Steele v. Bulova Watch Co.
Opinion of the Court
delivered the opinion of the Court.
The issue is whether a United States District Court has jurisdiction to award relief to an American corporation against acts of trade-mark infringement and unfair competition consummated in a foreign country by a citizen and resident of the United States. Bulova Watch Company, Inc., a New York corporation, sued Steele,
Petitioner concedes, as he must, that Congress in prescribing standards of conduct for American citizens may project the impact of its laws beyond the territorial boundaries of the United States. Cf. Foley Bros., Inc. v. Filardo, 336 U. S. 281, 284-285 (1949); Blackmer v. United States, 284 U. S. 421, 436-437 (1932); Branch v. Federal Trade Commission, 141 F. 2d 31 (1944). Resolution of the jurisdictional issue in this case therefore de
The Lanham Act, on which Bulova posited its claims to relief, confers broad jurisdictional powers upon the courts of the United States. The statute’s expressed intent is “to regulate commerce within the control of Congress by making actionable the deceptive and misleading use of marks in such commerce; to protect registered marks used in such comme[r]ce from interference by State, or territorial legislation; to protect persons engaged in such commerce against unfair competition; to prevent fraud and deception in such commerce by the use of reproductions, copies, counterfeits, or colorable imitations of registered marks; and to provide rights and remedies stipulated by treaties and conventions respecting trade-marks, trade names, and unfair competition entered
The record reveals the following significant facts which for purposes of a dismissal must be taken as true: Bulova Watch Company, one of the largest watch manufacturers in the world, advertised and distributed “Bulova” watches in the United States and foreign countries. Since 1929, its aural and visual advertising, in Spanish and English, has penetrated Mexico. Petitioner, long a resident of San Antonio, first entered the watch business there in 1922, and in 1926 learned of the trade-mark
On the facts in the record we agree with the Court of Appeals that petitioner’s activities, when viewed as a whole, fall within the jurisdictional scope of the Lanham Act. This Court has often stated that the legislation of Congress will not extend beyond the boundaries of the United States unless a contrary legislative intent appears. E. g., Blackmer v. United States, 284 U. S. 421,437 (1932) ; Foley Bros., Inc. v. Filardo, 336 U. S. 281, 285 (1949). The question thus is “whether Congress intended to make the law applicable” to the facts of this case. Ibid. For “the United States is not debarred by any rule of international law from governing the conduct of its own citizens upon the high seas or even in foreign countries when
Nor do we doubt the District Court’s jurisdiction to award appropriate injunctive relief if warranted by the facts after trial. 15 U. S. C. §§ 1116, 1121. Mexico’s courts have nullified the Mexican registration of “Bul-ova”; there is thus no conflict which might afford petitioner a pretext that such relief would impugn foreign law. The question, therefore, whether a valid foreign registration would affect either the power to enjoin or the propriety of its exercise is not before us. Where, as here, there can be no interference with the sovereignty of another nation, the District Court in exercising its equity powers may command persons properly before it to cease or perform acts outside its territorial jurisdiction. New Jersey v. New York, 283 U. S. 473 (1931); Massie v. Watts, 6 Cranch 148 (1810); The Salton Sea Cases, 172 F. 792 (1909); cf. United States v. National Lead Co., 332 U. S. 319, 351-352, 363 (1947).
Affirmed.
Joined as parties defendant were S. Steele y Cia., S. A., a Mexican corporation to whose rights Steele had succeeded, and Steele’s wife Sofia who possessed a community interest under Texas law.
While the record shows that plaintiff fully relied on his asserted cause of action “arising under” the Lanham Act, diversity of citizenship and the jurisdictional amount were also averred. As we are concerned solely with the District Court’s jurisdiction over the subject matter of this suit, we do not stop to consider the significance, if any, of those averments. Cf. Pecheur Lozenge Co. v. National Candy Co., 315 U. S. 666 (1942), decided prior to passage of the Lanham Act. See also note 6, infra.
The District Court’s unreported findings of fact and conclusions of law, as amended, appear at R. 246-248. Cf. R. 232, 237.
194 F. 2d 567 (C. A. 5th Cir. 1952).
For able Court of Appeals discussions of the impact of Erie R. Co. v. Tompkins, 304 U. S. 64 (1938) on the law prior and subsequent to the Lanham Act, see Dad’s Root Beer Co. v. Doc’s Beverages, Inc., 193 F. 2d 77 (C. A. 2d Cir. 1951); S. C. Johnson & Son v. Johnson, 175 F. 2d 176 (C. A. 2d Cir. 1949); Campbell Soup Co. v. Armour & Co., 175 F. 2d 795 (C. A. 3d Cir. 1949); Stauffer v. Exley, 184 F. 2d 962 (C. A. 9th Cir. 1950). See also National Fruit Product Co. v. Dwinell-Wright Co., 47 F. Supp. 499 (1942). And see Zlinkoff, Erie v. Tompkins: In Relation to the Law of Trade-Marks and Unfair Competition, 42 Col. L. Rev. 955 (1942); Bunn, The National Law of Unfair Competition, 62 Harv. L. Rev. 987 (1949).
See, e. g., Timberg, Trade-Marks, Monopoly, and the Restraints of Competition, 14 Law & Contemp. Probs. 323 (1949); cf. Brown, Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 Yale L. J. 1165 (1948). Compare, e. g., Pattishall, TradeMarks and the Monopoly Phobia, 50 Mich. L. Rev. 967 (1952); Rogers, The Lanham Act and the Social Function of Trade-Marks, 14 Law & Contemp. Probs. 173 (1949).
“Any person who shall, in commerce, (a) use, without the consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of any registered mark in connection with the sale, offering for sale, or advertising of any goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive purchasers as to the source of origin of such goods or services; or (b) reproduce, counterfeit, copy, or colorably imitate any such mark and apply such reproduction, counterfeit, copy, or colorable imitation to labels, signs, prints, packages, wrappers, receptacles, or advertisements intended to be used upon or in connection with the sale in commerce of such goods or services, shall be liable to a civil action by the registrant for any or all of the remedies hereinafter provided in this chapter, 15 U. S. C. § 1114 (1).
See also § 35,15 U. S. C. § 1117 (profits, damages and costs); § 36, 15 U. S. C. § 1118 (destruction of infringing articles); § 38,15 U. S. C. § 1120 (damages for fraudulent registration).
Sidney Steele v. Secretary of the National Economy, decided by the Second Court of the Supreme Court of Mexico. That decision is reprinted, as translated, as Appendix III to respondent’s brief.
See, e. g., 1 Oppenheim, International Law (6th ed., Lauterpacht, 1947), §145, p. 297.
Cf. 15 U. S. C. §§ 96, 124, requiring the infringing use to be “in commerce among the several States, or with a foreign nation.” United States Printing & Lithograph Co. v. Griggs, Cooper & Co., 279 U. S. 156 (1929); Pure Oil Co. v. Puritan Oil Co., 127 F. 2d 6 (1942).
See Vacuum Oil Co. v. Eagle Oil Co., 154 F. 867 (1907).
166 F. 261 (C. A. 2d Cir. 1908), affirming 160 F. 184.
See also United States v. Aluminum Co. of America, 148 F. 2d 416, 443-444 (1945). Cf. Ford v. United States, 273 U. S. 593, 620-621 (1927); Lamar v. United States, 240 U. S. 60, 65-66 (1916); Strassheim v. Daily, 221 U. S. 280, 284-285 (1911).
Cf. Cole v. Cunningham, 133 U. S. 107, 117-119 (1890); Phelps v. McDonald, 99 U. S. 298, 307-308 (1879); Securities and Exchange Commission v. Minas de Artemisa, S. A., 150 F. 2d 215 (1945); Restatement, Conflict of Laws, §§ 94, 96. And see British Nylon Spinners, Ltd. v. Imperial Chemical Industries, Ltd., [1952] 2 All Eng. 780, 782 (C. A.).
Dissenting Opinion
dissenting.
The purpose of the Lanham Act is to prevent deceptive and misleading use of trade-marks. § 45, 15 U. S. C. ■§ 1127. To further that purpose the Act makes liable
The Court’s opinion bases jurisdiction on the Lanham Act. In the instant case the only alleged acts of infringement occurred in Mexico. The acts complained of were the stamping of the name “Bulova” on watches and the subsequent sale of the watches. There were purchases of assembly material in this country by petitioners. Purchasers from petitioners in Mexico brought the assembled watches into the United States. Assuming that Congress has the power to control acts of our citizens throughout the world, the question presented is one of statutory construction: Whether Congress intended the Act to apply to the conduct here exposed.
“The canon of construction which teaches that legislation of Congress, unless a contrary intent appears, is meant to apply only within the territorial jurisdiction of the United States, Blackmer v. United States, [284 U. S. 421], 437, is a valid approach whereby unexpressed congressional intent may be ascertained.” Foley Bros., Inc. v. Filardo, 336 U. S. 281, 285. Utilizing this approach, does such a contrary intent appear in the Lanham Act? If it does, it appears only in broad and general terms, i. e., “to regulate commerce within the control of Congress . . . .” § 45, 15 U. S. C. § 1127. Language of such nonexplicit scope was considered by the Court in construing the Sherman Act in American Banana Co. v. United Fruit Co., 213 U. S. 347, 357. “Words having universal scope, such as ‘Every contract in restraint of trade,’ ‘Every person who shall monopolize,’ etc., will be taken as a matter of course to mean only every one subject to such legislation, not all that the legislator subsequently may be able to catch.” The American
The generally phrased congressional intent in the Lan-ham Act is to be compared with the language of the Fair Labor Standards Act which we construed in Vermilya-Brown Co. v. Connell, 335 U. S. 377. There we held that by explicitly stating that the Act covered “possessions” of the United States, Congress had intended that the Act was to be in effect in all “possessions” and was not to be applied merely in those areas under the territorial jurisdiction or sovereignty of the United States.
There are, of course, cases in which a statement of specific contrary intent will not be deemed so necessary. Where the case involves the construction of a criminal statute “enacted because of the right of the Government to defend itself against obstruction, or fraud . . . committed by its own citizens,” it is not necessary for Congress to make specific provisions that the law “shall include the high seas and foreign countries.” United States v. Bowman, 260 U. S. 94, 98. This is also true when it is a question of the sovereign power of the United States to require the response of a nonresident citizen. Blackmer v. United States, 284 U. S. 421. A similar situation is met where a statute is applied to acts committed by citizens in areas subject to the laws of no sovereign. See Skiriotes v. Florida, 313 U. S. 69; Old Dominion S. S. Co. v. Gilmore, 207 U. S. 398.
In the instant case none of these exceptional considerations come into play. Petitioner’s buying of unfinished watches in the United States is not an illegal commercial act. Nor can it be said that petitioners were engaging
Reference
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- STEELE Et Al. v. BULOVA WATCH CO., INC.
- Cited By
- 366 cases
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- Published