Steele v. Bulova Watch Co, No. 38

CourtUnited States Supreme Court
Writing for the CourtCLARK
Citation73 S.Ct. 252,344 U.S. 280,97 L.Ed. 319
Decision Date22 December 1952
Docket NumberNo. 38
PartiesSTEELE et al. v. BULOVA WATCH CO., Inc

344 U.S. 280
73 S.Ct. 252
97 L.Ed. 319
STEELE et al.

v.

BULOVA WATCH CO., Inc.

No. 38.
Argued Nov. 10, 1952.
Decided Dec. 22, 1952.

Mr. Wilbur L. Matthews, San Antonio, Tex., for petitioners.

Page 281

Marx Leva, Washington, D.C. (Alexander B. Hawes, A. Lloyd Symington, Washington, D.C., Sanford H. Cohen, George Cohen, New York City, Isidor Ostroff, Washington, D.C., and Maury Maverick, San Antonio, Tex., on the brief), for respondent.

Mr. Justice CLARK 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,1 petitioner here, in the United States District Court for the Western District of Texas. The gist of its complaint charged that 'Bulova,' a trade-mark properly registered under the laws of the United States, had long designated the watches produced and nationally advertised and sold by the Bulova Watch Company; and that petitioner, a United States citizen residing in San Antonio, Texas, conducted a watch business in Mexico City where, without Bulova's authorization and with the purpose of deceiving the buying public, he stamped the name 'Bulova' on watches there assembled and sold. Basing its prayer on these asserted violations of the trade-mark laws of the United States, 2 Bulova requested injunctive and mone-

Page 282

tary relief. Personally served with process in San Antonio, petitioner answered by challenging the court's jurisdiction over the subject matter of the suit and by interposing several defenses, including his due registration in Mexico of the mark 'Bulova' and the pendency of Mexican legal proceedings thereon, to the merits of Bulova's claim. The trial judge, having initially reserved disposition of the jurisdictional issue until a hearing on the merits, interrupted the presentation of evidence and dismissed the complaint 'with prejudice,' on the ground that the court lacked jurisdiction over the cause. This decision rested on the court's findings that petitioner had committed no illegal acts within the United States.3 With one judge dissenting, the Court of Appeals reversed; it held that the pleadings and evidence disclosed a cause of action within the reach of the Lanham Trade-Mark Act of 1946, 15 U.S.C. 1051 et seq., 15 U.S.C.A. § 1051 et seq.4 The dissenting judge thought that 'since the conduct complained of substantially related solely to acts done and trade carried on under full authority of Mexican law, and were confined to and affected only that Nation's internal commerce, (the District Court) was without jurisdiction to enjoin such conduct.'5 We granted certiorari, 343 U.S. 962, 72 S.Ct. 1060.

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, 1949, 336 U.S. 281, 284 285, 69 S.Ct. 575, 577, 93 L.Ed. 680; Blackmer v. United States, 1932, 284 U.S. 421, 436—437, 52 S.Ct. 252, 254, 76 L.Ed. 375; Branch v. Federal Trade Commission, 7 Cir., 1944, 141 F.2d 31. Resolution of the jurisdictional issue in this case therefore de-

Page 283

pends on construction of exercised congressional power, not the limitations upon that power itself. And since we do not pass on the merits of Bulova's claim, we need not now explore every facet of this complex6 and controversial7 Act.

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

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into between the United States and foreign nations.' § 45, 15 U.S.C. § 1127, 15 U.S.C.A. § 1127. To that end, § 32(1) holds liable in a civil action by a trade-mark registrant '(a)ny person who shall, in commerce,' infringe a registered trade-mark in a manner there detailed.8 'Commerce' is defined as 'all commerce which may lawfully be regulated by Congress.' § 45, 15 U.S.C. § 1127, 15 U.S.C.A. § 1127. The district courts of the United States are granted jurisdiction over all actions 'arising under' the Act, § 39, 15 U.S.C. § 1121, 15 U.S.C.A. § 1121, and can award relief which may include injunctions,9 'according to the principles of equity,' to prevent the violation of any registrant's rights. § 34, 15 U.S.C. § 1116, 15 U.S.C.A. § 1116.

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

Page 285

'Bulova.' He subsequently transferred his business to Mexico City and, discovering that 'Bulova' had not been registered in Mexico, in 1933 procured the Mexican registration of that mark. Assembling Swiss watch movements and dials and cases imported from that country and the United States, petitioner in Mexico City stamped his watches with 'Bulova' and sold them as such. As a result of the distribution of spurious 'Bulovas,' Bulova Watch Company's Texas sales representative received numerous complaints from retail jewelers in the Mexican border area whose customers brought in for repair defective 'Bulovas' which upon inspection often turned out not to be products of that company. Moreover, subsequent to our grant of certiorari in this case the prolonged litigation in the courts of Mexico has come to an end. On October 6, 1952, the Supreme Court of Mexico rendered a judgment upholding an administrative ruling which had nullified petitioner's Mexican registration of 'Bulova.'10

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, 1932, 284 U.S. 421, 437, 52 S.Ct. 252, 254, 76 L.Ed. 375; Foley Bros., Inc. v. Filardo, 1949, 336 U.S. 281, 285, 69 S.Ct. 575, 577, 93 L.Ed. 680. 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 is own citizens upon the high seas or even in foreign countries when

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the rights of other nations or their nationals are not infringed. With respect to such an exercise of authority there is no question of international law, but solely of the purport of the municipal law which establishes the duty of the citizen in relation to his own government.' Skiriotes v. State of Florida, 1941, 313 U.S. 69, 73, 61 S.Ct. 924, 927, 85 L.Ed. 1193.11 As Mr. Justice Minton, then sitting on the Court of Appeals, applied the principle in a case involving unfair methods of competition: 'Congress has the power to prevent unfair trade practices in foreign commerce by citizens of the United States, although some of the acts are done outside the territorial limits of the United States.' Branch v. Federal Trade Commission, 7 Cir., 1944, 141 F.2d 31, 35. Nor has this Court in tracing the commerce scope of statutes differentiated between enforcement of legislative policy by the Government itself or by private litigants proceeding under a statutory right. Thomsen v. Cayser, 1917, 243 U.S. 66. 37 S.Ct. 353, 61 L.Ed. 597; Mandeville Island Farms v. American Crystal Sugar Co., 1948, 334 U.S. 219, 68 S.Ct. 996, 92 L.Ed. 1328; cf. Vermilya-Brown Co. v. Connell, 1948, 335 U.S. 377, 69 S.Ct. 140, 93 L.Ed. 76; Foley Bros., Inc., v. Filardo, supra. The public policy subserved is the same in each case. In the light of the broad jurisdictional grant in the Lanham Act, we deem its scope to encompass petitioner's activities here. His operations and their effects were not confined within the territorial limits of a foreign nation. He bought component parts of his wares in the United States, and spurious 'Bulovas' filtered through the Mexican border into this country; his competing goods could well reflect adversely on Bulova Watch Company's trade reputation in markets cultivated by advertising here as well as abroad. Under similar factual circumstances, courts of the United States have awarded relief to registered trade-

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mark owners, even prior to the advent of the broadened commerce provisions of the Lanham Act.12 George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 1944, 142 F.2d 536; Hecker H-O Co. v. Holland Food Corp., 2 Cir., 1929, 36 F.2d 767; Vacuum Oil Co. v. Eagle Oil Co., C.C.1907, 154 F. 867, affirmed, C.C.1908, 162 F. 671. Cf. Morris v. Altstedter, 93 Misc. 329, 156 N.Y.S. 1103, affirmed, 1916, 173 App.Div. 932, 158 N.Y.S. 1123. Even when most jealously read, that Act's sweeping reach...

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303 practice notes
  • Chitimacha Tribe of Louisiana v. Harry L. Laws Co., Inc., No. 80-3348
    • United States
    • United States Courts of Appeals. United States Court of Appeals (5th Circuit)
    • November 5, 1982
    ...does not extend beyond the boundaries of the United States unless a contrary legislative intent appears. Steele v. Bulova Watch Co., 344 U.S. 280, 285, 73 S.Ct. 252, 255, 97 L.Ed. 252 (1952); United States v. Mitchell, 553 F.2d 996, 1002 (5th Cir. 1977); Restatement (Second) Foreign Relatio......
  • Maternally Yours v. Your Maternity Shop, No. 196
    • United States
    • United States Courts of Appeals. United States Court of Appeals (2nd Circuit)
    • June 6, 1956
    ...remedy for unfair competition; and the Supreme Court has already shown its awareness of the problem. See Steele v. Bulova Watch Co., 344 U.S. 280, 283, note 6, 73 S.Ct. 252, 97 L.Ed. 252. The restricted construction to the contrary depends perhaps more on judicial conservatism and inability......
  • Rosenruist-Gestao E Servicos v. Virgin Enterprises, No. 06-1588.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • December 27, 2007
    ...companies that — unlike Rosenruist — distribute potentially infringing goods or conduct operations here. See Steele v. Bulova Watch Co., 344 U.S. 280, 286-27, 73 S.Ct. 252, 97 L.Ed. 319 (1952). Section 24 does not bear upon the availability of in-person testimony in such infringement cases,......
  • McBee v. Delica Co., Ltd., No. 04-2733.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (1st Circuit)
    • August 2, 2005
    ...It has long been settled that the Lanham Act can, in appropriate cases, be applied extraterritorially. See Steele v. Bulova Watch Co., 344 U.S. 280, 73 S.Ct. 252, 97 L.Ed. 319 (1952). This case, dismissed for lack of subject matter jurisdiction, requires us, as a matter of first impression ......
  • Request a trial to view additional results
310 cases
  • Rosenruist-Gestao E Servicos v. Virgin Enterprises, No. 06-1588.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (4th Circuit)
    • December 27, 2007
    ...companies that — unlike Rosenruist — distribute potentially infringing goods or conduct operations here. See Steele v. Bulova Watch Co., 344 U.S. 280, 286-27, 73 S.Ct. 252, 97 L.Ed. 319 (1952). Section 24 does not bear upon the availability of in-person testimony in such infringement cases,......
  • Cottonwood Financial Ltd. v. the Cash Store Financial Serv. Inc., Civil Action No. 3:10–CV–1650–N.
    • United States
    • United States District Courts. 5th Circuit. United States District Courts. 5th Circuit. Northern District of Texas
    • March 31, 2011
    ...Drug, 14 F.3d at 744–47 & n. 8). Thus, the Court need not conduct an extraterritoriality analysis under Steele v. Bulova Watch Co., 344 U.S. 280, 73 S.Ct. 252, 97 L.Ed. 319 (1952) (extraterritorial application of Lanham Act), and Am. Rice, Inc. v. Ark. Rice Growers Coop. Ass'n, 701 F.2d 408......
  • Quality Courts United v. Quality Courts, Civ. A. No. 5064.
    • United States
    • United States District Courts. 3th Circuit. United States District Court of Middle District of Pennsylvania
    • March 15, 1956
    ...2 Cir., 1951, 193 F.2d 77, at page 80; Stauffer v. Exley, 9 Cir., 1950, 184 F.2d 962, at page 964; Steele v. Bulova Watch Co., Inc., 1952, 344 U.S. 280, at page 283, 140 F. Supp. 348 note 6, 73 S.Ct. 252, 97 L.Ed. 252; Goebel Brewing Co. v. Esslingers, Inc., 1953, 373 Pa. 334, at pages 340,......
  • Mariniello v. Shell Oil Co., No. 74--1385
    • United States
    • U.S. Court of Appeals — Third Circuit
    • February 14, 1975
    ...Oil Co. v. Bicron Corp., 416 U.S. 470, 94 S.Ct. 1879, 40 L.Ed.2d 315 (1974). 25 Bulova Watch Co. v. Steele, 194 F.2d 567 (5th Cir.) aff'd 344 U.S. 280, 73 S.Ct. 252, 97 L.Ed. 319 (1952). 26 15 U.S.C. §§ 1114(1), 1115(a). 27 See, e.g., Mister Donut of America, Inc. v. Mr. Donut, Inc., 418 F.......
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1 books & journal articles
  • Territorial Restraints in International Technology Agreements after Topco
    • United States
    • Antitrust Bulletin Nbr. 17-3, September 1972
    • September 1, 1972
    ...law reachessuch an arrangement. Continental OreCo.v, Union Carbide &CarbonCorp., 370 U.S. 690,704-05(1962).ct.Steele v. Bulova Watch Co.,344 U.S. 280 (1952). Judge Learned Hand stated the expandedjurisdiction of United States antitrust law in United States v. Alumi-num Co. of America, 148 F......
1 provisions
  • Securities and Exchange Commission,
    • United States
    • Federal Register June 29, 2000
    • June 29, 2000
    ...573.1. \13\ See, e.g., Alfadda v. Fenn, 935 F.2d 475 (2d Cir.), cert. denied, 502 U.S. 1005 (1991); see also Steele v. Bulova Watch Co., 344 U.S. 280 (1952). \14\ We note that a foreign broker-dealer, fund, or investment adviser that registers with the Commission also must comply with regul......

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