This article is about
Kirtsaeng v. John Wiley & Sons, Inc. ("
Kirtsaeng I "), the 2013 U.S. Supreme Court case regarding the first sale doctrine. For
Kirtsaeng v. John Wiley & Sons, Inc. ("
Kirtsaeng II "), the 2016 follow-on case regarding attorney's fees, see
List of United States Supreme Court cases, volume 579 .
2013 United States Supreme Court case
Kirtsaeng v. John Wiley & Sons, Inc. Full case name Supap Kirtsaeng, dba Bluechristine99, Petitioner v. John Wiley & Sons, Inc. Docket no. 11-697 Citations 568 U.S. 519 (more 133 S. Ct. 1351; 185
L. Ed. 2d 392; 2013
U.S. LEXIS 2371; 106
U.S.P.Q.2d 1001; 2013 ILRC 1487; 35 ILRD 648; 35 ITRD 1049; 41 Med. L. Rptr. 1441; 81 U.S.L.W. 4167
Opinion announcement Opinion announcement Prior Defendant prohibited from raising argument, No. 1:08-cv-07834 , 2009 WL 3364037 (S.D.N.Y. Oct. 19, 2009) and held liable, unreported (2010); affirmed. 654 F.3d 210 (2d Cir. 2011); cert . granted, 566 U.S. 936 (2012). Subsequent Remanded, 713 F.3d 1142 (2d Cir. 2013); motion for attorneys' fees denied, 109 U.S.P.Q.2d 1242 (S.D.N.Y. 2013); affirmed, 605 F. App'x 48 (2d Cir. 2015); cert. granted, 136 S. Ct. 890 (2016); vacated and remanded, 136 S. Ct. 1979 (2016); remanded, 653 F. App'x 82 (2d Cir. 2016); motion for attorneys' fees denied, 121 U.S.P.Q.2d 1457 (S.D.N.Y. 2016). The first-sale doctrine applies to copies of a copyrighted work lawfully made abroad. Reversed and remanded.
Chief Justice
John Roberts
Associate Justices
Antonin Scalia · Anthony Kennedy Clarence Thomas · Ruth Bader Ginsburg Stephen Breyer · Samuel Alito Sonia Sotomayor · Elena Kagan
Majority Breyer, joined by Roberts, Thomas, Alito, Sotomayor, Kagan Concurrence Kagan, joined by Alito Dissent Ginsburg, joined by Kennedy; Scalia (except Parts III and V–B–1) Copyright Act of 1976
Kirtsaeng v. John Wiley & Sons, Inc. United States Supreme Court copyright decision in which the Court held, 6–3, that the first-sale doctrine applies to copies of copyrighted works lawfully made abroad.[1]
Background [ edit ] 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.[2] [3] 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 the parties disputed the net profit amount.[4]
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.[5]
Kirtsaeng then appealed to the Supreme Court, which granted the writ of certiorari on April 16, 2012. Oral argument was held October 29, and judgment was issued March 19, 2013.
Decision [ edit ] 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. So, wherever a copy of a book is first made and sold, it can be resold in the U.S. without permission from the publisher.[6]
Justice Stephen Breyer wrote the opinion of the court which, was joined by five Justices (Roberts, Thomas, Alito, Sotomayor, and Kagan).[1] Elena Kagan also wrote a separate concurring opinion, signed by Samuel Alito . Justice Ruth Bader Ginsburg dissented, joined by Anthony Kennedy and Antonin Scalia . Kagan's concurrence suggested that Congress could change the law to reverse the decision.[7]
Reactions [ edit ] In law, Kirtsaeng has had the effect of causing a fresh look at the issue of "international exhaustion " in the patent context. The Federal Circuit in the 2001 Jazz Photo v. US International Trade Commission Lexmark v. Impression Products sua sponte amicus curiae en banc
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.[8]
Similarly, an effort by academic publisher Pearson to control after-market textbook sales on the basis of trademark was dismissed, citing Kirtsaeng .[9]
In educational publishing, Wiley, the Kirtsaeng plaintiff that lost the case, increased its prices for the international editions as well as the international student editions and cited Kirtsaeng .[10]
The decision also had an outcome-determinative effect on the long-pending dispute between Omega watches (a division of Swatch ) and the retailer Costco . Whereas Omega had initially prevailed in the Ninth Circuit, the same way that John Wiley had, the decision was reversed after the United States Supreme Court decided Kirtsaeng .[11]
See also [ edit ] References [ edit ]
^ a b Kirtsaeng v. John Wiley & Sons, Inc. , 568 U.S. 519 (2013).^ "Complaint, John Wiley & Sons, Inc. v. Supap Kirtsaeng et al" (PDF) . PacerMonitor . PacerMonitor. Retrieved June 16, 2016 .^ John Wiley & Sons, Inc. v. Kirtsaeng 654 F.3d 210 (2d Cir. 2011).^ "Supreme Court to hear arguments in case of student who resold books" . cnn.com. October 26, 2012. Retrieved November 16, 2015 .^ Mandavia, Anji (March 27, 2013). "The Supreme Court Clarifies the Application of the "First Sale" Doctrine to Copyrighted Works Manufactured Abroad" . The IP Law Blog . Archived from the original on February 23, 2018. Retrieved February 22, 2018 . ^ Mann, Ronald (March 19, 2013). "Opinion analysis: Justices reject publisher's claims in gray-market copyright case" . SCOTUSblog . Retrieved March 20, 2017 . ^ 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 Inc. 138 (7): 13. ^ Lexmark Int'l, Inc. v. Impression Prods., Inc. , Order of April 14, 2015 (Fed. Cir.).^ Pearson v. Liu , SDNY Oct. 22, 2013.^ "Press release (10.07.2013), Wiley-VCH [in German]" . July 10, 2013. Archived from the original on February 5, 2015.^ OMEGA SA v. Costco Wholesale Corp. 776 F.3d 692 (9th Cir. 2015).
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