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.
§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.
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.
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.
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.
Andrew will speak at a program during NY Global Law Week sponsored by the International Section of the NY State Bar Association. The program, focusing on the challenges to international protection of intellectual property, will be held on May 11, 2011 between 3:00 and 5:00 pm and will take place at Andrew’s firm, Tannenbaum Helpern Syracuse & Hirschtritt, 900 3rd Avenue, NY.
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.
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.
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.
First, my apologies to those who want a quick fix on this issue; I have miserably failed to shorten this piece. The conflict between §§ 109(a) and 602 of the Copyright Act divided the Supreme Court in Costco v. Omega as it has vexed the district courts. Because I try to fairly present both sides of the issue and the policy questions raised, I have gone way beyond recommended blog length. So with that warning, let’s begin.
