CHRISTEN, Circuit Judge:
This trademark infringement case turns on the extraterritorial reach of the Lanham Act. It is uncontested that Defendant Michael Norman Hallatt purchases Trader Joe's-branded goods in Washington state, transports them to Canada, and resells them there in a store he designed to mimic
We affirm in part and reverse in part. Consistent with recent case law from the Supreme Court and our court, we hold that the extraterritorial reach of the Lanham Act raises a question relating to the merits of a trademark claim, not to federal courts' subject-matter jurisdiction. On the merits, we conclude that Trader Joe's alleges a nexus between Hallatt's conduct and American commerce sufficient to warrant extraterritorial application of the Lanham Act. We therefore reverse in part. But because Trader Joe's does not allege trademark dilution in Washington or harm to a Washington resident or business, we affirm the court's dismissal of the state law claims.
The complaint alleges that Trader Joe's is a well-known American grocery store that sells specialty goods at reasonable prices from its distinctive, South Pacific-themed stores.
Trader Joe's owns several federally registered and common-law trademarks associated with its stores and products. Its family of marks includes a trademark for the red, stylized "Trader Joe's" text, see Fig. 1, and numerous trademarks for Trader Joe's-branded products. Trader Joe's also alleges that it has trade dress protection for its South Pacific-themed store design. See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775-76, 112 S.Ct. 2753, 120 L.Ed.2d 615 (1992) (recognizing that distinctive store design is a form of trade dress). Trader Joe's carefully cultivates its brand through advertising, promotion, and word-of-mouth referrals, and, according to the complaint, its trademarks and trade dress "have come to symbolize extraordinary goodwill and have achieved great fame both within and outside
In October 2011, staff members at the Bellingham Trader Joe's store noticed something odd about one of their customers: Canadian resident Michael Norman Hallatt visited the store several times per week to buy large quantities of Trader Joe's products.
Trader Joe's told Hallatt that it does not sanction his activity and demanded that he stop reselling Trader Joe's products from Pirate Joe's. Hallatt refused. Trader Joe's declined to serve Hallatt as a customer, but Hallatt, undeterred, began donning "disguises to shop at Trader Joe's without
Trader Joe's sued Hallatt (doing business as Pirate Joe's) for trademark infringement in the Western District of Washington, invoking that court's federal question and supplemental jurisdiction. 28 U.S.C. §§ 1331, 1367. Trader Joe's alleged that Hallatt violated federal and state trademark and unfair competition laws by misleading consumers "into falsely believing that Pirate Joe's and/or Transilvania Trading have been authorized or approved by Trader Joe's," displaying Trader Joe's trademarks and mimicking Trader Joe's trade dress, and reselling Trader Joe's goods without authorization and without adhering to Trader Joe's' strict quality control practices. According to Trader Joe's, this conduct dilutes its trademarks, confuses consumers, and damages Trader Joe's' reputation by associating it with high-cost, reduced-quality goods. The complaint includes six claims for relief, four of which arise under the Lanham Act and two of which arise under Washington law: (1) federal trademark infringement, 15 U.S.C. § 1114(1); (2) unfair competition, false endorsement, and false designation of origin, 15 U.S.C. § 1125(a)(1)(A); (3) false advertising, 15 U.S.C. § 1125(a)(1)(B); (4) federal trademark dilution, 15 U.S.C. § 1125(c); (5) state trademark dilution, Wash. Rev. Code § 19.77.160; and (6) deceptive business practices in violation of the Washington Consumer Protection Act, Wash. Rev. Code § 19.86.020. Trader Joe's asked the district court to award it damages and permanently enjoin Hallatt from reselling its goods or using its trademarks in Canada.
The district court granted Hallatt's motion to dismiss Trader Joe's' federal claims for lack of subject-matter jurisdiction, concluding that the Lanham Act did not apply to Hallatt's conduct in Canada. The court denied Trader Joe's leave to amend its federal claims, but granted Trader Joe's the opportunity to assert an independent jurisdictional basis for its state law claims. Trader Joe's filed a motion for reconsideration in which it argued that the extraterritorial scope of the Lanham Act is a merits question that does not implicate the district court's subject-matter jurisdiction. The district court denied the motion. Trader Joe's then filed an amended complaint reasserting its state law claims and invoking the district court's diversity jurisdiction. Hallatt filed a motion to dismiss for failure to state a claim, which the district court granted.
The district court entered final judgment on December 18, 2013, and Trader Joe's timely appealed. We have jurisdiction under 28 U.S.C. § 1291.
A. Lanham Act claims
The Lanham Act is the federal trademark and unfair competition statute. It creates a civil cause of action against "[a]ny person who shall ... use in commerce any ... colorable imitation of a registered mark," 15 U.S.C. § 1114(1) (Lanham Act section 32), or "[a]ny person who ... uses in commerce any" word, false description, or false designation of origin that "is likely to cause confusion ... or to deceive as to the affiliation," origin, or sponsorship of any goods, id. § 1125(a)(1) (Lanham Act section 43). The Act broadly defines commerce as "all commerce which may lawfully be regulated by Congress," id. § 1127, and gives federal courts jurisdiction over all claims arising under it, id. § 1121(a).
We determine whether any statute, including the Lanham Act, reaches foreign conduct by applying a two-step framework. See RJR Nabisco, Inc. v. European Cmty., ___ U.S. ___, 136 S.Ct. 2090, 2101, 195 L.Ed.2d 476 (2016). At step one we ask "whether the statute gives a clear, affirmative indication that it applies extraterritorially." Id. The Supreme Court settled this question with regard to the Lanham Act when it held that the Act's "use in commerce" element and broad definition of "commerce" clearly indicate Congress's intent that the Act should apply extraterritorially. See Steele v. Bulova Watch Co., 344 U.S. 280, 286, 73 S.Ct. 252, 97 L.Ed. 319 (1952). Where, as here, Congress intended a statute to apply extraterritorially, we proceed to step two and consider "the limits Congress has (or has not) imposed on the statute's foreign application." RJR Nabisco, 136 S.Ct. at 2101.
We resolve two questions to decide whether the Lanham Act reaches Hallatt's allegedly infringing conduct, much of which occurred in Canada: First, is the extraterritorial application of the Lanham Act an issue that implicates federal courts' subject-matter jurisdiction? Second, did Trader Joe's allege that Hallatt's conduct impacted American commerce in a manner sufficient to invoke the Lanham Act's protections? Because we answer "no" to the first question but "yes" to the second, we reverse the district court's dismissal of the federal claims and remand for further proceedings.
1. Subject-matter jurisdiction
Trader Joe's argues on appeal that the extraterritorial reach of the Lanham Act is a non-jurisdictional merits question, and that the Supreme Court's decision in Arbaugh v. Y&H Corp., 546 U.S. 500, 126 S.Ct. 1235, 163 L.Ed.2d 1097 (2006), abrogated circuit case law suggesting otherwise. Hallatt counters that this court has long treated the extraterritorial application of the Lanham Act as an issue of subject-matter jurisdiction, and that the panel may not deviate from this precedent. We agree with Trader Joe's.
When the district court dismissed the federal claims for lack of subject-matter jurisdiction, it did not have the benefit of our recent decision in La Quinta Worldwide LLC v. Q.R.T.M., S.A. de C.V., 762 F.3d 867 (9th Cir. 2014). There, we held that the Lanham Act's "use in commerce" element (the element that gives the Act extraterritorial reach) is not jurisdictional. Id. at 873-74. In La Quinta, an American hotel chain, La Quinta Worldwide, sued a Mexican competitor, Quinta Real, for trademark infringement after Quinta Real expressed an intent to expand its business into the United States. Id. at 872. The district court held a bench trial and found in La Quinta's favor. Id. On appeal, Quinta Real asserted for the first time "that there is no federal subject-matter jurisdiction
Our court rejected those arguments. Citing Arbaugh, 546 U.S. at 513-14, 126 S.Ct. 1235, we reasoned that "federal courts have subject-matter jurisdiction over all suits pleading `a colorable claim "arising under" the Constitution or laws of the United States,' so long as Congress does not clearly indicate otherwise." La Quinta, 762 F.3d at 873. Because "the `use in commerce' element of Lanham Act claims under sections 32 and 43(a) is not connected to the Lanham Act's jurisdictional grant in 15 U.S.C. § 1121(a)," the element "is not a jurisdictional requirement, and we have subject-matter jurisdiction under 15 U.S.C. § 1121(a)." Id. at 872-73; see also Arbaugh, 546 U.S. at 516, 126 S.Ct. 1235 ("[W]hen Congress does not rank a statutory limitation on coverage as jurisdictional, courts should treat the restriction as nonjurisdictional in character.").
Hallatt correctly argues that La Quinta is not on all fours with this case because La Quinta did not consider the Lanham Act's extraterritorial reach. The parties in La Quinta disputed whether Quinta Real's intent to expand its business to the United States constituted "use" within the meaning of the Lanham Act. See 762 F.3d at 872; see also Sensient Techs. Corp. v. SensoryEffects Flavor Co., 613 F.3d 754, 762-63 (8th Cir. 2010) (explaining that the Lanham Act imposes liability for trademark infringement only if there is use of another's mark in commerce). La Quinta did not need to address the Lanham Act's extraterritorial scope because Quinta Real's contemplated infringing activity was to occur in the United States. 762 F.3d at 872.
Nevertheless, La Quinta's jurisdictional analysis still dictates the outcome here. As noted, it is the Lanham Act's "use in commerce" element and its broad definition of "commerce" that give the statute extraterritorial reach. See Steele, 344 U.S. at 283-84, 73 S.Ct. 252. These are the same elements that the panel considered in La Quinta, see 762 F.3d at 872-73; they derive from Congress's power to regulate interstate and foreign commerce under the Commerce Clause, U.S. Const. art. I, § 8, cl. 3. See 15 U.S.C. § 1114 (applying to marks "use[d] in commerce"); id. § 1125 (same); id. § 1127 ("The word `commerce' means all commerce which may lawfully be regulated by Congress."). The constitutional source of this authority is the same whether or not the alleged infringement implicates the extraterritorial scope of the Lanham Act: Congress can no more regulate intrastate, non-commercial possession of another's mark (the issue raised in La Quinta) than trademark infringement that occurs entirely outside of the country's borders. See Wells Fargo & Co. v. Wells Fargo Express Co., 556 F.2d 406, 427-28 (9th Cir. 1977) (analogizing the Lanham Act's application to purely intrastate activities to the Act's application to purely foreign activities). Thus, La Quinta's conclusion that the Lanham Act's "use in commerce" element is not jurisdictional applies here even though La Quinta considered the scope of the word "use," rather than the Act's extraterritorial reach.
Id. (citations and footnote omitted). This analysis is equally applicable to the Lanham Act. See Love v. Associated Newspapers, Ltd., 611 F.3d 601, 613 (9th Cir. 2010) (explaining the Lanham Act applies to defendants' foreign conduct when that conduct impacts American commerce). We hold that the extraterritorial reach of the Lanham Act is a merits question that does not implicate federal courts' subject-matter jurisdiction, and that the district court erred as a matter of law when it decided otherwise.
But this conclusion does not end our work. The district court dismissed Trader Joe's case at the pleadings stage, but as in Morrison, "nothing in [its analysis] turned on" the fact that it dismissed the case under Rule 12(b)(1), rather than under Rule 12(b)(6). Morrison, 561 U.S. at 254,
2. The merits of the Lanham Act
We next consider the limits, if any, Congress imposed on the Act's extraterritorial application. See RJR Nabisco, 136 S.Ct. at 2101 (discussing "step two"). In 15 U.S.C. § 1127, Congress directed that the Lanham Act applies to "all commerce which may lawfully be regulated by Congress." Whether this provision sweeps foreign activities into the Act's proscriptive reach depends on a three-part test we originally applied to the Sherman Act in Timberlane Lumber Co. v. Bank of America National Trust & Savings Ass'n, 549 F.2d 597 (9th Cir. 1976). See Wells Fargo, 556 F.2d at 427 (extending Timberlane test to the Lanham Act). Under Timberlane, the Lanham Act applies extraterritorially if:
Love, 611 F.3d at 613.
a. Timberlane prongs one and two
Timberlane's first two prongs require Trader Joe's to allege that Hallatt infringes its trademarks (1) in a way that affects American foreign commerce, and (2) causes Trader Joe's a cognizable injury under the Lanham Act. Id. A defendant's foreign activities need not have a substantial or even significant effect on American commerce, rather, "some effect" may be sufficient. Compare Am. Rice, Inc. v. Ark. Rice Growers Coop. Ass'n, 701 F.2d 408, 414 n.8 (5th Cir. 1983) (joining the Ninth Circuit in requiring "some effect"), with Vanity Fair Mills v. T. Eaton Co., 234 F.2d 633, 642 (2d Cir. 1956) (requiring effect to be substantial); see also J. Thomas McCarthy, 5 McCarthy on Trademarks & Unfair Competition § 29:58 (4th ed. 2016) (discussing different tests).
Plaintiffs usually satisfy Timberlane's first and second prongs by alleging that infringing goods, though sold initially in a foreign country, flowed into American domestic markets. See Reebok Int'l, Ltd. v.
Trader Joe's alleges that Hallatt's foreign conduct has "some effect" on American commerce because his activities harm its reputation and decrease the value of its American-held trademarks. It argues that Hallatt violates 15 U.S.C. § 1114(1)(a), the Lanham Act's general prohibition on trademark infringement, by transporting and selling Trader Joe's goods without using proper quality control measures or established product recall practices.
According to Trader Joe's, Hallatt's poor quality control practices could impact American commerce if consumers who purchase Trader Joe's-brand products that have been transported to Canada become ill, and news of such illness travels across the border. Trader Joe's alleges this may harm its reputation, reduce the value of its trademarks, and cause lost sales. Trader Joe's argues its risk of harm is particularly high because Pirate Joe's displays Trader Joe's trademarks, which leads consumers to believe that it is an authorized Trader Joe's retailer. There is nothing implausible about the concern that Trader Joe's will suffer a tarnished reputation and resultant monetary harm in the United States from contaminated goods sold in Canada. Incidents of food-born illness regularly make international news,
Hallatt's alleged attempt to pass as an authorized Trader Joe's retailer could similarly harm Trader Joe's' domestic reputation and diminish the value of its American-held marks. The complaint alleges that Hallatt sells Trader Joe's goods at inflated prices, so customers who shop at Pirate Joe's may come to mistakenly associate Trader Joe's with overpriced goods. Trader Joe's also alleges that Pirate Joe's has inferior customer service, something Trader Joe's believes reflects poorly on its brand. False endorsement gives rise to an actionable harm under the Lanham Act, see 15 U.S.C. § 1125(a)(1)(A), and Trader Joe's contends it will suffer this harm in the United States because it draws international shoppers to its northern-Washington stores, and its trademarks stand to lose value in the United States. See McBee, 417 F.3d at 119 ("One can easily imagine a variety of harms to American commerce arising from wholly foreign activities by foreign defendants. There could be harm caused by false endorsements, passing off, or product disparagement, or confusion over sponsorship affecting American commerce and causing loss of American sales.").
Finally, Trader Joe's alleges that Hallatt engages in commercial activity in the United States as part of his infringing scheme. See Reebok, 970 F.2d at 554-55 (first two Timberlane factors satisfied in part because defendant "organized and directed the manufacture of counterfeit REEBOK shoes from the United States"). According to Trader Joe's, Hallatt sources his inventory entirely from the United States: he purchases thousands of dollars of Trader
Hallatt's domestic activity also distinguishes this case from Love, the case the district court found dispositive. 611 F.3d at 613. The plaintiff in Love (Mike Love, a former member of the Beach Boys) sued several British defendants after they distributed compact discs featuring Love's trademark as cover art. Id. at 607. In Love, it was undisputed "that all relevant acts occurred abroad" (defendants designed, manufactured, and disseminated the infringing CDs entirely in Europe). Id. at 613. Love failed to show that the defendants' conduct directly caused Love "monetary injury in the United States," id. and we affirmed summary judgment in favor of defendants. Id. at 613-14. Here, unlike in Love, Hallatt executes a key part of his allegedly infringing scheme in the United States, so the causal showing found lacking in Love is satisfied.
For these reasons, Trader Joe's satisfied its burden under Timberlane prongs one and two, at least at this early stage of the proceeding.
b. Timberlane prong three
The third Timberlane prong considers international comity, see Hartford Fire Ins. Co. v. California, 509 U.S. 764, 797-98 & n.24, 113 S.Ct. 2891, 125 L.Ed.2d 612 (1993), and gives effect to the "rule that we construe statutes to avoid unreasonable interference with other nations' sovereign authority where possible," RJR Nabisco, 136 S.Ct. at 2106-07 & n.9. This prong involves weighing seven factors:
Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1395 (9th Cir. 1985) (citing Timberlane). No one factor is dispositive; each factor "is just one consideration to be balanced." Wells Fargo, 556 F.2d at 428. Having considered these factors, we conclude that it is appropriate to apply the Lanham Act to Hallatt and Pirate Joe's.
Degree of conflict with foreign laws. Courts typically find a conflict with foreign law or policy when there is an ongoing trademark dispute or other proceeding abroad. Compare Star-Kist, 769 F.2d at 1396 (finding conflict when defendant's petition to cancel plaintiffs' Philippine trademark registration was pending in the Philippine Patent Office), with Am. Rice, 701 F.2d at 415-16 (finding no conflict when defendant's conduct was lawful under Saudi Arabian trademark law). In 2012, Trader Joe's applied for, and was granted, Canadian recognition for its Trader Joe's trademarks, but there is no pending or ongoing adversarial proceeding between Trader Joe's and Hallatt in Canada. Nor is Trader Joe's engaged in any proceeding (so far as we are aware) relating to its Canadian trademarks. This factor therefore weighs in favor of extraterritorial application.
Nationality of parties & location of businesses. This factor typically weighs in favor of extraterritoriality when both parties are United States citizens, or the parties are foreign citizens who operate domestic businesses. See Reebok, 970 F.2d at 556 (defendant operated his business from the United States); Ocean Garden, 953 F.2d at 504 (both parties were Californian corporations). Trader Joe's is an American corporation with its principal place of business in Monrovia, California. Although Trader Joe's operates no stores in Canada, its trademarks are well-known there. The complaint alleges that Transilvania Trading and Pirate Joe's are (or were) Canadian entities, and that both have (or had) their principal places of business in Vancouver, Canada. As far as we can tell, Hallatt is a Canadian citizen, but because he maintains LPR status in the United States, he subjects himself to the laws of this country. Hallatt is also the driving force behind Pirate Joe's. This is not, as Trader Joe's argues, simply a dispute between an American plaintiff and an American defendant, because the complaint alleges that Hallatt is a Canadian citizen who domiciles in Vancouver.
Relative significance of effects. Trademark law has two goals: "[p]rotect property in the trademark and protect consumers from confusion." J. Thomas McCarthy, 1 McCarthy on Trademarks & Unfair Competition § 2:1 (4th ed. 2013). Hallatt's conduct primarily affects the value of Trader Joe's' trademarks in the United States because Trader Joe's holds most of its intellectual property here. On the other hand, Canadian consumers are the most likely to be deceived by Hallatt's conduct because he displays Trader Joe's marks and sells Trader Joe's goods only in Canada. Federal courts ordinarily do not have an interest in protecting foreign consumers from confusion. See McBee, 417 F.3d at 126. But Trader Joe's also alleges that its trademarks are well-known in Canada, and that more than forty percent of the credit card transactions at its Bellingham, Washington store are with non-United States residents. Hallatt's sale of Trader Joe's goods in Canada has the potential to mislead these consumers, so this factor weighs in favor of extraterritorial application.
Purpose to harm American commerce & foreseeability. The pleadings, taken in the light most favorable to Trader Joe's, tend to support the conclusion that Hallatt intended to harm Trader Joe's, or, at a minimum, that such harm was foreseeable. Hallatt chose to name his store "Pirate Joe's," suggesting that he knowingly treads on Trader Joe's' goodwill and pirates Trader Joe's' intellectual property. Indeed, one of Hallatt's employees allegedly admitted that "we're pirating Trader Joe's, sort of." The complaint further alleges that Trader Joe's disapproved of Hallatt's conduct, and Hallatt began engaging in subterfuge (such as donning costumes) to purchase goods at Trader Joe's stores without being identified. These factors therefore weigh in favor of extraterritorial application.
* * *
In sum, Timberlane's three prongs favor extraterritorial application of the Lanham Act here. On prongs one and two, Trader Joe's alleges a nexus between Hallatt's foreign conduct and American commerce sufficient to state a Lanham Act claim: Hallatt's conduct may cause Trader Joe's reputational harm that could decrease the value of its American-held trademarks, and Hallatt operates in American commerce streams when he buys Trader Joe's goods in Washington and hires locals to assist him. On prong three, the seven subfactors we use to evaluate potential "interference with other nations' sovereign authority," RJR Nabisco, 136 S.Ct. at 2107 n.9, taken together, do not counsel against applying the Lanham Act here. We therefore conclude that the Lanham Act reaches Hallatt's allegedly infringing activity, and we reverse the district court's dismissal of Trader Joe's' four Lanham Act claims.
B. State Law Claims
Trader Joe's next contends the district court erred when it granted Hallatt's motion to dismiss its state trademark dilution and Washington Consumer Protection Act (CPA) claims. We agree with the district court that Trader Joe's failed to state a claim under either statute, and we affirm its order dismissing those claims.
1. Trademark dilution
Washington's trademark dilution statute largely mirrors the federal trademark dilution statute. It says:
Wash. Rev. Code § 19.77.160(1). The district court concluded, and Hallatt maintains on appeal, that Trader Joe's failed to state a claim for relief under this statute because Trader Joe's did not allege that Hallatt used Trader Joe's trademarks in Washington. Trader Joe's counters that
Washington's dilution statute entitles courts to enjoin "commercial use in this state of a [famous] mark." Wash. Rev. Code § 19.77.160(1) (emphasis added). The legislature's choice to limit the Antidilution Act's primary remedy to a defendant's use of a famous mark in Washington reflects its intent that the law reach only infringing activities that occur in Washington. Wash. Dep't of Ecology v. Campbell & Gwinn, LLC, 146 Wn.2d 1, 43 P.3d 4, 9 (2002) ("[I]f the statute's meaning is plain on its face, then the court must give effect to that plain meaning as an expression of legislative intent."). We find no support for Trader Joe's' contrary contention that the Antidilution Act proscribes dilution that occurs abroad and creates a ripple effect in Washington, so we opt for a simpler, more textual reading of the statute: to state a claim for relief under Washington's trademark dilution statute, a plaintiff must allege, inter alia, that the defendant used its mark in Washington. See Wash. Rev. Code § 19.77.160(1).
Trader Joe's does not allege that Hallatt uses Trader Joe's trademarks in Washington. To the contrary, Trader Joe's alleges that Hallatt's diluting activity — selling Trader Joe's-branded goods, using Trader Joe's trade dress to decorate his store, displaying the confusingly similar "Pirate Joe's" mark on his storefront — takes place in Vancouver, British Columbia. The complaint does allege that Hallatt purchases Trader Joe's goods in Washington to resell in his store, but this action (while possibly deceptive) is not "commercial use in this state of a mark ... which causes dilution." Wash. Rev. Code § 19.77.160(1) (emphasis added); see also id. § 19.77.010(6) (defining dilution); cf. Sensient Techs., 613 F.3d at 762-63 (explaining the concept of "use" in federal trademark law). We agree with the district court that Trader Joe's failed to state a plausible claim for relief under Washington's trademark dilution statute.
2. Consumer Protection Act
The CPA declares unlawful "[u]nfair methods of competition and unfair or deceptive acts or practices in the conduct of any trade or commerce." Wash. Rev. Code. § 19.86.020. The CPA's purpose is "to protect the public and foster fair and honest competition." Id. To state a claim under the CPA, a plaintiff must allege: "(1) [an] unfair or deceptive act or practice; (2) occurring in trade or commerce; (3) public interest impact; (4) injury to plaintiff in his or her business or property; [and] (5) causation." Hangman Ridge Training Stables, Inc. v. Safeco Title Ins. Co., 105 Wn.2d 778, 719 P.2d 531, 533 (1986); Brummett v. Wash. Lottery, 171 Wn.App. 664, 288 P.3d 48, 54 (2012). The parties contest only the second element.
The Washington legislature broadly defines the terms "trade" and "commerce" to include "the sale of assets or services, and any commerce directly or indirectly affecting
363 P.3d at 591.
Thornell holds that the CPA applies broadly, but its holding does not encompass Hallatt's conduct. Here, unlike in Thornell, none of the defendants are Washington residents: the complaint alleges that Hallatt is a Canadian citizen domiciled in Vancouver, Canada,
We conclude that the Lanham Act applies to Hallatt's allegedly infringing conduct,