Joyce Liou spoke to the World Intellectual Property Review about the U.S. Supreme Court's unanimous ruling in Abitron v. Hetronic, which will transform how cross-border disputes are decided.
"Until now, many courts have viewed the Lanham Act as an extraterritorial statute, allowing litigants to bring U.S. claims and obtain injunctions against defendants over infringing acts abroad," Joyce said. "By ruling that the Lanham Act's infringement provisions are not extraterritorial, the Supreme Court has curtailed their application to only domestic uses, meaning the defendant's use in commerce of the plaintiff's mark must be domestic."
Joyce added that the ruling is "significant" because multiple circuit courts – not just the Tenth Circuit whose decision was overturned – have looked to an earlier Supreme Court decision in Steele v. Bulova (1952) to develop different tests for applying the Lanham Act extraterritorially. "In its decision, the Supreme Court distinguished Steele on the basis that the facts there included both domestic and foreign conduct," she explained. "Now those circuit courts will need to reevaluate their tests in light of the Abitron decision."
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Originally published by World Intellectual Property Review
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