August 04, 2005

No extraterritorial use of the Lanham Act

Cecil McBee is an American musician. Delica is a Japanese company, which uses the trademark Cecil McBee in Japan and on the internet ( The latter holds the trademark in both Japanese and Roman characters, and uses it for clothes.
McBee (the American) petitioned the Japanese Patent Office to invalidate Delica's English-language trademark. He failed in 2002.
After 2002, Delica formulated a policy not to sell or ship Cecil McBee products to the United States.
Three Japanese-speaking persons commissionned by Cecil McBee tried to buy Cecil McBee products from the Japanese website and failed, but they could order some from a few stores. The total value of goods sold and shipped to them in the US was 2,500 $. No other Cecil McBee products were sold in the US nor resold on eBay.
Cecil McBee said Delica harmed his reputation in the USA, and that American courts had jurisdiction over the case. After thorougly reviewing the case, the US Court of Appeals for the 1st circuit concluded it had jurisdiction, but that the plaintiff's claim was without merit because the only sales Delica has made into the United States were induced by him for purposes of this litigation.
The Court also concluded it lacked jurisdiction over McBee's other claim seeking an injunction in the US barring access to Delica's website, which is written in Japanese*. The website was created and hosted in Japan, was written almost entirely in Japanese, using Japanese characters although it contained some English words (for effect). Other websites associated with Delica's Cecil McBee product line, that also came up when searches for "cecil mcbee" were performed on search engines, were written primarily in Japanese.

* my emphasis

United States Court of Appeals For the First Circuit, Cecil McBee v.
Delica Co., Ltd., No. 04-2733, August 2, 2005

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