Thursday, March 2, 2017

Milestones: McBee v. Delica Co., 417 F.3d 107 (1st Cir. 2005)


Plaintiff Cecil McBee is a renowned jazz musician. Defendant is a Japanese clothing retailer who started a line of clothing named "Cecil McBee," and holds the Japanese trademark for the name Cecil McBee. Plaintiff first sued in Japan to invalidate the trademark, and ultimately lost. Plaintiff then sued in the U.S. alleging Lanham Act violation, and the district court dismissed for the lack of subject matter jurisdiction.

The circuit court affirmed, but for a slightly different reason. The court found that Lanham Act may be applied to extraterritorial activities of a foreign party to the extent that such activity affects the U.S. market, subject to comity concerns. Finding that the Japanese company's activities do not affect the U.S. market because the defendant took care not to have their products sold in the United States, the circuit court affirmed the decision to dismiss.


One notable part in the case: the plaintiff himself spent $2,500 to purchase defendants' products via online and had it shipped to U.S., and the court found it to be insufficient to establish a Lanham Act subject matter jurisdiction. Arguably, the purchase makes the point that it is possible for a U.S. party to get the offending product from abroad, but it does not appear to be sufficient.

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