Abstract

http://ssrn.com/abstract=2281562
 


 



Post-Kirtsaeng, 'Material Differences' Between Copyright and Trademark Law's Treatment of Gray Goods Persist


Charles E. Colman


New York University School of Law ; NYU Steinhardt Department of Visual Culture: Costume Studies

July 2013

Law360, "Trademark Law Can Still Stop Gray Goods," April 2013
NYU School of Law, Public Law Research Paper No. 13-40

Abstract:     
The U.S. Supreme Court’s recent ruling in Kirtsaeng v. John Wiley & Sons would seem no trivial event for stakeholders in content-reliant industries. The upshot of the Court’s decision — that the Copyright Act cannot be used to prevent the unauthorized importation of copies of works, even if manufactured abroad, whose “first sale” has already occurred — will, at least initially, throw a wrench into many companies’ existing business models.

As one would expect, commentary on the decision has been extensive. With few exceptions, however, commentators attempting to predict the impact of Kirtsaeng have not looked beyond copyright law to understand the broader legal landscape in which so-called “gray goods” are situated. That landscape includes, among other features, the Federal Circuit’s doctrine on rights exhaustion in patent law, the growing number of state laws regulating retailers’ sales of gray goods, and the now-widespread use of licenses to restrict the transferability of goods — especially of the digital variety.

As these examples show, the Kirtsaeng ruling does not exist in a vacuum. Indeed, when one examines what is arguably the most significant feature of the gray-goods landscape in the United States — federal trademark law — it is difficult not to wonder if the Supreme Court’s ruling will have much of an impact at all. Even a cursory examination of trademark law’s gray-goods jurisprudence reveals that it has become untethered from both its supposed consumer protection and brand-goodwill rationales, opting for an approach that unduly favors trademark owners. Kirtsaeng notwithstanding, trademark law is where the action is.

Number of Pages in PDF File: 11

Keywords: Kirtsaeng, Wiley, gray goods, grey goods, trademark, copyright, first sale

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Date posted: June 19, 2013 ; Last revised: April 10, 2014

Suggested Citation

Colman, Charles E., Post-Kirtsaeng, 'Material Differences' Between Copyright and Trademark Law's Treatment of Gray Goods Persist (July 2013). Law360, "Trademark Law Can Still Stop Gray Goods," April 2013; NYU School of Law, Public Law Research Paper No. 13-40. Available at SSRN: http://ssrn.com/abstract=2281562

Contact Information

Charles Edward Colman (Contact Author)
New York University School of Law ( email )
40 Washington Square South
New York, NY 10012-1099
United States
2129986248 (Phone)
HOME PAGE: http://its.law.nyu.edu/facultyprofiles/profile.cfm?personID=38792
NYU Steinhardt Department of Visual Culture: Costume Studies ( email )
34 Stuyvesant Street
New York, NY 10003
United States
HOME PAGE: http://steinhardt.nyu.edu/art/costume/faculty
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