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

Citations: 761 F.2d 1552; 225 U.S.P.Q. (BNA) 990; 1985 U.S. App. LEXIS 14786; 6 I.T.R.D. (BNA) 2169Docket: 84-1638

Court: Court of Appeals for the Federal Circuit; May 6, 1985; Federal Appellate Court

Narrative Opinion Summary

The case centers on Vivitar Corporation's appeal against the U.S. Court of International Trade's decision regarding the importation of 'grey market' goods—products sold abroad under a registered trademark that compete with goods from the U.S. trademark owner. Vivitar challenges the Department of Treasury Customs Service's regulations, claiming these regulations violate 19 U.S.C. § 1526 by allowing unauthorized imports of goods bearing its trademark. The Court of International Trade upheld the regulations, interpreting them as valid exceptions to the statutory prohibition. Vivitar sought to reverse this decision, arguing a legal error. The appellate court affirmed the lower court's jurisdiction under 28 U.S.C. Sec. 1581(a)(3) and/or (i)(4) and upheld the regulations as a reasonable exercise of enforcement authority. It noted that Customs may defer decisions on goods involving common ownership and control of U.S. and foreign trademark rights to the courts. The court found that while the Customs regulations do not limit the protection for U.S. trademark owners under Sec. 1526, they do not define the full extent of statutory protection. Vivitar's claims, not involving substantive trademark disputes with private parties, were appropriate for review by the Court of International Trade, confirming its jurisdiction over Vivitar's challenge to the validity of Customs regulations.

Legal Issues Addressed

Authority of Customs Service Regulations

Application: Customs regulations are deemed a reasonable exercise of enforcement authority, and while they do not define the full extent of protection under Sec. 1526(a), they are upheld as valid.

Reasoning: The regulations are deemed valid but do not define the full extent of protection under 19 U.S.C. Sec. 1526(a).

Exclusions of Grey Market Goods

Application: Customs may defer decisions on goods involving common ownership and control of U.S. and foreign trademark rights to the courts, and must enforce judicial rulings against importation of goods bearing the trademark.

Reasoning: Customs may defer decisions on goods involving common ownership and control of U.S. and foreign trademark rights to the courts.

Interpretation of 19 U.S.C. § 1526

Application: The statute prohibits the importation of foreign goods bearing a U.S.-registered trademark without the owner's consent, but Customs regulations allow exceptions, which were upheld as reasonable.

Reasoning: Section 1526 prohibits the importation of merchandise bearing American trademarks without the owner's consent, outlines the seizure and forfeiture of such merchandise, and provides for injunctions and damages against unauthorized dealings.

Jurisdiction of the Court of International Trade

Application: The Court of International Trade has exclusive jurisdiction over civil actions challenging the validity of Customs regulations related to the importation of trademarked goods.

Reasoning: The appellate court affirms the lower court's jurisdiction under 28 U.S.C. Sec. 1581(a)(3) and/or (i)(4) and clarifies that Customs' regulations do not limit the protection for U.S. trademark owners under Sec. 1526.

Private Remedies for Trademark Owners

Application: U.S. trademark owners possess private remedies that are increasingly being tested in federal courts, where relevant issues can be addressed.

Reasoning: Vivitar must first seek a judicial determination regarding its rights against those engaged in parallel importation of its goods and, if successful, can then have those imports excluded by Customs.