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Abstract

Federal law grants owners of intellectual property rights different degrees of control over parallel imports depending on the nature of their exclusive rights. While trademark owners enjoy strong control over unauthorized imports bearing their marks, their protection is less comprehensive than that granted to owners of copyrights and patents. To broaden their rights, some trademark owners have incorporated copyrighted material into their products or packaging, enabling them to block otherwise lawful imports in contravention of the policies underlying trademark law. A 2013 Supreme Court decision has significantly narrowed the importation ban of copyright law, but there may be pressure to reinstate it. In the meantime, trademark owners could resort to design patents to achieve their goals. Trademark owners have employed the same copyright strategy abroad, in countries with similar asymmetries in their intellectual property regimes. In Canada and South Africa, courts have considered but ultimately rejected judicial remedies that would restrict the use of copyright law to override trademark law. Australia and Singapore have addressed the problem through parallel import legislation which disregards the copyrighted material embodied in mere “accessories” to imported goods. This legislation has already given rise to questions of interpretation. If Congress chooses to restore parallel import restrictions on copyrighted works, enabling trademark owners once again to use copyright law as a mutant form of trademark law, existing doctrines such as copyright and patent misuse, de minimis use, and fair use will not offer the clarity and predictability necessary for a long-term solution. Instead, a legislative response is needed. Drawing on lessons from other jurisdictions, the Author proposes amendments to the federal copyright and design patent laws which will enable the legal status of most parallel imports to be assessed despite the presence of incidental material protected by copyrights or design patents. This approach will restore the preeminence of trademark law as the proper mechanism for balancing the legitimate interests of trademark owners and consumers.