## Facts

- Hetronic International, Inc., a U.S. company, manufactures radio remote controls and sells them worldwide.
- Hetronic licensed foreign entities (later reorganized into Abitron Austria GmbH and related entities) to manufacture and distribute Hetronic products primarily in Europe.
- After an intellectual-property dispute, Abitron began manufacturing products identical to Hetronic’s and selling them under Hetronic’s brand, mostly in Europe, using Hetronic’s trademarks.
- Hetronic terminated the relationship, but Abitron continued selling Hetronic-branded products and earned tens of millions of dollars, largely from European sales.
- Hetronic sued in federal court under the Lanham Act’s registered-mark infringement provision, 15 U.S.C. § 1114(1)(a), and false designation of origin provision, 15 U.S.C. § 1125(a)(1), seeking worldwide damages and injunctive relief, including for foreign sales that did not enter the United States.

## Issues

1. Whether 15 U.S.C. § 1114(1)(a) and 15 U.S.C. § 1125(a)(1) apply extraterritorially to trademark uses and sales occurring abroad.
2. If the provisions are not extraterritorial, what domestic connection is required for a permissible domestic application (i.e., what conduct is relevant to the statutes’ “focus”).

## Decision

- The Supreme Court held that § 1114(1)(a) and § 1125(a)(1) are not extraterritorial.
- The Court held that the provisions extend only to claims where the infringing “use in commerce” is domestic.
- The Court rejected the Tenth Circuit’s approach that allowed liability for foreign conduct based on “substantial effects” on U.S. commerce.
- The Court vacated the judgment to the extent it allowed recovery for purely foreign sales and remanded for determination of which alleged “uses in commerce” were domestic and thus actionable.
- Justice Jackson concurred, emphasizing that whether a “use in commerce” is domestic is a fact-specific inquiry not limited to where a mark is first affixed or where an initial sale occurs.
- Justice Sotomayor concurred in the judgment, agreeing the Tenth Circuit used the wrong test but favoring a rule tied to likely consumer confusion in the United States.

## Legal Principles

- Federal statutes are presumed to apply only domestically unless Congress provides a clear, affirmative indication of extraterritorial application.
- When a statute lacks such an indication, courts identify the statute’s “focus” and ask whether the conduct relevant to that focus occurred in the United States.
- For §§ 1114(1)(a) and 1125(a)(1), the statutory focus is the infringing “use in commerce” of a mark, not downstream effects such as consumer confusion or reputational harm considered in the abstract.
- Liability under these Lanham Act provisions is limited to domestic infringing “uses in commerce,” requiring case-specific identification of which challenged uses occurred in the United States.

## Conclusion

The Court limited Lanham Act trademark-infringement liability under §§ 1114(1)(a) and 1125(a)(1) to domestic infringing “use in commerce,” vacating awards based on purely foreign sales and remanding to determine which specific uses were domestic.


Abitron Austria GmbH v. Hetronic Int’l, Inc., 600 U.S. 412 (2023)