US Supreme Court to hear copyright first sale case
Managing IP is part of the Delinian Group, Delinian Limited, 4 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2024

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

US Supreme Court to hear copyright first sale case

supremecourtjustices45.jpg

The US Supreme Court is due to hear arguments in Supap Kirtsaeng v John Wiley & Sons, a case that addresses whether copyrighted goods manufactured and purchased abroad are subject to the first sale doctrine, today

The Court tackled the same issue in late 2010, when it considered Costco v. Omega. That case involved a copyrighted globe design on Omega watches manufactured in Switzerland and then sold to a distributor in Paraguay. The distributors then sold them to an American supplier, who sold the watches to Costco, a US discount store.

supremecourtjustices300.jpg

The Ninth Circuit Court of Appeals favoured Costco when it reversed a district court decision in 2008, and in December 2010 the Supreme Court delivered a 4-4 ruling, leaving many open questions.

In the Kirtsaeng case, Supap Kirtsaeng arranged for his family in Thailand to buy cheaper editions of textbooks printed there by Wiley & Sons. They then shipped them to him in the U.S., where he resold them for a profit on websites such as eBay.

The U.S. Court of Appeals for the Second Circuit held that the so-called first sale doctrine—which says that once a copyright owner sells a work, his rights in that work are exhausted—does not apply to copies manufactured outside of the United States, thereby making Kirtsaeng liable for copyright infringement. Kirtsaeng appealed to the Supreme Court, asking it to consider these questions:

Can such a foreign-made product never be resold within the United States without the copyright owner’s permission, as the Second Circuit held in this case? Can such a foreign-made product sometimes be resold within the United States without permission, but only after the owner approves an earlier sale in this country, as the Ninth Circuit held in Costco? Or can such a product always be resold without permission within the United States, so long as the copyright owner authorized the first sale abroad, as the Third Circuit has indicated?

AIPLA has filed an amicus brief in support of John Wiley & Sons. The Association argues that the first sale defense may not be raised, not because the books were made abroad, but because under the extraterritoriality doctrine the first sale right attaches only after the copyright owner has made its first sale in the United States.

Download the AIPLA Daily Report, published by Managing IP from Washington, DC from our conference newspapers page.

more from across site and ros bottom lb

More from across our site

External counsel for automotive companies explain how trends such as AI and vehicle connectivity are affecting their practices and reveal what their clients are prioritising
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The winners of the awards will be revealed at a gala dinner in New York City on April 25
Counsel debate the potential outcome of SCOTUS’s latest copyright case after justices questioned whether they should dismiss it
Each week Managing IP speaks to a different IP lawyer about their life and career
The small Düsseldorf firm is making a big impact in the UPC. Founding partner Christof Augenstein explains why
The court criticised Oppo’s attempts to delay proceedings and imposed a penalty, adding that the Chinese company may need to pay more if the trial isn’t concluded this year
Miguel Hernandez explains how he secured victory for baby care company Naterra in his first oral argument before the Federal Circuit
The UPC judges are wrong – restricting access to court documents, and making parties appoint a lawyer only to have a chance of seeing them, is madness
The group, which includes the Volkswagen, Seat and Audi brands, is now licensed to use SEPs owned by more than 60 patent owners
Gift this article