CA1: Lanham extraterritorial jurisdiction analysis

McBEE v. Delica, No. 04-2733, analysis “as a matter of first impression for this circuit, to lay out a framework for determining when such extraterritorial use of the Lanham Act is proper.”  The First rejects the approaches used by other circuits. 

The First’s new framework is thus:

1. “first whether the defendant is an American citizen; that inquiry is different because a separate constitutional basis for jurisdiction exists for control of activities, even foreign activities, of an American citizen. Further, when the Lanham Act plaintiff seeks to enjoin sales in the United States, there is no question of extraterritorial application; the court has subject matter jurisdiction.”
2. then asks whether the “*** complained-of activities have a substantial effect on United States commerce, viewed in light of the purposes of the Lanham Act”

The court notes that comity analysis is party of subject matter jurisdiction (hint, hint, DC Circuit), and that “Comity considerations, including potential conflicts with foreign trademark law, are properly treated as questions of whether a court should, in its discretion, decline to exercise subject matter jurisdiction that it already possesses.”