This past August, I was quoted on Forbes.com in an article on a grocery store in Vancouver called “Pirate Joe’s” that is based entirely on selling Trader Joe’s private label foodstuffs in Canada where there are no Trader Joe’s stores. Among other things, I noted the jurisdictional challenges posed by seeking extraterritorial application of the Lanham Act. Now, the Court has indeed dismissed the case on the grounds that it lacks subject matter jurisdiction in this regard. In particular:
Here, all alleged infringement takes place in Canada and Trader Joe’s cannot show economic harm [necessary for any extraterritorial application of the Lanham Act]. Even if Canadian consumers are confused and believe they are shopping at Trader Joe’s or an approved affiliate when shopping at Pirate Joe’s, there is no economic harm to Trader Joe’s because the products were purchased at Trader Joe’s at retail price. [A]ny “goodwill” related harm is too tenuous to support a cognizable Lanham Act claim when all infringing conduct is abroad.
Please see the complete ruling here.