As American companies expand their operations abroad, copyright and trademark issues increasingly have international ramifications. While both the U.S. copyright statute and the Lanham Act are focused on conduct in the United States, courts have applied both statutes to a narrow range of foreign conduct, giving copyright and trademark owners limited rights to seek redress for foreign infringements in U.S. courts. The U.S. Court of Appeals for the Fourth Circuit’s recent decision in Tire Engineering and Distribution v. Shandong Linglong Rubber, 2012 WL 2036971 (4th Cir. June 6, 2012), which sustained liability under the copyright law but rejected a trademark claim, illustrates the different principles governing the application of these two statutes to activity outside of the United States.
In Tire Engineering, Alpha Tyre Systems, a U.S. producer of mining tires, accused defendants of producing and selling infringing tires in China. Alpha alleged that, in 2005, an Alpha employee stole blueprints for the tires from Alpha and worked with defendants from his Virginia home to modify the designs to make the copying less obvious. One defendant referred to the employee’s Virginia home as that defendant’s “satellite office.” Alpha also alleged that defendants used Alpha trademarks on the Chinese products. Alpha discovered the infringement in 2006 and sued in 2009. The district court upheld the jury’s finding of copyright infringement, conversion and conspiracy but dismissed most of Alpha’s trademark claims. The Fourth Circuit sustained the jury’s liability verdict on copyright infringement, but overturned the finding of liability under the Lanham Act.
