The Supreme Court has ruled that textbooks and other
goods made and sold abroad can be re-sold online and in discount stores without
violating U.S. copyright law. In a 6-3 opinion, the court overturned a copyright
infringement award to publisher John Wiley & Sons against Thai graduate
student Supap Kirtsaeng, who used eBay to resell copies of the publisher’s
copyrighted books that his relatives first bought in Asia at cut-price rates.
Kirtsaeng sold $900,000 worth of books published abroad by
Wiley and others, and made about $100,000 in profit. The international editions
of the textbooks were essentially the same as the more costly American
editions. A jury in New York awarded Wiley $600,000 after deciding Kirtsaeng
sold copies of eight Wiley textbooks without permission.
The District Court had held that Kirtsaeng
could not assert the “first sale” defence because that doctrine does not apply
to “foreign-manufactured goods” (even if made abroad with the copyright owner’s
permission) and on appeal, a split panel of the Second Circuit agreed with the
District Court. The Supreme Court has
now said that the "first sale doctrine" applies to copies of a
copyrighted work lawfully made abroad.
Enough from me - there are two excellent blogs on the IPKat giving more detail on the judgment and comment - the first by Eleonora Rosati here http://ipkitten.blogspot.co.uk/2013/03/breaking-news-us-supreme-court-decides.html and a guest blog by Miri Frankel here http://ipkitten.blogspot.co.uk/2013/03/licensing-of-digital-copy-does-first.html
Comment from the Washington Post here
And there is now an update by Eleonora Rosati on the IPKat at http://ipkitten.blogspot.co.uk/2013/03/a-kats-perspective-on-kirtsaeng-why-is.html
And its worth comparing this decision with 2010 case of Costco Wholesale Corp v Omega SA where the Ninth Circuit held that the first sale rule in the US copyright statute did not apply to foreign sales as a matter of law, since that statute lacked extraterritorial application. The Supreme court split 4-4 on appeal - perhaps showing just how difficult this whole area is.
http://www.supremecourt.gov/opinions/12pdf/11-697_d1o2.pdf
Kirtsaeng v. John Wiley & Sons No 11-697 (Decided March 19, 2013)
And there is now an update by Eleonora Rosati on the IPKat at http://ipkitten.blogspot.co.uk/2013/03/a-kats-perspective-on-kirtsaeng-why-is.html
And its worth comparing this decision with 2010 case of Costco Wholesale Corp v Omega SA where the Ninth Circuit held that the first sale rule in the US copyright statute did not apply to foreign sales as a matter of law, since that statute lacked extraterritorial application. The Supreme court split 4-4 on appeal - perhaps showing just how difficult this whole area is.
http://www.supremecourt.gov/opinions/12pdf/11-697_d1o2.pdf
Kirtsaeng v. John Wiley & Sons No 11-697 (Decided March 19, 2013)
