Summit MacHine Tool Manufacturing Corp. v. Victor Cnc Systems, Inc. MacHinery Trade Center

concurring:

I concur in the majority opinion, but file this separate concurrence to the discussion of the alleged Lanham Act violation in Part II of the opinion.

I am of the opinion that the law in this circuit regarding the Lanham Act permits a more direct dismissal of Summit’s claim of reverse palming off.

The contract between Summit and the Chinese manufacturer ZMTW, provides that Summit has the exclusive right to purchase the lathes manufactured by ZMTW based upon Summit’s designs and specifications, or any lathes that were substantially the same except for lathes which ZMTW would sell only in the Chinese market and which would not be exported outside of China.

Victor purchased seven lathes from ZMTW for resale in the United States. At the time of the purchase, Victor had no knowledge of the contract between Summit and ZMTW, never misrepresented anything about the lathes, nor modified them in any way. Victor, however, applied its own label to the lathes it purchased. This label does not represent that Victor is the manufacturer or designer. J. McCarthy, Trademarks and Unfair Competition § 16:15 (2nd ed. 1984 and Supp.1991).

The design of the Summit lathes was neither…

We are called upon to decide, in this unfair competition case involving industrial machine tools, whether the “bodily appropriation” standard applies to a Lanham Act claim.

I

Summit Machine Tool Manufacturing Corporation (“Summit”), an Oklahoma corporation, designs, builds, and markets industrial machine tools. In 1986, Summit entered into a contract with Zhenjiang Machine Tool Works (“ZMTW”), a Chinese manufacturer, to build lathes from Summit’s designs. The agreement provided that Summit had the exclusive right to sell outside of China all lathes manufactured by ZMTW in accordance with Summit’s designs. Summit worked with ZMTW over a period of several years to refine the new lathes.

During 1989 and 1990, Victor CNC Systems, Inc. and Taiwan Machinery Trade Center (collectively “Victor”), California corporations, purchased seven lathes from ZMTW for resale in the United States. Summit learned of the purchase by Victor in September 1990. In a letter to Victor dated October 1, 1990, Summit notified Victor of its contract with ZMTW and demanded that Victor stop selling the lathes. Victor did not respond. Summit again wrote to Victor in January 1991. Victor refused to cease its…

7 F.3d 1434 30 U.S.P.Q.2d 1302 SUMMIT MACHINE TOOL MANUFACTURING CORP., Plaintiff-Appellant, v. VICTOR CNC SYSTEMS, INC.; Machinery Trade Center, Defendants-Appellees. No. 91-55993. United States Court of Appeals, Ninth Circuit. Argued and Submitted Feb. 1, 1993. Decided Oct. 25, 1993. David Jacobs, Coudert Brothers, Los Angeles, CA, for plaintiff-appellant. Paul A. Larsen, Ku & Fong, Los Angeles, CA, for defendant-appellee. Appeal from the United States District Court for the Central District of California. Before: HUG, FERGUSON and O'SCANNLAIN, Circuit Judges. O'SCANNLAIN, Circuit Judge: 1 We are called upon to decide, in this unfair competition case involving industrial machine tools, whether the "bodily appropriation" standard applies to a Lanham Act claim. 2 * Summit Machine Tool Manufacturing Corporation ("Summit"), an Oklahoma corporation, designs, builds, and markets industrial machine tools. In 1986, Summit entered into a contract with Zhenjiang Machine Tool Works ("ZMTW"), a Chinese manufacturer, to build lathes from Summit's designs. The agreement provided that Summit had the exclusive right to sell outside of China all lathes manufactured by ZMTW in accordance with…