Court Tells Omega Copyright Is Not A Sword; Rejects Attempt To Control Grey Market As Copyright Misuse
from the well,-look-at-that dept
You may recall our earlier stories concerning the legal fight between Costco and watchmaker Omega. In an attempt to stop grey market (legal, official products, but resold into a market not intended by the manufacturer) sales of one of its watches, Omega put a tiny 0.5cm engraving on the back of its watches, and claimed copyright on it. This had absolutely nothing to do with the incentive to create that tiny engraving, or because that engraving had value or was special in any way. It served one purpose only: to try to abuse copyright law to control the market.
Omega then claimed that Costco selling (legitimate) secondhand Omega watches that were bought from other sources was copyright infringement. We thought this was a crazy claim and pointed out two problems with it under the law. The first was that it seemed like copyright misuse, and second that it appeared to violate the first sale doctrine, allowing you the right to sell copyright-covered products you legally bought. The district court tossed out the case on the first sale question, but unfortunately, the appeals court overturned, with really convoluted reasoning. Since, US copyright law says first sale rights apply to all products “lawfully made under this title,” Omega argued, and the court agreed, that objects made outside the US were not “made under this title,” and thus had no first sale rights. It’s pretty ridiculous that the court would let that go forward, but to make matters worse, the Supreme Court totally punted and just let the appeals court ruling stand.
But… the case wasn’t over just yet. The appeals court and the Supremes were just focused on the narrow question of if the First Sale doctrine applied. So the case went back to the district court… and once again, the court has dumped the lawsuit… and went with the other big problem we saw with Omega’s sneaky little plan: copyright misuse. This was a bit of a surprise. You don’t see “copyright misuse” cases that often, and it’s even rarer when that argument succeeds. But the judge was pretty clear.
Omega concedes that it decided to affix a new copyrighted design to the reverse side of its watches to take advantage of copyright law’s importation limitations. In other words, Omega used the defensive shield of copyright law as an offensive sword.
The Ninth Circuit adopted the Fourth Circuit’s definition of copyright misuse…. The Fourth Circuit held that copyright misuse occurs when “copyright is being used in a manner violative of the public policy embodied in the grant of copyright.”…. The Ninth Circuit later clarified that “the misuse defense prevents copyright holders from leveraging their limited monopoly to allow them to control areas outside of their monopoly.”…
Here, Omega concedes that a purpose of copyrighted Omega Globe Design was to control the importation and sale of its watches containing the design, as the watches could not be copyrighted. Accordingly, Omega misused its copyright of the Omega Globe Design by leveraging its limited monopoly in being able to control the importation of that design to control the importation of its Seamaster watches.
It’s nice to see copyright misuse actually being used in court… and even nicer to see it succeed (so far). It would be nicer, still, if more courts actually started to use that Fourth Circuit definition of copyright misuse: “violative of the public policy embodied in the grant of copyright.” Considering how many copyright cases these days would qualify as copyright misuse under those terms, it’s a shame that the courts haven’t declared copyright misuse more frequently.