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Disposable Cameras Side With Omega Watches: The Film Empire Strikes Back

by Orlando Lopez

Following the Intel amicus brief in Costco v. Omega, Fujifilm, Seiko Epson and Epson filed an amicus brief in support of the respondent’s (Omega’s) position that the first sale doctrine, which ends the rights of the copyright owner after a sale, does not apply to items made and sold outside the United States.

The Fujifilm amicus brief reads more like a reply to the Intel amicus brief. Fujifilm presents four main arguments: that the Supreme Court should not consider patent exhaustion when considering the extraterritoriality of the first sale doctrine in Costco v. Omega; that the present law on patent exhaustion is consistent with prior Supreme Court decisions; that the Supreme Court did not previously consider foreign patent exhaustion; and, that items made and sold outside the United States are not made under the US copyright act (in support of Omega’s position) .

Fujifilm’s interest in patent exhaustion stems from its battles in the courts against the importer of refurbished “single use” cameras. The resulting cases, Jazz Photo v. ITC, Fuji v. Jazz, and Fuji v. Benun, are showcases for the CAFC’s recent position on patent exhaustion. Specifically, the CAFC held in those cases that the patent owner’s rights are not exhausted after a product covered by the patent is sold outside of the United States. Makers of products, such as “single use” cameras and printer cartridges, have used the fact that the patent exhaustion doctrine does not apply to products sold outside of the United States to stop importation of refurbished products that are covered by patents. The Supreme Court’s decision in Costco v. Omega could have an impact on the patent exhaustion doctrine, even if the patent exhaustion doctrine is not directly considered by the Court.

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