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?
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
Wednesday, August 17, 2011
Second Circuit: First Sale Doctrine Does Not Apply to Foreign-Made Works - Importer Is Copyright Infringer
Labels: copyright infringement, copyright law, copyright litigation, first sale doctrine, foreign copyrighted works, foreign manufacture of copyrighted works, illegal imports
Partner in law firm Dunnington Bartholow & Miller LLP in New York City litigating in federal and state courts and arbitrations. Experienced trial and appellate practitioner. Author: Copyright Litigation Handbook (Thomson Reuters 2019-2020). The New York Law Journal called it "an indispensable guide". Board of Directors of the Fordham Law Alumni Association, former General Counsel & Director Federal Bar Association, FBA Chair of the Circuit VPs, ViP for Second Circuit. Member Board of Governors, National Arts Club. President, Network of Bar Leaders (2013-2014). Attorney advertising disclaimer - prior results do not guarantee success. The statements and opinions voiced here are my own and not of my law firm.