US Supreme Court Weighs Copyright Issue on Foreign-Produced Products
The US Supreme Court heard arguments Monday in the case of Kirtsaeng v. John Wiley, a landmark case that could determine whether foreign produced items may be imported into the US and sold without the manufacturer's permission.
Supap Kirtsaeng, a native of Thailand studying in the US, arranged to have family members purchase textbooks in Thailand where they are significantly cheaper than the US versions of the same texts and ship them to the US. He then resold them on eBay. Later, publisher John Wiley and Sons sued Kirtsaeng for copyright infringement and was awarded $600,000 in damages.
Supporters of Kirtsaeng believe his sale on Ebay was protected by the first sale doctrine which limits downstream distribution rights of publishers once an initial legal sale of the item has been made. Supporters of Wiley believe publishers have the right to prevent importation of foreign-made items into the US.
The first sale doctrine is derived from a 1908 High Court ruling in Bobbs-Merrill Co. v. Straus and later codified by Congress in Copyright Act of 1976, 17 U.S.C. § 109(a) "Notwithstanding the provisions of section 106 (3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord."
The case will ultimately turn on how the Court interprets "lawfully made under this title". In 1998, the Court decided in Quality King Distributors Inc., v. L'anza Research International Inc. that items made in the US but exported and sold overseas could be imported into the US without the manufacturer's permission.
One of the points made in the opinion of the Quality King case that lower courts seem to be following is that there is a category of products that are “lawfully made” (i.e. not piratical ) but not “lawfully made under this title.” In other words "That category encompasses copies that were “lawfully made” not under the United States Copyright Act, but instead, under the law of some other country."
However, in spite of this, and that the opinion written by Justice Stevens was delivered for a unanimous Court, Justice Ginsberg wrote a concurring opinion that "This case involves a “round trip” journey, travel of the copies in question from the United States to places abroad, then back again. I join the Court’s opinion recognizing that we do not today resolve cases in which the allegedly infringing imports were manufactured abroad."
Another similar case, COSTCO WHOLESALE CORPORATION, PETITIONER v. OMEGA, S. A., came before the Court in 2010. In this case, watches manufactured by Omega outside of the US were imported by Costco. The trial court found Costco did not violate the copyright. The Ninth Circuit reversed the decision on appeal. The case finally made it to the US Supreme Court where Justice Kagan recused herself due to having prepare a brief in the case earlier for the Justice Department. The Court was evenly split 4-4 in a Per Curium decision, leaving the issue unresolved. As Per Curium decisions are unsigned, the was no guidance on which justices favored which sides of the dispute.
In the current case, all nine justices will be participating in the ruling with a decision expected in June. Whatever the outcome of this case is, there is expected to be intense lobbying by the losing side for Congress to tilt the issue in its favor.
Supap Kirtsaeng, a native of Thailand studying in the US, arranged to have family members purchase textbooks in Thailand where they are significantly cheaper than the US versions of the same texts and ship them to the US. He then resold them on eBay. Later, publisher John Wiley and Sons sued Kirtsaeng for copyright infringement and was awarded $600,000 in damages.
Supporters of Kirtsaeng believe his sale on Ebay was protected by the first sale doctrine which limits downstream distribution rights of publishers once an initial legal sale of the item has been made. Supporters of Wiley believe publishers have the right to prevent importation of foreign-made items into the US.
The first sale doctrine is derived from a 1908 High Court ruling in Bobbs-Merrill Co. v. Straus and later codified by Congress in Copyright Act of 1976, 17 U.S.C. § 109(a) "Notwithstanding the provisions of section 106 (3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord."
The case will ultimately turn on how the Court interprets "lawfully made under this title". In 1998, the Court decided in Quality King Distributors Inc., v. L'anza Research International Inc. that items made in the US but exported and sold overseas could be imported into the US without the manufacturer's permission.
One of the points made in the opinion of the Quality King case that lower courts seem to be following is that there is a category of products that are “lawfully made” (i.e. not piratical ) but not “lawfully made under this title.” In other words "That category encompasses copies that were “lawfully made” not under the United States Copyright Act, but instead, under the law of some other country."
However, in spite of this, and that the opinion written by Justice Stevens was delivered for a unanimous Court, Justice Ginsberg wrote a concurring opinion that "This case involves a “round trip” journey, travel of the copies in question from the United States to places abroad, then back again. I join the Court’s opinion recognizing that we do not today resolve cases in which the allegedly infringing imports were manufactured abroad."
Another similar case, COSTCO WHOLESALE CORPORATION, PETITIONER v. OMEGA, S. A., came before the Court in 2010. In this case, watches manufactured by Omega outside of the US were imported by Costco. The trial court found Costco did not violate the copyright. The Ninth Circuit reversed the decision on appeal. The case finally made it to the US Supreme Court where Justice Kagan recused herself due to having prepare a brief in the case earlier for the Justice Department. The Court was evenly split 4-4 in a Per Curium decision, leaving the issue unresolved. As Per Curium decisions are unsigned, the was no guidance on which justices favored which sides of the dispute.
In the current case, all nine justices will be participating in the ruling with a decision expected in June. Whatever the outcome of this case is, there is expected to be intense lobbying by the losing side for Congress to tilt the issue in its favor.
posted by Chatbots AI at 10:14 PM
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