Omega S.A. v. Costco Wholesale Corporation

Opinion by Judge NELSON; Concurrence by Judge WARDLAW.

OPINION

This case involves two big commercial players: Costco Wholesale Corporation (“Costco”), a discount warehouse, and Omega S.A. (“Omega”), a global purveyor of luxury watches. Omega appeals the district court’s decisions granting summary judgment and attorney’s fees to Costco. We have jurisdiction pursuant to 28 U.S.C. § 1291 , and we affirm.

I. ^Background

Omega manufactures luxury watches in Switzerland, which it distributes around the world. One of Omega’s high-end watches, the Seamaster, sometimes bears an engraving of the Omega Globe Design (“Omega Globe”). Omega obtained a copyright for the Omega Globe in March 2003. Omega began selling some Seamas-ter watches with engraved reproductions of the Omega Globe in September 2003. *694 Omega distributes its watches, including the Seamaster, through authorized distributors and dealers throughout the world, including the United States. In 2003, Costco and Omega discussed the possibility of Costco carrying Omega watches. The parties did not come to an agreement and Costco never became an authorized Omega retailer.

In 2004, Costco purchased 117 Seamas-ter watches bearing…

concurring in the judgment:

The district court granted summary judgment and awarded attorney’s fees to Costco based on the defense of copyright misuse. The majority affirms the district court relying upon the Kirtsaeng-resur-rected first sale doctrine; a doctrine we held inapplicable the first time around, and which the parties did not brief or argue in this appeal. 1 Indeed, as Costco’s counsel confirmed at oral argument, “the first sale issue per se is not at issue in this appeal.” I concur in the judgment affirming the district court, but do so based on the district court’s rationale for granting summary judgment — copyright misuse — and the arguments actually presented to us.

I.

The majority opinion fails to do justice to the facts presented by this unique lawsuit. Costco is one of America’s largest retailers. It is well known that Costco’s discount warehouses sell .everything from pallets of toilet paper to slices of pizza. But only card-carrying members know that Costco also sells a wide range of luxury goods, including Dom Pérignon Champagne, Waterford crystal, Dolce & Gabbana handbags, and, until this lawsuit was filed, Omega watches.

Omega sued Costco for copyright…

I. Background

Omega manufactures luxury watches in Switzerland, which it distributes around the world. One of Omega’s high- end watches, the Seamaster, sometimes bears an engraving of the Omega Globe Design (“Omega Globe”). Omega obtained a copyright for the Omega Globe in March 2003. Omega began selling some Seamaster watches with engraved reproductions of the Omega Globe in September 2003. Omega distributes its watches, including the Seamaster, through authorized distributors and dealers throughout the world, including the United States. In 2003, Costco and Omega discussed the possibility of Costco carrying Omega watches. The parties did not come to an agreement and Costco never became an authorized Omega retailer.

In 2004, Costco purchased 117 Seamaster watches bearing the Omega Globe on the so-called “gray market.” Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982, 984 (9th Cir. 2008) (“Omega I”), abrogated by Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013). First, Omega sold the watches to authorized foreign distributors. Id. Next, unidentified third parties purchased the watches and sold them to ENE Limited, a New York company. Id. Costco purchased the…