District Court Finds Lanham Act Jurisdiction to Consider Damages Stemming From Performances in Australia Where All Parties Are U.S. Entities

The World in U.S. Courts: Summer 2014 - Intellectual Property (Trademark)

Herb Reed Enterprises v. Monroe Powell’s Platters, U.S. District Court for the District of Nevada, June 17, 2014

This long-running dispute involves ownership of rights to the name of the musical group, The Platters. Plaintiff claims to own the name, and as relevant here seeks damages for a series of performances by the defendant in Australia.

The U.S. District Court in Nevada applied the complicated test for extraterritorial application of the Lanham Act that exists in the Ninth Circuit. The first two requirements can be satisfied where there is monetary loss in the U.S., even though only non-U.S. transactions and consumer deception is involved. The Court found this portion of the test to be satisfied by the plaintiff’s allegation that it books internationally through an agent in the U.S. and that its ability to secure engagements has been hurt by the defendant’s alleged conduct.

The third requirement, described through seven sub-tests, seeks to balance the interests and links to U.S. commerce with other nations against those other nation’s own interests. The Court found this element to be satisfied as well, principally because all parties were U.S. entities.

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