AIPLA Files Brief in Support of None of the Parties in Abitron Austria GmbH v. Hetronic International, Inc.

Arlington, VA. January 1, 2023 - The American Intellectual Property Law Association (AIPLA) filed a merits-stage amicus curiae brief in the U.S. Supreme Court case of Abitron Austria GmbH et al. v. Hetronic Int’l Inc., Case. No. 21-1043. Oklahoma-based Hetronic makes radio remote controls for machinery under the “HETRONIC” brand and contracted with Austria-based Abitron to distribute “HETRONIC” products in Europe. The parties had a falling out, and Hetronic sued for trademark infringement. The Tenth Circuit awarded monetary relief to Hetronic for all of Abitron’s foreign sales, including under a diversion-of-sales theory. 

The amicus brief argues that the Lanham Act rebuts the presumption against extraterritoriality based on its text and prior precedent—including Steele v. Bulova Watch Co., 344 U.S. 280 (1952). Because the Lanham Act rebuts the presumption and has extraterritorial effect, its limits are the limits of congressional power under, e.g., the Foreign Commerce Clause. But just because the Lanham Act might reach Abitron’s infringement does not necessarily mean that monetary relief should be awarded based on all of Abitron’s foreign sales. The amicus brief recommends that the Supreme Court provide additional guidance and remand for further proceedings. 

Oral argument is scheduled for March 1, 2023.