The opinion of the court was delivered by: Morton Denlow, United States Magistrate Judge.
MEMORANDUM OPINION AND ORDER
Thomas & Betts Corporation and Thomas & Betts Holdings, Inc.
(hereinafter collectively referred to as "T & B") move for an
order to delay adjudication of their extraterritorial Lanham Act
claims against Panduit Corporation (hereinafter "Panduit") until
after adjudication of their domestic Lanham Act claims. The Court
held oral arguments on September 2, 1999. This opinion expands
upon the Court's ruling and order entered on September 2, 1999.
For the reasons previously discussed in open court and set forth
below, T & B's motion is granted.
T & B originally brought this action in five counts against
defendant Panduit. Count I alleges that Panduit's metal barb oval
head shaped cable tie infringes on the trade dress of T & B's
cable tie in violation of 15 U.S.C. § 1125(a) (hereinafter the
"Lanham Act"). Count II alleges that Panduit's use of the name
BARB-TY constitutes unfair competition and seeks cancellation of
Panduit's trademark registration of the term BARB-TY under
15 U.S.C. § 1064(3). T & B also alleged that Panduit's conduct
violates the common law of unfair competition (Count III); the
Illinois Consumer Fraud and Deceptive Business Practices Act, 815
ILCS 505/2 and the Uniform Deceptive Trade Practices Act, 815
ILCS 510/1 et seq. (Count IV); and the Illinois Anti-Dilution
Act, 765 ILCS 1035/15 (Count V). Counts III through V are no
longer involved in the case.
T & B previously brought a motion for a preliminary injunction
which was granted by the trial court in Thomas & Betts Corp. v.
Panduit Corp., No. 94 C 2656, 1994 WL 714619 (N.D.Ill.Dec.19,
1994), and later reversed by the Seventh Circuit. Thomas & Betts
Corp. v. Panduit Corp., 65 F.3d 654 (7th Cir. 1995) (hereinafter
"T & B I"). The case was then transferred to this Court which
granted summary judgment against T & B on counts I, III, IV, and
V. Thomas & Betts Corp. v. Panduit Corp., 935 F. Supp. 1399
(N.D.Ill. 1996). This Court subsequently granted summary judgment
against T & B with regard to count II. Thomas & Betts Corp. v.
Panduit Corp., 940 F. Supp. 1337 (N.D.Ill. 1996). On appeal, the
Seventh Circuit reversed the summary judgment on Counts I and II.
Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277 (7th Cir.
1998) (hereinafter "T & B II"). No appeal was taken regarding
Counts III through V.
Panduit then brought a motion to dismiss Count II for lack of
subject matter jurisdiction. This Court denied Panduit's motion
to dismiss. Thomas & Betts Corp. v. Panduit Corp.,
48 F. Supp.2d 1088 (N.D.Ill. 1999).
The parties are currently engaged in discovery while preparing
for trial. The issue of extraterritorial jurisdiction first arose
in the context of the scope of discovery. Subsequently, T & B
filed its motion to delay adjudication of its extraterritorial
Lanham Act claims, which is now before the Court.
T & B now moves for an order to delay adjudication of its
extraterritorial Lanham Act claims until after adjudication of
its domestic Lanham Act claims. T & B proposes to go to trial
first on Lanham Act claims arising from domestic business
conducted by Panduit. In an effort to curb expenses relating to
foreign discovery, if T & B does not prevail on its domestic
claims, it agrees to voluntarily dismiss its Lanham Act claims
arising out of foreign business conducted by Panduit. Conversely,
if T & B does prevail on its domestic claims, T & B will seek a
second trial on Lanham Act claims arising from foreign business
Therefore, the issues before the Court are 1) whether this
Court has jurisdiction to hear T & B's extraterritorial claims,
2) whether this Court has the discretion to decline to exercise
its jurisdiction over T & B's extraterritorial claims, and 3)
whether such discretion should be exercised at this time. The
Court concludes that it has jurisdiction to hear T & B's
extraterritorial claims. Furthermore, the Court has the
discretion to decline to exercise its jurisdiction over Lanham
Act claims arising from foreign business activities, however a
full consideration should await the outcome of the trial on the
domestic Lanham Act claims.
III. EXTRATERRITORIAL JURISDICTION OF THE LANHAM ACT
A. District Courts Have Extraterritorial Jurisdiction Under
the Lanham Act
1. The Lanham Act Confers Broad Extraterritorial Jurisdiction
The Lanham Act provides a civil action against "any person who
shall, without consent of the registrant, use in commerce any
reproduction, counterfeit copy, or colorable imitation of a
registered mark in connection with the sale, offering for sale,
distribution, or advertising of any goods . . . with which such
use is likely to cause confusion, or to cause mistake, or to
deceive." 15 U.S.C. § 1114(1)(a). The action is available to any
plaintiff with a registered United States trademark and may be
based, among other things, upon any "device . . . which is likely
to cause confusion, or to cause mistake, or to ...