Kirtsaeng v. John Wiley & Sons, Inc.

Kirtsaeng v. Wiley, 568 U.S. ___ (2013), is a United States Supreme Court copyright decision in which the Court held, 6-3, that the first-sale doctrine applies to copies of copyrighted works lawfully made abroad.

Background

In 2008, John Wiley & Sons, Inc. filed suit against Thailand native Supap Kirtsaeng over the sale of foreign edition textbooks made outside of the United States marked for sale exclusively abroad which Kirtsaeng imported into the United States.^[1][2] When Kirtsaeng came to America in 1997 to study at Cornell University, he discovered that Wiley textbooks were considerably more expensive to buy in the United States than in his home country. Kirtsaeng asked his relatives from Thailand to buy such books at home and ship them to him to sell at a profit. He sold the imported books on eBay, "making $1.2 million in revenue, although both sides dispute how much profit was actually made."^[3]

Wiley sued Kirtsaeng for copyright infringement and won in two lower courts. The Second Circuit Court of Appeals upheld the ban on importation of copyrighted works without the authority of the U.S. copyright owner; this set up a Circuit split with the Third Circuit and the Ninth Circuit, which had variant approaches to the same question in other cases.

Kirtsaeng then appealed to the Supreme Court, arguing the first-sale doctrine, a clause in the United States copyright which enables residents of the United States to resell legally obtained objects without asking for the copyright owner's permission, was more important than the copyright owner's rights to control importation of the owner's works under US Law.

Decision

In 2013, the U.S. Supreme Court reversed the Second Circuit and held that Kirtsaeng's sale of lawfully-made copies purchased overseas was protected by the first-sale doctrine. The Court held that the first sale doctrine applies to goods manufactured outside of the United States, and the protections and exceptions offered by the Copyright Act to works "lawfully made under this title" is not limited by geography. Rather, it applies to all copies legally made anywhere, not just in the United States, in accordance with U.S. copyright law. The Justices said that the first-sale doctrine applies to all books, wherever made. So even if you buy a book made in England, you can resell it without permission from the publisher. ^[4]

Justice Stephen Breyer wrote the opinion of the court which was joined by five Justices (Roberts, Thomas, Alito, Sotomayor, and Kagan).^[5] Justice Elena Kagan also wrote a separate concurring opinion, signed by Samuel Alito. Justice Ruth Bader Ginsburg dissented, joined by Anthony Kennedy and Antonin Scalia. Kagan's concurrence suggested that Congress could change the law to reverse the decision.^[6]

Reactions

In law, Kirtsaeng has had the effect of causing a fresh look at the issue of "international exhaustion" in the patent context. The Federal Circuit in the 2001 Jazz Photo v. US International Trade Commission case had held that lawful sales of patented goods outside the US did not give rise to patent exhaustion inside the US. In a 2015 order in Lexmark v. Impression Products, the Federal Circuit sua sponte (unprompted) called for briefing and amicus curiae participation in an en banc consideration of whether:

In light of Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), should this court overrule Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001), to the extent it ruled that a sale of a patented item outside the United States never gives rise to United States patent exhaustion.^[7]

Similarly, an effort by academic publisher Pearson to control after-market textbook sales on the basis of trademark was dismissed, citing Kirtsaeng.^[8]

In educational publishing, Wiley, the Kirtsaeng plaintiff that lost the case, increased its prices for the international editions as well as the international student editions and cited Kirtsaeng.^[9]

See also

• First-sale doctrine
• Grey market
• Omega S.A. v. Costco Wholesale Corp.
• Quality King v. L'anza, 523 U.S. 135 (1998) - same result, but for goods that were made in the U.S., exported, then re-imported.
• Parallel import

References

External links

• PDF of US Supreme Court decision
• SCOTUS blog coverage of the decision (filings, briefs, decisions, etc.)
• Knowledge Ecology International (KEI), Analysis of the decision