Brief of Professor William S. Dodge as Amicus Curiae in Support of Neither Party, Abitron Austria GmbH v. Hetronic International Inc.

Abstract

This amicus brief, submitted to the U.S. Supreme Court in Abitron Austria GmbH v. Hetronic International, Inc., argues that the Court should apply its current framework for the presumption against extraterritoriality to determine the geographic scope of the Lanham (Trademark) Act, even though the Act was passed when a different version of the presumption prevailed. Under the current framework, the Lanham Act does not apply extraterritorially. Nevertheless, because the domestic “focus” of the Act is consumer confusion, the Act can apply to fact patterns that involve use of a trademark abroad that is likely to result in consumer confusion in the United States.

The brief further argues that the Supreme Court should clarify that a statute’s domestic “focus” need not be conduct, and, when it is not, no additional requirement exists that the defendant’s conduct occur here. Language in RJR Nabisco suggesting that application of a provision may be considered domestic only if “conduct relevant to the statute’s focus occurred in the United States” is dictum, unsupported by the Court’s cases, and a potential source of confusion. The brief suggests that the Court eliminate the “conduct relevant to” language from its statement of the presumption against extraterritoriality to avoid potential frustration of Congress’s intent.