Opinion · Court of Appeals for the Tenth Circuit
Hetronic International v. Hetronic Germany GmbH
Hetronic Int’l v. Hetronic Ger. GmbH, 99 F.4th 1150 (10th Cir. 2024)
- Type
- Opinion
- Court
- Court of Appeals for the Tenth Circuit
- Jurisdiction
- Federal
- Date
- 2024-04-23
- Topic
- bankruptcy
How later courts describe this case
- “The Lanham Act regulates and protects the use of federally registered trademarks in U.S. commerce.”
- “[L]ikelihood of confusion was already an essential element for any actionable Lanham Act trademark-infringement claim, and the multi-factor test for likelihood of confusion [in the Tenth Circuit] remains unchanged [after Abitron].”
Citator
UpLaw has not yet analyzed Hetronic International v. Hetronic Germany GmbH. The absence of a flag is not a finding that it is good law.
- Cited by
- 6 opinions
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 1
FILED
United States Court of Appeals
PUBLISH Tenth Circuit
UNITED STATES COURT OF APPEALS April 23, 2024
Christopher M. Wolpert
FOR THE TENTH CIRCUIT Clerk of Court
_________________________________
HETRONIC INTERNATIONAL,
INC.,
Plaintiff – Appellee,
v. Nos. 20-6057 & 20-6100
HETRONIC GERMANY GMBH;
HYDRONIC-STEUERSYSTEME
GMBH; ABI HOLDING GMBH;
ABITRON GERMANY GMBH;
ABITRON AUSTRIA GMBH;
ALBERT FUCHS,
Defendants – Appellants.
________________________________
On Remand from the Supreme Court
of the United States
(S.C. No. 21-1043)
(D.C. No. 5:14-CV-00650-F)
___________________________________
Lucas M. Walker (Anton J. Rupert and Geren T. Steiner, Rupert & Steiner
PLLC, Oklahoma City, Oklahoma, on the supplemental briefs), of MoloLamken
LLP, Washington, D.C., for Defendants - Appellants.
Debbie L. Berman (Wade A. Thomson, Jenner & Block LLP, Chicago, Illinois,
Gianni P. Servodidio, Rémi J.D. Jaffré, Jenner & Block LLP, New York, New
York, Matthew S. Hellman, Jenner & Block LLP, Washington, D.C., Samuel R.
Fulkerson, Ogletree, Deakins, Nash, Smoak & Stewart P.C., Oklahoma City,
Oklahoma, with her on the supplemental brief), of Jenner & Block LLP,
Chicago, Illinois, for Plaintiff - Appellee.
_________________________________
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 2
Before PHILLIPS, MURPHY, and McHUGH, Circuit Judges.
_________________________________
PHILLIPS, Circuit Judge.
_________________________________
This case returns to us on remand from the Supreme Court for further
proceedings in accordance with Abitron Austria GmbH v. Hetronic
International, Inc., 600 U.S. 412
(2023). The underlying dispute involves the alleged infringement by Abitron, a foreign company, of U.S.-registered trademarks owned by Hetronic, an American company. Abitron sold Hetronic- branded products without permission to customers around the world, including in the United States; Hetronic alleged that these sales violated its trademark- ownership rights under the Lanham Act,15 U.S.C. §§ 1114
(1)(a), 1125(a)(1).
Deciding this appeal in 2021, we held that Lanham Act penalties
extended to Abitron’s foreign sales to foreign customers because the foreign
sales substantially affected U.S. commerce. Hetronic Int’l, Inc. v. Hetronic
Ger. GmbH, 10 F.4th 1016
, 1046 (10th Cir. 2021), vacated,600 U.S. 412
(2023). Abitron petitioned the Supreme Court for certiorari, asking the Court to decide whether the Lanham Act may indeed apply to “purely foreign sales that never reached the United States or confused U.S. customers.” Petition for Writ of Certiorari, Abitron Austria GmbH v. Hetronic Int’l, Inc.,600 U.S. 412
(No. 21-1043). The Supreme Court granted Abitron’s petition. Abitron Austria GmbH v. Hetronic Int’l, Inc.,143 S. Ct. 398
(2022) (mem.). Considering the
2
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 3
extraterritoriality of the Lanham Act for the first time since the 1950s, 1 the
Court assessed whether the Lanham Act’s trademark-infringement provisions
apply to Abitron’s foreign infringing conduct. Abitron, 600 U.S. at 415. The
Court held that the provisions are not extraterritorial, but that they remain in
force when a foreign entity uses an infringing mark in domestic commerce. Id.
at 423, 428. The Court then vacated our decision and remanded the case. Id. at
428.
We requested and received supplemental briefing from the parties on the
impact of this decision and reheard the case for oral argument. Having revisited
the Lanham Act issue in light of the Supreme Court’s opinion and having
considered the parties’ supplemental arguments, we issue this revised opinion
and remand the case to the district court for further proceedings as prescribed
below.
BACKGROUND
We have previously spelled out the facts and procedural history, see
Hetronic, 10 F.4th at 1023–27, so we discuss the background briefly, focusing
on the facts most relevant to the Lanham Act claims.
Hetronic International, Inc. (Hetronic) manufactures radio remote
controls used to operate large industrial equipment. The remotes are
1
See Steele v. Bulova Watch Co., 344 U.S. 280, 281, 285
(1952)
(determining the Lanham Act’s governance over infringing conduct committed
by an American citizen operating a counterfeit wristwatch business in Mexico).
3
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 4
identifiable by the “HETRONIC®” mark, Appellants’ App. vol. 3 at 679,
product marks specific to Hetronic’s remote models, like “NOVA” and
“ERGO,” id.,
and by the remotes’ trade dress—a “distinctive black-and-yellow
color scheme,” Hetronic, 10 F.4th at 1024. 2 Hetronic executed licensing and
distribution agreements for the remotes with two European companies,
collectively Abitron. 3
Sometime during Hetronic’s dealings with Abitron, Abitron employees
surmised that Abitron owned some of Hetronic’s intellectual property (IP)
under a years-old research-and-development agreement. Asserting that this IP
ownership empowered Abitron to manufacture its own version of Hetronic’s
products, Abitron began assembling remotes that mimicked Hetronic models.
Abitron built these Hetronic-branded remotes with parts that it sourced from
unauthorized suppliers, in violation of its agreements with Hetronic. Abitron
sold these copycat remotes to foreign and American customers. Hetronic
terminated its licensing and distribution agreements with Abitron, but Abitron
continued to sell Hetronic-branded remotes without Hetronic’s authorization.
2
Collectively, we refer to these marks and trade dress as the “Hetronic
trademarks.”
3
Albert Fuchs owned Hydronic Steuersysteme GmbH (an Austrian
company) and Hetronic Germany GmbH (a German company), which were later
bought by Abitron Germany GmbH and Abitron Austria GmbH through Fuchs’s
holding company, ABI Holding GmbH. Fuchs and the corporate entities
associated with him are the named defendant-appellants in this litigation, to
whom we refer collectively as “Abitron.”
4
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 5
Radio-remote-control sales is a worldwide business; a product
manufactured in Germany is often destined for another country, like the United
States. Given the global nature of this business, Abitron typically sold its
remotes through middlemen—original equipment manufacturers (OEMs)—
rather than directly to end-users. It worked like this: Abitron would sell the
remotes to an OEM; the OEM would install the remotes into its own machinery
(like cranes); and then the OEM would sell that machinery to end-users (like
construction companies) in other countries, including the United States.
Knowing that many of its remotes would eventually be exported into the United
States through the OEMs, Abitron secured the required Federal
Communications Commission (FCC) certifications and hired a U.S.-based
distributor to service Abitron’s U.S. products and to market them at U.S.
tradeshows.
Based on this conduct, Hetronic sued Abitron in Oklahoma federal
district court for breach of contract, later adding claims for federal trademark
infringement under the Lanham Act, along with several other state-law tort
claims. 4 The district court held an eleven-day jury trial, after which the jury
4
Hetronic’s second amended complaint alleged breach of contract,
federal trademark infringement under the Lanham Act, 15 U.S.C. §§ 1114
(1)(a), 1125(a)(1)(A), federal unfair competition under
§ 1125(a)(1)(A), “reverse palming off” under § 1125(a)(1)(A), federal
trademark counterfeiting and infringement under § 1114, federal contributory
trademark infringement (against Fuchs, only), as well as unfair competition,
(footnote continued)
5
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 6
found for Hetronic on all its claims. The jury found that Abitron had willfully
infringed the Hetronic trademarks under the Lanham Act and awarded Hetronic
about $96 million in damages related to those violations, along with
compensatory and punitive damages for the state-law claims. The district court
then ordered a permanent injunction against Abitron, enjoining it from any
further infringing uses of Hetronic trademarks “within and outside of the
United States.” Appellants’ App. vol. 10 at 2521.
Abitron appealed the judgment. On appeal, Abitron challenged the
worldwide Lanham Act injunction, the disgorgement based on Abitron’s
foreign sales, some of the district court’s evidentiary rulings at trial, the district
court’s rejection of Abitron’s IP-ownership defense at summary judgment, and
the court’s exercise of personal jurisdiction over the foreign defendants. We
affirmed and reversed in part. 5
Relevant here, we applied Supreme Court and circuit precedent in
deciding whether the Lanham Act’s trademark-infringement provisions reached
Abitron’s foreign sales to foreign customers. See Hetronic, 10 F.4th at
tortious interference with contract, aiding and abetting breach of fiduciary duty,
civil conspiracy, and conversion under Oklahoma state law.
5
We affirmed the proper exercise of personal jurisdiction over all foreign
defendants, the Lanham Act’s application to Abitron’s foreign sales, the district
court’s summary-judgment ruling denying defendants’ IP-ownership defense,
and the district court’s evidentiary rulings; but we narrowed the scope of the
worldwide injunction to “the countries in which Hetronic currently markets or
sells its products.” Hetronic, 10 F.4th at 1047. We reversed and remanded on
that basis.
6
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 7
1033–38, 1045 (citing RJR Nabisco, Inc. v. Eur. Cmty., 579 U.S. 325
, 338 (2016) (applying the Court’s extraterritoriality framework to the Racketeer Influenced and Corrupt Organizations Act (RICO) Act); Morrison v. Nat’l Austl. Bank Ltd.,561 U.S. 247
, 255–65 (2010) (assessing the extraterritorial reach of the Securities Exchange Act); Steele v. Bulova Watch Co.,344 U.S. 280
, 281–87 (1952) (deciding whether the Lanham Act covered trademark infringement committed primarily in Mexico, though some facilitating steps were taken in the United States); Vanity Fair Mills, Inc. v. T. Eaton Co.,234 F.2d 633, 642
(2d Cir. 1956) (creating a tripartite test to determine the extraterritoriality of the Lanham Act); Timberlane Lumber Co. v. Bank of Am. Nat’l Tr. & Savs. Ass’n,549 F.2d 597, 613
(9th Cir. 1976) (adopting its own extraterritoriality test); McBee v. Delica Co.,417 F.3d 107, 111
, 118–21 (1st Cir. 2005) (same)). So as a matter of first impression for this court, we fashioned a test to determine the Lanham Act’s extraterritoriality.Id.
at 1037–38. Our test amalgamated the factors that we found most persuasive among those espoused by our fellow circuit courts, which led us to adopt three factors: (1) whether the defendant is an American citizen, (2) whether the defendant’s conduct has substantially affected U.S. commerce, and (3) whether the Act’s extraterritorial application would conflict with the defendant’s established trademark rights in another country.Id.
at 1036–38. Because none
of the defendant-appellants are American citizens and none argued that any
other foreign-trademark rights would conflict with the Lanham Act’s
7
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 8
application here, the substantial-effect prong remained as the singular
touchstone for our analysis.
We evaluated the substantial effect of Abitron’s sales on U.S. commerce,
as divided into three groups: direct sales to U.S. customers, foreign sales of
products that “ended up” in the United States, and foreign sales that diverted
customers away from Hetronic. Id.
at 1042–43. For the first group (direct U.S.
sales), we easily concluded that the Lanham Act governed because these sales
invoked a purely domestic application of the Act. Id. at 1043 (“[T]he Lanham
Act would encompass [Abitron’s] direct sales into the United States even if we
concluded that the Act didn’t apply extraterritorially . . . .”). For the second
group (products sold abroad that ended up in the United States), we determined
that “the effects of [Abitron’s] foreign conduct [were] sufficiently substantial,”
id. at 1044, to raise an actionable Lanham Act claim because Hetronic had
submitted evidence at trial “that U.S. consumers were confused about
Hetronic’s product’s relationship to the Abitron companies,” id. at 1043, due to
its foreign sales. And for the third group (diverted foreign sales), we observed
that “[w]hen diverted sales that would have otherwise flowed to a U.S.
company instead inure to a foreign defendant, the loss to U.S. commerce is
clear,” id. at 1045, and we agreed that ample evidence buoyed Hetronic’s claim
that Abitron’s “foreign infringing conduct had a substantial effect on U.S.
commerce,” id. at 1046. See id. (upholding the diversion-of-sales theory based
on “the millions of euros worth of infringing products that made their way into
8
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 9
the United States,” the “diverted tens of millions of dollars of foreign sales,”
and the “numerous incidents of confusion among U.S. consumers”). Altogether,
we concluded that evidence “of a sufficient character and magnitude” supported
extending Lanham Act protections to Hetronic for Abitron’s foreign infringing
conduct. Id.
But our decision added yet another Lanham Act extraterritoriality
framework into the mix, further entrenching the extant circuit split. Soon after,
the Supreme Court granted Abitron’s petition for certiorari to settle when and
how far the Lanham Act extends to protect U.S.-trademark owners from foreign
infringement. Abitron, 600 U.S. at 417. In doing so, the Court crafted a new
framework to determine the extraterritorial application of the relevant Lanham
Act provisions. That framework lays the foundation for our discussion.
DISCUSSION
Our principal task on remand is to reevaluate which of Abitron’s
allegedly infringing activities count as “uses in commerce” under the Supreme
Court’s new extraterritoriality framework for the Lanham Act’s trademark-
infringement provisions. See 15 U.S.C. §§ 1114
(1)(a), 1125(a)(1). After
engaging with this framework and drawing our conclusions, we then discuss
how our revised view of the Lanham Act’s application to Abitron’s conduct
impacts the remedies awarded in the district court.
9
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 10
I. Abitron’s Extraterritoriality Framework
The Lanham Act regulates and protects the use of federally registered
trademarks in U.S. commerce. The statute ordinarily governs domestic
trademark disputes, but this case posed a different scenario: What happens
when a foreign entity infringes on an American-registered trademark outside
the United States? The Supreme Court has contemplated similar extraterritorial
applications of U.S. statutes in recent years. See, e.g., Nestlé USA, Inc. v. Doe,
593 U.S. 628
(2021) (Alien Tort Statute); RJR Nabisco, Inc. v. Eur. Cmty.,579 U.S. 325
(2016) (RICO Act); Morrison v. Nat’l Austl. Bank Ltd.,561 U.S. 247
(2010) (Security Exchange Act). But until Abitron, the Court had yet to decide
when the Lanham Act’s trademark-infringement provisions might, if ever, reach
an infringer’s foreign conduct.
In Abitron, the Supreme Court began with a “longstanding principle of
American law” called the “presumption against extraterritoriality.” 600 U.S. at
417 (cleaned up). Under that presumption, “exclusively ‘foreign conduct is
generally the domain of foreign law.’” Id. (brackets omitted) (quoting
Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 455
(2007)). But when Congress expresses “a contrary intent,” the presumption may be rebutted.Id.
To decide whether an act of Congress rebuts the presumption, courts apply a “two-step framework.”Id.
(quoting RJR, 579 U.S. at 337).
“At step one, we determine whether a provision is extraterritorial,”
meaning that “Congress has affirmatively and unmistakably instructed that the
10
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 11
provision at issue should apply to foreign conduct.” Id. at 417–18 (quotation
marks omitted) (quoting RJR, 579 U.S. at 335). If the statute contains such an
instruction, then “claims alleging exclusively foreign conduct may proceed,
subject to ‘the limits Congress has (or has not) imposed on the statute’s foreign
application.’” Id. at 418 (quoting RJR, 579 U.S. at 337–38). But if the
provision lacks any express intent for the law to apply outside the United
States, then we proceed to step two. Id.
At step two, we gauge whether the claim alleges “a (permissible)
domestic or (impermissible) foreign application” of the provision. Id.
Embedded in that question lies another two-part inquiry: first, to “identify the
statute’s focus,” and second, to “ask whether the conduct relevant to that focus
occurred in United States territory.” Id. (cleaned up). This two-pronged inquiry
at step two “separate[s] the [domestic] activity that matters from the [foreign]
activity that does not.” Id. at 419. And even among the domestic activity, only
“the conduct relevant to the statute’s focus” implicates the Lanham Act. Id.
(citation omitted) (“[T]he presumption would be meaningless if any domestic
conduct could defeat it.”); see also WesternGeco LLC v. ION Geophysical
Corp., 585 U.S. 407, 414
(2018) (“If the conduct relevant to the statute’s focus
occurred in the United States, then the case involves a permissible domestic
application of the statute . . . . But if the relevant conduct occurred in another
country, then the case involves an impermissible extraterritorial application
regardless of any other conduct that occurred in U.S. territory.” (cleaned up)).
11
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 12
Applying “this well-established framework,” the Supreme Court
concluded that the Lanham Act provisions at issue, § 1114(1)(a) and
§ 1125(a)(1), are not extraterritorial. 6 Abitron, 600 U.S. at 419. So the Court
proceeded to step two to determine the statute’s focus and the conduct relevant
to that focus. See id. at 421. At this step in the analysis, the Court accused the
parties of “miss[ing] th[e] critical point” by disputing the Lanham Act’s focus
“without regard” to the relevant conduct. Id. The Court reasoned that under
“any potential focus of § 1114(1)(a) and § 1125(a)(1),” the relevant conduct is
the infringing, domestic “use in commerce” of a trademark. 7 Id. at 423
(emphasis added). “[I]f all the conduct regarding the violations took place
outside the United States,” the Court noted, then “the focus test has no filtering
role to play.” Id. at 419 (cleaned up). From that perspective, the Court viewed
6
The Court rejected Hetronic’s arguments that the Lanham Act’s
definition of “commerce” constitutes an unmistakable provision that rebuts the
presumption against extraterritoriality. Abitron, 600 U.S. at 421 (recalling its
similar rebuke to statutory provisions that “reference” foreign commerce as
being sufficient to rebut the presumption). The Lanham Act defines
“commerce” as “all commerce which may lawfully be regulated by Congress.”
15 U.S.C. § 1127
. Hetronic argued that this definition encompasses foreign
conduct because Congress lawfully regulates foreign trade under the Foreign
Commerce Clause. Abitron, 600 U.S. at 420. And Hetronic advanced that the
Lanham Act definition differs from “boilerplate” definitions of commerce
found in other statutes. Id. Together, Hetronic alleged, these features defeated
the presumption against extraterritoriality. Id.
7
Abitron argued that the focus is “the ‘use’ of the mark ‘in commerce’”;
Hetronic argued that the focus is both to “protect[] mark owners from
reputational harm and [to] protect[] consumers from confusion”; and the
government argued that the focus is “consumer confusion.” Abitron, 600 U.S. at
436–37 (Sotomayor, J., concurring in the judgment).
12
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 13
“the parties’ particular debate over the ‘focus’ of § 1114(1)(a) and
§ 1125(a)(1)” as inapposite to “the relevant inquiry” about Abitron’s conduct—
where Abitron had used Hetronic trademarks: the United States or overseas. Id.
at 422; see id. (“The ultimate question regarding permissible domestic
application turns on the location of the conduct relevant to the focus.”).
Drilling down on the meaning of “use in commerce,” the Court observed
that, under the Lanham Act, Congress forbade the unauthorized use of
trademarks in commerce under “certain conditions,” id. at 423, one being that
the use “is likely to cause confusion,” id. (quoting §§ 1114(1)(a), 1125(a)(1)).
The Court explained that consumer confusion is a “necessary characteristic of
an offending use,” but “not a separate requirement.” Id. So though a likelihood
of consumer confusion is part and parcel of any infringing “use in commerce,”
the keystone for liability is the “specific action” that the alleged infringer took
in the United States, and whether that action contravened the Act’s focus. 8 Id.
8
Justice Sotomayor’s concurrence supported Lanham Act penalties
extending to “activities carried out abroad” that cause “a likelihood of
consumer confusion in the United States.” Abitron, 600 U.S. at 433
(Sotomayor, J., concurring in the judgment). According to her concurrence—
joined by Chief Justice Roberts, Justice Kagan, and Justice Barrett—the
statutory focus of § 1114(1)(a) and § 1125(a)(1)(A) is “protecting consumers
from confusion.” Id. at 437. In short, the four concurring justices regarded
domestic confusion as the sine qua non of the Lanham Act, not domestic
conduct. See id. at 440–41 (criticizing the majority’s citation to Supreme Court
cases in which “the focus of the provision at issue was conduct” and
maintaining that “none of the cases upon which the majority relies establish
categorically that there must be domestic conduct in order for there to be a
domestic application of [the Act]”).
13
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 14
That “particular sort of use” which offends the Lanham Act’s focus must be the
“premise[] [for] liability.” Id.
Summing up, the Supreme Court held that a domestic, infringing “‘use in
commerce’ of a trademark” draws “the dividing line between foreign and
domestic applications” of the Lanham Act. Id. at 428. So with that
understanding of the Act’s extraterritoriality, we proceed to determine on
which side of the dividing line Abitron’s conduct falls.
II. “Use in Commerce”
For Abitron’s foreign conduct to be actionable under the Lanham Act,
§ 1114(1)(a) and § 1125(a)(1) must apply extraterritorially. 9 The Supreme
9
Sections 1114(1)(a) and 1125(a)(1) technically create two separate
claims for relief under the Lanham Act, though we typically group them
together when both are raised as part of a Lanham Act trademark-infringement
claim because both provisions contain “virtually identical elements.” Utah
Lighthouse Ministry v. Found. for Apologetic Info. & Rsch., 527 F.3d 1045, 1050
(10th Cir. 2008); see Elevate Fed. Credit Union v. Elevations Credit Union,67 F.4th 1058
, 1070 (10th Cir. 2023) (noting that both § 1114(1) and § 1125(a)(1) impose liability when “the junior user’s mark is likely to cause confusion with the senior user’s mark” (quoting Water Pik, Inc. v. Med-Sys. Inc.,726 F.3d 1136, 1143
(10th Cir. 2013))). Our fellow circuits do the same. See, e.g., Rex Real Est. I, L.P. v. Rex Real Est. Exch., Inc.,80 F.4th 607, 616
(5th Cir. 2023) (clarifying that “[t]he same two elements apply to both causes of action,” referring to “trademark infringement [allegations] in violation of Sections 32(1) and 43(a) of the Lanham Act, which are codified at15 U.S.C. § 1114
(1) and15 U.S.C. § 1125
(a), respectively”); Radiance Found., Inc. v. N.A.A.C.P.,786 F.3d 316, 321
(4th Cir. 2015) (referring to § 1114(1) and § 1125(a) collectively as “[t]he Lanham Act’s provisions prohibiting trademark infringement”). The notable difference between the two provisions is that § 1125(a)(1) affords broader protections than § 1114(1)(a), which protects only registered trademarks. See ITC Ltd. v. Punchgini, Inc.,482 F.3d 135, 154
(2d
Cir. 2007); see also Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp., 174
(footnote continued)
14
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 15
Court resolved that these provisions are not extraterritorial at step one of the
framework, so we can immediately proceed to step two. At step two, we first
decide the focus of the provisions at issue, § 1114(1)(a) and § 1125(a)(1). “The
focus of a statute is ‘the object of its solicitude,’ which can include the conduct
it ‘seeks to regulate,’ as well as the parties and interests it ‘seeks to protect’ or
vindicate.” WesternGeco, 585 U.S. at 413–14 (cleaned up) (quoting Morrison,
561 U.S. at 267
). To assess the object of the Lanham Act’s solicitude, we
examine the provisions’ statutory language.
Broadly speaking, the Lanham Act protects trademark owners by making
the infringement or unauthorized use of a registered mark in commerce civilly
actionable. See 15 U.S.C. § 1127
. The Act generally defines “use in commerce” as “the bona fide use of a mark in the ordinary course of trade,”id.,
but the
provisions specific to trademark infringement, see §§ 1114(1)(a), 1125(a)(1),
narrow that definition further. Section 1114(1)(a) creates civil liability for any
“use in commerce,” meaning any use “in connection with the sale, offering for
sale, distribution, or advertising of any goods” that is “likely to cause
confusion.” And § 1125(a)(1) imposes civil liability for “uses in commerce” of
any “name [or] symbol” “in connection with any goods or services” that are
“likely to cause confusion.” From this language, we deduce that the plain focus
F.3d 1036, 1046 n.6 (9th Cir. 1999) (illustrating that “the same standard is
embodied” in both § 1114(1) and § 1125(a), their application depends only on
whether the mark is registered or unregistered).
15
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 16
of § 1114(1)(a) and § 1125(a)(1) is to punish unauthorized commercial uses of
U.S.-registered trademarks that harm American businesses and consumers by
causing confusion (or a likelihood of confusion) about the true origin of a
product. Cf. Jack Daniel’s Props., Inc. v. VIP Products LLC, 599 U.S. 140
, 146 (2023) (explaining that “trademarks benefit consumers and producers alike” because “[a] source-identifying mark enables customers to select ‘the goods and services that they wish to purchase, as well as those they want to avoid’” (quoting Matal v. Tam,582 U.S. 218, 224
(2017))).
Having determined the statutory focus, we turn to the relevant conduct
implicated under that focus and where that conduct occurred. The relevant
conduct under § 1114(1)(a) and § 1125(a)(1) is the use of a trademark “in
commerce” “in connection with any goods or services,” specifically “the sale,
offering for sale, distribution, or advertising,” in a manner “likely to cause
confusion.” Using this yardstick, we assess which of Abitron’s allegedly
infringing activities amounted to an infringing use of Hetronic trademarks.
Once we determine that Abitron has committed an infringing use, we then
consider where that use occurred—domestically or overseas—before Lanham
Act penalties attach. See 15 U.S.C. § 1117
(governing Lanham Act damages); see also 1-800 Contacts, Inc. v. WhenU.Com, Inc.,414 F.3d 400, 412
(2d Cir.
2005) (describing the “use” determination as “a threshold matter” because “no
such activity is actionable under the Lanham Act absent the ‘use’ of a
trademark”).
16
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 17
A. Domestic Sales
Last time, we established that the Lanham Act covers Abitron’s direct
sales to U.S. customers. Hetronic, 10 F.4th at 1042–43. These sales blatantly
used Hetronic trademarks in domestic commerce, thus no “extraterritorial
application of the Act” was required. Id. at 1043. On rehearing, Abitron accepts
that its “sales to U.S. customers may be subject to the Lanham Act as a
domestic application of the law.” Suppl. Op. Br. at 7. Abitron instead contests
the amount of U.S. sales that triggers Lanham Act liability, asserting that “only
a fraction” of them violated the Act because most of its domestic sales posed no
likelihood of confusion to U.S. consumers—“a necessary characteristic of an
offending use.” Id. at 7–8 (emphasis omitted) (quoting Abitron, 600 U.S. at
423).
From its total direct U.S. sales (€202,134.12), Abitron excises the portion
that went to Hetronic’s U.S.-based affiliates (€185,463.52), reasoning that
those sales “presented no cognizable likelihood of confusion.” Id. at 9; see
Suppl. Reply Br. at 4 (“Hetronic knew the goods came from [Abitron], because
[Hetronic] bought them from [Abitron].”). At most, Abitron presses, Hetronic’s
evidence of the confusion stemming from these sales reveals confusion about
“whether [the goods] were constructed with the parts Hetronic requested,”
which goes to the “contractual obligations” between Abitron and Hetronic, not
to “the goods’ source.” Suppl. Reply Br. at 4. And to create liability under the
Act, Abitron continues, the U.S. sales must have caused a likelihood of
17
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 18
confusion “about [the] source” of the goods. Suppl. Op. Br. at 9 (quoting
Abitron, 600 U.S. at 430 (Jackson, J., concurring)). Based on that, Abitron
insists that only €16,670.60 of its U.S. sales to “non-Hetronic U.S. buyers”
were “likely to cause confusion,” and so only those sales “can support Lanham
Act liability.” Id. at 8–9.
“In this circuit, likelihood of confusion,” as an element of Lanham Act
trademark infringement, “is a question of fact.” Affliction Holdings, LLC v.
Utah Vap or Smoke, LLC, 935 F.3d 1112, 1114
(10th Cir. 2019) (quoting Sally Beauty Co. v. Beautyco, Inc.,304 F.3d 964, 972
(10th Cir. 2002)). To decide whether “a likelihood of confusion exists,” we have identified six nonexhaustive factors: (1) “the degree of similarity between the marks”; (2) “the intent of the alleged infringer in adopting its mark”; (3) “evidence of actual confusion”; (4) “the relation in use and manner of marketing between the goods or services marketed by the competing parties”; (5) “the degree of care likely to be exercised by purchasers”; and (6) “the strength or weakness of the marks.” 1-800 Contacts, Inc. v. Lens.com, Inc.,722 F.3d 1229, 1239
(10th Cir. 2013); see also King of the Mountain Sports, Inc. v. Chrysler Corp.,185 F.3d 1084, 1090
(10th Cir. 1999) (explaining that “[a]ll of the factors are
interrelated” and that “no one factor is dispositive” because “the weight
afforded to some of the factors differs when applied in . . . separate contexts”
(citation omitted)).
18
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 19
At trial, the jury received instructions on the multi-pronged likelihood-
of-confusion test to determine whether Hetronic had proved that essential
element of its trademark-infringement claims against Abitron. Following those
instructions, which Abitron never challenged, the jury found “by the greater
weight of the evidence [that] each essential element of [the] trademark
infringement claim[s]” had been proved. 10 Appellants’ App. vol. 10 at 2490–92.
For starters, “[w]e do not and cannot retry factual determinations made
by a jury.” Bennett v. Longacre, 774 F.2d 1024, 1028
(10th Cir. 1985). On top of that, we review de novo likelihood-of-confusion determinations on summary-judgment appeals, which this is not. See Hornady Mfg. Co. v. Doubletap, Inc.,746 F.3d 995, 1001
(10th Cir. 2014) (recognizing that though
“[l]ikelihood of confusion is a question of fact,” it is “amenable to summary
judgment in appropriate circumstances”). And even if it were, we would reject
Abitron’s argument on procedural and substantive grounds.
10
The jury issued a general verdict on the likelihood-of-confusion
element through its findings that Hetronic had proved “each essential element
of its trademark infringement claim[s]” for the Hetronic mark, product marks,
and trade dress. Appellants’ App. vol. 10 at 2490–92. The verdict forms did not
parse out the disparate levels of confusion Abitron may have caused among
Hetronic’s U.S. affiliates versus non-Hetronic-affiliated U.S. customers. That
lack of granularity in the verdict is hardly surprising because Abitron didn’t
raise the point at trial. Because Abitron didn’t present its case to the jury that
way, we decline to rehash the evidence to discern which portions of the trial
record do (or don’t) support a likelihood-of-confusion finding specific to
Hetronic’s U.S. affiliates.
19
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 20
Procedurally, this argument is waived. See Hansen v. PT Bank Negara
Indon. (Persero), 706 F.3d 1244, 1248
(10th Cir. 2013) (“Plaintiffs never raised
this argument before the district court, and it is therefore waived.”). Abitron
should have disputed before the district court and in its previous appeal that
€185,463.52 of its sales lacked the necessary likelihood of confusion. 11 Despite
agreeing to the amount of Abitron’s direct U.S. sales as a factual matter,
Abitron alleges that, legally, Hetronic Germany’s sales to Hetronic’s U.S.
affiliates “presented no cognizable likelihood of confusion” under § 1114(1)(a)
or § 1125(a)(1)(A). Suppl. Op. Br. at 9. We decline to let Abitron relitigate the
amount of its actionable direct U.S. sales, even as a matter of law, because
nothing in the Supreme Court’s opinion abrogated or altered the law on the
likelihood-of-confusion element for Lanham Act trademark-infringement
claims. The Court discussed the likelihood-of-confusion element briefly, 12
11
Indeed, on appeal last time, Abitron challenged the U.S.-sales figures
as a factual matter, alleging that its sales to U.S. customers were de minimis,
totaling €16,670.60. We rejected that assertion because Abitron had conceded
that its direct U.S. sales totaled €202,134.12 (€16,670.60 from Abitron
Germany and €185,463.52 from Hetronic Germany) in its statement of
undisputed facts submitted with its motion for summary judgment and in an
offer of proof at trial. Hetronic, 10 F.4th at 1042 n.8.
12
The majority confirmed that infringing uses in commerce “must create
a sufficient risk of confusion,” but it focused the extraterritoriality analysis “on
the location of the conduct relevant to the [Act’s] focus.” Abitron, 600 U.S. at
422–23. In fact, the majority criticized Justice Sotomayor’s concurring view
that a domestic application of the Act accrues whenever the use of a mark
abroad might incite a likelihood of confusion in the United States, because, the
(footnote continued)
20
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 21
mainly to confirm that likelihood of confusion is a “necessary characteristic” of
an infringing use. Abitron, 600 U.S. at 423. This comment merely clarifies that,
though an infringer’s domestic conduct dominates the extraterritoriality
analysis, a likelihood of consumer confusion remains instrumental for Lanham
Act liability in general. See id. Because likelihood of confusion was already an
essential element for any actionable Lanham Act trademark-infringement claim,
and the multi-factor test for likelihood of confusion remains unchanged,
Abitron could have argued at trial that €185,463.52 of its direct U.S. sales
“create[d] no actionable likelihood of confusion.” Suppl. Op. Br. at 8; see
§ 1114(1)(a) (requiring that any liable infringing use be “likely to cause
confusion”); § 1125(a)(1)(A) (same). By failing to do so, Abitron has waived
that argument on appeal.
Substantively, Abitron contends that the sales to Hetronic’s U.S.
affiliates “could create no actionable likelihood of confusion” because
“Hetronic knew exactly where the goods came from.” Suppl. Op. Br. at 8. In
Abitron’s view, the Lanham Act requires a likelihood of confusion about the
majority warned, that approach “threatens to negate the presumption against
extraterritoriality.” Id. at 425.
From this discussion, we glean that likelihood of confusion remains
intact as an element of Lanham Act trademark infringement, albeit recognizing
that domestic confusion takes a backseat to domestic conduct when considering
the Act’s extraterritoriality. See id. at 422–23. But nothing in the Court’s
opinion suggests to us that this circuit’s well-established likelihood-of-
confusion test is inadequate or abrogated. See id. at 423.
21
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 22
source of the infringing goods that could not have existed here because
“Hetronic knew the goods came from [Abitron].” Suppl. Reply Br. at 4.
Contrary to Abitron’s position, “the relevant confusion under trademark
law is not limited to confusion of consumers as to the source of the goods.”
Team Tires Plus, Ltd. v. Tires Plus, Inc., 394 F.3d 831, 835
(10th Cir. 2005). The confusion may also be “as to sponsorship or affiliation” of the goods. 13 Id.; accord Int’l Info. Sys. Sec. Certification Consortium, Inc. v. Sec. Univ., LLC,823 F.3d 153, 161
(2d Cir. 2016) (“[T]he [Lanham] Act’s protection against infringement is not limited to any particular type of consumer confusion, much less exclusively to confusion as to source. Rather, [the Act] protects against numerous types of confusion, including confusion regarding affiliation or sponsorship.”); Amoco Oil Co. v. Rainbow Snow,748 F.2d 556, 558
(10th Cir.
1984) (stating that the likelihood-of-confusion determination should account
“not only” for “confusion of source, but also . . . confusion that results from a
mistaken belief in common sponsorship or affiliation”).
13
Other circuits agree that if consumers are likely to misunderstand the
infringer’s product as having been approved or sponsored by the trademark
owner, then Lanham Act liability and penalties ensue. See, e.g.,
Perfumebay.com Inc. v. eBay, Inc., 506 F.3d 1165, 1176
(9th Cir. 2007) (affirming the district court’s finding of confusion based on evidence that “consumer[s] might assume that Perfumebay is part of eBay’s web site or one of eBay’s internet stores” based on “search results for ‘perfume’ and ‘eBay’ that provided links to Perfumebay”); Weight Watchers Int’l, Inc. v. Luigino’s, Inc.,423 F.3d 137
, 144 (2d Cir. 2005) (determining that Luigino’s “use of the
term ‘Points’ on the front” of its packaging “was likely to confuse consumers
into believing that Weight Watchers had determined the point values or
otherwise endorsed the Luigino’s products”).
22
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 23
Hetronic presented evidence at trial showing that U.S. customers were
confused about the association between Abitron’s and Hetronic’s products.
Hetronic showed that U.S. consumers, and even Abitron’s U.S. distributor,
thought that Abitron had replaced Hetronic. Hetronic submitted evidence that
Abitron sold products with the same shape, appearance, and product name as
Hetronic’s to assure consumers that they were buying the same products they
had bought before. Hetronic produced evidence that Abitron installed
counterfeit parts into Hetronic-branded systems without Hetronic’s approval or
the customers’ knowledge, and that those parts sometimes malfunctioned. And
Hetronic’s evidence revealed that Abitron’s online advertising intentionally
directed U.S. customers to Abitron for repair services and replacement parts.
From this, the jury found that Abitron’s activities were likely to have confused
Hetronic’s U.S. customers about the affiliation between the two companies.
This sort of confusion (or likelihood thereof) suffices to sustain a
Lanham Act trademark-infringement claim for all of Abitron’s direct U.S.
sales. See Team Tires Plus, 394 F.3d at 835
; see, e.g., Brookfield Commc’ns, Inc. v. W. Coast Ent. Corp.,174 F.3d 1036, 1057
(9th Cir. 1999) (concluding
that confusion existed where the similar branding between two internet
databases risked leading consumers to “wrongly assume that the [original] . . .
[wa]s no longer offered” and had “been replaced” by the infringer’s service).
Because even if Hetronic’s affiliates knew that Abitron sourced the remotes,
part of a mark’s core function is to help consumers “quickly and easily”
23
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 24
identify that “this item—the item with this mark—is made by the same
producer as other similarly marked items that he or she liked (or disliked) in
the past.” Jack Daniel’s, 599 U.S. at 146 (citation omitted). That assurance—
that the product will possess the same qualities and features that the consumer
previously found appealing—vanishes if Abitron sold products masquerading
under Hetronic trademarks that varied substantively from those affiliated with
the Hetronic brand. Such tactics are a far cry from a consumer purchasing a
“disappointing product,” as Abitron alleges, Suppl. Op. Br. at 9 (citation
omitted), or even from a legitimate attempt to compete by mimicking
“successful features” of a product, Water Pik, Inc. v. Med-Sys., Inc., 726 F.3d 1136, 1158
(10th Cir. 2013) (quoting Streetwise Maps, Inc. v. VanDam, Inc.,159 F.3d 739
, 741–42, 745 (2d Cir. 1998)).
We decline to decide at this late stage that €185,463.52 of Abitron’s
direct U.S. sales posed no likelihood of confusion. This argument is waived and
untenable when considered with the jury’s findings. We therefore conclude that
all of Abitron’s direct U.S. sales are actionable under the Lanham Act because
these sales used Hetronic trademarks in domestic commerce in a way that
threatened confusion among U.S. consumers.
B. Foreign Sales
Shifting next to Abitron’s foreign sales to foreign customers, Abitron
maintains that “[t]hose sales indisputably did not involve a ‘domestic’ ‘use in
commerce.’” Suppl. Op. Br. at 10 (quoting Abitron, 600 U.S. at 415). In the
24
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 25
initial appeal, this panel held that some of Abitron’s foreign sales triggered a
domestic application of the Lanham Act either because the goods wound up in
the United States or the foreign sales diverted customers from Hetronic, costing
Hetronic tens of millions of dollars in sales that “would have flowed into the
U.S. economy but for [Abitron’s] conduct infringing a U.S. trademark.”
Hetronic, 10 F.4th at 1045; see id. at 1043–46 (discussing both theories). But
neither theory works under the Supreme Court’s new framework.
For the €1.7 million of Abitron’s foreign sales that “ended up,” id. at
1043, in the United States, Abitron counsels against our assigning significance
to the ultimate destination of the infringing goods, see Abitron, 600 U.S. at
422. What matters is “the location of the conduct relevant to the focus” of the
Act. Abitron, 600 U.S. at 422. Above, we identified that focus as the
punishment of illegal trademark uses in U.S. commerce detrimental to U.S.
businesses and consumers. Considering the location of Abitron’s deleterious
conduct, we conclude that its foreign sales cannot “premise[] liability” under
the Act. Id. at 423. That conduct occurred abroad, and so in basing its Lanham
Act claims on Abitron’s foreign sales, Hetronic seeks an “(impermissible)
foreign application of the provision[s].” Id. at 418; see id. at 419 (“[I]f all the
conduct regarding the violations took place outside the United States,” then
“there would be no domestic conduct that could be relevant to any focus.”
(cleaned up)). The same goes for the foreign sales that we found actionable
under the diversion-of-sales theory. Hetronic, 10 F.4th at 1045–46. This
25
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 26
conduct falls beyond the Lanham Act’s purview even if those sales caused
economic losses in the United States.
Because the Court now requires infringing conduct in domestic
commerce to anchor any Lanham Act claim, none of Abitron’s purely foreign
conduct—that is, foreign sales to foreign customers—can premise liability for
Hetronic’s Lanham Act claims.
C. Other Domestic Conduct
Abitron’s direct U.S. sales are only one slice of the domestic-conduct
pie; below, we dig into the rest.
1. Advertising, Marketing, Distribution
The Supreme Court instructs us that “the conduct relevant to any
potential focus of § 1114(1)(a) and § 1125(a)(1)” is the alleged infringer’s
domestic “use in commerce” of a registered trademark. Abitron, 600 U.S. at
423. And § 1114(1)(a) defines “use in commerce” as “the sale, offering for
sale, distributing, or advertising of any goods or services . . . which . . . is
likely to cause confusion, or to cause mistake, or to deceive.” From this, we
understand Abitron’s “use[s] in commerce” as going beyond its domestic sales
to include any marketing, advertising, and distributing activities that Abitron
undertook in the United States. A plain reading of § 1114(1)(a) and
§ 1125(a)(1) clearly envelops all these actions as “uses in commerce.”
Besides, Abitron “does not dispute that [the] ‘use’ of a mark is broader
than sales.” Suppl. Reply Br. at 2. So without going further, we hold that
26
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 27
Abitron’s domestic advertising, marketing, and distributing—activities that
used Hetronic trademarks without authorization and caused a likelihood of
confusion among U.S. consumers—all count as infringing “uses in commerce”
under the Lanham Act. See Abitron, 600 U.S. at 423.
2. Downstream Sales
Beyond Abitron’s domestic advertising, marketing, and distributing
activities that fall squarely within the text of the Lanham Act, see § 1114(1)(a),
Hetronic argues that Abitron’s infringing products “routinely . . . sold
downstream into the United States,” Suppl. Resp. Br. at 7, also count as
domestic uses in commerce. By “downstream sales,” Hetronic refers to the
sales from OEMs to end-users in the United States. Hetronic reasons that these
“goods [were] intended to be sold downstream” and that Abitron “took . . .
steps to facilitate downstream sales in the United States,” making those sales
“sufficiently domestic” for Lanham Act purposes. 14 Suppl. Resp. Br. at 8, 9, 11.
14
Accounting for these “downstream sales,” Hetronic contends that the
€1.7 million in sales that “ended up” here are “just the tip of the iceberg.”
Suppl. Resp. Br. at 9. Hetronic alleges that the €1.7-million figure is
underinclusive not overinclusive of Abitron’s downstream sales because many
more remotes were sold by OEMs to U.S. end-users that were not “indicate[d]”
as bound for the United States. Id. at 9–10. For example, Hetronic references
some of Abitron’s foreign sales to Teupen (a Germany-based OEM) that were
apparently not marked as “designated for the United States,” even though
Teupen “sold between 150 and 200 machines in the U.S. market.” Id. at 10
(cleaned up). From this, Hetronic calculates that as much as €650,000 in
Teupen sales are unaccounted for in the €1.7-million figure. Id. Abitron
contests Hetronic’s characterization of the Teupen evidence, countering that
these sales were made in the early 2000s “long before any alleged
(footnote continued)
27
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 28
Hetronic rests this argument largely on Justice Jackson’s concurrence in
Abitron. In her concurrence, Justice Jackson posited that the Lanham Act may
protect against the foreign sale of goods bearing an infringing trademark if the
goods are resold in the United States. See Abitron, 600 U.S. at 430–32
(Jackson, J., concurring). 15
Abitron challenges both the claim that downstream sales constitute a
domestic use in commerce and the persuasive value of Justice Jackson’s
concurrence. First, “even assuming Hetronic could identify U.S. resales of
goods that [Abitron] sold abroad,” Abitron argues, “those U.S. resales would
. . . be [a] domestic use of the marks in commerce” “by the reseller” not “by
defendants.” Suppl. Reply Br. at 8. Second, Abitron insists that because Justice
Jackson “joined the Court’s opinion in full, without qualification,” this panel is
not bound by her view of domestic resales as potentially actionable uses in
commerce. Id.
infringement.” Suppl. Reply Br. at 7. To the extent that this evidence can be
found in the existing record, we defer to the district court to assess its
relevance on remand.
15
Justice Jackson devised a hypothetical about German-made handbags
marked “Coache”—replicating the mark of the American-handbag company,
“Coach”—resold in the United States by Americans who had bought the bags in
Europe. See Abitron, 600 U.S. at 431 (Jackson, J., concurring). Under those
facts, Justice Jackson concluded that “once the marks on [the German] bags are
serving their core source-identifying function in commerce in the United States,
this German company is doing—domestically—exactly what Congress sought
to proscribe.” See id.
28
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 29
At the outset, we agree that Justice Jackson’s concurrence need not alter
our approach to the substantive Lanham Act issue partly because, as Abitron
says, Justice Jackson joined her majority colleagues “in full,” and also because
her concurrence advances a different point than the one Hetronic makes. 16
16
Hetronic urges that Abitron “cannot so easily brush off the views
expressed by Justice Jackson,” and we agree. Suppl. Resp. Br. at 2. The trouble
is that Hetronic misapprehends Justice Jackson’s point. Justice Jackson wrote
separately from the majority to clarify her view on two things: (1) “what it
means to ‘use a trademark in commerce’”; and (2) “how that meaning guides
the permissible-domestic-application question in a particular case.” Abitron,
600 U.S. at 429 (Jackson, J., concurring) (brackets omitted). In doing so, she
stressed that a “‘use in commerce’ does not cease at the place . . . where the
item to which [the mark] is affixed is first sold” because a use in commerce
occurs “wherever the mark serves its source-identifying function.” Id. at 430.
Rooted in that understanding of what is meant by the “use” of a trademark,
Justice Jackson employed her German-handbag hypothetical, supra note 15, to
illustrate that infringing goods do not offend the Lanham Act merely by their
presence in the United States. See id. at 431. Rather, she explained, goods
originally sold abroad become domestically infringing once they are resold
inside the United States. See id. Upon being resold, the goods enter the flow of
domestic commerce and so they start doing domestically “what Congress
sought to proscribe.” Id. at 431–32.
Hetronic warps this commentary to assert that Abitron’s selling remotes
to OEMs abroad “knowing and intending that U.S. customers would later buy
their products” justifies recovery for those foreign sales. Suppl. Resp. Br. at 11.
But, according to Justice Jackson, that’s not enough. See Abitron, 600 U.S. at
431 (Jackson, J., concurring). Hetronic needed to show that the remotes
originally sold abroad were then resold inside the United States by U.S. end-
users because only then would the goods have begun “serving a source-
identifying function in the way Congress described.” Id. at 430 (emphasis
added). But Hetronic doesn’t make this argument, nor does it introduce any
evidence that U.S. end-users ever resold Abitron products in U.S. commerce.
Thus, we fail to see how Justice Jackson’s concurrence bears on Hetronic’s
theory of recoverable “downstream sales.” This argument is waived for
inadequate support and explanation. See Sinclair Wyoming Refining Co. v.
A & B Builders, Ltd., 989 F.3d 747, 769
(10th Cir. 2021) (determining that
(footnote continued)
29
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 30
Abitron, 600 U.S. at 432 (Jackson, J., concurring). As to Hetronic’s other
points about Abitron’s downstream sales, none are convincing.
According to Hetronic, “where a foreign entity sells to a foreigner with
the expectation that the goods will be sold downstream in the United States,
that sale is sufficiently domestic” under the Lanham Act. Suppl. Resp. Br. at
11. We disagree. Products bound for the United States but sold abroad cannot
premise a Lanham Act claim without some domestic conduct tying the sales to
an infringing use of the mark in U.S. commerce. See Abitron, 600 U.S. at
422–23. The Abitron majority made clear “that the infringing ‘use in
commerce’ of a trademark creates the dividing line between foreign and
domestic applications” of the Lanham Act. Id. at 428. Hetronic asks us to
stretch that line to include allegedly infringing uses in the United States by
other entities, mainly the OEMs’ sales to U.S. end-users. 17 Abitron doesn’t
unexplained and unsupported arguments were waived for “inadequate
briefing”).
17
For this argument, Hetronic’s supplemental brief relies almost
exclusively on Justice Jackson’s concurrence, which we have established does
not bind our analysis. The only other case Hetronic points us to is Yegiazaryan
v. Smagin, 599 U.S. 533, 545
(2023), specifically for the Supreme Court’s observation that “courts should engage in a case-specific analysis that looks to the circumstances surrounding the injury.” Suppl. Resp. Br. at 11. But Yegiazaryan discussed the domestic-injury requirement for Lanham Act trademark infringement, not whether infringing acts by one foreign entity may impute liability onto another based on knowledge and intent; so Yegiazaryan is off-base. See599 U.S. at 544
. With that, we make no further comment on
Hetronic’s claim that because Abitron “sold their knockoff goods knowing and
intending that U.S. customers would later buy their products,” those sales
become “domestic.” Suppl. Resp. Br. at 11.
30
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 31
support such an elastic interpretation of domestic infringing uses. The Abitron
majority purposely confined the “ultimate question regarding permissible
domestic application[s]” of the Lanham Act to “the location of the conduct
relevant to the focus,” 600 U.S. at 422, because it worried that broadening the
focus inquiry—as Justice Sotomayor envisioned—could allow “almost any
claim involving exclusively foreign conduct [to] be repackaged as a ‘domestic
application,’” id. at 425. Hetronic’s downstream-sales theory strikes us as the
sort of “repackag[ing]” the majority sought to prevent. Id. Hetronic needs to
keep its eye on the prize: Abitron’s infringement of Hetronic trademarks in
U.S. commerce.
Hetronic next asserts that the downstream sales create Lanham Act
liability because Abitron “took steps to facilitate [the] sales” in the United
States—namely, by obtaining FCC licenses and hiring a U.S.-based distributor.
Suppl. Resp. Br. at 8. Had Abitron not taken these steps domestically, Hetronic
argues, the OEMs would never have bought Abitron’s replicas because the
spurious remotes could not have been resold in the United States.
This argument resembles the Court’s “essential steps” reasoning from
Steele v. Bulova Watch Co., where the Court determined that the “[defendant’s]
activities, when viewed as a whole, f[ell] within the jurisdictional scope of the
Lanham Act,” 344 U.S. at 285
, because the defendant had taken “essential steps” in the United States “in the course of business consummated abroad” that infringed an American company’s trademarks,id. at 287
. There, the defendant
31
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 32
bought component parts in the United States for the counterfeit watches that he
produced and sold in Mexico. Id. at 286
. Before Abitron, Steele was the go-to
Supreme Court authority for Lanham Act extraterritoriality. But for a few
reasons, the Abitron majority jettisoned Steele from the analysis. See Abitron,
600 U.S. at 421–22.
To start, the majority couched Steele as outdated because the Steele Court
“understandably did not follow the two-step framework [for extraterritoriality]
that [the Court] would develop decades later.” Id. at 422
. Next, the Court cast Steele as “narrow and factbound” because there, the Court explained, “the defendant committed ‘essential steps’ in the course of his infringing conduct in the United States” and “his conduct was likely to and did cause consumer confusion in the United States.”Id.
Steele’s “implicat[ing] both domestic
conduct and a likelihood of domestic confusion” thwarted the Abitron Court’s
ability to discern “which one determines the domestic applications of
§ 1114(1)(a) and § 1125(a)(1).” Id. Because Steele couldn’t answer that
essential question—whether Lanham Act extraterritoriality “turns on” domestic
conduct or a likelihood of domestic confusion—the Court “put aside” Steele
and approached the analysis anew under modern Supreme Court
extraterritoriality precedents. Id. at 422; see id. at 422–23 (pulling from RJR
and WesternGeco). Applying those authorities, the majority concluded that
domestic conduct (not confusion) is the hallmark of Lanham Act
32
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 33
extraterritoriality. See id. at 423. Thus, the Supreme Court’s new conduct-
focused framework exists completely separate from Steele.
Hetronic’s contention that Abitron violated the Lanham Act by “t[aking]
steps” in the United States “to facilitate” trademark infringement evokes
Steele’s reasoning. 18 Suppl. Resp. Br. at 8. But post-Abitron, Steele no longer
carries weight in the extraterritoriality analysis. By affirmatively “put[ting]
aside” Steele, the majority eschewed everything Steele stood for: that any
“essential steps” taken domestically to facilitate trademark infringement abroad
subject infringers to Lanham Act liability. See Abitron, 600 U.S. at 422. Under
Abitron, the Court now requires the defendant to have engaged in “specific
action[s]” in U.S. commerce that violate the Act’s focus to trigger a domestic
application of the Lanham Act. Id. at 423. That standard for domestic
infringing conduct narrows what the Court set out in Steele.
Under the Supreme Court’s new framework, we struggle to ascertain how
Abitron’s acquiring FCC licenses, hiring a U.S. distributor, or repairing a
broken part should count as infringing domestic conduct when none of those
actions require using Hetronic trademarks in commerce. Cf. U.S. Surgical Corp.
v. Orris, Inc., 5 F. Supp. 2d 1201
, 1208–09 (D. Kan. 1998) (rejecting the
18
Hetronic directly invokes Steele later in its brief to argue that Abitron
“undertook the essential steps of their scheme in the United States,” which
violated the Lanham Act. Suppl. Resp. Br. at 13. For example, Hetronic points
out that Abitron entered into the distribution agreement with Hetronic in the
United States. For the reasons explained in this section, we reject any of
Hetronic’s arguments dependent on Steele and its “essential steps” reasoning.
33
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 34
plaintiff’s claim that defendant’s “conduct in receiving, reprocessing, and
returning the instruments” constituted uses in commerce under the Lanham
Act); Soc. Techs. LLC v. Apple Inc., 4 F.4th 811, 817
(9th Cir. 2021) (“[U]se in
commerce within the meaning of the Lanham Act requires use of a genuine
character,” meaning a use “sufficiently public to identify or distinguish the
marked goods in an appropriate segment of the public mind.” (citation
omitted)). Like the “essential steps” in Steele, these behaviors strike us as
merely intermediary or incidental to Abitron’s foreign infringement because
none involve affixing Hetronic’s trademark to goods and introducing those
goods into U.S. commerce by selling, advertising, marketing, or distributing
them to American consumers. See §§ 1114(1)(a), 1125(a)(1).
Yet the U.S. distributor’s advertising at U.S. tradeshows or marketing
Abitron’s infringing products online to U.S. customers would qualify as
domestic infringing uses in commerce under Abitron. These activities fall into
the same buckets of infringing conduct contemplated by the statute (selling,
marketing, advertising, and distributing), and so these uses fit within the
domestic reach of the Lanham Act.
We conclude that Abitron’s downstream sales do not constitute infringing
domestic conduct under the Lanham Act and neither do the steps that Abitron
undertook in the United States merely to facilitate foreign infringement. But as
established in Section II.A., supra, any activities that Abitron engaged in
through its U.S. distributor to sell, market, advertise, or distribute infringing
34
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 35
goods to U.S. consumers do violate the Lanham Act. Having identified
Abitron’s infringing conduct under the Supreme Court’s framework, we turn to
the disgorgement calculation.
III. Disgorgement
In the district court, the jury awarded Hetronic nearly $96 million in
damages for the profits attributable to Abitron’s infringing domestic and
foreign sales which, on appeal, we agreed were actionable under the Lanham
Act. See Hetronic, 10 F.4th at 1027, 1043–46. But after Abitron, any portion of
that disgorgement award based on Abitron’s foreign sales is improper,
assuming those sales were unconnected to any infringing use of Hetronic
trademarks in domestic commerce. See 600 U.S. at 423, 428.
On that ground, Abitron argues that the Abitron ruling gouges “99%” of
Hetronic’s disgorgement award because most of the award was granted under
an impermissible extraterritorial application of the Lanham Act based on
Abitron’s foreign sales. Suppl. Op. Br. at 1, 10. Hetronic disagrees and
maintains that, even under the new decision, it can still properly disgorge a
significant portion of Abitron’s foreign sales. In Hetronic’s view, Abitron
misunderstands the disgorgement remedy by contending that “a sale to a
foreign buyer could never justify disgorgement.” Suppl. Resp. Br. at 17. To the
contrary, Hetronic asserts, the disgorgement award should account for
Abitron’s foreign sales that flowed from its domestic infringing conduct, like
35
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 36
advertising. 19 Abitron doesn’t dispute this in theory, but it maintains that there
is insufficient evidence in the record to tether its foreign sales to its infringing
domestic conduct.
We have established that Abitron’s infringing “uses in commerce”
include its direct U.S. sales, marketing, advertising, and distributing that
caused a likelihood of confusion among U.S. consumers. And we have rejected
that Abitron’s selling to OEMs abroad can premise Lanham Act liability under
19
For support, Hetronic looks to the Supreme Court’s statement in
WesternGeco that a “legal injury” differs from “the damages arising from that
injury.” Suppl. Resp. Br. at 17 (quoting 585 U.S. at 417
). From that
observation, Hetronic suggests that so long as it can prove a domestic injury,
then the foreign-sales profits arising from that injury would still be
recoverable. But Hetronic walks a tightrope in applying WesternGeco to its
own facts.
In WesternGeco, the Court ruled that the petitioner’s recovering lost-
profits damages from foreign sales was appropriate and not an extraterritorial
application of the Patent Act because “it was [the defendant’s] domestic act of
supplying the components that infringed [the plaintiff’s] patents,” thus the
award for lost foreign sales was nevertheless based on a domestic injury. 585
U.S. at 415–16. In so deciding, the Court rejected the defendant’s argument that
the Patent Act’s application became “extraterritorial” due to “overseas events”
and “foreign conduct subsequent to [the] infringement.” Id. at 416
. The Court found that the foreign conduct the defendant identified was “merely incidental to the infringement,” and so it lacked the “primacy” required “for purposes of the extraterritoriality analysis.”Id.
(citation omitted).
Hetronic poses virtually the same argument here but in the reverse.
Rather than asserting that a domestic application of the Act is truly foreign,
Hetronic insists that Abitron’s foreign sales transfigure into a domestic injury
because of actions taken in the United States that culminated in foreign sales.
Heeding the Court’s reasoning in WesternGeco, we caution that Hetronic
cannot use “merely incidental” domestic conduct as a foothold for its Lanham
Act claims. See id.
Only Abitron’s foreign-sales profits that flowed directly
from Hetronic’s domestic injuries, as prescribed under § 1114(1)(a) and
§ 1125(a)(1), may be recovered.
36
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 37
§ 1114(1)(a) and § 1125(a)(1), even if the OEMs later sold the infringing goods
to U.S. end-users. Yet we conclude that, if Abitron’s foreign sales arose from
domestic infringing conduct, then those profits represent the fruits of a
domestic injury for which Hetronic may seek disgorgement. That said, to
disgorge foreign-sales profits, Hetronic bears the burden of proving the
connection between Abitron’s domestic infringing conduct and its foreign sales.
So before remanding this matter to the district court, we address the parties’
relative burdens of proof under the Lanham Act’s disgorgement remedy.
A trademark owner who proves infringement under the Lanham Act is
entitled to recover damages. See 15 U.S.C. § 1117
(a). Under § 1117(a), “the registrant of a mark” “shall be entitled . . . to recover,” upon “a violation of any right” under the Act, “(1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action,” “subject to the principles of equity.” As a “prerequisite to recover disgorgement of profits,” the plaintiff “must show either actual damages or willful action on the part of the defendant.” Klein- Becker USA, LLC v. Englert,711 F.3d 1153, 1161
(10th Cir. 2013). Because
the jury found that Abitron had willfully infringed Hetronic trademarks,
Hetronic’s right to recover Abitron’s ill-gotten profits is not in question. What
remains to be determined is the amount of profits Hetronic may disgorge.
To account for the profits subject to disgorgement, § 1117(a) institutes a
burden-shifting scheme under which the plaintiff bears the initial burden to
“prove the defendant’s sales only,” before “the burden shifts to the defendant,”
37
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 38
who must then “prove which portion of the sales are not attributable to the
[infringing goods].” Vitamins Online, Inc. v. Heartwise, Inc., 71 F.4th 1222
, 1244 (10th Cir. 2023) (citation omitted); accord Dewberry Eng’rs Inc. v. Dewberry Grp., Inc.,77 F.4th 265, 292
(4th Cir. 2023) (“A ‘plaintiff . . . is not entitled to profits demonstrably not attributable to the unlawful use of his mark.” (quoting Mishawaka Rubber & Woolen Mfg. Co. v. S.S. Kresge Co.,316 U.S. 203, 206
(1942))).
To satisfy its burden, the plaintiff must identify the “total sales” that
resulted “from the [defendant’s] infringing activity with reasonable certainty.”
Klein-Becker, 711 F.3d at 1163
(citation omitted). To pass “reasonable certainty,” the plaintiff must show more than the defendant’s gross revenues, though an estimation of infringed profits based on gross revenues is sufficient. See Max Rack, Inc. v. Core Health & Fitness, LLC,40 F.4th 454, 472
(6th Cir. 2022) (recalling Judge Posner’s observation that a plaintiff must do more than adduce an infringer’s “corporate income tax return in the record and rest [its] case for an award of infringer’s profits” (quoting Taylor v. Meirick,712 F.2d 1112, 1122
(7th Cir. 1983))); see also Taylor,712 F.2d at 1120, 1122
(discussing the analogous calculation for profits recoverable to victims of copyright infringement under the Copyright Act,17 U.S.C. § 504
(b)); see also, e.g., Est. of Bishop v. Equinox Int’l Corp.,256 F.3d 1050, 1053, 1057
(10th
Cir. 2001) (affirming the district court’s disgorgement award based on the
defendant’s total gross profits during the infringement period, along with an
38
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 39
estimation of “the net profit attributable to its [infringing] products for the
relevant time period”); Pizza Inn, Inc. v. Odetallah, No. 21-00322, 2022 WL 17475784
, at *4 (W.D. Okla. Dec. 6, 2022) (concluding that the plaintiff “carried its burden in calculating the proper award of profits” by using the defendant’s spreadsheet “containing sales projections and profit forecasting” to estimate the profits attributable to the infringement), appeal dismissed for lack of jurisdiction, No. 22-6167,2022 WL 19404932
(10th Cir. Dec. 6, 2022). Above all, the plaintiff needs to “show some connection between the identified ‘sales’ and the alleged infringement.” Vitamins Online, 71 F.4th at 1244 (emphasis added) (quoting Max Rack,40 F.4th at 472
). Said differently, the plaintiff must show that the defendant’s sales were “proximately caused” by the infringement. 20 Lexmark Int’l, Inc. v. Static Control Components, Inc.,572 U.S. 118, 132
(2014); seeid. at 140
(holding that the respondent could not “obtain relief” under § 1125(a) “without evidence of injury proximately caused by [the petitioner’s] alleged misrepresentations”); see also Atlas Biologicals, Inc. v. Kutrubes, No. 19-1404,2022 WL 2840484
, at *4 (10th Cir. 2022)
(unpublished) (“As the Supreme Court has explained, Lanham Act liability
20
At oral argument, Hetronic agreed that it bears the burden to prove a
“plausible connection” between Abitron’s domestic infringing conduct and the
foreign sales, which we assume refers to the same proximate-cause requirement
discussed in Lanham Act caselaw. Hetronic bears the burden to show proximate
causation by a preponderance of the evidence. See World Wide Ass’n of
Specialty Programs v. Pure, Inc., 450 F.3d 1132, 1140
(10th Cir. 2006) (noting
that every element of a Lanham Act claim must be proved by a preponderance
of the evidence).
39
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 40
requires a showing of proximate cause.”). So any monetary relief that Hetronic
receives must share a causal nexus with Abitron’s domestic conduct that used
Hetronic trademarks in commerce. See Vitamins Online, 71 F.4th at 1242
(affirming the plaintiff’s disgorgement award based on a demonstrated “nexus
between the false advertising and the lost sales”). Hetronic insists that it can
meet its burden on the existing record. As neither side has requested a new trial
on the Lanham Act claims, the parties are limited to the existing factual record
on remand. Yet the parties may put on limited opinion evidence as necessary
for the district court to interpret which of Abitron’s domestic activities meet
the infringing “uses in commerce” threshold, in light of Abitron and this
revised opinion.
Lastly, Hetronic requests that “in fashioning relief,” the district court
should “take into account various other forms of compensation” that Hetronic
“declined to pursue,” including “attorney’s fees and treble damages.” Suppl.
Resp. Br. at 17–18. We take no stance on this issue. As Hetronic says, it
“declined to pursue” these remedies in the district court. Id. See generally
Proposed Final Judgment, Hetronic Int’l, Inc. v. Hetronic Ger. GmbH, No. 14-
CV-00650 (W.D. Okla. May 18, 2020), ECF No. 454, Ex. 1. But even if it had,
§ 1117(a) “gives [the] district court discretion to award treble damages,”
United Phosphorus, Ltd. v. Midland Fumigant, Inc., 205 F.3d 1219, 1236
(10th Cir. 2000) (discussing § 1117(a)), and to award reasonable attorneys’ fees “in exceptional cases,” Xlear, Inc. v. Focus Nutrition, LLC,893 F.3d 1227
, 1236
40
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 41
(10th Cir. 2018) (quoting § 1117(a)). We don’t need to bestow on the district
court discretionary authority it already possesses by statute.
IV. Scope of Injunctive Relief
On our first go-round in this case, we narrowed the district court’s
worldwide injunction to “the countries in which Hetronic currently markets or
sells its products.” Hetronic, 10 F.4th at 1047. On remand, Abitron insists that
we must further narrow the injunction to Abitron’s activities exclusively within
U.S. borders. Abitron asserts that “[b]ecause only a mark’s use in commerce in
the United States could constitute a ‘violation’ of the Act,” we must limit
Hetronic’s injunctive relief to uses of the mark “in this country.” Suppl. Op.
Br. at 15–16. By the same token, Abitron asks that we order the district court to
vacate the sanctions imposed for its “putative violations” of the injunction. Id.
at 16. Hetronic requests that any injunction issued by this court or the district
court “be framed sufficiently broadly” to capture “any [of Abitron’s] infringing
domestic conduct.” Suppl. Resp. Br. at 18.
The Lanham Act empowers the district court to grant injunctive relief “to
prevent the violation of any right of the registrant of a mark.” 15 U.S.C. § 1116
(a). As we’ve established above, Hetronic’s rights were violated when
Abitron used Hetronic trademarks in U.S. commerce through its domestic sales,
marketing, advertising, and distribution. This list of Abitron’s injurious
conduct sketches the outer limit for the injunctive relief permitted by
§ 1116(a). In terms of the injunction’s geographical scope, we agree with
41
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 42
Abitron that any permanent injunction issued against it cannot extend beyond
Abitron’s qualifying domestic conduct. We remand to the district court to
modify the permanent injunction in accordance with that view.
V. State-Law Claims
The jury found for Hetronic on several state-law claims. Abitron never
appealed this portion of the verdict. Yet, on rehearing, Abitron asserts what we
construe as akin to an objection under Federal Rule of Evidence Rule 403: the
jury heard “reams of irrelevant evidence about [Abitron’s] foreign conduct” for
the Lanham Act claims that tainted its ability to adjudicate the state-law claims.
Suppl. Op. Br. at 16, 17. Given the “spillover prejudice” from this allegedly
irrelevant evidence, Abitron insists that a new trial is warranted on these
claims. Id. at 18.
Abitron concedes that it failed to bring this evidentiary issue to our
attention last time, despite every opportunity to do so. 21 See First W. Cap.
Mgmt. Co. v. Malamed, 874 F.3d 1136, 1144
(10th Cir. 2017) (“[W]hen a party
presents a new argument on appeal and fails to request plain error review, we
do not address it.”). Likewise, it declined to challenge in the Supreme Court the
21
In its opening brief filed during the original appeal, Abitron requested
relief in the form of “a reversal and remand for retrial of the breach of contract
judgments and the 5 tort claims,” based on the district court’s alleged error in
“excluding [Abitron’s] evidence of ‘belief of ownership’” of Hetronic’s IP. Op.
Br. at 54 ¶ 3. That basis for a retrial differs from the one that Abitron raises
now, so its current argument is not preserved.
42
Appellate Case: 20-6057 Document: 010111036569 Date Filed: 04/23/2024 Page: 43
relief granted under the state-law claims. Abitron, 600 U.S. at 446 n.9. This
argument is waived.
CONCLUSION
Beyond the Lanham Act ruling, we see no conflict between our prior
opinion in this case and the Supreme Court’s decision in Abitron. Accordingly,
all other aspects of our prior opinion apart from its Lanham Act discussion are
reinstated. We also affirm the district court’s final judgment on the state-law
breach-of-contract and tort claims. As for Hetronic’s federal claims under the
Lanham Act and the associated remedies, we remand the case to the district
court for further proceedings consistent with this revised opinion.
43