IMPORTS

Kirtsaeng v. John Wiley & Sons, Inc. (11-697)

The Respondent, John Wiley & Sons, Inc. (“Wiley”), brought a claim against the Petitioner, Supap Kirtsaeng d/b/a Bluechristine99 (“Kirtsaeng”), for violation of the Copyright Act, 17 U.S.C. §§ 101–810. While attending school in the U.S., Kirtsaeng imported and sold foreign-made textbooks from Thailand manufactured by Wiley's Asian subsidiary. Wiley alleges that Kirtsaeng violated § 602(a)(1) of the Act, which prohibits the importation of foreign-made works or goods without the copyright owner's authority. Kirtsaeng claims that, according to the first-sale doctrine codified in § 109(a), he was permitted to resell Wiley’s textbooks in the U.S. without the Respondent’s permission because the doctrine states that a copyright owner loses exclusive rights after the first sale of the work. Therefore, the issue in the case centers on the interpretation of § 602(a)(1) and § 109(a). The outcome of this case will clarify the applicability of the Copyright Act to foreign-made products. The Supreme Court’s decision will affect not only the availability of foreign-made works and goods in the U.S., but also the availability of such products abroad. If Wiley prevails, public, non-profit entities like museums, libraries, and charitable organizations will be heavily burdened because they will have to take extensive steps to procure the necessary licensing rights for goods that they import and distribute.

Questions as Framed for the Court by the Parties: 

This case presents the issue that recently divided the Court, 4–4, in Costco Wholesale Corp. v. Omega, S.A., 562 U. S. ____ (2010). Under § 602(a)(1) of the Copyright Act, it is impermissible to import a work “without the authority of the owner” of the copyright. But the first-sale doctrine, codified at § 109(a), allows the owner of a copy “lawfully made under this title” to sell or otherwise dispose of the copy without the copyright owner’s permission.

The question presented is how these provisions apply to a copy that was made and legally acquired abroad and then imported into the United States. Can such a foreign-made product never be resold within the U.S. without the copyright owner’s permission, as the Second Circuit held in this case? Can such a foreign-made product sometimes be resold in this country without permission, but only after the owner approves an earlier sale here, as the Ninth Circuit held in Costco? Or can such a product always be resold without permission within the United States, so long as the copyright owner authorized the first sale abroad, as the Third Circuit has indicated?

Issue

Whether the first-sale doctrine codified in 17 U.S.C. § 109(a) applies to copyrighted works manufactured and purchased abroad and then resold in the United States without the copyright owner’s permission.

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Acknowledgments: 

The authors would like to thank former Supreme Court Reporter of Decisions Frank Wagner for his assistance in editing this preview.

Additional Resources: 

Kirk Sigmon, The Cornell Daily SunTextbooks Too Expensive? How the Supreme Court Might Make it Worse (Sept. 7, 2012)

Caroline Flax, The Cornell Daily SunAlumnus Appeals Copyright Verdict to Supreme Court (Apr. 18, 2012)

MSNBCSupreme Court Takes Another Look at Gray Market Resales (Apr. 17, 2012)

Fox News, High Court Steps Into Copyright Case (Apr. 16, 2012)

Wex: Copyright

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