Tire Engineering & Distribution, LLC v. Shandong Linglong Rubber Co., 682 F.3d 292

Background

Alpha, a domestic mining-tire producer, sued Al Dobowi and Linglong for theft of blueprints, production of infringing tires, and sales to Alpha's former customers.
An initial meeting in Virginia May 2005 (Canning, Vance, Kandhari) led to Alpha blueprints being shared with Al Dobowi and Linglong.
Vance, based in Virginia, helped develop the plan and maintained a Virginia office; Linglong coordinated with Vance to modify designs with Virginia involvement.
Manufacturing occurred abroad and in Virginia; Linglong produced tires, and Al Dobowi marketed them as Infinity, selling to customers including Sandvik.
The district court exercised personal jurisdiction over the foreign defendants; Alpha’s damages expert estimated $36 million in damages; the jury awarded $26 million.
The district court dismissed several Lanham Act and other claims as time-barred or unfounded, stayed by statutes of limitations, and later awarded Alpha nearly $632,377.50 in attorneys’ fees (reversed on appeal).

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether the district court had personal jurisdiction over the defendants	Alpha	Al Dobowi/Linglong	Jurisdiction proper over both defendants
Whether the Copyright Act reaches extraterritorial infringements via predicate acts	Alpha asserts predicate-act doctrine applies	Aliens cannot be subject to extraterritorial copyright liability	Predicate-act doctrine applies; Alpha may recover for foreign exploitation from domestic infringement
Whether Virginia conversion claim is preempted by the Copyright Act	Alpha conversion claim saved by extra element	Conversion preempted where no tangible object involved	Conversion not preempted; district court correctly denied preemption as to this claim
Whether Lanham Act claims extend to extraterritorial conduct	Lanham Act applies to foreign acts with effect on U.S. commerce	No sufficient significant effect on U.S. commerce; acts are abroad	Lanham Act claims dismissed for lack of significant U.S.-commerce effect
Whether civil conspiracy claims survive after dismissals of underlying torts	Conspiracy claim independent of underlying torts	Conspiracy claims preempted or unsupported where underlying torts dismissed	Conspiracy to infringe trademarks/copyrights dismissed; conspiracy to convert survives but damages intertwined; overall verdict adjusted

Key Cases Cited

Sunkist Growers, Inc. v. Winckler & Smith Citrus Prods. Co., 370 U.S. 19 (1962) (general verdicts may be overturned when a theory is dismissed)
Flowers v. Tandy Corp., 773 F.2d 585 (4th Cir. 1985) ( Flowers rule on damages where liability is not apportioned by theory)
Barber v. Whirlpool Corp., 34 F.3d 1268 (4th Cir. 1994) (new trial on damages required when postverdict dismissal affects apportionment)
CFA Institute for Fiduciary Excellence v. Institute of Chartered Financial Analysts of India, 551 F.3d 292 (4th Cir. 2009) (three-factor test for specific jurisdiction includes purposeful availment, arising out of the dispute, reasonableness)
Update Art, Inc. v. Modiin Publishing Ltd., 843 F.2d 67 (2d Cir. 1988) (predicate-act doctrine allowing damages for foreign exploitation from domestic infringement)
Sheldon v. Metro-Goldwyn Pictures Corp., 106 F.2d 45 (2d Cir. 1939) (predicate-act doctrine origin for extraterritorial damages)
L.A. News Serv. v. Reuters Television Int'l, Ltd., 149 F.3d 987 (9th Cir. 1998) (extraterritorial damages require predicate US infringement)
Litecubes, LLC v. North Light Prod., Inc., 523 F.3d 1353 (Fed. Cir. 2008) (copyright generally does not reach entirely abroad activities; predicate acts exception)
Nintendo of Am., Inc. v. Aeropower Co., 34 F.3d 246 (4th Cir. 1994) (extraterritorial reach depends on significant effect on U.S. commerce)
Rosciszewski v. Arete Associates, Inc., 1 F.3d 225 (5th Cir. 1993) (preemption analysis for copyright-related state claims)