The Solicitor General has advised SCOTUS to grant cert in Abitron Austria v Hetronic (brief below). It thinks the 10th Circuit got it wrong under Steele v Bulova. It thinks this is a good vehicle for determining the geographic scope of the Lanham Act.

Petitioner Abitron’s introduction in its petition (HT ScotusBlog):

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.

The SG has restated the question as:

Whether, under Sections 32(1)(a) and 43(a)(1)(A) of the Lanham Act, the owner of a U.S.-registered trademark may recover damages for uses of that trademark that occurred outside the United States and that were not likely to cause consumer confusion in the United States.

There have been studies over the years suggesting that SCOTUS agrees with the SG up to 80% of the time, however those studies are dated. More recent studies have much smaller data sets, enough for a rash of high-profile SCOTUS cases to skew the result. So the odds of cert being granted have risen considerably but I won’t guess as to how much.

Hetornics – SG brief recommending cert