United States Court of Appeals
Fifth Circuit
F I L E D
Revised August 15, 2003
July 29, 2003
UNITED STATES COURT OF APPEALS
FOR THE FIFTH CIRCUIT Charles R. Fulbruge III
Clerk
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No. 02-20308
No. 02-21088
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ROLEX WATCH USA, INC.,
Plaintiff-Counter Defendant-Appellee,
versus
JBJ DISTRIBUTORS, INC.,
Defendant-Counter Claimant-Appellant.
_________________________________________________________________
Appeals from the United States District Court
for the Southern District of Texas
Civil Docket #H-99-CV-1621
_________________________________________________________________
Before JONES and CLEMENT, Circuit Judges and FELDMAN, District
Judge.*
PER CURIAM:**
Appellant JBJ Distributors, Inc. raises a plethora of
issues attacking an adverse injunction and attorney fee award in
*
District Judge of the Eastern District of Louisiana, sitting
by designation.
**
Pursuant to 5TH CIR. R. 47.5, the Court has determined that
this opinion should not be published and is not precedent except
under the limited circumstances set forth in 5TH CIR. R. 47.5.4.
this trademark infringement and counterfeiting case. Having
considered the briefs, oral arguments, and pertinent portions of
the record, we find no merit in any of the issues and affirm on the
basis of the district court opinion with only a few additional
observations.
First, JBJ argues that the district court should not have
applied New York’s trademark dilution law to JBJ because there was
no jurisdictional nexus connecting JBJ to New York for the purposes
of in personam or in rem jurisdiction. JBJ is correct. Neither
Rolex nor the district court identified any jurisdictional nexus
connecting JBJ to New York; therefore, it was improper for the
district court to apply New York’s trademark dilution law to JBJ.
Rolex argues that New York and Texas law provide for the same
outcome, but the similarity of state laws on trademark dilution
does not provide the requisite jurisdictional nexus.
Nevertheless, JBJ’s appeal of the trial court’s
application of New York trademark dilution law does not undermine
the judgment, since there is ample support for the court’s
alternative liability holdings based on federal trademark
infringement and trademark counterfeiting law. See Rolex Watch
USA, Inc. v. Meece, 158 F.3d 816 (5th Cir. 1998); Elvis Presley
Enterprises, Incorporated v. Capece, 141 F.3d 188, 193 (5th Cir.
1998).
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Second, JBJ offers no support in law or logic for the
contention that its unclean hands, arising from flagrant discovery
abuse, do not bar JBJ’s laches defense because the misconduct
occurred after Rolex filed suit. Moreover, JBJ engaged in pre-suit
misconduct by its continuing sales of altered Rolex watches after
this court’s nearly indistinguishable decision in Meece.
Third, the injunction ordered by the district court is
carefully crafted and not unduly vague or overbroad. It does not
prohibit JBJ from performing authorized Rolex repair work using
genuine Rolex parts. It prohibits only those acts that would lead
to the creation of deceptively altered or counterfeit “Rolex”
watches.
Fourth, the substantially reduced attorneys’ fee award is
reasonable and justified under 15 U.S.C. § 1117(b) without resort
to a finding of “exceptional circumstances,” a finding the statute
mandates only to reduce or avert a fee award. The district court
entered abundant findings and conclusions that support this award
and insulate it from JBJ’s abuse of discretion challenge.
Finally, JBJ’s additional and subsidiary appellate points
are meritless and do not require a response by this court.
AFFIRMED.
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