Posted on December 13, 2010 in copyright, IP by Brian RoweComments Off

Costco v. Omega was decided (well an opinion was issued) today by the SCOTUS.  The decision is a big let down, the court split 4 v 4 with Kagan not taking part. This is a real mixed message, the bad ruling from the 9th technically stands the decision has no precedential value. This is not an endorsement of 9th Circuit’s decision.  The court did not address any of the issues in the case.

You can read the whole opinion here:


No. 08–1423
[December 13, 2010]
PER CURIAM. The judgment is affirmed by an equally divided Court.
JUSTICE KAGAN took no part in the consideration or decision of this case.

That is it! The block quote is the whole thing we do not even know who voted how or why…. I do not know what else to say, the court passed on a really important case that affects copyright distribution, owner rights, and international imports.

In the case take note of the term PER CURIAM it is very important (from wikipedia with minor edit by me under cc-by-sa):

a per curiam decision (or opinion) is a ruling issued by an appellate court of multiple judges in which the decision rendered is made by the court (or at least, a majority of the court) acting collectively and anonymously.[1] In contrast to regular opinions, a per curiam does not list the individual judge responsible for authoring the decision,[1] but minority dissenting and concurring decisions are signed.[2]

Per curiams are not the only type of decision that can reflect the opinion of the court. Other types of decisions can also reflect the opinion of the entire court, such as unanimous decisions, in which the opinion of the court is expressed with an author listed.[3] The Latin term per curiam literally means “through the court”.

This means that the court is not making a ruling that clarifies or speaks to the issues brought up.

This brings up two big issues why such a short decision and what is the impact.

1) Why the court passed?

This is pure speculation, but I thing it has to do with New York.  The Southern District of New York has 4 case currently under consideration on this issue:

John Wiley & Sons, Inc. v. Kirtsaeng, argued on May 19, 2010.
Pearson Education, Inc. v. Liu, petition for leave to appeal deferred pending resolution of Kirtsaeng.
Pearson Education, Inc. v. Arora, briefed, oral argument on January 12, 2011.
Pearson Education, Inc. v. Kumar, not yet briefed
It is possible that the SCOTUS wanted to look at other alternatives before fully addressing this issue.  SCOTUS could have stepped in here with a logical ruling that impacts these cases when deciding Costco v. Omega.

2) What is the impact? This is a big setback for American retailers and consumers. Given that the ruling in the 9th circuit (the west coast) stands importing good could now make you liable for copyright infringement even if you legal own the goods. In areas of the country this is unsettled law and we will not know how it work till we have litigation.

More about costco v. omega w/ court filings and New in IP video explaining Costco v. Omega in plain English.

Posted on April 19, 2010 in IP by Brian RoweComments Off

This is great news.  Costco v. Omega was a horrible ruling out of the 9th curcuit that limits the first sale doctrine to goods produced and sold in the US.  This is an attempt by Omega to kill legal grey market sales that trademark does not prevent by abusing copyright law. Here is more from IP Watch:

Because trademark law often cannot stop the import of grey market goods, a growing number of brand owners are trying a new tactic. They are using copyright law to protect their markets in the US. (This tactic doesn’t work well in Europe because the EU lacks a single, harmonised approach to copyright law, according to Klett.)

Consider the method used by Omega SA. The watchmaker inscribed a tiny, 0.5 cm globe design on the underside of its watches. This design is invisible when the watches are worn, so individuals are unlikely to purchase Omega’s high end watches in order to obtain copies of this inconspicuous design. Because this design is copyrighted, however, it may enable Omega to stop the import of grey market watches into the US.

Section 106(3) of the US Copyright Act grants copyright owners the right to control the distribution of copies of their works. This includes the right to control imports of copies of their works, according to Section 602(a) of the statute. So if someone imports a copy without authorisation, they are guilty of copyright infringement. And that is precisely what Omega has alleged against Costco Wholesale Corp., a major discount retailer with stores throughout the US.

Omega makes its watches in Switzerland and sells them in Europe at prices well below its authorised US prices. Some watches that were initially sold in Europe and intended for that market were resold to Costco, which imported them into the US. Omega objected and sued Costco in 2004 for infringement.

Costco asserted that importing the watches does not infringe because of Section 109(a) of the Copyright Act. This statute codifies the copyright first sale doctrine, which is similar to the one in trademark law: upon the first sale of a copy of a copyrighted work, the copyright owner loses its right to control any further distribution of that particular copy. The copyright owner’s right of distribution has been extinguished, so the purchaser can resell, lend or give away the copy without committing copyright infringement.

There is, however, one significant difference between the first sale doctrines in US copyright and trademark law. Copyright law has an added qualification. Its first sale doctrine, Section 109(a), applies only to copies “lawfully made under this title.”

Omega argued that because the copies of its watch design were made outside the US, they were not made under US copyright law and were thus not covered by the first sale doctrine. Costco argued that because the copies were made by the US copyright owner, they should be considered “lawfully made” under US copyright law.

The 9th Circuit US Court of Appeals agreed with Omega’s interpretation of the statute. The court ruled [pdf] in 2008 that applying the first sale doctrine to goods made overseas “would impermissibly apply the Copyright Act extraterritorially.”

Costco has asked the US Supreme Court to review this decision. That court in October asked the US Department of Justice to file a brief on the case. Many observers see this as a sign that the court may take the case.

If the 9th Circuit ruling is left in place, it would be a huge win for companies that wish to stop grey market goods from being imported into the US. It would, similarly, be a big blow to consumers and to many businesses that import or sell grey market goods in the US. Moreover, according to some experts, it would be a misuse of copyright law.

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