Kirtsaeng v. John Wiley & Sons, Inc.

The first-sale doctrineauthorizes an owner of a copyrighted work to sell that work without the permission of the copyright owner. The issue in this case concerns the interpretation of this doctrine. Kirtsaeng contends that the doctrine applies to a copyrighted work manufactured and legally obtained abroad and then sold in the U.S. Wiley asserts that this doctrine only pertains to copyrighted works manufactured in the U.S. and that 17 U.S.C. §602(a)(1) governs Kirtsaeng’s actions.

RECONCILING 17 U.S.C. §109(a) WITH 17 U.S.C. §602(a)(1)

According to Kirtsaeng, §602(a)(1), which states that importing works into the U.S. without the permission of the copyright owner violates the owner’s right to distribute the copies, is just as ambiguous as §109(a). Kirtsaeng claims, however, that the two statutes can be reconciled by recognizing that, based on the wording of the Copyright Act, § 602(a)(1) is subject to §§107-122 which include exceptions or limitations to the rights contained in the Act. Kirtsaeng bases this claim on the fact that § 602(a)(1) states that importing a copy without the copyright owner’s permission is “an infringement of the exclusive right to distribute copies or phonorecords under section 106.” Section 106 in turn, states that “subject to sections 107 through 122,” a copyright owner has certain rights under the section. Therefore, following the chain from § 602(a)(1) to §106 to §§ 107–122, Kirtsaeng concludes, § 602(a)(1) is subject to the first-sale doctrine in §109(a)(1).

Kirtsaeng’s understanding of § 602(a)(1) concerns Wiley because most works imported into the U.S. are first sales, so that applying the first-sale doctrine to works manufactured abroad would eliminate § 602(a)(1)’s significance. Specifically, Wiley notes that under §602(a)(1) copyright owners are protected from having their works imported into the U.S. without their permission. Wiley claims, however, that applying the first-sale doctrine to §602(a)(1), would override this protection by giving the owner of a copyrighted work the power to import the work into the U.S. without the copyright owner’s permission.

In response, Kirtsaeng argues that his interpretation of the first-sale doctrine as applying to copyrighted works manufactured abroad and imported into the U.S. does not deprive § 602(a)(1) of its meaning. Kirtsaeng cites certain objectives, such as protecting against infringement by a non-owner, that § 602(a)(1) still can achieve under his interpretation. Wiley asserts, however, that although § 602(a)(1) may still serve some purpose, Kirtsaeng’s interpretation of the first-sale doctrine narrows the effectiveness of the statute. Wiley claims that Congress did not intend for § 602(a)(1) to be narrowed this way.

THE PROPER CONSTRUCTION OF 17 U.S.C. §109(a)’S TEXT

Kirtsaeng asserts that the phrase “lawfully made under this title” in § 109(a) means “in accordance with the Copyright Act.” Based on this interpretation and a plain reading of the statute, Kirtsaeng argues that the statute does not specifically distinguish between copies manufactured abroad and those manufactured in the U.S. Specifically, Kirtsaeng argues that reading “lawfully made under this title” to mean “manufactured on U.S. soil,” as he believes Wiley suggests, is illogical. According to Kirtsaeng, there are more precise and concise ways to indicate that § 109(a) applies to works “manufactured on U.S. soil.” Moreover, asserts that his interpretation of the phrase is how the United States Supreme Court has understood the statute in previous cases.

Wiley responds that the phrase in question is best interpreted to mean copies made according to the Copyright Act where the Act is in effect. Wiley argues that Kirtsaeng’s interpretation is irrational because a copy cannot be “made under” the statute if the Act does not apply. The Act does not apply outside the U.S. and consequently, Wiley contends that § 109(a) does not apply to works manufactured abroad.

Kirtsaeng further claims that Congressional interpretation of § 109(a) accords with his interpretation of the statute. He traces the first-sale doctrine back to 1600s common law, and notes that when Congress codified the doctrine in §1909, which was the original version of § 109(a), the doctrine was not restricted only to the U.S. Kirtsaeng claims that despite making amendments to the Copyright Act, Congress never changed §1909’s original meaning. He also claims that, although Congress changed the statute’s general wording in 1976, its meaning did not change. Finally, Kirtsaeng concludes that Congress would approve of his understanding of the statute because his interpretation will produce reasonable results, unlike Wiley’s interpretation.

Respondent, however, contends that Congress would approve of Wiley’s interpretation. Wiley notes that that lower courts have used its interpretation, but Congress has not changed the wording of “lawfully made under this title.” This is significant to Wiley because in the past Congress has changed the Copyright Act after lower courts interpreted the Act in a way that Congress did not agree with, suggesting that Congress does indeed support Wiley’s interpretation.

UNDERSTANDING 17 U.S.C. § 109(a) IN THE CONTEXT OF THE COPTYRIGHT ACT

Kirtsaeng contends that his interpretation of § 109(a) makes the most sense based on the Copyright Act as a whole. Noting that the phrase “under this title” appears 91 times in the Act, Kirtsaeng analyzes other Act sections that use this phrase. concludes that these other sections use the phrase the same way as he does. For example, § 106 states that “the owner of copyright under this title has the exclusive rights to do and to authorize any of the following.” Using Kirtsaeng’s interpretation, this statute means that an owner who has a copyright recognized by the Act has the rights that the Act grants copyright owners. Comparatively, Wiley’s interpretation would make the statute mean that a copyright owner in the U.S. has the rights guaranteed under the Copyright Act. According to Kirtsaeng, this interpretation is nonsensical because it suggests that a copyright owner who leaves the U.S. will be deprived of these rights.

Wiley counters that Kirtsaeng’s understanding of the phrase “under this title” in the other sections of the Act is actually consistent with Wiley’s understanding of the phrase. It argues that the phrase means “pursuant to this title,” and that this understanding demonstrates that the phrase only refers to works that have the Act’s protection. Consequently, Wiley reiterates that because the Act does not apply aboard, it, and thus § 109(a), only offers protection in the U.S. Furthermore, Wiley claims that the Act’s history and purpose prove that the first-sale doctrine does not apply to works manufactured abroad because the development of the current Act reflects a desire to control the importation of copies into the U.S.

INTERPRETATION OF 17 U.S.C. §109(a) UNDER QUALITY KING

Both Kirtsaeng and Wiley rely on the Supreme Court’s decision in Quality King Distributors, Inc. v. L’Anza Research International, Inc. (“Quality King”) as precedent to support their interpretation of the first-sale doctrine. In Quality King, the Supreme Court held that the first-sale doctrine applies to copies manufactured in the United States, sold abroad, and then sold again in the United States.

Kirtsaeng asserts that in Quality King the Supreme Court concluded that § 602 is subject to § 109(a) and that the first-sale doctrine applies even if the work is first purchased abroad. Conversely, Wiley claims that Kirtsaeng misconstrues the decision in Quality King and that the Supreme Court actually determined that the first-sale doctrine does not apply to copies made under a foreign country’s copyright laws.