Jul 05, 2012
In its brief, the Library Copyright Alliance, a coalition of three major library groups (ALA, ARL, and the ACRL) asks the Supreme Court to reverse the Second Circuit, and apply first-sale doctrine to all copies “manufactured with the lawful authorization of the holder of a work’s US copyright.”
The Supreme Court case stems from a ruling in John Wiley & Sons, Inc. v. Supap Kirtsaeng, in which Kirtsaeng, a Thai-born U.S. student was successfully sued by Wiley for importing and reselling foreign editions of Wiley textbooks made for exclusive sale abroad, in the U.S. market. In its verdict, a three-judge panel of the Second Circuit affirmed by a 2-1 margin that Kirtsaeng “could not avail himself of the first sale doctrine,” because language in the statute says that products must be “lawfully made.” The court ruled that those two words—“lawfully made”—limits First Sale "specifically and exclusively to works that are made in territories in which the Copyright Act is law, and not to foreign-manufactured works."
That verdict was the second recent decision effectively limiting the First Sale doctrine. In December, 2010, the Supreme Court deadlocked 4-4 (with Justice Elena Kagan abstaining) in the case of Costco Wholesale Corporation v. Omega, S.A., the net effect of which was to affirm a Ninth Circuit Court of Appeals decision that enjoined big-box store Costco from selling copyrighted, foreign-made Omega watches, authorized for sale only in foreign territories, in the U.S. market. Because the Supreme Court deadlocked, however, the Ninth Circuit ruling is non-binding on other circuits.