Omega, Luxury Watch Purveyor, Had To Pay Fees.
In Omega S.A. v. Costco Wholesale Corp., No. 11-57137 (9th Cir. Jan. 20, 2015) (published), the Ninth Circuit considered an appeal of a summary judgment and attorney’s fees award in favor of Costco and against Omega in a copyright infringement suit. Both rulings were affirmed.
Costco initially obtained a summary judgment based on the first sale doctrine, but this was reversed on appeal. Costco didn’t give up, obtaining a summary judgment a second time around based on a copyright misuse theory (trying to impermissibly extend a limited monopoly) and was also granted $396,844.17 in attorney’s fees under a federal copyright fee-shifting statute.
Both decisions were affirmed. The majority found that the SCOTUS had revisited the first sale doctrine such that the copyright suit was precluded on this ground, although Circuit Judge Wardlaw concurred but would sustain the result on the copyright misuse theory. However, all circuit judges on the panel agreed that the fee award was justified, given the district judge found Omega was trying to exert unwarranted control over watches where copyright protection did not exist—a rationale allowing for fee shifting by the lower federal court.