Vivitar Corporation v. The United States, and 47th Street Photo, Inc., Intervenor

distinguishable finds Hazel-Atlas from the consistently Courts have par- held that a allega- instant case in that here there is no ty precluded by judicata res from reliti- attorney tion of per- involvement in Gore’s gation independent equitable ac- jury suggest and no evidence to that the open tion issues litigation that were normal, impartial operation of the court the former action where he had a fair which heard the insurance contract case opportunity to make his claim or defense was interfered with in manner in that action. perpetrated by fraud Gore. The court re- Mortgage, Bankers 423 F.2d at 79. Plain- jects plaintiff’s contention that argument tiff’s that Gore obtained his presents fraud in this case a deliberate judgment original trial use of directly scheme to judicial pro- subvert the perjured testimony support its motion cess. The “primarily fraud this case for relief in this action is an attempt parties concerns the two involved and does relitigate credibility witness, an public not threaten injury that a fraud- issue that was necessarily decided ulently-obtained legal monopoly did in Ha- original trial. Addington See v. Farmer’s Express zel-Atlas.” Great Coastal v. Insurance, Elevator Mutual 650 F.2d Teamsters, Brotherhood 675 F.2d (5th Cir.1981). grant The court will (4th Cir.1982). 1356-57 defendants’ motions to dismiss the com- Perjury is an intrinsic fraud plaint. support judg will relief from Accordingly, the defendants’ motions for through independent ment an action. See reconsideration are GRANTED. Defend- Throckmorton, United States v. 8 Otto ants’ motions to complaint dismiss the (1878); 98 U.S. 25 L.Ed. 93 see also GRANTED. Express, Great Coastal 675 F.2d at 1358 ORDERED, (4th October, SO Cir.1982); day this 10th McEwen, Wood v. 644 F.2d (9th Cir.1981). 1984. Under the Throckmor doctrine, ton lay for fraud to a foundation /s/ Richard C. Freeman independent action, for an it must be such RICHARD C. FREEMAN that it was not in issue in the former action UNITED STATES DISTRICT put nor could it have been in issue JUDGE diligence opposing party. reasonable See Toledo Scale v. Computing Co. Scale

Co., 399, 425, 458, 465, 261 U.S. 43 S.Ct. (1923). Perjury by

L.Ed. 719 party does

not meet this standard oppos because the

ing party prevented is not fully presenting raising his case and the issue of CORPORATION, Appellant, VIVITAR penury in original action.

Perjury and fabricated evidence are evils v. trial, exposed can and should be at STATES, al., Appellees, The UNITED et legal system and the encourages and ex- pects litigants early to root them out as possible____ Fraud on the court is Photo, Inc., 47th Street Intervenor. therefore egregious limited to the more Appeal No. 84-1638. forms of legal process, subversion of the necessarily expect ... those we cannot United States Appeals, Court of exposed adversary the normal Federal Circuit. process. 6,May Express, Great Coastal 675 F.2d at 1357. addition, plaintiff cannot use independent action as a vehicle relitigation of issues. opinion

Davis, Judge, filed an Circuit

concurring in the result. Stein,

Steven P. Kersner and Donald S. Brownstein, Schomer, Zeidman and Wash- D.C., ington, appellant. on brief for Counsel, Musgrave, R. Kenton General Monica, Cal., Corp., Santa of coun- sel.

Marjorie M. Shostak and James F. O’Hara, Stein, Shostak, O’Hara, Shostak & D.C., Washington, of counsel. Cohen, Director, David M. Commercial Branch, Litigation Dept, Justice, Wash- D.C., ington, argued appellees. for With Willard, him on brief Richard K. Act- were Gen. Atty. Asst. and Yelta A. Meln- brencis. Lewin, Miller, Cassidy,

Nathan Larroca Lewin, Washington, D.C., argued & for intervenor, Photo, 47th Street Inc. With him on brief Jamie S. Gorelick. Mar- Wolf, Wolf, Mineóla, vin H. Groman & N.Y., was on brief intervenor. Borda, Counsel, Edward T. General Chains, Inc., Ass’n of General Merchandise D.C., Washington, onwas brief for amicus curiae. Ullman,

Robert Jacob Laufer and Steven Trost, Ullman, City, R. Bass & New York curiae, on amicus brief for American Free Trade Ass’n. Hadlock,

John M. Max F. Schutzman Frank, Ransom, Katherine L. Whitman & City, York was on New brief for amicus curiae, Olympus Corp. Steele, P.C.,

Robert W. E. Robert Hebda, Steele, Fornaciari, & Simmons D.C., Washington, was on brief for amicus curiae, Tuttle, Corp. K Mart James C. Counsel, Mich., Troy, Antitrust & Intern. K Corp. was on brief for Mart Allen, Eugene Ludwig, William H. A. Rowley, Scott D. Gilbert and Daniel A. D.C., Covington Burling, Washington, & curiae, on brief for amicus Coalition Integrity to Preserve The of American Trademarks. Rein, Johnstone, Sondericker, Wiley & William F. Frank W.

James M. Gaines, Olwine, D.C., argued Hoegle, L. Washington, appellant. Jr. and Robert Kirby. Chase, Connelly, Weyher, O’Donnell With him on was Thomas W. & brief § 1526(a) D.C., gives right, brief for is that it an Washington, were on amicus absolute Co., Inc. curiae, Trading Progress company owning a U.S. U.S. trade- registration, require Customs to MARKEY, Judge, and Before Chief importation prevent manufac- BISSELL, RICH, DAVIS, NIES Circuit goods bearing tured the trademark VIVI- Judges. TAR, and that Cus- recognize excep- toms Service which some NIES, Judge. Circuit against importation tions bar with- appeal into This concerns out the consent of the U.S. trademark own- have come to be the United States of what er are invalid. The Court of International goods. “grey called market” Goods upheld Trade as the correct legitimately sold abroad un- produced and interpretation of the statute. and are particular import- der a sold into States and in com- the United appeal, urges In this reversal Vivitar of petition goods of the owner of U.S. judgment the of the Court of International rights in the identical mark. trademark as a Trade matter of law. The United for boundaries and the But international decision of the States endorses the court on rights, territoriality trademark the use of merits, challenges the but that court’s hold- competition of the with the trademark jurisdiction subject that it had over infringe- constitute owner not U.S. would Intervenor, Photo, matter.1 47th Street relationship ment between because Inc., urges appealed affirmance of the foreign goods entity from whom the judgment entirety.2 in its indirectly directly obtained and the conclude of We that Court Interna- of in the mark. In this owner U.S. correctly juris- tional Trade held that it has sense, “genuine” grey goods market are diction over the matter of this ac- “genuine” and bear a trademark. some § 1581(a),(i)(3), tion under 28 U.S.C. and/or instances, trademark owner is an the U.S. (i)(4). merits, we respect With con- well, goods as importer of the regulations do not clude Customs’ de- goods market are grey case known protection fine the limits afforded a of U.S. “parallel importations.” We, under 1526. trademark owner Corporation, corpora- a California Vivitar nevertheless, conclude that the tion, in the U.S. of brought suit Court pow- a of Customs’ are reasonable exercise against International Trade United to exclude the statute as a er matter declaratory judgment States a invali- agency enforcement. Since the of initiated Department date of involving grey factual situations market which, Treasury Customs Service Vivi- not all importations vary widely may and view, importation improperly tar’s allow of § 1526(a), in violation of we hold that be contrary grey express market required provide au- (Section 526, provisions of 19 U.S.C. beyond that set forth in tomatic exclusion 1526). Tariff hereinafter Act regulations. Exclusion of its current seeks to force the Specifically, Vivitar Cus- involving ownership in situations common importation toms Service to refuse foreign control and trade- and/or of U.S. foreign photographic equip- manufactured rights may left Customs for registered ment its U.S. trademark first instance gives specific determination Vivitar con- VIVITAR unless When trademark owner importation. position Vivitar’s courts. a U.S. has sent Trademarks, rity American the Court of of American Free 1. The decisions of International Association, report- jurisdiction on the merits Trade and Trade The National Association of Merchandisers, F.Supp. F.Supp. Progress ed at 585 and 593 Catalog Showroom (1984), respectively. Inc., Trading Corporation Company, K-Mart and the Association of General Merchandise accepted Olym- Amicus have been briefs Chains, Inc. Integ- pus Corporation, Coalition to Preserve the successfully pursued pri- a claim a mark VIVITAR is on displayed affixed must, party, course, vate give equipment at Vivitar’s direction. Vivi- any judicial up tar effect to determination that the has set a ar- marketing worldwide right rangement parent, so owner appellant bar here, market, mark, goods bearing though its even retains U.S. various foreign subsidiary corporations sell through were obtained from abroad. We will assume that foreign company. related subsidi- selling products. aries are the same No Accordingly, judgment we affirm information is of respect record with Trade, on Court International but ownership technical grounds. narrower rights in the VIVITAR trademark. I. States, In the United up Vivitar has set independent network of authorized dealer- grant appeal This is from the of summa- ships to whom it sells for resale to the ry judgment favor of public. are, however, products VIVITAR summary judgment and the denial reaching also the U.S. market via indepen- favor of Vivitar. Since no trial was con- importers dent who purchase VIVITAR ducted, there is little in record with products (we abroad do not know whether exact nature Vivitar’s directly not), from Vivitar’s subsidiaries or activities in- United States abroad. import States, into them the United and sell specific import Nor do we have a transac- through outlets, them discount such in- as challenged. tion us before which is The tervenor, 47th price Street Photo. The dif- challenge by regula- Vivitar is ferential foreign between U.S. and markets per tions The se. material facts on which on equipment VIVITAR makes the dis- parties rely dispute. are and not in few operations profitable. count Vivitar seeks Essentially the facts establish Vivitar’s justify to its higher authorized dealers’ standing challenge regulations. to prices compared as to those of discount Corporation, corpora- Vivitar a domestic costs, by advertising houses its extensive organized under the laws of the state costs, warranty legitimate and other busi- California, is the owner U.S. Trade- expenses promote ness necessary its VI- 808,478, No. Reg. May issued products VITAR in the U.S. and maintain 1966, covering the trademark VIVITAR for goodwill in the mark. Vivitar accuses some of photographic equipment.3 kinds obtaining the discount houses of a free ride registration The has been recorded since eventually destroy which will reputa- pursu- 1969 with the U.S. Customs Service tion and sales value of its VIVITAR trade- ant regulations implementing exclusion not, course, mark. These matters were provisions (§ 1526), in the statute customs litigated by or CIT in ruling resolved on provisions as well as other exclusion found judgment. for summary motions The in the trademark 15 U.S.C. 1124. question sole was whether Vivitar a has engaged photo- sale of Vivitar is right statutory to have the Customs Ser- graphic equipment in the United States and imports vice products exclude of VIVITAR Apparently, abroad. Vivitar little or except consigned to those Vivitar. This own, manufacturing no facilities of its but issue par- framed in terms of the products rather has its manufactured ticular facts Vivitar’s sys- distribution foreign abroad, specification by tem in gener- various manufac- the U.S. and but as a turers, principally Japan.4 proposition The trade- al with appears "using” copy supply of the certificate in the manufacturer is not No mark. A precisely normally record that we do not know what necessary so contract all registration. in the are described private secure brand merchandise. See 1 H. Nims, Competition and Trade-Marks Unfair foreign is referred to "a 4. The manufacturer 1947). (4th at 613-14 ed. opinion. CIT No licensee” of required situations in such since the license is simulating every domestic mark with the recorded 1526 to available registered U.S. trademark. mark or name. owner of a (b) Foreign- Identical trademark. provision dispute, statutory The made articles a trademark identi- § 1526(a),reads as follows: U.S.C. cal with one owned and recorded a (d) provided in subsection Except as corpora- of the citizen United States section, to im- it shall be unlawful organized tion or association created or any mer- port the United States into subject the United States are within if foreign chandise of manufacture im- prohibited seizure and forfeiture as merchandise, label, sign, or the such portations. receptacle, print, package, wrapper, or (c) applicable. Restrictions not The by a citizen a trademark owned bears (a) paragraphs restrictions set forth in corporation or association of, (b) apply of this section do not within, the United organized created or imported articles when: States, Patent registered in the person (1) foreign and Trademark Both the and the U.S. Office States, under in the United domiciled trademark ... are owned same to 109 of provisions of sections 81 person entity; or business copy and if a of the certificate title (2) foreign and domestic trade- registration of such trademark is filed parent mark ... owners are and sub- Secretary Treasury, sidiary companies or are otherwise provided in section 106 of the manner ownership to common or con- title unless written consent said §§ (see 133.2(d) 133.12(d)); trol produc- trademark is the owner The articles of manufac- making entry. at the time [Em- ture bear a recorded trademark ... phasis added.] applied under authorization U.S. text of 19 complete current U.S.C. owner. appendix. The re- appears patently That the less (b) maining deal with seizure and sections protective of the interests of a U.S. trade- forfeiture; (c) by trade- private remedies language mark than the literal owner against persons dealing in mark owners statute is the essence of Vivitar’s case. (d) wrongfully imported goods; exemptions (e) use; special provisions personal for and II. goods bearing counterfeit marks. The Jurisdiction statute, thus, explicitly provides pri- for a A. (a) (c) remedy violation of and at vate (a), (b) (d) government’s response initial to Vi- suggests by and that Cus- The least sponte complaint to file a motion to toms assume an active role sua vitar’s in the jurisdiction dismiss for lack of Court enforcement. (CIT). Trade of International regulations, 19 The current customs § 133.21, part: pertinent position read in is government’s C.F.R. The vio- statute which Vivitar asserts has been (a) Copying simulating or marks or § lated, 1526(a), 19 U.S.C. is one which Articles of or domestic names. Thus, in the relates to trademarks. bearing a mark or name manufacture § view, 1338(a), government’s U.S.C. copying simulating a recorded trade- grants jurisdiction to the U.S. dis- entry mark or trade name shall be denied arising “any courts over civil action prohibit- to forfeiture as trict and are Congress relating pat- under Act of importations. “copying A or simulat- ents, plant variety protection, copyrights ing” counter- mark or name is an actual ” added) con- (emphasis name or is and trade-marks feit of the recorded question. The likely trolling jurisdictional on the it as to be one which so resembles since the CIT copy- government concludes that public to cause the to associate the possesses case, jurisdiction only, although arising exclusive This out of dis- pute involving was, a trademark jurisdiction concurrent neverthe- with the federal dis- less, considered CIT to be within its courts, juris- trict CIT possess cannot jurisdiction plain- “the because thrust of present diction over the action. grievance tiff’s is that Customs Service’s argues complaint Vivitar that its can rest administration and enforcement § 1581(i).5 on several bases under 28 U.S.C. § 1526(a) (b) improper.” arriving and In Specifically, jur- relies on the CIT’s conclusion, at this the court relied on Vivi- § 1581(i)(3) isdiction under U.S.C. over a tar’s of all abandonment claims which against the civil action United States aris- require would a determination that third providing out of a law for an “embar- party infringed trademark, Vivitar’s on and restriction,” go” “quantitative and on Vivitar’s concession that the issue at properly affixed with the court’s administration and enforcement VIVITAR § abroad. court further powers 1581(i)(4) under U.S.C. over opined validity that the of Customs Service (28 protests 1581(a)).6 Under ei- U.S.C. particularly was a matter with- theories, ther of these the claim falls within Moreover, expertise. per the court’s CIT, jurisdiction the exclusive court, were in need of a jurisdiction there is then no in the federal national, interpretation uniform to avoid district courts. uncertainty. confusion and opinion April Judge In an dated ' The court jurisdiction- then turned to the government’s Restani motion denied al in particular U.S.C. jurisdiction. dismiss for lack of The court § 1581(i) quoted in note supra, for a began by rejecting its analysis Customs’ specific grant authority over the case. argument case belonged that the federal Referring 1581(i)(4), first court district one under arising court as jurisdiction arising noted over claims meaning trademark laws within the of 28 out administration enforcement § 1338(a). argu- U.S.C. flaw § 1581(a)-(h). of the matters to in referred ment, according court, that, § 1581(a), continued, Under the court it has juris- while district generally courts have jurisdiction “of any civil action commenced diction over trademark cases protest, to contest the denial whole § 1338, involving U.S.C. not all trade- cases part, or in under section 515 U.S.C. [19 §§ marks must heard in the district courts.7 of the Tariff Act of 1930.”8 1514-15] 1581(1) Judge 5. rejected argument 28 U.S.C. reads as follows: Restani a third based 1581(i)(l), 28 U.S.C. on this basis is not (i) jurisdiction addition conferred appeal. reasserted on upon the Court of International Trade sub- (a)-(h) subject sections of this section string support 7. The court cited a of cases in of (j) exception set forth in of this subsection this, particular, De Machines Du Manufacture Raab, section, the of Trade Court International shall —, F.Supp. v. 6 CIT Haut-Rhin Von 569 jurisdiction any have civil action exclusive of (1983); 877 De Machines du Haut- Manufacture States, against commenced United Corp., v. Rhin International Armament 82- No. officers, agencies, any out of or its that arises Jackets, (E.D.V.I.1983); 1114-A Lois Jeans & providing for— law of the United States U.S.A., States, 238, Inc. v. United 5 CIT 566 (1) tonnage; imports revenue from or F.Supp. (1983); Schaper Mfg. 1523 v. Co. cf. duties, tariffs, (2) fees or on the other taxes (case (1983) Regan, F.Supp. 5 CIT 566 894 importation merchandise for reasons other of issues). involving copyright The court declined revenue; raising of than Stern, follow Inc. v. United States Parfums (3) embargoes quantitative or other restric- Service, (S.D.Fla.1983), F.Supp. 416 575 importation tions on of merchandise for jurisdic held where district court that it had pub- protection of the reasons than the other case, of an action to the but tion similar instant safety; lic health or jurisdiction. not did discuss the CIT’s and enforcement with administration para- respect to in 1581(a) to the matters referred 28 U.S.C. § 8. reads: (1) (3) graphs and subsec- of this subsection The Court — of International Trade shall have (a)-(h) this section. tions jurisdiction exclusive civil action com- States, (E.D. protestable no tion v. No. 84-0920 there United In this case had been 1984). Nov. issue since the N.Y. exclusion importation. regulations permit disputed CPIAT, In both the thrust Olympus § however, 1581(i)(4) court, broad- The read complaint of each that the Customs was jurisdictional independent residual ly as “a § inconsistent with were litigating admin- Customs Service basis injunction sought In each case an was of the substan- and enforcement istration against the government for failure to ex- may matter that tive grey goods. clude market protest remedy is protest, but where the challenged jurisdiction In both suits was inappropriate unavailable.” on the basis that the Court International reading The court reasoned jurisdiction Trade had exclusive over a civil § 1581(a), 1581(i)(4), applied as when against government concerning action arising only to cases ad- limited validity regulations implementing protests, and enforcement ministration § 1526. courts Both district aware § 1581(a). it duplicative render would of, expressly rejected, Judge but Restani’s Rather, citing Uniroyal, v. United States ruling jurisdiction, holding on instead that 1982) (Nies, (CCPA Inc., F.2d had jurisdiction because district courts juris- concurring), the held that its J., court ques- under 28 1331 over U.S.C. federal § 1581(i) properly in- under diction § 1338(a) tions and over claims based protestable voked, there no ex- since trademarks, relating to on a federal statute thus, and, provisions of “the other clusion jurisdiction. the CIT have could not manifestly inade- are 28 U.S.C. quate.” C. that, since Alternatively, the court ruled are We faced then irreconcilable of certain provides the exclusion decisions from two district courts and the case could goods, jurisdiction over this be CIT, asserting lacks each other § 1581(i)(3), “embargo” as

found However, do see that jurisdiction. we on the “quantitative restriction jurisdictional statutes themselves interpreted court merchandise.” The irreconcilable. jurisdic- 1581(i)(3) court granting jurisdiction granted the U.S. importation of over cases where the Court, predecessor the Court specific quantity; goods is limited to a Trade, long recog International has been goods under statutory exclusion of certain jurisdiction of exception nized as an § 1526, view, constituted a the court’s § 1331, district under U.S.C. courts limit quantitative of zero. i.e., See, jurisdiction. e.g., question federal Carter, Circus, 566 F.2d Inc. v. Sneaker B. Cir.1977), (2d cited 398-99 cases Thus, faulty analysis to look therein. it is jurisdiction of the CIT with jurisdiction courts first to the district has not been uni- to a suit of nature jurisdic the CIT federal to determine whether formly recognized. district Several jurisdictional grant over civ- tion. Given the broad jurisdiction have also taken courts courts, involving to district a district court would il actions the goods. always jurisdiction, rather than market have grey the CIT, using approach. The result See, Integ- this to Preserve the e.g., Coalition Congress in (CPIAT) negate the intent v. would rity American Trademarks USPQ granting jurisdiction certain States, 224 exclusive over F.Supp. 598 United to The must be (D.D.C.1984) Corpora- matters the CIT. focus Olympus 701 protest, Tariff Act of 1930. menced to contest the denial part, 515 of the section whole or under 1560

solely on the whether claim falls within the tions invalid falls within the exclusive language jurisdictional and intent of the jurisdiction corollary of the CIT as a to grant CIT. to the Since no new claims protest jurisdiction under 28 U.S.C. § the created Customs Courts Act of 1581(a). government attempts (the Act), 96-417, 1980 1980 Pub.Law No. undercut the for her analysis by basis ar- (1980), CIT, 94 Stat. 1727 the created guing goods by that the exclusion of rea- expanded jurisdiction given the to that son of the trademark thereon a is not mat- court, fortiori, a means that additional ex- ter which importer may protest. an We ceptions jurisdiction of district courts agree importer if would seek were to a must result. rights determination of vis-a-vis the trade- owner, a matter be determined in § respect litigation With under 1526 hand, district court. On the other where prior Act, enactment the 1980 there is subject validity regula- matter is the question no that a federal district court procedures tions or of thereunder, pro- a was the forum for a owner trademark and, appropriate therefore, test is the deni- pursue exclusion, any claim for whether al thereof jurisdictional falls within the against government private party. or a grant 1581(a). Accord, of 28 U.S.C. Lois However, purpose one Act Jackets, U.S.A., Jeans & Inc. v. jurisdiction United consolidate over suits States, 5 CIT against F.Supp. government in international (importer brought a matters, declaratory judgment trade placing such matters rights action to province against determine H.R.Rep. court. new No. owner, 96-1235, pur- trademark Cong., concurrently 2d while reprinted 96th Sess. suing protest government’s to attack the Cong. 1980 U.S.Code & Ad.News to comply regulations). Thus, failure with Judge the basis for analysis Restani’s case, In ques this no raises correct. tion of substantive unfair alternatively We hold jurisdiction competition law to activities of may rest 1581(i)(3) on 28 U.S.C. and/or particular private party. If Yivitar were (4), against as a civil action the United asking determine, the CIT example, States which out of embargo9 arises that certain imported by others and quantitative restriction on goods, certain country sold under its mark consti administration and enforcement tuted infringement of Vivitar’s trademark thereof. rights or another form of competi unfair

tion, such beyond matter would Accordingly, we affirm the decision jurisdiction of the CIT. The determina Judge Restani that the CIT jurisdiction respective tions of pri between Vivitar’s over claim.10 parties vate 1526(c) under 19 U.S.C. changed and, the 1980 Act there III. fore, jurisdic continues to fall within the tion of the federal district Statutory Interpretation courts. con trast, validity gov issue, parties, framed erning goods by exclusions of whether the of the Customs general is type question to which the correctly interpret Service the extent of bring expertise. CIT can protection afforded

Judge held, agree, Restani provisions 1526(a) and we that U.S.C. 1526. The Vivitar’s action appear sweeping to create a importa- bar to regula- determination that the any goods bearing tion of trade- same “embargo” 9. We jurisdiction, note the use of the term 10. Because the CIT has have we 11,- legislative history Cong.Rec. jurisdiction of § 1526. 62 to review merits of its decision (1922). 1295(a)(5). U.S.C. § company sage begin that a U.S. mark as owned must somewhat earli- contrast, In er than the latter’s consent. that case. without regulations provide for a more Customs’ 1905, contained, The Trademark Act of regula- prohibition. current limited Under alia, following provisions13: inter U;S. tions, company must disclose § 27: That no imported article of mer- companies part affiliated of the informa- copy chandise ... which shall simulate required upon recordation of registered a trademark in accordance réspect of these mark.11 With provisions with the of this act shall ... ’ companies, affiliated Customs does not re- entry be admitted to at custom quire importation consent to and will not house of the United States. bar from these specified that, The statute also “to aid” in trademark, bearing the recorded sources enforcing prohibition, registrant de- even if the U.S. trademark owner registration was record his certificate of done—that mands —as Vivitar has Department Treasury. with the goods be excluded.12 In the Second Circuit had before it arguments The makes two appeal from an granting order an in- support reading of the stat- narrow junction prohibited Customs from de- § 1526(a) protection ute which would limit taining plaintiff merchandise which provided by regulations: to that sought import. Gretsch Fred Gretsch Congressional expressed intent at enact- Mfg. (2d Schoening, Co. v. 238 Fed. 780 (2) long subsequently, ment and and stand- Cir.1916). bought strings Gretsch violin prac- ing interpretation administrative and Germany which were manufactured by a Vivitar, hand, argues tice. on the other company German Mueller and sold there that violate the statute. under Mueller’s trademark ETERNELLE. party’s position persuasive Neither for Schoening agent was the exclusive sales reasons discussed below. for Mueller in the United States. Schoen- registration a U.S. trademark obtained

A. for ETERNELLE strings for violin Congressional registration Intent at Time recorded that with Customs.14 bring attempted “genu- Enactment When Gretsch strings ine” ETERNELLE violin from Ger- The Court International Trade Customs, many, acting under barred legislative concluded from a review of the importation. their Gretsch sued both history purpose that sole effect of Schoening and the Collector Customs nullify 1526 was to the result of the New York district court and obtained an decision of the Second in A. Bour Circuit injunction against the action taken Cus- Katzel, (2d Cir.1921). jois v. 275 Fed. 539 toms. government urges adopt we analysis. leg affirming injunction, In lower court’s Our review of the Second however, that, history, islative indicates Circuit held that under the law Sec- Circuit, “genuine” reversal of the decision ond while Katzel Gretsch’s sale purpose clearly, strings one it was and Mueller under the ETERNELLE advisedly, infringement. use that word not the mark would we sole not be an purpose. leading pas- Congress, court then addressed Review events whether 133.2(d) 133.12(d). comparable provision appeared 11. 19 C.F.R. 13. A had in stat- §§ See, prior e.g., utes Act of 1905. 16 Stat. (1871), apparently provi- 133.21(c)(1), the first of such quoted supra. C.F.R. sions. request for a Vivitar submitted a formal ruling letter of its entitlement to exclude all agreed Schoening goods bearing the VIVITAR mark unless it con- 14. Whether Mueller register importation. After months without the U.S. owner and was entitled to sented reply, mark was not determined in the suit. Vivitar commenced this action. nevertheless, fringement, importa- presumably intended 27 to bar under the common “genuine” goods. The court con- of of New York. law Congressional cluded that there was no The Second in Circuit decision Katzel had non-infringing intent to bar —that greater significance may at the time than §in “copy or simulate” 27 em- words readily I, apparent. During World War only infringements. braced (an Property the Alien Custodian arm case, later, years A few the Katzel which government) the federal had seized assets case, has some similarities to the Gretsch country in this owned nationals A decided the Second Circuit. was also enemy countries and had sold them to company, E. Wertheimer & Cie. French Thus, U.S. interests. a number of substan- Cie.), (formerly Bourjois A. & had estab- created, e.g., tial U.S. businesses had been for lished a business United States aspirin, U.S. maker of BAYER which powder products, one of face its which was entirely independent was of its German partic- in a sold under the trademark JAVA counterpart and which would have been style packaging. ular Wer- adversely by importation “gen- affected business, including its U.S. all theimer sold uine” from abroad with the normali- trademarks, of its in the U.S. its Thus, zation of international relations. dress, (including and trade names “A. trade litigation pursued Katzel was to the U.S. Cie.”) Co., Bourjois Bourjois to A. & & Court, Supreme accepted case, which (NY) corporation. Bourjois New York was Congress and efforts were also directed to obligated products purchase any provide relief from the Second Circuit’s However, Bourjois from Wertheimer. decision. (NY) did, fact, in buy powder in face bulk Wertheimer, packaged it then which Congress up Several committees of took style retail sale in the same box Fortuitously proponents the matter. had used in the which Wertheimer U.S. importation, Congress restrictive had be- continuing was to use France.15 fore it what became the Tariff Act of operated The defendant Katzel a retail 67-318, (1922), Pub.L. No. Stat. pharmacy City. York New Sometime they to add were able 1526 as an amend- bought prior quantity Katzel legislative history ment to that bill. The packaged Wertheimer’s retail JAVA face limited, very consisting section began selling powder France and short floor debate the Senate and a brief product in her York store and to other New paragraph Report, in the Conference packaging retailers. The for the Wer- entirety reads as follows: theimer sold Katzel almost was A recent decision of the circuit court of (NY), Bourjois identical to that of and the appeals existing holds law does not were, fact, products The dis- same. prevent of merchandise enjoined trict court Katzel’s sales as in- bearing the same trade-mark as mer- Circuit, fringements. relying The Second States, if the im- chandise of the United infringement part of the decision in on genuine ported merchandise is and if case, theory the Gretsch reversed on the public. there is no fraud on the infringement that no occurred since the importa- amendment makes such Senate selling powder face Katzel JAVA tion unlawful without the consent of the “genuine.” The Katzel court did not have owner of the American trade-mark. blocking importation it issue of before H.R.Rep. Cong., meaning No. 67th 2d Sess. or the 27. The court was (1922). making in- 158 The “recent simply a decision on trademark decision” was Kat- Cie., labelling Bourjois principal to A. & and E. Wer- 15. The difference was in the U.S. Bourjois respective company names. The theimer & Cie. (NY) product following legend: bore The Wertheimer were labelled "A. Bour- boxes Cie., Cie., jois Made in France —Packed in the U.S.A. A. Bourjois & E. Wertheimer & Successeurs.” Co., Inc., York, Succ’rs. in & of New zel, despite the mischaracterization of what indication of the sense of the chamber as a actually held. the case had Congress. only or of whole The clear indi- § from Congress cation the debate is that government argues that 1526 was The “protect providing importa- no more than realized it was a to intended to do bar against fraud property rights of Americans though (the tion even at least one circuit they pur- had in the situation court) Katzel would hold that the concur- rights foreign from own- chased trademark parallel rent use of the mark on the import relief yet ers were unable to obtain when not infringement. would be an re-With genuine trademark con- goods spect infringing uses of trademarks on spon- imported.” tinued to be sold and One imports, goods already excluded, such were attempt sor did Senators who convince § excludable, at by or least 27 of the trade- sweep proposed lan- questioned Congress mark statute. did not debate or greater effect guage that it would have no change intend to trademark law to make purchaser of trade- protect than to a U.S. uniform might what the various courts against mark in the fraudulent U.S. infringements. Rather, ig- hold be it by seller of those conduct and, by nored trademark law amendment However, rights.16 opponents were uncon- law, gave to customs a U.S. owner of a question vinced. The was raised as to right foreign goods a to exclude pur- flour whether U.S.-made WONDER bearing the same trademark as the U.S. chased in would excluded Canada be company registered had U.S. legislation provision. proposed The was recorded Ownership with Customs. hastily amended to add the limitation that registration U.S. trademark only foreign was a condi- manufactured were ex- cludable, which took care of at least that to an right, exercise of that trade- but objection. infringement by importer mark was not. supporter

Another indicated he favored legislation because of the transfer to enactment, At the time of it cannot be certain U.S. interests of the BAYER trade- § 1526(a) disputed Congress intended Property mark the Alien Custodian. provide remedy an exclusion broader agreed Another that he also understood §in than that 27 of the trademark statute purpose legislation protect was to which, Gretsch, as held was limited Advocates, thus, such interests. “copy the words or simulate” to the bar- clearly limiting not themselves to the Kat- ring infringements. support Additional zel situation. the conclusion that 1526 is not for limited of the comments in Our review the floor infringements language is found in the debate leads us to the conclusion that the paragraph another enacted at debate is too unfocused and misinformed to provision, the same time. That additional interpreta- serve as definitive basis for § 1526(c), 19 U.S.C. reads: debate, tion of 1526. The floor like the (c) Any person dealing such report, committee above indicates an erro- (a) may merchandise under be [excluded ] understanding neous of the facts of the enjoined dealing therein within case, namely, the French seller Katzel may required ex- United States violating of the JAVA trademark was port destroy contract and that the Second Circuit dealt such merchandise § 27 of the Trademark Act of 1905 in remove or obliterate such trade-mark and legislation disparaged Katzel. was shall damages be liable the same for during “midnight” the debate as a amend- profits provided wrongful use for ment, impact of which not clear. trade-mark, provisions under 20,1905, February Act of as amend- circumstances, Under these the remarks [Emphasis of one or more Senators are an unreliable ed. added.] 11,602-05 (1922). Cong.Rec. reported 16. The floor debate is at mark, Thus, remedy hind the sold under the private was-created (NY) dealing prohibited product Bourjois itself. did persons merchandise not Katzel, 1526(a), who were made liable not stand behind the sold damages provided purchasers trade- would think that it did. the same whereas damage remedy infringement. The Supreme Court did not mention the wholly unnecessary if the been would have provision of the trademark 27 exclusion intended to reach in- statute had been statute in Katzel since it was an issue fringements only, remedy since that However, directly raised in that case. 1905. already available the Act of question of exclusion Customs under the enactment of A months after few shortly 27 arose thereafter in A. Bour- § 1526, Supreme the Court handed down 675, Co., jois Aldridge, & Inc. v. 263 U.S. Katzel, Bourjois v. 260 its decision A. 4, (1923). 44 68 L.Ed. 501 The under- S.Ct. 244, (1923). 689, 464 U.S. 43 S.Ct. 67 L.Ed. lying Aldridge closely parallel facts Emphasizing territoriality of trademark Katzel, except that the trademark those rights, the the Second Cir- Court reversed involved was MANON LESCAUT face non-infringement. holding cuit’s Re- (NY) powder, Bourjois another mark had gardless genuineness of the face acquired Katzel, from Wertheimer. Unlike trademark in powder sold under JAVA Bourjois sought against this time relief France, identity composition and its (Aldridge) port Collector of Customs at the owner, by the trademark that sold U.S. of New York under 27 of the trademark “genuine” Katzel of the article sales importer, Le as well could en- under the JAVA trademark be Import Benart Co. The district court re- because, joined in the United States as stat- grant injunction require fused to an Cus- opinion, ed in the Court’s the trademark powder MANON LESCAUT toms bar law, and, found, by “indicates in it is JAVA Wertheimer) (acquired from from abroad public understanding, goods that the come entry by importer. appeal, the On Sec- 692, plaintiff.” at 43 from U.S. following Circuit certified the two ond goods de- S.Ct. at 245. Since the Supreme questions to the Court: selling fendant was did not “come from” (1) the sale in the United States of Is plaintiff spon- Bourjois the sense of powder Wertheimer’s Manon Lescaut sorship, public while the would attribute plaintiff’s registered infringement of goods plaintiff, defendant’s trade-marks? powder sales of face under the JAVA mark (2) collector, by section 27 of the Is the Thus, infringed plaintiff’s rights. Law, required to exclude Trade-Mark repudiated Court several defenses asserted entry genuine pow- Manon Lescaut from (1) infringement: that the use to trademark der so as aforesaid made France? Bourjois of the trademark of without its Co., Bourjois Aldridge, Inc. v. A. & justified consent because the was (2d Cir.1922). Fed. identical to those sold under the mark were opinion, Supreme In a memorandum indeed, owner, of the trademark ob- questions in Court answered both the af- manufacturer, tained from the same firmative, “upon authority of A. Bour- legality of the trademark in that the of use Katzel, jois v. 260 U.S. S.Ct. importer had ob- country where the [Aldridge] L.Ed. not ob- defendant justified its concurrent tained the jecting.” Again, infringement was found country.17 The decision fol- use in this arguably “genuine” goods. theory that with generally accepted lowed the only product identical to that identify Not of a trademark is the function of the trademark owner sold under the the source which stands be- U.S. producer, rejected argument ad- that the was unanimous and one of Justice Holmes’ also 17. The court (Bour- mirably opinions pages. respective company of less than three display names short Wertheimer) opinion labelling pre- jois The author of this is embarrassed on the vis-a-vis any comparison. public. The decision cluded confusion mark, indeed, same obtained the same trade-mark. To obtain such advantages manufacturer, product but also the the local owner of foreign mark is legally place sold under the mark at the given control of the of all origin purchase. Nevertheless, Cus- cars it. toms was type directed to exclude this of 48 F.2d at 1037. “genuine” goods under It quite seems clear that Judge Hand did argued It is Supreme that had the Court not consider that the statute was limited in decision in the Katzel case been handed scope to the facts of view, Katzel. his sooner, down 1526 would not have been the statute was “drastic” in that gave it However, enacted. the statute was enact- right owner the to “control” im- ed, and, indicates, as the discussion above it ports of “all” bearing the mark to resulted in statutory bar limited to which it rights, regardless owned U.S. Katzel, indeed, the facts of not intended to the relationship between the U.S. trade- limited to technical determinations of mark owner and the producer. infringement. Despite the reversal of Katzel and the contemporary judicial A assessment of holding in Aldridge by Supreme Court, congressional Sturges intent is found in v. § argued which it is made 1526 unneces- Pease, Inc., 1035, Clark D. 48 F.2d 1036 sary, provision nullified, not been (2d Cir.1931), plaintiff a case in which the but has part remained of the customs law. sought import personal use a second- Indeed, § proposal to eliminate 1526 from Hispano-Suiza hand automobile which bore law, the customs because the Trademark the trademark “H-S.” The U.S. § Act of 1946 would carry 27 forward as Pease, that mark had acquired by been who part of the new was unsuccess- “genuine” refused to allow the article to be ful.18 imported. Hand, Judge addressing A. § limitations, We conclude that no based on argument 1526 should narrowly congressional indications of construed, intent at since it would not have been enactment, time of enacted can be read at all had into the pri- Katzel been decided thereto, statute itself. stated: But this fact does not settle scope of the act. B. object ... The of this drastic statute is Interpretation Administrative protect foreign owner of a trade- competition Turning government’s second mark____ goods bearing argument, urged it is Sales of that the current Cus

cars bearing foreign regulations long trade-mark toms standing reflect a imported without the interpretation consent of Clarke administrative of the statu Pease, Inc., D. and, interfere right tory provision thus, with its accept should be control the use of the mark in this controlling coun- ed as on this issue. Our review try which apparent was the purpose of regulations of the series of by issued Cus congressional legislation. toms since together with administra practice, tive Buyers Treasury rulings,

... are likely purchase His- corre pano-Suiza spondence Pease, cars between from Clarke D. various Customs offi Inc., in order cials and they Congress, to secure the mark if members of indicates cannot advantage. otherwise obtain that Customs has had and continues to they If import changing are allowed to person- have views the role Cus § consent, al use without enforcing 1526(a) Clarke toms in D. on behalf of Pease, Inc., may certainly lose registered (as customers owners of U.S. trademarks willing buy who would be from them in enforcing import well as exclusion in rather possess bearing than cars no the 1946). Trademark Acts of 1905 and (15 1124) 18. Old 27 became § § U.S.C. § the 1946 statute. following (language enact- tected trademark taken from the regulations

The first § statute). ment of 1526 were issued Customs Imported goods Judge opinion, 1923. As noted in Restani’s longer subject no to either the trademark insight little into these offer prohibition or customs law absence interpretation, they in that agency’s “if of the trademark owner’s consent reg- merely recognized that U.S. owners foreign trade-mark and such ... United pro- entitled to the istered trademarks were trade-mark States ... owned (Customs Regulations tection of association, person, partnership, same 475-480.) Upon reen- Articles corporation.” part of the Tariff Act actment of 1526 as put into the Customs 1930,19 regulations were issued as new much broader limitation under 19 C.F.R. follows: Importation longer 11.14. was no to be prohibited entry. Entry Prohibition — barred the absence imported gen- merchandise if trademark owner’s consent uine trade-mark when such trade-mark Treasury Depart- compa- is recorded with trademark was owned a “related registered ment under the trade- (as ny” defined in 45 of the Trademark 20,1905, February compli- if mark law 1946) owner, Act of of the U.S. and disclo- provisions of ance is had with all section companies sure of such related was re- 1930,provided of the tariff act of (15 quired. The definition U.S.C. protection period of for such trade-mark § 1127) covers com- licensees well as expired. [Emphasis has not added.] monly companies.20 owned Regulations of Article Despite regulations, these some U.S. 513(a). against goods “genu- The bar enjoy trademark owners continued to appears ine” marks to con- have been imports “genuine” goods exclusion of of Customs, time, by sidered at that to be by apparently from reason of earli abroad absolute. Without the U.S. er recordation of a mark before disclosure consent, goods, “gen- all owner’s even with required. of affiliates was Such a situation marks, Sturges, uine” were barred. su- Guerlain, revealed in v. United States pra. Inc., (S.D.N. F.Supp. USPQ 114 155 223 concept The first inroad on that is found distributor, Y.1957). Guerlain, A U.S. had regulations. in the 1936 It must first be exclusionary provisions the utilized that dealt noted have § 1526(a) prevent importation to others on trademarks in a with exclusions based goods of the same which Guerlain was single regulations, under set of whether court, importing. In the district the United the trademark statute. In 1526 or under successfully that States maintained Guer goods regulations, the 1936 barred under action was in 2 of the lain’s violation of pur- stated to deemed for 1526 were by monopolizing attempt Sherman Act or poses the a trade- bear “copies pro- ing monopolize goods the sold under the mark which or simulates” ambiguous following We think this remark is at best and remarks of Senator Reed at significance little to this case. his are relied on as ”[W]ithout that time provi- depend "importa- indicating Congress’ understanding from consent” could either "stamped," changes meaning tions" or which sion: completely. present laws forbid the At the time the tariff importation a trade- of an article company 20. 15 U.S.C. 1127 defines related as registered the owner in America unless follows: writing consents in to the of that trade-mark company” per- The term “related means Obviously purpose importation. of that legitimately son who controls or is controlled protect provision the American owner of is registrant applicant registration or against importations of arti- trade-mark quality to the nature and stamped been with his mark cles which have goods or services in connection with which [Emphasis added.] his consent. without the mark is used. (1929). Cong.Rec. i.e., trademark, competition company in U.S. is intrabrand which the owner of a U.S. (§ 133.21(c)(3)). (The subject prevented.21 Had trademark regula- stood, ruling distinguish would not be ad- tion does not between a licensee vancing interpretation foreign rights). of U.S. Disclo- However, urging during today. required. sure these names is it is Supreme of the case pendency before With respect to actual administration Court, Department the Justice moved to practice, during years some Customs acted judgments the district vacate court which, to exclude under regula- its favor to it move its enable tions, should not have been excluded be- for such court dismiss. As reasons ac- information cause it lacked to implement government stated that it was tion, Thus, regulations. trademark recor- practice Customs to allow such exclu- prior differently dants to 1953 treated were “genuine” sions of from recordants between 1953-1959 and legislation government would seek to clari- differently those after 1959 from those be- products affiliate of the fy that the of an fore that date. Whether earlier recordants owner not U.S. trademark today are treated the same as those remedy. Supreme the exclusion Court after we do not know. In the above granted government's motion. 358 Atwood, cited article J.F. a customs law (1958). U.S. 915 Efforts obtain such specialist Customs, at the then Bureau of legislation proved unfruitful. See H.R. problem of lack of uniform administra- (1959). Cong., 86th 1st Sess. is discussed. 59 Trademark Reporter at 310-11. One section entitled “The 1959, apparently a result of as Company Related Riddle” and concludes situation, Guerlain expressly statement: to the excep- went back more limited 1936 i.e., tion, companies Thus longer related are no was allowed without denied protection merely full only entity” consent if the because “same owned they foreign firm, with a Atwood, affiliated rights here and J.F. abroad. See because control nature and Import Restrictions on Trademarked quality [sic, goods of the trademark sold Merchandise—The Role the United exercised, only Customs, but Bureau States trademark] Trademark ownership because there is common Reporter (1969). appears It control. Treasury 69-12(2) (1969) Decision in T.D. record, however, entity”

the “same that the Reporter 59 Trademark at 317. Work on satisfied, in requirement was the view of clarifying position Customs re- with Customs, by parent/subsidiary relation- spect companies to related bars However, ship. foreign disclosure rela- proceeding (1969). at that time tionship required regu- was not in the 1959 Similarly, comprehensive study being is except principal agent, and lations for 19 respect genuine made at this to time with § 11.15(a) (1959), that C.F.R. so Customs market. See Solicitation grey uniformly could not enforce the limitations. Notice, 21,- Fed.Reg. of Economic Data (1984). 453-56 As stated therein: again

In were re- regulations, The controversy vised. new C.F.R. Because of the and consid- § 133.21, carried “same enti- erable interest on sides of forward both the issue explicit- expressed to, ty” many limitation and added limitations letters re- and (1) with, parent/subsidiary corporations quests ly meetings the Executive ownership Departments Agencies, common of the owners Branch and and other (§ foreign and 133.- Cabinet Council on U.S. trademarks Commerce 21(c)(2)) Working Group licensees of the Trade’s on Intel- [CCCT] similarly charged charge conspiracy issue. other defendants were There was no Two respect among to other and marks. The with the defendants. were consolidated of the common cases because regula- the Customs studying given to statute Property lectual [WGIP] 1954,Treasury early as informed imports. The tions. As relating parallel to issues overlap Congress that of 19 U.S.C. to may make a recommendation WGIP § 1124 “was confus- parallel im- 1526 and 15 U.S.C. respect the CCCT with proposed that a amendment ing,” it con- products when ports of exclusion was not specify study. its cludes commonly authorized with reg- propose new the notice does While etc., licensees, companies, agents, owned ulations, continued uncertain- discern a we interpretation. would endorse Customs’ as to ty the executive branch within passed. amendment was not provisions. meaning the exclusion 1978, Congress did amend 1526 to joined Finally, note that Customs we statutory exemption bar add an filing Department of Justice with against importation respect to “grey mar- in 1983 in another amicus brief personal use accompanying travellers for Howell: goods case entitled Bell & ket” (19 1526(d)). Report The House U.S.C. Co., 719 F.2d Supply Masel Mamiya Co. v. Cong. 1st Sess. 27 (H.R.Rep. 95th (2d Cir.1983), in which states, incorrectly, (1977)) that the albeit § 1526(a) “in to construe urged the court consistently interpret- Service had meaning normal accord with imports encompassing 1526 as not repudiated po- statutory language” and trade- authorized the U.S. which were urged here. sition produced Noth- mark owner to be abroad. government has cited other While any materials we have been able statements Cus- official or semi-official way the limita- find indicates § 1526(a), do not interpretation of we toms’ forth in the Customs tions set help “long its these materials see that incorporated into the endorsed or standing argument here. administration” concerning indi- problems Several statute. policy than of adminis- Rather a consistent addressed, being vidual travellers were years, reflecting an unvar- tration over the bringing “genuine” which the bar ap- it ying interpretation of the personal one of the most goods for use was continuing has had pears that Customs annoying. concerning reading questions events, argue that appellees From these that, years, It is over statute. evident have, in ef- Congress must be deemed adjust regu- attempted fect, limitations of the incorporated the judicial the few decisions lations to reflect it regulations into the statute because prior to 1972. interpreted the law agree. of them. We cannot was aware imposing the “same regulations, while tenuous a Legislation by total silence too 1936, have not been entity” limitation since theory to merit extended discussion. respect of other limita- what consistent recognized nor has consist- tions should be in enforce- ency unequivocally shown been IV. history Thus, legislative like the

ment. Interrelationship Statute of standing “long administra- argument, the Regulations argument of interpretation” tive regulations as con- attacks not afford does government and intervenor § and, therefore, 1526(a) trary to invalid. interpreta- statutory definitive a for a basis statute, view, not the In but Vivitar’s tion. to provides an absolute bar regulations, goods manufactured abroad importation of C. to one a trademark identical which bear Implied Ratification entity registered in the U.S. U.S. Thus, per Vivi- the latter consents. argues that unless Finally, the unlawfully limit the tar, regulations interpretation ratified Congress has

1569 versa). given by rights of the trademark owner Anonyme See La Societe des Par Patou, Inc., statute. LeGalion v. Jean 495 fums (2d USPQ F.2d 181 545 Cir.1974); appears position It Vivitar’s that is U.S.A., Jackets, Lois Jeans & Inc. v. Unit understanding on an erroneous as to based States, 5 CIT 566 F.Supp. 1523 structure of the statute and the nature (1983)(injunction against granted exclusion subject regulations. argu Vivitar’s of pending infringement determination of in premised assumption are ments on the that court); district v. C. & Import Holland A. regulations right set the limits of its to Corp., F.Supp. 259, (S.D.N.Y.1934); § 1526(a). premise This er exclude also Refining see Humble Oil & Co. v. roneously regulations legisla treats the as Co., USPQ 597, Chemical Sekisui 604- having rules tive the force law. Con (TTAB 1970) (Customs defers to deci course, gress may, agency entrust an tribunal). of TTAB or sion other Similarly, duty judgment to un with exercise decision, expressed Customs’ the sub guidelines der set forth and to regulations, ject grey not exclude to mar fill in the protection extent of thereunder. goods ket question does not control on the See, Francis, e.g., Batterton v. U.S. particular goods whether should or 416, 425, 2399, 2405, 97 S.Ct. 53 L.Ed.2d should not be A excluded. trademark own (1977). However, language we find no entitled, is er as in “confusingly sim Congress delegated in the statute which case, private ilar” mark pursue to remedies authority legislative Secretary to the and, importer successful, if to Treasury in connection with administra grey goods have such market excluded.23 § 1526(a).22 Without such authori ty, regulations cannot affect the mind, With these considerations we scope of actual a trademark owner’s regulations conclude that the do no more importer vis-a-vis under the statute. define in initiating than Customs’ role ad- Davis, 2 K. Administrative Law Trea See ministrative enforcement the statute. § (2d 1979). 7.8 tise ed. manner, apparent Viewed it that regulations contrary are not to the Regardless of Customs ex whether being statute in the sense that particular cludes or does not im exclude routinely excluded should be admit- ports, independently courts must deter ted vice versa. Nor instance mine whether is or is not where, brought to our after been attention In precluded the statute.' connection judicial imports determination that should exclusion with under the statute excluded, Customs refused thereafter to be (15 1124), U.S.C. Customs’ administrative accordingly. undertake to act Vivitar’s determination importations bear a complaint regulations simply do mark that is likely not cause confusion go enough automatically far exclud- awith recorded mark has no effect on a types all grey importations. market right judicial trademark owner’s obtain a and, view, infringement required determination of there our is not after, (or grey have such excluded all sponte. vice exclude market sua regulations pursuant gen- regulations 22. The If were issued 23. we turn to Customs related authority exclusions, eral statutory non-legislative under 19 U.S.C. In con- to other trast, 1526(d)(2) specific delegation contains a nature of all of these becomes readi- legislative type authority Secretary (i.e. ly apparent. company Trade names importations personal use names) may only if used for recorded six specific authority issue Nothing months. in 15 U.S.C. 1124 establish- 1526(d)(4). legislative In some instances au- requirement. es this No automatic exclusion is thority may specific grant be found without if 1125(b) provided pursuant at all 15 U.S.C. § logic language it is clear from "the and of the competition which relates cases unfair legislative history” and [statute] its that such Act, (§ 43(a) Lanham 15 U.S.C. authority contemplated. Chrysler Corp. v. 1125(a)). Brown, 1705, 281, 308, 1720, 441 U.S. S.Ct. 60 99 (1979). L.Ed.2d 208 1570 by for initial determination possi- such cases not have foreseen all

Congress could relationships private under the remedies trade district courts in international bilities trademark owner enacting provided statute. The to the at the time of § 1526(c).26Indeed, trade- myriad.24 the fact that the grey market are variations provided the remedies government’s owner is with rejected the we have While damages against private injunction inter- of the statute must be argument that improperly dealt in the regulations, parties we who have by limited preted as negates the idea that the statute in the United States reject the view must also is agency-initiated or action all cases implied limitations may any not have Further, “agency,” provi- expected. such as absence general principles veil,” expeditious monetary relief corporate “sham” sion for “piercing importer transactions, compensation or other for an “estoppel,” “fraud” whose against right improperly excluded cautions apparent defeat an are could not defenses automatic administrative exclusion such statute. to invoke the cases.27 event, if return to the any we Accordingly, hold the current we provid trademark owners are U.S. regulations controlling be valid but essentially private reme therein with a scope protection properly being tested in the dy, which § 1526(a). any addi 19 U.S.C. To obtain increasing fre courts with federal district protection, pursue must first tional issues, as those quency and where alleged rights determination of above, ap being resolved. It raised persons engaging parallel impor against § 1526(a) may develop pears to us that be photographic equip tation of VIVITAR protection case-by-case basis into on a court, and, district if suc ment federal compe types of unfair generis sui cessful, parallel im is entitled to have in international trade.25 That Cus tition ports by excluded Customs. regulations provide do not for exclu toms initially in the trademark sion a case where Conclusion ultimately prevails federal district owner Interna- conclude that the Court of mean that must We court does not jurisdiction to protection un tional Trade had exclusive declared invalid. Where be validity regu- the current depends upon determine the is unclear or der the statute § 1526(a). situations, administering 19 U.S.C. complex factual lations resolution of scope sponte further conclude that may impose decline to sua We Customs statutory protection afforded to a U.S. and leave the extreme sanction of exclusion Photo, (S.D.N. USPQ F.Supp. 589 223 124 example, U.S. and 24. For entity by Y.1984); rights may Mamiya or Co. be owned the same Bell & Howell: v. Masel companies, by wholly separate Co., com- USPQ F.Supp. related Supply 548 215 870 may panies. Stern, the U.S. owner be (E.D.N.Y.1982), Inc. v. Parfums to, may imported or different be identical Service, (S.D.Fla.1983); F.Supp. Model 575 416 from, may pro- import. parallel Goods be Int’l, Inc., Corp. F.2d v. Takachiho Rectifier by the U.S. trademark owner duced in the U.S. (9th Cir.1983). USPQ goods produced abroad and different Services and its affiliate. U.S. owner Jackets, U.S.A.,Inc. v. United 26. See Lois Jeans & may may here not be the same warranties 238, 244, States, F.Supp. 5 CIT (i.e., foreign licensee related A and abroad. (1983) ("judicial expertise clearly ... by foreign may required law and company) Court.”). District meaningful may control not be such actual variations A number of U.S. owner. (copyright C.F.R. 133.43 exclusion 19Cf. opinion; by the cases cited in this are indicated alia, copy- require, inter U.S. Takamatsu, Parallel Im- discussed in others are post right bond conditioned to hold owner to Compara- Goods: A portation Trademarked imported importer articles or owner of the (1982). Analysis, Wash.L.Rev. 433 tive resulting damage from loss or harmless Corp., Righter No. Co. v. Godex & 25. Selchow detention). (S.D.Fla.1985); Osawa & Co. v. B. & H. 84-8264 (d) Exemptions; under U.S.C. is publication trademark owner in Federal Register; forfeitures; regulations. regu- not fixed the Customs rules and § 133.21, lations regulations, upheld 19 C.F.R. administratively (1) The provisions a exercise of

as reasonable trademark of this and section section 1124 judgment initiated of of title do enforcement. The apply not to the of articles Trade the Court of International is af- person accompanying any arriving in the firmed. United States when such articles are for AFFIRMED. his personal (A) use and not for sale if such articles are within the limits of types.and quantities determined APPENDIX Secretary pursuant (2) to paragraph of bearing 1526. Merchandise Ameri- subsection, (B) this person and such can trade-mark granted an exemption been under (a) prohibited Importation days this subsection thirty within imme- diately preceding his arrival. Except provided (d) of subsection (2) Secretary section, shall this it shall unlawful im- determine be to and publish in Register the Federal port any lists of into the United States merchan- of types articles and quantities of dise if of manufacture such mer- each which shall be entitled the ex- to chandise, label, sign, print, pack- or provided emption by this subsection. age, or wrapper, receptacle, bears a determining quantities such particular of of, aby trademark owned a citizen or types of articles, trade-marked the Secre- corporation or created or- association or give tary shall such consideration as he within, ganized States, the United and necessary deems numbers of such registered in the Patent and Trademark usually purchased articles at retail for person Office domiciled the Unit- personal use. States, provisions under the of sec- (3) If any article which has been ex- tions 81 109 of title and if copy of empted importa- from the restrictions on registration certificate of of such tion of trade-mark laws under this Secretary trademark is filed with year subsection is sold within after one Treasury, provided manner importation, article, date such or section 106 of said title unless written (to its value be recovered from im- consent of the owner of such trademark porter), subject A forfeiture. sale produced making entry. at the time pursuant judicial to a liquida- order or in (b) and Seizure forfeiture estate decedent is not Any imported such merchandise into subject provisions para- of this the United pro- States violation graph. visions of this section shall be may prescribe The Secretary such seizure and forfeiture violation for rules and as may neces- be customs laws. sary carry provisions out (c) Injunction damages subsection. Any person dealing (e) such mer- bearing Merchandise counterfeit may enjoined dealing chandise be mark; forfeiture; dispo- seizure and may therein the United States or within of seized sition required export destroy be such such Any merchandise a coun- merchandise obliterate remove (within meaning terfeit mark of sec- shall be liable 15) imported tion 1127 title into the damages profits provided the same provi- United States in violation of the trade-mark, wrongful use of of section 1124 of title shall sions provisions and, of sections 81 to 109 seized the absence of the written owner, title 15. consent the trademark forfeit- imported goods comparable to those Vivitar says in its case. should be excluded the customs laws. for violations merchandise, the of such Upon seizure opinion mainly join I do not the court’s of the notify the owner Secretary shall wholly inappropriate I it because think is forfeiture, shall, trademark, after and (as go for this court to further and to delve feasible where the trademark obliterate majori- extensively in Part III of the it does goods seized— dispose of and construing ty opinion) into bases Federal, delivery 1526(a) to such (1) by legislation applies as that be- agencies government State, parties. type local That of discus- private and tween Secretary have opinion in the sion should left to the district courts and as be merchandise, regional appeals they such need for courts of when (under are faced a suit 19 U.S.C. with in- eleemosynary (2) by gift to such §§ 1338) 1526(c), 1331 and U.S.C. the Sec- opinion of as stitutions against persons deal- the trademark owner merchan- such need for retary have a country in in merchandise said to this dise. imported have been violation the date (3) year after more than § 1526(a). The will never deal with CIT by appropriate forfeiture, by sale issues, private-party and those suits un- public auction at customs officers only they hap- if this court can reach them Secretary regulations as such der joined appealed patent pen to be with making except that before prescribes, me, 1295(a)(1). To it is claim. 28 U.S.C. Secretary deter- shall any sale the such court, in gratuitous for this needless State, Federal, or local mine no coming trade case this international eleemosynary agency CIT, indulge lengthy dicta need for has established institution § 1526(a), scope on the full obiter dicta paragraph merchandise private not bind court which will (2), or simply tends to confuse the suit but which unsafe or a is (4) if the merchandise trademark bar. health, by destruction. hazard to agree should make it certainly I that we DAVIS, concurring Judge, Circuit regulation does not clear that the Customs result. sweep the full necessarily cover of Inter- the Court jurisdiction of On the § 1526(a), to indicate it is not for us but (CIT), agree I with the Trade national (as does), affirmatively majority even citation of adding only the opinion, court’s dicta, sweep actually wider that that full v. Exporters American Association of regulation. The entire matter than 1239, 1244-46 States, 751 F.2d United litigation left to further with should be of this recent decision (Fed.Cir.1985), a haphazardly con- only can which we ground much of plowing court cerned, if at all. All that we hold power. current CIT’s regulation is is that the Customs now ease majority regulation. enforcement merits, agree as a Customs I with valid theOn regulation quite enough. challenged That is properly, for could valid because enforcement administrative

its own less exclude that it would provide

purposes, might goods that trademarked all the

than § 1526(a), i.e., to be covered turn out need not own enforcement

that Custom’s of that full reach

be coterminous per- private applies it between as

statute that since I find majority,

sons. Unlike have been the Customs apply to they

substantially consistent

Case Details

Case Name: Vivitar Corporation v. The United States, and 47th Street Photo, Inc., Intervenor

Court Name: Court of Appeals for the Federal Circuit

Date Published: May 6, 1985

Citation: 761 F.2d 1552

Docket Number: Appeal 84-1638

Court Abbreviation: Fed. Cir.