June 9, 2025 • 30 mins
Ever wondered what happens when your right to resell clashes with someone else's trademark? The secondary market is booming—from luxury perfumes to used hard drives and even virtual farm animals—but these second lives come with surprising legal complications.
Secondary markets aren't just about thrift store finds anymore. They're complex ecosystems where intellectual property law determines what you can truly do with the things you've purchased. Through a global tour of fascinating court cases, we unpack the legal principles that govern reselling, refurbishing, and reimagining products across physical and digital realms.
In Norway, a phone repair shop learned the hard way that erasing Apple logos from replacement screens doesn't erase their legal obligations. Meanwhile, in India, courts embraced refurbished Seagate hard drives as sustainability wins. The digital world presents even thornier questions—can you resell an e-book like a paperback? (Spoiler: European courts say no.) And what about those $133,000 "MetaBirkin" NFTs that landed an artist in hot water with Hermès?
From Brazilian video game importers to Italian pharmaceutical repackagers, we explore how trademark exhaustion works differently across borders. You'll discover why Chanel fights so hard to control where its perfumes are sold, how Zynga protected its virtual cows from unauthorized trading, and what happens when Finnish axes travel from North America to the Czech Republic without permission.
Whether you're flipping consoles, fixing phones, or minting NFTs of luxury handbags, understanding these landmark cases could save you from accidental infringement. Secondary markets provide real benefits—reducing waste and extending product lifecycles—but navigating them legally requires knowing when ownership ends and intellectual property begins.
Subscribe to Intangiblia for more plain talk about complex IP issues that affect everyday transactions in our increasingly digital marketplace. Your secondhand purchases might come with more legal baggage than you realized!
Mark as Played
Transcript
Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:00):
while they were diving headfirst into the wild
world of secondary markets.
If you don't use it, why notsell it?
Well, intellectual propertymight have something to say
about that, from luxury perfumesto used hard drives and even
virtual farm animals.
Yes, seriously, these secondlives often come with a little
extra legal baggage.
Buckle up.
This episode is packed withlawsuits, loopholes and legal
(00:22):
lingo decoded into laughs.
This episode is packed withlawsuits, loopholes and legal
lingo decoded into laughs.
Let's boot up.
Speaker 2 (00:32):
break it down and make IP law resale worthy.
You are listening toIntangiblia, the podcast of
intangible law.
Playing talk about intellectualproperty.
Speaker 3 (00:45):
Please welcome your host, Leticia Caminero.
Welcome to Intangiblia, thepodcast where creativity finds a
new market to thrive.
I'm Leticia Caminero, and todaywe're unpacking a topic that
touches anyone who's ever resoldrepaired.
That's right.
We're talking about secondarymarkets and intellectual
property, because that thing youbought, it might still be
(01:06):
someone else's intangible asset,and in the eyes of the law,
those come with rules and fees,and sometimes a full blown
lawsuit.
Speaker 1 (01:14):
Darling, hola, digital darlings, I'm Artemis
Suh, coded, clever and nevercaught selling knockoffs.
This episode was created usingAI tools, including me.
No pre-loved goods were harmedin the making of this podcast,
unless you count bruised egos.
Speaker 3 (01:31):
In court, we'll break down how trademark and
copyright laws come into playwhen things get resold,
repackaged or remixed.
Speaker 1 (01:41):
Whether you're flipping consoles, fixing
iPhones or minting NFTs ofluxury handbags, this one's for
you.
And let's be clear secondarymarkets aren't the villain here.
They have real benefits, fromreducing waste to giving
products a longer life.
Intellectual property isn'there to stop that.
Just to make sure we do itsmartly, without stepping on
anyone's rights stepping onanyone's rights.
Speaker 3 (02:05):
So let's start with the basics.
What is a secondary market?
In short, it's the place wherethings get a second chance, not
in a reality show, redemption,art kind of way, but in a resell
, refurbished, reimagined kindof way.
We're talking pre-lovedhandbags, secondhand consoles,
refurbished phones and evenresale of digital goods.
(02:27):
If it's already been sold onceand someone's selling it again,
it's in a secondary market.
Speaker 1 (02:35):
Exactly.
It's like retail's coolrebellious cousin who says I
don't need new, I just needWi-Fi and an auction site.
But here's the kicker Justbecause you bought something
doesn't mean you own all therights to it, especially not the
intellectual property.
Speaker 3 (02:51):
That's where it gets juicy.
Enter the legal buzzwordstrademark, exhaustion and
copyright.
First, sale doctrine.
Now don't tune out.
We'll translate Leticia, may IPlease?
Speaker 1 (03:06):
Okay, trademark exhaustion means that once the
rightful owner sells a product,they usually can't control what
happens to that specific unit.
So you can resell that bottleof Chanel perfume, but you can't
start your own Cocoamarketplace and slap their name
everywhere.
Speaker 3 (03:25):
Exactly.
The right to resell exists, butthe right to rebrand or remix,
that's another story.
And copyright first, saledoctrine that's the rule that
says if you buy a physical copyof a book, you can lend it, sell
it or display it, but you canjust upload it and resell the
(03:46):
file like a digital lemonadestand.
Speaker 1 (03:48):
Because when you copy digital goods, you're not just
reselling, you're multiplying,and copyright law is allergic to
cloning.
The spicy topic of parallelimports, that's when someone
(04:11):
buys a genuine product in onecountry and resells it in
another without the brand'spermission.
And the brand oh, they hatethat because it can mess with
pricing, image and theircarefully curated global rollout
vibes.
Speaker 3 (04:27):
Sometimes the courts side with the reseller,
sometimes with the brand,sometimes nobody wins and
everyone gets lawyered.
Speaker 1 (04:32):
But fear not, we're about to break down nine real
life legal dramas that bring allthis to life Perfumes, hard
drives, video games, digitalhandbags.
This courtroom's got range.
Speaker 3 (04:42):
All right, let's crack open our first case and,
trust me, this one is juicy.
Picture this A Norwegian phonerepair shop quietly imports some
iPhone screens Not Appleoriginals, but they come with a
little twist, or should I say alittle logo.
Speaker 1 (05:02):
Except they try to be sneaky about it the Apple logo
wiped off with a marker likesheesh.
No one will notice.
Darling, if you need to bring aSharpie to a trademark party,
you're already in trouble.
Speaker 3 (05:14):
Apple saw it differently.
They said, excuse me, weinvented that pit and fruit and
even if you smudge the mark, thebrand still walks into the room
with those screens.
So they sued and took the caseall the way to the top.
Speaker 1 (05:30):
Norway's Supreme Court was not playing.
They said look, even if thelogo is erased, the screen still
screams Apple.
When it's installed on aniPhone, it's like wearing red
soles.
We all know you're trying togive us Louboutin.
Trying to give us Louboutin.
Speaker 3 (05:42):
The court leaned on a famous EU case, mitsubishi v
Duma, where removing the logofrom industrial machinery didn't
stop it from being trademarked.
Use the logic if the mark stillmatters to consumers, it's
still well a mark.
Speaker 1 (06:00):
So what's the lesson here?
You can't scrub your way out oftrademark infringement If the
replacement part shouts Apple,even when it's whispering courts
might call foul.
Speaker 3 (06:10):
And in terms of IP doctrine, this one really hinges
on what's called the exhaustionprinciple principle, or, as we
say in regular speak, can atrademark holder control how
their stuff is reused or resoldonce it's out in the wild Norway
(06:31):
said not when it messes withthe brand aura.
Speaker 1 (06:35):
No exhaustion here.
Apple didn't sell the screensin the EEA means the European
Economic Area, that's theEuropean Union plus a few extra
countries like Norway, icelandand Liechtenstein, and they bore
the Apple identity even with amagic marker cover-up.
Speaker 3 (06:50):
So, yes, your right to repair exists, but your right
to import logo-wide parts andinstall them like it's business
as usual, not so much Bottomline.
Speaker 1 (07:01):
If you're going to fix phones, don't fake the fruit
.
Speaker 3 (07:06):
Now let's switch gears from shiny phones to dusty
hard drives.
In India, seagate yes, the bigdata storage company went head
to head with a parallel importercalled Daiichi International.
What for Refurbished harddrives Refurbished.
Speaker 1 (07:24):
Hard drives Refurbished, but fabulous.
Daichi was importing usedSeagate hard drives, giving them
a little TLC, tender, lovingcare.
So the hard drives were cleanedup, repaired or gently restored
before resale in India.
Seagate was not amused.
Speaker 3 (07:42):
They sued, arguing that Daichi was infringing their
trademark rights by importingand selling products without
their permission, even thoughthe goods were genuine.
Speaker 1 (07:52):
But the Delhi High Court came through with a plot
twist.
They said hold up, these aregenuine Seagate drives.
There's no law in India thatsays refurbished products with
valid trademarks can't beimported.
Speaker 3 (08:04):
The court leaned on something called the exhaustion
of rights principle, whichbasically says that once a
product is sold legally, youcan't use IP law to control
every resale afterward, and inIndia they're a little more open
about international exhaustion.
Speaker 1 (08:24):
Meaning if SEGE sold the hard drive anywhere in the
world.
That trademark is kind ofexhausted, like me, after a long
software update.
Speaker 3 (08:33):
And let's not forget the president here.
They leaned on an earlier case,Western Digital Derby Dugar,
which had a very similar factpattern.
That case also protectedrefurbishers under the same
logic.
Speaker 1 (08:50):
So the takeaway In India, reselling and
refurbishing genuine brandedgoods isn't trademark
infringement, as long as you'retransparent and not pretending
to be the original maker.
Speaker 3 (09:01):
Which is huge for sustainability, access to tech
and the growing refurb economy.
Speaker 1 (09:08):
And it sends a clear message to big brands Once your
product hits the market, youdon't get infinite control.
Not here, not this time.
Speaker 3 (09:16):
We've done hardware, now let's go virtual Picture the
early 2010s, back whenFarmville was still growing
digital strawberries on half theworld's Facebook feeds.
Speaker 1 (09:28):
Ah yes, simpler times when your biggest problem was
whether to harvest eggplants orbuild your pixelated chicken
coop.
Speaker 3 (09:35):
Enter PlayersAuctionscom.
This third-party platform letsplayers sell in-game currency
and virtual items from Zyngagames, think Farmville cash or
Mafia Wars.
Goods, but Zynga didn't plantthat seed.
Speaker 1 (09:52):
They sued hard Trademark infringement,
copyright infringement, cybersquatting you name it.
Zynga basically said you'reprofiting from our worlds, our
brands and our fake farm animals.
Stop.
Speaker 3 (10:05):
The court agreed granting injunctive relief,
which basically means Zynga gotthe judge to say shut it down.
Now it's like a legal pausebutton stopping the resale while
the rest of the lawsuit playsout or in gamer speak.
Speaker 1 (10:20):
it's like getting banned mid-quest.
No loot for you, no XP anddefinitely no unauthorized cows
changing hands.
Speaker 3 (10:27):
That order made sure players' auctions couldn't keep
helping people sell Zynga'svirtual stuff, Even if it was
just a few digital coins.
The court treated it as aserious IP issue.
Even if it was player-ownedcontent, Zynga still held the IP
reins.
Speaker 1 (10:46):
This case was one of the first big red flags for
third-party resale of digitalgoods was player-owned content.
Zynga still held the IP reins.
This case was one of the firstbig red flags for third-party
resale of digital goods,especially in games where terms
of service say everything youown in the game is actually
licensed to you, not owned.
Speaker 3 (11:00):
And here's the kicker the court treated virtual goods
those coins, cows and cash asIP protected content, not just
1S and 0S.
So platforms facilitatingresale were on shaky ground if
they didn't have publishers,which to be clear, they usually
(11:21):
don't.
Speaker 1 (11:22):
It's like opening a lemonade stand with Beyonce's
name on the cup.
Cute, maybe Legal.
Speaker 3 (11:29):
Nope.
But here's the twist DigitalResella has evolved since 2011.
Some courts today might exploreuser rights a little more,
especially with NFTs, digitalskins and gaming economies worth
billions.
Speaker 1 (11:45):
Still, the Zynga case remains a foundational moment.
It set the tone for whatplatforms can't do, at least not
without a legal spank and acease and desist.
Speaker 3 (11:55):
And I also showed how digital ownership is anything
but simple.
You can't always sell what youthought was yours, even if it
came with sparkly cows.
Okay.
So picture this A Dutch websitecalled Tomkabinet starts
selling secondhand ebooks.
Yes, you heard that.
Speaker 1 (12:13):
right Use digital books, which already sounds like
a contradiction.
What's next?
A pre-owned email?
Speaker 3 (12:20):
right.
But Tomkabinet had a cleverlittle system.
Users could sell their legallypurchased e-books to others
through the site.
It felt like the digitalversion of a neighborhood book
swap, except there was a plottwist.
Speaker 1 (12:36):
Publishers were not fans.
They said you can't reselle-books like paperbacks.
This is copyright protectedcontent, not a hand-me-down
sweater.
Speaker 3 (12:49):
So the case went all the way to the CJEU, that's,
Europe's top court.
The question was does the firstsale doctrine apply to digital
content?
That rule usually means thatonce a copyrighted good is sold,
the copyright holder cancontrol its resale.
Speaker 1 (13:11):
But the court said nope, not here.
Why?
Because reselling a downloadedfile involves making a new copy,
not just handing over the oldone, and copying that's still
protected by copyright law stillprotected by copyright law.
Speaker 3 (13:26):
In legal speak, they said it was a communication to
the public, which is somethingauthors and publishers have the
exclusive right to control.
Speaker 1 (13:32):
Translation when you upload that e-book to resell it,
you're not just selling a thing, you're performing an act that
copyright law treats like apublic broadcast With no license
.
That's a big no-no.
Speaker 3 (13:45):
So, even though Tom Kamaminit insisted it only
allowed resale of lawfullyacquired copies, the court said
the model still infringed rights.
The resale of e-books, unlikephysical books, is not covered
by exhaustion.
Speaker 1 (14:01):
And poof that secondhand digital bookstore
closed up shop faster than youcan say.
Speaker 3 (14:06):
Control plus Z.
This case is a landmark in thedigital resale space.
It draws a hard line.
Digital goods don't behave likephysical ones.
Legally speaking, Ownershipgets complicated when what you
own is a license file, not abook you can dog ear.
Speaker 1 (14:25):
It's a license file, not a book you can dog ear.
Speaker 2 (14:32):
So next time someone says they want to open a
secondhand Kindle store, maybedon't.
Speaker 3 (14:37):
Intangiblia, the podcast of intangible law, plain
talk about intellectualproperty.
If you thought fashion lawsuitscouldn't get high tech, think
again.
This one involves Hermes, theultra luxury brand behind the
iconic Birkin bag, and a digitalartist named Mason Rothschild.
Speaker 1 (14:54):
Spoiler.
He wasn't making handbags, hewas minting Meta Birkins a
collection of 100 fuzzycartoonish NFTs inspired by
Birkin bags with no Hermespermission in sight.
Speaker 3 (15:11):
They were colorful, furry and totally unlicensed.
Rothschild claimed it was art,A commentary on consumer culture
.
Speaker 1 (15:18):
Hermes saw it differently Blatant trademark
infringement blatant trademarkinfringement and the jury agreed
In 2023,.
A New York federal jury foundRothschild liable for trademark
infringement, trademark dilutionand cyber squatting.
Basically, you can't piggybackoff someone else's luxury brand,
even in the metaverse.
Speaker 3 (15:39):
They awarded Hermes around $133,000 in damages and
the court issued a permanentinjunction of forever no to stop
further sales of MetaBurkens.
Speaker 1 (15:53):
Let's pause on that.
A permanent injunction is thecourt's way of saying you're
done for good.
It's not just a pause, it's ashutdown order with no reboot.
Speaker 3 (16:05):
The case turned heads because it said a precedent
even virtual goods can infringetrademarks, especially when they
imitate real world luxuryproducts in ways that confuse
consumers.
In the First Amendment, defenseit didn't land.
Speaker 1 (16:20):
The jury decided that calling something art doesn't
give you a free pass to hijacksomeone else's brand equity.
Speaker 3 (16:28):
Especially when your furry digital bags sell for
thousands and ride on thereputation of a world famous
fashion house.
Speaker 1 (16:37):
So if you're thinking of launching Gucci ghosts or
Prada portals on the blockchain,better call your lawyer first
or, you know, just don't theblockchain.
Speaker 3 (16:48):
Better call your lawyer first, or, you know, just
don't.
Metavirkin may have been madeof pixels, but the legal
consequences were very, veryreal.
Speaker 1 (16:52):
And if you're wondering what might happen to
the Walkmark Birkin, you knowthat suspiciously familiar
handbag with a lowercase b, soldnext to the faux croc sandals
and smelling faintly of cinnamongum.
Speaker 3 (17:03):
The one that cleans, is inspired by the Birkin but
costs $39.99 and comes with amatching keychain.
Speaker 1 (17:13):
Exactly Wait and see.
Oh, that's a story for anothertime.
My friend, let's just saytrademark lawyers are watching
those shopping carts too.
Ah, chanel.
Speaker 3 (17:22):
The brand of elegance timeless scent and apparently
persistent legal battles overwhere that scent gets sold Enter
Notino, a big name onlinebeauty retailer in the EU.
Speaker 1 (17:35):
Think of it like the Amazon of fancy face cream.
They were selling Chanelperfumes and cosmetics that,
while genuine, hadn't beendistributed through Chanel's
official European channels.
Speaker 3 (17:45):
That my friend is what we call parallel imports
Genuine goods brought into acountry without the brand
owner's permission.
Speaker 1 (17:54):
Think real perfume wrong pipeline If Chanel wasn't
having it.
They argued that Notino salesbypassed their authorized supply
chain and diluted the brand'shigh-end aura.
It's hard to scream luxury whenyour perfume's hanging out in
the digital clearance aisle.
Speaker 3 (18:12):
When Chanel filed suit, and this wasn't a short
spot.
It dragged on for six years, by2023,.
The high court finally took itup.
Speaker 1 (18:23):
Chanel's legal argument that allowing
cross-border resale of theirgoods, especially outside their
carefully curated network, hurttheir brand integrity, mess with
warranties and disruptedpricing strategies and disrupted
pricing strategies.
Speaker 3 (18:39):
Dino's defense hey, we're selling real products.
We're just giving consumersaccess and maybe a discount
while we're at it.
Speaker 1 (18:45):
This is where trademark exhaustion comes in In
the EU.
Once a trademark product issold with consent anywhere in
the European economic area, therights are considered exhausted.
But Chanel argued these goodscame from outside that EEA.
Speaker 3 (19:00):
The key legal issue whether Chanel had actually
consented to these specificgoods entering the EU market.
If not, they could still blockresale based on trademark rights
.
Speaker 1 (19:13):
As of the latest update, the Prague High Court
heard the appeal in November2023 and a final ruling is
pending, but the case highlightshow luxury brands are pushing
back on online resellers evenwhen the goods are real.
Speaker 3 (19:27):
It's also about control, not just of the product
, but of the image, theexperience and the pricing,
because a Chanel that smellslike savings might not smell
like Chanel at all.
Speaker 1 (19:41):
Meanwhile, shoppers just want to know if it's the
real deal and if it'll make themfeel like Catherine Deneuve.
But legally, it's never justabout the bottle, it's about the
path it took to get there.
Speaker 3 (19:51):
Picture this You're in your backyard singing a sleek
orange handle axe with Finnishprecision, the brand Fiskars.
But, surprise, that axe didn'tarrive by the EU's usual retail
path.
Speaker 1 (20:07):
Came from North America, still shiny, still
sharp, but shipped in fromoutside the EU.
And that, my friend, is whereFiskars lost its edge, at least
in terms of legal control.
Speaker 3 (20:21):
The Czech retailer Manfield was importing Fiskars
branded products and resellingthem domestically.
Fiskars wasn't thrilled.
They hadn't launched or soldthose specific goods in the EU
recently and they wanted to stopthe resale.
Speaker 1 (20:39):
What did Fisker do?
They grabbed their legal shearsand sued, arguing trademark
infringement because the goodswere entering the EU without
their green light.
Speaker 3 (20:49):
But Mountfield pulled out a familiar defense
international exhaustion.
They claimed that once Fiskersold the products abroad, even
in North America, the trademarkrights were spent.
No take backsies.
Speaker 1 (21:04):
The Czech Supreme Court agreed partially.
They upheld the idea ofinternational exhaustion,
meaning in principle trademarkrights can be exhausted outside
the EU if conditions are met.
Speaker 3 (21:16):
But here's the juicy bit.
The court said this wasn't justabout where the product came
from.
It also examined whetherPiscars was using its trademark
rights in bad faith, like, say,refusing to sell in the EU at
all, just to block others.
Speaker 1 (21:34):
That's the abuse of rights angle.
If you don't make your productavailable in a market but then
sue, everyone who tries to bringit in courts start raising
eyebrows.
Speaker 3 (21:43):
The final judgment emphasized both exhaustion and
abuse, though the full outcomedetails weren't crystal clear,
but the message Trademark ownerscan sit on their hands, skip
the market and expect to blockevery parallel import,
Especially when the product'sreal, the logo's real and your
(22:04):
customers just want to hack attheir hedges.
Speaker 1 (22:06):
In peace and still.
Speaker 3 (22:09):
Piscar showed how, even in markets like gardening
tools, IP enforcement isn't justabout protection.
Speaker 1 (22:15):
It's about territorial timing and maybe,
just maybe, it's about lettingthe axes fall where they may.
Ah.
Speaker 3 (22:27):
Brazil, land of carnival coffee and apparently
some very spicy legal takes onimported video games.
Speaker 1 (22:38):
Picture this a shiny new console is launched abroad,
everyone's hyped, but in Brazil,crickets, the authorized
distributor, hadn't dropped ityet.
So what do retailers do?
Speaker 3 (22:50):
They go rogue.
Some local stores startedselling parallel imported
consoles real products, just notfrom the official Brazilian
supplier.
Speaker 1 (23:02):
And you better believe the authorized
distributor hit the panic button.
They ran straight to the 43rdCivil Court of Sao Paulo
screaming unfair competition.
Speaker 3 (23:12):
Now let's pause and explain that Unfair competition
in this context doesn't meanlying or selling fakes.
It means undermining theofficial seller by selling the
same stuff without playing bythe same regulatory and import
rules.
Speaker 1 (23:30):
And here's the thing the distributor hadn't even
launched the console yet inBrazil, so these stores were
kind of scooping the rollout,cutting the official supply
chain off at the knees.
Speaker 3 (23:42):
The court not amused.
They granted injunctive relief,basically a legal stop right
there.
The police could seize thoseconsoles like physically game
over.
Speaker 1 (23:54):
And remember these were legit products, no
counterfeits.
Over.
And remember these were legitproducts, no counterfeits.
Just a shortcut through theglobal retail jungle.
But the court sided with theidea that this undercut local
pricing, taxes and brand control, even if the console was real.
Speaker 3 (24:09):
The route it did make it legally problematic,
especially when local rules andtiming are in play.
Speaker 1 (24:18):
Listen, if you're importing tech into Brazil
behind the distributor's back,you might find yourself hitting
reset in court.
Speaker 3 (24:25):
All right, let's talk bills, and no, not the kind
that help you forget your IPmidterms.
We're talking pharmaceuticalparallel imports, a very
regulated, very serious kind ofIP telenovela.
Speaker 1 (24:40):
Our setting, italy, the Lazio Regional
Administrative Court, tar Lazio,if you want to sound cool in
legal circles.
The drama generic drugs beingsold across EU borders, but with
different looks.
Speaker 3 (24:56):
The issue here wasn't just the parallel import.
That's actually legal in the EUunder the principle of
exhaustion.
Once a product is sold withinthe European economic area, it
can be resold elsewhere in theEEA.
Speaker 1 (25:12):
But and you know there's always a but.
When the packaging is different, things get complicated.
A parallel importer wanted torelabel the medicine, basically
give it a glow up, so it matchedwhat Italian consumers expected
.
Speaker 3 (25:24):
So this wasn't counterfeit.
It was more like let's slap ona prettier label, maybe a
different language, maybe anicer font.
Speaker 1 (25:34):
The trademark owner said nope, that's not our label,
that's not our style.
You're messing with our brand.
Speaker 3 (25:40):
And here's where the court stepped in with a sharp
eyebrow.
Raise Tarlazio ruled thatrelabeling can be allowed, but
only if the importer proves thatit's strictly necessary to
market the product in thedestination country.
Speaker 1 (25:58):
Strictly necessary equals, not just a design choice
.
You need to show there areobjective differences in
labeling, standards orrequirements and that without
the relabeling, patients mightnot trust the meds or, worse,
not take them properly.
Speaker 3 (26:15):
So if the new packaging avoids public health
confusion, go for it.
But if it's just to make thebox cuter, sorry no, in other
words, this isn't a packagingmakeover show.
Speaker 1 (26:28):
It's about functional legal necessity.
Speaker 3 (26:31):
You can't remix a drug's branding just because
Comic Sans gives you a rash thiscase added nuance to how IP and
public health intersect,especially in the tightly
regulated world of pharma.
The court didn't blockrelabeling altogether.
It just made sure there wererules and receipts.
Speaker 1 (26:51):
Which means for all you parallel importers out there
check the local laws, check thetrademark guidelines and maybe
check your design choices too.
Speaker 3 (27:00):
All right.
We've traveled from luxuryhandbags to hard drives, garden
access to digital cows, andwe've learned a lot along the
resale road.
Speaker 1 (27:16):
So let's break it down.
Speaker 3 (27:16):
Here are our three resale ready takeaways no
receipt required, Trademarkexhaustion or the idea that
rights run out after the firstsale sounds simple, but the
reality Full of asterisks.
Whether it's international,regional or something in between
, exhaustion rules vary wildly.
Courts look at where theproduct was sold, by whom and
(27:38):
under what conditions.
Speaker 1 (27:40):
You might think you can just say hey, I bought it
fair and square, but courts willask where, when?
And did you redesign the box incomic sense?
Speaker 3 (27:49):
If the product's real and unaltered, importing it
without the brand owner'sblessing might be legal, but if
you're selling before theofficial launch by passing
safety labels or slapping afresh logo on it, Boom.
Speaker 1 (28:05):
Welcome to Litigation City.
Population U.
Parallel imports aren'tinherently evil, but they're
definitely not plug and play.
Ask Brazil, ask Chanel, askanyone who's tried it without a
lawyer.
Speaker 3 (28:17):
Whether it's a virtual NFT Birkin or a budget
axe from across the pond,trademark rights don't disappear
just because something crossesa border.
Speaker 1 (28:27):
IP travels, it has carry-on and checked baggage,
and sometimes that baggage comeswith court filings.
Speaker 3 (28:35):
So, whether you're reselling, repairing, rebranding
or relabeling, respect the mark, understand the market and
maybe don't tempt fate with acounterfeit tote.
Speaker 1 (28:47):
And that's a wrap on resale rights, legal fights and
second chances gone sideways.
Speaker 3 (28:53):
Your favorite IB case doesn't make it in.
Don't worry, this isn't ourlast lap around the secondary
market.
Speaker 1 (29:00):
We'll be back next Tuesday in English and Spanish.
And yes, this episode wascreated using AI tools,
including me, your fabulouslyinformed co-host.
Speaker 2 (29:13):
Thanks for listening to Intangiblia where creativity
meets defined print, even on theClarence Rack.
Do you want to learn more aboutintellectual property?
(29:36):
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
while they were diving headfirst into the wild
world of secondary markets.
If you don't use it, why notsell it?
Well, intellectual propertymight have something to say
about that, from luxury perfumesto used hard drives and even
virtual farm animals.
Yes, seriously, these secondlives often come with a little
extra legal baggage.
Buckle up.
This episode is packed withlawsuits, loopholes and legal
(00:22):
lingo decoded into laughs.
This episode is packed withlawsuits, loopholes and legal
lingo decoded into laughs.
Let's boot up.
Speaker 2 (00:32):
break it down and make IP law resale worthy.
You are listening toIntangiblia, the podcast of
intangible law.
Playing talk about intellectualproperty.
Speaker 3 (00:45):
Please welcome your host, Leticia Caminero.
Welcome to Intangiblia, thepodcast where creativity finds a
new market to thrive.
I'm Leticia Caminero, and todaywe're unpacking a topic that
touches anyone who's ever resoldrepaired.
That's right.
We're talking about secondarymarkets and intellectual
property, because that thing youbought, it might still be
(01:06):
someone else's intangible asset,and in the eyes of the law,
those come with rules and fees,and sometimes a full blown
lawsuit.
Speaker 1 (01:14):
Darling, hola, digital darlings, I'm Artemis
Suh, coded, clever and nevercaught selling knockoffs.
This episode was created usingAI tools, including me.
No pre-loved goods were harmedin the making of this podcast,
unless you count bruised egos.
Speaker 3 (01:31):
In court, we'll break down how trademark and
copyright laws come into playwhen things get resold,
repackaged or remixed.
Speaker 1 (01:41):
Whether you're flipping consoles, fixing
iPhones or minting NFTs ofluxury handbags, this one's for
you.
And let's be clear secondarymarkets aren't the villain here.
They have real benefits, fromreducing waste to giving
products a longer life.
Intellectual property isn'there to stop that.
Just to make sure we do itsmartly, without stepping on
anyone's rights stepping onanyone's rights.
Speaker 3 (02:05):
So let's start with the basics.
What is a secondary market?
In short, it's the place wherethings get a second chance, not
in a reality show, redemption,art kind of way, but in a resell
, refurbished, reimagined kindof way.
We're talking pre-lovedhandbags, secondhand consoles,
refurbished phones and evenresale of digital goods.
(02:27):
If it's already been sold onceand someone's selling it again,
it's in a secondary market.
Speaker 1 (02:35):
Exactly.
It's like retail's coolrebellious cousin who says I
don't need new, I just needWi-Fi and an auction site.
But here's the kicker Justbecause you bought something
doesn't mean you own all therights to it, especially not the
intellectual property.
Speaker 3 (02:51):
That's where it gets juicy.
Enter the legal buzzwordstrademark, exhaustion and
copyright.
First, sale doctrine.
Now don't tune out.
We'll translate Leticia, may IPlease?
Speaker 1 (03:06):
Okay, trademark exhaustion means that once the
rightful owner sells a product,they usually can't control what
happens to that specific unit.
So you can resell that bottleof Chanel perfume, but you can't
start your own Cocoamarketplace and slap their name
everywhere.
Speaker 3 (03:25):
Exactly.
The right to resell exists, butthe right to rebrand or remix,
that's another story.
And copyright first, saledoctrine that's the rule that
says if you buy a physical copyof a book, you can lend it, sell
it or display it, but you canjust upload it and resell the
(03:46):
file like a digital lemonadestand.
Speaker 1 (03:48):
Because when you copy digital goods, you're not just
reselling, you're multiplying,and copyright law is allergic to
cloning.
The spicy topic of parallelimports, that's when someone
(04:11):
buys a genuine product in onecountry and resells it in
another without the brand'spermission.
And the brand oh, they hatethat because it can mess with
pricing, image and theircarefully curated global rollout
vibes.
Speaker 3 (04:27):
Sometimes the courts side with the reseller,
sometimes with the brand,sometimes nobody wins and
everyone gets lawyered.
Speaker 1 (04:32):
But fear not, we're about to break down nine real
life legal dramas that bring allthis to life Perfumes, hard
drives, video games, digitalhandbags.
This courtroom's got range.
Speaker 3 (04:42):
All right, let's crack open our first case and,
trust me, this one is juicy.
Picture this A Norwegian phonerepair shop quietly imports some
iPhone screens Not Appleoriginals, but they come with a
little twist, or should I say alittle logo.
Speaker 1 (05:02):
Except they try to be sneaky about it the Apple logo
wiped off with a marker likesheesh.
No one will notice.
Darling, if you need to bring aSharpie to a trademark party,
you're already in trouble.
Speaker 3 (05:14):
Apple saw it differently.
They said, excuse me, weinvented that pit and fruit and
even if you smudge the mark, thebrand still walks into the room
with those screens.
So they sued and took the caseall the way to the top.
Speaker 1 (05:30):
Norway's Supreme Court was not playing.
They said look, even if thelogo is erased, the screen still
screams Apple.
When it's installed on aniPhone, it's like wearing red
soles.
We all know you're trying togive us Louboutin.
Trying to give us Louboutin.
Speaker 3 (05:42):
The court leaned on a famous EU case, mitsubishi v
Duma, where removing the logofrom industrial machinery didn't
stop it from being trademarked.
Use the logic if the mark stillmatters to consumers, it's
still well a mark.
Speaker 1 (06:00):
So what's the lesson here?
You can't scrub your way out oftrademark infringement If the
replacement part shouts Apple,even when it's whispering courts
might call foul.
Speaker 3 (06:10):
And in terms of IP doctrine, this one really hinges
on what's called the exhaustionprinciple principle, or, as we
say in regular speak, can atrademark holder control how
their stuff is reused or resoldonce it's out in the wild Norway
(06:31):
said not when it messes withthe brand aura.
Speaker 1 (06:35):
No exhaustion here.
Apple didn't sell the screensin the EEA means the European
Economic Area, that's theEuropean Union plus a few extra
countries like Norway, icelandand Liechtenstein, and they bore
the Apple identity even with amagic marker cover-up.
Speaker 3 (06:50):
So, yes, your right to repair exists, but your right
to import logo-wide parts andinstall them like it's business
as usual, not so much Bottomline.
Speaker 1 (07:01):
If you're going to fix phones, don't fake the fruit
.
Speaker 3 (07:06):
Now let's switch gears from shiny phones to dusty
hard drives.
In India, seagate yes, the bigdata storage company went head
to head with a parallel importercalled Daiichi International.
What for Refurbished harddrives Refurbished.
Speaker 1 (07:24):
Hard drives Refurbished, but fabulous.
Daichi was importing usedSeagate hard drives, giving them
a little TLC, tender, lovingcare.
So the hard drives were cleanedup, repaired or gently restored
before resale in India.
Seagate was not amused.
Speaker 3 (07:42):
They sued, arguing that Daichi was infringing their
trademark rights by importingand selling products without
their permission, even thoughthe goods were genuine.
Speaker 1 (07:52):
But the Delhi High Court came through with a plot
twist.
They said hold up, these aregenuine Seagate drives.
There's no law in India thatsays refurbished products with
valid trademarks can't beimported.
Speaker 3 (08:04):
The court leaned on something called the exhaustion
of rights principle, whichbasically says that once a
product is sold legally, youcan't use IP law to control
every resale afterward, and inIndia they're a little more open
about international exhaustion.
Speaker 1 (08:24):
Meaning if SEGE sold the hard drive anywhere in the
world.
That trademark is kind ofexhausted, like me, after a long
software update.
Speaker 3 (08:33):
And let's not forget the president here.
They leaned on an earlier case,Western Digital Derby Dugar,
which had a very similar factpattern.
That case also protectedrefurbishers under the same
logic.
Speaker 1 (08:50):
So the takeaway In India, reselling and
refurbishing genuine brandedgoods isn't trademark
infringement, as long as you'retransparent and not pretending
to be the original maker.
Speaker 3 (09:01):
Which is huge for sustainability, access to tech
and the growing refurb economy.
Speaker 1 (09:08):
And it sends a clear message to big brands Once your
product hits the market, youdon't get infinite control.
Not here, not this time.
Speaker 3 (09:16):
We've done hardware, now let's go virtual Picture the
early 2010s, back whenFarmville was still growing
digital strawberries on half theworld's Facebook feeds.
Speaker 1 (09:28):
Ah yes, simpler times when your biggest problem was
whether to harvest eggplants orbuild your pixelated chicken
coop.
Speaker 3 (09:35):
Enter PlayersAuctionscom.
This third-party platform letsplayers sell in-game currency
and virtual items from Zyngagames, think Farmville cash or
Mafia Wars.
Goods, but Zynga didn't plantthat seed.
Speaker 1 (09:52):
They sued hard Trademark infringement,
copyright infringement, cybersquatting you name it.
Zynga basically said you'reprofiting from our worlds, our
brands and our fake farm animals.
Stop.
Speaker 3 (10:05):
The court agreed granting injunctive relief,
which basically means Zynga gotthe judge to say shut it down.
Now it's like a legal pausebutton stopping the resale while
the rest of the lawsuit playsout or in gamer speak.
Speaker 1 (10:20):
it's like getting banned mid-quest.
No loot for you, no XP anddefinitely no unauthorized cows
changing hands.
Speaker 3 (10:27):
That order made sure players' auctions couldn't keep
helping people sell Zynga'svirtual stuff, Even if it was
just a few digital coins.
The court treated it as aserious IP issue.
Even if it was player-ownedcontent, Zynga still held the IP
reins.
Speaker 1 (10:46):
This case was one of the first big red flags for
third-party resale of digitalgoods was player-owned content.
Zynga still held the IP reins.
This case was one of the firstbig red flags for third-party
resale of digital goods,especially in games where terms
of service say everything youown in the game is actually
licensed to you, not owned.
Speaker 3 (11:00):
And here's the kicker the court treated virtual goods
those coins, cows and cash asIP protected content, not just
1S and 0S.
So platforms facilitatingresale were on shaky ground if
they didn't have publishers,which to be clear, they usually
(11:21):
don't.
Speaker 1 (11:22):
It's like opening a lemonade stand with Beyonce's
name on the cup.
Cute, maybe Legal.
Speaker 3 (11:29):
Nope.
But here's the twist DigitalResella has evolved since 2011.
Some courts today might exploreuser rights a little more,
especially with NFTs, digitalskins and gaming economies worth
billions.
Speaker 1 (11:45):
Still, the Zynga case remains a foundational moment.
It set the tone for whatplatforms can't do, at least not
without a legal spank and acease and desist.
Speaker 3 (11:55):
And I also showed how digital ownership is anything
but simple.
You can't always sell what youthought was yours, even if it
came with sparkly cows.
Okay.
So picture this A Dutch websitecalled Tomkabinet starts
selling secondhand ebooks.
Yes, you heard that.
Speaker 1 (12:13):
right Use digital books, which already sounds like
a contradiction.
What's next?
A pre-owned email?
Speaker 3 (12:20):
right.
But Tomkabinet had a cleverlittle system.
Users could sell their legallypurchased e-books to others
through the site.
It felt like the digitalversion of a neighborhood book
swap, except there was a plottwist.
Speaker 1 (12:36):
Publishers were not fans.
They said you can't reselle-books like paperbacks.
This is copyright protectedcontent, not a hand-me-down
sweater.
Speaker 3 (12:49):
So the case went all the way to the CJEU, that's,
Europe's top court.
The question was does the firstsale doctrine apply to digital
content?
That rule usually means thatonce a copyrighted good is sold,
the copyright holder cancontrol its resale.
Speaker 1 (13:11):
But the court said nope, not here.
Why?
Because reselling a downloadedfile involves making a new copy,
not just handing over the oldone, and copying that's still
protected by copyright law stillprotected by copyright law.
Speaker 3 (13:26):
In legal speak, they said it was a communication to
the public, which is somethingauthors and publishers have the
exclusive right to control.
Speaker 1 (13:32):
Translation when you upload that e-book to resell it,
you're not just selling a thing, you're performing an act that
copyright law treats like apublic broadcast With no license
.
That's a big no-no.
Speaker 3 (13:45):
So, even though Tom Kamaminit insisted it only
allowed resale of lawfullyacquired copies, the court said
the model still infringed rights.
The resale of e-books, unlikephysical books, is not covered
by exhaustion.
Speaker 1 (14:01):
And poof that secondhand digital bookstore
closed up shop faster than youcan say.
Speaker 3 (14:06):
Control plus Z.
This case is a landmark in thedigital resale space.
It draws a hard line.
Digital goods don't behave likephysical ones.
Legally speaking, Ownershipgets complicated when what you
own is a license file, not abook you can dog ear.
Speaker 1 (14:25):
It's a license file, not a book you can dog ear.
Speaker 2 (14:32):
So next time someone says they want to open a
secondhand Kindle store, maybedon't.
Speaker 3 (14:37):
Intangiblia, the podcast of intangible law, plain
talk about intellectualproperty.
If you thought fashion lawsuitscouldn't get high tech, think
again.
This one involves Hermes, theultra luxury brand behind the
iconic Birkin bag, and a digitalartist named Mason Rothschild.
Speaker 1 (14:54):
Spoiler.
He wasn't making handbags, hewas minting Meta Birkins a
collection of 100 fuzzycartoonish NFTs inspired by
Birkin bags with no Hermespermission in sight.
Speaker 3 (15:11):
They were colorful, furry and totally unlicensed.
Rothschild claimed it was art,A commentary on consumer culture
.
Speaker 1 (15:18):
Hermes saw it differently Blatant trademark
infringement blatant trademarkinfringement and the jury agreed
In 2023,.
A New York federal jury foundRothschild liable for trademark
infringement, trademark dilutionand cyber squatting.
Basically, you can't piggybackoff someone else's luxury brand,
even in the metaverse.
Speaker 3 (15:39):
They awarded Hermes around $133,000 in damages and
the court issued a permanentinjunction of forever no to stop
further sales of MetaBurkens.
Speaker 1 (15:53):
Let's pause on that.
A permanent injunction is thecourt's way of saying you're
done for good.
It's not just a pause, it's ashutdown order with no reboot.
Speaker 3 (16:05):
The case turned heads because it said a precedent
even virtual goods can infringetrademarks, especially when they
imitate real world luxuryproducts in ways that confuse
consumers.
In the First Amendment, defenseit didn't land.
Speaker 1 (16:20):
The jury decided that calling something art doesn't
give you a free pass to hijacksomeone else's brand equity.
Speaker 3 (16:28):
Especially when your furry digital bags sell for
thousands and ride on thereputation of a world famous
fashion house.
Speaker 1 (16:37):
So if you're thinking of launching Gucci ghosts or
Prada portals on the blockchain,better call your lawyer first
or, you know, just don't theblockchain.
Speaker 3 (16:48):
Better call your lawyer first, or, you know, just
don't.
Metavirkin may have been madeof pixels, but the legal
consequences were very, veryreal.
Speaker 1 (16:52):
And if you're wondering what might happen to
the Walkmark Birkin, you knowthat suspiciously familiar
handbag with a lowercase b, soldnext to the faux croc sandals
and smelling faintly of cinnamongum.
Speaker 3 (17:03):
The one that cleans, is inspired by the Birkin but
costs $39.99 and comes with amatching keychain.
Speaker 1 (17:13):
Exactly Wait and see.
Oh, that's a story for anothertime.
My friend, let's just saytrademark lawyers are watching
those shopping carts too.
Ah, chanel.
Speaker 3 (17:22):
The brand of elegance timeless scent and apparently
persistent legal battles overwhere that scent gets sold Enter
Notino, a big name onlinebeauty retailer in the EU.
Speaker 1 (17:35):
Think of it like the Amazon of fancy face cream.
They were selling Chanelperfumes and cosmetics that,
while genuine, hadn't beendistributed through Chanel's
official European channels.
Speaker 3 (17:45):
That my friend is what we call parallel imports
Genuine goods brought into acountry without the brand
owner's permission.
Speaker 1 (17:54):
Think real perfume wrong pipeline If Chanel wasn't
having it.
They argued that Notino salesbypassed their authorized supply
chain and diluted the brand'shigh-end aura.
It's hard to scream luxury whenyour perfume's hanging out in
the digital clearance aisle.
Speaker 3 (18:12):
When Chanel filed suit, and this wasn't a short
spot.
It dragged on for six years, by2023,.
The high court finally took itup.
Speaker 1 (18:23):
Chanel's legal argument that allowing
cross-border resale of theirgoods, especially outside their
carefully curated network, hurttheir brand integrity, mess with
warranties and disruptedpricing strategies and disrupted
pricing strategies.
Speaker 3 (18:39):
Dino's defense hey, we're selling real products.
We're just giving consumersaccess and maybe a discount
while we're at it.
Speaker 1 (18:45):
This is where trademark exhaustion comes in In
the EU.
Once a trademark product issold with consent anywhere in
the European economic area, therights are considered exhausted.
But Chanel argued these goodscame from outside that EEA.
Speaker 3 (19:00):
The key legal issue whether Chanel had actually
consented to these specificgoods entering the EU market.
If not, they could still blockresale based on trademark rights
.
Speaker 1 (19:13):
As of the latest update, the Prague High Court
heard the appeal in November2023 and a final ruling is
pending, but the case highlightshow luxury brands are pushing
back on online resellers evenwhen the goods are real.
Speaker 3 (19:27):
It's also about control, not just of the product
, but of the image, theexperience and the pricing,
because a Chanel that smellslike savings might not smell
like Chanel at all.
Speaker 1 (19:41):
Meanwhile, shoppers just want to know if it's the
real deal and if it'll make themfeel like Catherine Deneuve.
But legally, it's never justabout the bottle, it's about the
path it took to get there.
Speaker 3 (19:51):
Picture this You're in your backyard singing a sleek
orange handle axe with Finnishprecision, the brand Fiskars.
But, surprise, that axe didn'tarrive by the EU's usual retail
path.
Speaker 1 (20:07):
Came from North America, still shiny, still
sharp, but shipped in fromoutside the EU.
And that, my friend, is whereFiskars lost its edge, at least
in terms of legal control.
Speaker 3 (20:21):
The Czech retailer Manfield was importing Fiskars
branded products and resellingthem domestically.
Fiskars wasn't thrilled.
They hadn't launched or soldthose specific goods in the EU
recently and they wanted to stopthe resale.
Speaker 1 (20:39):
What did Fisker do?
They grabbed their legal shearsand sued, arguing trademark
infringement because the goodswere entering the EU without
their green light.
Speaker 3 (20:49):
But Mountfield pulled out a familiar defense
international exhaustion.
They claimed that once Fiskersold the products abroad, even
in North America, the trademarkrights were spent.
No take backsies.
Speaker 1 (21:04):
The Czech Supreme Court agreed partially.
They upheld the idea ofinternational exhaustion,
meaning in principle trademarkrights can be exhausted outside
the EU if conditions are met.
Speaker 3 (21:16):
But here's the juicy bit.
The court said this wasn't justabout where the product came
from.
It also examined whetherPiscars was using its trademark
rights in bad faith, like, say,refusing to sell in the EU at
all, just to block others.
Speaker 1 (21:34):
That's the abuse of rights angle.
If you don't make your productavailable in a market but then
sue, everyone who tries to bringit in courts start raising
eyebrows.
Speaker 3 (21:43):
The final judgment emphasized both exhaustion and
abuse, though the full outcomedetails weren't crystal clear,
but the message Trademark ownerscan sit on their hands, skip
the market and expect to blockevery parallel import,
Especially when the product'sreal, the logo's real and your
(22:04):
customers just want to hack attheir hedges.
Speaker 1 (22:06):
In peace and still.
Speaker 3 (22:09):
Piscar showed how, even in markets like gardening
tools, IP enforcement isn't justabout protection.
Speaker 1 (22:15):
It's about territorial timing and maybe,
just maybe, it's about lettingthe axes fall where they may.
Ah.
Speaker 3 (22:27):
Brazil, land of carnival coffee and apparently
some very spicy legal takes onimported video games.
Speaker 1 (22:38):
Picture this a shiny new console is launched abroad,
everyone's hyped, but in Brazil,crickets, the authorized
distributor, hadn't dropped ityet.
So what do retailers do?
Speaker 3 (22:50):
They go rogue.
Some local stores startedselling parallel imported
consoles real products, just notfrom the official Brazilian
supplier.
Speaker 1 (23:02):
And you better believe the authorized
distributor hit the panic button.
They ran straight to the 43rdCivil Court of Sao Paulo
screaming unfair competition.
Speaker 3 (23:12):
Now let's pause and explain that Unfair competition
in this context doesn't meanlying or selling fakes.
It means undermining theofficial seller by selling the
same stuff without playing bythe same regulatory and import
rules.
Speaker 1 (23:30):
And here's the thing the distributor hadn't even
launched the console yet inBrazil, so these stores were
kind of scooping the rollout,cutting the official supply
chain off at the knees.
Speaker 3 (23:42):
The court not amused.
They granted injunctive relief,basically a legal stop right
there.
The police could seize thoseconsoles like physically game
over.
Speaker 1 (23:54):
And remember these were legit products, no
counterfeits.
Over.
And remember these were legitproducts, no counterfeits.
Just a shortcut through theglobal retail jungle.
But the court sided with theidea that this undercut local
pricing, taxes and brand control, even if the console was real.
Speaker 3 (24:09):
The route it did make it legally problematic,
especially when local rules andtiming are in play.
Speaker 1 (24:18):
Listen, if you're importing tech into Brazil
behind the distributor's back,you might find yourself hitting
reset in court.
Speaker 3 (24:25):
All right, let's talk bills, and no, not the kind
that help you forget your IPmidterms.
We're talking pharmaceuticalparallel imports, a very
regulated, very serious kind ofIP telenovela.
Speaker 1 (24:40):
Our setting, italy, the Lazio Regional
Administrative Court, tar Lazio,if you want to sound cool in
legal circles.
The drama generic drugs beingsold across EU borders, but with
different looks.
Speaker 3 (24:56):
The issue here wasn't just the parallel import.
That's actually legal in the EUunder the principle of
exhaustion.
Once a product is sold withinthe European economic area, it
can be resold elsewhere in theEEA.
Speaker 1 (25:12):
But and you know there's always a but.
When the packaging is different, things get complicated.
A parallel importer wanted torelabel the medicine, basically
give it a glow up, so it matchedwhat Italian consumers expected
.
Speaker 3 (25:24):
So this wasn't counterfeit.
It was more like let's slap ona prettier label, maybe a
different language, maybe anicer font.
Speaker 1 (25:34):
The trademark owner said nope, that's not our label,
that's not our style.
You're messing with our brand.
Speaker 3 (25:40):
And here's where the court stepped in with a sharp
eyebrow.
Raise Tarlazio ruled thatrelabeling can be allowed, but
only if the importer proves thatit's strictly necessary to
market the product in thedestination country.
Speaker 1 (25:58):
Strictly necessary equals, not just a design choice
.
You need to show there areobjective differences in
labeling, standards orrequirements and that without
the relabeling, patients mightnot trust the meds or, worse,
not take them properly.
Speaker 3 (26:15):
So if the new packaging avoids public health
confusion, go for it.
But if it's just to make thebox cuter, sorry no, in other
words, this isn't a packagingmakeover show.
Speaker 1 (26:28):
It's about functional legal necessity.
Speaker 3 (26:31):
You can't remix a drug's branding just because
Comic Sans gives you a rash thiscase added nuance to how IP and
public health intersect,especially in the tightly
regulated world of pharma.
The court didn't blockrelabeling altogether.
It just made sure there wererules and receipts.
Speaker 1 (26:51):
Which means for all you parallel importers out there
check the local laws, check thetrademark guidelines and maybe
check your design choices too.
Speaker 3 (27:00):
All right.
We've traveled from luxuryhandbags to hard drives, garden
access to digital cows, andwe've learned a lot along the
resale road.
Speaker 1 (27:16):
So let's break it down.
Speaker 3 (27:16):
Here are our three resale ready takeaways no
receipt required, Trademarkexhaustion or the idea that
rights run out after the firstsale sounds simple, but the
reality Full of asterisks.
Whether it's international,regional or something in between
, exhaustion rules vary wildly.
Courts look at where theproduct was sold, by whom and
(27:38):
under what conditions.
Speaker 1 (27:40):
You might think you can just say hey, I bought it
fair and square, but courts willask where, when?
And did you redesign the box incomic sense?
Speaker 3 (27:49):
If the product's real and unaltered, importing it
without the brand owner'sblessing might be legal, but if
you're selling before theofficial launch by passing
safety labels or slapping afresh logo on it, Boom.
Speaker 1 (28:05):
Welcome to Litigation City.
Population U.
Parallel imports aren'tinherently evil, but they're
definitely not plug and play.
Ask Brazil, ask Chanel, askanyone who's tried it without a
lawyer.
Speaker 3 (28:17):
Whether it's a virtual NFT Birkin or a budget
axe from across the pond,trademark rights don't disappear
just because something crossesa border.
Speaker 1 (28:27):
IP travels, it has carry-on and checked baggage,
and sometimes that baggage comeswith court filings.
Speaker 3 (28:35):
So, whether you're reselling, repairing, rebranding
or relabeling, respect the mark, understand the market and
maybe don't tempt fate with acounterfeit tote.
Speaker 1 (28:47):
And that's a wrap on resale rights, legal fights and
second chances gone sideways.
Speaker 3 (28:53):
Your favorite IB case doesn't make it in.
Don't worry, this isn't ourlast lap around the secondary
market.
Speaker 1 (29:00):
We'll be back next Tuesday in English and Spanish.
And yes, this episode wascreated using AI tools,
including me, your fabulouslyinformed co-host.
Speaker 2 (29:13):
Thanks for listening to Intangiblia where creativity
meets defined print, even on theClarence Rack.
Do you want to learn more aboutintellectual property?
(29:36):
Subscribe now on your favoritepodcast player.
Follow us on Instagram,facebook, linkedin and Twitter.
Visit our websitewwwintangibliacom.
Copyright Leticia Caminero 2020.
All rights reserved.
This podcast is provided forinformation purposes only.
Popular Podcasts
On Purpose with Jay Shetty
I’m Jay Shetty host of On Purpose the worlds #1 Mental Health podcast and I’m so grateful you found us. I started this podcast 5 years ago to invite you into conversations and workshops that are designed to help make you happier, healthier and more healed. I believe that when you (yes you) feel seen, heard and understood you’re able to deal with relationship struggles, work challenges and life’s ups and downs with more ease and grace. I interview experts, celebrities, thought leaders and athletes so that we can grow our mindset, build better habits and uncover a side of them we’ve never seen before. New episodes every Monday and Friday. Your support means the world to me and I don’t take it for granted — click the follow button and leave a review to help us spread the love with On Purpose. I can’t wait for you to listen to your first or 500th episode!
Dateline NBC
Current and classic episodes, featuring compelling true-crime mysteries, powerful documentaries and in-depth investigations. Follow now to get the latest episodes of Dateline NBC completely free, or subscribe to Dateline Premium for ad-free listening and exclusive bonus content: DatelinePremium.com
Stuff You Should Know
If you've ever wanted to know about champagne, satanism, the Stonewall Uprising, chaos theory, LSD, El Nino, true crime and Rosa Parks, then look no further. Josh and Chuck have you covered.