Introduction

Supap Kirtsaeng v. John Wiley & Sons, Inc. (133 S.Ct. 1351), decided by the U.S. Supreme Court on March 19, 2013, is a landmark case that redefined the scope of the first sale doctrine under U.S. copyright law. The case revolves around the importation and resale of foreign-made academic textbooks, challenging the traditional boundaries of copyright distribution rights.

Parties Involved:

• Petitioner: Supap Kirtsaeng, a Thai citizen and former U.S. student
• Respondent: John Wiley & Sons, Inc., an academic textbook publisher

Background: Wiley assigns its foreign subsidiary, Wiley Asia, the rights to publish and distribute foreign editions of its textbooks with explicit notices prohibiting their importation into the United States. Kirtsaeng, leveraging lower prices of these foreign editions, imported and resold them in the U.S. for profit, prompting Wiley to sue for copyright infringement.

The central legal question was whether the first sale doctrine, codified in 17 U.S.C. § 109(a), applies to copies of copyrighted works lawfully made abroad. Lower courts had held that it did not, thereby upholding Wiley's restrictions. The Supreme Court's decision in this case reversed those rulings, significantly broadening the doctrine's applicability.

Summary of the Judgment

The Supreme Court held that the first sale doctrine applies to copies of copyrighted works lawfully made abroad. This decision means that once a copyright owner has authorized the manufacture and first sale of a copy, the subsequent owners retain the right to resell or dispose of that copy without needing further permission from the copyright holder, regardless of where the copy was originally made.

Key Holding:

• The phrase “lawfully made under this title” in §109(a) of the Copyright Act does not impose a geographical limitation.
• The first sale doctrine applies uniformly, whether copies are made domestically or abroad.
• Respondent's restrictions on importation based on the place of manufacture were deemed unconstitutional.

Analysis

Precedents Cited

The Court extensively referenced Quality King Distributors, Inc. v. L'anza Research Int'l, Inc. (523 U.S. 135, 1998), where it had previously held that §602(a)(1) incorporates the limitations of §§107-122, including the first sale doctrine. However, in Quality King, the copies had been initially manufactured in the United States before being exported, a scenario different from the wholly foreign-made copies in the Kirtsaeng case.

Additionally, the Court looked to the historical underpinnings of the first sale doctrine, tracing its roots back to common law principles articulated in cases like BOBBS-MERRILL CO. v. STRAUS (210 U.S. 339, 1908). These references underscored the doctrine's longstanding role in balancing copyright holder rights with consumer freedoms.

Legal Reasoning

The Court employed a textualist approach, focusing on the plain language of the statute. It interpreted the phrase “lawfully made under this title” to mean “in accordance with” or “in compliance with” the Copyright Act, rather than imposing any geographical constraints. This interpretation aligns with the traditional understanding of the first sale doctrine, which seeks to prevent copyright holders from exercising perpetual control over the distribution of individual copies once they have been lawfully sold.

The majority rejected the argument that geographic limitations were intended by Congress. It highlighted linguistic clarity, the purpose of promoting commerce, and the consistent application of statutory provisions as key factors supporting a non-geographical interpretation.

Moreover, the Court emphasized policy considerations, noting the practical benefits of allowing secondary markets to flourish, including benefits to libraries, used-book dealers, retailers, and consumers. These sectors rely heavily on the first sale doctrine to operate effectively without needing continuous authorization from copyright holders.

Impact

The decision has profound implications for the secondary market of copyrighted goods. By extending the first sale doctrine to copies made abroad:

• Libraries and educational institutions can acquire foreign editions without fearing legal repercussions when circulating them.
• Used-book dealers and retailers can continue to operate without seeking additional permissions, fostering a vibrant market for pre-owned goods.
• Consumers gain greater flexibility and reduced costs due to the availability of lower-priced foreign editions.

On an international scale, this ruling positions the United States towards a more permissive stance on the interterritorial exhaustion of copyrights, potentially influencing international copyright negotiations and agreements.

Complex Concepts Simplified

First Sale Doctrine

The first sale doctrine is a copyright principle stipulating that once a copyrighted work is lawfully sold or transferred by the copyright owner, the purchaser gains the right to sell, lend, or otherwise dispose of that particular copy without needing further permission from the copyright holder.

Lawfully Made Abroad

In this context, a copy "lawfully made abroad" refers to a work that was produced with the authorization of the copyright holder under U.S. copyright law, even though the actual manufacturing occurred outside the United States.

Conclusion

Kirtsaeng v. Wiley significantly broadens the application of the first sale doctrine by recognizing that it applies to foreign-made copies lawfully produced under U.S. copyright law. This decision strikes a critical balance between protecting the rights of copyright holders and fostering robust secondary markets that benefit consumers, educational institutions, and retailers alike.

By rejecting geographical limitations on the first sale doctrine, the Supreme Court reinforced foundational copyright principles that prevent perpetual control over copyrighted works. This fosters a more dynamic and accessible marketplace, aligning with both economic interests and the constitutional objective of promoting the progress of science and useful arts.