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Successful Dismissal of Extraterritorial Trademark Lawsuit

Posted by James Juo | Oct 02, 2023 | 0 Comments

Lawyers for DuranDuran filed a trademark infringement suit against 192 different defendants in the Southern District of Florida earlier this year, alleging that “Defendants are promoting, selling, offering for sale and distributing goods bearing counterfeits and confusingly similar imitations of Plaintiffs' intellectual property within this district.” Roe v. The Individuals, Partnerships and Unincorporated Associations Identified On Schedule “A”, No. 1:23-cv-21268-JEM (S.D. Fla. Apr. 3, 2023) (emphasis added).

Our firm represented Defendant 72, a resident of Australia who had not sold any allegedly infringing product in the United States including Florida. Indeed, Plaintiffs' own “Evidence Collection Report” showed a DuranDuran concert poster for sale by a seller located in “Queensland, Australia” for AU$24.95.

Without requesting any further information from Defendant 72, counsel for Plaintiffs made a settlement demand of $1500. This was troll-like behavior. See, e.g., Malibu Media, LLC v. Doe, No. 15 Civ. 4369 (AKH), 2015 WL 4092417 (S.D.N.Y. July 6, 2015) (explaining that the “paradigmatic troll plays a numbers game in which it targets hundreds or thousands of defendants, seeking quick settlements priced just low enough that it is less expensive for the defendant to pay the troll rather than defend the claim”).

In response, sales records showing that Defendant 72 had only sold three DuranDuran concert posters to Australian residents were sent to counsel for Plaintiffs. Receiving no response, we then followed up by sending a draft Rule 11 sanctions motion to opposing counsel.

Rule 11 Arguments

The draft Rule 11 motion argued that the complaint's scattershot sue-first approach to dealing with alleged trademark infringers suggests the lawsuit was filed without adequate investigation or a good faith basis. See, e.g., GS Holistic, LLC v. Brother Pastor, LLC, Case No. 8:22-cv-2179-VMC-TGW, 2023 WL 4082027 (M.D. Fla. June 20, 2023) (dismissing case and awarding sanctions against GS Holistic' s counsel for continuing to pursue case despite multiple warnings that trademark infringement allegations were meritless).

There simply is no personal jurisdiction in Florida over an Australian selling goods to other Australians. See Walden v. Fiore, 571 U.S. 277, 284, 134 S. Ct. 1115, 188 L.Ed.2d 12 (2014) (“consistent with due process, the defendant's suit-related conduct must create a substantial connection with the forum State”). Indeed, the only connection between Florida and this lawsuit was the Boca Raton office of counsel for Plaintiffs.

And US trademark law does not reach extraterritorial activity by an Australian in Australia. See Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S. 412, 428, 143 S. Ct. 2522, 2534, 216 L. Ed. 2d 1013 (2023) (“the infringing ‘use in commerce' of a trademark provides the dividing line between foreign and domestic applications of these [Lanham Act] provisions”); see also Commodores Ent. Corp. v. McClary, No. 22-10188, 2023 WL 5664170, at *2 (11th Cir. Sept. 1, 2023) (noting that Abitron restricted the Lanham Act's reach over foreign conduct).

We also noted that the sales information showing the lack of any US sales could have been provided earlier had counsel for Plaintiffs made any effort at pre-suit negotiation. See GS Holistic, LLC v. Vaportoke Inc., No. 1:23-cv-1513 (D. Colo. Aug. 22, 2023) (questioning whether plaintiff was using the legal system in good faith where there was no evidence of pre-suit efforts at negotiation).


Counsel for Plaintiffs then confirmed that our client, Defendant 72, would be immediately dismissed from the lawsuit. And a notice of voluntary dismissal was filed with the Court on October 2, 2023.

We are pleased to have brought this frivolous lawsuit to a satisfactory conclusion for our client. Defendant 72 was represented by James Juo. The law firm of Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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