Abitron Austria GMBH v. Hetronic International, Inc.

Hetronic International, Inc. (Hetronic) (plaintiff) was a United States company that manufactured remote controls for construction equipment and sold those remotes in over 45 countries. The remotes had a distinctive black-and-yellow color scheme that differentiated Hetronic’s products from competitors’ products. Abitron Austria GMBH and five other foreign parties (collectively, Abitron) (defendants) were originally licensed distributors of Hetronic products but later began producing and selling their own Hetronic-branded products. Abitron sold most of its products in Europe but made some direct sales into the United States. Hetronic filed suit against Abitron in a federal district court, alleging trademark infringement violating two provisions of the federal Lanham Act, both of which prohibited the use of a protected trademark in commerce if the use was likely to cause confusion. The district court held in Hetronic’s favor, issuing an injunction preventing Abitron from using Hetronic’s marks anywhere in the world and awarding Hetronic approximately $96 million in damages for Abitron’s domestic and foreign sales of Hetronic-branded products. The court of appeals narrowed the injunction to certain countries but otherwise affirmed the district court’s judgment. The United States Supreme Court granted certiorari to address a circuit split regarding whether the Lanham Act was extraterritorial, meaning whether it applied to conduct occurring outside the United States.