Extraterritorial Application of the Lanham Act

United States corporations operating abroad often look to the Lanham Act, 15 U.S.C. § 1051 et seq., for protection of their intellectual property. If you take almost any Fortune 100 company or company listed on the Dow Jones Industrial Average, you will probably find that it derives a sizable portion of its revenue from international operations. Moreover, its intellectual property, particularly that protected by trademark, is probably among the most valuable assets on its balance sheet.1See Mark Crowe, Brand in the Boardroom, Your Most Valuable Asset Brand Finance (2020), https://brandfinance.com/insights/brand-in-the-boardroom (last visited Nov 11, 2021); Felix Richter, Infographic: The U.S. Companies With The Highest Overseas Earnings, Statista Infographics (2017), https://www.statista.com/chart/11619/the-us-companies-with-the-highest-overseas-earnings/ (last visited Nov 11, 2021). Yet courts have not consistently applied the Lanham Act extraterritorially to protect the intellectual property of firms based in the United States.2Compare Int’l Cafe, S.A.L. v. Hard Rock Cafe Int’l (U.S.A.), Inc., 252 F.3d 1274 (11th Cir. 2001), with Wells Fargo & Co. v. Wells Fargo Exp. Co., 556 F.2d 406 (9th Cir. 1977). 

Indeed, a recent Tenth Circuit decision, Hetronic Int’l, Inc. v. Hetronic Germany GmbH,310 F.4th 1016 (10th Cir. 2021) highlights a rift among federal courts of appeals. With the complexion of the current Supreme Court, U.S. companies ought to watch this space very carefully.4Andrew C McCarthy, Do We Have a Constitutional-Conservative Supreme Court Majority – or Pols in Robes?, National Review (2021), https://www.nationalreview.com/2021/11/do-we-have-a-constitutional-conservative-supreme-court-majority-or-pols-in-robes/ (last visited Nov 11, 2021). Until the circuit split is resolved, international corporations will have to deal with needless uncertainty. Because this split is so expensive, implicating an enormous volume of commercial activity, the Supreme Court may be motivated to resolve it sooner than later.

In the United States, companies benefit from the intellectual property protections of not only the Lanham Act, but also common law and many state statutes.5See generally Federal, Foreign and State Trademark Licensing Law Compared, 3 McCarthy on Trademarks and Unfair Competition § 18:54 (5th ed.) But because modern corporations often rely on international operations to an equal or greater extent than they do domestic operations, intellectual property protections abroad are enormously consequential.6Cf. Richter, supra. Further, intellectual property laws in other countries sometimes clash with the Lanham Act in critical ways.7See generally Gisella Zuñiga Galván, Differences Between U.S. and EU Trademark Law: An Overview Harris Bricken (2018), https://harrisbricken.com/blog/differences-u-s-eu-trademark-law-overview/ (last visited Nov 11, 2021). The facts of Hetronic illustrate how incongruent legal regimes can negatively impact U.S. companies operating abroad.8See Hetronic, 10 F.4th at 1024–25. In the case, foreign defendants manufactured products identical to those of the plaintiff corporation, which had received trademark protection for the products.9Id. A finding that the Lanham Act does not apply to the defendants’ conduct in this case would make relief much more difficult to obtain.

Long before Hetronic, the Supreme Court addressed extraterritorial application of the Lanham Act where a U.S. citizen sold counterfeit watches in Mexico.10Steele v. Bulova Watch Co., 344 U.S. 280 (1952). In Steele, the Court adopted a presumption against application of the Act outside the United States but provided for such application where Congress is believed to have intended it.11See Id. at 285–86; Christopher Jackson & Jessica Smith, Tenth Circuit Adds to Split on Lanham Act’s International Applicability, LawJournalNewsletters.com (2021), https://www.lawjournalnewsletters.com/2021/10/01/tenth-circuit-adds-to-split-on-lanham-acts-international-applicability/?slreturn=20211007195329 (last visited Nov 11, 2021). Since Steele, several frameworks for determining whether this presumption can be overcome have developed in the federal courts of appeals.12See generally James Christopher Gracey, Thou Shalt Not Steele: Reexamining the Extraterritorial Reach of the Lanham Act, 21 Vand. J. Ent. & Tech. L. 823, 839–47 (2019).

In brief, there are three main tests to determine whether a court has jurisdiction over a foreign party under the Lanham Act. The first is the Vanity Fair test, a three-part balancing test applied by the Second, Fifth, and First Circuits.13Id. at 840–43. The second is the Ninth Circuit’s “jurisdictional rule of reason” test, or the Timberlane test, which adds seven elements to the Vanity Fair test and has proven cumbersome to apply.14See id. at 843–47. The third is the McBee test, adopted in the recent Tenth Circuit Hetronic case.15Hetronic, 10 F.4th at 1036. 

The Vanity Fair test is relatively straightforward.16See Vanity Fair Mills, Inc. v. T. Eaton Co., 234 F.2d 633, 642 (2d Cir. 1956). Courts employing this test ask whether the defendant’s conduct substantially affected U.S. commerce, if the defendant was a U.S. citizen, and whether U.S. law conflicted with trademark rights under the relevant foreign law.17See id.; Christopher Jackson & Jessica Smith, Tenth Circuit Deepens Circuit Split on the Lanham Act’s Extraterritorial Scope,Law.com (2021), https://www.law.com/2021/09/20/tenth-circuit-deepens-circuit-split-on-the-lanham-acts-extraterritorial-scope/?slreturn=20211007192638 (last visited Nov 11, 2021). By contrast, the Timberlane test is complex but eminently more flexible.18See Timberlane Lumber Co. v. Bank of Am., N.T. & S.A., 549 F.2d 597 (9th Cir. 1976). The Ninth Circuit in Timberlane introduced several factors to consider alongside the Vanity Fair test’s three questions.19Id. at 614. The additional factors are as follows:

[T]he degree of conflict with foreign law or policy, the nationality or allegiance of the parties and the locations or principal places of business of corporations, the extent to which enforcement by either state can be expected to achieve compliance, the relative significance of effects on the United States as compared with those elsewhere, the extent to which there is explicit purpose to harm or affect American commerce, the foreseeability of such effect, and the relative importance to the violations charged of conduct within the United States as compared with conduct abroad.20Id.

But Timberlane did not specify how many factors must be present, and to what extent, for the Act to apply extraterritorially.21See id. Into this array of tests and factors used in Lanham Act disputes comes the Tenth Circuit in Hetronic

The relevant Lanham Act cases preceding Hetronic examined extraterritorial reach as a question of subject matter jurisdiction.22See Jackson & Smith, supra. Meanwhile, the Hetronic court addressed the question whether a U.S. court could exercise personal jurisdiction over its foreign defendants.23See Hetronic, 10 F.4th 1016, at 1027. The court borrowed a three-pronged approach from the First Circuit’s decision in McBee v. Delica Co.24417 F.3d 107 (1st Cir. 2005), holding modified by Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 10 F.4th 1016 (10th Cir. 2021). Hetronic, 10 F.4th at 1036. The Hetronic court espoused the following:

First, courts should determine whether the defendant is a U.S. citizen. Second, when the defendant is not a U.S. citizen, courts should assess whether the defendant’s conduct had a substantial effect on U.S. commerce. Third, only if the plaintiff has satisfied the substantial-effects test, courts should consider whether extraterritorial application of the Lanham Act would create a conflict with trademark rights established under foreign law.25Id.

This test might appear more restrictive than its predecessors, but the Tenth Circuit ruled in favor of the plaintiff, finding that the Lanham Act applied extraterritorially.26Id. at 1024. However, given that the Hetronic defendants manufactured identical counterfeit products under the plaintiff’s brand name, this was not a particularly close case.27Id. at 1024–25. Still, the decision provides some comfort for corporations in the Tenth Circuit that might need to protect their trademarks against infringement abroad.

For United States-based international firms that depend on the Lanham Act’s fundamental protections, this split and its deepening in Hetronic create distinct challenges. Companies look to the factors outlined in these court decisions for guidance in managing commercial relationships outside the United States. But it is increasingly unclear what factors a court will use, and to what extent, in determining the scope of extraterritorial application of the Lanham Act.28See generally Jackson & Smith, supra. This circuit split is especially interesting because the Supreme Court includes three associate justices appointed by the last president. One might expect the relatively inexperienced bench, thought to be especially protective of American industry, to take an aggressive stance and expand the Lanham Act’s applicability in service of U.S. corporations.29See generally McCarthy, supra. We may know soon what the Court will do. Just last month, the Solicitor General filed a brief in support of the Hetronic defendant’s petition for writ of certiorari to the Supreme Court. In her brief, the Solicitor General implores the Supreme Court not to take an overly expansive view of the Lanham Act.30Steve Brachmann, Solicitor General Asks SCOTUS to Grant Petition to Reject Tenth Circuit’s Extraterritorial Application of Lanham Act (2022), https://www.ipwatchdog.com/2022/09/27/solicitor-general-asks-scotus-grant-petition-reject-tenth-circuits-extraterritorial-application-lanham-act/id=151732/ (last visited Oct 7, 2022). 

Nathaniel Pollack

University of Chicago Law School ’23

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