(dissenting).
We should not let our personal opinion of, and distaste for, unfair competition lead us into two fundamental errors, which, it seems to me, the majority opinion evidences. I respectfully submit that the holding of the majority in effect gives to the Lanham Trade-Mark Act of 19461 an extraterritorial force wholly unauthorized by the statute, and this error is compounded and increased by the Court’s holding that the Courts of the United States have authority to, and indeed should, adjudicate the propriety, validity and legal effect of the administrative and judicial determination of a sister Republic so as to declare illegal and subject to injunction actions and conduct wholly within the jurisdiction and territorial confines of such Republic. Under even the broadest interpretation of the Lanham Act, supra, it evidences no attempt to prescribe a standard of fair competition for the Nations of the world. Its provisions are, and must be, applicable to territory within the reach of Congressional power. Neither do its provisions so compellingly permeate the being, or saturate the conscience, of an American resident, doing business in a foreign country, as to impose a guilty stain upon his acts there done in accordance with authority granted by such country’s laws. An American citizen doing business in Mexico does so subject to Mexican laws. I take it that if that Government should declare an entirely opposite concept of, and policy toward, unfair competition than prevails with us this would in no way enlarge the jurisdiction of American Courts to deal with Mexican affairs. However, it appears, on the contrary, that the proper administrative authority of that Republic has granted to Steele the right to use the trade*573mark “Bulova” and that the Courts of that Nation have likewise so adjudicated in litigation essentially between the parties to the present case. That which the sovereign has authorized and judicially confirmed can not, when the acts are performed wholly within the territorial limits of such sovereign, be properly declared illegal and subject to injunction by our Courts merely because the perpetrator of such acts is an American citizen and in person subject to the jurisdiction of American Courts. Consequently, when, on December 5, 1933, the Mexican Director General of Industrial Property granted to Steele the right to use the name “Bulova” in the Republic of Mexico as a tradename for watches (as found by the trial Judge upon undisputed evidence) the acts of Steele in Mexico in accordance with the grant were not illegal. Especially is this so when it appears, as it does here, that his right to the trade-mark was upheld in the Mexican Court in the proceedings in behalf of appellant seeking to set aside such registered trade-mark in which Steele was named as a party.
The principles which support the judgment of the trial Court in this case are well established. As declared by Justice Holmes for the Court in American Banana Go-, v. United Fruit Co., 213 U.S. 347, 356, 29 S.Ct. 511, 512, 53 L.Ed. 826, “the general and almost universal rule is that the character of an act as lawful or unlawful must be determined wholly by the law of the country where the act is done. Slater v. Mexican National R. R. Co., 194 U.S. 120, 126, 24 S.Ct. 581, 48 L.Ed. 900, 902. * * * For another jurisdiction, if it should happen to lay hold of the actor, to treat him according to its own notions rather than those of the place where he did the acts, not only would be unjust, but would be an interferencé with the authority of another sovereign, contrary to the comity of nations, which the other state concerned justly might resent.” Supported by the ruling in ilngenohl v. Walter E. Olsen & Co., 273 U.S. 541, 47 S.Ct. 451, 71 L.Ed. 762, that — “a trade-mark, started elsewhere, has only such validity and protection in a foreign country as the foreign law accords it,” 63 Corpus Juris, p. 321, Trade-Marks, Section 11 states: “Trade-marks are limited 'by the territorial boundaries of the sovereignty in the sense that the existence of a trade-mark dn any given jurisdiction is determined according to the law therein, without reference to any foreign rule, judicial or otherwise. Thus, a trade-mark-started elsewhere depends for its protection in a foreign jurisdiction on the law prevailing therein, and confers no rights except by consent of that law. Our courts do not decide what trade-marks exist or do not exist in foreign countries, and the decision of a court of a foreign country as to the existence or nonexistence of a trademark therein will be given full force and credit in this country; but such foreign decision will not settle who is entitled to the trade-mai'k here.”
See also Cruz v. O’Boyle, D.C., 197 F. 824; iSpann v. Compañía Mexicana Radiodifusora Fronteriza, 5 Cir., 131 F.2d 609; Harrison v. Triplex Gold Mines, 1 Cir., 33 F.2d 667. The decision in George W. Luft Co. v. Zande Cosmetic Co., 2 Cir., 142 F.2d 536, 540, expressly recognizes and applies the principle which should be applied here. The opinion by Circuit Judge Swan expressly holds that in the countries then involved where the defendants had established their right by the local law to use the tradename in dispute such use could not “constitute unfair competition” with the plaintiff, and therefore they should not be restrained from doing business there in their corporate name or from using “there the trade-mark” in question.
The trial Court properly held that since the conduct complained of substantially related solely to acts done and trade carried on under full authority of Mexican law, and were confined to and affected only that Nation’s internal commerce, it was without jurisdiction to enjoin such conduct.
. 15 U.S.C.A. § 1051 et seq.