:10, at 2–24.

A focus on consumer confusion in the United States is consistent with that international system. That focus properly cabins the Act’s reach to foreign conduct that results in infringing products causing consumer confusion domestically while “leaving to foreign jurisdictions the authority to remedy confusion within their territories.” United States Brief 25–26; see Brief for European Commission on Behalf of the European Union as Amicus Curiae 6 (“The test for infringement in the European Union, including in Germany, like the United States, assesses whether there is a likelihood of consumer confusion”). In other words, applying the Lanham Act to domestic consumer confusion promotes the benefits of U. S. trademark rights in the territory of the United States.

The Court’s approach, by contrast, would absolve from liability those defendants who sell infringing products abroad that reach the United States and confuse consumers here. That resulting consumer confusion in the United States, however, falls squarely within the scope of the interests that the Lanham Act seeks to protect.[7]

​The Court’s arguments about the impending “ international discord” that will result from the Government’s approach are simply overblown. Ante, at 12 (internal quotation marks omitted). There is no evidence that Steele, which is consistent with a focus on domestic consumer confusion, has created any international tension since it was decided more than 70 years ago. Moreover, as even petitioners acknowledge, purely foreign sales with no connection to the United States are unlikely to confuse consumers domestically. See Brief for Petitioners 44. Foreign companies with purely foreign operations also have at their disposal important defenses grounded in due process and international comity principles, including the ability to dismiss a case in the United States for lack of personal jurisdiction or on the ground of forum non conveniens. See, e.g., Piper Aircraft Co. v. Reyno, 454 U. S. 235, 257–261 (1981).[8]

​Finally, the Court relies upon the amicus brief filed by the European Commission in support of its concern about the risk of international “tension” that the Government’s position supposedly creates. Ante, at 14. The European Commission filed its brief in support of neither party, however, in line with the Solicitor General’s view that a focus on consumer confusion provides a more balanced approach that respects international relations while protecting against trademark infringement domestically. No “sovereign nation” filed its brief in support of petitioners’ (and the Court’s) restricted view of step two of the extraterritoriality analysis. Ibid. And there is no “tension” in any event. What the European Commission “warns this Court against,” ibid., is adopting respondent’s sweeping view that all foreign uses that confuse consumers abroad fall under the scope of the Act. See Brief for European Commission on Behalf of the European Union as Amicus Curiae 6 (explaining that “infringement” occurs in the European Union when there is “a likelihood of consumer confusion” there). *** The Lanham Act covers petitioners’ activities abroad so long as respondent can show that those activities are “likely to cause confusion, or to cause mistake, or to deceive” in the United States and can prove all elements necessary to establish liability under the Act. 15 U. S. C. §§1114(1)(a), 1125(a)(1)(A). Because the courts below did not apply that test, I agree vacatur and remand is required. The Court’s opinion, however, instructs the Court on remand to apply a test that is not supported by either the Lanham Act or this ​Court’s traditional two-step extraterritoriality framework. I therefore concur only in the judgment.[9]

  1. ↑ For simplicity, this opinion refers to this likelihood of “confusion,” “mistake,” or “decei[t]” as likelihood of consumer confusion.
  2. ↑ See, e.g., Trader Joe’s Co. v. Hallatt, 835 F. 3d 960, 969 (CA9 2016); McBee v. Delica Co., 417 F. 3d 107, 111 (CA1 2005); International Cafe, S. A. L. v. Hard Rock Cafe Int’l (U. S. A.), Inc., 252 F. 3d 1274, 1278 (CA11 2001); Aerogroup Int’l, Inc. v. Marlboro Footworks, Ltd., 152 F. 3d 948 (CA Fed. 1998); Nintendo of Am., Inc. v. Aeropower Co., 34 F. 3d 246, 250 (CA4 1994); American Rice, Inc. v. Arkansas Rice Growers Cooperative Assn., 701 F. 2d 408, 414, n. 8 (CA5 1983); Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F. 2d 633, 642–643 (CA2 1956).
  3. ↑ Even more confusing still, “use in commerce” is all that matters under the majority’s conduct-only analysis even though other conduct is also listed as actionable in at least one of the provisions at issue. 15 U. S. C. §1114(1)(a) (“the sale, offering for sale, distribution, or advertising of any goods or services”).
  4. ↑ Relying on RJR Nabisco, Inc. v. European Community, 579 U. S. 325 (2016), the majority argues that the Court has already “acknowledged that courts do not need to determine [a] statute’s ‘focus’ when all conduct regarding the violations took place outside the United States.” Ante, at 11 (some internal quotation marks omitted). The portion of RJR Nabisco that the majority relies upon merely described the Court’s holding in Kiobel v. Royal Dutch Petroleum Co., 569 U. S. 108 (2013), a case that did not involve step two. In Kiobel, the Court held that the statute did not rebut the presumption against extraterritoriality at step one and declined to address step two of the analysis (including determining the statute’s focus) because the claims at issue did not “touch and concern the territory of the United States” other than through “mere corporate presence.” Id., at 124–125. Kiobel does not offer any guidance on what constitutes a domestic application of a statute at step two.
  5. ↑ It is true that Steele involved domestic conduct insofar as the defendant exported watch parts from the United States into Mexico in preparing to affix the infringing mark abroad. See 344 U. S., at 286. Yet the act of exporting those watch parts with no affixed mark did not, without more, constitute an “illegal ac[t] within the United States.” Id., at 282, 287. In contrast, the defendant committed infringing acts abroad: “[I]n Mexico City [he] stamped his watches with ‘Bulova’ and sold them as such.” Id., at 285. The Court also did not hold that domestic exportation of unmarked product parts is necessary for the Lanham Act to cover foreign sales.
  6. ↑ Here, there is no dispute that the Lanham Act covers the products that petitioners sold directly into the United States. See Brief for Petitioners 11, 41, 44–45. The dispute centers on products that petitioners sold abroad to foreign buyers. For a portion of those products, the foreign buyer designated the United States as the location where the products were intended to be used. Like the watches in Steele, those products thus “ended up in the United States.” Pet. for Cert. 6.
  7. ↑ In today’s increasingly global marketplace, where goods travel through different countries, multinational brands have an online presence, and trademarks are not protected uniformly around the world, limiting the Lanham Act to purely domestic activities leaves U. S. trademark owners without adequate protection. Cf. McBee, 417 F. 3d, at 119 (noting that “global piracy of American goods is a major problem for American companies,” and absent some enforcement over foreign activities, “there is a risk” that “violators will either take advantage of international coordination problems or hide in countries without efficacious … trademark laws, thereby avoiding legal authority”). To be sure, the Court today does not address whether a defendant operating abroad who sells goods that reach the United States can be held liable under the Lanham Act pursuant to contributory liability principles. See Tr. of Oral Arg. 7–8, 20–21. Still, today’s decision significantly waters down protections for U. S. trademark owners. It is now up to Congress to correct the Court’s limited reading of the Act.
  8. ↑ The Court incorrectly suggests that the Government’s position will sweep in foreign defendants with only a minimal connection to the United States. Ante, at 12. In this case, for example, the District Court concluded that personal jurisdiction was proper based on a forum selection clause in the parties’ distribution agreement, which named Oklahoma as the forum of choice, and because petitioners purposefully directed their activities at the United States. Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 2015 WL 5569035, *1–*3 (WD Okla., Sept. 22, 2015); Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 2015 WL 6835428, *2 (WD Okla., Nov. 6, 2015). The Tenth Circuit affirmed that determination, Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 10 F. 4th 1016, 1027–1032 (2021), which petitioners do not challenge before this Court.
  9. ↑ The jury returned a verdict for respondent on all counts in the complaint, including the breach of contract and tort claims under state law, and awarded respondent more than $115 million in damages. See App. to Pet. for Cert. 8a, 134a–137a. The Court’s decision today on the claims under the Lanham Act does not affect the relief granted on other claims, which petitioners do not challenge before this Court.
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