U.S. Jurisdiction Exists for U.S. Trademark Claim Where Foreign Violations Had Effect in U.S. Commerce

The World in U.S. Courts: Fall 2013 - Intellectual Property (IP) | July.17.2013

In re Airwair Int’l Ltd. v. Vans, Inc., 2013 U.S. Dist. LEXIS 100120 (N.D. Calif. July 17, 2013)

Plaintiff Airwair sells shoes and boots under the Dr. Marten’s label. At issue in this case was certain U.S.-registered trade dress for the “look” of a line of footwear. Airwair alleged that Vans was infringing and diluting its trade dress by allowing its licensee to distribute an allegedly infringing line of shoes in a variety of stores in East Asia, Airwair owned no trademark rights. Airwair asserted claims for trademark infringement, false designation of origin, trademark dilution and pursuant to various California statutory and common law.

Vans moved to dismiss for failure to state a claim. The court first considered whether the Lanham Act would apply to the extraterritorial conduct alleged in the complaint. Applying the three-part test announced by the Ninth Circuit in Timberland Lumber Co. v. Bank of America, the court concluded (1) that the required “effect on U.S. commerce” was satisfied by Airwair’s allegations that Vans U.S. had ratified its licensees activities and that travelers were bringing the allegedly infringing footwear into the U.S., where they were available for sale online to U.S. consumers; (2) that there were sufficient allegations of commercial injury under the Lanham Act; and (3) that comity considerations, i.e., whether there was a sufficient link to U.S. foreign commerce to justify assertion of extraterritorial jurisdiction over the interests of other nations, were satisfied.

Concluding that U.S. trademark and unfair competition law could apply, the court went on to hold that Airwair had sufficiently stated claims under the Lanham Act and California law. It sustained the complaint in its entirety and denied Vans’ motion to dismiss.

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