Extraterritoriality
Presumption Against Extraterritoriality
Conflict of Laws
Foreign Law
International Relations
Trademark Infringement
Circuit Split
This case requires us to decide the foreign reach of 15 U.S.C. §1114(1)(a) and §1125(a)(1), two provisions of the Lanham Act that prohibit trademark infringement. Applying the presumption against extraterritoriality, we hold that these provisions are not extraterritorial and that they extend only to claims where the claimed infringing use in commerce is domestic.
§1114(1)(a) prohibits the unauthorized “use in commerce of any reproduction . . . of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services” when “such use is likely to cause confusion.”
§1125(a)(1) prohibits the “use in commerce” of a protected mark, whether registered or not, that “is likely to cause confusion.”
We granted certiorari to resolve a Circuit split over the extraterritorial reach of the Lanham Act. 598 U.S. ––– (2023).
“It is a `longstanding principle of American law “that legislation of Congress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States.” '” Morrison v. National Australia Bank Ltd., 561 U.S. 247, 255 (2010). We have repeatedly explained that this principle, which we call the presumption against extraterritoriality, refers to a “presumption against application to conduct in the territory of another sovereign.” Kiobel v. Royal Dutch Petroleum Co., 569 U.S. 108, 119 (2013) (citing Morrison, 561 U.S., at 265). In other words, exclusively “`foreign conduct is generally the domain of foreign law.'” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 455 (2007) (alteration omitted). The presumption “serves to avoid the international discord that can result when U.S. law is applied to conduct in foreign countries” and reflects the “`commonsense notion that Congress generally legislates with domestic concerns in mind.'” RJR Nabisco, Inc. v. European Community, 579 U.S. 325, 335–336 (2016).
Applying the presumption against extraterritoriality involves “a two-step framework.” Id., at 337. At step one, we determine whether a provision is extraterritorial, and that determination turns on whether “Congress has affirmatively and unmistakably instructed that” the provision at issue should “apply to foreign conduct.” Id., at 335, 337; accord, Kiobel, 569 U.S., at 117 (asking whether Congress “intends federal law to apply to conduct occurring abroad”); Nestlé USA, Inc. v. Doe, 593 U.S. –––, ––– (2021). If Congress has provided an unmistakable instruction that the provision is extraterritorial, then claims alleging exclusively foreign conduct may proceed, subject to “the limits Congress has (or has not) imposed on the statute's foreign application.” RJR Nabisco, 579 U.S., at 337–338.
If a provision is not extraterritorial, we move to step two, which resolves whether the suit seeks a (permissible) domestic or (impermissible) foreign application of the provision. To make that determination, courts must start by identifying the “` “focus” of congressional concern' ” underlying the provision at issue. Id., at 336. “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 LLC v. ION Geophysical Corp., 585 U.S. –––, ––– (2018) (alterations omitted).
Step two does not end with identifying statutory focus. We have repeatedly and explicitly held that courts must “identify `the statute's “focus” ' and ask whether the conduct relevant to that focus occurred in United States territory.” Id., at ––– (emphasis added); accord, e.g., RJR Nabisco, 579 U.S., at 337. Thus, to prove that a claim involves a domestic application of a statute, “plaintiffs must establish that `the conduct relevant to the statute's focus occurred in the United States.'” Nestlé, 593 U.S., at ––– – ––– (emphasis added); see, e.g., WesternGeco, 585 U.S., at ––––––– (holding that a claim was a domestic application of the Patent Act because the infringing acts—the conduct relevant to the focus of the provisions at issue—were committed in the United States); Morrison, 561 U.S., at 266–267, 271–273 (concluding that a claim was a foreign application of the Securities and Exchange Act because the “purchase-and-sale transactions” at issue occurred outside of the United States).
Step two is designed to apply the presumption against extraterritoriality to claims that involve both domestic and foreign activity, separating the activity that matters from the activity that does not. After all, we have long recognized that the presumption would be meaningless if any domestic conduct could defeat it. See Morrison, 561 U.S., at 266. Thus, “`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, `even if other conduct occurred abroad.'” WesternGeco, 585 U.S., at ––– (quoting RJR Nabisco, 579 U.S., at 337). And “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.'” WesternGeco, 585 U.S., at ––– (quoting RJR Nabisco, 579 U.S., at 337). Of course, if all the conduct “`regarding the violations `took place outside the United States,'” then courts do “not need to determine . . . the statute's `focus'” at all. Id., at 337. In that circumstance, there would be no domestic conduct that could be relevant to any focus, so the focus test has no filtering role to play. See, e.g., Nestlé, 593 U.S., at –––; Kiobel, 569 U.S., at 124.
With this well-established framework in mind, the first question is whether the relevant provisions of the Lanham Act, see §§ 1114(1)(a), 1125(a)(1), provide “a clear, affirmative indication” that they apply extraterritorially, RJR Nabisco, 579 U.S., at 337. They do not.
(…) When applying the presumption, “`we have repeatedly held that even statutes . . . that expressly refer to “foreign commerce” '” when defining “commerce” are not extraterritorial. Morrison, 561 U.S., at 262–263; see also RJR Nabisco, 579 U.S., at 344.
See Kiobel, 569 U. S., at 118 (“It is well established that generic terms like `any' or `every' do not rebut the presumption against extraterritoriality”). And the mere fact that the Lanham Act contains a substantively similar definition that departs from the so-called “boilerplate” definitions used in other statutes cannot justify a different conclusion either.
In other words, Congress proscribed the use of a mark in commerce under certain conditions. This conduct, to be sure, must create a sufficient risk of confusion, but confusion is not a separate requirement; rather, it is simply a necessary characteristic of an offending use.5 Because Congress has premised liability on a specific action (a particular sort of use in commerce), that specific action would be the conduct relevant to any focus on offer today. See, e.g., WesternGeco, 585 U.S., at ––– – –––.
In sum, as this case comes to us, “use in commerce” is the conduct relevant to any potential focus of §1114(1)(a) and §1125(a)(1) because Congress deemed a violation of either provision to occur each time a mark is used in commerce in the way Congress described, with no need for any actual confusion. Under step two of our extraterritoriality standard, then, “use in commerce” provides the dividing line between foreign and domestic applications of these Lanham Act provisions.
5 Both provisions “refer to a `likelihood' of harm, rather than a completed harm.” Moseley v. V Secret Catalogue, Inc., 537 U.S. 418, 432 (2003). In other words, “actual confusion is not necessary in order to prove infringement.” Restatement (Third) of Unfair Competition §23, at 250, Comment b (1993); accord, id., §23, at 251, Comment d; 4 J. McCarthy, Trademarks and Unfair Competition § 23:12, at 23–157 (5th ed. 2023) (McCarthy) (“ `It is black letter law that actual confusion need not be shown to prevail under the Lanham Act, since . . . the Act requires only a likelihood of confusion' ”). Instead, the provisions treat confusion as a means to limit liability to only certain “bona fide use[s] of a mark in the ordinary course of trade.” 15 U. S. C. § 1127 (defining “use in commerce”); see Patent and Trademark Office v. Booking.com B. V., 591 U.S. –––, ––– (2020) (“A competitor's use does not infringe a mark [under §1114(1)(a) and § 1125(a)(1)] unless it is likely to confuse consumers”).
When a claim involves both domestic and foreign activity, the question is whether “`the conduct relevant to the statute's focus occurred in the United States.'” Nestlé, 593 U.S., at ––– – –––. If that “`conduct . . . occurred in the United States, then the case involves a permissible domestic application' of the statute `even if other conduct occurred abroad.’” WesternGeco, 585 U.S., at –––. But “if the conduct relevant to the focus occurred in a foreign country, then the case involves an impermissible extraterritorial application regardless of any other conduct that occurred in U.S. territory.” RJR Nabisco, 579 U.S., at 337; see, e.g., WesternGeco, 585 U.S., at –––; Nestlé, 593 U.S., at ––– – –––; Morrison, 561 U.S., at 266–267, 271–273.
In nearly all countries, including the United States, trademark law is territorial—i.e., “a trademark is recognized as having a separate existence in each sovereign territory in which it is registered or legally recognized as a mark.” 5 McCarthy §29:1, at 29–4 to 29–5. Thus, each country is empowered to grant trademark rights and police infringement within its borders. See, e.g., ibid.; Ingenohl v. Olsen & Co., 273 U.S. 541, 544 (1927); A. Bourjois & Co. v. Katzel, 260 U.S. 689, 692 (1923).
This principle has long been enshrined in international law. Under the Paris Convention for the Protection of Industrial Property, July 14, 1967, 21 U. S. T. 1583, T. I. A. S. No. 6923, a “mark duly registered in a country of the Union shall be regarded as independent of marks registered in other countries of the Union,” and the seizure of infringing goods is authorized “on importation” to a country “where such mark or trade name is entitled to legal protection.” Arts. 6(3), 9(1), id., at 1639, 1647.
Because of the territorial nature of trademarks, the “probability of incompatibility with the applicable laws of other counties is so obvious that if Congress intended such foreign application `it would have addressed the subject of conflicts with foreign laws and procedures.'” Morrison, 561 U.S., at 269.
Secondary Sources: McCarthy, Trademarks and Unfair Competition § 23:12, at 23–157 (5th ed. 2023).
(U.S. Supreme Court, June 29, 2023, Abitron Austria GmbH v. Hetronic Int’l, Inc., Docket No. 21-1043, 600 U.S. 412, J. Alito)
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