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Abitron Austria GmbH, et al. v. Hetronic International, Inc.
Paid petition · United States Court of Appeals for the Tenth Circuit, No. 20-6057, 20-6100 · judgment August 24, 2021
Before the decision, about 2.7× the 4.1% base rate. The model weighted this up for counsel who has won certiorari before, a circuit split argued in the petition, and a dissent in the court below (flagged in the petition), and down for a business respondent.
Question presented
Petitioners-all foreign nationals-were subjected to a $90 million damages award under the Lanham Act, 15 U.S.C. § 1051 et seq., for allegedly infringing respondent's U.S. trademarks. While trademark rights are distinctly territorial, the accused sales occurred almost entirely abroad. Of approximately $90 million in sales, 97% were purely foreign: They were sales in foreign countries, by foreign sellers, to foreign customers, for use in foreign countries, that never reached the United States or confused U.S. consumers. The Tenth Circuit nonetheless held that the Lanham Act applies extraterritorially to all of petitioners' foreign sales. Recognizing that the circuits have splintered in this area, the Tenth Circuit adopted an expansive view that other courts, including the Fourth Circuit, have concededly rejected. Under the Tenth Circuit's view, the Lanham Act applies extraterritorially whenever foreign defendants' foreign conduct allegedly diverts foreign sales from a U.S. plaintiff. Such an effect, the court held, sufficiently affects U.S. commerce because it prevents foreign revenue from flowing into the U.S. economy. The question presented is: Whether the court of appeals erred in applying the Lanham Act extraterritorially to petitioners' foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.
Counsel of record
For petitioner
Jeffrey Alan Lamken
MoloLamken LLP
For respondent
Matthew S. Hellman
Jenner & Block LLP
Case
Conference history
Distributed for 3 conferences
Amicus briefs
1 cert-stage · 13 merits
(11 supporting pet./neither, 2 respondent)
Argument & decision
Argued March 21, 2023 — Lucas M. Walker · Masha G. Hansford · Matthew S. Hellman. Audio and transcript
Decided June 29, 2023. Opinion by Alito.
Proceedings
- Jul 31 2023Judgment issued.
- Jun 29 2023Judgment VACATED and case REMANDED. Alito, J., delivered the opinion of the Court, in which Thomas, Gorsuch, Kavanaugh, and Jackson, JJ., joined. Jackson, J., filed a concurring opinion. Sotomayor, J., filed an opinion concurring in the judgment, in which Roberts, C. J., and Kagan and Barrett, JJ., joined.
- Mar 21 2023Argued. For petitioners: Lucas M. Walker, Washington, D. C. For United States, as amicus curiae: Masha G. Hansford, Assistant to the Solicitor General, Department of Justice, Washington, D. C. For respondent: Matthew S. Hellman, Washington, D. C.
- Feb 27 2023Motion of the Solicitor General for leave to participate in oral argument as amicus curiae, for divided argument, and for enlargement of time for oral argument GRANTED.
- Feb 27 2023Reply of petitioners Abitron Austria GmbH, et al. filed. (Distributed)
- Feb 03 2023Brief amicus curiae of American Bar Association filed. (Distributed)
- Feb 03 2023Joint appendix filed. (Statement of costs filed). (Distributed)
- Feb 01 2023Brief amicus curiae of Stussy, Inc. filed. (Distributed)
- Jan 31 2023SET FOR ARGUMENT on Tuesday, March 21, 2023.
- Jan 31 2023Motion of the Solicitor General for leave to participate in oral argument as amicus curiae, for divided argument, and for enlargement of time for oral argument filed.
- Jan 27 2023Brief of respondent Hetronic International, Inc. filed. (Distributed)
- Jan 18 2023The deferred joint appendix is to be filed on or before February 3, 2023.
- Jan 17 2023CIRCULATED
- Jan 12 2023Motion of respondent for an extension of time to file respondent's brief on the merits granted and the time is extended to and including January 27, 2023.
- Jan 11 2023Motion of respondent for an extension of time filed.
- Jan 06 2023REMOVED from the argument calendar for Wednesday, March 1, 2023.
- Dec 28 2022Record received from the U.S.D.C. Western District of Oklahoma. Sealed records transmitted electronically. The remaining record is available on PACER.
- Dec 27 2022Brief amici curiae of German Law Professors, et al. filed.
- Dec 27 2022Brief amicus curiae of Professor Guido Westkamp filed.
- Dec 27 2022Brief amicus curiae of Professor Dr. Louis Pahlow filed.
- Dec 27 2022Brief amicus curiae of Professor William S. Dodge in support of neither party filed.
- Dec 27 2022Brief amicus curiae of United States supporting neither party filed.
- Dec 27 2022Brief amicus curiae of International Trademark Association in support of neither party filed.
- Dec 27 2022Brief amicus curiae of Intellectual Property Owners Association in support of neither party filed.
- Dec 27 2022Brief amicus curiae of American Intellectual Property Law Association in support of neither party filed.
- Dec 27 2022Brief amicus curiae of European Commission on Behalf of the European Union in support of neither party filed.
- Dec 27 2022Brief amici curiae of Three Intellectual Property Law Professors in support of neither party filed.
- Dec 21 2022Record received from the U.S.C.A. Tenth Circuit. Sealed portions of Appendix transmitted electronically. The remaining record is available on PACER.
- Dec 21 2022Brief amicus curiae of Federal Circuit Bar Association in support of neither party filed.
- Dec 20 2022Record requested from the U.S.C.A. for the Tenth Circuit.
- Dec 19 2022SET FOR ARGUMENT on Wednesday, March 1, 2023.
- Dec 19 2022Brief of petitioners Abitron Austria GmbH, et al. filed.
- Dec 13 2022The Clerk has approved the deferred method for filing of the joint appendix per Rule 26.4.
- Dec 09 2022Letter requesting permission to file the joint appendix using the deferred method pursuant to Rule 26.4 filed.
- Dec 02 2022Blanket Consent filed by Petitioner, Abitron Austria GmbH, et al.
- Nov 04 2022Petition GRANTED.
- Oct 31 2022DISTRIBUTED for Conference of 11/4/2022.
- Oct 13 2022Supplemental brief of petitioners Abitron Austria GmbH, et al. filed. (Distributed)
- Oct 12 2022DISTRIBUTED for Conference of 10/28/2022.
- Oct 12 2022Supplemental brief of respondent Hetronic International, Inc. filed. (Distributed)
- Sep 23 2022Brief amicus curiae of United States filed.
- May 02 2022The Solicitor General is invited to file a brief in this case expressing the views of the United States.
- Apr 13 2022DISTRIBUTED for Conference of 4/29/2022.
- Apr 12 2022Reply of petitioners Abitron Austria GmbH, et al. filed. (Distributed)
- Apr 01 2022Rule 29.6 Corporate Disclosure Statement filed with respect to Brief in Opposition of Respondent Hetronic International.
- Mar 28 2022Brief of respondent Hetronic International, Inc. in opposition filed.
- Feb 18 2022Motion to extend the time to file a response is granted and the time is extended to and including March 28, 2022.
- Feb 17 2022Motion to extend the time to file a response from February 25, 2022 to March 28, 2022, submitted to The Clerk.
- Jan 21 2022Petition for a writ of certiorari filed. (Response due February 25, 2022)
- Dec 15 2021Application (21A153) granted by Justice Gorsuch extending the time to file until January 21, 2022.
- Dec 09 2021Application (21A153) to extend further the time from December 22, 2021 to January 21, 2022, submitted to Justice Gorsuch.
- Nov 15 2021Application (21A153) granted by Justice Gorsuch extending the time to file until December 22, 2021.
- Nov 11 2021Application (21A153) to extend the time to file a petition for a writ of certiorari from November 22, 2021 to January 21, 2022, submitted to Justice Gorsuch.