This article has been updated to include comment from Jonathan Band, LCA’s counsel on the brief.
The Library Copyright Alliance (LCA) today filed a friend of the court brief in the case of John Wiley & Sons v. Supap Kirtsaeng, which raises the issue of whether the first sale doctrine applies to books printed overseas and imported into the U.S. (The first sale doctrine allows the purchaser of a legal copy of a book or other copyrighted work to sell or lend that copy.) The Supreme Court agreed to hear the case in April, after the district and appeals courts had both found for Wiley.
The LCA, which is composed of the American Library Association (ALA), The Association of College and Research Libraries (ACRL), and Association of Research Libraries (ARL); argues in its brief that, if the Supreme Court were to confirm that the first sale doctrine does not apply to books printed overseas, it would prevent libraries from lending major parts of their collections.
According to the LCA, more than 200 million books in U.S. libraries have foreign publishers. And that does not include the books with U.S. publishers which were printed elsewhere—more than a third of books sold in the U.S. are imported. WorldCat only has data on where 3 percent of books are printed, so libraries would not know whether a given, already collected book could be circulated. (Even knowing the printing company doesn’t help, since many U.S. printers own foreign facilities or subcontract to foreign companies.)
Tracking down all those rights holders retroactively would be cost and time prohibitive, and, the LCA argues, libraries won’t assume that they won’t get sued and just go ahead with lending, due to constrained legal budgets, avoiding the appearance of impropriety so as to keep the public trust, and the fact that because they collect so many titles, even if only a very small percentage of rights holders chose to take action, libraries would still be vulnerable to a large number of infringement claims.
Future acquisitions, too, would be made much more burdensome because libraries would have to acquire a lending license as well as a physical copy, and maintain records of where every book in the collection was made. There’s no guarantee publishers would choose to make such a license available at any price, the LCA points out, “on the assumption that library lending diverts sales. Current practice regarding electronic books suggests this is likely.”
There’s even a question of whether publishers would be able to license lending rights if they wanted to, or whether authors would. And individuals wanting to give bequests and donations of books to the library would of course not have the lending rights to give with them. If the Fourth Circuit’s holding in Hotaling v. The Church of Jesus Christ and Later Day Saints is correct and using materials in the library counts as distribution, something the LCA disputes, this case would even have a chilling effect on use of foreign-made materials without checking them out.
The LCA therefore asked the court to overrule the Second Circuit’s decision and side with Judge Murtha’s dissent, which defined “lawfully made under this title” as “copies manufactured with the lawful authorization of the holder of a work’s U.S. reproduction and distribution rights” rather than “in the United States.”
However, if the court decides not to do this, the LCA says the Court could lessen the harm to libraries by holding that parties can raise the first sale defense in cases involving foreign-manufactured copies so long as a lawful domestic sale had occurred (which the Ninth Circuit outlined in Denbicare U.S.A. Inc. v. Toys “R” Us Inc.), that the library exception applies to lending as well as importing, and that library lending constitutes a fair use.
“Libraries are standing up for common sense as well as their own rights and the rights of their patrons,” said Winston Tabb, President of ARL. “It simply makes no sense that the law would treat lawful owners of legitimate copies differently depending on where their copies were printed. Why would Congress impose this arbitrary limit on the fundamental rights of libraries and our patrons—to reward publishers who send printing jobs overseas?”
Jonathan Band, who acted as LCA’s counsel on the brief, told LJ, “In the event of an adverse Supreme Court decision that is silent about libraries, libraries would still assert fair use in support of circulation. But fair use is less certain than an explicit exception,” and that an adverse Supreme Court decision is likely to trigger a broad legislative effort to reverse the Court’s ruling, since it would promote the export of U.S. manufacturing jobs.
In answer to how the case might affect that mainstay of local library fundraising, the sale of deaccessioned and donated books, Band said, “An adverse holding by the Supreme Court could call library sale of foreign printed books into question. The fair use fallback might be harder to assert because a court might view the sale of used books as a commercial activity, even though it is supporting a noncommercial institution.”
This isn’t the first time in recent memory that the Court has considered whether the first sale doctrine applies to overseas purchases imported to the U.S. for resale. In 2010’s Omega S.A. v. Costco Wholesale Corp., the court held that it didn’t. However, that was a 4-4 ruling because Justice Elena Kagan was recused from the case because she’d worked on it as solicitor general. Without a majority, the ruling didn’t set a precedent. (The LCA filed an amicus brief in that case as well.) Kagan will participate in the Kirtsaeng decision.