Supreme Court Upholds Application of First-Sale Doctrine to Works Created Abroad

The U.S. Supreme Court ruled yesterday, by a 6-3 vote, that the so-called First Sale doctrine protects the right of individuals and organizations, including libraries, who wish to purchase and import copyrighted documents such as  books or DVDs which are published, printed, or manufactured outside of the U.S. to re-sell the item or give those items away or, in a library context, circulate it freely. The case–Kirtsaeng v. John Wiley & Sons, Inc.–pitted a Thai national, Supap Kirtsaeng, a student at Cornell and later at the University of Southern California, against the large textbook publisher John Wiley & Sons, Inc.  Kirtsaeng had purchased copies of Wiley textbooks that were printed outside the U.S. and imported them to the U.S., where he sold them at higher prices as a means of helping to pay for his educational expenses. Wiley initially won a decision, which was upheld by the Second Circuit Court of Appeals; Kirtsaeng then appealed to the Supreme Court, which overturned the previous decision. 

The First Sale doctrine essentially states that the purchaser of a copyrighted work, whether an individual or a corporate entity, can do with the purchased item anything he, she, or it wishes. The case turned on a phrase in the Copyright Act, which limits that doctrine to works “lawfully made under this title.”  Wiley said–and lower courts agreed–that textbooks manufactured outside the United States could not have been made under American law and so remained subject to the control of the owner of the copyright. But Justice Stephen G. Breyer, writing for the majority, said the phrase was not concerned with geography. He said he doubted “that Congress would have intended to create the practical copyright-related harms with which a geographical interpretation would threaten ordinary scholarly, artistic, commercial and consumer activities.” He concluded, “We hold that the ‘first sale’ doctrine applies to copies of a copyrighted work lawfully made abroad.”

Breyer focused on the potential consequences of a contrary ruling upholding the copyright owner which, he said, “could prevent a buyer from domestically selling or even giving away copies of a video game made in Japan, a film made in Germany or a dress (with a design copyright) made in China.”  He also relied on supporting briefs from libraries, used-book dealers, technology companies and museums, all of which warned that allowing copyright suits over goods imported from abroad would have pernicious consequences. Libraries could be barred from lending foreign books, the briefs said, and museums from displaying modern works of foreign  art.

Breyer was joined by Chief Justice Roberts and Justices Alito, Kagan, Sotomayor, and Thomas; Justices Ginsburg, Kennedy, and Scalia dissented. Writing for the minority, Justice Ginsburg wrote that the divided ruling is a bold departure from Congress’s intention to protect copyright owners against the unauthorized importation of low-priced, foreign-made copies of their copyrighted works that is made more stunning by its conflict with current U.S. trade policy.

Both publishing groups and other groups representing copyright owners on the one hand, and groups representing libraries on the other, predict that the decision will lead to pressure from the publishing industry for Congress to further amend the copyright law.  A spokesman for the Library Copyright Alliance stated that “Libraries and our allies remain vigilant in defense of first sale and all of the rights that make it possible to serve our communities.”

–Adapted and  condensed from articles published March 19th by Jennifer Howard in the Chronicle of Higher Education and by Adam Liptak in The New York Times.