Trademarks

McBee v. Delica Co.: A Jazz Bassist, a Japanese Label, and the Substantial-Effects Line

The First Circuit's 2005 decision built a separate, tougher test for foreign defendants — demanding a substantial effect on U.S. commerce — and refused to let a Japanese-language website carry an American trademark claim across the Pacific.

June 16, 2025
Apparel storefront window with Japanese signage in a shopping district
Delica sold 'Cecil McBee' girls' clothing across Japan; the question was whether that reached far enough to invoke U.S. law. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

McBee v. Delica Co., No. 04-2733, 417 F.3d 107 (1st Cir. Aug. 2, 2005), is the case that gave the Lanham Act’s foreign reach its most carefully reasoned modern architecture before the Supreme Court intervened in 2023. Writing for a panel of Judges Selya, Lynch, and Howard, the First Circuit held that the analysis for a foreign defendant differs from the analysis for a U.S. citizen — and that a non-citizen may be reached only on a showing that its conduct had a “substantial effect” on United States commerce. Applying that standard to a Japanese clothier’s use of an American jazz musician’s name, the court found the effect lacking and affirmed dismissal. The opinion is essential reading both for what it built and for how much of it the Supreme Court later rebuilt.

At a glance

  • Case: McBee v. Delica Co., Ltd., No. 04-2733, 417 F.3d 107 (1st Cir. 2005)
  • Court: U.S. Court of Appeals for the First Circuit
  • Decided: August 2, 2005; panel of Selya, Lynch, and Howard, JJ.
  • Holding: For a foreign defendant, extraterritorial application of the Lanham Act requires a “substantial effect” on U.S. commerce; a different, more permissive standard derived from Steele applies to U.S. citizens
  • Disposition: Dismissal affirmed — McBee failed to show a substantial effect on U.S. commerce, and his request to enjoin a foreign website was an impermissible extraterritorial application on the facts
  • Posture (note): The court treated the question as one of subject-matter jurisdiction — a framing the Supreme Court later rejected

The facts: one famous name, two continents

Cecil McBee is a renowned American jazz bassist who has recorded and performed under his own name for decades. Delica Co., Ltd., a Japanese corporation, adopted “Cecil McBee” as a brand for adolescent girls’ clothing and accessories sold throughout Japan. McBee, who had never authorized the use, sued in the District of Maine, alleging false endorsement and related Lanham Act violations and seeking, among other things, an injunction against Delica’s use of the name on its Japanese-language website.

The domestic footprint was thin. Delica’s stores and the overwhelming bulk of its sales were in Japan. Its website was written in Japanese and oriented to Japanese customers; it was technically accessible from the United States, but it did not target American consumers and, by its terms, would not ship goods to the United States. The only U.S. sales in the record were roughly $2,500 worth of goods that Delica had sold to McBee’s own investigators in Maine — sales manufactured for the litigation rather than reflecting any organic American market. On that record, the district court dismissed, and McBee appealed.

The reasoning: split the inquiry by the defendant’s citizenship

Judge Lynch’s opinion declined to treat the various circuit formulations as interchangeable. Instead, it disaggregated the Steele legacy along the most important fault line in that 1952 decision: the defendant’s nationality.

For a U.S. citizen defendant, the court reasoned, Steele itself supplies a comparatively easy path — the United States may regulate its nationals’ conduct abroad, and a lesser domestic nexus will support application of the Act. For a foreign defendant, by contrast, comity and the limits of prescriptive jurisdiction counsel a stricter gate. There, the court held, the plaintiff must show that the defendant’s conduct had a substantial effect on United States commerce — an effect “of a sufficient character and magnitude” to give the United States a legitimate interest in adjudicating the dispute. If that threshold is met, a court should then weigh whether exercising jurisdiction would create a conflict with foreign trademark law and rights, importing the comity check that Steele and Vanity Fair had emphasized.

This was a deliberate refinement of, and partial departure from, the older approaches. The court was skeptical of formulations that let mere foreseeability or trivial domestic contacts trigger the Act against foreign actors, and it expressly declined to adopt the full Vanity Fair tripartite test as a rigid rule. The substantial-effects requirement was meant to do real screening work, keeping U.S. trademark law from sweeping in conduct whose center of gravity lay abroad.

Applying the test: a website is not a U.S. market

On the merits of the jurisdictional question, McBee fell short. Delica’s sales were overwhelmingly Japanese. The de minimis U.S. sales were to McBee’s own agents and could not manufacture a substantial effect. Most consequentially, the court refused to treat the global accessibility of Delica’s Japanese-language website as a substantial effect on U.S. commerce. Accessibility is not targeting: a site directed at Japanese consumers, in Japanese, that would not sell into the United States does not, by virtue of being reachable on the open internet, project a substantial commercial effect onto American shores. To enjoin that website would be to apply the Lanham Act extraterritorially without the predicate the law requires. The court therefore affirmed dismissal, while making clear that a properly bounded domestic injunction was a different matter that the facts did not support here.

Open questions

  • Does the citizen / non-citizen split survive Abitron? McBee made nationality the hinge of the analysis. In Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023), the Supreme Court relocated the inquiry to whether the infringing “use in commerce” is domestic, regardless of who the defendant is. Whether McBee’s citizenship distinction retains any independent force is now genuinely open.
  • Jurisdiction or merits? McBee analyzed extraterritoriality as a question of subject-matter jurisdiction. The Ninth Circuit in Trader Joe’s Co. v. Hallatt (2016) and ultimately the Supreme Court in Abitron treated it as a merits question instead. That reclassification changes the burden, the timing, and the appealability of the issue.
  • How much internet contact is enough? McBee held a passive, foreign-language, non-shipping website insufficient. The harder modern cases involve sites that ship to the U.S., advertise in English, or use U.S. payment rails — where the line between accessibility and targeting is far less clear.

Implications

  • For plaintiffs suing foreign brands: Manufactured U.S. sales and the bare global reach of a website will not carry the day. A plaintiff must marshal evidence of genuine American market effects — real U.S. customers, U.S.-directed advertising, goods that actually flow into the country.
  • For foreign defendants: Keeping commerce and marketing genuinely localized — foreign language, no U.S. shipping, no U.S. targeting — has historically been a strong defense to extraterritorial application, and remains relevant evidence of where any infringing use occurs.
  • For litigators post-Abitron: McBee’s “substantial effects” vocabulary should be recast. The operative question after 2023 is the location of the infringing use, but McBee’s factual instincts — about manufactured sales, passive websites, and comity — still inform how courts evaluate that location.
  • For comity: McBee models the second-step inquiry well, reminding courts to consider conflict with foreign trademark systems before extending U.S. law, a concern that does not disappear under any framework.

Frequently asked questions

What is the “substantial effects” test from McBee? For a foreign (non-U.S.-citizen) defendant, McBee required the plaintiff to show that the defendant’s conduct had a substantial effect on U.S. commerce — an impact significant enough in character and magnitude to justify U.S. regulation — before the Lanham Act could be applied to foreign conduct, with a further comity check for conflicts with foreign law.

Why didn’t Delica’s website count? Because it was written in Japanese, aimed at Japanese consumers, and would not ship goods to the United States. The court held that mere accessibility of a foreign-language website from the U.S. is not the same as targeting U.S. commerce and does not create a substantial domestic effect.

Is McBee still controlling after Abitron? Its core framing is in tension with Abitron (2023), which made the infringing “use in commerce” location the test and treated extraterritoriality as a merits question rather than a jurisdictional one. McBee remains influential First Circuit authority and a rich source of facts and reasoning, but its citizenship-based, jurisdictional structure must now be read against the Supreme Court’s later decision.

Authorities and sources