March 2010 Issue

Civil Cases

Gallup, Inc. v. Bus. Research Bureau (Pvt.) Ltd.,
2010 WL 545857 (N.D. Cal. Feb. 11, 2010)
by Naresh Kilaru

ABSTRACT
Following the republication of public opinion polls of the Pakistani national election by independent U.S. news organizations, which had been published by Pakistani polling company Gallup Pakistan on its website at www.gallup.com.pk, U.S.-based Gallup filed a trademark-infringement action against Gallup Pakistan.  Finding that the Pakistani defendant had no business presence in the United States, did not sell or advertise any services in the United States, and that its activities were wholly extraterritorial, the district court denied plaintiff’s summary judgment motion for lack of subject matter jurisdiction.  The district court also emphasized that granting the relief requested by the plaintiff raised issues of comity as the parties were involved in a contemporaneous trademark dispute in Pakistan over the same mark.

CASE SUMMARY

FACTS
Plaintiff Gallup, Inc. (“Gallup”), the well-known U.S.-based market research and public opinion polling company, has used the GALLUP mark for its public opinion polling services for more than 70 years and owns numerous U.S. registrations therefore.  The defendants (“Gallup Pakistan”) run a public opinion polling service that has operated in Pakistan under the trade name GALLUP PAKISTAN for more than 30 years.  Gallup Pakistan operates an English-language website at the URL www.gallup.com.pk, which is accessible in the United States and prominently displays the GALLUP PAKISTAN mark.

Gallup Pakistan is a member of the Zurich-based Gallup International Association (“GIA”), an international polling organization with more than 60 member agencies around the world.  While GIA and the plaintiff were both founded by the same individual (Dr. George Gallup), the two organizations are otherwise unrelated and are involved in ongoing trademark disputes around the world.

In early 2008, following Gallup Pakistan’s publication on its website of the results of six Pakistani public opinions polls regarding the Pakistan national election, thirteen major news organizations, including the New York Times, Reuters, and Time, republished the Pakistani polling results in the United States.  Two of the articles inaccurately attributed the poll results to “Gallup.”

Gallup filed suit in the United States for trademark infringement alleging a violation of its trademark rights based upon: (1) Gallup Pakistan’s use of the GALLUP mark on its English-language website; and (2) Gallup Pakistan’s use of the GALLUP mark in connection with its polling and survey results as published in the United States.  Gallup sought to enjoin Gallup Pakistan’s use of the GALLUP mark in the United States and its operation of an English-language website at www.gallup.com.pk.

Gallup Pakistan filed an answer and a motion to dismiss for lack of subject matter jurisdiction.  The court initially denied the motion to dismiss, finding that the complaint alleged sufficient acts within the United States to warrant the exercise of subject matter jurisdiction.  However, after Gallup filed a motion for summary judgment on its trademark-infringement claims, the court revisited the issue of subject matter jurisdiction in light of the factual evidence presented by both parties.

ANALYSIS
Courts in the Ninth Circuit must consider three factors in determining whether to extend the Lanham Act’s jurisdictional reach over extraterritorial activities: (1) whether the extraterritorial activities have “some effect” on American foreign commerce; (2) whether the effect is sufficiently great to present a cognizable injury to the plaintiff under the statute; and (3) whether the interests of and links to American foreign commerce are sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial authority.

In denying Gallup’s motion for summary judgment and ordering Gallup to show cause why the case should not be dismissed for lack of subject matter jurisdiction, the court concluded that the application of this test raised “troubling concerns.”  In relation to the first factor, while concluding that Gallup Pakistan’s activities had “some effect” on Gallup’s U.S. trademark rights following republication of defendant’s survey results in U.S. publications, the court found the effect to have been “nominal” since only six of presumably thousands of Gallup Pakistan surveys had ever been republished by American news outlets.  Relative to the second factor, the court questioned whether the nominal nature of the injury could justify the “severe” equitable relief sought in Gallup’s motion.  Finally, the court found a substantial risk of conflict with foreign law, as the parties were involved in a contemporaneous infringement dispute in Pakistan over their rights to the GALLUP mark in that country.  If Gallup prevailed in the Pakistani action, the relief sought in the U.S. case would be unnecessary as Gallup could rely on Pakistan’s own trademark laws to enjoin Gallup Pakistan’s use of the GALLUP mark.  Alternatively, if Gallup Pakistan prevailed, the U.S. court’s grant of equitable relief would significantly interfere with Gallup Pakistan’s right to lawfully use its mark in Pakistan.  The court found the possibility of such interference particularly troubling given Gallup Pakistan’s long-standing status as a GIA member and, presumably, long-standing authorization from GIA to use the GALLUP PAKISTAN mark in Pakistan.  Finally, even assuming the court were inclined to grant the equitable relief requested, it was unclear how such relief could be enforced given that both Gallup Pakistan and its website resided in Pakistan.

The court denied the summary judgment motion and ordered Gallup to show cause why the action should not be dismissed for lack of subject matter jurisdiction.  Subsequent court records indicate that the parties have briefed the issue and the action is ongoing, with Gallup taking limited discovery on the scope of Gallup Pakistan’s U.S. activities.

CONCLUSION
While U.S. courts have routinely exercised subject matter jurisdiction over trademark-infringement claims involving foreign websites, this decision suggests that where a foreign defendant’s activities have limited impact on U.S. commerce and where the parties are already entangled in a trademark dispute abroad, a U.S. court may decline to extend the Lanham Act’s jurisdictional reach over extraterritorial activities.