Vivitar Corp. v. United States

• Citation: 585 F. Supp. 1419
• Decision Date: 04 April 1984
• Docket Number: Court No. 84-1-00067.
• Parties: VIVITAR CORPORATION, Plaintiff, v. The UNITED STATES, et al., Defendants.
• Court: U.S. Court of International Trade

585 F. Supp. 1419

VIVITAR CORPORATION, Plaintiff, v. The UNITED STATES, et al., Defendants.

Court No. 84-1-00067.

United States Court of International Trade.

April 4, 1984.

COPYRIGHT MATERIAL OMITTED

Stein, Shostak, Shostak & O'Hara, Washington, D.C. (Steven P. Kersner, Irwin P. Altschuler and Donald S. Stein, Washington, D.C.) for plaintiff.

Richard K. Willard, Acting Asst. Atty. Gen., David M. Cohen, Director, Commercial Litigation Branch, Washington, D.C., and Velta A. Melnbrencis, New York City, for defendants.

James C. Tuttle, Troy, Mich., for proposed intervenor.

Howrey & Simon, Washington, D.C. (Robert W. Steele, John F. Bruce, Roger C. Simmons, Kevin P. O'Rourke, Catherine M. Shea), Washington, D.C., for proposed intervenor.

Bass, Ullman & Lustigan, New York City (Robert Ullman, New York City), for amicus.

Olwine, Connelly, Chase, O'Donnell & Weyher, New York City (William F. Sondericker, New York City), for amicus.

Opinion and Order

RESTANI, Judge:

In this action, plaintiff, the owner of the Vivitar trademark, seeks a mandatory order directing the Customs Service to exclude from entry any merchandise bearing the Vivitar trademark that is imported without plaintiff's consent. Plaintiff contends in its complaint that 19 U.S.C. § 1526(a) and (b) (1982) and 15 U.S.C. § 1124 (1982) give it an unqualified right to demand such exclusion.¹

Plaintiff licenses certain foreign subsidiaries to manufacture photographic equipment bearing the Vivitar trademark. These subsidiaries apparently are not licensed to market the goods they produce in the United States. Plaintiff asserts that various unrelated third parties are importing equipment bearing the Vivitar trademark that was manufactured by the foreign subsidiaries. Plaintiff contends that these importations are illegal, absent Vivitar's consent. It appears that the Customs Service does not prohibit these imports. The Customs Service interprets § 1526(a) and (b) to deny trademark owners the right to require the exclusion of trademarked goods manufactured abroad when the trademark owner has authorized the foreign manufacturer to apply the trademark to the goods. 19 C.F.R. § 133.21 (1983).² Plaintiff contends that the Customs Service's interpretation of § 1526(a) and (b) is contrary to law.

Defendants now move to dismiss the action for want of subject matter jurisdiction.

When jurisdiction is challenged, plaintiff has the burden of demonstrating that jurisdiction exists. United States v. Biehl, 3 CIT 158, 539 F.Supp. 1218 (1982).

At the threshold, plaintiff must establish that its cause of action arises out of a customs or international trade law. This court's jurisdiction is intended to reach only international trade disputes. H.R. Rep. No. 96-1235, 96th Cong., 2d Sess., 20 (1980), reprinted in U.S.Code Cong. & Admin.News, 3730 (1980) ("House Report").

Defendants' arguments against jurisdiction are based on the contentions that this case arises primarily out of the trademark laws, and jurisdiction over trademark cases must lie in the district courts rather than in the Court of International Trade. Both of these are unpersuasive. The contention that all cases related to trademarks must be heard in the district courts has been repeatedly rejected. Manufacture De Machines Du Haut-Rhin v. Von Raab, 6 CIT ___, 569 F.Supp. 877 (1983); Manufacture De Machines Du Haute-Rhin v. International Armament Corporation, Civil Action No. 82-1114-A (E.D.V.I.1983); Lois Jeans & Jackets, U.S.A., Inc. v. United States, 5 CIT ___, 566 F.Supp. 1523 (1983); cf. Schaper Manufacturing Co. v. Regan, 5 CIT ___, 566 F.Supp. 894 (1983) (case involving copyright issues).³ The district courts generally have jurisdiction over trademark cases. 28 U.S.C. § 1338 (1976). This court, however, has jurisdiction generally over cases arising out of international trade disputes. House Report at 34. This case and the cases cited above arise out of circumstances where an international trade dispute involves trademark issues.⁴

There is no simple formula for determining whether a given case is a trademark case or an international trade case. The Schaper case, however, offers a useful approach for analyzing whether such a case belongs in this court or the district courts. Schaper arose out of a dispute concerning a bond submitted by an American copyright holder during the pendency of a copyright infringement action against an importer in the district court. In Schaper, the court stated:

In determining whether a cause of action might be embraced by the jurisdictional grant bestowed upon this court by the Congress, it is necessary that the gravamen of the complaint be determined. Although the complaint in the instant action alleges jurisdictional support under 28 U.S.C. § 1581(i) and 17 U.S.C. §§ 602, 603 relating to importation of merchandise infringing on copyrights, from the allegations contained in the complaint as well as from all the proceedings had before this court, it is manifest that the thrust of the grievance alleged and the relief sought by the plaintiff relates to the regulations promulgated by customs and their administration and enforcement (emphasis added).

Schaper, 566 F.Supp. at 896.

In this case, the thrust of plaintiff's grievance is that Customs Service's administration and enforcement of § 1526(a) and (b) is improper. It allows importers to import goods bearing plaintiff's trademark.

Plaintiff is not alleging that these importers are infringing its trademark.⁵ Trademark infringement is consistently defined in trademark law as the use of reproductions, copies, counterfeits or colorable imitations of genuine trademarks, 15 U.S.C. §§ 1114, 1118, 1124, 1127, i.e., use of a trademark on goods not entitled to bear the trademark, or use of a mark deceptively similar to a registered trademark. Here, plaintiff concedes that the goods at issue properly bore the Vivitar trademark.⁶ The central issue in this case is the regulation of international trade in goods bearing genuine trademarks, rather than trademark law.

The right to regulate the use of a trademark on genuine goods arises only in international trade transactions. No other use of a genuine trademark on goods entitled to bear the mark is restricted. The Customs Service's regulation of imports of genuine trademark goods is uniquely a concern of international trade law. This contrasts sharply with trademark infringement which is illegal in all forms of commerce.

It is sensible for this court to hear the present action because the dispute involves a statute and a Customs Service regulation in need of a uniform national interpretation. This court's basic purpose is to provide "a comprehensive system of judicial review of civil actions arising from import transactions, utilizing the specialized expertise of the Court of International Trade ... to ensure ... uniformity in the judicial decision-making process." House Report at 20, U.S.Code Cong. & Admin.News 1980, p. 3731. International trade law and Customs Service regulations must have a uniform national interpretation to provide a degree of certainty to those involved in complex international trade transactions. This court's exclusive jurisdiction over international trade litigation helps avoid conflicting interpretations of international trade law. All parties to this litigation recognize that international trade in genuine trademark goods is an important international economic issue. Conflicting interpretations of American law in this area would obviously create a great deal of unnecessary confusion and uncertainty.⁷ Furthermore, Customs Service regulations governing international trade are particularly within this court's expertise.

Although the court finds that this is an international trade dispute, this fact standing alone does not conclusively establish that this action falls within the statutes governing the jurisdiction of this court. As defendant correctly notes, not all international trade disputes are within this court's jurisdiction. United States v. Biehl, 3 CIT 158 (1982).

Plaintiff, contending that this court has jurisdiction pursuant to 28 U.S.C. § 1581(i) (1982), advances two arguments.⁸ First plaintiff argues that this court would have jurisdiction under § 1581(a) to hear a protest of any exclusion of merchandise pursuant to § 1526(a) and (b). Therefore, plaintiff argues, this court has jurisdiction pursuant to § 1581(i)(4) to consider claims arising out of Customs Service regulations governing the administration and enforcement of exclusions pursuant to § 1526(a) and (b). Second, plaintiff argues that § 1526(a) and (b) is a law related to revenue from imports within the meaning of § 1581(i)(1), and therefore under § 1581(i)(4) this court has jurisdiction over any claim arising out of the administration and enforcement of § 1526(a) and (b). The court generally agrees with the first of plaintiff's arguments for the reasons stated below.⁹

Congress intended § 1581(i) as a plenary grant of residual jurisdiction to this court over international trade litigation. The House Report of the Customs Courts Act of 1980 makes clear the breadth of § 1581(i):

Under ... section 1581(i) ... the Court of International Trade has jurisdiction over those civil actions which arise out of a law of the United States pertaining to international trade.

House Report at 34, U.S.Code Cong. & Admin.News 1980, p. 3745. See Sacilor, Acieries et Laminoirs de Lorraine v. United States, 3 CIT 191, 542 F.Supp. 1020 (1982).

Section 1581(i) grants this court residual jurisdiction over suits against the United States arising out of the specific categories of laws described in § 1581(i)(1)-(3); and, in § 1581(i)(4), broad residual jurisdiction over "the administration and enforcement of the matters referred to in" § 1581(a)-(h), (i)(1)-(3). In the present case, this court has jurisdiction since plaintiff's claim arises out of administration and enforcement of the matters referred to...