USA – FLORIDA Trends and Developments Contributed by: Patricia M Flanagan, Camila Chediak, Brian J Paul and Jodi-Ann Tillman, Shutts & Bowen LLP
• permitting sister companies and their customers to use the marks to sell products in the US; and • US-directed marketing efforts. Registration and maintenance as purposeful availment By registering more than 60 trade marks and maintain - ing them at the USPTO, Polygroup Macau obtained valuable benefits “useful in infringement litigation,” including prima facie validity and the path to incontest - ability, and undertook continuing obligations (filings and US-counsel representation) that reflect deliberate engagement with US law. The court reasoned that a foreign entity that seeks and obtains a US property interest purposefully avails itself of US law. Related-company use and stream of commerce Polygroup Macau allowed sister companies to use its US-registered SUMMER WAVES marks without for - mal licences or royalties, while those entities market - ed and sold hundreds of SUMMER WAVES-branded products through major US retailers and funded Poly - group Macau’s US registrations and litigation, often with joint representation by counsel. The court took a highly realistic approach to the business relationship and held that indirect sales and co-ordinated activi - ties can establish minimum contacts notwithstanding corporate formalities. “Arise out of or relate to” The court rejected a strict but-for causation test, find - ing a close enough relationship between Polygroup Macau’s US contacts (registration, reliance on related- company use, and enforcement posture) and both the cancellation claim and the infringement/unfair com - petition claims. The cancellation claim directly arose from Polygroup Macau’s registration filings and dec - larations to the USPTO, and the infringement/unfair competition claims were sufficiently related because use in commerce is a prerequisite to registration and Polygroup relied on related-company use to obtain and maintain its US rights. Fair play and substantial justice In exercising jurisdiction comported with fair play and substantial justice, the Eleventh Circuit found that Polygroup Macau’s burden was slight given its extensive US IP portfolio and litigation history. This
finding was supported by the fact that the US has a strong interest in adjudicating rights in property that exists exclusively under US law and consolidating the dispute serves judicial efficiency. In sum, Jekyll Island clarifies that foreign entities who obtain and maintain US trade mark registrations, rely on US commerce ‒ direct or through affiliates ‒ to sup - port those rights, and engage with US enforcement mechanisms, can be subject to specific personal juris - diction in US courts under Rule 4 (k)(2), without a strict but-for causation. The decision encourages courts to take a pragmatic view of related-company structures and US-directed activities, signalling increased juris - dictional exposure for foreign IP holding companies and informing corporate, registration, and litigation strategies going forward. This decision expanded exposure for foreign IP hold - ing companies-foreign entities that centralise US IP in non-operating holding companies but rely on affili - ates’ US use can face specific jurisdiction in US courts under Rule 4 (k)(2). It also signals that courts in the dis - trict courts in Florida may look past formal absence of licensing or royalties and assess the “highly realistic” course of dealing, joint representation, and funding to attribute US contacts to the registrant; and a foreign registrant’s history of enforcing IP in US courts con - tributes to purposeful availment and reduces fairness objections to US jurisdiction. Case spotlight: establishing jurisdiction in digital copyright disputes in World Media All. Label, Inc. v Believe SAS, No. 24-12079, 2025 WL 2102017 (11th Cir. 28 July 2025) In July 2025, the Eleventh Circuit in the case of World Media Alliance Label, Inc. v Believe SAS reaffirmed an important but often overlooked limitation on copyright enforcement in Florida: merely alleging that infringing content online has been placed online is not sufficient to bring copyright suit against a foreign or out-of-state defendant in Florida federal court. The Eleventh Cir - cuit’s ruling adopts Florida Supreme Court precedent holding that in order to bring online tort claims, such as claims for infringement under the Copyright Act, in Florida against foreign or out-of-state defend - ants, plaintiffs must first establish that the court has jurisdiction by sufficiently pleading not only that the
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