73 Am. U. L. Rev. 989 (2024).

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Abstract

The Supreme Court afforded the Lanham Act extraterritorial reach over seventy years ago in Steele v. Bulova, but its recent extraterritoriality jurisprudence called that decision into question. This Article explains the history of trademark extraterritoriality and the splits that emerged among the circuit courts of appeals. It then canvases all of the Supreme Court’s recent decisions on the presumption against extraterritoriality and their effort to reinvigorate and standardize the law in that regard.

We then provide a detailed exploration of the Supreme Court’s decision in Abitron Austria GmbH v. Hetronic Internnational, Inc. Next, we critique the decision and explore its implications not only for trademark law but also beyond. The Article demonstrates that Steele is effectively overruled, even if the Supreme Court failed to state as such. That means that circuit court case law developed over decades has been sent to the dustbin with nary a consideration of stare decisis. As a result, the previous tests that included considerations of the effects on U.S. commerce and the citizenship of the accused infringer are gone, left with a hopefully ambiguous “use in commerce” test. Additionally, under Steele, courts formally considered potential conflicts with foreign law when deciding whether to apply the Lanham Act extraterritorially. The role of comity is now uncertain, which is unfortunate in the context of intellectual property law. Consideration of foreign law would be useful in creating soft harmonization with foreign law while also surfacing potential disagreements among countries that could become the source of future negotiations.

The Supreme Court also missed an opportunity to elaborate on the availability of damages for activities outside of the United States in the case of domestic intellectual property infringement. However, the case should nudge courts to adopt a narrow perspective on the availability of those damages.

Finally, the review of the Supreme Court’s decisions on extraterritoriality demonstrates that its effort to formalize the test has been mixed at best. At times, the Court uses the presumption as it had done before its recent engagement: as a soft, secondary statutory canon. Additionally, the justices sharply disagree on step two of its extraterritoriality methodology, leaving lower courts in a state of uncertainty moving forward.

* Provost’s Professor and Robert B. Yegge Endowed Distinguished Professor in Law, University of Denver Sturm College of Law.

** J.D. Candidate, Emory University School of Law, Class of 2024.