First Sale Doctrine

A majority of the United States Supreme Court upheld the application of the first sale doctrine to internationally published material in a decision released today, Kirtsaeng v. John Wiley & Sons, Inc.

The publisher, John Wiley & Sons, Inc. had sued Kirtsaeng for importing textbooks into the United States that had been purchased legally in Thailand. The publisher argued, successfully at the lower courts, that the first sale doctrine only applied to books published in the United States and not to books published elsewhere. In today’s decision, the majority held that the importation and sale by Kirtsaeng was not infringement.

For the majority, Justice Beyer wrote:

Putting section numbers to the side, we ask whether the “first sale” doctrine applies to protect a buyer or other lawful owner of a copy (of a copyrighted work) lawfully manufactured abroad. Can that buyer bring that copy into the United States (and sell it or give it away) without obtaining permission to do so from the copyright owner? Can, for example, someone who purchases, say at a used bookstore, a book printed abroad subsequently resell it without the copyright owner’s permission?

In our view, the answers to these questions are, yes. We hold that the “first sale” doctrine applies to copies of a copyrighted work lawfully made abroad. [p3]

While the decision primarily turns on the interpretation of the legislation, the majority highlights the “first sale” doctrine as a “common-law doctrine with impeccable historical pedigree” [p17]. The majority also mention the impact a contrary decision would have on libraries, used-book dealers, technology companies, consumer-goods retailers and museums.

Used-book dealers tell us that, from the time when Benjamin Franklin and Thomas Jefferson built commer­cial and personal libraries of foreign books, American readers have bought used books published and printed abroad. The dealers say that they have “operat[ed] . . . for centuries” under the assumption that the “first sale” doctrine applies.

A geographical interpretation would prevent the resale of, say, a car, without the permission of the holder of each copyright on each piece of copyrighted automobile software. Yet there is no reason to believe that foreign auto manufacturers regularly obtain this kind of permis­sion from their software component suppliers, and Wiley did not indicate to the contrary when asked. (references removed) [p20-21]

 Justice Kagan and Alito wrote concurring reasons and Justice Ginsburg, Kennedy and Scalia (in-part) dissented.

The Court had previously considered grey-market goods in Costco v. Omega from December 2010 and will consider the related concept of patent exhaustion in Bowman v. Monstanto, which was argued last month.

Some commentary on the decision is already available including from AP, Duke University Library, Publishers Weekly, SCOTUSblog, Patently-O and Knowledge Ecology Internationa.