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But today, I focus on one of the most important and little-analyzed decisions in the last two years: American Express v. Italian Colors, a straightforward application of a statute interpreted in 2014. Although this is not the most widely followed legal opinion, it would be interesting to see a wealth of commentary in the days and weeks to come.
The facts of the case are straightforward, and that’s likely the reason that the Supreme Court could not decide the case unanimously. In that case, the plaintiff, Italian Colors, sued for trademark infringement in federal court. The Supreme Court, reversing the Second Circuit, held that the Lanham Act’s anti-forum-shopping provision applied to this trademark dispute.
American Express v. Italian Colors
The Anti-Forum-Shopping Statute says
A court within its jurisdiction may not grant an injunction to stay proceedings in a State court except as expressly authorized by Act of Congress, or where necessary in aid of its jurisdiction, or to protect or effectuate its judgments.
17 U.S.C. §22. The Court has long held that this provision is mandatory. R.C. Dick Geiger Co. v. Smith-Palloy Corp., 322 U.S. 27 (1944). Other federal courts have applied the anti-forum-shopping statute, but it had not been applied to trademark infringement cases until this case.
In that case, the Supreme Court held that the anti-forum-shopping statute applies to Lanham Act actions, not just to copyright actions. That’s because the Lanham Act has a section on “venue” that is similar to the anti-forum-shopping provision. There was no dispute that there was a court within this Circuit that had jurisdiction over this case. All that remained was to determine whether the anti-forum-shopping provision
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