First Circuit Establishes Framework for Determining When the Lanham Act Applies Extraterritorially

Rejecting the approaches of the Courts of Appeals for the Second and Ninth Circuits, the U.S. Court of Appeals for the First Circuit, in a case of first impression, established a new framework for determining when the Lanham Act should be applied extraterritorially. The court held that federal courts will have subject matter jurisdiction under the Lanham Act over the foreign activities of foreign defendants only if the alleged infringing activities have a substantial effect on U. S. commerce when viewed in light of the purposes of the Lanham Act. McBee v. Delica Co., Ltd., Case No. 04-2733 (1st Cir. Aug. 2, 2005) (Lynch, J.).

Cecil McBee is an American citizen and jazz bassist who tours extensively, including in Japan, and has never licensed or authorized the use of his name. McBee sued Delica, a Japanese corporation that owns and operates retail clothing stores throughout Japan under the brand name "Cecil McBee," alleging Delica violated the Lanham Act. Delica also operates Japanese