Supreme Court To Consider Overseas Reach of US Trademark Law (bloomberg.com) 46
The US Supreme Court will debate the worldwide reach of federal trademark law, agreeing to consider the extent to which a foreign-based company can be forced to pay damages for infringing sales that take place overseas. From a report: The justices said they will review a $90 million jury award won by a Methode Electronics subsidiary in a lawsuit that accused an Austrian company and three of its units of selling copycat versions of proprietary remote controls used in heavy machinery.
The Austrian company, ABI Holding, contends that $87 million of that sum covered devices that were sold overseas and weren't intended to be used in the US. The company says a federal appeals court ruling upholding the award threatens the business models of global retailers including Amazon and EBay. "That sweeping theory allows US courts to assess damages on a foreign defendant's worldwide sales any time a U.S. plaintiff claims lost sales abroad," ABI argued in court papers.
The Austrian company, ABI Holding, contends that $87 million of that sum covered devices that were sold overseas and weren't intended to be used in the US. The company says a federal appeals court ruling upholding the award threatens the business models of global retailers including Amazon and EBay. "That sweeping theory allows US courts to assess damages on a foreign defendant's worldwide sales any time a U.S. plaintiff claims lost sales abroad," ABI argued in court papers.
You can ask (Score:3)
Just don't feel sad if you get shown the middle finger. US laws are for companies that have a base or business in the USA. Sure for a multi-national company that's part of the risk of doing business, but for a simple international company, if you have no formal business name registered or assets in the USA then you are free to flip them the bird.
Re: You can ask (Score:4, Insightful)
I wouldn't put it past the US to bring charges against company directors then fire off an extradition request.
Naturally of course if another country tried to do the same thing there's be wailing and gnashing of teeth from washington about anti competitive practices etc etc.
Re: You can ask (Score:4, Informative)
I wouldn't put it past the US to bring charges against company directors then fire off an extradition request.
You use that word way too easily. To successfully extradite someone you need to prove both that an actual crime has taken place, that crime is actually serious (i.e. expected serious jail time), and the crime is law in both countries. Breaching a trademark law in a country in which you don't operate in does not remotely qualify, in fact one could argue it fails all three criteria.
a) standing of US laws internationally is not certain,
b) the fact trademark infringement corporately basically never is a jailable offence
c) Austria is unlikely consider it's trademark laws to work extraterritorially regardless of what the supreme court says.
Oh bonus points if the person is an Austria citizen. The USA can stamp and throw tantrums as much as it wants, Austria like Germany doesn't extradite nationals outside of the EU.
Re: You can ask (Score:5, Informative)
Meng Wanzhou.
Re: (Score:3)
Meng Wanzhou
Was extradited under a (dubious) fraud claim involving a USA based company from a country where fraud is also illegal, which is a jailable offence, and from a country which offered her no national protections where she wasn't a citizen.
Oh and I can't stress this enough: She was never extradited to the USA, so ... thanks for making my point for me I guess.
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She wasn't extradited because the US department of justice dropped the case, totally coincidentally after a change of the US executive.
So the US demonstrated that it is quite willing to attempt extradition of non-US citizens for allegedly breaking US laws on non-US soil, which certainly does not make your point that "yeah, they totally wouldn't do that."
Re: You can ask (Score:4, Informative)
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Was extradited under a claim of commercial scale copyright infringement which is illegal in both the USA and NZ not some grey area, is a serious jailable offence in both countries, and he resided in a country which offered him no national protections.
The fact that legitimate extradition claims exist (such as this one) isn't a counter example to the fact that it is actually impossible to apply extradition to the case we're discussing, a case mind you where not even one country has actually considered it a cr
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You can't extradite someone for a civil proceeding, and I doubt other countries would go along with any sort of criminal charges.
Just imagine if China tried to apply its laws in the United States... that's how the rest of the world feels about US over-reach.
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Just imagine if China tried to apply its laws in the United States... that's how the rest of the world feels about US over-reach.
Yet, the EUSSR is freely allowed to do so by the /. libtards, and every time I am mentioning this I am downvoted as -1, Troll? Fuck GDPR, and Fuck The EU.
Which, of course, leads me to believe that this particular case should be won by the foreign entity, as U.S. copyright laws should not be enforced on an Austrian company. And, I'm pretty sure that the Supreme Court will rule as such.
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The article doesn't give any insight into what the case law is like here, so it's impossible to have any idea what the chances are here. What is the recourse US companies have when foreign companies break our patents? I assume there is some protection, although not all countries do a good job of complying with the patents and trademarks of foreign nations. I assume that is handled with treaties and other agreements between countries.
Based on the US administration saying, it sounds like US courts would only
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Just based on the summary, I'm going to guess some grey-market stuff was sold in a foreign country and then imported into the US, at which point US laws were broken, but in a handwavy kind of way that caused the law to claim the seller was at fault rather than the importer. But that *is* a wild assed guess.
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I assume that is handled with treaties and other agreements between countries.
No. You you register Trademark and Patent in each country you want to sell the product in; just like you have to register your company and pay the fee with the local government of each jurisdiction in order to conduct business in that jurisdiction.
The Patent Co-Operation Treaty DOES provide an International Patent Application process which is a way of applying for patent simultaneously in multiple countries with one application.
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So you think for example that if ACME has its trade mark registered here in the USA, that a foreign business should for example be able to for example market their ACME brand purchasing ads in the local paper on the local TV and radio stations etc? You think they should be able to market products with a confusing similar logo at the Walmart?
That stuff is a beyond the scope of this case - we have treaties governing that but your absolutist position seems to imply you think those examples would be perfectly a
How is a remote trademarked? (Score:2)
I thought trademarks are for commercial marks... Unless they were making fakes/knockoffs with their logo... how?
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I thought trademarks are for commercial marks... Unless they were making fakes/knockoffs with their logo... how?
Sounds like they were, then. I wouldn't know, because I'm sure as fuck not enabling scripts from Bloomberg. That would be fucking stupid, even more stupid than posting a Bloomberg link to Slashdot.
Re:How is a remote trademarked? (Score:5, Informative)
Nonblocked link https://news.bloomberglaw.com/... [bloomberglaw.com]
ABI were totally scammy and pretending to be them which does open a whole bunch of liability/service questions...
Re:How is a remote trademarked? (Score:5, Informative)
It's more bizarre and complex than that. The "infringer" actually owned the R&D on the products. And the trademark is for the name of their own business that has existed longer.
Here is a petition document from the case but I'll try to summarize as I'm trying to understand it:
https://www.supremecourt.gov/d... [supremecourt.gov]
Hetronic Steuersysteme is the original German company that specialized in radio remote controls. Its founder moved to the US and created a company called
Hetronic International, Inc. Later on Hetronnic International was sold to Methode Electronics and Hetronic Steuersysteme was sold to Hetronic Germany (later merged under ABI).
It was actually Hetronic Germany that owned the IP from a research agreement between the two companies. They sought to invalidate Hetronics International's EU trademark due to the fact that they had been using that name for their own products for decades.
I had to give up at that point. It's too confusing. But they both sold similar products in different markets and the US company owned both US and EU trademarks for the product names. And it's actually the defendant that owns the actual technology IP, so calling it "counterfeit" is a bit of a stretch.
Re:How is a remote trademarked? (Score:4, Insightful)
Sounds a little bit like Budweiser US suing the original Budweiser brewing company in the Czech Republic.
https://en.wikipedia.org/wiki/... [wikipedia.org]
The US ITA says they do not apply there (Score:4, Informative)
In this government document [stopfakes.gov] the ITA claims that US trademarks don't apply in foreign countries, so why is this even an argument? Why does the left hand not know the right hand is jerking off?
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In this government document [stopfakes.gov] the ITA claims that US trademarks don't apply in foreign countries, so why is this even an argument? Why does the left hand not know the right hand is jerking off?
TFA implies it's more than just copying a trademark - it states ABI had licensing agreement with the trademark holder and used their marks to sell counterfeit items. It makes sense trademarks need to be registered in teh country you plan to use them, otherwise has would ensue.
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TFA implies it's more than just copying a trademark - it states ABI had licensing agreement with the trademark holder and used their marks to sell counterfeit items.
OK, but is that really about trademarks, or breach of contract? It would seem more like the latter, in that case.
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TFA is paywalled but I think what has happened here is that the Australian company does have an operation in the US, but that subsidiary only sells products that don't infringe US trademarks. The infringing remotes are only sold outside the US, but of course people import them for the US market.
The US company sued on the basis that even though this Australian company doesn't sell the products in the US, it also didn't somehow magically stop anyone from importing them either. US juries always tend to favour
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The US based subsidiary is using fake letterhead and fake authentication docs to sell counterfeit products overseas.
OK, but there's still no international trademark protection on trademarks only registered in the US. The actionable crime in that case is fraud, not trademark infringement.
Is Bloomberg paying to have these links posted? They are all shit.
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TFA is paywalled but I think what has happened here is that the Australian company does have an operation in the US, but that subsidiary only sells products that don't infringe US trademarks.
Just so we're clear:
Australia: https://www.youtube.com/watch?... [youtube.com]
Austria: https://www.youtube.com/watch?... [youtube.com]
Re: (Score:2)
Well, that trips up a lot of people [simpsonswiki.com]
What possibly could go wrong? (Score:2)
To give the megacorporations even more power like that?
Re:What possibly could go wrong? (Score:5, Insightful)
Isn't trademark law ultimately about protecting the consumer?
Shouldn't I be able to trust that products I buy actually come from the companies whose names and marks they use?
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All the rich European countries, including Austria, have trademark protections in place and they are enforced, providing you can pay the legal fees..
I guess the key question is whether Methode registered their trademarks and designs in Austria. If so they should be pursuing it through the Austrian courts. If not they should be looking for a few new board members since this lot are clearly negligent.
Either way, I don't see why this hasn't been thrown out by the lower courts.
Seems reasonable to conclude... (Score:3)
If this Austrian company did no business in the United States, then it did no damage to the United States, therefore it should not be liable for damages under US law. The company suing for damages should go to Austria and work with Austria's legal system to pursue damages, if they have legal means to do so.
The company says a federal appeals court ruling upholding the award threatens the business models of global retailers including Amazon and EBay.
Now here are two examples of US companies doing sales of counterfeit products in the United States. Of course the book should be thrown at them.
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First they need to get a judgement under US law that says they are entitled to damages, then they take that judgment to the Austrian court and ask for enforcement according to treaty. The Austrian court will have to decide if the US court ruling meets the terms of the applicable treaty(s) and can then enforce payment of damages and/or force them to cease producing the infringing product, according to Austrian laws.
Since the Austrian company has a US subsidiary, the financial judgement could be enforced dir
Say what? (Score:5, Insightful)
the extent to which a foreign-based company can be forced to pay damages for infringing sales that take place overseas
Not? Seriously, screw the US. An overseas company doing business overseas is not subject to US law.
Obviously there can be agreements between countries. However, in the absence of such, the US has no jurisdiction. Bloody arrogance.
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From other comments the infringing company does no business in the US, but it's a subsidiary of another company that does, so the owner is being sued for what the subsidiary did.
This isn't really *that* unreasonable, but it's not clear to me exactly which law was broken where. It seems as if what the subsidiary did was legal where it did it, but not in the US.
Treaties (Score:2)
Depends on the treaties.
USA asserting global jurisdiction? (Score:2)
This would be a bad precedent. Might even lead to US troops invading a random foreign country and toppling its regime for no apparent legitimate reason.
Oh, wait.
Already the case in Canada, for similar goods (Score:2)
See, for example https://cassels.com/insights/s... [cassels.com]
A counterfeiter fled Canada, a Canadian court ordered Google to stop linking to the counterfeit products. Google asked a US court to block the court order worldwide, and was laughed at. Google can only show links to the counterfeit product in the US, where the company is protected by US law, but nowhere else in the world.
Here's the deal (Score:3)
Apparently people are having issues with TFA so here's the deal:
The case is Abitron Austria GmbH v. Hetronic International, Inc., Case No.: 21-1043. If you'd like to see the Supreme Court docket, with what the parties have filed, it is here [supremecourt.gov]. (Hopefully this is a stable link).
This is an appeal of a 10th Circuit (the case originated in Oklahoma) case styled Hetronic Int'l v. Hetronic Ger. Gmbh, 10 F.4th 1016 (10th Cir. 2021), you can read the opinion here [casetext.com].
The gist is that Hetronic International is a US company that makes radio remote controls for heavy-duty construction equipment. The remotes had trademarked names such as NOVA and ERGO and a color scheme that differentiated it from its competitors. (Under US law at least, colors can be trademarked under the right circumstances -- think of Owens Corning's distinctively pink fiberglass insulation, or the robin's egg blue used by Tiffany's packaging)
Hetronic Germany / Abitron Austria (the "Germans") were their official European distributor. Their agreement was that they would buy parts from Hetronic but do assembly on their own. Eventually the Germans decided that they would just make and sell identical products in Europe using the same names, without permission, payment, etc. and reverse engineered the hardware so as to use their own parts suppliers. They made a lot of money doing that.
While the Oklahoma trial court didn't do things exactly right, according to the 10th Circuit appellate court, they mostly did. The major questions:
There were some other things too, but they're not so interesting.
Here's how it went down:
Personal jurisdiction
First, the Germans had had contracts with Hetronic originally, which included language whereby they specifically agreed to be under US jurisdiction in a dispute. So that's easy.
Also, under US law a big part of federal personal jurisdiction is whether a defendant has had at least a minimum level of contact with the jurisdiction. Basically, if you come here, or do business here, or take advantage of the benefit of our laws, you're also obligated to respect them. Here, the Germans had been trying to get into the US market to sell their products here and compete with Hetronic in the US. They had executives coming over, hired consultants, filed paperwork to get approvals from the FCC and for their own trademark filings, etc. Ballsy stuff.
Subject matter jurisdiction
Actually not relevant. Subject matter jurisdiction is whether a court can hear a type of case, generally. Whether the case involves a US law applied abroad isn't a preliminary, jurisdictional issue, it's only relevant to the merits of the case itself. The Oklahoma court could hear trademark cases, so it had subject matter jurisdiction.
US trademark law applying abroad
The trial court didn't do this exactly right, and got partially reversed. Basically it seems to have left this mostly to the jury.
What the 10th Circuit decided was that there are several different sorts of tests that are used to see whether US trademark law applies to foreign activity. The easy one that everyone agrees on is that Americans abroad are still required to abide by US laws with extraterritorial effect. So if you're an American, don't go making counterfeit stuff that breaks US trademark law, wherever you are.
It's harder if its foreigners acting in foreign countries. But even then the Court decided that American trademark law is implicated if that activity subst