First Sale Doctrine

First Sale Doctrine

U.S. Supreme Court's Decision in Kirtsaeng v. John Wiley & Sons in 2013

United States views on international law [1] in relation to U.S. Supreme Court's Decision in Kirtsaeng v. John Wiley & Sons: On March 19, 2013, the U.S. Supreme Court issued its decision in Kirtsaeng v. John Wiley & Sons, 133 S.Ct. 1351 (2013). Mr. Kirtsaeng, the petitioner, had resold in the United States copies of texts published abroad by respondent John Wiley & Sons, which had been purchased by his relatives in Thailand and sent to him while he studied in the United States. Wiley claimed copyright infringement based on the prohibition in Section 602(a)(1) of the Copyright Act on importation into the United States without the copyright owner's permission of works acquired outside of the United States. The district court and appeals court both agreed with Wiley. The United States filed an amicus brief in the Supreme Court in support of affirming the appeals court. The U.S. brief is available at (Secretary of State website) state.gov/s/l/c8183.htm. The petitioner asserted that he was justified under the “first sale” doctrine, also codified in the Copyright Act in Section 109, which allows the owner of a copy “lawfully made under this title” to sell or otherwise dispose of that copy. Respondent argued, as did the U.S. amicus brief, that “under this title” restricts application of the first sale doctrine to copies made in the United States. A majority of the Supreme Court disagreed, reversing and remanding. The introduction to the majority opinion of the Supreme Court appears below.

Some Aspects of U.S. Supreme Court's Decision in Kirtsaeng v. John Wiley & Sons

Section 106 of the Copyright Act grants “the owner of copyright under this title” certain “exclusive rights,” including the right “to distribute copies … of the copyrighted work to the public by sale or other transfer of ownership.” 17 U.S.C. § 106(3). These rights are qualified, however, by the application of various limitations set forth in the next several sections of the Act, §§ 107 through 122. Those sections, typically entitled “Limitations on exclusive rights,” include, for example, the principle of “fair use” (§ 107), permission for limited library archival reproduction, (§ 108), and the doctrine at issue here, the “first sale” doctrine (§ 109). Section 109(a) sets forth the “first sale” doctrine as follows:

“Notwithstanding the provisions of section 106(3) [the section that grants the owner exclusive distribution rights], the owner of a particular copy or phonorecord lawfully made under this title … is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” (Emphasis added.)

Developments

Thus, even though § 106(3) forbids distribution of a copy of, say, the copyrighted novel Herzog without the copyright owner's permission, § 109(a) adds that, once a copy of Herzog has been lawfully sold (or its ownership otherwise lawfully transferred), the buyer of that copy and subsequent owners are free to dispose of it as they wish. In copyright jargon, the “first sale” has “exhausted” the copyright owner's § 106(3) exclusive distribution right.

What, however, if the copy of Herzog was printed abroad and then initially sold with the copyright owner's permission? Does the “first sale” doctrine still apply? Is the buyer, like the buyer of a domestically manufactured copy, free to bring the copy into the United States and dispose of it as he or she wishes?

Details

To put the matter technically, an “importation” provision, § 602(a)(1), says that

“[i]mportation into the United States, without the authority of the owner of copyright under this title, of copies … of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies … under section 106….” 17 U.S.C. § 602(a)(1) (2006 ed., Supp. V) (emphasis added).

More

Thus § 602(a)(1) makes clear that importing a copy without permission violates the owner's exclusive distribution right. But in doing so, § 602(a)(1) refers explicitly to the § 106(3) exclusive distribution right. As we have just said, § 106 is by its terms “[s]ubject to” the various doctrines and principles contained in §§ 107 through 122, including § 109(a)'s “first sale” limitation. Do those same modifications apply—in particular, does the “first sale” modification apply—when considering whether § 602(a)(1) prohibits importing a copy?

In Quality King Distributors, Inc. v. L'anza Research Int'l, Inc., 523 U.S. 135, 145, 118 S.Ct. 1125, 140 L.Ed.2d 254 (1998), we held that § 602(a)(1)'s reference to § 106(3)'s exclusive distribution right incorporates the later subsections' limitations, including, in particular, the “first sale” doctrine of § 109. Thus, it might seem that, § 602(a)(1) notwithstanding, one who buys a copy abroad can freely import that copy into the United States and dispose of it, just as he could had he bought the copy in the United States.

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But Quality King considered an instance in which the copy, though purchased abroad, was initially manufactured in the United States (and then sent abroad and sold). This case is like Quality King but for one important fact. The copies at issue here were manufactured abroad. That fact is important because § 109(a) says that the “first sale” doctrine applies to “a particular copy or phonorecord lawfully made under this title.” And we must decide here whether the five words, “lawfully made under this title,” make a critical legal difference.

U.S. Supreme Court's Decision in Kirtsaeng v. John Wiley & Sons in 2013 (Continuation)

United States views on international law [1] in relation to U.S. Supreme Court's Decision in Kirtsaeng v. John Wiley & Sons: Putting section numbers to the side, we ask whether the “first sale” doctrine applies to protect a buyer or other lawful owner of a copy (of a copyrighted work) lawfully manufactured abroad. Can that buyer bring that copy into the United States (and sell it or give it away) without obtaining permission to do so from the copyright owner? Can, for example, someone who purchases, say at a used bookstore, a book printed abroad subsequently resell it without the copyright owner's permission?

In our view, the answers to these questions are, yes. We hold that the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad.

Resources

Notes

  1. U.s. Supreme Court's Decision in Kirtsaeng v. John Wiley & Sons in the Digest of United States Practice in International Law

Resources

Notes

  1. U.s. Supreme Court's Decision in Kirtsaeng v. John Wiley & Sons in the Digest of United States Practice in International Law

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