319:. In their complaint, International alleged that Abitron's sale of radio controls violated International's U.S. registered trademarks, unregistered trademarks, and trade dress. Of Abitron's roughly $ 90 million "worldwide" sales, about $ 88 million (97%) were "purely foreign" – that is, sales of goods in foreign countries by foreign vendors to foreign buyers to be used in foreign countries. International also accused Abitron of $ 2 million in sales of products that "could have ended up in" the U.S. For example, this included sales to foreign buyers who used the radio controls in cranes that may have later reached the United States. Lastly, International accused Abitron of roughly $ 240 thousand of sales to U.S. customers, though the majority of those sales were to either International or one of its affiliates.
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290:, after which reorganized as respondent, Hedtronic International, Inc. This sale did not include the German company Hedtronic Steuersysteme, which had since been renamed Hedtronic Deutschland. Heckl sold Hedtronic Deutschland to Hedtronic Germany in 2010. Hetronic Germany was owned by Albert Fuchs and HydronicSteuersysteme GmbH, an Austrian company later renamed Hetronic Central Eastern Europe (HCEE).
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first step of the test, the court considered whether the defendants were U.S. citizens. If so, then the Lanham Act applies extrateritorially without further inquiry. If not, then the court proceeds to the second step of the test, which asks whether " the defendant’s conduct had a substantial effect on U.S. commerce.”
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Hetronic
Germany and HCEE later reorganized as petitioners, Abitron Germany and Abitron Austria. Petitioners informed customers of the reorganization and new name – and their dissociation with other “Hetronic locations” like respondent – in letters sent on stationary containing “Hetronic Germany” and
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In the 1980s, German engineer Max Heckl founded
Hetronic Steuersysteme GmbH. (HS), a German company. In 2000, Heckl would go on to form Hedtronic International, Inc. (HII), a U.S. company. HS and HII entered into an agreement that provided, among other things, that HS (and its two co-developers) were
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implied some extraterritorial applications of the Lanham Act, but that many relevant details were still unclear. Other Courts of
Appeals had developed tests for determining when the Act should apply extraterritorially, but instead developed its own two-step test for the purposes of this case. At the
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A jury awarded
International roughly $ 90 million for violations of the Lanham Act, an amount equal to what International asserted Abitron's profits amounted to. This was despite the fact that a vast majority of these profits occurred outside the United States, and a great majority of the involved
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Hetronic
Germany and Hydronic-Steuersysteme licensed the “Hetronic” name from respondent (the reorganized Hectronic International, Inc.) and acted as its distributors. By this point, Fuchs was still unaware of the research and development agreement stating that Hetronic Steuersysteme (and its
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At step one, the court concluded that petitioners were not U.S. citizens. At step two, however, the court concluded that petitioner's acts had a “substantial effect on U.S. commerce”, and that the Lanham Act should thus apply extraterritorially. Moreover, it held that the Act applied
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Understanding themselves to be in possession of the relevant trademarks, Abitron began competing against respondent (International). Abitron considered vying for the U.S. market, but the vast majority of
Abitron's business remained in Germany and Austria.
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391:. Oral arguments were held on March 21, 2023. On June 29, 2023, the Supreme Court vacated the Tenth Circuit's judgment and remanded for further proceedings in a unanimous decision that fractured 5–4 on the reasoning.
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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.
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Applying the presumption against extraterritoriality, §1114(1)(a) and §1125(a)(1) of the Lanham Act are not extraterritorial and extend only to claims where the infringing use in commerce is domestic.
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Germany) owned the intellectual property rights for the distributed products, as distinct from the "Hedtronic" trademark. Respondent later terminated this agreement.
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Abitron petitioned the Supreme Court to hear its case on January 21, 2022. On November 4, 2022, the Court granted
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In 2006, HS sold the "Hetronic" mark to HII. In 2008, Heckl would sell HII to the U.S. electronics company
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List of United States Supreme Court cases by the Roberts Court
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Hetronic International, Inc. v. Hetronic Germany GmbH, et al.
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Hetronic International, Inc. v. Hetronic Germany GmbH, et al.
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Abitron Austria GmbH, et al. v. Hetronic International, Inc.
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Sotomayor (in judgment), joined by Roberts, Kagan, Barrett
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Abitron Austria GmbH v. Hetronic International, Inc.
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Abitron Austria GmbH v. Hetronic International, Inc.
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