Gray Becomes Black and White: Exploring Options for U.S. Businesses in Wake of the Kirtsaeng Decision - Global Trade and Customs Journal View Gray Becomes Black and White: Exploring Options for U.S. Businesses in Wake of the Kirtsaeng Decision by - Global Trade and Customs Journal Gray Becomes Black and White: Exploring Options for U.S. Businesses in Wake of the Kirtsaeng Decision 10 2

In Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013), the Supreme Court held that gray market goods are protected by the first sale doctrine of the Copyright Act of 1976 ("Copyright Act"). U.S. manufacturers are typically at a severe disadvantage when competing with gray marketers who offer essentially the same or comparable goods at lower prices. Accordingly, businesses should explore new avenues to limit the economic power of gray market goods by using: (1) licenses for copyrighted works; (2) contract provisions restricting distribution; (3) remedies under trademark law, such as Lever rule protection under section 42 of the Lanham Act or by curtailing the importation of certain foreign-manufactured merchandise through section 526 of the Tariff Act; and (4) consumer protection laws in applicable states such as California, Connecticut, and New York.

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