Reebok International, Ltd. v. Marnatech Enterprises, Inc.

970 F.2d 552, 22 Fed. R. Serv. 3d 1314, 23 U.S.P.Q. 2d (BNA) 1377, 92 Cal. Daily Op. Serv. 5929, 92 Daily Journal DAR 9660, 1992 U.S. App. LEXIS 15087
CourtCourt of Appeals for the Ninth Circuit
DecidedJuly 2, 1992
DocketNo. 90-55400
StatusPublished
Cited by4 cases

This text of 970 F.2d 552 (Reebok International, Ltd. v. Marnatech Enterprises, Inc.) is published on Counsel Stack Legal Research, covering Court of Appeals for the Ninth Circuit primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Reebok International, Ltd. v. Marnatech Enterprises, Inc., 970 F.2d 552, 22 Fed. R. Serv. 3d 1314, 23 U.S.P.Q. 2d (BNA) 1377, 92 Cal. Daily Op. Serv. 5929, 92 Daily Journal DAR 9660, 1992 U.S. App. LEXIS 15087 (9th Cir. 1992).

Opinions

REINHARDT, Circuit Judge:

Appellees (“Reebok”) manufacture and sell a fashionable brand of shoes both in America and abroad. They also are the owners of federally registered REEBOK, STRIPECHECK design and STARCREST design trademarks for footwear and apparel, and own registrations for these trademarks in Mexico as well. During the time period relevant to this appeal, appellees assert that they were the only authorized sellers of genuine REEBOK footwear in the United States and Mexico.

[554]*554The nature of the appellants’ business is a subject of dispute; indeed, it is the subject of this litigation. Reebok alleges that appellants (“Betech”) sell counterfeit REEBOK shoes in Mexican border towns (such as Tijuana) and that these sales detract from purchases of legitimate REEBOK merchandise in both Mexico and the United States. Reebok was sufficiently convinced that such nefarious activity was afoot to move ex parte on September 12, 1989 for a temporary restraining order and a seizure of Betech’s assets. The district court apparently agreed: it granted Reebok’s motion and ordered Betech to show cause why it should not enter a preliminary injunction along the lines of the ex parte order previously entered. After briefing and argument by both parties, the district court entered preliminary injunctions that ordered Betech and its agents to cease counterfeiting activity, to refrain from destroying particular documents and property, and to transfer certain assets only after court approval. See Reebok International Ltd. v. Marnatech Enterprises, Inc., 737 F.Supp. 1515 (S.D.Cal.1989) (enjoining copyright violations) [“Reebok /”]; Reebok International Ltd. v. Marnatech Enterprises, Inc., 737 F.Supp. 1521 (S.D.Cal.1989) (freezing assets) [“Reebok //”]. Betech appeals, and asserts that the district court had neither the jurisdiction ñor authority to enter the injunctions. We affirm.

I.

Appellants first contend that the district court did not have the authority to enter either injunction because the Lanham Act, 15 U.S.C. § 1051 et seq., does not grant jurisdiction over appellants’ activities. “The existence of subject matter jurisdiction presents a question of law reviewed de novo by the court of appeals_ A district court’s factual findings on jurisdictional issues must be accepted unless they are clearly erroneous.” Kruso v. International Telephone & Telegraph Corp., 872 F.2d 1416, 1421 (9th Cir.1989), cert. denied, 496 U.S. 937, 110 S.Ct. 3217, 110 L.Ed.2d 664 (1990) (citations omitted). As the Supreme Court has noted, the Lanham Act provides a “broad jurisdictional grant”. Steele v. Bulova Watch Co., 344 U.S. 280, 286, 73 S.Ct. 252, 255, 97 L.Ed. 319 (1952); see also Ocean Garden, Inc. v. Marktrade Co., 953 F.2d 500, 503 (9th Cir.1991) (quoting from Bulova Watch and Reebok I with approval). “The Lanham Act’s coverage of foreign activities may be analyzed under the test for extraterritorial application of the federal antitrust laws set forth in Timberlane Lumber Co. v. Bank of America National Trust & Savings Ass’n, 549 F.2d 597 (9th Cir.1976) (Timberlane I)_ In Timberlane I, we held: first, there must be some effect on American foreign commerce; second, the effect must be sufficiently great to present a cognizable injury to plaintiffs under the federal statute; and third, 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) (citations omitted); see also Ocean Garden, 953 F.2d at 503 (applying same factors).1

The first two requirements of Timberlane I are unquestionably met here. “ ‘ “[T]he sales of infringing goods in a foreign country may have a sufficient effect on commerce to invoke Lanham Act jurisdiction.” ’ ” Ocean Garden, 953 F.2d at 503 (quoting Van Doren Rubber Co. v. Marnatech Enterprises, 1989 WL 223017 *4, 1989 U.S. LEXIS 17323 *11, 13 U.S.P.Q.2d (BNA) 1587 (S.D.Cal.1989) (quoting American Rice, Inc. v. Arkansas Rice Growers Cooperative Ass’n, 701 F.2d 408, 415-16 (5th Cir.1983))). The district court found that, at the very least, Betech organized and directed the manufacture of [555]*555counterfeit REEBOK shoes from the United States and knew that their counterfeit shoes went back to the United States with regular frequency. The district court further found that Betech’s sales of counterfeit REEBOK shoes decreased the sale of genuine REEBOK shoes in Mexico and the United States and directly decreased the value of Reebok’s consolidated holdings. See Reebok I, 737 F.Supp. at 1517-19. A review of the record indicates that those findings are in no way clearly erroneous. See Kruso, 872 F.2d at 1421. Betech’s activities thus affect American foreign commerce in a manner which causes an injury to Reebok cognizable under the Lanham Act. See Ocean Garden, 953 F.2d at 503.

The third requirement of Timber-lane / — that the interests of and links to American commerce be sufficiently strong in relation to those of other nations to justify extraterritorial application of the Lanham Act — involves the balancing of seven relevant factors:

[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 I, 549 F.2d at 614.

An analysis of these factors supports the district court’s exercise of jurisdiction. The first factor in the Timberlane balancing test involves the degree of conflict with foreign law or policy. Mexico has both civil and criminal trademark laws of its own: extraterritorial trademark enforcement by U.S. courts might, in some instances, conflict with the law or policy of a foreign nation.2 This possibility is heightened when, as here, one of the parties (Betech) is involved in pending litigation in a foreign court. See Reebok I, 737 F.Supp. at 1517 (“[I]t appears that the Mexican Federal Judicial police arrested defendant, Nathan Betech, and raided defendants’ Mexican warehouses and charged those arrested with tax evasion, trademark and copyright counterfeiting and other crimes.”). But cf.

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970 F.2d 552, 22 Fed. R. Serv. 3d 1314, 23 U.S.P.Q. 2d (BNA) 1377, 92 Cal. Daily Op. Serv. 5929, 92 Daily Journal DAR 9660, 1992 U.S. App. LEXIS 15087, Counsel Stack Legal Research, https://law.counselstack.com/opinion/reebok-international-ltd-v-marnatech-enterprises-inc-ca9-1992.