Case(s): Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519, 133 S. Ct. 1351 (2013)
John Wiley & Sons, Inc., an academic textbook publisher, often assigns to its wholly owned foreign subsidiary (Wiley Asia) rights to publish, print, and sell foreign editions of Wiley’s English language textbooks abroad. Wiley Asia’s books state that they are not to be taken (without permission) into the United States. When Kirtsaeng moved from Thailand to the U.S. to study mathematics, he asked friends and family to buy foreign edition English-language textbooks in Thai book shops, where they sold at low prices, and to mail them to him in the United States. He then sold the books, reimbursed his family and friends, and kept the profits.
District Court Decision & Second Circuit Appeal
Wiley filed suit against Kirtsaeng, alleging that his unauthorized importation and resale of its books was an infringement of its s. 106(3) exclusive right to distribute and s. 602’s import prohibition. Kirtsaeng pushed back, arguing that because his books were “lawfully made” and acquired legitimately, s. 109(a)’s “first sale” doctrine permitted importation and resale without Wiley’s further permission.
The District Court held that Kirtsaeng could not assert this defense because the doctrine does not apply to goods manufactured abroad. The jury then found that Kirtsaeng had willfully infringed Wiley’s American copyrights and assessed damages.
The Second Circuit affirmed, concluding that s. 109(a)’s “lawfully made under this title” language indicated that the “first sale” doctrine does not apply to copies of American copyrighted works manufactured abroad.
Supreme Court Decision
Taking up the case, the Supreme Court held that the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad. Writing for the court, Justice Breyer stated in the March 19, 2013 decision …
(a) Wiley reads “lawfully made under this title” to impose a geographical limitation that prevents s. 109(a)’s doctrine from applying to Wiley Asia’s books. Kirtsaeng, however, reads the phrase as imposing the non-geographical limitation made “in accordance with” or “in compliance with” the Copyright Act, which would permit the doctrine to apply to copies manufactured abroad with the copyright owner’s permission.
(b) Section 109(a)’s language, its context, and the “first sale” doctrine’s common-law history favor Kirtsaeng’s reading, including because …
(1) Section 109(a) says nothing about geography;
(2) Both historical and contemporary statutory context indicate that Congress did not have geography in mind when writing the present version of s. 109(a);
(3) A nongeographical reading is also supported by the canon of statutory interpretation that “when a statute covers an issue previously governed by the common law,” it is presumed that “Congress intended to retain the substance of the common law”; and
(4) Library associations, used-book dealers, technology companies, consumer-goods retailers, and museums point to various ways in which a geographical interpretation would fail to further basic constitutional copyright objectives, in particular “promot[ing] the Progress of Science and useful Arts,” Art. I, §8, cl. 8.
(c) Several additional arguments that Wiley and the dissent make in support of a geographical interpretation are unpersuasive.