US Supreme Court case on scope of first-sale doctrine sparks debate

Today, the US Supreme Court will hear the oral arguments in the case of Kirtsaeng v. John Wiley & Sons, Inc. For the details of the case, see our earlier post. This case is followed with great interest by many, as it is expected to affect the scope of the first sale doctrine in the United States, So far, almost 30 amicus briefs have been filed.  

The two extremes in this copyright battle are perhaps best represented by the amicus briefs of the Association of American Publishers (AAP) on the one hand, and Ebay Inc., et al on the other. AAP argues that “The unauthorized importation of books acquired outside of the United States and made under foreign law for foreign markets infringes the exclusive rights of the United States copyright owner” and that “Importation of works made abroad for the foreign market, without the authority of the U.S. copyright owner, renders those rights radically insecure, and diminishes both the value of copyright and its power to stimulate further creation and distribution.” 

Ebay, on the other hand, argues that the Second Circuit Court has misconstrued the first sale doctrine, by holding that the first sale principle applies “only to works manufactured domestically” and that “in so holding, the Second Circuit imposed a place of manufacturing requirement on the first sale of doctrine that is directly at odds with the text, structure, history, and purposes of the Copyright Act.”   

Interestingly, Ebay’s comment, finds support in an amicus brief of 25 full-time legal academics specialized in intellectual property law. The scholars argue that “The structure of the Copyright Act demonstrates that the ambiguous phrase “lawfully made under this title” in § 109(a) does not mean “made in the United States,” as the court of appeals concluded. Because other provisions of the Copyright Act use that phrase to include items made abroad, the Second Circuit’s interpretation would render the Act internally inconsistent. Congress has also demonstrated that it knows perfectly well how to adopt a place-of-manufacture requirement in the Act when it desires to do so, making it inappropriate to imply such a limitation. 

In the end, the question could be asked; whose right has priority in this case? The right of the copyright holder to control the distribution of works, or the right of the owner to dispose of his property as he sees fit?  

Read more about the first sale doctrine on FutureOfCopyright.com: 

• Supreme Court of the US about to determine scope of the first-sale doctrine
• US Court about to rule whether first-sale doctrine applies to digital music
• Supreme Court of Justice about to set US standard regarding first-sale doctrine

Sources: Ars Technica

By Pawel Archipow