Gallup's US action against Pakistani firm allowed

United States of America

In Gallup Inc v Business Research Bureau (PVT) Ltd (2008 WL 4857027, November 10 2008), the US District Court for the Northern District of California has held that Gallup Inc had sufficiently alleged that the defendant's activities occurred in the United States to establish subject matter jurisdiction.

Gallup, the well-known US pollster, sued Business Research Bureau (Pvt) Ltd, doing business as Gallup Pakistan, a Pakistani firm conducting opinion and socio-economic research polls in Pakistan, in federal court in the Northern District of California for trademark infringement and unfair competition. In response, Business Research moved to dismiss for lack of subject matter jurisdiction on the grounds that the alleged infringing acts, which were carried out by a Pakistani national, occurred in Pakistan, with no adverse consequences in the United States. 
The court disagreed and allowed Gallup to proceed with its infringement lawsuit for three separate reasons: 
  • Business Research published its poll results in the United States;
  • a representative of Business Research appeared in the United States to promote poll results under the Gallup Pakistan designation; and
  • Business Research operates a website accessible in the United States that features the Gallup Pakistan designation.  
The court specifically noted that the applicable test was whether the alleged infringement:
  • occurred within an area of commerce that Congress regulates; or
  • affected that commerce.
The court analyzed each of the alleged uses of the Gallup Pakistan designation using this test to determine whether the complaint withstood the motion to dismiss.
The court first examined whether Business Research’s advertisement of its poll results in the United States sufficed for subject matter jurisdiction. Based on the complaint's allegations, the court found that publishing and promoting poll results in the United States under the Gallup Pakistan designation sufficed for subject matter jurisdiction, since it affected commerce regulated by Congress. Likewise, the court held that actual appearances in the United States promoting services using the GALLUP PAKISTAN mark also affected commerce regulated by Congress, and thus sufficed for subject matter jurisdiction. 
Most relevant in a world where the Internet plays such a large role, the court held that the prominent display of the Gallup Pakistan designation on the website attached to the domain name '', which is accessible in the United States, also sufficed for subject matter jurisdiction. Quoting United States v Sutcliffe (505 F3d 944 953), the court held that Business Research’s "'operation of its website is commercial' and that the Internet is 'an instrumentality and channel of interstate commerce'".
Notably, in its reply brief on the motion to dismiss, Gallup conceded that it was not seeking damages or injunctive relief that reached Business Research’s activities in Pakistan, but rather that it was seeking relief only with regard to those activities that took place in the United States. However, given the apparent import of the United States to the activities of Business Research, it appears that relief only as to the United States could provide Gallup with a potent weapon to protect its GALLUP mark in its key marketplace.
Rochelle D Alpert, Morgan Lewis, San Francisco

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