Jenner & Block to Argue Lanham Act Scope Before SCOTUS in Abitron Austria GmbH et al. v. Hetronic International Inc.
News
March 20, 2023
On March 21, Partner Matthew Hellman will represent Hetronic International before the US Supreme Court in Abitron Austria GmbH et al. v. Hetronic International Inc. The case concerns the application of the Lanham Act and the firm’s 10th Circuit victory which applied the Act to Abitron Austria GmbH's foreign sales.
“Reaffirming that the Lanham Act reaches foreign acts of infringement that harm U.S. commerce– as the Supreme Court did in 1952, 1991 and 2010 - ensures that trademark holders and consumers are protected from knockoffs marketed by overseas infringers,” said Matthew. “The petitioners’ primary argument is that applying the Lanham Act to foreign acts of infringement will create international tension. Yet this theoretical ‘parade of horribles’ - including purported conflict of laws – has been disproven by 70 years of experience in applying the Lanham Act to such infringement. This argument plays on false fears.”
In Hetronic International v Hetronic Germany, a jury awarded $113 million for Hetronic International, Inc. against two of its former European distributors for selling copycat products. Hetronic was also granted an injunction that prevented the distributors from selling infringing products in every country in which Hetronic markets or sells its products. In 2021, the 10th Circuit affirmed.
Partner Debbie L. Berman argued the appeal in the 10th Circuit. “For more than 70 years, the Court has recognized that trademark pirates can’t evade the Lanham Act simply because they consummate their infringement overseas,” she said. “This case gives the Court an opportunity to reaffirm this basic proposition and continue the protections upon which US trademark holders and consumers have relied for decades.”
There is broad support for upholding this application of the Lanham Act, including from the American Bar Association, International Trademark Association, American Intellectual Property Law Association, and the Intellectual Property Owners Association.
Read the team’s Supreme Court brief. Listen to the oral arguments.
The Supreme Court team includes Debbie Berman and Matt Hellman, along with Partners Lauren Hartz, Remi Jaffre, and Gianni Servodidio; and Associates Victoria Hall-Palerm and Jonathan Marshall. Additional support was provided by Partners Jessie Amunson, Clifford Berlow, Michael Brody, Ian Gershengorn, Lindsay Harrison, Laura Hulce, Michelle Kallen, Annie Kastanek, Matt Price, Wade Thomson, and Adam Unikowsky; and Associates Rachel Foster, Christina Lopez, Courtney Shier, Grace Signorelli-Cassady, and MJ Wayne.
Related Lawyers
Related Locations
© 2026 Jenner & Block LLP. Attorney Advertising. Jenner & Block LLP is an Illinois Limited Liability Partnership including professional corporations. This publication, presentation, or event is not intended to provide legal advice but to provide information on legal matters and/or firm news of interest to our clients and colleagues. Readers or attendees should seek specific legal advice before taking any action with respect to matters mentioned in this publication or at this event. The attorney responsible for this communication is Brent E. Kidwell, Jenner & Block LLP, 353 N. Clark Street, Chicago, IL 60654-3456. Prior results do not guarantee a similar outcome. Jenner & Block London LLP, an affiliate of Jenner & Block LLP, is a limited liability partnership established under the laws of the State of Delaware, USA and is authorised and regulated by the Solicitors Regulation Authority with SRA number 615729. Information regarding the data we collect and the rights you have over your data can be found in our Privacy Notice. For further inquiries, please contact dataprotection@jenner.com.
News
March 20, 2023
On March 21, Partner Matthew Hellman will represent Hetronic International before the US Supreme Court in Abitron Austria GmbH et al. v. Hetronic International Inc. The case concerns the application of the Lanham Act and the firm’s 10th Circuit victory which applied the Act to Abitron Austria GmbH's foreign sales.
“Reaffirming that the Lanham Act reaches foreign acts of infringement that harm U.S. commerce– as the Supreme Court did in 1952, 1991 and 2010 - ensures that trademark holders and consumers are protected from knockoffs marketed by overseas infringers,” said Matthew. “The petitioners’ primary argument is that applying the Lanham Act to foreign acts of infringement will create international tension. Yet this theoretical ‘parade of horribles’ - including purported conflict of laws – has been disproven by 70 years of experience in applying the Lanham Act to such infringement. This argument plays on false fears.”
In Hetronic International v Hetronic Germany, a jury awarded $113 million for Hetronic International, Inc. against two of its former European distributors for selling copycat products. Hetronic was also granted an injunction that prevented the distributors from selling infringing products in every country in which Hetronic markets or sells its products. In 2021, the 10th Circuit affirmed.
Partner Debbie L. Berman argued the appeal in the 10th Circuit. “For more than 70 years, the Court has recognized that trademark pirates can’t evade the Lanham Act simply because they consummate their infringement overseas,” she said. “This case gives the Court an opportunity to reaffirm this basic proposition and continue the protections upon which US trademark holders and consumers have relied for decades.”
There is broad support for upholding this application of the Lanham Act, including from the American Bar Association, International Trademark Association, American Intellectual Property Law Association, and the Intellectual Property Owners Association.
Read the team’s Supreme Court brief. Listen to the oral arguments.
The Supreme Court team includes Debbie Berman and Matt Hellman, along with Partners Lauren Hartz, Remi Jaffre, and Gianni Servodidio; and Associates Victoria Hall-Palerm and Jonathan Marshall. Additional support was provided by Partners Jessie Amunson, Clifford Berlow, Michael Brody, Ian Gershengorn, Lindsay Harrison, Laura Hulce, Michelle Kallen, Annie Kastanek, Matt Price, Wade Thomson, and Adam Unikowsky; and Associates Rachel Foster, Christina Lopez, Courtney Shier, Grace Signorelli-Cassady, and MJ Wayne.
Related Lawyers
Related Locations
© 2026 Jenner & Block LLP. Attorney Advertising. Jenner & Block LLP is an Illinois Limited Liability Partnership including professional corporations. This publication, presentation, or event is not intended to provide legal advice but to provide information on legal matters and/or firm news of interest to our clients and colleagues. Readers or attendees should seek specific legal advice before taking any action with respect to matters mentioned in this publication or at this event. The attorney responsible for this communication is Brent E. Kidwell, Jenner & Block LLP, 353 N. Clark Street, Chicago, IL 60654-3456. Prior results do not guarantee a similar outcome. Jenner & Block London LLP, an affiliate of Jenner & Block LLP, is a limited liability partnership established under the laws of the State of Delaware, USA and is authorised and regulated by the Solicitors Regulation Authority with SRA number 615729. Information regarding the data we collect and the rights you have over your data can be found in our Privacy Notice. For further inquiries, please contact dataprotection@jenner.com.
News and Insights
Event
Amanda Shafer Berman to Speak on Energy and Administrative Law at WEN-DC Webinar
As the Supreme Court's new Term begins, Jenner & Block Partner Amanda Shafer Berman will join a Women's Energy Network of Washington, DC (WEN-DC) webinar on how the Court's decisions are shaping the energy sector.
October 14, 2026
Publications
Partner Amanda Shafer Berman Quoted in Bloomberg Law on Senate Permitting Overhaul Bill
Partner Amanda Shafer Berman was quoted in an October 5 Bloomberg Law article, "Permitting Deal Gives Projects Defense Against Litigation Delays," on the Senate's new permitting overhaul package and its expected impact on litigation over federal permitting reversals.
October 2026
Event
Partner John Storino to Speak at Sandpiper Partners' “AI and Outside Counsel Guidelines Roundtable”
On October 8, Partner John Storino will serve as a panelist at the “AI and Outside Counsel Guidelines Roundtable,” hosted by Sandpiper Partners in Chicago.
October 8, 2026
Event
Partner Meghan Greenfield to Speak on Supreme Court Climate Case at Edison Electric Institute's Fall Legal Conference
On Wednesday, October 7, Partner Meghan Greenfield will speak on a panel titled "Boulder County v. Suncor Energy: What the Supreme Court's Climate Case Means for the Energy Industry" at the Edison Electric Institute's Fall Legal Conference in Salt Lake City, Utah.
October 7, 2026
Publications
The Form Rules Everything: A Seventh Circuit Ruling on ERISA's Substantial Compliance Doctrine
Partner Joseph Torres and Special Counsel Jennifer Beach authored an article for Employee Relations Law Journal examining the Seventh Circuit's decision in Packaging Corp. of America Thrift Plan for Hourly Employees v. Langdon, a ruling that addresses both the standard of review in ERISA interpleader actions and the continued viability of the substantial compliance doctrine for changing plan beneficiaries.
October 5, 2026