On October 17, 2013, the US District Court for the Northern District of Georgia issued an opinion in RMS Titanic, Inc. v. Zaller, in which, among other rulings, the court granted in part and denied in part the defendant Zaller's motion to dismiss the plaintiffs' trade dress infringement claim under the Lanham Act for lack of federal subject matter jurisdiction. In so deciding, the court adopted the standard for Lanham Act extraterritorial jurisdiction articulated by the US Court of Appeals for the First Circuit in McBee v. Delica Co., Ltd. and rejected the plaintiff's reverse alter-ego theory for establishing personal and subject matter jurisdiction over a foreign corporate defendant.

Plaintiffs RMS Titanic, Inc. (RMS Titanic) and Premier Exhibitions, Inc. (Premier) present museum-style exhibitions of artifacts from the wreckage of the famed Titanic. RMS Titanic and Premier are both Florida corporations with their principal place of business in Atlanta, Georgia. Defendant Thomas Zaller is an American citizen, a former Premier employee and the CEO of the co-defendant Singapore corporation, Imagine Exhibitions, PTE, LTD (Imagine-Singapore) and certain other, Georgia- and Nevada- incorporated co-defendants.

While an employee of Premier, Zaller requested and obtained from the company confidential information concerning the design and layout of the plaintiffs' Titanic exhibit, representing that he needed this information to negotiate the exhibit's staging for the plaintiffs in Singapore. During the exhibit's Singapore run, Zaller and the corporate defendants, without the plaintiff's knowledge or consent, contracted to present their own Titanic exhibit in Macau, China using the confidential information the plaintiffs had given to Zaller.

After the Macau exhibit opened, RMS Titanic and Premier sent Zaller and his affiliated companies written cease and desist notices to discontinue their presentation. The defendants ignored these notices and RMS Titanic and Premier sued the defendants claiming:

RMS Titanic and Premier also alleged that defendant Zaller's disregard of required corporate formalities warranted piercing the defendant companies' corporate veil.

The defendants' primary argument for dismissing the action was that the court lacked federal subject matter jurisdiction over the plaintiffs' Lanham Act claim. They argued that:

The court observed that the Lanham Act can be applied extraterritorially under appropriate circumstances. For example, following the US Supreme Court's decision in Steele v. Bulova Watch Co., the Second Circuit held that federal subject matter jurisdiction exists under the Lanham Act when:

Although it cited several variations of this well-known Vanity Fair test, first formulated by the Second Circuit in Vanity Fair Mills, Inc. v. T Eaton Co., the US District Court for the Northern District of Georgia decided to adopt the more recent standard developed by the First Circuit in McBee v. Delica Co., Ltd. Under a McBee analysis, the court asks:

Applying this analysis, the court concluded that the plaintiffs' allegations were insufficient to support an extraterritorial application of the Lanham Act to Imagine-Singapore because its conduct in Macau did not have any, let alone the required substantial, effect on US commerce. Specifically, the plaintiffs did not allege that Imagine-Singapore:

The plaintiffs argued that the court should ignore Imagine-Singapore's formal status as a foreign defendant and exercise subject matter jurisdiction over this Singapore corporation as the alter ego of Zaller, a US citizen. Under the plaintiffs' proposed alter-ego analysis, because Imagine-Singapore was controlled by Zaller, its president, CEO and sole shareholder, the court should pierce the corporate veil to hold Imagine-Singapore liable as if it were a US corporation.

The court rejected this argument, deeming it illogical and a misapplication of the alter ego theory because:

For the same reasons, the court also rejected RMS Titanic's reverse alter ego theory for establishing personal jurisdiction over Imagine-Singapore.

The RMS Titanic, Inc. v. Zaller case is noteworthy for citing the different tests under which Lanham Act claims may be found to have extraterritorial application and for suggesting that the extraterritorial reach of these claims may be determined by the plaintiff's choice of the federal circuit within which it files the action.