Public Knowledge (PK), the Electronic Frontier Foundation (EFF), and U.S. Public Interest Research Group asked the Supreme Court today to review a lower court decision in the case John Wiley & Sons, Inc. v. Kirtsaeng that could have major implications for the first sale doctrine and the ability of libraries to offer foreign-made books on their shelves.
As LJ reported previously, the 2nd U.S. Circuit Court of Appeals ruled in August that Supap Kirtsaeng, a Thai man studying in the United States, infringed upon John Wiley & Sons’ copyrights when he had his family send him cheaper foreign editions of Wiley textbooks, printed by Wiley Asia, that he then resold on eBay for a profit.
Kirtsaeng has argued that the first sale doctrine gave him the right to resell the textbooks, but the U.S. District Court for the Southern District of New York ruled against this argument in October 2009 and awarded John Wiley $600,000 in statutory damages. The Second Circuit upheld that decision.
The first sale doctrine, Section 109(a) of the Copyright Act (Title 17), limits the distribution rights of a copyright owner (Section 106) and allows the owner of a copy that is “lawfully made under” the Copyright Act to sell or loan the copy without permission from the copyright holder.
However, the Second Circuit, which heard arguments in May 2010, ruled that the phrase “lawfully made under” means physically manufactured in the United States, further narrowing the applicability of the first sale doctrine, which underpins numerous secondary markets, including the ability of libraries to loan books.
Kirtsaeng is now asking the Supreme Court to review the Second Circuit’s decision, arguing that copies “lawfully made under this title” include all copies made legally (according to Title 17), regardless of where the copies were manufactured.
The amicus brief filed today by the three organizations supports Kirtsaeng’s argument. The brief reads in part:
Libraries, which rely heavily upon the first sale doctrine to lend copies of books to the public, are especially vulnerable under the Second Circuit’s stripped-down version of Section 109(a). Without the protection of Section 109(a) for foreign-printed books, libraries could be forced to affirmatively research the place of manufacture for every book they acquire, even if that acquisition is completed within the United States, and either refuse to stock foreign manufactured copies of books or seek countless licenses from copyright owners to offer those books to the public.
In a blog posting, Jodie Griffin of Public Knowledge called upon the court to use the Kirtsaeng case as an opportunity to clarify the growing number of contradictory decisions that have been issued regarding the first sale doctrine:
For example, the Ninth Circuit has held that the first sale doctrine does apply to foreign-made copies if the copyright owner has sold the copy within the U.S., but the Supreme Court tied 4-4 when it tried to resolve the question, and the Second Circuit has explicitly rejected the Ninth Circuit’s approach. The Court should resolve this circuit split and protect consumers’ ability to sell, lend, and give away their own personal property.