Mcbee v. Delica Co., Ltd.

417 F.3d 107 (1st Cir. 2005)

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Nature of the Case

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Facts

P is a well-known American jazz musician. D is a Japanese corporation that adopted the name 'Cecil McBee' for its adolescent female clothing line. P has performed in the United States and worldwide, has performed on over 200 albums, and has released six albums under his name (including in Japan). He won a Grammy Award in 1989, was inducted into the Oklahoma Jazz Hall of Fame in 1991, and teaches at the New England Conservatory of Music in Boston. P has toured Japan several times, beginning in the early 1980s, and has performed in many major Japanese cities, including Tokyo. P has never licensed or authorized the use of his name to anyone. In 1984, Delica adopted the trade name 'Cecil McBee' for a line of clothing and accessories for teen-aged girls. Delica holds a Japanese trademark for 'Cecil McBee,' in both Japanese and Roman or English characters, for a variety of product types. There are no 'Cecil McBee' retail shops outside of Japan. It is undisputed that D's online retailer has never shipped any 'Cecil McBee' goods outside of Japan. D operates a website, http://www.cecilmcbee.net, which contains pictures and descriptions of 'Cecil McBee' products. It is mostly in Japanese. The site does not allow purchases of 'Cecil McBee' products to be made online. The website can be viewed from anywhere in the Internet-accessible world. In 1995, P became aware that D was using his name. P petitioned the Japanese Patent Office to invalidate D's English-language trademark on 'Cecil McBee.' The trademark was ruled invalid. D appealed and the decision was reversed. P tried to entice D to ship product into the US but that was mostly unsuccessful. There is virtually no evidence of the goods entering the U.S. P sued for false endorsement and dilution under the Lanham Act. The district court dismissed all of P's Lanham Act claims, concluding that it lacked subject matter jurisdiction. P appealed.