Supreme Court sides with Kirtsaeng on first sale defence

The Court said in Kirtsaeng v Wiley & Sons that the first sale doctrine - which states that once a copyright owner sells a work, his rights in that work are exhausted - applies to copies manufactured outside of the United States with the publisher’s permission. The books at issue were manufactured by Wiley & Sons’ foreign subsidiary, Wiley Asia.

The decision has clarified what the US Copyright Act means by “lawfully made under this title”, but many copyright owners and practitioners will undoubtedly be unhappy with its interpretation.

While Wiley read “lawfully made under this title” to mean that the work must have been geo­graphically made in the US under US copyright law, Kirtsaeng argued that it simply meant ‘in accordance with’ or ‘in compliance with’ the Copyright Act, which would permit the doctrine to apply to copies manufactured abroad with the copyright owner’s permission”, wrote the Court.

AIPLA’s amicus brief argued that the first sale defence 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.

Joshua Rosenkranz of Orrick Herrington & Sutcliffe argued for Kirtsaeng, while Theodore Olson of Gibson Dunn & Crutcher argued for Wiley.