Edited by Irene Calboli and Edward Lee
Chapter 9: Avoiding mutant trademarks: a statutory exclusion for copyrighted accessories to parallel imports
In its 2013 decision in Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court disrupted the settled expectations of many copyright owners by adopting a rule of international exhaustion for copyrighted works. In so doing, it also disrupted a strategy that had proved beneficial to many trademark owners ñ using copyright law to block parallel imports that are otherwise permissible under federal trademark laws. Prior to Kirtsaeng, United States trademark owners had increasingly turned to federal copyright law to prevent the importation and domestic resale of genuine goods that they had intended only for overseas sale. Under then-prevailing interpretations of the first-sale rule, embedding even a small amount of copyrighted material into merchandise or its packaging could enable a domestic copyright owner to block the importation of otherwise lawful goods. In some cases, the copyright would subsist in the trademark itself. However, even when a trademark is not itself copyrightable, copyright can protect a textual or design element of merchandise or its packaging, such as a label, ornamental design feature, instruction book, user manual, warranty card, or software. This end-run around the limitations of trademark law became popular with trademark owners who wished to block third parties from importing and reselling parallel imports that bore lawful trademarks but were manufactured abroad and intended for sale only outside the United States (usually at lower prices). Trademark owners have used these strategies not only in the United States but in other countries, including Canada, Australia, Singapore, and South Africa. Both Australia and Singapore have responded by enacting statutory exemptions for copyrighted ìaccessoriesî that are imported along with non-infringing articles.
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