[digital-copyright] JurisNotes.com Briefing on Kirtsaeng v. John Wiley & Sons, Inc.

[Jordan Reth <jordan.reth@xxxxxxxx>]

JurisNotes.com, Inc.
Intellectual Property Notes Bonus Issue: Kirtsaeng v. John Wiley & Sons,
Inc.

Sup Ct - First sale doctrine applies to copies made abroad (6-3).
Kirtsaeng v. John Wiley & Sons, Inc. (3/19/13)  Decision
Wiley sued Kirtsaeng for copyright infringement and the trial court found
in favor of Wiley; the 2nd Circuit affirmed. The Supreme Court reversed and
remanded.

Kirtsaeng, a citizen of Thailand, moved to the United States in 1997 to
study mathematics. While studying here, Kirtsaeng asked his friends and
family in Thailand to buy copies of foreign edition English language
textbooks in Thailand and mail them to him in the United States. Kirtsaeng
would sell them, reimburse his family and friends, and keep the profit.
Wiley sued Kirtsaeng, who asserted that the first sale doctrine permitted
him to resell the books without Wiley's permission. The trial court held
that Wiley could not assert the first sale defense because it does not
apply to foreign made goods. The jury then found that Kirtsaeng had
willfully infringed Wiley's American copyrights by selling and importing
without authorization copies of eight of Wiley's copyrighted titles. The
2nd Circuit agreed with the trial court's conclusion.

The language of the statute, its context, and common law history of the
first sale doctrine favored a non-geographical interpretation. Further,
Congress would not have intended to create the practical harms with which a
geographical interpretation would threaten ordinary scholarly, artistic,
commercial, and consumer activities. The language, read literally, favored
a non-geographical interpretation, namely that "lawfully made under this
title" meant in accordance with copyright law. This reading was simple,
promoted a traditional copyright objective (combating piracy), and made
word-by-word linguistic sense. Considerations of simplicity and coherence
tipped the purely linguistic balance in favor of the non-geographical
reading. Both historical and contemporary statutory context indicated that
Congress, when writing the present version of the statute, did not have
geography in mind. The common law first sale doctrine made no geographical
distinctions. In addition, associations of libraries, used book dealers,
technology companies, consumer goods retailers, and museums pointed to
various ways in which a geographical interpretation would fail to further
basic constitutional copyright objectives, in particular promoting the
progress of science and useful arts. Reliance upon the first sale doctrine
was deeply embedded in the practices of these organizations. (Dissent: The
majority placed the United States at the vanguard of the movement for
"international exhaustion" of copyrights. Kirtsaeng's unauthorized
importation of the foreign made books infringed Wiley's copyrights).

---------------------

Intellectual Property Notes is published by JurisNotes.com, Inc.
Editor: Margie S. Schweitzer, J.D.; email Margie@xxxxxxxxxxxxxx; phone
503-763-8717; fax 503-763-8718.
Copyright 2013 by JurisNotes.com, Inc.  No claim to copyright as to
original U.S. government work.  Reproduction and retransmission of
Intellectual Property Notes is forbidden except as permitted by your
subscription agreement.

---------------------