*District Judge of the Eastern District of Louisiana, sitting

by designation.

**Pursuant to 5TH CIR. R. 47.5, the Court has determined that

this opinion should not be published and is not precedent except

under the limited circumstances set forth in 5TH CIR. R. 47.5.4.

United States Court of Appeals

Fifth Circuit

FILED

July 29, 2003

Charles R. Fulbruge III

Clerk

Revised August 15, 2003

UNITED STATES COURT OF APPEALS

FOR THE FIFTH CIRCUIT

_______________________

No. 02-20308

No. 02-21088

_______________________

ROLEX WATCH USA, INC.,

Plaintiff-Counter Defendant-Appellee,

versus

JBJ DISTRIBUTORS, INC.,

Defendant-Counter Claimant-Appellant.

_________________________________________________________________

Appeals from the United States District Court

for the Southern District of Texas

Civil Docket #H-99-CV-1621

_________________________________________________________________

Before JONES and CLEMENT, Circuit Judges and FELDMAN, District

Judge.*

PER CURIAM:**

Appellant JBJ Distributors, Inc. raises a plethora of

issues attacking an adverse injunction and attorney fee award in
2

this trademark infringement and counterfeiting case. Having

considered the briefs, oral arguments, and pertinent portions of

the record, we find no merit in any of the issues and affirm on the

basis of the district court opinion with only a few additional

observations. 

First, JBJ argues that the district court should not have

applied New York’s trademark dilution law to JBJ because there was

no jurisdictional nexus connecting JBJ to New York for the purposes

of in personam or in rem jurisdiction. JBJ is correct. Neither

Rolex nor the district court identified any jurisdictional nexus

connecting JBJ to New York; therefore, it was improper for the

district court to apply New York’s trademark dilution law to JBJ.

Rolex argues that New York and Texas law provide for the same

outcome, but the similarity of state laws on trademark dilution

does not provide the requisite jurisdictional nexus. 

Nevertheless, JBJ’s appeal of the trial court’s

application of New York trademark dilution law does not undermine

the judgment, since there is ample support for the court’s

alternative liability holdings based on federal trademark

infringement and trademark counterfeiting law. See Rolex Watch

USA, Inc. v. Meece, 158 F.3d 816 (5th Cir. 1998); Elvis Presley

Enterprises, Incorporated v. Capece, 141 F.3d 188, 193 (5th Cir.

1998). 
3

Second, JBJ offers no support in law or logic for the

contention that its unclean hands, arising from flagrant discovery

abuse, do not bar JBJ’s laches defense because the misconduct

occurred after Rolex filed suit. Moreover, JBJ engaged in pre-suit

misconduct by its continuing sales of altered Rolex watches after

this court’s nearly indistinguishable decision in Meece.

Third, the injunction ordered by the district court is

carefully crafted and not unduly vague or overbroad. It does not

prohibit JBJ from performing authorized Rolex repair work using

genuine Rolex parts. It prohibits only those acts that would lead

to the creation of deceptively altered or counterfeit “Rolex”

watches.

Fourth, the substantially reduced attorneys’ fee award is

reasonable and justified under 15 U.S.C. § 1117(b) without resort

to a finding of “exceptional circumstances,” a finding the statute

mandates only to reduce or avert a fee award. The district court

entered abundant findings and conclusions that support this award

and insulate it from JBJ’s abuse of discretion challenge. 

Finally, JBJ’s additional and subsidiary appellate points

are meritless and do not require a response by this court.

AFFIRMED.