Kirtsaeng v. John Wiley & Sons, Inc.
|Kirtsaeng v. John Wiley & Sons, Inc.|
|Argued October 29, 2012
Decided March 19, 2013
|Full case name||Supap Kirtsaeng, dba Bluechristine99, Petitioner v. John Wiley & Sons, Inc.|
|Citations||568 U.S. ___ (more)|
|Prior history||defendant prohibited from raising argument, 2009 WL 3364037(S.D.N.Y. Oct. 19, 2009) and held liable, unreported (2010); affirmed. 654 F.3d 210 (2d Cir., 2011)|
|The first-sale doctrine applies to copies of a copyrighted work lawfully made abroad. Reversed and remanded.|
|Majority||Breyer, joined by Roberts, Thomas, Alito, Sotomayor, Kagan|
|Concurrence||Kagan, joined by Alito|
|Dissent||Ginsburg, joined by Scalia (partial), Kennedy|
|Copyright Act of 1976|
In 2008, John Wiley & Sons, Inc. filed suit against Thailand native Supap Kirtsaeng over the sale of foreign edition textbooks made outside of the United States marked for sale exclusively abroad which Kirtsaeng imported into the United States. When Kirtsaeng came to America in 1997 to study at Cornell University, he discovered that Wiley textbooks were considerably more expensive to buy in the United States than in his home country. Kirtsaeng asked his relatives from Thailand to buy such books at home and ship them to him to sell at a profit. He sold the imported books on eBay, "making $1.2 million in revenue, although both sides dispute how much profit was actually made."
Wiley sued Kirtsaeng for copyright infringement and won in two lower courts. The Second Circuit Court of Appeals upheld the ban on importation of copyrighted works without the authority of the U.S. copyright owner; this set up a Circuit split with the Third Circuit and the Ninth Circuit, which had had variant approaches to the same question in other cases.
Kirtsaeng then appealed to the Supreme Court, arguing the first-sale doctrine, a clause in the United States copyright which enables residents of the United States to resell legally obtained objects without asking for the copyright owner's permission, was more important than the copyright owner's rights to control importation of the owner's works under US Law.
In 2013, the U.S. Supreme Court reversed the Second Circuit and held that Kirtsaeng's sale of lawfully-made copies purchased overseas was protected by the first-sale doctrine. The Court held that the first sale doctrine applies to goods manufactured outside of the United States, and the protections and exceptions offered by the Copyright Act to works "lawfully made under this title" is not limited by geography. Rather, it applies to all copies legally made anywhere, not just in the United States, in accordance with U.S. copyright law. Justice Stephen Breyer wrote the opinion of the court which was joined by five Justices (Roberts, Thomas, Alito, Sotomayor, and Kagan); Justice Elena Kagan wrote a separate concurring opinion, also signed by Samuel Alito; and Justices Ruth Bader Ginsburg, Anthony Kennedy, and Antonin Scalia dissented. Kagan and Alito's concurrence indicated their belief that Congress could change the law in order to strengthen copyright protections.
Wiley increased the prices for the international editions as well as the international student editions, citing Kirtsaeng.
In response to the Kirtsaeng decision, the United States Court of Appeals for the Federal Circuit sua sponte called for briefing and amicus curiae participation in an en banc consideration of whether:
In light of Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), should this court overrule Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001), to the extent it ruled that a sale of a patented item outside the United States never gives rise to United States patent exhaustion.
- First-sale doctrine
- Grey market
- Omega S.A. v. Costco Wholesale Corp.
- Quality King v. L'anza, 523 U.S. 135 (1998) - same result, but for goods that were made in the U.S., exported, then re-imported.
- Parallel import
- John Wiley & Sons, Inc. v. Kirtsaeng, 54 F.3d 210 (2d Cir. 2011)
- Schwartz, Meredith; Hadro, Josh; Held, Shari; Kelley, Michael; Lewis, Caroline; Michaelson, Elizabeth; Oder, Norman (2013). "First sale upheld in Kirtsaeng v. Wiley". Library Journal (Media Source) 138 (7): 13.
- Press release (10.07.2013), Wiley-VCH [in German]: http://www.wiley-vch.de/publish/dt/company/news/archive/19545/?sID=5ookr615teu3o57e8dsnee8fc0
- Lexmark Int'l, Inc. v. Impression Prods., Inc., Order of April 14, 2015 (Fed. Cir.).