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

Joseph Drayton, Partner, Cooley LLP, 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.

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 practice background includes a broad range of intellectual property and complex commercial matters. He practices before state and federal courts, as well as the International Trade Commission. Mr. Drayton counsels clients in all aspects of intellectual property acquisition, transfer, protection and enforcement. Mr. Drayton holds a B.S. in Electrical Engineering from the University of Maryland, College Park and a Juris Doctor from the University of Pennsylvania Law School. He is admitted to the Bar in the states of New York and Maryland as well as the District of Columbia.

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.