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

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

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.

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, and received her J.D. from the University of San Francisco School of Law where she had the honor of serving as research fellow to Prof. J. Thomas McCarthy, author of the preeminent treatise, McCarthy on Trademark Law and Unfair Competition, 4th Ed. She is admitted to practice in New York.

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.