The Potential of Impact: Kirtsaeng, dba Bluechristine99 v. John Wiley & Sons, Inc. On In-House Legal Department Enforcement Strategies

August 2013

Abstract

The Supreme Court reaffirmed the limitations on copyright owners’ exclusive rights- via the First Sale Doctrine with its ruling in Kirtsaeng, dba Bluechristine99 v. John Wiley & Sons, Inc. By doing so, it not only upheld an important section of the Copyright Act, it also seemingly legitimized the “grey market.” This ruling, along with Quality King Distributors Inc., v. L'anza Research International Inc., will likely make it impossible to overcome one of the most vexing enforcement issues plaguing U.S. businesses – competition from the sale of their own goods that are manufactured abroad. When this business issue is coupled with the lack of a meaningful, enforceable, legislative regime to thwart the sale of such goods, it may result in a host of unintended -- but predictable consequences. One of the most likely consequences will be an increase in the cost of doing business across a wide swath of industries, particularly legal budgets for enforcement. We will review the Court’s reasoning to explore the impact the ruling may have on the enforcement strategies of in house counsel and the potential pressure on legal department budgets.

Authors

Vanessa Soman

Vice President Associate Counsel, Martha Stewart Living Omnimedia Inc., USA

Vanessa J. Soman is Vice-President and Associate General Counsel at Martha Stewart Living Omnimedia, Inc. In her current role her and her team are responsible for SEC/Corporate Governance, Intellectual Property, Licensing, Privacy, and Employment matters. She is a seasoned attorney whose most recent roles have provided her with the opportunity to advise senior executives at two Fortune 500 companies on a variety of issues including risk-management and policy development that have mitigated counterfeits, increased compliance with regulations, and monetized intangible assets. Vanessa began her career as a trademark examining attorney at the U.S.P.T.O. I will have two co-authors Jamie Melendez, Counsel, Martha Stewart Living Omnimedia, Inc. and Joseph Drayton, Partner, Cooley, LLC.

Jamie Melendez

In-house Counsel, Martha Stewart Living Omnimedia Inc., USA

Jamie Melendez is in-house counsel with Martha Stewart Living Omnimedia, Inc. focusing on intellectual property asset management, intellectual property enforcement, licensing and digital media. She holds a B.M. from New York University, cum laude,

Joseph Drayton

Partner, Cooley, USA

Joseph Drayton is a Partner in the New York office of Cooley LLP and is an experienced trial attorney, who has been named to the IAM Patent1000 list (2012 and 2013), a recognition that honors the top patent practitioners in the world. Mr. Drayton's pract

Companies

Martha Stewart Living Omnimedia Inc.

Martha Stewart Living Omnimedia, Inc. (NYSE: MSO) is a diversified media and merchandising company, inspiring and engaging approximately 66 million consumers a month across all media platforms with unique lifestyle content, and has a growing retail presence with 8,500 products in thousands of retail locations.

The Potential of Impact: Kirtsaeng, dba Bluechristine99 v. John Wiley & Sons, Inc. On In-House Legal Department Enforcement Strategies

Abstract

Authors

Companies

Martha Stewart Living Omnimedia Inc.

Martha Stewart Living Omnimedia Inc.

Cooley

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