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.
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?
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.
The Respondent Wiley, is an American company that publishes and sells textbooks. John Wiley & Sons, Inc. v. Kirtsaeng, 654 F.3d 210, 212-13 (2d Cir. 2011). It sells such books to foreign countries through its subsidiary. Id.Wiley’s textbooks that are sold abroad have markings indicating that the books are only to be sold in a particular country or region. Id. at 213. The Petitioner, Kirtsaeng, is from Thailand and came to the U.S. in 1997 to pursue an undergraduate degree in mathematics at Cornell University. Id.He claims that he later attended a university in California and earned a Ph.D. in 2009. Id.During his time in the U.S., Kirtsaeng received shipments of textbooks that his family purchased in Thailand. Id.Kirtsaeng sold these textbooks on commercial websites such as eBay.com and used the profits to reimburse his family and to pay for his education. Id.According to testimony from Kirtsaeng during the jury trial, he earned $900,000 in revenues from the textbook sales. Id. at 215.
Wiley alleges that Kirtsaeng’s importation and distribution of the textbooks is a copyright infringement under 17 U.S.C. § 501. John Wiley & Sons, 654 F.3d at 213-14. Kirtsaeng claims that before selling the textbooks, he had consulted his friends in Thailand and a “Google Answers” website to ascertain that he could legally resell the foreign textbooks in the U.S. Id. at 213. He asserts he did not violate the Copyright Act because § 109(a), the first-sale doctrine, allows resale of textbooks without permission from the copyright owner. See id. at 214-16. Wiley alleges that § 109(a) does not apply to goods manufactured in foreign countries. Seeid. at 211-12.
The case originally commenced in the United States District Court for the Southern District of New York. Id. at 213-14. The jury found Kirtsaeng in violation of the Copyright Act, and awarded statutory damages to Wiley the in the amount of $75,000 for each textbook sale. Id. at 215-16. Kirtsaeng appealed to the United States Court of Appeals for the Second Circuit, claiming that the District Court denied him a defense under the first-sale doctrine and erred in evidentiary rulings, which Kirtsaeng believes led to an award of unduly high damages. Id. The Court of Appeals affirmed the District Court’s ruling. Id. at 224. Kirtsaeng petitioned for a writ of certiorari to the Supreme Court on December 5, 2011, and the Court granted the writ on April 16, 2012. Docket Files for Supap Kirtsaeng, d/b/a Bluechristine99 v. John Wiley & Sons, Inc.
Petitioner Kirtsaeng refers to 17 U.S.C. § 109(a), the first-sale doctrine, to argue that he did not violate the Copyright Act because, after an item’s first sale, its copyright owner loses any further right to control its distribution. See Brief for Petitioner at 16. Respondent Wiley contends that because its textbooks are manufactured abroad, § 602(a)(1) prohibits distribution of imports of its textbooks without permission from the corporation; as such, the first-sale doctrine does not protect Kirtsaeng from copyright infringement. See Brief for Respondent at 8.
The Effects on Free Markets and Distribution of Goods
Proponents of Kirtsaeng’s argument assert that allowing Wiley’s interpretation of the Copyright Act to prevail would inhibit commerce and the free flow of goods. SeeBrief for 25 Intellectual Property Law Professors (“Professors”) in Support of Petitioner at 13. If the Court rules that the first-sale doctrine does not apply to foreign-made goods, the market for certain products, such as used-cars that often feature foreign-manufactured computer programs, would not be sustainable due to a lack of supplies. Jennifer Howard, Supreme Court Will Hear Case over Foreign Textbooks Imported and Resold in U.S., The Chronicle of Higher Education (April 16, 2012). Goodwill Industries (“Goodwill”) argues that Wiley’s interpretation will hurt the American economy because it allows companies to retain rights over importation and distribution of foreign-made products and thereby to outsource their manufacturing to other countries to take advantage of cheap labor. See Brief for Goodwill in Support of Petitioner at 31.
The Intellectual Property Owners Association (“IPO”) contends that if the Copyright Act were given Kirtsaeng’s interpretation, then there would be broad importation and resale of textbooks that would undermine the Act’s aim to prevent the commercial use of imported items. See Brief of IPO in Support of Neither Party at 7. IPO also contends that if § 109(a) is applied to foreign-made products, then copyright owners will be hesitant to distribute their goods worldwide due to a lack of copyright protection and subsequent loss of the economic value of their products. Seeid. at 16. This will mean that developing nations will not have access to cheap textbooks because companies like Wiley will be discouraged from allowing foreign publishers to manufacture American textbooks for sale in the foreign country. Seeid. at 21.
The Effects on Non-profit Organizations and Cultural Institutions
Proponents of Kirtsaeng’s argument state that Wiley’s interpretation would give rise to a chilling effect on the operations of public institutions and charitable organizations. SeeBrief for Goodwill at 5. For example, Goodwill argues that the first-sale doctrine sustains the secondary goods market because it allows resellers to sell goods at cheap prices without worrying about copyright infringement. See id. If Wiley’s interpretation is upheld, Goodwill and its customers will be burdened with the task of investigating the origins of their goods, leading to a decrease of the benefits of Goodwill’s operations. See id.Others contend that if § 109(a) were interpreted so that the first-sale doctrine applies only to products manufactured in the U.S., then museums, galleries, and libraries will have difficulty exhibiting foreign art or lending international materials because these institutions will have to obtain copyright licenses, which require extensive negotiations. SeeBrief for Professors at 6; see alsoBrief for Public Knowledge et al. in Support of Petitioner at 8–9.
Opponents of Kirtsaeng’s argument contend that limiting the applicability of the first-sale doctrine to domestically manufactured goods would not inhibit the availability of foreign artworks or other cultural materials in the U.S. SeeBrief for the United States in Support of Respondent at 26. They argue that Wiley’s interpretation still allows for importation and distribution of foreign goods as long as the distributor obtains the copyright owner’s permission. See id.If and when the copyright owner authorizes the importation and sale of the goods in the U.S., then the first-sale doctrine will apply, and the copyright owner will no longer hold exclusive rights to distribute the imported goods. See id. at 28-29.
The first-sale doctrine authorizes an owner of a copyrighted work to sell that work without the permission of the copyright owner. See17 U.S.C. § 109 (2012). The issue in this case concerns the interpretation of this doctrine. SeeBrief for Petitioner, at i; see Brief for Respondent, at i. Kirtsaeng contends that the doctrine applies to a copyrighted work manufactured and legally obtained abroad and then sold in the U.S. SeeBrief for Petitioner at 15-17. Wiley asserts that this doctrine only pertains to copyrighted works manufactured in the U.S. and that 17 U.S.C. §602(a)(1) governs Kirtsaeng’s actions. SeeBrief for Respondent at 11-12.
RECONCILING 17 U.S.C. §109(a) WITH 17 U.S.C. §602(a)(1)
According to Kirtsaeng, §602(a)(1), which states that importing works into the U.S. without the permission of the copyright owner violates the owner’s right to distribute the copies, is just as ambiguous as §109(a). Brief for Petitioner at 19. Kirtsaeng claims, however, that the two statutes can be reconciled by recognizing that, based on the wording of the Copyright Act, § 602(a)(1) is subject to §§107-122 which include exceptions or limitations to the rights contained in the Act. See id. at 21. Kirtsaeng bases this claim on the fact that § 602(a)(1) states that importing a copy without the copyright owner’s permission is “an infringement of the exclusive right to distribute copies or phonorecords under section 106.” Section 106 in turn, states that “subject to sections 107 through 122,” a copyright owner has certain rights under the section. Therefore, following the chain from § 602(a)(1) to §106 to §§ 107–122, Kirtsaeng concludes, § 602(a)(1) is subject to the first-sale doctrine in §109(a)(1). See id. at 22-23.
Kirtsaeng’s understanding of § 602(a)(1) concerns Wiley because most works imported into the U.S. are first sales, so that applying the first-sale doctrine to works manufactured abroad would eliminate § 602(a)(1)’s significance. Brief for Respondent at 22-23. Specifically, Wiley notes that under §602(a)(1) copyright owners are protected from having their works imported into the U.S. without their permission. Seeid. at 22. Wiley claims, however, that applying the first-sale doctrine to §602(a)(1), would override this protection by giving the owner of a copyrighted work the power to import the work into the U.S. without the copyright owner’s permission. Seeid. at 22-23.
In response, Kirtsaeng argues that his interpretation of the first-sale doctrine as applying to copyrighted works manufactured abroad and imported into the U.S. does not deprive § 602(a)(1) of its meaning. SeeBrief for Petitioner at 43-46. Kirtsaeng cites certain objectives, such as protecting against infringement by a non-owner, that § 602(a)(1) still can achieve under his interpretation. Seeid. Wiley asserts, however, that although § 602(a)(1) may still serve some purpose, Kirtsaeng’s interpretation of the first-sale doctrine narrows the effectiveness of the statute. SeeBrief for Respondent at 24-26. Wiley claims that Congress did not intend for § 602(a)(1) to be narrowed this way. Id. at 25.
THE PROPER CONSTRUCTION OF 17 U.S.C. §109(a)’S TEXT
Kirtsaeng asserts that the phrase “lawfully made under this title” in § 109(a) means “in accordance with the Copyright Act.” SeeBrief for Petitioner 24. Based on this interpretation and a plain reading of the statute, Kirtsaeng argues that the statute does not specifically distinguish between copies manufactured abroad and those manufactured in the U.S. See id. 24–27. Specifically, Kirtsaeng argues that reading “lawfully made under this title” to mean “manufactured on U.S. soil,” as he believes Wiley suggests, is illogical. Id. at 27–28. According to Kirtsaeng, there are more precise and concise ways to indicate that § 109(a) applies to works “manufactured on U.S. soil.” Id. Moreover, asserts that his interpretation of the phrase is how the United States Supreme Court has understood the statute in previous cases. Id. at 27.
Wiley responds that the phrase in question is best interpreted to mean copies made according to the Copyright Act where the Act is in effect. Brief for Respondent at 15. Wiley argues that Kirtsaeng’s interpretation is irrational because a copy cannot be “made under” the statute if the Act does not apply. Id. The Act does not apply outside the U.S. and consequently, Wiley contends that § 109(a) does not apply to works manufactured abroad. Id. at 16.
Kirtsaeng further claims that Congressional interpretation of § 109(a) accords with his interpretation of the statute. See Brief for Petitioner at 49–50. He traces the first-sale doctrine back to 1600s common law, and notes that when Congress codified the doctrine in §1909, which was the original version of § 109(a), the doctrine was not restricted only to the U.S. Id. at 49–51. Kirtsaeng claims that despite making amendments to the Copyright Act, Congress never changed §1909’s original meaning. Id. at 51. He also claims that, although Congress changed the statute’s general wording in 1976, its meaning did not change. Seeid. at 51–55. Finally, Kirtsaeng concludes that Congress would approve of his understanding of the statute because his interpretation will produce reasonable results, unlike Wiley’s interpretation. Seeid. at 55–56.
Respondent, however, contends that Congress would approve of Wiley’s interpretation. Brief for Respondent at 35. Wiley notes that that lower courts have used its interpretation, but Congress has not changed the wording of “lawfully made under this title.” Id. at 36–37. This is significant to Wiley because in the past Congress has changed the Copyright Act after lower courts interpreted the Act in a way that Congress did not agree with, suggesting that Congress does indeed support Wiley’s interpretation. Id. at 37.
UNDERSTANDING 17 U.S.C. § 109(a) IN THE CONTEXT OF THE COPTYRIGHT ACT
Kirtsaeng contends that his interpretation of § 109(a) makes the most sense based on the Copyright Act as a whole. Brief for Petitioner at 32-33. Noting that the phrase “under this title” appears 91 times in the Act, Kirtsaeng analyzes other Act sections that use this phrase. Seeid. at 33-36. He concludes that these other sections use the phrase the same way as he does. Seeid. For example, § 106 states that “the owner of copyright under this title has the exclusive rights to do and to authorize any of the following.” 17 U.S.C. § 106 (2012). Using Kirtsaeng’s interpretation, this statute means that an owner who has a copyright recognized by the Act has the rights that the Act grants copyright owners. Seeid. at 33. Comparatively, Wiley’s interpretation would make the statute mean that a copyright owner in the U.S. has the rights guaranteed under the Copyright Act. See id.According to Kirtsaeng, this interpretation is nonsensical because it suggests that a copyright owner who leaves the U.S. will be deprived of these rights. See id.
Wiley counters that Kirtsaeng’s understanding of the phrase “under this title” in the other sections of the Act is actually consistent with Wiley’s understanding of the phrase. Brief for Respondent at 26. It argues that the phrase means “pursuant to this title,” and that this understanding demonstrates that the phrase only refers to works that have the Act’s protection. Id. at 27. Consequently, Wiley reiterates that because the Act does not apply aboard, it, and thus § 109(a), only offers protection in the U.S. Seeid. at 26-27. Furthermore, Wiley claims that the Act’s history and purpose prove that the first-sale doctrine does not apply to works manufactured abroad because the development of the current Act reflects a desire to control the importation of copies into the U.S. Seeid. at 42.
INTERPRETATION OF 17 U.S.C. §109(a) UNDER QUALITY KING
Both Kirtsaeng and Wiley rely on the Supreme Court’s decision in Quality King Distributors, Inc. v. L’Anza Research International, Inc. (“Quality King”) as precedent to support their interpretation of the first-sale doctrine. SeeBrief for Petitioner at 38; see alsoBrief for Respondent at 17. In Quality King, the Supreme Court held that the first-sale doctrine applies to copies manufactured in the United States, sold abroad, and then sold again in the United States. SeeQuality King Distributors, Inc. v. L’Anza Research International, Inc.[FW2][FW2] 523 U. S. 135, 150–154 (1998).
Kirtsaeng asserts that in Quality King the Supreme Court concluded that § 602 is subject to § 109(a) and that the first-sale doctrine applies even if the work is first purchased abroad. Brief for Petitioner at 38-39. Conversely, Wiley claims that Kirtsaeng misconstrues the decision in Quality King and that the Supreme Court actually determined that the first-sale doctrine does not apply to copies made under a foreign country’s copyright laws. Brief for Respondent at 18-19.
The arguments in this case will focus on the interpretation of § 109(a) and § 602(a)(1) of the Copyright Act. The outcome will affect the applicability of the Act to foreign-made goods imported and distributed within the U.S. The Petitioner will argue that § 109(a) applies the first-sale doctrine to goods manufactured abroad. The Respondent will argue that § 602(a)(1) is not subject to § 109(a), and thus any distribution of foreign-made goods in the U.S. requires the copyright owner's permission. The Court’s decision will impact the domestic and international availability of copyrighted products.
The authors would like to thank former Supreme Court Reporter of Decisions Frank Wagner for his assistance in editing this preview.
Kirk Sigmon, The Cornell Daily Sun, Textbooks Too Expensive? How the Supreme Court Might Make it Worse (Sept. 7, 2012)
Caroline Flax, The Cornell Daily Sun, Alumnus Appeals Copyright Verdict to Supreme Court (Apr. 18, 2012)
MSNBC, Supreme Court Takes Another Look at Gray Market Resales (Apr. 17, 2012)
Fox News, High Court Steps Into Copyright Case (Apr. 16, 2012)