462 399 FEDERAL REPORTER, 3d SERIESunclaw.com/chin/teaching/iip/empresa.pdfHIBA cigars outside of Cuba since 1982, but, because of the United States embargo against Cuban goods, imposed

462 399 FEDERAL REPORTER, 3d SERIES

EMPRESA CUBANA DEL TABACO,doing business as Cubatabaco, Plain-tiff–Counter–Defendant–Appellee–Cross–Appellant,

v.

CULBRO CORPORATION, Defendant–Counter–Claimant,

General Cigar Co., Inc. and General Ci-gar Holdings, Inc. Defendants–Counter-claimants–Appellants–Cross–Appellees.

Docket Nos. 04–2527–CV(L),04–3005–CV (XAP).

United States Court of Appeals,Second Circuit.

Argued: Aug. 24, 2004.

Decided: Feb. 24, 2005.

Background: Cuban cigar manufacturerbrought action against United States man-ufacturer, alleging, inter alia, infringementof its ‘‘COHIBA’’ trademark, trade dressinfringement, unfair competition, misap-propriation and trademark dilution. TheUnited States District Court for the South-ern District of New York, Robert W.Sweet, J., 2004 WL 602295, found infringe-ment and dismissed remaining claims.Cross-appeals were taken.

Holdings: The Court of Appeals, Straub,Circuit Judge, held that:

(1) Cuban embargo statute precludedmanufacturer’s acquisition of propertyrights in mark, and

(2) embargo statute precluded manufac-turer from obtaining cancellation ofcompetitor’s registration of mark orinjunction barring competitor from us-ing mark in United States.

Affirmed in part, reversed in part, andremanded.

1. Trade Regulation O71To overcome presumption of trade-

mark abandonment after sufficiently longperiod of non-use, party need show onlyintention to resume use within reasonablyforeseeable future.

2. Trade Regulation O724.1Trademark infringement defendant

could raise effect of Cuban embargo stat-ute on Cuban plaintiff’s claim for first timeon appeal, as it implicated issue of signifi-cant public concern and involved questionof pure law. Trading with the Enemy Act,§ 5(b), as amended, 12 U.S.C.A. § 95a.

3. Trade Regulation O61Even if entity that has not used mark

on products sold in United States can ac-quire U.S. trademark through operation offamous marks doctrine, Cuban embargobarred Cuban cigar manufacturer from us-ing doctrine to acquire property rights in‘‘COHIBA’’ mark; such acquisition wouldbe prohibited transfer of property interestwhich did not come within any applicablegeneral or special license. Trading withthe Enemy Act, § 5(b), as amended, 12U.S.C.A. § 95a; 31 C.F.R. §§ 515.201(b),515.527(a).

4. Trade Regulation O286Cuban cigar manufacturer, barred by

Cuban embargo statute from acquiringUnited States trademark rights in its oth-erwise famous ‘‘COHIBA’’ mark, could notobtain cancellation of American competi-tor’s registration of mark or injunctionbarring competitor from using mark inUnited States, as such relief would alsoentail prohibited transfer of propertyrights in mark to manufacturer. Tradingwith the Enemy Act, § 5(b), as amended,12 U.S.C.A. § 95a; 31 C.F.R. § 515.201(b).

5. Trade Regulation O870(1)Lanham Act Section 43(a) unfair com-

petition claim can not be asserted against

463EMPRESA CUBANA DEL TABACO v. CULBRO CORP.Cite as 399 F.3d 462 (2nd Cir. 2005)

defendant who has priority rights to markat issue as against plaintiff. LanhamTrade-Mark Act, § 43(a), 15 U.S.C.A.§ 1125(a).

6. Trade Regulation O331Both foreign and domestic entities can

seek relief for infringement of unregis-tered trademarks. Lanham Trade-MarkAct, § 43(a), 15 U.S.C.A. § 1125(a).

7. Treaties O11Legislative acts trump treaty-made in-

ternational law when those acts are passedsubsequent to ratification of treaty andclearly contradict treaty obligations.

8. Trade Regulation O461Trademark protection provisions of

General Inter-American Convention forTrade Mark and Commercial Protection(IAC) are not related to repression of un-fair competition, and thus not enforceableunder Lanham Act provision protectingforeign nationals against unfair competi-tion. Lanham Trade-Mark Act, § 44(h),as amended, 15 U.S.C.A. § 1126(h).

9. Trade Regulation O461 Treaties O13

Provision of General Inter-AmericanConvention for Trade Mark and Commer-cial Protection (IAC) authorizing prohibi-tion of specified acts of unfair competition‘‘unless otherwise effectively dealt with un-der domestic laws of contracting states,’’covered same range of conduct as LanhamAct’s unfair competition provision, andthus was not separately enforceable underLanham Act provision protecting foreignnationals against unfair competition. Lan-ham Trade-Mark Act, §§ 43(a), 44(h), asamended, 15 U.S.C.A. §§ 1125(a), 1126(h).

10. Treaties O8Paris Convention provision, requiring

that foreign nationals be given same trade-mark protections as signatory countries

make available to their own citizens, doesnot create substantive rights beyond thoseindependently created in Lanham Act.Lanham Trade-Mark Act, § 1 et seq., 15U.S.C.A. § 1051 et seq.; Multilateral Con-vention for Protection of Industrial Prop-erty, June 2, 1934, Art. 1 et seq., 53 Stat.1748.

11. Trade Regulation O469

Plaintiff claiming unfair competitionunder New York law must show that de-fendant acted in bad faith.

12. Trade Regulation O366

Elements of trademark dilution claimunder New York law are ownership ofdistinctive mark and likelihood of dilution.N.Y.McKinney’s General Business Law§ 360-l..

Trade Regulation O736

COHIBA.

Maureen E. Mahoney, Latham & Wat-kins LLP, Washington, DC (John J. Kirby,Jr. and Alexandra A.E. Shapiro, Latham &Watkins LLP, New York, NY, on thebrief; E. Marcellus Williamson, Latham &Watkins LLP, Washington DC, on thebrief; Harry C. Marcus and Janet Dore,Morgan & Finnegan, L.L.P., New York,NY, of counsel), for Defendants–Counter-claimants–Appellants–Cross–Appellees.

Michael Krinsky, Rabinowitz, Boudin,Standard, Krinsky & Lieberman, P.C.(David B. Goldstein, Christopher J. Klatell,and Carrie Corcoran, Boudin, Standard,Krinsky & Lieberman, P.C.; Kevin Walshand Steven J. Young, Winston & Strawn,on the brief), New York, NY, for Plaintiff–Counter–Defendant–Appellee–Cross–Ap-pellant.


Peter D. Keisler, Assistant AttorneyGeneral; Douglas N. Letter and JonathanH. Levy, Attorneys, Civil Division, U.S.Department of Justice, Washington DC;David N. Kelley, United States Attorneyfor the Southern District of New York,New York, NY; Arnold I. Havens, GeneralCounsel, U.S. Department of the Treasury,Washington, DC, for Amicus Curiae Unit-ed States of America.

Before: CABRANES, STRAUB,WESLEY, Circuit Judges.

STRAUB, Circuit Judge.

Defendants–Counterclaimants–Appel-lants–Cross–Appellees, General Cigar Co.,Inc., and General Cigar Holdings, Inc.(‘‘General Cigar’’), appeal from a judgmentand permanent injunction of the UnitedStates District Court for the Southern Dis-trict of New York (Robert W. Sweet,Judge ), entered on May 6, 2004, finding infavor of Plaintiff–Counter–Defendant–Ap-pellee–Cross–Appellant, Empresa Cubanadel Tabaco, doing business as Cubatabaco(‘‘Cubatabaco’’), on its claim of trademarkinfringement under Section 43(a) of theLanham Act, ordering cancellation of Gen-eral Cigar’s United States trademark reg-istration for COHIBA cigars, permanentlyenjoining General Cigar from further useof the COHIBA mark, and ordering Gen-eral Cigar to deliver to Cubatabaco allmerchandise, packaging and other materi-als bearing the COHIBA name, to recallfrom retail customers and distributorsproducts bearing the mark, and to informcustomers and distributors that they couldnot sell General Cigar’s COHIBA-labeledproducts in the United States. Cubataba-co has cross-appealed from the DistrictCourt’s dismissal of its treaty-based andstate law claims.

This appeal arises from a dispute be-tween Cubatabaco, a Cuban company, andGeneral Cigar, an American company, over

who has the right to use the COHIBAmark on cigars. After filing an applicationto register the COHIBA mark in Cuba in1969, Cubatabaco began selling COHIBAcigars in Cuba. Cubatabaco has sold CO-HIBA cigars outside of Cuba since 1982,but, because of the United States embargoagainst Cuban goods, imposed in 1963, Cu-batabaco has never sold COHIBA cigars inthe United States. General Cigar ob-tained a registration for the COHIBAmark in the United States in 1981 and soldCOHIBA cigars in the United States from1978 until late 1987. In 1992, GeneralCigar relaunched a COHIBA cigar in theUnited States and has sold cigars underthat mark in the United States since thattime.

Cubatabaco claims that it owns the U.S.COHIBA trademark because General Ci-gar abandoned its 1981 registration in 1987and that, by the time General Cigar re-sumed use of the mark in 1992, the CubanCOHIBA mark was sufficiently well knownin the United States that it deserved pro-tection under the so-called ‘‘famous marksdoctrine.’’ The District Court agreed andfound that, although Cubatabaco had neverused the mark in the United States andwas prohibited from doing so under theembargo, it nonetheless owned the U.S.COHIBA mark. The District Court con-cluded that by failing to use the COHIBAmark from late 1987 to 1992, General Ci-gar abandoned its 1981 registration. Itfound further that because the Cuban CO-HIBA mark was sufficiently well known inthe United States by November 1992, thedate General Cigar resumed its use of themark, Cubatabaco was entitled to priorityin asserting ownership of the mark. Afterfinding that there was a likelihood of con-fusion between the Cuban COHIBA markand the General Cigar COHIBA mark, thecourt granted judgment to Cubatabaco onits claim for trademark infringement un-


der Section 43(a) of the Lanham Act, 15U.S.C. § 1125(a), cancelled General Cigar’sregistration of the mark, and enjoinedGeneral Cigar from using the mark. Thecourt dismissed all other claims broughtby Cubatabaco, including claims under in-ternational trademark treaties and NewYork law.

We do not reach the question of whetheran entity that has not used a mark onproducts sold in the United States cannonetheless acquire a U.S. trademarkthrough operation of the famous marksdoctrine. We need not reach that questionin this case because even were we to rec-ognize and apply the famous marks doc-trine, the Cuban embargo bars Cubataba-co’s acquisition of the COHIBA mark viathe famous marks doctrine. Therefore, wereverse the District Court’s grant of judg-ment to Cubatabaco on its claim of trade-mark infringement under Section 43(a) ofthe Lanham Act. We affirm the DistrictCourt’s dismissal of all other claimsbrought by Cubatabaco.

BACKGROUND

In 1963 the United States imposed anembargo on Cuba. The Cuban Asset Con-trol Regulations (‘‘Embargo Regulations’’or ‘‘Regulations’’), 31 C.F.R. § 515.201 etseq., which were promulgated pursuant toSection 5(b) of the Trading with the Ene-my Act of 1917, ch. 106, § 5(b), 40 Stat.415 (codified as amended at 12 U.S.C.§ 95a (2000)), contain the terms of theembargo. See Havana Club Holding, S.A.v. Galleon S.A., 203 F.3d 116, 120 (2d Cir.),cert. denied, 531 U.S. 918, 121 S.Ct. 277,148 L.Ed.2d 201 (2000). In 1996 Congresscodified the Regulations in the Cuban Lib-erty and Democratic Solidarity Act of 1996(‘‘LIBERTAD Act’’), Pub.L. No. 104–114,Title I, § 102, Mar. 12, 1996, 110 Stat. 792(1996) (codified at 22 U.S.C. § 6032(h)).‘‘The Secretary of the Treasury has the

authority to administer the Cuban embar-go, which he has delegated to the Office ofForeign Assets Control (‘OFAC’).’’ Ha-vana Club, 203 F.3d at 120 (citing 31C.F.R. § 515.802). The Embargo Regula-tions prevent Cuban entities, such as Cu-batabaco, from selling cigars in the UnitedStates. Despite its inability to sell cigarshere, Cubatabaco claims that it owns theCOHIBA mark in the United States andthat General Cigar’s sale of COHIBA ci-gars in the United States unlawfully in-fringes its mark.

The District Court, after a bench trial,issued a comprehensive opinion settingforth its factual findings. See EmpresaCubana del Tabaca v. Culbro Corp., No. 97Civ. 8399, 2004 WL 602295, at *3–27(S.D.N.Y. Mar.26, 2004) (‘‘Empresa III ’’).Here we recount only those facts neces-sary to explain our holding.

In 1969 Cubatabaco filed an applicationto register the COHIBA mark in Cuba.Throughout the 1970s it sold COHIBAcigars in Cuba. By January 1978 Cubata-baco had applied to register the COHIBAmark in seventeen countries, includingmost Western European countries, but didnot apply to register the mark in the Unit-ed States. In 1982 Cubatabaco began sell-ing COHIBA cigars outside of Cuba. In1983 Cubatabaco considered registering itsCOHIBA mark in the United States butlearned that General Cigar had alreadyobtained the United States registration.On February 22, 1985, Cubatabaco filed anapplication with the United States Patentand Trademark Office (‘‘PTO’’) to registerits BEHIQUE mark in the United Stateswith the same trade dress that it used onits COHIBA cigars elsewhere. In 1987Cubatabaco considered challenging Gener-al Cigar’s 1981 COHIBA registration, butchose not to take any action.

General Cigar first learned of the name‘‘Cohiba’’ in the late 1970s after General


Cigar executives read a Forbes magazinearticle stating that Cubatabaco was plan-ning to sell its COHIBA cigars outside ofCuba. General Cigar filed an application toregister the COHIBA mark with the PTOon March 13, 1978, with a claimed first usedate of February 13, 1978. The applica-tion was unopposed, and General Cigarobtained the registration on February 17,1981. General Cigar sold COHIBA cigarsin the United States from 1978 until late1987.

In February 1992 The Wine Spectatormagazine published articles describingCOHIBA as Cuba’s ‘‘finest’’ cigar and ‘‘thehot brand.’’ In September 1992, the pre-mier issue of Cigar Aficionado magazine,which had a United States circulation of115,000 copies, featured a story about Cu-batabaco’s Cuban COHIBA cigars. Themagazine rated cigars and gave the Cuba-tabaco’s COHIBA Robusto the highestranking. Shortly thereafter, General Ci-gar decided to use COHIBA on a newpremium cigar, which it launched on No-vember 20, 1992. The District Court not-ed that General Cigar ‘‘acknowledges thatthe reintroduction was at least in part aresponse to Cigar Aficionado’s coverage ofthe Cuban COHIBA.’’ General Cigar filedfor a second COHIBA registration on De-cember 30, 1992, and the application wasgranted without opposition in 1995.

In late 1992 and early 1993 GeneralCigar considered seeking permission touse Cubatabaco’s registered trade dress.In a January 1993 memo, General Cigar’sthen in-house counsel wrote that havingpermission to use the trade dress wouldhelp General Cigar ‘‘to exploit the popular-ity, familiarity, brand recognition andoverall success of the Cuban Cohiba.’’General Cigar did not pursue further theplan to seek permission to use the tradedress.

In late January or February 1997 Gen-eral Cigar decided to launch a new cigarunder the COHIBA name. General Cigaracknowledges that the Cuban COHIBAwas well known to U.S. cigar consumersby the time General Cigar launched itsnew product in the fall of 1997. The Dis-trict Court noted that ‘‘[t]he 1997 advertis-ing for the General Cigar COHIBA at-tempted to create an association in theconsumer’s mind to Cuba and the CubanCOHIBA.’’

In January 1997 Cubatabaco commenceda proceeding in the Trademark Trial andAppeal Board to cancel General Cigar’sregistration of the COHIBA mark. OnNovember 12, 1997, Cubatabaco filed thisaction alleging thirteen claims againstGeneral Cigar. The first six claims al-leged violations of various treaty provi-sions and asserted that Cubatabaco wasentitled to relief under Sections 44(b) and44(h) of the Lanham Act, 15 U.S.C.§ 1126(b), (h). In particular, Cubatabacoclaimed that General Cigar violated: (1)the protection under Article 6bis of theParis Convention for the Protection of In-dustrial Property, Mar. 20, 1883, as re-vised at Stockholm, July 14, 1967, 21U.S.T. 1583, 828 U.N.T.S. 305 (‘‘Paris Con-vention’’), for famous marks; (2) Section10bis of the Paris Convention’s prohibitionagainst unfair competition; (3) Articles 7and 8 of the General Inter–American Con-vention for Trade Mark and CommercialProtection, Feb. 20, 1929, 46 Stat. 2907(‘‘IAC’’), by using and registering COHI-BA for cigars with knowledge of Cubata-baco’s use of the mark on cigars; (4) Arti-cles 20 and 21 of the IAC’s prohibitionagainst unfair competition; (5) Article 22of the Agreement on Trade–Related As-pects of Intellectual Property Rights(‘‘TRIPS’’) by representing its cigar as theproduct of ‘‘Cuban seed’’; and (6) Article10 of the Paris Convention by representingits cigar as the product of ‘‘Cuban seed.’’


In addition to the treaty-based claims,Cubatabaco alleged that: (7) General Ci-gar committed willful trademark and tradedress infringement in violation of Section43(a) of the Lanham Act, 15 U.S.C.§ 1125(a); (8) General Cigar engaged infalse representation of source of origin inwillful violation of Section 43(a) of the Lan-ham Act by stating that their cigars con-tained tobacco grown from Cuban seed;(9) General Cigar engaged in deceptiveadvertising in willful violation of Section43(a) of the Lanham Act by stating thattheir cigars contained Cuban seed; (10)General Cigar’s acts constituted unfaircompetition under New York law and un-der the laws of every state in which Gener-al Cigar has engaged in the misconductalleged; (11) General Cigar’s registrationshould be cancelled pursuant to 15 U.S.C.§ 1120; (12) General Cigar’s actions werelikely to dilute Cubatabaco’s COHIBAmark and constituted willful violation ofNew York General Business Law § 360l,comparable laws of other states whereGeneral Cigar engaged in the misconduct,and Section 43(c) of the Lanham Act, 15U.S.C. § 1125(c); and (13) General Cigarwillfully misappropriated Cubatabaco’strademark in violation of New York lawand the law of other states where GeneralCigar engaged in the conduct. Cubataba-co sought injunctive relief, damages, andattorneys’ fees. General Cigar counter-claimed, seeking a declaratory judgmentthat it had the right to continued use and

registration in the United States of theCOHIBA mark, as well attorneys’ fees andcosts.

On December 4, 2000, Cubatabaco stipu-lated to the dismissal with prejudice of itsFifth, Sixth, Eighth, and Ninth claims forrelief—i.e., the TRIPS claim, the claimthat General Cigar violated Article 10 ofthe Paris Convention, and claims underSection 43(a) of the Lanham Act for falserepresentation of source of origin and de-ceptive advertising.1

On November 29, 2001, General Cigarmoved for summary judgment dismissingCubatabaco’s complaint on the basis ofestoppel, acquiescence, and laches, due toCubatabaco’s alleged delay in challengingGeneral Cigar’s use of the COHIBA mark.On January 29, 2002, Cubatabaco moved todismiss General Cigar’s affirmative defens-es. Cubatabaco also moved for partialsummary judgment on its claim that Gen-eral Cigar abandoned its 1981 registration,as well as its claims that General Cigarviolated Articles 7 and 8 of the IAC, Arti-cle 6bis of the Paris Convention, New Yorkcommon law, and the Federal TrademarkDilution Act.

[1] On June 26, 2002, the DistrictCourt, resolving the motions, held that Cu-batabaco was entitled to partial summaryjudgment on its claim that General Cigarhad abandoned the COHIBA mark duringits period of non-use from 1987 to 1992.2

1. The stipulation stated that the dismissal waswith prejudice, except that dismissal would bewithout prejudice if the Supreme Court re-versed or vacated certain portions of thisCourt’s decision in Havana Club.

2. Because we reverse on other grounds, weneed not address the District Court’s findingthat General Cigar did, in fact, abandon theCOHIBA mark. However, we do note thatthe District Court cited Silverman for thepremise that ‘‘defendants must come forwardwith objective, hard evidence of actual ‘con-

crete plans to resume use’ in the ‘reasonablyforeseeable future when the conditions requir-ing suspension abate.’ ’’ Emmpresa I, 213F.Supp.2d at 268. We do not agree that Silver-man imposed such a heavy burden. Silver-man required that, to overcome a presump-tion of abandonment after a sufficiently longperiod of non-use, a defendant need showonly an intention to resume use ‘‘within thereasonably foreseeable future.’’ Silverman,870 F.2d at 46.


Emmpresa Cubana Del Tabaco v. CulbroCorp., 213 F.Supp.2d 247, 267–71(S.D.N.Y.2002) (‘‘Emmpresa I ’’). Thecourt dismissed General Cigar’s affirma-tive defenses of acquiescence, estoppel,and laches.

In addition, the court dismissed Cubata-baco’s claims under Articles 7 and 8 of theIAC, reasoning that under our decision inHavana Club, the only IAC rights thatcould be asserted under Sections 44(b) and(h) of the Lanham Act are those rightsthat are ‘‘related to the repression of un-fair competition.’’ Emmpresa I, 213F.Supp.2d at 279–80. Because Articles 7and 8 of the IAC relate to the registrationof trademarks and are not found in thechapter of the IAC labeled ‘‘Repression ofUnfair Competition,’’ the court concludedthat Article 7 and Article 8 rights couldnot be asserted under Sections 44(b) and(h) of the Lanham Act. Id. at 281–82. TheDistrict Court also dismissed Cubatabaco’sArticle 6bis Paris Convention claim, whichCubatabaco asserted under Sections 44(b)and (h) of the Lanham Act, on the groundthat Article 6bis does not concern ‘‘rightsrelated to the repression of unfair competi-tion.’’ Id. at 283–84. Finally, the courtfound that there were material issues offact regarding Cubatabaco’s New Yorkcommon law and Federal Trademark Dilu-tion Act claims and denied summary judg-ment to Cubatabaco on those claims. Id.at 284–86.

Both parties moved for reconsideration,and the District Court denied the motions.See Emmpresa Cubana del Tabaco v. Cul-bro Corp., No. 97 Civ. 8399, 2002 WL31251005 (S.D.N.Y. Oct.8, 2002) (‘‘Emmp-resa II ’’). The court held a bench trial onvarious dates between May 27, 2003, andJune 23, 2003. Empresa III, 2004 WL602295, at *1.

On March 26, 2004, the District Courtfound that Cubatabaco was entitled to pre-

vail on its claim of trademark infringementunder Section 43(a) of the Lanham Act.The court’s finding of trademark infringe-ment rested on its adoption of the famousmarks doctrine.

The court reasoned that, to prevail on itsSection 43(a) trademark infringementclaim, Cubatabaco had to establish (1) thatits mark is entitled to protection and (2)that General Cigar’s use of the mark islikely to cause consumers confusion as tothe origin or sponsorship of General Ci-gar’s goods. Empresa III, 2004 WL602295, at *29. The court recognized thatthe standard test for ownership of a markis priority of use, and that, under the‘‘territoriality principle,’’ foreign use of atrademark cannot form the basis for estab-lishing priority in the United States. Id.at *30. However, the court rejected Gen-eral Cigar’s argument that it owned theCOHIBA mark because it was the first touse it in the United States after it wasallegedly abandoned, stating that ‘‘GeneralCigar’s priority of use TTT is not the end ofthe matter.’’ Id. Rather, the court heldthat ‘‘[u]nder the common-law well-knownor famous marks doctrine, a party with awell known mark at the time another partystarts to use the mark has priority overthe party using the mark.’’ Id. (internalquotation marks omitted). The court con-cluded that if the Cuban COHIBA markwas sufficiently famous in the UnitedStates before General Cigar resumed useof the mark in November 1992, then Cuba-tabaco owned the U.S. trademark eventhough it had never used the mark in theUnited States. The court determined thatsecondary meaning was the level of recog-nition required for a mark to be protectedunder the famous marks doctrine and con-cluded that the Cuban COHIBA mark wassufficiently well known in the UnitedStates by November 1992 that Cubatabacowas entitled to priority. The court further


held that Cubatabaco had established alikelihood of confusion between the CubanCOHIBA and General Cigar’s COHIBAmark, id. at *39–49, and that Cubatabacowas therefore entitled to prevail on itsclaim of trademark infringement againstGeneral Cigar under Section 43(a) of theLanham Act. Id. at *52.3

Although finding in Cubatabaco’s favoron its claim of trademark infringement, thecourt dismissed the remainder of Cubata-baco’s claims. In particular, the court dis-missed Cubatabaco’s claim that the bandGeneral Cigar used on its cigars infringedupon Cubatabaco’s registered trade dressbecause Cubatabaco failed to show a likeli-hood of confusion between the cigar bands.Id. at *56. The court dismissed Cubataba-co’s Article 10bis Paris Convention claimand its claims under Articles 20 and 21 ofthe IAC as duplicative of Cubatabaco’srights under Section 43(a) of the LanhamAct. As to Cubatabaco’s claim under theFederal Trademark Dilution Act(‘‘FTDA’’), 15 U.S.C. § 1125(c), the courtfound that Cubatabaco’s COHIBA markhad not acquired the high level of famerequired by that statute. Id. at *53. Cu-batabaco’s claim under New York’s anti-dilution law, NY. Gen. Bus. Law § 360–l,was dismissed on similar grounds. Id. at*53–54. The court dismissed Cubatabaco’sNew York unfair competition claim be-cause it found Cubatabaco failed to showthat General Cigar acted in bad faith, id.at *55, dismissed Cubatabaco’s misappro-priation claim as duplicative of the NewYork unfair competition claim, id., and dis-missed Cubatabaco’s deceptive trade prac-tices claim brought under New York Gen-eral Business Law § 349 as not actionable,id. at 57. The court rejected Cubatabaco’srequest for cancellation of General Cigar’smark under 15 U.S.C. § 1120 because it

had already canceled the registrationbased on the Section 43(a) violation andbecause Cubatabaco failed to establish thatGeneral Cigar made statements in its reg-istration application with knowledge oftheir falsity. Id. at *55.

Finally, the court noted that the partieshad stipulated in the Joint Pretrial Orderthat ‘‘[a]ny trial on the issue of monetaryrelief claimed by Plaintiff against Defen-dants shall be bifurcated from a trial onliability.’’ Id. at *58. The court statedthat if the parties wanted to seek appellatereview of the court’s liability determina-tions, they should file a motion for certifi-cation pursuant to Federal Rule of CivilProcedure 54(b), and the trial on monetaryrelief would be held at a later date. Id.Both parties filed motions for the court toenter judgment pursuant to Rule 54(b).

On May 6, 2004, the District Court en-tered an order, judgment, and permanentinjunction, which, inter alia: (1) grantedCubatabaco judgment against General Ci-gar on its claim for infringement of Cuba-tabaco’s COHIBA mark pursuant to 15U.S.C. § 1125(a) and granted judgment toCubatabaco on its claim that prior to No-vember 1992 General Cigar had abandonedthe COHIBA mark; (2) canceled GeneralCigar’s trademark registration for the CO-HIBA mark, and permanently enjoinedGeneral Cigar from using the COHIBAmark; and (3) ordered General Cigar todeliver to Cubatabaco all goods and labelsbearing the COHIBA mark, to recall fromretail customers and distributors productsbearing the mark, and to inform customersand distributors that they could not sellGeneral Cigar’s COHIBA-labeled productsin the United States. Finally, the courtstated that all of General Cigar’s equitableand other affirmative defenses were dis-missed with prejudice, and all of Cubata-

3. The court also rejected General Cigar’sclaim that Cubatabaco had abandoned the

COHIBA mark between 1992 and 1997.Empresa III, 2004 WL 602295, at *52.


baco’s claims were dismissed with preju-dice, except for the claims on which reliefwas granted. The court found that‘‘[t]here was no reason to delay the appealof plaintiff’s claims for relief and defen-dants’ equitable and other affirmative de-fenses that have been dismissed with prej-udice,’’ and ‘‘[i]n the interest of judicialefficiency and to avoid duplicative andpiecemeal litigation about liability,’’ thecourt entered final judgment pursuant toFederal Rule of Civil Procedure 54(b) on‘‘all of the claims and defenses that havebeen dismissed to date.’’

The District Court denied General Ci-gar’s motion to stay the order pendingappeal, but entered a temporary stay toallow General Cigar to seek such a stayfrom this Court. On June 23, 2004, thisCourt granted a stay of the DistrictCourt’s order pending appeal, and granteda motion to expedite the appeal.

On appeal, General Cigar argues thatthe District Court erred in (1) grantingsummary judgment to Cubatabaco on itsclaim that General Cigar had abandonedits 1981 trademark registration, and inholding that claims of abandonment arenot subject to equitable defenses; and (2)granting judgment to Cubatabaco on itsclaim of trademark infringement based ona finding that Cubatabaco acquired rightsto the mark under the famous marks doc-trine. In addition, General Cigar assertsthat Cubatabaco lacks standing to bring aSection 43(a) trademark infringementclaim because, due to the embargo, Cuba-tabaco could not establish ‘‘commercial in-jury.’’ General Cigar also makes an argu-ment not raised below—that Cubatabaco’sacquisition of trademark rights in theUnited States through the famous marksdoctrine was a transfer of property thatwas prohibited by the Embargo Regula-tions.

In addition to defending the DistrictCourt’s finding of trademark infringementunder Section 43(a) of the Lanham Act,Cubatabaco cross-appeals arguing that:(1) Cubatabaco is entitled to protection ofits ‘‘famous’’ COHIBA mark under Article6bis of the Paris Convention, which Cuba-tabaco claims is implemented by Sections44(b) and (h) of the Lanham Act; (2) Gen-eral Cigar’s registration for the U.S. CO-HIBA mark should be cancelled underArticles 7 and 8 of the IAC, which Cuba-tabaco claims are implemented throughSections 44(b) and (h) of the Lanham Act;(3) Cubatabaco is entitled to relief on itsNew York common law and its treaty-based unfair competition claims broughtunder Sections 44(b) and (h) of the Lan-ham Act; and (4) Cubatabaco is entitledto relief on its New York law dilutionclaim.

After oral argument in this Court weinvited the United States Departments ofJustice and Treasury (‘‘government’’) tosubmit a brief as amicus curiae address-ing the question of whether the EmbargoRegulations barred Cubatabaco’s acquisi-tion of the COHIBA mark in the UnitedStates via the famous marks doctrine. OnNovember 12, 2004, the government filedits letter brief. There, the governmentasserts that the Regulations bar Cubataba-co’s acquisition of the mark via the famousmarks doctrine and that the DistrictCourt’s finding of trademark infringementunder Section 43(a) must therefore be re-versed. In addition, the government rea-sons that the portion of the DistrictCourt’s order requiring General Cigar todeliver merchandise and other materialsbearing the COHIBA mark to Cubatabacois barred by the Regulations. Accordingto the government, however, the Regula-tions do not bar the portion of the DistrictCourt’s order that cancels General Cigar’sregistration and enjoins its use of the CO-HIBA mark. The government notes that


Cubatabaco’s ownership of the U.S. COHI-BA mark is not required for a Section43(a) claim, and expresses the view that,given the District Court’s factual findings,the cancellation of General Cigar’s markand the injunction against General Cigar’suse of the mark is appropriate relief. OnDecember 3, 2004, the parties filed letterbriefs responding to the amicus curiaeletter brief filed by the government. Cu-batabaco asserts that the government cor-rectly concluded that it was entitled to therelief ordered by the District Court underSection 43(a) of the Lanham Act. GeneralCigar agrees with the government’s con-clusion that the Embargo Regulationsbarred Cubatabaco’s acquisition of themark through the famous marks doctrine,but asserts that the government is incor-rect in its claim that Cubatabaco is none-theless entitled to relief under Section43(a).

DISCUSSION

[2] General Cigar argues that the Em-bargo Regulations bar Cubatabaco fromacquiring rights in the COHIBA mark inthe United States through the famousmarks doctrine and that the DistrictCourt’s finding of trademark infringementmust therefore be reversed. AlthoughGeneral Cigar did not raise this argumentbelow, we consider it on appeal because itimplicates an issue of significant publicconcern—the United States’ national poli-cy towards Cuba as established by thePresident and the Congress—and it in-volves a question of pure law. See DeanWitter Reynolds, Inc. v. Fernandez, 741F.2d 355, 360–61 (11th Cir.1984) (reachingissue regarding the Cuban embargo eventhough not raised below because ‘‘a princi-pal purpose of the Cuban Assets ControlRegulations was to deny Cuba access toAmerican dollars which could finance actsof aggression or subversion,’’ and there-fore was an issue ‘‘of great public con-

cern’’); see also Singleton v. Wulff, 428U.S. 106, 121, 96 S.Ct. 2868, 49 L.Ed.2d826 (1976) (‘‘The matter of what questionsmay be taken up and resolved for the firsttime on appeal is one left primarily to thediscretion of the courts of appeals, to beexercised on the facts of individualcases.’’); Krumme v. WestPoint StevensInc., 238 F.3d 133, 142 (2d Cir.2000)(‘‘[W]here an allegedly forfeited claim rais-es a pure question of law, we may chooseto reach the merits.’’ (internal quotationmarks omitted)); Sheffield CommercialCorp. v. Clemente, 792 F.2d 282, 286 (2dCir.1986) (considering issue not raised be-low regarding New York’s Motor VehicleRetail Installment Sales Act ‘‘because ofthe strong public interest in enforcementof the Act’’).

For the reasons explained below, wehold that the Embargo Regulations barCubatabaco’s acquisition of property rightsin the U.S. COHIBA trademark throughthe famous marks doctrine. Cubatabacoclaims no other basis for owning the mark,and, therefore, the District Court’s findingof trademark infringement under Section43(a) of the Lanham Act must be reversed.We do not reach the question of whetherto recognize the famous marks doctrinebecause even if a foreign entity can, as ageneral matter, acquire trademark rightsin the United States through the famousmarks doctrine, Cubatabaco’s acquisitionrights in the COHIBA mark in this man-ner is barred by the embargo. We alsoreject Cubatabaco’s argument that, even ifthe embargo bars its acquisition of themark, it nonetheless is entitled, based onthe ‘‘fame’’ of its mark, to obtain cancella-tion of General Cigar’s mark and an in-junction barring General Cigar from usingthe mark in the United States because togrant this relief would entail a transfer ofproperty rights in the COHIBA mark toCubatabaco in violation of the embargo.


We also do not decide whether the Dis-trict Court properly found that GeneralCigar had abandoned its mark between1987 and 1992. We have no need to decidethat issue because even if General Cigardid abandon its mark, it owns the marknow because it resumed use of the mark inNovember 1992 and Cubatabaco is unable,in light of the embargo, to establish that itacquired rights to the mark in the interval.Finally, we affirm the District Court’s dis-missal of Cubatabaco’s remaining treatyclaims and its claims under New York law.

I. CLAIMS UNDER SECTIONS 43(A), 44(B),AND 44(H) OF THE LANHAM ACT BASED

ON ‘‘FAME’’ OF THE CUBAN COHIBA

MARK.

A. The Trademark Infringement ClaimFails Because Acquisition of theMark Via the Famous Marks Doc-trine Is Prohibited By the EmbargoRegulations

[3] Cubatabaco argues that the Dis-trict Court properly entered judgment inits favor on its claim of trademark in-fringement under Section 43(a) of the Lan-ham Act. To prove trademark infringe-ment, Cubatabaco must establish that itowns the COHIBA mark in the UnitedStates. According to Cubatabaco, it ownsthe mark because General Cigar aban-doned its 1981 COHIBA registration in1987 and, by the time General Cigar re-sumed use of the mark in 1992, the CubanCOHIBA mark was sufficiently well knownin the United States that it deserved pro-tection under the famous marks doctrine.For the reasons explained below, we holdthat the Embargo Regulations bar Cubata-

baco’s acquisition of the U.S. COHIBAmark through the famous marks doctrine,and thus the District Court’s finding oftrademark infringement is reversed.

1. The Embargo Regulations

Unless otherwise authorized, the Em-bargo Regulations prohibit a broad rangeof transactions involving property in whicha Cuban entity has an interest. In partic-ular, 31 C.F.R. § 515.201(b) provides inpertinent part that:

(b) All of the following transactions areprohibited, except as specifically author-ized by the Secretary of the Treasury(or any person, agency, or instrumentali-ty designated by him) by means of regu-lations, rulings, instructions, licenses, orotherwise, if such transactions involveproperty in which any foreign countrydesignated under this part, or any na-tional thereof, has at any time on orsince the effective date of this sectionhad any interest of any nature whatsoev-er, direct or indirect:

(1) All dealings in, including, withoutlimitation, transfers, withdrawals, orexportations of, any property or evi-dences of indebtedness or evidences ofownership of property by any personsubject to the jurisdiction of the Unit-ed States; and

(2) All transfers outside the UnitedStates with regard to any property orproperty interest subject to the juris-diction of the United States.

31 C.F.R. § 515.201(b) (2005).4 Section515.201(c) provides that ‘‘[a]ny transactionfor the purpose or which has the effect of

4. We need not decide whether the currentversion of the Regulations or the 1992 ver-sion—the version in effect at the time Cubata-baco alleges it acquired rights to the U.S.COHIBA mark—applies. Except with respectto 31 C.F.R. § 515.527, all the provisions thatwe consider have either remained unchanged

since 1992 or have changed in a mannerimmaterial to the issues raised here. As wediscuss infra at page 476, although § 515.527has been amended since 1992, neither thecurrent version nor the 1992 version author-izes Cubatabaco’s acquisition of the mark viathe famous marks doctrine.


evading or avoiding any of the prohibitionsset forth in paragraphs (a) or (b) of thissection is hereby prohibited.’’ Id.§ 515.201(c); see also Havana Club Hold-ing, S.A. v. Galleon S.A., 203 F.3d 116, 122n. 3 (2d Cir.), cert. denied, 531 U.S. 918,121 S.Ct. 277, 148 L.Ed.2d 201 (2000).

The Regulations provide several rele-vant definitions. The ‘‘foreign countrydesignated under this part’’ is Cuba, 31C.F.R. § 515.201(d), and ‘‘property’’ or‘‘property interest’’ includes trademarks,id. § 515.311. ‘‘Transfer’’ is defined broad-ly to include ‘‘any actual or purported actor transaction TTT the purpose, intent, oreffect of which is to create, surrender,release, transfer, or alter, directly or indi-rectly, any right, remedy, power, privilege,or interest with respect to any property.’’Id. § 515.310. Section 515.309 providesthat the phrase ‘‘transactions which involveproperty in which a designated foreigncountry, or any national thereof, has anyinterest of any nature whatsoever, director indirect includes TTT [a]ny TTT transferto such designated foreign country or na-tional thereof.’’ Id. § 515.309(a). In otherwords, a transaction involving property inwhich a Cuban national has an interestincludes a transfer of property to a Cubannational.

Therefore, absent a general or specificlicense, § 515.201(b)(1) of the Regulationsprohibits a transfer of property rights, in-cluding trademark rights, to a Cuban enti-ty by a person subject to the jurisdiction ofthe United States. Section 515.201(b)(2)prohibits a transfer outside of the UnitedStates of property subject to the jurisdic-tion of the United States—if the transferis to a Cuban entity.

General licenses and specific licensesprovide exceptions to the prohibition of§ 515.201(b). General licenses are con-tained within the Regulations whereas spe-cific licenses are granted by the OFAC in

response to requests. See id.§§ 515.201(b), 515.317, 515.318.

A general license authorizing certain ac-tions with respect to trademarks is provid-ed at 31 C.F.R. § 515.527. The currentversion of the Regulations explicitly au-thorizes ‘‘[t]ransactions related to the reg-istration and renewal in the United StatesPatent and Trademark Office or the Unit-ed States Copyright Office of patents,trademarks, and copyrights in which theGovernment of Cuba or a Cuban nationalhas an interest.’’ Id. § 515.527(a)(1). Thegovernment asserts that the applicableversion of the Regulations is the version ineffect in 1992, when the allegedly prohibit-ed transfer of trademark rights to Cubata-baco occurred. See Amicus Curiae Br. at8. In 1992, § 515.527 provided that:

(1) The filing in the United States Pat-ent Office of applications for letters pat-ent and for trademarks registration;

(2) The making and filing in the UnitedStates Copyright Office of applicationsfor registration or renewal of copy-rights;

(3) The prosecution in the United StatesPatent Office of applications for letterspatent and for trademarks registration;

(4) The receipt of letters patent ortrademark registration certificates orcopyright registration or renewal certifi-cates granted pursuant to any such ap-plications in which any designated na-tional has at any time on or since the‘‘effective date’’ had any interest.

31 C.F.R. § 515.527(a) (1992). Therefore,the 1992 Regulations did not include anauthorization for ‘‘[t]ransactions related tothe registration and renewal in the UnitedStates Patent and Trademark Office TTT ofTTT trademarks.’’ 31 C.F.R.§ 515.527(a)(1).

Also relevant to our inquiry is the spe-cific license that OFAC granted Cubataba-


co in October 1997 before Cubatabaco initi-ated this action. This license, number C–18942, authorizes Cubatabaco to

initiate legal proceedings in the U.S.courts and to otherwise pursue theirjudicial remedies with respect to claimsto the COHIBA trademark (the ‘‘Trade-mark’’) and against those persons thatare alleged to be infringing upon theTrademark (collectively, the ‘‘Actions’’);and Rabinowitz, Boudin, Standard, Krin-sky & Lieberman, P.C. (the ‘‘Firm’’),and persons employed by, under thecontrol of, or cooperating with the Firm,are hereby authorized to provide legalservices to Cubatabaco and Habanos,S.A. in connection with the Actions, andto receive payment of professional feesand reimbursement for expenses in-curred therefor from or on behalf of theCubatabaco and/or Habanos, S.A., pro-vided that payments of fees, retainers,and other payments originate from asource not currently within the UnitedStates, or within the possession or con-trol of a person subject to U.S. jurisdic-tion, and such payment is not made froma blocked account or blocked funds.

Accordingly, we must determine wheth-er Cubatabaco’s acquisition of the U.S.COHIBA mark is a transfer that is prohib-ited by § 515.201(b), and if so, whether itis nonetheless authorized either by§ 515.527, or by the specific license grant-ed to Cubatabaco by the OFAC.

2. Prohibited Transfers

We hold that Cubatabaco’s acquisition ofthe U.S. COHIBA mark through the fa-mous marks doctrine would constitute atransfer that is prohibited by § 515.201(b),and such transfers are not authorized by ageneral or specific license.

a. General Prohibition: 515.201(b)

Cubatabaco’s acquisition of the U.S. CO-HIBA mark through the famous marks

doctrine is barred by 31 C.F.R.§ 515.201(b)(2), which prohibits ‘‘transfersoutside the United States with regard toany property or property interest subjectto the jurisdiction of the United States’’ ifthe transfer involves property in which aCuban entity has an interest. 31 C.F.R.§ 515.201(b)(2).

A transaction involving property inwhich a Cuban entity has an interest in-cludes a transfer of property to a Cubanentity. ‘‘Property’’ includes trademarks,id. § 515.311, and ‘‘transfers outside theUnited States’’ of United States trademarkrights to Cuban entities are prohibited by§ 515.201(b)(2). ‘‘Transfer’’ is broadly de-fined to include ‘‘any TTT act TTT the TTT

effect of which is to create TTT any right,remedy, power, privilege, or interest withrespect to property.’’ Id. § 515.310. Cuba-tabaco’s acquisition of the mark is a‘‘transfer[ ] outside the United States withregard to any property or property inter-est subject to the jurisdiction of the UnitedStates,’’ id. § 515.201(b)(2), because Cuba-tabaco’s acquisition of the mark is a trans-fer of U.S. property rights from inside theUnited States to Cuba—a location ‘‘outsideof the United States.’’ Therefore, Cubata-baco’s acquisition of the U.S. COHIBAmark through the famous marks doctrineis barred by § 515.201(b)(2).

Cubatabaco argues that the EmbargoRegulations ‘‘regulate[ ] transactions in-volving property in which a Cuban nationalhas, or had, an interest, not their legaleffect.’’ Appellee Br. at 58. In otherwords, Cubatabaco claims that if the actsthat made the Cuban COHIBA famouswere permitted under the Regulations, Cu-batabaco’s acquisition of the mark throughoperation of the famous marks doctrine ispermitted. We reject this argument be-cause there is no doubt that acquisition ofproperty through operation of law is cov-ered by § 515.201(b). As the government


asserts, ‘‘[r]egardless of whether the acqui-sition of the COHIBA mark through thefamous marks doctrine is characterized asan ‘effect’ of other actions or not, it never-theless falls within the Regulations’ defini-tion of a ‘transaction’ involving property inwhich a Cuban national has an interest.’’Amicus Curiae Br. at 7. The Regulationsexplicitly permit specific ‘‘transfers by op-eration of law,’’ including ‘‘[a]ny transfer toany person by intestate succession,’’ 31C.F.R. § 515.525(a)(2), and transfers aris-ing ‘‘solely as a consequence of the exis-tence or change of marital status,’’ id.§ 515.525(a)(1). These provisions would notbe necessary if § 515.201’s prohibitions didnot cover transfers by operation of law.

Our conclusion is consistent with theviews expressed by the United States in itsamicus curiae brief. The United Statesconcludes that ‘‘[u]nder the plain languageof these regulations, the acquisition of thetrademark by Cubatabaco in 1992 throughthe famous marks doctrine, as found bythe district court, created or vested aproperty right in Cubatabaco, and wastherefore prohibited absent a general orspecific license.’’ Amicus Curiae Br. at 7.Because we conclude that § 515.201(b)(2)clearly bars Cubatabaco’s acquisition ofthe COHIBA mark through the famousmarks doctrine, we need not determinewhat level of deference is owed to the U.S.Department of Treasury’s interpretation ofthe Embargo Regulations. Cf. HavanaClub, 203 F.3d at 125 (noting that theinterpretation of a provision of the Embar-

go Regulations ‘‘given by the agencycharged with enforcing the embargo isnormally controlling’’).5

b. General and Specific Licenses

Because the acquisition of the U.S. CO-HIBA mark by Cubatabaco through thefamous marks doctrine is a prohibitedtransfer under § 515.201, it is barred un-less authorized by a general or specificlicense.

The general license contained in the1992 version of § 515.527 does not author-ize Cubatabaco’s acquisition of the COHI-BA mark through the famous marks doc-trine. With respect to trademarks, thatversion of § 515.527 permitted only thefiling of applications for trademark regis-trations, id. § 515.527(a)(1), and ‘‘[t]he re-ceipt of TTT trademark registration certifi-cates TTT or renewal certificates grantedpursuant to any such applications,’’ id.§ 515.527(a)(4). Clearly, neither of theseprovisions authorized Cubatabaco’s acqui-sition of the mark through the famousmarks doctrine. In addition, even if weapplied the current version of § 515.527,which authorizes transactions ‘‘related tothe registration and renewal’’ of trade-marks in the United States Patent andTrademark Office, we would not read theprovision to authorize acquisition of themark through the famous marks doctrine,as acquisition of a mark through the fa-mous marks doctrine is wholly outside theprocess of registering the mark with thePTO. See Havana Club, 203 F.3d at 123–

5. The amicus curiae brief cites§ 515.201(b)(1) and does not specifically ad-dress § 515.201(b)(2). Section 515.201(b)(1)prohibits ‘‘transactions,’’ including ‘‘trans-fers,’’ involving property in which a Cubanentity has an interest by any person subject tothe jurisdiction of the United States. 31C.F.R. § 515.201(b)(1). Therefore,§ 515.201(b)(1) prohibits transfers of trade-marks to Cuban entities by persons subject tothe jurisdiction of the United States. The

District Court’s holding that Cubatabaco’smark was sufficiently famous in 1992 forproperty rights to attach could be viewed as atransfer of property rights to Cubatabaco by a‘‘person subject to the jurisdiction of the Unit-ed States.’’ The United States does not ad-dress that particular point, and we need notresolve it because Cubatabaco’s acquisition ofthe mark through the famous marks doctrineis plainly barred by § 515.201(b)(2).


24 (holding that the ‘‘related to’’ languageof § 515.527(a)(1) should be interpretednarrowly as it creates an exception to thebroad prohibitions of the embargo).6

Finally, the special license issued byOFAC to Cubatabaco, which allows Cuba-tabaco to ‘‘pursue TTT judicial remedieswith respect to claims to the COHIBAtrademark,’’ does not permit acquisition ofthe mark via the famous marks doctrine.This license allows Cubatabaco to seekrelief in U.S. courts, but does not authorizetransfers of property barred by the Regu-lations. This is also the view of the gov-ernment. See Amicus Curiae Br. at 10(‘‘[The OFAC license] does not retroactive-ly authorize the acquisition found by thedistrict court. The most obvious readingof this license is that it allows Cubatabacoto seek remedies but does not alter thesubstantive law for a court to apply indetermining what, if any, remedies areappropriate.’’)

Accordingly, Cubatabaco’s acquisition ofthe U.S. COHIBA mark through the fa-mous marks doctrine is barred by the Reg-ulations. We reverse the District Court’sfinding of trademark infringement underSection 43(a) of the Lanham Act, as thatfinding was based on the District Court’sconclusion that Cubatabaco acquired theCOHIBA mark through the famous marksdoctrine.

B. Cubatabaco’s Claims for InjunctiveRelief Based on Section 43(a) andthe Paris Convention Fail BecauseThey Entail a Transfer of PropertyRights to Cubatabaco in Violation ofthe Embargo

[4] Cubatabaco argues that even if theRegulations bar its acquisition of the U.S.

COHIBA mark, it is entitled to obtaincancellation of General Cigar’s registrationof the COHIBA mark and an injunctionpreventing General Cigar from using themark in the United States because itsmark was famous in the United Statesbefore General Cigar recommenced its usein November 1992. Cubatabaco maintainsthat this relief is warranted under Section43(a) of the Lanham Act, as well as underArticle 6bis of the Paris Convention, whichit claims is implemented by Sections 44(b)and (h) of the Lanham Act even if fulltransfer of the COHIBA mark to Cubata-baco is prohibited.

As an initial matter, we find that grant-ing Cubatabaco the injunctive relief soughtwould effect a transfer of property rightsto a Cuban entity in violation of the em-bargo. There is no contest that, as mat-ters stand, General Cigar has the full pan-el of property rights in the COHIBAmark, including the right to exclude orlimit others seeking to use the mark in theUnited States. Invoking Sections 43(a),44(b), and 44(h) of the Lanham Act andtreaty duties owed by a state party to theParis Convention, Cubatabaco seeks to ex-clude General Cigar from commercial useof the COHIBA mark in the United States.There is no doubt that granting this reliefto Cubatabaco would entail a transfer fromGeneral Cigar to Cubatabaco of a ‘‘right,remedy, power, privilege, or interest withrespect to [the COHIBA mark].’’ 31C.F.R. § 515.310. As it is exactly thisbrand of property right transfer that theembargo prohibits, we cannot sanction agrant of injunctive remedy to Cubatabacoin the form of the right, privilege, and

6. Indeed, Cubatabaco does not appear to bearguing that § 515.527(a)(1) permits acquisi-tion through the famous marks doctrine. In-stead, Cubatabaco argues that (1) its acquisi-tion of the mark is not prohibited by

§ 515.201(b) because that section does notcover transfers by operation of law and (2) itsacquisition of the mark is in any event permit-ted by the special license granted to it by theOFAC.


power to exclude General Cigar from usingits duly registered mark. As describedbelow, this limitation on judicial authorityapplies equally to Cubatabaco’s LanhamAct and Paris Convention claims.

1. Section 43(a) Claim for Unfair Com-petition

In response to the amicus curiae briefsubmitted by the United States, Cubataba-co argues that even if acquisition of theU.S. COHIBA mark is barred by the Em-bargo Regulations and Cubatabaco cannotbring a trademark infringement claim un-der Section 43(a) of the Lanham Act, itnonetheless should obtain, under Section43(a), cancellation of General Cigar’s markand an injunction against General Cigar’suse of the mark.7 Cubatabaco asserts thatthe government correctly concludes thatownership of a mark is not required for aSection 43(a) claim of unfair competition,and that the District Court’s factual find-ings support the conclusion that GeneralCigar violated Section 43(a).8

Cubatabaco did not litigate this Section43(a) claim in the District Court. The onlySection 43(a) claim that Cubatabacobrought was a claim for trademark in-fringement. Cubatabaco did initially as-sert in its complaint several non-trade-

mark infringement claims under Section43(a), but it stipulated to dismissal of thoseclaims with prejudice after our decision inHavana Club. Cubatabaco argues, howev-er, that ‘‘the United States’ construction ofthe Lanham Act is properly before thisCourt’’ and ‘‘[a]ny supposed delay in ad-vancing legal theories supporting affir-mance is solely attributable to [GeneralCigar’s] own failure to raise its [EmbargoRegulations] arguments until appeal.’’Appellee Letter Br. at 14. Because Cuba-tabaco might have litigated in the DistrictCourt a claim of the type imagined by theUnited States had General Cigar arguedbelow that the Regulations barred Cubata-baco’s acquisition of the U.S. COHIBAmark through the famous marks doctrine,we address Cubatabaco’s argument thatthe relief ordered by the District Courtwas appropriate even if the embargo pre-vents Cubatabaco from owning the U.S.COHIBA mark.

Adopting the views set forth in the ami-cus curiae brief filed by the United States,Cubatabaco argues that even if GeneralCigar owns the COHIBA mark in theUnited States, Cubatabaco can prevail in aSection 43(a) claim against General Cigaron the theory that General Cigar’s use ofthe COHIBA mark in the United Statescauses consumer confusion. In support of

7. Section 43(a)(1) of the Lanham Act pro-vides:

(1) Any person who, on or in connectionwith any goods or services, or any contain-er for goods, uses in commerce any word,term, name, symbol, or device, or any com-bination thereof, or any false designation oforigin, false or misleading description offact, or false or misleading representationof fact, which -

(A) is likely to cause confusion, or tocause mistake, or to deceive as to theaffiliation, connection, or association ofsuch person with another person, or as tothe origin, sponsorship, or approval of hisor her goods, services, or commercial ac-tivities by another person, or

(B) in commercial advertising or pro-motion, misrepresents the nature, charac-teristics, qualities, or geographic origin ofhis or her or another person’s goods,services, or commercial activities,

shall be liable in a civil action by any per-son who believes that he or she is or islikely to be damaged by such act.

15 U.S.C. § 1125(a)(1).

8. The government argues that canceling Gen-eral Cigar’s mark, enjoining General Cigar’suse of the mark, and requiring General Cigarto recall goods and labels bearing the mark,based on a finding of unfair competition un-der Section 43(a), is not barred by the Embar-go Regulations.


this argument, Cubatabaco argues thatSection 43(a) ‘‘goes beyond trademark pro-tection.’’ Appellee Letter Br. at 8.

While it is true that Section 43(a) ‘‘goesbeyond trademark protection,’’ DastarCorp. v. Twentieth Century Fox FilmCorp., 539 U.S. 23, 28, 123 S.Ct. 2041, 156L.Ed.2d 18 (2003), to prohibit market be-havior that may ‘‘deceive consumers andimpair a producer’s goodwill,’’ id. at 32,123 S.Ct. 2041, through ‘‘the deceptive andmisleading use of marks TTT ‘ § 43(a) cannever be a federal codification of the over-all law of unfair competition,’ but can applyonly to certain unfair trade practices pro-hibited by its text,’’ id. at 28–29, 123 S.Ct.2041 (quoting 4 J. McCarthy Trademarksand Unfair Competition § 27:7, p 27–14(4th ed.2002) (internal quotation marksomitted)). Specifically, Section 43(a) in-cludes causes of action grounded in allega-tions of ‘‘false or misleading description offact,’’ ‘‘false or misleading representationof fact,’’ or false designation of geographicorigin.

None of these theories need detain ushere, however, because the case before usturns on the right to use the COHIBAmark, putting it well within the category ofSection 43(a) cases that involve claims ‘‘forinfringement of rights in a mark acquiredby use.’’ Virgin Enterps., Ltd. v. Nawab,335 F.3d 141, 146 (2d Cir.2003); see also 4McCarthy, supra, § 27:9 (‘‘[Section] 43(a)gradually developed through judicial con-struction into the foremost federal vehiclefor the assertion of two major and distincttypes of ‘unfair competition’: (1) infringe-ment of even unregistered marks, names

and trade dress, and (2) ‘false advertising.’TTTT [I]n 1989, Congress codified the two-prongs TTTT’’). Cubatabaco stipulated tothe dismissal of its false advertising claimand is not attempting to argue that Gener-al Cigar is engaging in any form of falseadvertising.9

[5] Therefore, the cases that providethe closest analogues to the case at bar arethose like Genesee Brewing Co., Inc. v.Stroh Brewing Co., 124 F.3d 137 (2d Cir.1997), where we held that although Gene-see could not prevail in a claim for trade-mark infringement under Section 43(a)against Stroh because the phrase ‘‘HoneyBrown,’’ which it was seeking to protect,was generic as applied to Stroh’s ale beer,‘‘[t]he fact that Genesee’s mark is genericas applied to Stroh’s product TTT does notpreclude a finding that Stroh has violatedthe Lanham Act by engaging in unfaircompetition.’’ Id. at 149. In Genesee, theplaintiff’s ability to bring a claim for confu-sion against a defendant using a particulartrademark in commerce depended on theplaintiff showing that it was the first to usethe mark in commerce. The plaintiff inGenesee was not attempting to assert aSection 43(a) unfair competition claimagainst a defendant who owned the markat issue—rather, the claim was against adefendant who was using a generic marksubsequent to the plaintiff’s use of themark.

Cubatabaco’s theory is that General Ci-gar’s sale of COHIBA cigars in the UnitedStates violates Section 43(a) because it islikely to cause consumer confusion as to

9. Section 43(a) also ‘‘goes beyond trademarkprotection’’ in the sense that the provisioncan be used to protect trade dress or to pro-tect against other forms of product infringe-ment. But this is not a case about tradedress—Cubatabaco originally brought a tradedress infringement claim but has not appeal-ed the District Court’s dismissal of the claim.

This is, rather, a case about which entityowns the COHIBA trademark in the UnitedStates, and—principally because we hold thatthe Regulations prohibit transfer of any prop-erty right in the COHIBA mark to Cubataba-co—we hold today that General Cigar, andnot Cubatabaco, owns the COHIBA trade-mark in the United States.


the source or attribution of those cigars.The confusion alleged by Cubatabaco insupport of its Section 43(a) claim is derivedsolely from General Cigar’s use of theCOHIBA mark. Cubatabaco cannot ob-tain relief on a theory that General Cigar’suse of the mark causes confusion, because,pursuant to our holding today, GeneralCigar’s legal right to the COHIBA markhas been established as against Cubataba-co. General Cigar has a right to use themark in the United States because it ownsthe mark in the United States.

In Part IA of this opinion we held thatGeneral Cigar has priority rights to theCOHIBA mark in the United States asagainst Cubatabaco. See supra at page472–76. To allow Cubatabaco to prevail ona claim of unfair competition against Gen-eral Cigar and to obtain an injunction pro-hibiting General Cigar from using themark would turn the law of trademark onits head. None of United States law, thefacts in this case, or international treatieswarrants such acrobatics in this case. Wetherefore find that, on the facts of thiscase, Cubatabaco’s Section 43(a) claimseeking an injunction against General Ci-gar’s use of its duly registered COHIBAmark cannot succeed as a matter of law.

We do not find the analysis offered bythe government and by Cubatabaco in de-fense of the recast Section 43(a) claimpersuasive. It may be true that, as thegovernment argues, ‘‘Cubatabaco’s foreignregistrations give it the right to registerits COHIBA mark [in the United States],absent General Cigar’s registration.’’Amicus Curiae Br. at 12. That is, howev-er, a hypothetical circumstance upon whichwe need not speculate. As we hold today,General Cigar does have a valid registra-tion on the COHIBA mark in the UnitedStates. Further, while it may be true, asthe government points out, that Cubataba-

co’s COHIBA mark ‘‘was ‘famous’ and hadsecondary meaning in the United Statesbefore General Cigar’s first use [of itsCOHIBA mark],’’ id., we have already heldthat this fact cannot justify a transfer ofproperty rights in the COHIBA mark toCubatabaco via the ‘‘famous marks doc-trine.’’ We see no reason to alter thatholding to allow Cubatabaco to achieve thesame transfer via a route that is one stepmore circuitous than the path rejectedabove.

2. Article 6bis Paris Convention

Cubatabaco maintains that even if theRegulations bar its acquisition of themark, and even if it cannot obtain relief foran unfair competition claim under Section43(a), it has a right under Article 6bis ofthe Paris Convention, in conjunction withSections 44(b) and (h) of the Lanham Act,to obtain cancellation of General Cigar’smark and an injunction against its use.

Article 6bis of the Paris Convention pro-vides that:

(1) The countries of the Union under-take, ex officio if their legislation sopermits, or at the request of an interest-ed party, to refuse or to cancel theregistration, and to prohibit the use, of atrademark which constitutes a reproduc-tion, an imitation, or a translation, liableto create confusion, of a mark consid-ered by the competent authority of thecountry of registration or use to be wellknown in that country as being alreadythe mark of a person entitled to thebenefits of this Convention and used foridentical or similar goods. These provi-sions shall also apply when the essentialpart of the mark constitutes a reproduc-tion of any such well-known mark or animitation liable to create confusiontherewith.(2) A period of at least five years fromthe date of registration shall be allowed


for requesting the cancellation of such amark. The countries of the Union mayprovide for a period within which theprohibition of use must be requested.(3) No time limit shall be fixed for re-questing the cancellation or the prohibi-tion of the use of marks registered orused in bad faith.

Paris Convention, Art. 6bis, 21 U.S.T. at1640.

Both the United States and Cuba areparties to the Paris Convention. Id. at1669, 1676.

According to Cubatabaco, Sections 44(b)and (h) incorporate treaty provisions relat-ing to the ‘‘repression of unfair competi-tion,’’ and rights under Article 6bis fallinto that category. Section 44(b) providesthat:

Any person whose country of origin is aparty to any convention or treaty relat-ing to trademarks, trade or commercialnames, or the repression of unfair com-petition, to which the United States isalso a party, or extends reciprocal rightsto nationals of the United States by law,shall be entitled to the benefits of thissection under the conditions expressedherein to the extent necessary to giveeffect to any provision of such conven-tion, treaty or reciprocal law, in additionto the rights to which any owner of amark is otherwise entitled by this chap-ter.

15 U.S.C. § 1126(b). Therefore, Cubata-baco is entitled to the benefits of Section44, ‘‘under the conditions expressed here-in,’’ but only to the extent necessary togive effect to any provision of a treaty.Section 44(h) provides:

Any person designated in subsection (b)of this section as entitled to the benefits

and subject to the provisions of thischapter shall be entitled to effective pro-tection against unfair competition, andthe remedies provided in this chapterfor infringement of marks shall be avail-able so far as they may be appropriatein repressing acts of unfair competition.

Id. § 1126(h). ‘‘Rights under Section 44(h)are co-extensive with treaty rights undersection 44(b), including treaty rights ‘relat-ing to TTT the repression of unfair compe-tition.’ ’’ Havana Club, 203 F.3d at 134(quoting 15 U.S.C. § 1126(b)); see alsoMattel, Inc. v. MCA Records, Inc., 296F.3d 894, 907 (9th Cir.2002) (‘‘ ‘[T]he grantin subsection (h) of effective protectionagainst unfair competition is tailored to theprovisions of the unfair competition trea-ties by subsection (b), which extends thebenefits of section 44 only to the extentnecessary to give effect to the treaties.’Subsection 44(h) creates a federal rightthat is coextensive with the substantiveprovisions of the treaty involved.’’ (quotingToho Co. v. Sears, Roebuck & Co., 645F.2d 788, 792 (9th Cir.1981) (citation omit-ted))).

[6] Cubatabaco may be correct thatSections 44(b) and (h) incorporate Article6bis and allow foreign entities to acquireU.S. trademark rights in the United Statesif their marks are sufficiently famous inthe United States before they are used inthis country. That is the view expressedby some commentators. See 4 McCarthyon Trademarks and Unfair Competition§ 29:4 (4th ed. 2004) (‘‘In the author’sview, the well-known or famous marks doc-trine of Paris Convention Article 6bis isincorporated into United States domesticlaw though the operation of Lanham Act§ 43(a), § 44(b) and § 44(h).’’ (footnoteomitted)).10

10. McCarthy asserts that claims for protectionof ‘‘famous’’ marks should be brought underSection 43(a). See 4 McCarthy on Trademarks

and Unfair Competition § 29:4 (‘‘Lanham Act§ 43(a) gives a foreign national without afederal registration of its mark standing to sue


However, we need not decide that broadquestion here because even assuming thatthe famous marks doctrine is otherwiseviable and applicable, the embargo barsCubatabaco from acquiring property rightsin the U.S. COHIBA mark through thedoctrine. The Embargo Regulations donot permit Cubatabaco to acquire the pow-er to exclude General Cigar from using themark in the United States. We do notread Article 6bis and Section 44(b) and (h)of the Lanham Act to require cancellationof General Cigar’s properly registeredtrademark or an injunction against its useof the mark in the United States underthese circumstances.

[7] In any event, to the extent that theParis Convention, standing alone, mightpose an irreconcilable conflict to the Regu-lations, the latter will prevail. ‘‘[A]n act ofcongress ought never to be construed toviolate the law of nations, if any otherpossible construction remains.’’ Wein-berger v. Rossi, 456 U.S. 25, 32, 102 S.Ct.1510, 71 L.Ed.2d 715 (1982) (quotationsand citations omitted). However, as wehave recently recalled, ‘‘legislative actstrump treaty-made international law’’when those acts are passed subsequent toratification of the treaty and clearly con-tradict treaty obligations. United States v.Yousef, 327 F.3d 56, 110 (2d Cir.2003) (cit-ing Breard v. Greene, 523 U.S. 371, 376,118 S.Ct. 1352, 140 L.Ed.2d 529 (1998));see also Whitney v. Robertson, 124 U.S.190, 194, 8 S.Ct. 456, 31 L.Ed. 386 (1888)(if a treaty and a federal statute conflict,‘‘the one last in date will control the oth-er’’). The most recent iteration of theParis Convention was ratified by the Unit-

ed States in 1970, see 21 U.S.T. 1583;whereas the Regulations were reaffirmedand codified in 1996 with the passage ofthe LIBERTAD Act, 110 Stat. 792 (1996),22 U.S.C. § 6032(h). In these circum-stances, any claim grounded in the ParisConvention that presented an irreconcil-able conflict with the Regulations would berendered ‘‘null’’ by the Regulations.Breard, 523 U.S. at 376, 118 S.Ct. 1352.

II. OTHER TREATY CLAIMS BROUGHT UNDER

SECTIONS 44(B) AND (H) OF THE LAN-

HAM ACT

A. Articles 7 and 8 of the IAC

Cubatabaco argues that the DistrictCourt erred in dismissing its claims underArticles 7 and 8 of the Inter–AmericanConvention. Both the United States andCuba are parties to the IAC. See IAC, Art.13, 46 Stat. 2907, 2946–47; Havana ClubHolding, S.A. v. Galleon S.A., 203 F.3d116, 121 (2d Cir.), cert. denied, 531 U.S.918, 121 S.Ct. 277, 148 L.Ed.2d 201 (2000).

Articles 7 and 8 appear in the chapter ofthe IAC entitled ‘‘Trademark Protection.’’Article 7 provides that:

Any owner of a mark protected in one ofthe Contracting States in accordancewith its domestic law, who may knowthat some other person is using or ap-plying to register or deposit an interfer-ing mark in any other of the ContractingStates, shall have the right to opposesuch use, registration or deposit andshall have the right to employ all legalmeans, procedure or recourse providedin the country in which such interfering

in a federal court, invoke the well-knownmarks doctrine of the Paris Convention Arti-cle 6bis, and prevail if its mark is so well-known in the U.S. that confusion is likely.’’).To the extent that a foreign entity attempts toutilize the famous marks doctrine as basis forits right to a U.S. trademark and seeks to

prevent another entity from using the mark inthe United States, the claim should bebrought under Section 43(a). Under Section43(a), both foreign and domestic entities canseek relief for infringement of unregisteredmarks.


mark is being used or where its regis-tration or deposit is being sought, andupon proof that the person who is usingsuch mark or applying to register ordeposit it, had knowledge of the exis-tence and continuous use in any of theContracting States of the mark on whichopposition is based upon goods of thesame class, the opposer may claim forhimself the preferential right to use suchmark in the country where the opposi-tion is made or priority to register ordeposit it in such country, upon compli-ance with the requirements establishedby the domestic legislation in such coun-try and by this Convention.

IAC, Art. 7, 46 Stat. at 2918–19. Article 8provides that:

When the owner of a mark seeks theregistration or deposit of the mark in aContracting State other than that of ori-gin of the mark and such registration ordeposit is refused because of the previ-ous registration or deposit of an inter-fering mark, he shall have the right toapply for and obtain the cancellation orannulment of the interfering mark uponproving, in accordance with the legalprocedure of the country in which can-cellation is sought, the stipulations inParagraph (a) and those of either Para-graph (b) or (c) below:

(a) That he enjoyed legal protectionfor his mark in another of the Con-tracting States prior to the date of theapplication for the registration or de-posit which he seeks to cancel; and(b) that the claimant of the interfer-ing mark, the cancellation of which issought, had knowledge of the use, em-ployment, registration or deposit inany of the Contracting States of themark for the specific goods to whichsaid interfering mark is applied, prior

to adoption and use thereof or prior tothe filing of the application or depositof the mark which is sought to becancelled; or

(c) that the owner of the mark whoseeks cancellation based on a priorright to the ownership and use of suchmark, has traded or trades with or inthe country in which cancellation issought, and that goods designated byhis mark have circulated and circulatein said country from a date prior tothe filing of the application for regis-tration or deposit for the mark, thecancellation which is claimed, or priorto the adoption and use of the same.

IAC, Art. 8, 46 Stat. at 2920–21.

According to Cubatabaco, Articles 7 and8 of the IAC ‘‘grant the owner of a trade-mark in one country (Cuba) the priority toregister and to use the mark in anothercountry (the U.S.), as against one ( [Gen-eral Cigar] ) who had knowledge of thetreaty national’s prior use or registration(Cubatabaco’s use or registration inCuba).’’ Appellee’s Br. at 85. Cubatabacoargues that under Articles 7 and 8, ‘‘[i]fthe foreign treaty national’s application toregister the mark would otherwise be re-fused, it can cancel the ‘interfering’ regis-tration’’ and ‘‘has the ‘right to oppose suchuse.’ ’’ Id.

[8] Cubatabaco asserts that it is enti-tled to relief for its claims under Articles 7and 8 of the IAC under Sections 44(b) and(h) of the Lanham Act. In Havana Club,however, we noted that a foreign entitymay not assert a claim under Article 23 ofthe IAC pursuant to Section 44(h) of theLanham Act ‘‘because the IAC does nottreat rights under Article 23 as rightsrelated to the repression of unfair competi-tion.’’ 11 Havana Club, 203 F.3d at 135 n.

11. Article 23 of the IAC, which appears under Chapter V of the IAC entitled ‘‘Repression of


19. Following our holding in Havana Club,the District Court concluded that Cubata-baco could not assert rights under Articles7 and 8 of the IAC pursuant to Section44(h) of the Lanham Act because Articles7 and 8 are not related to the repression ofunfair competition. The court noted thatChapter IV of the IAC, which includesArticles 20, 21, and 22, is entitled ‘‘Repres-sion of Unfair Competition,’’ whereas Arti-cles 7 and 8 of the IAC are located inChapter II, which is entitled ‘‘TrademarkProtection.’’ Emmpresa I, 213 F.Supp.2dat 281. Furthermore, the court said thatArticles 7 and 8 relate to priority of regis-tration and under Section 44(d) Congress‘‘specifically carved out how owners oftrademarks registered in other countriesmay obtain a U.S. registration.’’ Id.

We agree with the District Court thatCubatabaco cannot assert claims under Ar-ticles 7 and 8 pursuant to Section 44(h) ofthe Lanham Act because Articles 7 and 8do not relate to the repression of unfaircompetition. As General Cigar points out,Congress enacted Section 44(d) of the Lan-ham Act to implement treaty rights re-garding priority of foreign registrants.Under Section 44(d), a foreign entity,whose country of origin is a party to atrademark treaty to which the United

States is also a party, can secure priorityin the United States from the date of itsforeign registration as long as it registersin the United States within six months ofthe date of its foreign registration and itstates that it has ‘‘a bona fide intention touse the mark in commerce.’’ 15 U.S.C.§ 1126(d). Foreign entities are entitled tothis benefit regardless of whether a do-mestic registrant or user had knowledge ofthe prior foreign registration or use.Thus, although Section 44(d) contains atime limit, the priority rights it providesfor foreign entities are broader than Arti-cles 7 and 8 of the IAC. Congress imple-mented Articles 7 and 8 through Section44(d) of the Lanham Act and those provi-sions do not relate to the ‘‘repression ofunfair competition’’ within the meaning ofSection 44(h). Accordingly, we hold thatCubatabaco cannot assert Article 7 or Arti-cle 8 rights under Sections 44(b) and (h) ofthe Lanham Act. The District Court prop-erly dismissed these claims.

B. Treaty–Based Unfair CompetitionClaims

Cubatabaco argues that the DistrictCourt erred in dismissing its claims underArticles 20 and 21 of the IAC,12 and Article

False Indications of Geographical Origin orSources,’’ provides: ‘‘Every indication of geo-graphical origin or source which does notactually correspond to the place in which thearticle, product or merchandise was fabricat-ed, manufactured, produced or harvested,shall be considered fraudulent and illegal,and therefore prohibited.’’ IAC, Article 23,46 Stat. at 2934.

12. Article 20 of the IAC provides that ‘‘[e]veryact or deed contrary to commercial good faithor to the normal and honorable developmentof industrial or business activities shall beconsidered as unfair competition and, there-fore, unjust and prohibited.’’ IAC, Art. 20, 46Stat. at 2930–32. Article 21 provides:

The following are declared to be acts ofunfair competition and unless otherwise ef-

fectively dealt with under the domestic lawsof the Contracting States shall be repressedunder the provisions of this Convention:(a) Acts calculated directly or indirectly torepresent that the goods or business of amanufacturer, industrialist, merchant oragriculturist are the goods or business ofanother manufacturer, industrialist, mer-chant or agriculturist of any of the otherContracting States, whether such represen-tation be made by the appropriation or sim-ulation of trade marks, symbols, distinctivenames, the imitation of labels, wrappers,containers, commercial names, or othermeans of identification;(b) The use of false descriptions of goods,by words, symbols or other means tendingto deceive the public in the country where


10bis of the Paris Convention,13 all ofwhich Cubatabaco asserted pursuant toSections 44(b) and (h) of the Lanham Act.

[9] In Havana Club we dismissed aclaim for unfair competition brought bythe plaintiff under Article 21(c) of the IACand Section 44(h) of the Lanham Act. Wenoted that Article 21 of the IAC ‘‘author-izes the prohibition of its specified acts ofunfair competition ‘unless otherwise effec-tively dealt with under the domestic lawsof the Contracting States.’ ’’ HavanaClub, 203 F.3d at 134 (quoting IAC, Art.21, 46 Stat. at 2932). We held that Section43(a) already effectively prohibited theconduct covered by Article 21(c) of theIAC and dismissed the IAC claim. Thatholding applies here. Cubatabaco does notclaim that Article 21 prohibits a broaderrange of conduct than Section 43(a) of theLanham Act. Appellant Reply Br. at 22.Therefore, Cubatabaco cannot bring aclaim under Article 21 of the IAC pursuantto Sections 44(b) and (h). To the extentCubatabaco is attempting to raise claims

under IAC Article 20, that provision doesnot provide a separate basis for relief be-cause it is implemented through Section43(a) of the Lanham Act.

[10] In addition, Cubatabaco cannotmaintain a claim for unfair competitionunder Article 10bis of the Paris Conven-tion pursuant to Sections 44(b) and (h) ofthe Lanham Act. The Paris Conventionrequires that ‘‘foreign nationals TTT be giv-en the same treatment in each of the mem-ber countries as that country makes avail-able to its own citizens.’’ Vanity FairMills v. T. Eaton Co., 234 F.2d 633, 640(2d Cir.), cert. denied, 352 U.S. 871, 77S.Ct. 96, 1 L.Ed.2d 76 (1956). ‘‘[T]he Par-is Convention provides for national treat-ment, and does not define the substantivelaw of unfair competition.’’ Mattel, Inc. v.MCA Records, Inc., 296 F.3d 894, 908 (9thCir.2002). As the Eleventh Circuit hasexplained:

We agree that section 44 of the Lan-ham Act incorporated, to some degree,

the acts occur, with respect to the nature,quality, or utility of the goods;(c) The use of false indications of geograph-ical origin or source of goods, by words,symbols, or other means which tend in thatrespect to deceive the public in the countryin which these acts occur;(d) To sell, or offer for sale to the public anarticle, product or merchandise of suchform or appearance that even though itdoes not bear directly or indirectly an indi-cation of origin or source, gives or pro-duces, either by pictures, ornaments, orlanguage employed in the text, the impres-sion of being a product, article or commod-ity originating, manufactured or producedin one of the other Contracting States;(e) Any other act or deed contrary to goodfaith in industrial, commercial or agricul-tural matters which, because of its natureor purpose, may be considered analogousor similar to those above mentioned.

Id., Art. 21, 46 stat. at 2932–34.

13. Article 10bis provides:

(1) The countries of the Union are bound toassure to nationals of such countries effec-tive protection against unfair competition.(2) Any act of competition contrary to hon-est practices in industrial or commercialmatters constitutes an act of unfair compe-tition.(3) The following in particular shall be pro-hibited:

1. all acts of such a nature as to createconfusion by any means whatever withthe establishment, the goods, or the in-dustrial or commercial activities, of acompetitor;2. false allegations in the course of tradeof such a nature as to discredit the estab-lishment, the goods, or the industrial orcommercial activities, of a competitor;3. indications or allegations the use ofwhich in the course of trade is liable tomislead the public as to the nature, themanufacturing process, the characteris-tics, the suitability for their purpose, orthe quantity, of the goods.

Paris Convention, Art. 10bis, 21 U.S.T. at1648.


the Paris Convention. But we disagreethat the Paris Convention creates sub-stantive rights beyond those indepen-dently provided in the Lanham Act. Asother courts of appeals have noted, therights articulated in the Paris Conven-tion do not exceed the rights conferredby the Lanham Act. Instead, we con-clude that the Paris Convention, as in-corporated by the Lanham Act, only re-quires ‘‘national treatment.’’

National treatment means that ‘‘for-eign nationals should be given the sametreatment in each of the member coun-tries as that country makes available toits own citizens.’’ So, section 44 of theLanham Act gives foreign nationals thesame rights and protections provided toUnited States citizens by the LanhamAct. As such, foreign nationals likePlaintiff may seek protection in UnitedStates courts for violations of the Lan-ham Act. But the Paris Convention, asincorporated by section 44 of the Lan-ham Act, creates no new cause of actionfor unfair competition. Any cause ofaction based on unfair competition mustbe grounded in the substantive provi-sions of the Lanham Act.

Int’l Cafe, S.A.L. v. Hard Rock Cafe Int’l(U.S.A.), Inc., 252 F.3d 1274, 1277–78(11th Cir.2001) (citations omitted). There-fore, we conclude that Cubatabaco cannotmaintain a separate claim for unfair com-petition under Article 10bis and Sections44(b) and (h). Rather, a claim for unfaircompetition must be brought under Sec-tion 43(a) or state law. See Mattel, 296F.3d at 908.14

III. STATE LAW CLAIMS

Cubatabaco also argues that the DistrictCourt erred in dismissing its New Yorkunfair competition claim, and its claim un-der New York’s anti-dilution statute, N.Y.Gen. Bus. Law § 360–l.15 We affirm thedismissal of both of these claims.

[11] The District Court found thatGeneral Cigar had not acted in bad faithby using the COHIBA name, and, becausebad faith must be demonstrated for a claimof unfair competition under New York law,Cubatabaco’s claim should be dismissed.We agree. A plaintiff claiming unfair com-petition under New York law must showthat the defendant acted in bad faith. SeeGenesee Brewing Co., Inc. v. Stroh Brew-ing Co., 124 F.3d 137, 149 (2d Cir.1997)(‘‘The district court was correct that Gene-see’s state law claim of unfair competitionis not viable without a showing of badfaith.’’); Jeffrey Milstein, Inc. v. Greger,Lawlor, Roth, Inc., 58 F.3d 27, 35 (2dCir.1995) (stating that in ‘‘a common lawunfair competition claim under New Yorklaw’’ there ‘‘must be some showing of badfaith’’). We find no error in the DistrictCourt’s bad faith determination and there-fore affirm the dismissal of the claim.

[12] We affirm the District Court’s dis-missal of Cubatabaco’s claim of dilutionunder New York General Business Law§ 360–l. Cubatabaco has failed to estab-lish that it owns the COHIBA mark andcannot prevail on a claim of dilution. SeeThe Sports Authority, Inc. v. Prime Hos-pitality Corp., 89 F.3d 955, 966 (2d Cir.1996) (‘‘To establish a trademark dilution

14. In any event, as noted above, any irrecon-cilable conflict between the Paris Conventionand the Regulations would be resolved infavor of the Regulations.

15. That statute provides:Likelihood of injury to business reputationor of dilution of the distinctive quality of amark or trade name shall be a ground for

injunctive relief in cases of infringement ofa mark registered or not registered or incases of unfair competition, notwithstand-ing the absence of competition between theparties or the absence of confusion as to thesource of goods or services.

N.Y. Gen. Bus. Law § 360–l (McKinney Supp.2004).


claim under New York law, TSA mustshow ownership of a distinctive mark and alikelihood of dilution.’’).

CONCLUSION

For the foregoing reasons, the judgmentof the District Court is affirmed in part,reversed in part, and remanded for entryof an order dismissing all remainingclaims. We vacate those portions of theDistrict Court’s order that cancel GeneralCigar’s registration, enjoin its use of themark, order it to deliver materials to Cu-batabaco, and require it to recall fromretail customers and distributors productsbearing the mark, and to inform customersand distributors that they cannot sell Gen-eral Cigar’s COHIBA-labeled products inthe United States.

,

WATERKEEPER ALLIANCE, INC.,American Farm Bureau Federation,National Chicken Council, NationalPork Producers Council, AmericanLittoral Society, Sierra Club, Inc.,Natural Resources Defense Council,Inc., Petitioners/Intervenors,

v.

UNITED STATES ENVIRONMENTALPROTECTION AGENCY, Michael O.Leavitt, Administrator, United StatesEnvironmental Protection Agency Re-spondents.

Docket Nos. 03–4470 (L), 03–4621(C),03–4631(C), 03–4641(C), 03–4849(C),

04–40199(C), 03–40229(C).

United States Court of Appeals,Second Circuit.

Argued: Dec. 13, 2004.

Decided: Feb. 28, 2005.Background: Various environmentalgroups and farm groups brought multiple

challenges to administrative rule promul-gated by the Environmental ProtectionAgency (EPA) under the Clean Water Act(CWA) in order to regulate the emission ofwater pollutants by concentrated animalfeeding operations (CAFO).

Holdings: The Court of Appeals, Katz-mann, Circuit Judge, held that:

(1) provision of rule allowing permittingauthorities to issue permits without re-viewing the terms of nutrient manage-ment plans violated statutory provi-sions of CWA;

(2) permitting scheme established by rulepromulgated violated the CWA’s publicparticipation requirements;

(3) regulatory exemption for agriculturalstormwater discharges did not violatethe CWA;

(4) EPA acted reasonably in choosing asbest available technology for beef andcattle CAFOs an option requiring thatgroundwater-related requirements beimplemented, as necessary, on a case-by-case basis, rather than uniformlyimposed;

(5) EPA acted reasonably in rejecting asbest available technology for swine,poultry, and veal CAFOs an option re-quiring a zero discharge requirementthat did not allow overflows from theproduction area under any circum-stances;

(6) EPA’s failure to impose best conven-tional pollutant control technology ef-fluent limitation guidelines specificallydesigned to reduce pathogens inCAFO’s violated the CWA; and

(7) new source performance standards forthe production areas of swine, poultry,and veal CAFOs violated the CWA.

So ordered.

Documents

462 399 FEDERAL REPORTER, 3d SERIESunclaw.com/chin/teaching/iip/empresa.pdfHIBA cigars outside of Cuba since 1982, but, because of the United States embargo against Cuban goods, imposed