Andrew will moderate a webinar on Wednesday October 26,2011, sponsored by BNA entitled Alternatives Now Available to Copyright and Trademark Owners to Combat Gray Market and Counterfeit Goods: Recent First Sale and Related Litigation. The 90-minute program will focus on recent 9th and 2d Circuit cases involving the clash between the first sale doctrine and Section 602(a)(1) of the Copyright Act barring the importation of goods made abroad without the copyright holder’s consent.
by Andrew BergerPublished Tuesday, October 25th, 2011
by Andrew BergerPublished Sunday, October 2nd, 2011
Andrew will be a panelist in a webinar on November 1 sponsored by PLI dealing with the tension between Sections 109(a) and 602(a)(1) of the Copyright Act following the Second Circuit’s decision in John Wiley v. Kirtsaeng. Other panelists are William Dunnegan who represented John Wiley in this case and John T. Mitchell.
Sections 109 and 602 are in tension because they lead to opposing results. Section 109, the first sale doctrine, provides that a copyright holder loses control over the distribution of goods once the holder makes a first sale.
by Andrew BergerPublished Monday, August 29th, 2011
Today Mr. Kirtsaeng asked for en banc review of the 2-1 majority opinion by the 2d Circuit in a copyright infringement case brought by John Wiley holding that the first sale doctrine is inapplicable to goods made abroad even if they were imported into the U.S. with the permission of the copyright holder. The petition is here.
The Wait For Kirtsaeng Is Over: The 2d Circuit Holds, Consistent With The 9th Circuit’s Opinion In Omega v. Costco, That The First Sale Doctrine Applies Only To Goods Manufactured In This Countryby Andrew BergerPublished Monday, August 15th, 2011
§602 (a)(1) Trumps the First Sale Doctrine
The cloud lingering over the gray market industry since the Supreme Court split 4-4 in Costco just got a lot darker. Gray market goods are those made by the copyright holder abroad and then imported into this country without the permission of the copyright holder. Just last week it seemed the 2d Circuit would never decide John Wiley v.
Waiting for Kirtsaeng: the Unresolved Tension Following the 4-4 Split in Costco Between Sections 602 and 109 of the Copyright Actby Andrew BergerPublished Tuesday, August 9th, 2011
The huge gray market industry, disappointed with the Supreme Court’s 4-4 split in Costco v. Omega, has been hoping for better news from the 2nd Circuit. They keep waiting and hoping.
Different panels of the 2nd Circuit have now heard argument in three cases raising identical issues to those raised but not decided in Costco. But the 2nd Circuit has not decided any of these cases, even though the earliest, John Wiley v.
A Program on the First Sale Doctrine Sponsored by the ABA Forum on the Entertainment and Sports Industriesby Andrew BergerPublished Tuesday, June 28th, 2011
Andrew will be a panelist at a webinar on the first sale doctrine sponsored by the American Bar Association Forum on the Entertainment and Sports Industries and the ABA Center for Continuing Legal Education. The program is entitled: The First Sale Doctrine After Costco and Vernor: Where Do We Go From Here?
The webinar will take place on Thursday, July 28, 2011 from 12:00 PM – 1:30 PM Eastern Standard Time. For more information, please click here.
by Andrew BergerPublished Friday, May 27th, 2011
The IP Litigation Committee of the ABA Section of Litigation is sponsoring its first Hot Topics program to be held on Friday June 10 in DC. The program brochure is here.
The program will cover the bases: copyrights, trademarks and patents. The copyright program will focus on the unresolved issues arising from the 4-4 split in Costco v.
by Andrew BergerPublished Friday, April 22nd, 2011
Counterfeits cost brand owners billions of dollars every year. How can brand owners combat this problem? What are the best strategies they can employ and will they work?
I am delighted that Lisa Martens has given us some expert and helpful advice. Lisa is a Principal in the Southern California office of Fish & Richardson P.C. Her practice emphasizes trademark prosecution and litigation for the food service, health care, biotechnology, computer, Internet, and retail clothing industries. Her complete bio and contact information are here.
Can We Keep Those Gray Market Goods Out of Here? The Unresolved Tension Between §§ 109 and 602 of the Copyright Act Following the 4-4 Split in Costco v. Omegaby Andrew BergerPublished Thursday, April 21st, 2011
The BNA Patent, Trademark & Copyright Journal recently published my article dealing with the aftermath of the deadlock in Costco v. Omega. The article analyzes the policy issues in conflict and provides some guidance about how those in the copyright supply chain-manufacturers, importers, distributors and retailers- can protect themselves from claims under Section 602 of the Copyright Act.
by Andrew BergerPublished Tuesday, March 15th, 2011
I mentioned in my post yesterday that all eyes are on the 2d Circuit as we await the decision in the Kirtsaeng case (district court opinion here) which was argued last May. It involves text book arbitrage: the sale here of books made overseas for distribution there at prices below those charged for books intended for the U.S.