Wednesday, August 17, 2011

Second Circuit: First Sale Doctrine Does Not Apply to Foreign-Made Works - Importer Is Copyright Infringer

In John Wiley & Sons Inc. v. Kirtsaeng, 09-4896 (2d Cir. August 15, 2011), the Second Circuit decided a case of first impression, with a powerful dissent from Judge J. Garvan Murtha of Vermont.

Facts:  Foreign student residing in US has family members purchase English-language textbooks from foreign country and ship them to US where he resells them on Ebay.   The textbooks are substantially similar to those sold in the US, although of inferior quality of manufacture (thinner paper, fewer inks).   The manufacture and distribution of the textbooks in the foreign country was authorized by the US copyright owner, but importing them into the United States was not.

Issue:  Where a US copyright owner permits textbooks to be lawfully manufactured and distributed in a foreign country, can the US copyright owner charge persons importing such lawfully-made textbooks with copyright infringement?

Answer:  Yes.

The Second Circuit upheld a judgment against the student for hundreds of thousands of dollars following a jury trial.

The statutes at issue are 17 USC 602(a) which refers to copyrighted works lawfully "made" under the Copyright Act and

The "first sale doctrine" which is embodied in 17 USC 109(a)

 § 109. Limitations on exclusive rights: Effect of transfer of particular copy or phonorecord42

(a) Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord. [...]

Essentially, the Second Circuit determined that a copy made in a foreign country was not lawfully made under the Copyright Act.    I commend Judge Murtha's dissent for careful study, the decision is embedded below.

More on the first sale doctrine and the Costco/Omega case here.

John Wiley & Sons v Kirtsaeng
 Purchase Copyright Litigation Handbook 2010 by Raymond J. Dowd from West here  

1 comment:

Anonymous said...

Thanks for letting us know about this. I usually like to hear both sides of an argument before forming an opinion, but this one really seems to be clear cut. The dissenting opinion is correct. Perhaps there are import restrictions or something like that which could apply, but copyright was never intended to cover books you buy from the legal publisher.

There is a lively conversation on this topic over at, by the way.