This morning, the Supreme Court called for the views of the Solicitor General on the pending petition for writ of certiorari in Abitron Austria GmbH v. Hetronic International, Inc. In Abitron, the Court of Appeals for the Tenth Circuit allowed the plaintiff trademark owner to recover damages not only for the defendants’ sales of infringing products in the U.S., but also for the defendants’ infringing sales outside the U.S. to non-U.S. customers. Even those non-U.S. sales, the Tenth Circuit reasoned, “diverted tens of millions of dollars” of revenue “that otherwise would have ultimately flowed into the United States.”[1] The Tenth Circuit further rejected the defendants’ argument, based on Fourth Circuit law, “that the diversion-of-sales theory is inapplicable to foreign defendants.”[2]

Briefing on the defendants’ Supreme Court petition recently closed. In their petition, the defendants claim to identify a circuit split between at least the Tenth and Fourth Circuits. And they criticize the Tenth Circuit for “justifying extraterritorial application of the Lanham Act” based on the defendants’ “alleged[] diver[sion] [of] ‘foreign sales’ away from a U.S. plaintiff.”[3] In opposition, the plaintiff denies the existence of a circuit split because “[a]ll courts ask the same fundamental question” about whether “the defendant’s foreign infringing conduct affect[ed] U.S. commerce.”[4] The plaintiff also contends that “[o]nce [a] substantial domestic effect from [the defendants’] foreign infringement was established, [the defendants] were responsible for all of their foreign infringement.”[5] In their reply, the defendants deny that any court of appeals has held “that some tiny portion of sales reaching the U.S. can be a springboard for applying U.S. trademark law worldwide to purely foreign sales.”[6]

Now we await the Solicitor General’s brief. There is no deadline for the Solicitor General to submit a brief, although the brief will likely be filed within months.

[1] Hetronic Int’l, Inc. v. Hetronic Germany GmbH, 10 F.4th 1016, 1046 (10th Cir. 2021).

[2] Id. at 1045.

[3] Abitron Austria GmbH et al. v. Hetronic Int’l, No. 21-1043, Petition for Writ of Certiorari, at 14–15 (Jan. 21, 2022) (emphasis in original).

[4] Id., Brief in Opposition to Petition for Writ of Certiorari, at 21 (Mar. 28, 2022).

[5] Id. at 31.

[6] Id., Reply for Petitioners, at 5 (Apr. 12, 2022).