Taken from the briefing Kirtsaeng v. John Wiley & Sons, Inc.: First Sale Doctrine Applies to Goods Made Abroad and Imported Without the Permission of the Copyright Holder recorded April, 2013.
On March 19, 2013, the United States Supreme Court in
Supap Kirtsaeng v. John Wiley & Sons, Inc. reversed the Second Circuit Court of Appeals and held (6-3) that the first sale doctrine set forth in 17 U.S.C. § 109(a) of the Copyright Act applies to goods manufactured by the copyright holder abroad. The first sale doctrine provides that a buyer of a copyright work "lawfully made under this title" is free to sell it as the buyer chooses. John Wiley had sued Kirtsaeng when he purchased Wiley’s texts authorized for sale abroad and resold them in this country. Wiley successfully argued below that Kirtsaeng violated Section 602 (a)(1)of the Copyright Act, which prohibits importing copyrighted works without the copyright owner’s permission and Section 106, which prohibits distributing them. The lower courts held that the phrase "lawfully made under this title" in the first sale doctrine referred only to books made in the United States, where the Copyright Act applies.
Justice Breyer writing for the Court disagreed, refusing to place a geographical limitation on the first sale doctrine. The Court held that doctrine applies to copies made anywhere "as long as their manufacture met the requirements of American copyright law." Since the textbooks Kirtsaeng was importing were printed with the permission of the copyright holders, they were legal, and so were his imports. The majority was concerned by what it referred to as “the parade of horribles” voiced by booksellers, libraries, technology companies, retailers and museums if the first sale doctrine were limited to copyright works made in the US. In that instance, “a tourist” who bought in Paris “a dozen copies of a foreign work for American friends might find that she had violated the copyright law.”
Justice Ginsburg strongly dissented noting that, were Kirtsaeng free to import international editions without concern for copyright liability, others will follow, leading to the end of any price differential between US and foreign goods. But the majority opinion answered that concern stating that the exclusive rights of a copyright holder do not “include a right to divide markets or a concomitant right to charge different purchasers different prices for the same book."
This briefing was presented by Andrew Berger of the law firm Tannenbaum Helpern Syracuse & Hirschtritt LLP, William Dunnegan of Dunnegan & Scileppi LLC, counsel for John Wiley & Sons in district court and the court of appeals, and Scott Bain.
Lecture Topics [Total Time: 01:04:44]
- The implications of the decision for international publishers, booksellers, museums, technology companies, libraries, retailers and importers
- The narrow scope of the import ban set forth in Section 602 (a)(1)of the Copyright Act after Kirtsaeng
- The potential for Congressional action/reform as suggested by Justice Kagan and by the Register of Copyrights, Maria Pallente
- The potential impact on other areas of IP law, including patents and trademarks
Presentation Material
- Kirtsaeng v. John Wiley & Sons, Inc.: First Sale Doctrine Applies to Goods Made Abroad and Imported Without the Permission of the Copyright Holder
- Kirtsaeng v. John Wiley & Sons, Inc.: Importation Right and the First Sale Doctrine
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