On August 15, 2011, the U. S. Court of Appeals for the Second Circuit decided a case of first impression for that Circuit, holding that the Copyright Act’s “first sale doctrine” does not apply to books manufactured outside of the United States. The decision could have far-reaching consequences for copyright law in the United States.

The “first sale doctrine” is codified in the Copyright Act, 17 U. S. Code § 109(a), and provides that a person who buys a copyrighted work “lawfully made in the United States”, may sell or otherwise dispose of that copy of the work as the person sees fit, without limitations imposed by the copyright holder. This doctrine, which dates back to 1908, applies to a broad spectrum of everyday situations in the United States, from the ordinary re-sale of books and other copyrighted works at a neighborhood yard sale, to the commercial re-sale of numerous types of copyrighted works in larger retail markets.

In John Wiley & Sons, Inc. v. Kirtsaeng, No. 09-4896-cv (2d. Cir. August 15, 2011), the Second Circuit affirmed a district court decision and held that the first sale doctrine does not apply to copyrighted works produced outside of the United States – in this instance, lawfully manufactured textbooks – that are subsequently imported and resold in the United States.

The plaintiff, John Wiley & Sons, Inc. (“Wiley”), is an American publisher of academic, scientific and educational journals and books, including textbooks, for sale in domestic and international markets. Wiley relies upon a wholly-owned subsidiary (“Wiley Asia”) to manufacture books for sale in foreign countries. The written content of books for the domestic and international markets may be similar or even identical, but the books intended for foreign markets differ from the domestic versions in design, supplemental content (such as accompanying CD-ROM’s) and the type and quality of the materials used to print the books. The foreign editions also carry a legend stating that they are to be sold only in a particular country or region.

Defendant Kirtsaeng is an individual who moved to the U. S. in 1997, to pursue a degree in mathematics and then a doctoral degree. To help pay for his education, Kirtsaeng’s friends and family shipped him foreign edition textbooks printed abroad by Wiley Asia. He, in turn, sold those books on commercial websites such as eBay.com. From the sales revenue, he reimbursed his friends and family for their costs, and kept any remaining profits for himself.

Wiley filed suit against Kirtsaeng in 2008, alleging, among other things, that he had infringed Wiley’s copyrights in the textbooks in question. Wiley relied in part upon 17 U. S. Code § 602(a)(1), that makes unlawful the importation into the U.S., without the authority of the copyright owner, of any copies of a work that have been acquired outside the United States.

Following a trial in 2009, Kirtsaeng was found liable for willful infringement of eight Wiley copyrighted works and for damages of $75,000 for each of the eight works. He appealed, arguing that the district court erred in finding that the “first sale doctrine” was not an available defense.

The Second Circuit rejected Kirtsaeng’s argument, holding that Section 602(a)(1)’s ban on infringing imports applied to his importation of the Wiley books. The court also distinguished Kirtsaeng’s case from the United States Supreme Court’s decision in Quality King Distributors, Inc. v. L’anza Research International, Inc., 523 U. S. 135 (1998), which held that the “first sale doctrine” codified in section 109(a) limited the scope of section 602(a). As the Second Circuit noted, all of the copyrighted items in Quality King had been manufactured in the U.S., then distributed and sold in overseas markets, where the defendant had repurchased them and imported them into the U.S. for domestic re-sales. The Supreme Court did not address the question of cases where the allegedly infringing imports were manufactured in foreign countries.

The Second Circuit therefore analyzed the language of Section 109(a) and held that the statutory provision’s application of the first sale doctrine to copies of works “lawfully made under this title,” meant “lawfully made in the United States.”  Acknowledging that the language of section 109(a) was ambiguous, the Second Circuit drew guidance from the Supreme Court’s holding in Quality King and concluded that Quality King’s dicta suggested section 602(a)’s importation ban was broad enough to encompass books manufactured abroad and then purchased and imported by Kirtsaeng.

The majority opinion in John Wiley & Sons triggered a strong dissent, and the court’s opinion acknowledged that the case presented “a particularly difficult question of statutory construction in light of the ambiguous language of section 109(a).” Other federal courts will undoubtedly be called upon to determine whether they agree or differ with the Second Circuit’s analysis. Nonetheless, the Second Circuit’s decision applies a brighter line to the question than copyright litigants have seen heretofore, and copyright owners may be expected to rely upon that decision to contest the importation of copies of copyrighted works introduced into the United States without the owner’s authorization.