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For the Northern District of California

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

GALLUP, INC.,

Plaintiff,

 v.

BUSINESS RESEARCH BUREAU (PVT.)

LTD., d/b/a GALLUP PAKISTAN, IJAZ

SHAFI GILANI, GALLUP BUSINESS

RESEARCH SERVICES (PVT.) LTD.,

d/b/a GALLUP PAKISTAN, and GALLUP

PAKISTAN (PVT.) LTD.,

Defendants. /

No. C 08-01577 WHA

ORDER DENYING MOTION

FOR SUMMARY JUDGMENT

AND VACATING HEARING

INTRODUCTION

This civil action is but one front in a global war over the “Gallup” name. In this

extraterritorial trademark dispute involving a foreign polling organization’s right to publish

opinion polls on the Internet under the name “Gallup Pakistan,” plaintiff Gallup, Inc. moves for

summary judgment and a permanent injunction against pro se defendant Ijaz Shafi Gilani, a

resident and citizen of the Islamic Republic of Pakistan and Chairman of Gallup Pakistan, a

foreign corporation that has been conducting Pakistani opinion surveys for nearly thirty years. 

For the reasons set forth below, the motion must be DENIED.

STATEMENT

The United States trademark system is one of many in the world. Unsurprisingly, this has

given rise to contentious international disputes over the right to use a particular mark across

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 While Americans may know Budweiser as Anheuser-Busch’s iconic “King of

Beers,” the Czech brewery of Budejovicky Budvar has won the rights to the Budweiser

trademark in numerous foreign jurisdictions. See Jitka Smith, Comment: Budweiser or

Budweiser?, 32 J. Marshall L. Rev. 1251 (1999) (summarizing the worldwide trademark

dispute over the Budweiser name).

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multiple jurisdictions. One need only order a Budweiser in beer halls around the globe to see

these conflicts at work.1

 

In the online world, the confluence of conflicting trademark systems presents even more

challenging questions of jurisdiction and enforcement. Indeed, the Internet — at least as it exists

today — is a medium largely lacking in effective border controls. As such, information posted

online is often readily accessible to Internet users regardless of where it is geographically located. 

The result is a free and largely unregulated flow of data between distant lands with different

systems of laws.

At the heart of the instant dispute is whether Gallup Pakistan — who may or may not be

using the “Gallup” name lawfully under Pakistan’s own trademark system — may continue to

publish polls and surveys of the Pakistani populace on its website without violating United States

trademark laws. The alleged violation of United States trademark law, as argued by plaintiff

Gallup, Inc., occurs every time an American news outlet decides to publish poll results posted on

Gallup Pakistan’s website and credit Gallup Pakistan as the source of the poll. According to the

complaint, this happened approximately eighteen times during the 2008 Pakistani parliamentary

elections. Gallup Pakistan, in return, receives no direct compensation from these American news

outlets when its polls are cited. Nevertheless, plaintiff asserts that Gallup Pakistan has “directed”

its polls and surveys to the United States by making the Gallup Pakistan website accessible in

English to the American market, and this is sufficient for trademark infringement to be found and

an injunction to issue.

With this background in place, the specific facts of the dispute are presented below.

1. THE PARTIES

Plaintiff Gallup, Inc. is a market research and public opinion polling company

incorporated under the laws of Delaware (Anderson Decl. ¶¶ 5–6, Exhs. C–E). It is the

undisputed owner of eleven registered United States trademarks and service marks for its family

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28 2

 This docket entry refers to the declaration of Ken Anderson filed in support of

plaintiff’s opposition to defendant Gilani’s motion to dismiss.

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of GALLUP products (id. ¶¶ 8, 9, Exhs. F–P). Five of these marks, including the GALLUP

service mark, have become incontestable under Section 1065 of the Lanham Act (id. ¶ 9, Exhs.

F–J). See 15 U.S.C. 1065. Tens of millions of U.S. dollars have been spent by plaintiff to

advertise and promote the GALLUP name (id. ¶ 12). Defendant Gilani acknowledges and does

not dispute that plaintiff has the exclusive right to conduct and publish surveys in the United

States under the GALLUP name (Gilani Decl. ¶ 11).

Proceeding pro se with the assistance of his son, Gilani is a professor at the International

Islamic University, Islamabad, Pakistan, and is the Chairman and Chief Executive of Gallup

Business Research Services (Pvt.) Ltd. (“GBRS”) and Gallup Pakistan (Pvt.) Ltd. (id. ¶¶ 8, 9, 14). 

Additionally, Gilani is or was a director of Business Research Bureau (Pvt.) Ltd. (“BRB”) (Dkt.

13 at 6). GBRS, Gallup Pakistan, and BRB were all named defendants in the amended complaint

(Compl. ¶ 2). 

Professor Gilani has been involved in public opinion research in Pakistan since 1980

(Gilani Decl. ¶ 10). This is the same year that Gallup Pakistan was apparently established (see

Andersen Decl. Exh. Q). Gallup Pakistan’s website, located at http://www.gallup.com.pk, is

available only in English, and prominently displays a GALLUP PAKISTAN mark in the upper

left hand corner of the website’s navigational toolbar (id. ¶ 16, Exh. Q). The website also

prominently displays a heading entitled “Dr. Gilani’s Corner,” which links to writings from

Gilani in his personal capacity. One of these writings was an academic paper written by Gilani

that bore the GALLUP PAKISTAN mark (ibid.). Since the filing of this lawsuit, a disclaimer was

added to Gallup Pakistan’s website disclaiming any relation to plaintiff, stating (Opp. 11; Dkt.

No. 61 ¶ 12):2

Disclaimer: Gallup Pakistan is not related to Gallup Inc.

headquartered in Washington D.C. USA. We require that our

surveys be credited fully as Gallup Pakistan (not Gallup or Gallup

Poll). We disclaim any responsibility for surveys pertaining to

Pakistani public opinion except those carried out by Gallup

Pakistan, the Pakistani affiliate of Gallup International

Association.

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This disclaimer, however, was purportedly not present on Gallup Pakistan’s website at the time

the alleged infringing acts occurred.

Both the GALLUP (left) and GALLUP PAKISTAN (right) marks are displayed below:

The respective websites of plaintiff (left) and defendant (right) are also displayed below:

2. THE ALLEGED INFRINGING ACTS

The complaint alleged the following infringing acts committed by defendant Gilani. First,

Gallup Pakistan — presumably at Gilani’s direction — published the results of six Pakistani

public opinion polls on its website between January 11, 2008, and February 22, 2008 (Compl. ¶

32; Dkt. No. 61 ¶ 10). According to plaintiff, the polls were “made available to the public and

press” on the website and each poll “bore the mark GALLUP” (Br. 4; Dkt. No. 61 ¶ 10). 

Defendant disputes this characterization, and asserts that all polling and survey results produced

by Gallup Pakistan bore (or were referred to with) the GALLUP PAKISTAN mark rather than the

GALLUP mark (Gilani Decl. ¶ 16). These six polls were republished eighteen times in the

United States by thirteen major news organizations, including The New York Times, Reuters, and

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Time (Dkt. 61 ¶ 11, Exhs. A–R). In two of the articles cited by plaintiff, the poll results were

inaccurately attributed to “Gallup” (id. ¶ 11, Exhs. M, N). 

Second, Gilani admitted in his answer that he gave an interview on National Public

Radio’s “Morning Edition” on February 12, 2008, in which he discussed Gallup Pakistan poll

results (Compl. ¶ 38; Ans. ¶ 38). The show’s host, who had traveled to Islamabad to conduct the

interview with Gilani, introduced defendant as head of the “Pakistani chapter of the Gallup

polling organization” (ibid.). 

Third, Gilani admitted in his answer that he appeared in a teleconference event for the

Center for Strategic & International Studies (“CSIS”) on February 15, 2008, in which he

discussed Gallup Pakistan poll results (Compl. ¶ 39; Ans. ¶ 39). There is no evidence or

allegation that defendant was in the United States while participating in this event. During the

teleconference, which was broadcast over the Internet, Gilani was introduced as the “Chairman of

Gallup Pakistan” (ibid.). 

Fourth, Gilani visited the United States to give talks at the 2007 International Studies

Association Convention in Chicago and the 2008 International Studies Association Congress in

San Francisco (Gilani Decl. ¶¶ 14, 15). While Gilani admitted that he appeared at those events in

his capacity as an academic, he denied the allegation that he discussed Gallup Pakistan or its

polling results in his talks (Compl. ¶ 40-42; Ans. ¶ 40-42). The subject of the 2007 talk was

Gilani’s commentary on a book entitled “Anti-Americanisms in World Politics” (Gilani Decl. ¶

14). After returning to Islamabad, Gilani then wrote and posted to the Gallup Pakistan website a

paper incorporating the themes explored in his talk (Andersen Decl. ¶ 16, Exh. Q; Gilani Decl. ¶

14). This paper bore the GALLUP PAKISTAN mark (Andersen Decl. ¶ 16, Exh. Q). 

The subject of Gilani’s 2008 appearance in San Francisco is less clear, but Gilani

participated in a session devoted to the life and works of one of his former university professors

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 Gilani was apparently unaware that this lawsuit had been filed against him until a

law firm in San Francisco, with whom Gilani had no prior dealings, contacted him in

Pakistan and notified him of these proceedings (Dkt. No. 13 at 1–2). The law firm agreed to

contact plaintiff’s counsel on Gilani’s behalf to seek an extension of time to file an answer

(id. at 2; Dkt. No. 11 ¶¶ 5–7). Gilani, however, did not have sufficient the funds to retain the

law firm, and therefore has proceeded pro se in his defense.

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(Opp. 4; Gilani Decl. ¶ 15). It was also at this event where plaintiff’s process server handed the

summons and complaint to Gilani, which Gilani refused to touch (Gilani Decl. ¶ 15).3

Fifth, plaintiff asserts that Gilani was interviewed and identified as “a pollster with Gallup

Pakistan” in a segment of a CNN Newsroom program on or before October 28, 2009 (Anderson

Decl. ¶ 19).

3. GALLUP INTERNATIONAL ASSOCIATION

Gallup International Association (“GIA”) is not a party to this litigation. Nevertheless,

GIA is referenced numerous times throughout defendant Gilani’s answer, opposition brief, and

declaration in support of his opposition to summary judgment, as well as in the screenshots of the

Gallup Pakistan website plaintiff included in its declaration in support of this motion (Ans. ¶¶ 2,

17, 19, 29; Opp. 1, 2, 9, 11, 16; Gilani Decl. Exh. 3; Anderson Decl. ¶ 16, Exh. Q). Indeed, the

GALLUP PAKISTAN mark itself contains the phrase “Affiliated with Gallup International”

(Anderson Decl. ¶ 16, Exh. Q). Plaintiff Gallup, Inc. has not mentioned anywhere in this dispute

the existence of this separate organization.

Based upon the Gallup Pakistan website excerpts included in plaintiff’s declaration, as

well as information included in defendant’s supporting declaration, GIA was founded in London

in 1947 and offers comprehensive research in over 100 countries worldwide via its network of

member companies (Anderson Decl. ¶ 16, Exh. Q; Gilani Decl. Exh. 3) Gallup Pakistan is

apparently an affiliate — or one of the “member companies” — of GIA (ibid.; Opp. 1, 2). 

Additionally, there are apparently many other members of GIA in countries other than Pakistan

who are using the “Gallup” name, including Gallup Korea, Capacent Gallup in Iceland, and CID

Gallup in Latin America, among others (Gilani Decl. Exh. 3).

Of course, whether GIA or other member companies across the world are involved in

parallel litigation with plaintiff has not been presented by any sworn evidence before the Court,

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 The existence of GIA and other “Gallup”-branded GIA affiliates, however, is

certainly relevant to whether defendant Gilani was operating Gallup Pakistan with the intent

to violate plaintiff’s trademark rights in the United States or as merely one of numerous

member companies of a long-established international association.

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 Defendant Gilani attempted to answer on behalf of BRB, but since Gilani was (and

is) not a lawyer, he was not allowed to represent BRB under Civil Local Rule 3-9(b) (Dkt.

No. 14). As such, since corporations cannot represent themselves pro se, default was entered

against BRB, as well as the other corporate defendants in this action. 

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nor is it relevant to the determination of infringement in the United States.4

 That said, it is worth

noting — for the sake of narrative background — that GIA was allegedly founded by the same

Dr. George H. Gallup that founded plaintiff’s company, Gallup, Inc. (Opp. 1; Anderson Decl. ¶¶

1–5). Additionally, Gallup, Inc. was allegedly a former member of GIA until sometime in the

1990’s (Opp. 2). 

After leaving GIA, plaintiff has allegedly been involved in ongoing trademark disputes

with GIA affiliates in various jurisdictions across the world (Opp. 3).

* * *

Plaintiff filed this action against defendants Gilani and BRB on March 24, 2008,

amending its complaint on August 22, 2008, to add defendants GBRS and Gallup Pakistan (Dkt.

Nos. 1, 47). Gallup Pakistan, GBRS, and BRB failed to answer, eventually resulting in an entry

of default against each (Dkt. Nos. 15, 66, 71).5

 Upon plaintiff’s motion, the undersigned entered

default judgment against these three entities on April 3, 2009 (Dkt. Nos. 88, 89). Defendant

Gilani, however, filed a timely answer pro se, wherein he appeared to raise the defenses of

insufficient service of process, lack of personal jurisdiction, and lack of subject-matter

jurisdiction (Dkt. No. 13). At the telephonic case management conference held on August 21,

2008, the undersigned set a deadline of September 25, 2008, for defendant to file any Rule 12

motion, noting that personal jurisdiction was “the first order of business to decide” (Dkt. No. 45). 

Defendant, however, filed a motion to dismiss the complaint for lack of subject-matter

jurisdiction, and did not challenge personal jurisdiction in his motion (Dkt. Nos. 54). The motion

was denied, as the undersigned determined that the complaint alleged sufficient acts within the

United States to warrant the exercise of subject-matter jurisdiction (Dkt. No. 68). Defendant

Gilani then filed an answer to plaintiff’s amended complaint, wherein he again asserted

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 Plaintiff’s request to voluntarily dismiss its unjust enrichment claim is GRANTED.

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insufficient service of process, lack of personal jurisdiction, and lack of subject-matter

jurisdiction (Dkt. No. 86).

Plaintiff now moves for summary judgment on all but one of its claims against Gilani. 

ANALYSIS

The amended complaint alleged five claims for relief under federal and state law: (1)

federal trademark infringement under Section 32 of the Lanham Act, 15 U.S.C. 1114–1117; (2)

federal unfair competition under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a); (3) federal

dilution of famous marks under Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c); (4)

California unfair competition under Cal. Bus. & Prof. Code § 17200; and (5) common law unjust

enrichment (Compl. ¶¶ 54–69).

In its motion, plaintiff asked the Court to voluntarily dismiss its fifth claim for unjust

enrichment, and indicated that it was no longer seeking damages against defendant Gilani (Br. 2).6

Additionally, plaintiff sought to enjoin defendant from the following activities:

1. Using, in connection with the promotion, advertising,

offering, or sale of any opinion poll, survey, or consulting

services in the United States, the GALLUP Marks or any

other designation that is confusingly similar to or likely to

cause confusion with any of the GALLUP Marks, or any

other designation that dilutes or is likely to dilute the

GALLUP Marks.

2. Operating a website that is in English and is accessible to

persons within the United States under the internet domain

name, gallup.com.pk, or any other internet domain name

that is confusingly similar to Gallup’s website address of

www.gallup.com.

3. Otherwise competing unfairly with Gallup in any manner

including (1) adopting or infringing upon the GALLUP

Marks and (2) adopting or using other marks or

designations that are confusingly similar to the GALLUP

Marks.

4. Conspiring with, aiding, assisting, or abetting any other

person or business entity in engaging in or performing any

of the activities referred to above.

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 It should be noted that while operating a website on the Internet is apparently

sufficient to place oneself within the ambit of interstate commerce, it is not alone sufficient

for personal jurisdiction to be found. See, e.g., Cybersell, Inc. v. Cybersell, Inc., 130 F.3d

414 (9th Cir. 1997) (declining to exercise personal jurisdiction over a Florida defendant even

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Whether plaintiff is entitled to summary judgment on its first four claims, however, must

yield to a separate inquiry, as issues of comity and extraterritorial jurisdiction have grown evident

in light of the factual record presently before the Court.

Subject-matter jurisdiction may be raised sua sponte by a court at any time during the

pendency of an action. Snell v. Cleveland, Inc., 316 F.3d 822, 826 (9th Cir. 2002). While the

undersigned preliminarily addressed the issue of subject-matter jurisdiction when raised by

defendant Gilani in his motion to dismiss, that order — filed on November 10, 2008 — relied

solely upon the facts as alleged by plaintiff in its complaint, and did not address extraterritorial

jurisdiction (Dkt. No. 68). Plaintiff, however, can no longer rely upon mere allegations. Given

the evidence now presented by both parties, this order finds that jurisdiction must be revisited.

A recap of the prior order on this matter is instructive. The November 10 order found that

plaintiff had alleged sufficient violations of the Lanham Act within the United States to justify the

exercise of subject-matter jurisdiction. Specifically, the order noted that the Lanham Act

provided a “broad jurisdictional grant” extending to “all commerce which may lawfully be

regulated by Congress.” Steele v. Bulova Watch Co., 344 U.S. 280, 283–284 (1952). The Ninth

Circuit then expanded the scope of jurisdiction to any activity that could “have an adverse effect

on that commerce.” Wells Fargo & Co. v. Wells Fargo Exp. Co., 556 F.2d 406, 427 (9th Cir.

1977). With respect to foreign commerce, the Ninth Circuit noted that only “some effect” on

American commerce was necessary for subject-matter jurisdiction to lie. Id. at 428.

Given this broad jurisdictional grant, the November 10 order found that the complaint met

this low threshold for subject-matter jurisdiction under the Lanham Act with respect to the

alleged infringing activities. Specifically, the undersigned determined that under United States v.

Sutcliffe, 505 F.3d 944, 953 (9th Cir. 2007), defendant Gilani’s website, transmitted worldwide

over the Internet, fell within the scope of commerce lawfully regulated by Congress because the

Internet has been deemed an “instrumentality and channel of interstate commerce.”7

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28 though its website was accessible in Arizona, the state where plaintiff held valid trademark

rights). As the November 10 order expressly noted, however, defendant Gilani did not

challenge personal jurisdiction in his motion to dismiss. 

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Additionally, the November 10 order determined that defendant’s use of the alleged infringing

mark to identify the source of polls, surveys, and academic papers was a “use in commerce . . . of

a registered mark in connection with the . . . distribution . . . of goods,” and was therefore

actionable under 15 U.S.C. 1114. Finally, because the complaint alleged that each of Gilani’s

alleged infringing acts had “some effect” on American commerce, under Wells Fargo, this was

sufficient to confer subject-matter jurisdiction under the Lanham Act.

With a more developed record, however, it is clear that the inquiry must proceed further. 

This is because the jurisdictional test applied in the November 10 order did not include a critical

limitation set forth by the Ninth Circuit pertaining to the Lanham Act’s reach over extraterritorial

activities. Indeed, without this limitation, the jurisdictional rules set forth above in Bulova, Wells

Fargo, Sutcliffe, and 15 U.S.C. 1114, lead to the overbroad and improper conclusion that subjectmatter jurisdiction is proper over any website accessible to users in the United States over the

Internet. In other words, under the incomplete analysis performed in the November 10 order,

even if a website was being operated by a legitimate organization beyond the geographic borders

of the United States, and used a trademark that was valid in the foreign jurisdiction’s trademark

system, it would nonetheless fall under the subject-matter jurisdiction of the Lanham Act, and an

infringement action would lie. 

This very situation presents itself here. The evidence now before the Court indicates that

defendant Gilani is a citizen and resident of Pakistan, has no business connections with the United

States, and Gallup Pakistan — the organization he founded and has operated for nearly thirty

years — conducts public opinion polls solely within the country of Pakistan and does not sell or

advertise services in the United States. Given these facts, it is clear that the relief sought by

plaintiff would require the Court to exercise authority over activities that are wholly

extraterritorial and not directed to the United States (Gilani Decl. ¶¶ 1–10).

The Ninth Circuit’s limitation on extraterritorial jurisdiction under the Lanham Act, as set

forth in Wells Fargo, requires the application of the three-factor test set forth in Timberlane

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 One of the reasons a Timberlane analysis was not conducted in the November 10

order was due to plaintiff’s assertion that “[i]f Gallup has requested any relief that seeks to

reach beyond defendants’ activities conducted in and/or directed at the United States, such

requests were inadvertent and are hereby withdrawn” (Dkt. No. 60 at 17). Gallup, however,

failed to produce any competent evidence that Gilani’s overseas activities were “conducted

in” or “directed at” the United States. As such, the activities plaintiff seeks to enjoin now

appear wholly extraterritorial. 

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Lumber Co. v. Bank of America National Trust & Savings Ass’n, 549 F.2d 597 (9th Cir.1976). 

Wells Fargo, 556 F.2d at 427–28. While the November 10 order declined to engage in a

Timberlane analysis, it is now clear that its application is necessary.8 Under Timberlane, the

court must consider three factors when deciding to extend the Lanham Act’s jurisdictional reach

over extraterritorial activities: (1) there must be “some effect” on American foreign commerce,

(2) the effect must be sufficiently great to present a cognizable injury to plaintiffs under the

federal statute, and (3) the interests of and links to American foreign commerce must be

sufficiently strong in relation to those of other nations to justify an assertion of extraterritorial

authority. Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1395 (9th Cir. 1985). 

The application of Timberlane to this case raises troubling concerns. While there is no

question that plaintiff has put forth evidence that defendant’s activities in releasing poll results

on the Gallup Pakistan website have had “some effect” on its trademark rights in the United

States, there is little evidence on the record to find that defendant’s extraterritorial activities have

inflicted or will inflict a cognizable injury upon plaintiff in the United States. Indeed, while

plaintiff presented evidence of six polls conducted by defendant during a six-week period in 2008

surrounding the Pakistani parliamentary elections, and showed that these polls were published by

eighteen news organizations in the United States bearing either the GALLUP or GALLUP

PAKISTAN mark, there is little else to justify the imposition of the severe equitable relief sought

in its motion. All plaintiff has shown is that defendant Gilani, who has presumably conducted

hundreds if not thousands of polls in Pakistan since 1980, conducted six polls in his home country

that were deemed newsworthy by American news outlets.

Additionally, the record presents troubling issues of comity. When examining the last

factor under Timberlane, the court considers:

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[T]he degree of conflict with foreign law or policy, the nationality

or allegiance of the parties and the locations or principal places of

business of corporations, the extent to which enforcement by either

state can be expected to achieve compliance, the relative

significance of effects on the United States as compared with those

elsewhere, the extent to which there is explicit purpose to harm or

affect American commerce, the foreseeability of such effect, and

the relative importance to the violations charged of conduct within

the United States as compared with conduct abroad.

Timberlane, 549 F.2d at 614. Here, both plaintiff and defendant are in the process of establishing

their rights to the GALLUP mark within Pakistan’s own trademark system (Gilani Decl. ¶ 12;

Compl. ¶¶ 24–28). If plaintiff were to be successful in this endeavor, the relief sought by this

motion would be unnecessary, as plaintiff could use the full force of Pakistan’s trademark laws to

enjoin defendant’s allegedly infringing activities in that country. On the other hand, if defendant

were to prevail in registering his trademark in Pakistan, granting plaintiff’s equitable relief in this

action would significantly interfere with defendant’s right to use the GALLUP PAKISTAN mark

lawfully in Pakistan. In sum, there is a substantial risk of conflict with foreign law, as the parties’

trademark rights in Pakistan are being disputed contemporaneously with this action. See 

Star-Kist, 769 F.2d at 1396 (declining to apply the Lanham Act to wholly foreign Philippine

commerce because it would create a conflict with Philippine trademark law, given the fact that

trademark proceedings were pending in that country).

Additionally, unlike in Bulova, Wells Fargo, and Star-Kist, defendant Gilani has no ties to

the United States — he is not a United States citizen and has no business presence in this country. 

See Bulova, 344 U.S. at 285–86 (alleged infringer Steele was an American citizen who imported

watch parts from the United States into Mexico); Wells Fargo, 556 F.2d at 411 (foreign

defendants owned subsidiaries within the United States); Star-Kist, 769 F.2d at 1394 (both parties

were California corporations). Additionally, the evidence supports a finding that the alleged

infringing polls and surveys published by defendant Gilani on the Gallup Pakistan website had no

ties to the United States other than (1) being in English and accessible over the Internet, and (2)

being, on six occasions, of international interest such that American news outlets cited to them. 

Also troubling under the third Timberlane factor is whether the Court can even enforce

compliance of plaintiff’s requested relief with respect to defendant’s extraterritorial activities. 

Case 3:08-cv-01577-WHA Document 112 Filed 02/11/10 Page 12 of 16
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For the Northern District of California

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 Although asserted by defendant in his unsworn brief, it is noted that English is

allegedly the de facto official language of Pakistan, and also the language in which most

Pakistanis access the Internet (Opp. 10).

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Indeed, the relief sought by plaintiff would require defendant Gilani to transfer his website to a

new domain name, publish his polls in a language other than English, or block all access to his

website from the United States.9

 Given that both defendant and his website appear to be located

in Pakistan, it is unclear how such relief could be enforced. Moreover, if plaintiff’s requested

relief was granted, defendant would also be enjoined from using the GALLUP or GALLUP

PAKISTAN mark for any opinion poll or survey that could be potentially accessed and published

by American news outlets. Given the borderless nature of Internet communications, it is difficult

to imagine how defendant Gilani could accomplish this without significant capital investments or

abandoning the GALLUP PAKISTAN name entirely.

Since only six of presumably thousands of Gallup Pakistan surveys have been of sufficient

international interest to be selected for publication by American news outlets, the relief requested

by plaintiff seems plainly unfair. It would essentially shut down a foreign company that has been

taking polls and surveys of the Pakistani public for over thirty years as a longstanding member of

GIA, which was apparently founded by the very George H. Gallup that founded Gallup, Inc. This

decades-long membership of Gallup Pakistan in GIA strongly suggests that Gilani did not (and

does not) intend to harm American commerce or plaintiff’s mark in the United States by operating

the Gallup Pakistan website.

Finally, the effect on United States commerce from the allegedly infringing uses of the

GALLUP mark by defendant in operating Gallup Pakistan is insignificant compared to the effect

on Pakistani commerce. See Star-Kist, 769 F.2d at 1396 (noting a similar imbalance before

affirming the district court’s exclusion of wholly foreign commerce from the Lanham Act). Here,

plaintiff has only shown that six out of potentially thousands of polls conducted by Gallup

Pakistan over the past thirty years found their way into American news publications. As such,

this order finds that the effect of defendant’s conduct on the commerce of Pakistan greatly

outweighs any incidental effect defendant’s activities may have had on United States commerce.

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United States District Court

For the Northern District of California

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10 Plaintiff is quick to assume that this indicates Ms. Northam’s confusion over

whether Gallup Pakistan was affiliated with Gallup, Inc. However, given that Gallup

Pakistan has been affiliated with Gallup International Association for decades, it can be

equally inferred that Ms. Northam was confused as to whether Gallup International

Association was Gallup, Inc. Indeed, Gilani’s answer asserts that Ms. Northam simply erred

in referring to Gallup International Association (Ans. ¶ 38). 

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The Timberlane analysis is a “jurisdictional rule of reason” of comity and fairness. Wells

Fargo, 556 F.2d at 428. The record as it stands, giving full consideration to these principles, does

not support the extension of extraterritorial jurisdiction under the Lanham Act to defendant

Gilani’s wholly foreign activities. Significantly, plaintiff has not provided competent evidence of

any “purpose to harm or affect American commerce” on behalf of defendant. Timberlane, 549

F.2d at 614. Indeed, Plaintiff’s only argument on this point is that because defendant Gilani’s

website is “maintained in English and is accessible in the United States,” it should fall within the

scope of the Lanham Act’s extraterritorial jurisdiction. This is tantamount to saying that any

website maintained in English could be deemed infringing, because if it is in English, Americans

might be interested in reading it or citing to it. This is insufficient, unpersuasive, and unfair in

light of the considerations set forth in Timberlane.

The above analysis applies with equal force over defendant Gilani’s interview with NPR

on February 12, 2008, teleconference participation on February 15, 2008, and interview with

CNN on October 28, 2009. Gilani was not alleged to have been within the United States for any

of these events. With respect to the February 15 teleconference, Gilani’s affiliation with Gallup

Pakistan was accurately reported as being “Chairman of Gallup Pakistan.” As for the NPR

interview, the host of Morning Edition, Jackie Northam, ambiguously credited defendant Gilani

as “head[ing] up the Pakistani chapter of the Gallup polling organization.”10 On CNN, Gilani was

identified as “a pollster with Gallup Pakistan.” While all of these events were presumably

broadcast to (or were available for viewing within) the United States, the same concerns under

Timberlane persist. Indeed, plaintiff essentially asks the Court to hold that mere participation in

an international teleconference or news program broadcast to the United States (or available for

viewing in the United States via the Internet) is sufficient to subject the holder of a presumably

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11 To be clear, the only allegedly infringing acts committed within the United States

are Gilani’s appearances in Chicago and San Francisco. Plaintiff argues that Gilani’s

placement of polls on the Gallup Pakistan website should also be considered acts of

infringement within the United States. This argument is unpersuasive. The publishing of

polls on the Gallup Pakistan website is a separate act from the re-publishing of polls by news

outlets in the United States. With respect to the latter act, plaintiff has not put forth any

theory or evidence as to why Gilani should be held liable under the Lanham Act for the

independent decisions and actions of American news media.

12 This extends further to plaintiff’s remaining state law claim of unfair competition,

since it is predicated upon defendant’s alleged violations of the Lanham Act (Compl. ¶¶

66–69). Since this order finds that no violations have been shown (or the acts are simply

beyond the reach of the Lanham Act), the state law claim must fail.

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valid foreign trademark to infringement liability under the Lanham Act. The principles of comity

and fairness weigh strongly against this argument.

Finally, while the two appearances made by defendant Gilani within the United States in

2007 and 2008 clearly fall within the jurisdiction of the Lanham Act, plaintiff has not presented

any evidence that Gilani’s appearances involved the use of the GALLUP or GALLUP

PAKISTAN mark. Plaintiff can only point to a publication bearing the GALLUP PAKISTAN

logo that was written and posted on the Gallup Pakistan website after Gilani had returned to

Islamabad following his appearance at the 2007 International Studies Association Convention in

Chicago (Br. 10). For the same reasons discussed above, fairness and comity do not support

extending the Lanham Act over this wholly extraterritorial act.11

In sum, plaintiff has failed to produce competent evidence that defendant conducted any

activities within the United States in violation of the Lanham Act. Additionally, the jurisdictional

facts before the Court do not, under Timberlane, support the extension of the Lanham Act over

defendant’s alleged infringing activities overseas. These activities occurred in wholly foreign

commerce, and any effects they had on United States commerce — based upon the record before

the undersigned — were incidental and insignificant. Star-Kist, 769 F.2d at 1396. As such, the

Court declines to extend the Lanham Act to defendant’s extraterritorial activities, and therefore

declines to authorize the equitable relief sought by plaintiff.12

CONCLUSION

For the reasons set forth in this order, plaintiff’s motion for summary judgment is

DENIED. The hearing on this motion scheduled for February 18, 2010, is VACATED. 

Case 3:08-cv-01577-WHA Document 112 Filed 02/11/10 Page 15 of 16
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28 13 Pending plaintiff’s response, the ruling in this order will remain tentative.

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Plaintiff is ORDERED TO SHOW CAUSE by NOON ON THURSDAY, FEBRUARY 25, 2010,

why this action should not be dismissed for the reasons discussed herein.13 Additionally, plaintiff

is ordered to address why the Court’s prior judgments against Gallup Pakistan, GBRS, and BRB,

should not be vacated on the same grounds. 

Plaintiff is cautioned to not simply rehash the arguments made in opposition to defendant

Gilani’s prior motion to dismiss, but focus on the critical issues raised in this order, including: (1)

why, under the third factor of Timberlane, the undersigned should interfere with the affairs of an

entirely foreign entity and the trademark laws of Pakistan when both parties are trying to establish

trademark rights under Pakistani law; (2) why maintaining a foreign website in English,

accessible to the United States, and containing information that may be of international interest

should be deemed infringing activity “directed to” the United States; (3) whether Gallup

Pakistan’s decades-long membership in GIA demonstrates that defendant had no intent to harm

plaintiff’s mark in the United States; and (4) the implications of holding a foreign entity with a

presumably valid foreign trademark liable for trademark infringement under the Lanham Act

when the foreign trademark is cited, properly or improperly, by the American press.

IT IS SO ORDERED.

Dated: February 11, 2010. WILLIAM ALSUP

UNITED STATES DISTRICT JUDGE

Case 3:08-cv-01577-WHA Document 112 Filed 02/11/10 Page 16 of 16