Currently, U.S. trademark and copyright law both adopt employ a regime of international exhaustion of rights with respect to parallel importation after the Supreme Court ruled in Kirtsaeng last term. This agreement belies the fact that these two areas of law have developed in nearly divergent directions and have resulted in faltering intellectual property and trade policies. Currently, interpretation of the first sale doctrine hinges on the particular legal characteristics of both trademarks and copyrights. When dealing with trademarks, courts ultimately focus on the source of origin, taking into account consumer expectations or, instead, focusing on the business relationship, if any, between the two parties. With copyrights, courts’ decisions build upon how extensive authors’ rights were intended to be and where an author’s actions can be regulated. In addition to these considerations, however, I propose that U.S. law’s treatment of parallel imports should be informed by the policy concerns at stake. In doing so, courts can and legislators can strike a balance between a national and international exhaustion regime; create compatibility between trademark and copyright law; and effectively eliminate abuse of these discrepancies by parties who can easily disguise their trademark disputes as copyright disputes to bar such imports.
Farley, Christine Haight, Territorial Exclusivity in U.S. Copyright and Trademark Law (March 17, 2014). “Territorial Exclusivity in U.S. Copyright and Trademark Law,” in Distribution des Intangibles - La Propriété Intellectuelle dans le Commerce des Nouveaux Biens (Pierre-Emmanuel Moyse, ed, Éditions Thémis 2014), p. 45.