First Sale Doctrine in Overseas Copyright Case
By R Tamara de Silva
March 19, 2013
The United States Supreme Court ruled 6-3 today that the “first sale” doctrine, a limitation on the rights of a copyright owner in the copyright law, applies to copyrighted books manufactured overseas. The “first sale” doctrine is found in section 109 of the Copyright Act and it means that a person who legally purchases a book or work, protected by copyright may “sell or dispose” of it as she sees fit. 
The first sale doctrine states in pertinent part that,
Notwithstanding the provisions of section 106(3) [the section that grants the owner exclusive distributionrights], the owner of a particular copy or phonorecord lawfully made under this title . . . is entitled, without the authority of the copyright owner, to sell or other¬wise dispose of the possession of that copy or phonorecord. (Emphasis added)
The Court found that in the Copyright Law, copyright protection is bestowed on works “lawfully made” regardless of in which geographic region they are made.
In the present case Kirtsaeng v. John Wiley & Sons, Inc., Supap Kirtsaeng, is a Thai national who came to Cornell University to study mathematics. To help pay for his education, he asked his family and friends in Thailand to purchase textbooks in Thailand which he later resold on Ebay to other students including students in the United States for a profit of $100,000. The publisher of these textbooks, John Wiley & Sons, Inc., successfully sued Kirtsaeng for violating copyright laws and obtained a verdict of $600,000 in damages. The textbooks manufactured in Thailand contained a warning that they were not to be taken (without express permission) into the United States.
The Court reversed the decision of the lower courts and held in favor of Kirtsaeng by finding that he had lawfully purchased the textbooks in Thailand, and his re-selling of them on Ebay was consistent with the doctrine of first sale.
Had the Court ruled in favor of John Wiley & Sons, Inc., the implications upon students, libraries, museums, used-book dealers, software companies, retailers, buyers and sellers on Ebay, Amazon and consumers everywhere who purchase media, laptops, phones, televisions or books from other countries would potentially be immense. For example, before a retailer could sell a computer tablet manufactured overseas, it would have to obtain permission from the software manufacturer. Academic libraries would have to contact publishers before they could lend a vast portion of their collection to students.
Justice Ginsburg, who along with Justice Scalia and Justice Kennedy compromised the dissent, wrote that concerns over possible litigation and the impact on commerce from interpreting the first sale doctrine to have a geographic limitation were overstated. Fortunately, a majority of the Court disagreed.
R. Tamara de Silva
Kirtsaeng v. John Wiley & Sons, Inc..