Under the 10th Circuit’s structure for the case, the petition contended the court created a sixth test to determine whether the Lanham Act governed a defendant’s foreign conduct after modifying the 1st Circuit’s approach. The 10th Circuit held the Lanham Act applied extraterritorially to all of the petitioner’s foreign sales, the petition continued. Relevant to the appeal, it upheld the approximate $90 million in damages holding the petitioners foreign activities could be enjoined, while limiting the injunction to countries where Hetronic International sells or markets its products, according to the petition. The 10th Circuit Court of Appeals affirmed. sales or products that would end up in the U.S. That court also rejected arguments that the extraterritorial application of the Lanham Act was inappropriate by refusing to limit its injunction to U.S. Code 1116 that prohibited the petitioners from using marks and trade dress for the 10 accused products. The district court also entered a worldwide permanent injunction under 15 U.S. The petition also said the award reflected gross sales without a deduction for cost of goods. The figure included the petitioners’ total worldwide sales of accused products. About 3% of the petitioners’ roughly $90 million in worldwide sales ended up in the U.S.Ī jury awarded Hetronic International about $90 million in damages for Lanham Act violations, according to the petition. Code 1114(1)(a), unregistered trademarks and trade dress in violation of 1125(a)(1), or both.Īccording to the petition, almost all of the accused sales happened in foreign countries for use there. Hetronic International alleged the petitioner’s sales of 10 types of radio remote controls infringed on its registered U.S. Hetronic International sued the petitioners, all German and Austrian nationals, in Oklahoma federal court making claims under the Lanham Act. almost entirely, according to the petition. On the understanding they owned the trademarks for products developed under the research and development agreement, the companies competed with Hetronic International outside of the U.S. Hetronic International then terminated the distribution agreements.įuchs formed two new companies, petitioners Abitron Austria and Abitron Germany, which bought Hydronic-Steuersysteme and Hetronic Germany. Hetronic Germany determined it, not Hetronic International, owned all the technology under the agreement, the petition added. In 2011, a Hetronic Germany employee discovered the agreement. At that time, Fuchs wasn’t aware of the research and development agreement that confirmed Hetronic Steuersysteme owned the trademarks and trade dress for the products being distributed, according to the petition. They agreed to act as Hetronic International’s distributors. Hetronic Deutschland) to petitioner Hetronic Germany in 2010.Īfter the acquisition of Hetronic Steuersysteme, petitioners Hetronic Germany and Hydronic-Steuersysteme, which are both owned by Albert Fuchs, licensed rights to the Hetronic name from Hetronic International. The petition noted Heckl sold Hetronic International in 2008 to Methode Electronics and it didn’t include Hetronic Steuersysteme, which had since been renamed Hetronic Deutschland. That included the trademarks and trade names. The agreement provided that Hetronic Steuersysteme and the co-developers were the sole owners of everything that is done by Hetronic International. Hetronic International was in a research and development agreement with Hetronic Steuersysteme and two co-developers. In 2000, Hetronic Steuersysteme’s founder Max Heckl moved to the U.S. In the 1980s, German company Hetronic Steuersysteme GmbH invented radio remote controls.
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