## Facts

- General Motors Corporation (GM) and its wholly owned German subsidiary, Adam Opel AG (Opel), sued Volkswagen AG (VW), Volkswagen of America, Inc., and former GM/Opel executives who left for VW in March 1993.
- Plaintiffs alleged the departing executives removed boxes of confidential GM/Opel documents containing sourcing strategies, supplier cost data, and long-term purchasing plans.
- Plaintiffs alleged VW knowingly received and used the materials to gain a competitive advantage.
- The complaint included, among other claims, (1) a Lanham Act unfair-competition claim relying in part on Lanham Act § 44 and the Paris Convention (Count 3) and (2) a Copyright Act infringement claim alleging unauthorized copying in the United States with further exploitation abroad, including unregistered foreign works owned by Opel (Count 4).
- Defendants moved to dismiss Counts 3 and 4 under Rule 12(b)(6), arguing (among other points) that § 44 does not incorporate the Paris Convention’s substantive unfair-competition provisions, and that the Copyright Act is territorial and does not protect or reach the alleged conduct, particularly as to Opel’s unregistered works.

## Issues

1. Whether Lanham Act § 44 incorporates substantive protections from the Paris Convention (including Article 10bis) such that plaintiffs may plead a federal unfair-competition claim based on alleged misuse of confidential business information.
2. Whether plaintiffs stated a Copyright Act claim where alleged infringing acts occurred in part in the United States and in part abroad.
3. Whether Opel could sue in U.S. court for infringement of unregistered foreign works based on treaty-based protection, including the Berne Convention.

## Decision

- The court denied defendants’ motions to dismiss Counts 3 and 4.
- The court held that, at the pleading stage, Lanham Act § 44 could support an unfair-competition claim informed by the Paris Convention’s substantive protections.
- The court held plaintiffs adequately alleged domestic infringing acts sufficient to bring the claim within the territorial scope of the Copyright Act.
- The court held Opel could assert U.S. copyright claims for qualifying foreign works without U.S. registration formalities.

## Legal Principles

- On a Rule 12(b)(6) motion, the court tests legal sufficiency of the pleaded claims and does not resolve factual disputes such as authorization, secrecy, or where all conduct ultimately occurred.
- Lanham Act § 44(h)’s guarantee of “effective protection against unfair competition” may be read to do more than provide national treatment and may permit claims reflecting substantive obligations under the Paris Convention, including unfair-competition norms in Article 10bis.
- U.S. copyright law is generally territorial, but allegations of infringing acts occurring in the United States can state a claim even if later distribution or use occurs abroad.
- Works qualifying for protection through Berne-based implementation may be protected in U.S. courts without compliance with registration formalities as a prerequisite to asserting rights in qualifying foreign works.

## Conclusion

The court allowed GM and Opel to proceed on a Lanham Act § 44 unfair-competition theory grounded in Paris Convention protections and on Copyright Act claims based on alleged U.S. copying, including claims involving Opel’s qualifying foreign works not registered in the United States.


Gen. Motors Corp. v. Ignacio Lopez de Arriortua, 948 F. Supp. 684 (E.D. Mich. 1996)