## Facts

- Cecil McBee, an American jazz musician, claimed U.S. trademark rights in his personal name used in connection with musical services and related goods.
- Delica Co., Ltd., a Japanese clothing retailer, created and sold a women’s fashion brand named “Cecil McBee,” principally in Japan, and obtained a Japanese trademark registration for the mark.
- McBee did not authorize Delica’s use of his name and unsuccessfully challenged Delica’s Japanese registration in Japanese proceedings.
- McBee sued Delica in the District of Maine under the Lanham Act (infringement and false designation of origin) and under Maine unfair competition law, alleging harm to his goodwill and confusion among U.S. consumers who encountered the brand abroad or online.
- Delica had no U.S. stores, and the record showed minimal evidence of sales or marketing of “Cecil McBee” goods into U.S. commerce.

## Issues

1. Whether, and under what conditions, the Lanham Act applies to foreign conduct by a foreign defendant, and whether that inquiry is treated as subject matter jurisdiction.
2. What test governs the Lanham Act’s reach over “foreign activities of foreign defendants.”
3. Whether Delica’s alleged conduct had a sufficiently substantial effect on U.S. commerce to permit application of the Lanham Act to its foreign activities.

## Decision

- The First Circuit held that the Lanham Act may apply extraterritorially in appropriate cases, consistent with Supreme Court precedent recognizing extraterritorial application where U.S. commerce is affected.
- For foreign defendants’ foreign conduct, the court adopted a “substantial effect on United States commerce” requirement as the basis for Lanham Act subject matter jurisdiction.
- The court rejected treating international comity and conflicts with foreign trademark regimes as part of subject matter jurisdiction; comity instead bears on whether a court should decline, in its discretion, to exercise jurisdiction it possesses.
- Applying the substantial-effects requirement, the court concluded that the record did not show a non-speculative, substantial effect on U.S. commerce from Delica’s predominantly foreign activities.
- The court vacated the district court’s dismissal to the extent it relied on an incorrect framework and remanded for proceedings consistent with the clarified standard, while making clear that McBee’s showing was insufficient on the existing record to reach Delica’s foreign conduct.

## Legal Principles

- The Lanham Act can apply to conduct outside the United States when statutory and constitutional predicates are satisfied.
- When the defendant is foreign and the challenged conduct is foreign, Lanham Act subject matter jurisdiction exists only if the conduct has a substantial effect on U.S. commerce, evaluated in light of the Act’s purposes (protecting consumers and trademark goodwill in U.S. commerce).
- The defendant’s U.S. citizenship is a distinct consideration: regulation of U.S. citizens’ foreign conduct rests on a broader constitutional basis than regulation of foreign actors abroad.
- International comity and potential conflicts with foreign trademark law do not defeat subject matter jurisdiction; they inform discretionary abstention or tailoring of relief after jurisdiction is established.
- Speculative, attenuated, or incidental U.S. effects (such as limited encounters by U.S. travelers) do not satisfy the substantial-effects threshold for reaching foreign conduct of foreign defendants.

## Conclusion

The First Circuit established that, for a foreign defendant’s foreign conduct, Lanham Act jurisdiction depends on a substantial, non-speculative effect on U.S. commerce, and that comity concerns are discretionary rather than jurisdictional; on the record presented, McBee failed to show the required substantial domestic effect.


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