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Petitions of the week

Trademark infringement and procedural rules

This week we highlight cert petitions that ask the Supreme Court to consider, among other things, whether the holder of a U.S. trademark can win damages for trademark infringements in foreign sales, and whether the Federal Rules of Bankruptcy Procedure or Civil Procedure govern a wrongful-death case.

Trademark infringements in foreign sales

Abitron Austria GmbH v. Hetronic International, Inc. addresses the international reach of the Lanham Act, which provides remedies for infringement of U.S. trademarks. After a dispute over the trademarks for radio remote controls used to operate cranes and other heavy equipment, a jury awarded Hetronic International, Inc. approximately $90 million in damages for Lanham Act violations by Abitron Austria GmbH and other defendants. In the U.S. Court of Appeals for the 10th Circuit, Abitron argued that the Lanham Act should not apply to its foreign sales. Of the approximately $90 million in worldwide sales, the 10th Circuit found that only 3% had a substantial effect on U.S. commerce. The rest of the sales, in Arbitron’s description in its petition, were “in foreign countries, by foreign sellers, to foreign customers, for use in foreign countries.” Nevertheless, the 10th Circuit upheld the district court’s award on a “diversion of foreign sales” theory, namely that the foreign sales affected U.S. commerce because any lost sales for Hetronic abroad had consequences for Hetronic’s cash flows in the United States. In its petition, Hetronic emphasizes that the 10th Circuit recognized that its approach departed from those of other circuits, which collectively use six different tests for the extraterritoriality of the Lanham Act.

Procedural rules in a wrongful-death case

Roy v. Canadian Pacific Railway Company concerns the relationship between the Federal Rules of Bankruptcy Procedure and the Federal Rules of Civil Procedure, in a case resulting from a train crash and fuel fire in Québec that killed 47 people. As the plaintiffs maintain in their petition, the case proceeded in federal district court in accordance with the Federal Rules of Civil Procedure. The district court granted the railroad’s motion to dismiss under Rule 12’s standard, and it denied the plaintiffs’ request to amend their complaint under Rule 15 because of a technical defect in the pleading under Rule 8. The plaintiffs then moved for reconsideration under Rule 59(e) to correct their pleading problem. Under Rule 59(e), parties may file such motions for reconsideration up to 28 days after the court enters its judgment. However, similar motions under Bankruptcy Rule 9023 must be filed within 14 days. The district court then denied the plaintiffs’ motion as untimely under Bankruptcy Rule 9023, although it would have been timely under Rule 59(e).

The plaintiffs argue that theirs is not a case “under title 11,” the requirement for when the Bankruptcy Rules govern. However, the U.S. Court of Appeals for the 1st Circuit ruled that because the plaintiffs’ wrongful-death claims could “conceivably” affect a bankruptcy, the case was “related to a case under title 11” and hence itself a “case under title 11.” The 1st Circuit justified its conclusion on the ground that its reading best corresponded with the rules in three other circuits. In response, the plaintiffs maintain that the 1st Circuit went further than those other circuits and conflicts with still other circuits.

These and other petitions of the week are below:

ERISA Industry Committee v. City of Seattle, Washington
Issue: Whether state and local play-or-pay laws that require employers to make minimum monthly healthcare expenditures for their covered employees relate to ERISA plans and are thus preempted by the Employee Retirement Income Security Act of 1974.

Payne v. Jackson
Issue: Whether courts may consider adaptive strengths in deciding whether a defendant is intellectually disabled and thus ineligible for the death penalty.

Abitron Austria GmbH v. Hetronic International, Inc.
Issue: Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH’s foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.

Stirling v. Bryant
Issue: Whether, in review of a claim fully adjudicated in state court, the district court violated 28 U.S.C. § 2254’s deference mandate and offended the principles of finality and federalism by upsetting a capital sentence based on mere disagreement with record-supported state court fact-findings.

Roy v. Canadian Pacific Railway Company
Issues: (1) Whether the term “cases under title 11” — for which the Federal Rules of Bankruptcy Procedure govern procedure — extends to cases in district court that are merely “related to a case under title 11,” such that the bankruptcy rules govern in all civil cases that could conceivably affect a bankruptcy; and (2) whether, assuming the bankruptcy rules apply in district court, the rules require a motion to reconsider a district court’s judgment under Federal Rule of Civil Procedure 59(e) to be filed within 14 days, as a similar motion under Federal Rule of Bankruptcy Procedure 9023 must be filed in the bankruptcy court within 14 days.

Recommended Citation: Andrew Hamm, Trademark infringement and procedural rules, SCOTUSblog (Feb. 4, 2022, 7:42 PM),