Extraterritorial Reach of Lanham Act and Protection of IP Rights: Pursuing Foreign Infringers

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, April 3, 2018

Recorded event now available

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Program Materials

This CLE webinar will guide IP counsel on the reach of the Lanham Act’s extraterritorial provision. The panel will examine how the courts have treated these cases and offer insights into how IP owners can use the Lanham Act to protect their IP rights.

Description

As companies expand their reach outside the U.S. border, there are questions about the circumstances for applying the Lanham Act to conduct outside the U.S. The Lanham Act’s extraterritorial reach gives IP rights holders a path to pursue alleged foreign infringers in U.S. courts.

The Supreme Court denied certiorari in Belmora L.L.C. v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied (U.S. Feb. 27, 2017). The Court thus left in place the Fourth Circuit’s decision that a plaintiff who owns a trademark outside of the U.S. has standing to sue under Lanham Act §§14(3) and 43(a) for the unauthorized use of a foreign brand that the plaintiff never used in the United States. Foreign trademark owners may assert standing under the Lanham Act without proving ownership or use of a trademark in U.S. commerce.

District courts approach the application of the Lanham Act differently. In International Diamond Importers Inc. d/b/a I.D.I. Design Inc. v. Med Art Inc., (S.D.N.Y. 2017), the district court examined the extraterritorial applicability under the three-factor test articulated in Vanity Fair Mills Inc. v. T. Eaton Co. (2d Cir. 1956). The district court in Blumenthal Distributing Inc. d/b/a Office Star v. Herman Miller Inc. (C.D. Cal. 2017) applied a different three-part test. Under the third part, the court provided seven factors to consider when assessing the application.

Listen as our authoritative panel of IP attorneys discusses the Lanham Act’s extraterritorial reach and how the courts have treated these cases. The presenters will also discuss how IP owners can use the Lanham Act to protect those rights.

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Outline

  1. Lanham Act’s extraterritorial reach
  2. Court treatment
    1. Blumenthal Distributing Inc. d/b/a Office Star v. Herman Miller Inc., 2017 WL 3271706 (C.D. Cal. Aug.1, 2017)
    2. Int’l Diamond Importers Inc. d/b/a I.D.I. Design Inc. v. Med Art Inc., 2017 WL 3271706 (S.D.N.Y. June 29, 2017)
    3. Belmora L.L.C. v. Bayer Consumer Care AG, 819 F.3d 697 (4th Cir. 2016), cert. denied, 2017 WL 737826 (U.S. Feb. 27, 2017)
    4. Trader Joe’s Co. v. Hallatt, 835 F.3d 960 (9th Cir. 2016)
  3. Use of the Lanham Act to protect IP rights

Benefits

The panel will review these and other key issues:

  • How are U.S. courts addressing cases in which U.S. registrants seek relief that would require the extraterritorial application of the Lanham Act?
  • Does the extraterritorial application of the Lanham Act implicate the federal court’s subject matter jurisdiction?
  • Does the extraterritorial application of the Lanham Act run contrary to the fundamental “use in commerce” requirement?

Faculty

Bannigan, Megan
Megan K. Bannigan

Counsel
Debevoise & Plimpton

Ms. Bannigan specializes in trademark, copyright, false advertising, rights of publicity, licensing and other...  |  Read More

Rettew, Douglas
Douglas A. Rettew

Partner
Finnegan Henderson Farabow Garrett & Dunner

Mr. Rettew leads the firm’s Trademark and Copyright Group. He focuses his practice on trademark, false...  |  Read More

Robins, Lawrence
Lawrence Robins

Partner
FisherBroyles

Mr. Robins represents clients on a variety of intellectual property matters, with a focus on: the resolution of...  |  Read More

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