Amicus Curiae Brief — Abitron Austria GmbH, et al., Petitioners v. Hetronic International, Inc.

No. 21-1043

IN THE

Supreme Court of the United States

__________

ABITRON AUSTRIA GMBH, ET AL.,

Petitioners,

v.

HETRONIC INTERNATIONAL, INC.,

Respondent.

__________

On Writ of Certiorari

to the United States Court of Appeals

for the Tenth Circuit

__________

BRIEF OF PROFESSOR WILLIAM S. DODGE

AS AMICUS CURIAE

IN SUPPORT OF NEITHER PARTY

__________

December 27, 2022

MICHAEL R. DREEBEN

Counsel of Record

GEORGETOWN UNIVERSITY LAW

CENTER

600 New Jersey Avenue, N.W.

Washington, D.C. 20001

(202) 661-6609

(mrd28@georgetown.edu)

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES ...................................... iii

INTEREST OF AMICUS CURIAE ............................ 1

SUMMARY OF ARGUMENT .................................... 2

ARGUMENT ............................................................... 5

I. THE COURT’S CURRENT PRESUMPTION AGAINST EXTRATERRITORIALITY SHOULD BE APPLIED TO

DETERMINE THE GEOGRAPHIC

SCOPE OF THE LANHAM ACT .................... 5

A. The Nature of the Judicial Process

Justifies Applying the Current Presumption Retroactively to Earlier

Enacted Statutes ........................................ 6

B. Stare Decisis Does Not Preclude

Applying the Current Presumption

in This Case .............................................. 11

II. THE LANHAM ACT APPLIES TO

USE OF A TRADEMARK ABROAD

THAT IS LIKELY TO CAUSE CONFUSION IN THE UNITED STATES ............ 14

A. Sections 32(1)(a) and 43(a)(1)(A)

Have No Clear Indication of

Geographic Scope ...................................... 15

B. The Focus of Sections 32(1)(a) and

43(a)(1)(A) Is Consumer Confusion .......... 16

C. When Use of a Trademark Abroad

Is Likely To Cause Consumer

Confusion in the United States,

Conduct in the United States Is Not

Required .................................................... 20

ii

1. The Court Has Required Domestic Conduct When the Focus of

the Provision Is Conduct ..................... 21

2. The Court Has Not Required

Domestic Conduct When the

Focus of the Provision Is Something Other Than Conduct .................. 24

3. When the Focus of a Provision Is

Something Other Than Conduct,

a Domestic-Conduct Requirement

Would Frustrate Congressional

Intent ................................................... 26

CONCLUSION.......................................................... 28

iii

TABLE OF AUTHORITIES

Page

CASES

Absolute Activist Value Master Fund Ltd. v.

Ficeto, 677 F.3d 60 (2d Cir. 2012) ....................... 25

Am. Banana Co. v. United Fruit Co., 213 U.S.

347 (1909) ................................................ 6-7, 10-11

Am. Rice, Inc. v. Arkansas Rice Growers

Co-op. Ass’n, 701 F.2d 408 (5th Cir. 1983) ......... 18

Am. Trucking Ass’ns, Inc. v. Smith, 496 U.S.

167 (1990) ............................................................ 10

Arbaugh v. Y&H Corp., 546 U.S. 500 (2006) ............. 9

EEOC v. Arabian Am. Oil Co., 499 U.S. 244

(1991) .............................................. 7, 10, 12, 15-16

Foley Bros. v. Filardo, 336 U.S. 281 (1949) ............ 6-7

Ford v. United States, 273 U.S. 593 (1927)................ 7

Hartford Fire Ins. Co. v. California, 509 U.S.

764 (1993) .......................................................12, 28

John R. Sand & Gravel Co. v. United States,

552 U.S. 130 (2008) ............................................. 12

Kiobel v. Royal Dutch Petroleum Co., 569 U.S.

108 (2013) ....................................................... 21-22

Kisor v. Wilkie, 139 S. Ct. 2400 (2019) ................ 12-13

Love v. Assoc. Newspapers, Ltd., 611 F.3d 601

(9th Cir. 2010)...................................................... 17

McBee v. Delica Co., 417 F.3d 107 (1st Cir.

2005)..................................................................... 17

Morrison v. National Australia Bank Ltd.,

561 U.S. 247 (2010) ............................... 4, 8-10, 1417, 20-22, 24-27

iv

Moseley v. V Secret Catalogue, Inc., 537 U.S.

418 (2003) ............................................................ 17

N.Y. Cent. R.R. Co. v. Chisholm, 268 U.S. 29

(1925) ..................................................................... 7

Nestlé USA, Inc. v. Doe, 141 S. Ct. 1931

(2021) ........................................................ 20, 22-23

Patterson v. McLean Credit Union, 491 U.S.

164 (1989) ............................................................ 12

Qualitex Co. v. Jacobson Prods. Co., 514 U.S.

159 (1995) ............................................................ 17

RJR Nabisco, Inc. v. European Cmty., 579 U.S.

325 (2016) .......................................... 2-5, 8, 10, 1416, 20-22, 24-28

Sandberg v. McDonald, 248 U.S. 185 (1918) ............. 7

Sealed Case, In re, 936 F.3d 582 (D.C. Cir.

2019)..................................................................... 19

Smith v. United States, 507 U.S. 197 (1993) ........... 28

Steele v. Bulova Watch Co., 344 U.S. 280

(1952) .................................................... 2-3, 5-7, 1113, 15, 20, 28

The Apollon, 22 U.S. (9 Wheat.) 362 (1824) ............... 6

Tire Eng’g & Distrib., LLC v. Shandong

Linglong Rubber Co., 682 F.3d 292 (4th

Cir. 2012) ............................................................. 18

United States v. Sisal Sales Corp., 274 U.S.

268 (1927) .............................................................. 7

WesternGeco LLC v. ION Geophysical Corp.,

138 S. Ct. 2129 (2018) .............................. 19-20, 23

v

CONSTITUTION,

AND RULES

TREATIES,

STATUTES,

U.S. Const. art. I, § 8, cl. 3 (Commerce Clause) ......... 19

Paris Convention for the Protection of Industrial Property, Mar. 20, 1883, as last

revised at Stockholm, July 14, 1967, 21

U.S.T. 1583, 828 U.N.T.S. 305 ............................ 18

Act of Aug. 1, 1892, ch. 352, 27 Stat. 340,

as amended (Eight Hour law) ............................... 7

Alien Tort Statute, 28 U.S.C. § 1350................... 21-23

Civil Rights Act of 1964, tit. VII, 42 U.S.C.

§ 2000e et seq. ..................................................... 10

Employers’ Liability Act, ch. 149, 35 Stat. 65

(1908), codified as amended at 45 U.S.C.

§ 51 et seq. ............................................................. 7

Lanham Act, 15 U.S.C. § 1051 et seq. .... 1-5, 7, 10-11,

13-15, 17-19, 27-28

§ 32(1)(a), 15 U.S.C. § 1114(1)(a) .............. 4, 15-17,

20-21, 27

§ 43(a)(1)(A), 15 U.S.C. § 1125(a)(1)(A) .... 4, 15-17,

20-21, 28

§ 45, 15 U.S.C. § 1127 ...............................15, 17, 19

National Prohibition Act, ch. 85, 41 Stat. 305

(1919) ..................................................................... 7

Patent Act (35 U.S.C.) .........................................19, 23

35 U.S.C. § 271(f )(2) .......................................19, 23

35 U.S.C. § 284 ...............................................19, 23

Racketeer Influenced and Corrupt Organizations Act, 18 U.S.C. § 1961 et seq. ..................8, 10,

20, 24-26

vi

18 U.S.C. § 1964(c) ......................................... 25-26

Seamen’s Act, ch. 153, 38 Stat. 1164 (1915) .............. 7

Securities Exchange Act of 1934, 15 U.S.C.

§ 78a et seq. ............................................... 9-10, 16,

24, 27-28

§ 10(b), 15 U.S.C. § 78j(b) ..........................9, 16, 20,

24, 26, 28

Sherman Act, 15 U.S.C. § 1 et seq. ...................... 7, 12

15 U.S.C. § 78dd-3(a) .................................................. 8

18 U.S.C. § 1837(2) ..................................................... 8

Sup. Ct. R.:

Rule 37.3(a) ............................................................ 1

Rule 37.6 ................................................................ 1

OTHER MATERIALS

Amy Coney Barrett, Statutory Stare Decisis

in the Courts of Appeals, 73 Geo. Wash. L.

Rev. 317 (2005) .................................................... 12

William Baude & Stephen E. Sachs, The Law

of Interpretation, 130 Harv. L. Rev. 1079

(2017) ..................................................................... 9

Curtis A. Bradley, Territorial Intellectual

Property Rights in an Age of Globalism,

37 Va. J. Int’l L. 505 (1997) ................................. 18

Brief for the United States as Amicus Curiae,

Abitron Austria GmbH v. Hetronic Int’l,

Inc., No. 21-1043 (U.S. Sept. 23, 2022).......... 18, 27

vii

Walter J. Derenberg, Territorial Scope and

Situs of Trademarks and Good Will,

47 Va. L. Rev. 733 (1961) .................................... 18

William S. Dodge:

Chevron Deference and Extraterritorial

Regulation, 95 N.C. L. Rev. 911 (2017) ................ 1

International Comity in American Law,

115 Colum. L. Rev. 2071 (2015) ............................ 6

Presumptions Against Extraterritoriality

in State Law, 53 U.C. Davis L. Rev. 1389

(2020) ..................................................................... 1

The New Presumption Against Extraterritoriality, 133 Harv. L. Rev. 1582 (2020) ....... 1, 6-7,

10-11, 24

Philip P. Frickey, Interpretive-Regime Change,

38 Loy. L.A. L. Rev. 1971 (2005) ........................... 9

Abbe R. Gluck, Intersystemic Statutory Interpretation: Methodology as “Law” and the

Erie Doctrine, 120 Yale L.J. 1898 (2011) .............. 9

Abbe R. Gluck & Lisa Schultz Bressman,

Statutory Interpretation from the Inside—

An Empirical Study of Congressional

Drafting, Delegation, and the Canons:

Part I, 65 Stan. L. Rev. 901 (2013) ..................... 11

John H. Knox, A Presumption Against Extrajurisdictionality, 104 Am. J. Int’l L. 351

(2010) ..................................................................... 6

Randy J. Kozel, Statutory Interpretation,

Administrative Deference, and the Law of

Stare Decisis, 97 Tex. L. Rev. 1125 (2019) .... 12-13

John F. Manning, The Absurdity Doctrine,

116 Harv. L. Rev. 2387 (2003) ............................ 10

viii

Nina A. Mendelson, Change, Creation, and

Unpredictability in Statutory Interpretation: Interpretive Canon Use in the Roberts

Court’s First Decade, 117 Mich. L. Rev. 71

(2018) ..................................................................... 9

Petitioners’ Supplemental Reply Brief, Kiobel

v. Royal Dutch Petroleum Co., 569 U.S. 108

(2013) (No. 10-1491 (U.S. Aug. 31, 2012)) .......... 22

Restatement (Fourth) of the Foreign Relations

Law of the United States (Am. L. Inst.

2018)........................................................ 1, 8, 26-27

Jonathan R. Siegel, The Polymorphic Principle and the Judicial Role in Statutory

Interpretation, 84 Tex. L. Rev. 339 (2005) .......... 13

Brian G. Slocum, Overlooked Temporal Issues

in Statutory Interpretation, 81 Temp. L. Rev.

635 (2008) ............................................................ 10

Supplemental Brief for Respondents, Kiobel v.

Royal Dutch Petroleum Co., 569 U.S. 108

(2013) (No. 10-1491 (U.S. Aug. 1, 2012)) ............ 22

Adrian Vermeule, The Cycles of Statutory

Interpretation, 68 U. Chi. L. Rev. 149

(2001) ..................................................................... 9

INTEREST OF AMICUS CURIAE 1

Amicus William S. Dodge is Martin Luther King, Jr.

Professor of Law and John D. Ayer Chair in Business

Law at the University of California, Davis, School

of Law. He served as Counselor on International

Law to the Legal Adviser at the U.S. Department of

State from 2011 to 2012 and as Co-Reporter for the

American Law Institute’s Restatement (Fourth) of the

Foreign Relations Law of the United States (Am. L.

Inst. 2018) (Restatement (Fourth)) from 2012 to 2018.

Professor Dodge was responsible for drafting Restatement (Fourth) § 404, which restates the presumption

against extraterritoriality. He has written extensively

about the history of the presumption and its current

application. See, e.g., William S. Dodge, The New

Presumption Against Extraterritoriality, 133 Harv. L.

Rev. 1582 (2020); William S. Dodge, Presumptions

Against Extraterritoriality in State Law, 53 U.C.

Davis L. Rev. 1389 (2020); William S. Dodge, Chevron

Deference and Extraterritorial Regulation, 95 N.C. L.

Rev. 911 (2017). Amicus believes that his expertise

can assist the Court’s consideration of whether and

how the current presumption against extraterritoriality applies to the Lanham Act.

1 Pursuant to Supreme Court Rule 37.6, counsel for amicus

represents that he authored this brief in its entirety and that

none of the parties or their counsel, nor any other person or

entity other than amicus or his counsel, made a contribution

intended to fund the preparation or submission of this brief.

Pursuant to Rule 37.3(a), counsel for amicus also represents that

all parties have consented to the filing of this brief.

2

SUMMARY OF ARGUMENT

In recent years, this Court has substantially revised

the presumption against extraterritoriality—i.e., the

interpretive principle that statutes do not apply extraterritorially absent a clear and affirmative indication.

It has also clarified the analysis for determining when

an application is domestic, even when conduct occurs

abroad. See, e.g., RJR Nabisco, Inc. v. European

Cmty., 579 U.S. 325, 337 (2016). That framework

should be applied to resolve the geographic scope and

application of the Lanham Act, even though the Act

was passed when a different version of the presumption prevailed. And under the current framework, the

Lanham Act does not apply extraterritorially. Nevertheless, because the domestic “focus” of the Act is consumer confusion, the Act can apply to fact patterns—

including some in this case—that involve use of a

trademark abroad that is likely to result in consumer

confusion here.

Critically, this Court should clarify that a statute’s

domestic “focus” need not be conduct, and, when it is

not, no additional requirement exists that the defendant’s conduct occur here. Language in RJR Nabisco

suggesting that application of a provision may be

considered domestic only if “conduct relevant to

the statute’s focus occurred in the United States,”

579 U.S. at 337, is dictum, unsupported by the Court’s

cases, and a potential source of confusion. Amicus suggests that the Court eliminate the “conduct relevant

to” language from its statement of the presumption

against extraterritoriality to avoid potential frustration of Congress’s intent.

I. Congress passed the Lanham Act in 1946, when a

different version of the presumption against extraterritoriality prevailed, largely depending on where

the defendant’s conduct occurred. In Steele v. Bulova

3

Watch Co., 344 U.S. 280 (1952), the Court interpreted

the geographic scope of the Act in a way that varied

from the then-prevailing presumption by relying in

part on effects in the United States rather than on the

location of conduct. Using a multifactored analysis,

the Court held that the Act applied to a U.S. citizen’s

use of a U.S. trademark abroad on products that

reached the United States and caused consumer

confusion here. Id. at 285.

The Court should apply the current presumption

against extraterritoriality to determine the geographic

scope of the Lanham Act in this case. Many canons of

statutory interpretation have changed over time, yet

the Court has consistently applied existing canons of

interpretation notwithstanding a statute’s earlier

enactment. That accords with the judicial function:

courts cannot announce new interpretive frameworks

only for prospective application. Rather, courts apply

current interpretive modes in construing earlier

enacted laws.

The Court is likewise free to apply its current

two-step framework, rather than the approach used

in Steele. Stare decisis principles apply to the holding

of a case and not to the interpretive methodology used

to reach that holding. And Steele’s holding that the

Lanham Act can apply to the use of a U.S. trademark

abroad that likely causes confusion here is consistent

with the Court’s current mode of analysis. Specifically,

applying the Court’s “focus” analysis, foreign uses in

commerce may be reached under the Act when a likelihood of consumer confusion exists in the United

States—as Steele itself held.

II. Under the Court’s current “two-step framework,”

RJR Nabisco, 579 U.S. at 337, step one asks whether

there is a clear indication of the provision’s geographic

4

scope and, if there is not, step two proceeds by identifying its focus. The two Lanham Act provisions at

issue contain no clear indication of geographic scope.

The Court must therefore proceed to step two and

determine their focus.

Both provisions create liability for using a trademark in commerce only when such use “is likely to

cause confusion, or to cause mistake, or to deceive.”

15 U.S.C. §§ 1114(1)(a), 1125(a)(1)(A). Consumer

confusion and mistake, therefore, “are the objects

of the statute’s solicitude.” Morrison v. National

Australia Bank Ltd., 561 U.S. 247, 267 (2010). “Use

in commerce,” standing alone, is not the focus of

Congress’s concern—consumer confusion must be the

likely result. Accordingly, an application of the Act is

domestic when the provisions’ focus—likelihood of

consumer confusion—occurs in the United States,

even if the “use” of the trademark occurs elsewhere.

When use of a U.S. trademark abroad is likely to

cause consumer confusion in the United States, the

Lanham Act should apply without any additional

requirement that conduct occur here. Although the

Court stated in RJR Nabisco that a case “involves a

permissible domestic application” of a provision if

“conduct relevant to the statute’s focus occurred in

the United States,” 579 U.S. at 337, the Court has

required domestic conduct only when the focus of the

provision itself is conduct. When, in contrast, the focus

of a provision is something other than conduct, the

Court has required only that the focus occur in the

United States and has not imposed any additional

requirement of domestic conduct. Imposing a domesticconduct requirement in that situation would only frustrate congressional intent by excluding from the provision’s scope some of the cases that were “the ‘focus’

of congressional concern.” Morrison, 561 U.S. at 266.

5

That is true in this case. Because the focus of the

two Lanham Act provisions is consumer confusion,

those provisions should apply whenever use of a U.S.

trademark abroad is likely to cause consumer confusion in the United States, irrespective of whether

conduct relevant to such confusion occurs here as well.

Amicus suggests that the Court take this opportunity to eliminate the potentially misleading “conduct

relevant to” language from its statement of the

presumption against extraterritoriality. When the

focus of the provision is conduct, that language is

redundant; when the focus of the provision is not

conduct, that language may frustrate Congress’s

purposes. In the absence of a clear indication of a

provision’s geographic scope at step one, the Court

should simply require at step two that whatever is the

focus of the provision occur in the United States.

I.

ARGUMENT

THE COURT’S CURRENT PRESUMPTION AGAINST

EXTRATERRITORIALITY SHOULD BE APPLIED TO

DETERMINE THE GEOGRAPHIC SCOPE OF THE

LANHAM ACT.

The current presumption against extraterritoriality

applies to the Lanham Act in this case even though

Congress passed the Act in 1946, long before the Court

adopted its current “two-step framework.” RJR

Nabisco, Inc. v. European Cmty., 579 U.S. 325, 337

(2016). Canons of statutory interpretation often

change, and the presumption against extraterritoriality is no exception. This Court has routinely applied

changed canons, including the presumption against

extraterritoriality, retroactively to interpret earlier

enacted statutes. Similary, the fact that Steele v.

Bulova Watch Co., 344 U.S. 280 (1952), applied a

different presumption analysis does not preclude the

6

Court from applying its current presumption in this

case. Stare decisis principles apply to the holding of

the Court in Steele but not to its interpretive methodology.

A. The Nature of the Judicial Process Justifies

Applying the Current Presumption Retroactively

to Earlier Enacted Statutes.

1. The presumption against extraterritoriality has

changed repeatedly over the past two centuries. See

William S. Dodge, The New Presumption Against

Extraterritoriality, 133 Harv. L. Rev. 1582, 1589-1603

(2020). The presumption originally developed to avoid

violation of international-law rules governing jurisdiction to prescribe. See The Apollon, 22 U.S. (9 Wheat.)

362, 371 (1824) (applying presumption to avoid “violation of the law of nations”); see also John H. Knox,

A Presumption Against Extrajurisdictionality, 104

Am. J. Int’l L. 351, 361-78 (2010). When international

law evolved to permit greater extraterritorial regulation, the Court retooled the presumption as an instrument of international comity, explaining in American

Banana Co. v. United Fruit Co., 213 U.S. 347 (1909),

that for a nation to treat a defendant “according to

its own notions rather than those of the place where

he did the acts . . . would be an interference with the

authority of another sovereign, contrary to the comity

of nations.” Id. at 356.2 In Foley Bros. v. Filardo, 336

U.S. 281 (1949), the court added another rationale for

the presumption: “the assumption that Congress is

primarily concerned with domestic conditions.” Id. at

285.

2 On the distinction between international law and international comity, see William S. Dodge, International Comity in

American Law, 115 Colum. L. Rev. 2071, 2120-24 (2015).

7

Between American Banana in 1909 and Foley Bros.

in 1949, the Court applied the presumption against

extraterritoriality inconsistently. See Dodge, New

Presumption, at 1591-95. American Banana stated

“that the character of an act as lawful or unlawful

must be determined wholly by the law of the country

where the act is done.” 213 U.S. at 356. The Court

used this presumption to limit the geographic scope of

labor statutes. See, e.g., Foley Bros., 336 U.S. at 290

(Eight Hour Law); N.Y. Cent. R.R. Co. v. Chisholm,

268 U.S. 29, 31-32 (1925) (Employers’ Liability Act);

Sandberg v. McDonald, 248 U.S. 185, 195 (1918)

(Seamen’s Act). But it interpreted the Sherman Act

and the National Prohibition Act to apply to conduct

abroad based on harmful effects in the United States.

See United States v. Sisal Sales Corp., 274 U.S. 268

(1927) (Sherman Act); Ford v. United States, 273 U.S.

593 (1927) (National Prohibition Act).

In 1946, during this period of inconsistent application, Congress passed the Lanham Act. Steele then

applied the Act to foreign sales of infringing items

based in significant part on the harmful effects of the

defendant’s infringement in the United States. Rejecting the dissent’s objection, the Court distinguished

American Banana’s location-of-conduct approach.

Compare 344 U.S. at 286-87 with id. at 290-91 (Reed,

J., dissenting). Then, for nearly four decades, the presumption fell into disuse. See Dodge, New Presumption, at 1595-97. In 1991, the Court resurrected the

presumption in EEOC v. Arabian American Oil Co.,

499 U.S. 244 (1991) (Aramco). Like American Banana’s

version of the presumption, Aramco’s version turned

on the location of the conduct and was applied inconsistently between 1991 and 2010. See Dodge, New

Presumption, at 1597-1603.

8

2. In 2010, the Court adopted a new approach to the

presumption against extraterritoriality in Morrison v.

National Australia Bank Ltd., 561 U.S. 247 (2010).

In 2016, building on Morrison, the Court articulated

a “two-step framework” in RJR Nabisco, 579 U.S. at

337; see also Restatement (Fourth) § 404 (restating

presumption against extraterritoriality). Step one

asks whether there is a “clear” indication of a provision’s geographic scope. RJR Nabisco, 579 U.S. at

337.3

If there is no such indication, then step two asks

whether an application of a law that reaches foreign

activity is nonetheless domestic because the provision’s focus occurred in the United States. See id. The

Court has held that various provisions of federal law

are focused on things other than conduct. See, e.g., id.

at 354 (focus of private right of action under Racketeer

Influenced and Corrupt Organizations Act (RICO) is

injury to business or property); Morrison, 561 U.S. at

3 The Court has typically phrased step one as asking whether

there is a clear indication of extraterritoriality. See RJR Nabisco,

579 U.S. at 337 (“At the first step, we ask . . . whether the statute

gives a clear, affirmative indication that it applies extraterritorially.”); Morrison, 561 U.S. at 255 (“When a statute gives no

clear indication of an extraterritorial application, it has none.”).

But courts must also follow Congress’s direction when it clearly

indicates that a provision applies territorially. See, e.g., 15 U.S.C.

§ 78dd-3(a) (prohibiting bribery of foreign officials by a person

other than an issuer or a domestic concern “while in the territory

of the United States”); 18 U.S.C. § 1837(2) (applying economic

espionage statute if “an act in furtherance of the offense was

committed in the United States”). For this reason, a better

way to phrase the step-one inquiry is whether there is a clear

indication of a provision’s geographic scope.

9

266 (focus of § 10(b) of Securities Exchange Act of 1934

is transaction not fraudulent conduct).4

3. The presumption against extraterritoriality is not

the only interpretive canon that has changed over

time. See William Baude & Stephen E. Sachs, The

Law of Interpretation, 130 Harv. L. Rev. 1079, 1136

(2017) (“Interpretive rules can change over time.”);

Philip P. Frickey, Interpretive-Regime Change, 38 Loy.

L.A. L. Rev.1971, 1989-90 (2005) (observing that

“the particulars of even longstanding canons drift

over time” and that “the Court occasionally creates

new canons”); Abbe R. Gluck, Intersystemic Statutory

Interpretation: Methodology as “Law” and the Erie

Doctrine, 120 Yale L.J. 1898, 1988 (2011) (“The Supreme Court continues . . . to generate new interpretive rules.”); Adrian Vermeule, The Cycles of Statutory

Interpretation, 68 U. Chi. L. Rev. 149, 149 (2001)

(“[T]he Court has changed its practice, and sometimes

the formally stated rules, with remarkable frequency.”).

For example, the Court changed the interpretive rule

for determining whether statutory limitations should

be considered jurisdictional in 2006 by requiring a

clear statement to that effect. See Arbaugh v. Y&H

Corp., 546 U.S. 500, 515 (2006); see also Nina A.

Mendelson, Change, Creation, and Unpredictability in

Statutory Interpretation: Interpretive Canon Use in the

Roberts Court’s First Decade, 117 Mich. L. Rev. 71,

110-23 (2018) (discussing this and other examples).

When the Court changes a canon of interpretation

or articulates a new one, it routinely applies the new

canon retroactively to earlier enacted statutes. This is

true of the presumption against extraterritoriality.

4 Part II argues that domestic conduct is not additionally

required when the focus of a provision is something other than

conduct.

10

In RJR Nabisco, the Court acknowledged that it had

“honed [its] extraterritoriality jurisprudence in Morrison,” 579 U.S. at 353, yet applied its “current extraterritoriality doctrine,” id. at 354, to RICO, a statute

passed in 1970 at a time when (as noted above) the

Court had stopped using the presumption. See also

Morrison, 561 U.S. 247 (applying current presumption

retroactively to Securities Exchange Act of 1934);

Aramco, 499 U.S. 244 (applying revived, conductbased presumption retroactively to Title VII of the

Civil Rights Act of 1964).

Some have found retroactive application of changed

canons problematic. See, e.g., John F. Manning, The

Absurdity Doctrine, 116 Harv. L. Rev. 2387, 2474

n.318 (2003) (courts should “identify and apply the

conventions in effect at the time of a statute’s enactment”). But to announce new canons for prospective

application only would be “incompatible with the

judicial role, which is to say what the law is, not to

prescribe what it shall be.” Am. Trucking Ass’ns, Inc.

v. Smith, 496 U.S. 167, 201 (1990) (Scalia, J., concurring in the judgment); see also Dodge, New Presumption, at 1643 (a court cannot make law “for cases that

[a]re not before it”); Brian G. Slocum, Overlooked

Temporal Issues in Statutory Interpretation, 81 Temp.

L. Rev. 635, 644 (2008) (similar).

Applying a changed canon retroactively may

sometimes run counter to the prevailing interpretive

background when Congress acted. The version of the

presumption against extraterritoriality supposedly in

effect when the Lanham Act was passed in 1946 was

American Banana’s limitation of statutes to conduct

in the United States. See Am. Banana, 213 U.S. at

356. But the Court’s inconsistent application of the

presumption during the period when Congress passed

11

the Lanham Act—particularly when conduct abroad

caused harmful effects in the United States, see

Dodge, New Presumption, at 1591-95—undercuts the

extent to which Congress may have relied on American Banana’s presumption as a background principle

of interpretation, even assuming that Congress was

aware of it. See Abbe R. Gluck & Lisa Schultz Bressman, Statutory Interpretation from the Inside—An

Empirical Study of Congressional Drafting, Delegation, and the Canons: Part I, 65 Stan. L. Rev. 901, 1016

(2013) (finding that Congress is aware of some canons

of interpretation and unaware of others). Moreover, to

apply the American Banana presumption today to

limit the Lanham Act to use of trademarks in the

United States would violate the principle of statutory

stare decisis, discussed below, since Steele distinguished American Banana and held that the Act

applies to at least some trademark infringement

abroad. 344 U.S. at 288-89.

B. Stare Decisis Does Not Preclude Applying the

Current Presumption in This Case.

In Steele, the Court held that the Lanham Act

applies to trademark infringement outside the United

States, based on several factors including the U.S.

nationality of the defendant, his purchase of parts

in the United States, and the harmful effects on the

reputation of Bulova’s trademark in the United

States. 344 U.S. at 285-87. Based on this combination

of factors, the Court concluded “that petitioner’s activities, when viewed as a whole, fall within the jurisdictional scope of the Lanham Act.” Id. at 285. Steele’s

failure to articulate a clear test for the Act’s application is likely responsible for the proliferation in the

lower courts of different tests based on different combinations of factors. See Hetronic Int’l, Inc. v. Hetronic

12

Germany GmbH, 10 F.4th 1016, 1035-38 (10th Cir.

2021) (discussing various tests).

Petitioners suggest that the Court should overrule

Steele because “the Court has repudiated nearly every

aspect of [its] reasoning.” Pet. Br. 35. But stare decisis

has “special force in the area of statutory interpretation.” Patterson v. McLean Credit Union, 491 U.S. 164,

172 (1989); see also Amy Coney Barrett, Statutory

Stare Decisis in the Courts of Appeals, 73 Geo. Wash.

L. Rev. 317, 317 (2005). The Court has refused to

overturn statutory precedents even when the rules of

statutory interpretation on which those precedents

rested have changed. See, e.g., John R. Sand & Gravel

Co. v. United States, 552 U.S. 130, 137, 139 (2008)

(noting new presumption with respect to tolling of

statutes of limitations but refusing to overturn prior

interpretation); see also Kisor v. Wilkie, 139 S. Ct.

2400, 2447 (2019) (Gorsuch, J., concurring in the judgment) (“decisions construing particular statutes continue to command respect even when the interpretive

methods that led to those constructions fall out of

favor”); Hartford Fire Ins. Co. v. California, 509 U.S.

764, 814 (1993) (Scalia, J., dissenting) (presumption

against extraterritoriality should not be applied to the

Sherman Act because the question was “governed by

precedent”). When the Court revived the presumption

against extraterritoriality in Aramco, it distinguished

Steele; it did not suggest that Steele’s holding was

subject to question. See Aramco, 499 U.S. at 252-53.

Respecting Steele’s holding without being shackled

to its analytical approach makes sense. Although the

principle of stare decisis applies to the holding of a

case, it does not apply to the interpretive methodology

used to reach that holding. See Randy J. Kozel, Statutory Interpretation, Administrative Deference, and the

13

Law of Stare Decisis, 97 Tex. L. Rev. 1125, 1127 (2019)

(“Interpretive methodologies do not receive stare

decisis effect from the Supreme Court.”); Jonathan R.

Siegel, The Polymorphic Principle and the Judicial

Role in Statutory Interpretation, 84 Tex. L. Rev. 339,

389 (2005) (“[W]hen the Court issues opinions interpreting statutes, stare decisis effect attaches to the

ultimate holding as to the meaning of the particular

statute interpreted, but not to general methodological

pronouncements, no matter how apparently firm.”).

As Justice Gorsuch recently noted, “we do not regard

statements in our opinions about such generally

applicable interpretive methods, like the proper

weight to afford historical practice in constitutional

cases or legislative history in statutory cases, as binding future Justices with the full force of horizontal

stare decisis.” Kisor, 139 S. Ct. at 2444 (Gorsuch, J.,

concurring in the judgment).

With those principles in mind, Steele’s mode of

analysis does not preclude the Court from applying its

current framework for extraterritoriality, so long as

the Court adheres to Steele’s holding. Adhering to

Steele’s holding makes particular sense here because

it substantially aligns with the second step of the

Court’s current approach. That step asks whether a

provision’s focus occurs here. Although Steele did not

articulate a “focus” test and relied on several factors

other than consumer confusion, Steele highlighted

that the defendant’s actions “brought about forbidden

results within the United States.” 344 U.S. at 288;

see id. at 286 (emphasizing adverse domestic effect

on trademark holder). Applying the Court’s current

framework to the Lanham Act is substantially consistent with Steele’s holding.

14

II. THE LANHAM ACT APPLIES TO USE OF A

TRADEMARK ABROAD THAT IS LIKELY TO CAUSE

CONFUSION IN THE UNITED STATES.

In Morrison and RJR Nabisco, as noted, the Court

adopted a “two-step framework” for the presumption

against extraterritoriality. RJR Nabisco, 579 U.S. at

337; see also Morrison, 561 U.S. at 261-71. Here, at

step one, the Lanham Act provisions lack a clear

indication of geographic scope. Moving to step two,

the text of each provision makes clear that its focus is

consumer confusion.

RJR Nabisco suggested in dictum that, for a

provision’s application to be domestic, not just the

focus of the provision but also “conduct relevant to

the statute’s focus” must have occurred in the United

States. 579 U.S. at 337. But the Court did not apply

such a requirement in either RJR Nabisco or Morrison, adopting in each case a test for applying the

relevant provision that does not require U.S. conduct.

See id. at 354 (“Section 1964(c) requires a civil RICO

plaintiff to allege and prove a domestic injury to

business or property”); Morrison, 561 U.S. at 267 (“[I]t

is in our view only transactions in securities listed

on domestic exchanges, and domestic transactions in

other securities, to which § 10(b) applies.”). Requiring

conduct in the United States in addition to the focus

of the provision threatens to frustrate Congress’s

intent in cases where the focus of the provision is

something other than conduct. For that reason, the

Court should use this opportunity to abandon RJR

Nabisco’s “conduct relevant to” dictum and make clear

that only the focus of a provision must occur in the

United States for the application of that provision to

be considered domestic.

15

A. Sections 32(1)(a) and 43(a)(1)(A) Have No Clear

Indication of Geographic Scope.

At the first step of the analysis, the Court looks for

a clear indication of geographic scope. See RJR

Nabisco, 579 U.S. at 337; Morrison, 561 U.S. at 255.

Neither Section 32(1)(a) nor Section 43(a)(1)(A) has

such an indication.

Section 32(1)(a) provides civil liability for any

person who “use[s] in commerce” a registered trademark without the permission of the registrant when

“such use is likely to cause confusion, or to cause

mistake, or to deceive.” 15 U.S.C. § 1114(1)(a). Section

43(a)(1)(A) provides civil liability for any person who

“uses in commerce” an unregistered trademark that

“is likely to cause confusion, or to cause mistake, or to

deceive.” Id. § 1125(a)(1)(A). Both provisions are silent

about geographic scope.

Although the Lanham Act defines “commerce” to

mean “all commerce which may lawfully be regulated

by Congress,” id. § 1127, the Court has repeatedly

held that definitions of commerce are insufficient to

provide the clear indication of extraterritoriality that

step one of the presumption analysis requires. See

RJR Nabisco, 579 U.S. at 353 (“[W]e have emphatically rejected reliance on such language, holding

that ‘even statutes . . . that expressly refer to “foreign

commerce” do not apply abroad.’ ”) (quoting Morrison,

561 U.S. at 262-63) (emphasis in Morrison; ellipsis

in RJR Nabisco); Morrison, 561 U.S. at 263 (“The

general reference to foreign commerce in the definition

of ‘interstate commerce’ does not defeat the presumption against extraterritoriality.”).5

5 In Aramco, the Court distinguished Steele based in part

on the Lanham Act’s broad commerce language. 499 U.S. at 252.

But Aramco also distinguished Steele on the ground “that the

16

B. The Focus of Sections 32(1)(a) and 43(a)(1)(A) Is

Consumer Confusion.

At step two of the analysis, the Court must “determine whether the case involves a domestic application

of the statute . . . by looking to the statute’s ‘focus.’ ”

RJR Nabisco, 579 U.S. at 337. To determine “the focus

of congressional concern,” the Court examines “the

objects of the statute’s solicitude,” the subjects “that

the statute seeks to regulate,” and the parties “that

the statute seeks to protect.” Morrison, 561 U.S. at

266-67 (cleaned up).

1. The texts of Sections 32(1)(a) and 43(a)(1)(A)

indicate that both provisions focus on consumer

confusion. Both create civil liability for the use of a

trademark in commerce only when such use “is likely

to cause confusion, or to cause mistake, or to deceive.”

15 U.S.C. §§ 1114(1)(a), 1125(a)(1)(A).

The structure of each provision strongly resembles

the structure of Securities Exchange Act § 10(b),

15 U.S.C. § 78j(b), which the Court construed in

Morrison. Section 10(b) does not punish all deceptive

conduct, Morrison noted, “but only deceptive conduct

‘in connection with the purchase or sale of any security

registered on a national securities exchange or any

security not so registered.’ ” 561 U.S. at 266 (quoting

15 U.S.C. § 78j(b)). Those transactions, the Court

concluded, “are the objects of the statute’s solicitude.”

Id. at 267. Similarly, Sections 32(1)(a) and 43(a)(1)(A)

allegedly unlawful conduct had some effects within the United

States.” Id. Moreover, Aramco was decided before Morrison

adopted the current two-step framework. Aramco therefore did

not address whether congressional definitions of commerce are

sufficient to provide a clear indication of geographic scope of the

purposes of step one.

17

do not create liability for all uses of trademarks in

commerce but only uses that are “likely to cause confusion, or to cause mistake, or to deceive.” 15 U.S.C.

§§ 1114(1)(a), 1125(a)(1)(A). Those are the uses that

each provision “seeks to regulate” and the consumers

that each provision “seeks to protect.” Morrison, 561

U.S. at 267 (cleaned up). And because “use[s] in

commerce” are only the gateway to regulation, and

not its object, the “focus” of the statute is consumer

confusion alone. Contra Pet. Br. 40-45.

The Court has also stated that “[i]nfringement law

protects consumers from being misled by the use of

infringing marks and also protects producers from

unfair practices by an ‘imitating competitor.’ ” Moseley

v. V Secret Catalogue, Inc., 537 U.S. 418, 428 (2003)

(quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S.

159, 164 (1995)). Both consumer protection and producer protection are among the purposes found in the

Lanham Act’s general statement of intent: “to regulate

commerce within the control of Congress by making

actionable the deceptive and misleading use of marks

in such commerce” and “to protect persons engaged in

such commerce against unfair competition.” 15 U.S.C.

§ 1127.

The notion of protecting producers could arguably

support applying the Lanham Act to use of a U.S.

trademark abroad that causes a producer to lose

export sales. The Tenth Circuit relied on such a

“diversion of sales” theory to justify most of the

damages that the district court awarded in this case,

Hetronic Int’l, 10 F.4th at 1044-45, and other courts

have also considered lost exports in applying the Act

to use of a U.S. trademark abroad, see Love v. Assoc.

Newspapers, Ltd., 611 F.3d 601, 613 (9th Cir. 2010);

McBee v. Delica Co., 417 F.3d 107, 126 (1st Cir. 2005);

18

Am. Rice, Inc. v. Arkansas Rice Growers Co-op. Ass’n,

701 F.2d 408, 414-15 (5th Cir. 1983); see also Tire

Eng’g & Distrib., LLC v. Shandong Linglong Rubber

Co., 682 F.3d 292, 311 (4th Cir. 2012) (per curiam)

(endorsing diversion-of-sales theory only when the

defendant is a U.S. company).

To say the Lanham Act is intended to protect producers, however, begs the question of when producers

are entitled to protection. The international system of

trademark protection presumes that a trademark

owner must register its mark in each jurisdiction

where it seeks protection. Article 6(1) of the Paris

Convention for the Protection of Industrial Property,

Mar. 20, 1883, as last revised at Stockholm, July 14,

1967, 21 U.S.T. 1583, 828 U.N.T.S. 305, states that

“[t]he conditions for the filing and registration of

trademarks shall be determined in each country of

the Union by its domestic legislation,” and Article 6(3)

provides that “[a] mark duly registered in a country of

the Union shall be regarded as independent of marks

registered in the other countries of the Union.” These

provisions have made territoriality “ ‘a cornerstone

of international trademark law.’ ” Curtis A. Bradley,

Territorial Intellectual Property Rights in an Age of

Globalism, 37 Va. J. Int’l L. 505, 543 (1997) (quoting

Walter J. Derenberg, Territorial Scope and Situs of

Trademarks and Good Will, 47 Va. L. Rev. 733, 734

(1961)); see also Brief for the United States as Amicus

Curiae at 20, Abitron Austria GmbH v. Hetronic Int’l,

Inc., No. 21-1043 (U.S. Sept. 23, 2022) (“U.S. Invitation

Br.”) (“By treating the Lanham Act as applicable to

foreign sales that created no likelihood of consumer

confusion within the United States, the court of

appeals’ decision could undermine this system of

international trademark protection.”). Respondent’s

remedy for the sale of infringing goods abroad that are

19

not intended for use in the United States lies in the

trademark laws of other countries rather than in the

Lanham Act.6

2. Applying that analysis, the Lanham Act covers

petitioners’ sales that were likely to cause consumer

confusion in the United States. This could include

both petitioners’ direct sales to the United States as

well as foreign sales constituting “use[s] in commerce”

that were likely to find their way to the United States

and cause confusion here.7 Although it is less likely

that foreign sales will cause confusion in the United

States than direct sales, it is certainly possible, as

6 In WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct.

2129 (2018), the Court held that a patent owner who proves

infringement under 35 U.S.C. § 271(f )(2) can recover damages

for profits lost on foreign contracts under § 284, the Patent Act’s

general damages provision. But the statutory structure of the

Patent Act is different from the Lanham Act’s. WesternGeco held

that the focus of § 284 is the infringement and that the focus of

§ 271(f )(2) is on the “domestic conduct” of supplying components

in or from the United States. 138 S. Ct. at 2137. Thus, “the focus

of § 284, in a case involving infringement under § 271(f )(2), is on

the act of exporting components from the United States.” Id. at

2138. If a patent owner can show infringing conduct in the

United States, it can recover all damages that flow from the

infringement. Id. at 2139. By contrast, the focus of the Lanham

Act provisions at issue here is consumer confusion rather than

infringing conduct. Unless use of a trademark is likely to cause

consumer confusion in the United States, the trademark owner

is not entitled to damages or injunctive relief.

7 Because the Lanham Act defines “commerce” to reach to the

limits of Congress’s constitutional authority, it covers at least

some foreign sales. 15 U.S.C. § 1127. The precise scope of

Congress’s power “to regulate commerce with foreign nations,”

U.S. Const. art. I, § 8, cl. 3, need not be defined here in order

to say that at least some domestic effects from foreign uses are

covered. Cf. In re Sealed Case, 936 F.3d 582, 591 (D.C. Cir. 2019)

(surveying approaches and finding persuasive “some sort of

effects test”).

20

Steele itself demonstrates. 344 U.S. at 285. Proceedings on remand could appropriately resolve those

factual questions.

In sum, the focus of Sections 32(1)(a) and 43(a)(1)(A)

is consumer confusion. These provisions should apply

when, but only when, the use of a U.S. trademark

abroad is likely to cause consumer confusion in the

United States because the goods are sold into the

United States or are sold abroad and likely to find

their way here.

C. When Use of a Trademark Abroad Is Likely To Cause

Consumer Confusion in the United States, Conduct

in the United States Is Not Required.

In RJR Nabisco, the Court suggested for the first

time that “conduct relevant to the statute’s focus”

must occur in the United States for application of a

statutory provision to be considered domestic. 579

U.S. at 337. But, as explained below, the Court has

required conduct relevant to a provision’s focus only

when the focus of the provision at issue is conduct. See

Nestlé USA, Inc. v. Doe, 141 S. Ct. 1931, 1936 (2021);

WesternGeco, 138 S. Ct. at 2138. When, by contrast,

the focus of the provision is something other than

conduct, the Court has required only the focus to have

occurred in the United States and not, additionally,

conduct relevant to the focus.

This was true in Morrison, where the focus of § 10(b)

was “purchases and sales of securities,” 561 U.S. at

266, and the Court held that the provision applies to

“transactions in securities listed on domestic exchanges,

and domestic transactions in other securities,” id. at

267. It was also true in RJR Nabisco itself, where

the focus of RICO’s private right of action was injury

to business or property, and the Court held that the

21

provision “requires a civil RICO plaintiff to allege

and prove a domestic injury to business or property.”

579 U.S. at 354. In neither case did the Court impose

a requirement of conduct in the United States relevant to the focus of those provisions.

When the focus of a provision is something other

than conduct, requiring domestic conduct would only

frustrate Congress’s intent by excluding from the

scope of the provision some cases that were “the ‘focus’

of congressional concern.” Morrison, 561 U.S. at 266.

That is true in this case. Because the focus of Sections

32(1)(a) and 43(a)(1)(A) is consumer confusion, those

provisions should apply whenever the use in commerce

of a U.S. trademark abroad is likely to cause consumer

confusion in the United States. Imposing an additional

conduct requirement would allow some cases with

which Congress was concerned to escape liability.

1. The Court Has Required Domestic Conduct When

the Focus of the Provision Is Conduct.

In articulating step two of the presumption, RJR

Nabisco said “[i]f the conduct relevant to the statute’s

focus occurred in the United States, then the case

involves a permissible domestic application even if

other conduct occurred abroad.” 579 U.S. at 337. The

“conduct relevant to” language seems to come from

Kiobel v. Royal Dutch Petroleum Co., 569 U.S. 108

(2013), where the Court observed that “all the relevant conduct took place outside the United States,” id.

at 124, and where the Court did not analyze the focus

of the Alien Tort Statute (ATS), 28 U.S.C. § 1350. RJR

Nabisco drew a connection between these two things,

reasoning that, “[b]ecause ‘all the relevant conduct’

regarding those violations ‘took place outside the

United States,’ we did not need to determine, as we

22

did in Morrison, the statute’s ‘focus.’ ” 579 U.S. at 337

(quoting Kiobel, 569 U.S. at 124).

The “focus” step of the presumption was not wellestablished until RJR Nabisco clearly articulated a

“two-step framework,” id., and the parties’ briefs in

Kiobel discussed the focus of the ATS only in passing.

Respondents argued that the focus of the ATS was

on “the last conduct that caused injury, which here

occurred in Nigeria.” Supplemental Brief for Respondents at 13, Kiobel v. Royal Dutch Petroleum Co., 569

U.S. 108 (2013) (No. 10-1491 (U.S. Aug. 1, 2012)).

Petitioners, on the other hand, seemed to conflate

Morrison’s two steps and simply argued that the

presumption was rebutted by the text and context of

the ATS. Petitioners’ Supplemental Reply Brief at 12,

Kiobel v. Royal Dutch Petroleum Co., 569 U.S. 108

(2013) (No. 10-1491 (U.S. Aug. 31, 2012)) (“Morrison

instructs courts to consider the ‘focus’ of a statute to

determine whether Congress intended extraterritorial

application. The presumption is rebutted where, as

here, the statute’s text and context indicate that it has

extraterritorial application.”) (citation omitted). The

significant point is that neither of the parties argued

that the focus of the ATS was anything other than

conduct. Kiobel therefore did not address whether

domestic conduct is required when the focus of a provision is something other than conduct.

The Court recently relied on the “conduct relevant

to” language in deciding another ATS case, Nestlé

USA, Inc. v. Doe, supra. The Court again found it

unnecessary to determine the focus of the ATS because

“[n]early all” the relevant conduct occurred abroad.

141 S. Ct. at 1937. But in Nestlé, as in Kiobel, none of

the parties argued that the focus of the ATS is anything other than conduct; they simply disagreed about

23

what conduct is the focus. Petitioners argued that the

focus of the ATS is the conduct that directly caused

respondents’ injuries, which occurred in Ivory Coast.

Id. at 1936. Respondents argued that the focus of the

ATS (at least for aiding-and-abetting claims) is the

conduct that aids and abets violations of international

law, some of which allegedly occurred in the United

States. Id. The Court reasoned that, even if it decided

the focus question in respondents’ favor, the ATS

would still not apply because “[n]early all the conduct

that they say aided and abetted forced labor—providing training, fertilizer, tools, and cash to overseas

farms—occurred in Ivory Coast.” Id. at 1937. Because

both parties agreed that the ATS focuses on conduct,

the Court had no occasion to address the need for

domestic conduct when a provision focuses on something else.

WesternGeco also involved provisions that focus on

conduct. The question there was whether a patent

owner could recover profits lost on foreign contracts

under 35 U.S.C. § 284, the Patent Act’s general

damages provision. The Court “conclude[d] that

‘the infringement’ is the focus of this statute.” 138 S.

Ct. at 2137. Looking next to § 271(f )(2), under which

infringement was claimed, the Court concluded that

it “focuses on domestic conduct,” specifically the act

of supplying components from the United States. Id.

Because “domestic infringement” was the focus of

§ 271(f )(2), it was also the focus of § 284 when

damages were sought for violation of § 271(f )(2). Id.

at 2138. “The conduct in this case that is relevant

to that focus clearly occurred in the United States,”

id., the Court concluded, because the focus of these

provisions was conduct.

24

2. The Court Has Not Required Domestic Conduct

When the Focus of the Provision Is Something

Other Than Conduct.

Statutory provisions often focus on something other

than conduct. See, e.g., RJR Nabisco, 579 U.S. at 354

(focus of RICO’s private right of action is injury to

business or property); Morrison, 561 U.S. at 266 (focus

of Securities Exchange Act § 10(b) is purchases and

sales of securities). In these cases, the Court has not

required domestic conduct and has simply required

that the focus of the provision occurs in the United

States.8

Morrison interpreted the geographic scope of Securities Exchange Act § 10(b), which makes it illegal

“[t]o use or employ, in connection with the purchase or

sale of any security registered on a national securities

exchange or any security not so registered, . . . any

manipulative or deceptive device or contrivance.” 15

U.S.C. § 78j(b). Although fraudulent conduct allegedly

occurred in the United States, the securities in Morrison were purchased in Australia. The Court concluded

“that the focus of the Exchange Act is not upon the

8 Petitioners’ contention that “extraterritoriality is primarily

concerned with conduct, not effects,” is mistaken. Pet. Br. 15; see

also id. at 42 (“Asking where effects of conduct are felt, rather

than where the conduct occurred, overlooks the primary concern

animating extraterritoriality doctrine . . . .”). As noted above,

Morrison and RJR Nabisco abandoned the traditional view that

the presumption turns on the location of the conduct. “Morrison

recognized that something other than conduct might be the focus

of congressional concern and that the application of a statutory

provision should be considered extraterritorial only if . . . whatever was the focus of concern is outside the United States.”

Dodge, New Presumption, at 1603. As discussed below, Morrison

and RJR Nabisco each concluded that the focus of the relevant

statutory provision was something other than conduct and articulated a test that did not require conduct in the United States.

25

place where the deception originated, but upon purchases and sales of securities in the United States.”

561 U.S. at 266. The Court therefore adopted a “transactional test” that asks “whether the purchase or sale

is made in the United States, or involves a security

listed on a domestic exchange.” Id. at 269-70; see also

id. at 267 (“[I]t is in our view only transactions in

securities listed on domestic exchanges, and domestic

transactions in other securities, to which § 10(b)

applies.”). Nowhere did Morrison articulate a requirement for conduct in the United States relevant to

a domestic transaction in securities, an omission that

is all the more striking because relevant domestic

conduct had been alleged in that case. Lower courts

have read Morrison to reject any additional domesticconduct requirement. See Absolute Activist Value

Master Fund Ltd. v. Ficeto, 677 F.3d 60, 69 (2d Cir.

2012) (“[T]he transactional test announced in Morrison does not require that each defendant alleged to be

involved in a fraudulent scheme engage in conduct in

the United States.”).

RJR Nabisco similarly imposed no requirement of

domestic conduct, despite the decision’s reference to

“conduct relevant to the statute’s focus” when describing the presumption’s second step. 579 U.S. at 337.

With respect to RICO’s criminal provisions, the Court

found a clear indication of extraterritoriality in their

incorporation of extraterritorial predicate acts, id. at

338-41, and therefore did not reach the focus step.

With respect to RICO’s private right of action, the

Court found no such indication and therefore looked

to that provision’s focus. Id. at 354. Section 1964(c)

provides: “Any person injured in his business or

property by reason of a violation of [18 U.S.C. § 1962]

may sue therefor in any appropriate United States

26

district court and shall recover threefold the damages

he sustains.” 18 U.S.C. § 1964(c). Based on this

language, the Court concluded that injury was the

provision’s focus and held that “Section 1964(c)

requires a civil RICO plaintiff to allege and prove a

domestic injury to business or property and does not

allow recovery for foreign injuries.” 579 U.S. at 354.

RJR Nabisco’s holding did not, however, require any

conduct in the United States relevant to the domestic

injury.9

3. When the Focus of a Provision Is Something Other

Than Conduct, a Domestic-Conduct Requirement

Would Frustrate Congressional Intent.

When the focus of a provision is something other

than conduct, it makes no sense to require conduct in

the United States in addition to the focus. Morrison

held that the focus of congressional concern in § 10(b)

is “domestic transactions.” 561 U.S. at 267. If a plaintiff must prove not just a domestic transaction but also

domestic conduct relevant to that transaction, a class

of transactions that Congress sought to protect will

fall outside the scope of § 10(b). RJR Nabisco held that

the focus of congressional concern in RICO’s private

right of action is injury to business or property. 579

U.S. at 354. If a plaintiff must prove not just domestic

injury but also domestic conduct, some injuries that

Congress intended to redress will fall outside the

scope of RICO’s private right of action. When the focus

of a provision is not conduct, requiring conduct in the

9 The Restatement (Fourth) similarly reads RJR Nabisco and

Morrison to require only the focus, and not additional conduct,

in the United States. See Restatement (Fourth) § 404 cmt. c (“If

whatever is the focus of the provision occurred in the United

States, then application of the provision is considered domestic

and is permitted.”).

27

United States serves only to frustrate congressional

intent by excluding from the provision’s scope some

of the cases that were “the ‘focus’ of congressional

concern.” Morrison, 561 U.S. at 266.

The same is true with the provisions of the Lanham

Act at issue here. Because the focus of Sections

32(1)(a) and 43(a)(1)(A) is consumer confusion, those

provisions should apply whenever use of a U.S. trademark abroad is likely to cause consumer confusion in

the United States because, for example, the products

are destined for this country. Imposing an additional

domestic-conduct requirement would diminish the

protections of domestic consumers and leave unaddressed the harms Congress sought to forestall.

As the Solicitor General explained at the certiorari

stage, “[t]o the extent that petitioners’ sales created a

likelihood of consumer confusion in the United States,

Congress’s purposes . . . are squarely implicated, even

though petitioners’ own conduct occurred abroad.”

U.S. Invitation Br. 14.

A domestic-conduct requirement is not necessary to

prevent “international discord.” RJR Nabisco, 579

U.S. at 335. Contra Pet. Br. 30-32.10 International law

permits countries to regulate conduct abroad on many

bases, including effects, nationality, passive personality, the protective principle, and universal jurisdiction. See Restatement (Fourth) §§ 409-413. The tests

that the Court has developed for the geographic scope

of many provisions permit their application to conduct

abroad. See, e.g., Morrison, 561 U.S. at 267 (Securities

10 Retaliatory legislation such as petitioners cite, Pet. Br. 32,

is rare. None of their examples was passed in response to the

application of the Lanham Act to conduct abroad, despite the fact

that U.S. courts have been applying the Act to such conduct for

more than 70 years.

28

Exchange Act § 10(b) applies to fraudulent conduct if

the transaction is domestic); Hartford Fire, 509 U.S.

at 796 (“[T]he Sherman Act applies to foreign conduct

that was meant to produce and did in fact produce

some substantial effect in the United States.”); Steele,

344 U.S. at 285 (Lanham Act applies to use of

trademark abroad). Because conduct in one country

frequently causes effects in another, the application

of domestic legislation to foreign conduct is routine.

Indeed, such application follows naturally from one

of the fundamental reasons for the presumption—the

“ ‘commonsense notion that Congress generally legislates with domestic concerns in mind.’ ” RJR Nabisco,

579 U.S. at 336 (quoting Smith v. United States, 507

U.S. 197, 204 n.5 (1993)). When the domestic focus of

a provision can be implicated by conduct abroad, it is

logical to conclude that Congress intends to cover the

foreign conduct to achieve its domestic aims. Put

another way, the legislature has already balanced

the relevant interests and has prioritized protection

of domestic intersts. That is the case here with the

Lanham Act, and that determination is entitled to

judicial respect.

CONCLUSION

The Court should vacate the decision below and

remand for application of the standards articulated in

this brief.

29

Respectfully submitted,

MICHAEL R. DREEBEN

Counsel of Record

GEORGETOWN UNIVERSITY LAW

CENTER

600 New Jersey Avenue, N.W.

Washington, D.C. 20001

(202) 661-6609

(mrd28@georgetown.edu)

December 27, 2022