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International First Sales and Gray Imports Under U.S. and European IP Laws


Product Code - LGA194
Speaker(s): Lothar Determann, Baker & McKenzie LLP; Gary Shapiro, Baker & McKenzie LLP; Pamela T. Church, Baker & McKenzie LLP; Ben D. Allgrove, Baker & McKenzie LLP
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Recent changes in the law mean that companies should review their international distribution agreements. This panel discussion will offer practical information and legal background from the perspective of both U.S. and foreign law.

In the past, the unauthorized importation of products incorporating copyrighted materials was generally prevented under U.S. copyright laws. This was in opposition with the first sale doctrine—also known as exhaustion of rights—which limits the extent to which holders of intellectual property rights can control sales of goods after an initial authorized sale.

In many cases, lower courts found that the first sale doctrine did not apply, because the products had not been made in the United States and no authorized first sale had occurred within the country. However, in Kirtsaeng v. John Wiley & Sons, Inc., the U.S. Supreme Court found that an authorized first sale outside the United States also operated as a defense to a copyright claim. This landmark decision may change the markets for copyrighted goods internationally.

The faculty for this program will explore the Kirtsaeng case, with a particular focus on exhaustion under various jurisdictions and IP law regimes and the reach and considerations for manufacturers’ and distributors’ reaction to the case.

Educational Objectives:

• Understand the international exhaustion doctrine under both U.S. and European copyright laws.
• Learn about exhaustion under patent and trademark laws.
• Discover the reach of Kirtsaeng, including software, audio/video files, and product labels.
• Find out what manufacturers and distributors should consider as reaction.

Who would benefit most from attending?

Practitioners focusing on copyright, trademark, and patent law; intellectual property in general; contracts; import/export issues; distribution; litigation; and new media.

Program Level: Intermediate

Lothar Determann, Baker & McKenzie LLP; Gary Shapiro, Baker & McKenzie LLP; Pamela T. Church, Baker & McKenzie LLP; Ben D. Allgrove, Baker & McKenzie LLP

Lothar Determann, Baker & McKenzie LLP
As a partner in Baker & McKenzie’s Palo Alto, California office, Lothar Determann’s practice focuses on counseling companies on taking their products, data, intellectual property and contracts international as well as related commercial and compliance matters. Dr. Determann has been a member of the Association of German Public Law Professors since 1999, and he teaches data privacy law, computer law and internet law at the University of California, Berkeley School of Law (Boalt Hall), Hastings College of the Law, Freie Universität Berlin, and Stanford Law School. He frequently presents on international and intellectual property law topics and has authored more than 80 articles and treatise contributions as well as four books, including Determann’s Field Guide to International Data Privacy Law Compliance.

Dr. Determann is admitted to practice in Germany and California. He is recognized as one of the top 10 copyright attorneys in California by the San Francisco Daily Journal and as one of the top 25 intellectual property attorneys in California by the Los Angeles Daily Journal; listed in the World’s 250 Leading Patent and Technology Licensing Practitioners by the Intellectual Asset Management (IAM) Magazine; and ranked as a leading lawyer in Chambers USA, Legal 500 USA and California Super Lawyers.

Gary Shapiro, Baker & McKenzie LLP
Gary Shapiro represents clients in various transactional matters, including agreements involving software licensing and development, patent cross-licensing, outsourcing, technology acquisition, semiconductor development and foundry services, collaborations, joint ventures, strategic alliances, OEM, international distribution, electronic commerce, content licensing, confidentiality, data protection, invention assignments, consulting services, international licensing arrangements. He advises companies in the software, equipment, semiconductor, information technology and financial services industries regarding technology transfers and protection of intellectual property rights. Mr. Shapiro also conducts intellectual property due diligence and counseling for mergers, acquisitions, spin-offs, investments and IPOs.

Mr. Shapiro earned a J.D. from the University of California, Hastings College of the Law, where he was a member and Articles Editor of the Hastings Law Journal.

Pamela T. Church, Baker & McKenzie LLP
Pam Church concentrates on intellectual property matters involving the development, exploitation and transfer of IP rights, including licensing, technology transfer, research and development, franchising, print and electronic publishing, e-commerce, outsourcing and IP securitization transactions. She counsels major media publishing, entertainment, motion picture, financial services, luxury goods and technology companies in the establishment and implementation of comprehensive IP protection, licensing, merchandising, enforcement, and anti-piracy programs. Her practice also includes general corporate counseling, M&A, joint ventures and business reorganizations in fields in which IP rights are key.

Ms. Church earned a J.D. from New York University School of Law and is admitted to practice in the State of New York. She was a Rotary Foundation Graduate Fellow at the University of Bonn in Germany and earned a B.A., cum laude, from Yale University.

Ben D. Allgrove, Baker & McKenzie LLP
Ben Allgrove is a partner in Baker & McKenzie’s Intellectual Property Practice Group in London, where he advises mainly on contentious and noncontentious media, technology, intellectual property and freedom of information law. A Rhodes Scholar, he was named E-Commerce Lawyer of the Year (UK) in the ILO Client Choice Awards 2011, Assistant Solicitor of the Year in the British Legal Awards in 2009, and was recognized as a "a standout lawyer" in Chambers UK, for being "well known particularly for his expertise in digital platforms.” Mr. Allgrove is also associated with his firm’s IT practice group and is a qualified solicitor advocate. He is actively involved in various pro bono activities, particularly for Amnesty International, IREX, PILI and The Global Fund to Fight AIDS, Tuberculosis and Malaria, among others. He has written and co-authored several publications and articles and previously taught copyright and design law at Kings College London. Ben joined Baker & McKenzie in 2004 and had experience in Australia and Vietnam prior to joining the firm.

Mr. Allgrove earned a Master of Philosophy Law Distinction and a Bachelor of Civil Laws Distinction, Vinerean Scholar, from Oxford University and an LL.B. Honours and a Bachelor of Commerce from the University of Adelaide.

This program’s CLE-credit eligibility varies by state. Bloomberg BNA is an accredited provider in the states of New York*, California, Pennsylvania, Texas and Virginia, and most other jurisdictions grant CLE credit on a per-program basis. At this time, Bloomberg BNA does not apply directly to the states of Florida, Rhode Island, Montana and Hawaii although credit is usually available for attorneys who wish to apply individually. Additionally, the following states currently do not grant credit for Bloomberg BNA OnDemand programming: Arkansas, Ohio, Nebraska, and Delaware. All requests are subject to approval once the live webinar has taken place or the customer has viewed the OnDemand version. Please contact the Bloomberg BNA accreditations desk if you have specific questions that have not been addressed.

If you have further questions regarding a specific state or how to file for CLE credit, please contact Bloomberg BNA customer service at 800-372-1033 and ask to speak to the CLE Accreditation Coordinator.

Hardship Policy
For information regarding Bloomberg BNA’s Hardship Policy, please visit the Continuing Education Information page.

Questions
For more information about Mandatory or Minimum Continuing Legal Education (MCLE) requirements, visit the American Bar Association website at http://www.abanet.org/cle/mandatory.html.

*Bloomberg BNA is an accredited provider in New York for experienced attorneys only.