International First Sale is upheld

[Kim Gainer]

Coverage of Supreme Court decision on Kirtsaeng v. Wiley at Scholarly
Communications @ Duke: http://blogs.library.duke.edu/scholcomm/2013/03/19/international-first-sale-is-upheld/
.

[Kim Gainer]

From the Kirtsaeng v. Wiley decision, via Digital Koans

DigitalKoans
What Is the Sound of One E-Print Downloading?
First Sale Doctrine Win in Kirtsaeng v. John Wiley & Sons
The Supreme Court has ruled in Kirtsaeng, dba Bluechristine99 v. John
Wiley & Sons, Inc. that the first sale doctrine applies to “copies of
a copyrighted work lawfully made abroad.”

Here's an excerpt from the ruling:

Held: The "first sale" doctrine applies to copies of a copyrighted
work lawfully made abroad. Pp. 7-33.

(a) Wiley reads "lawfully made under this title" to impose a
geographical limitation that prevents §109(a)'s doctrine from applying
to Wiley Asia's books. Kirtsaeng, however, reads the phrase as
imposing the non-geographical limitation made "in accordance with" or
"in compliance with" the Copyright Act, which would permit the
doctrine to apply to copies manufactured abroad with the copyright
owner's permission. Pp. 7-8.

(b) Section 109(a)'s language, its context, and the "first sale"
doctrine's common-law history favor Kirtsaeng's reading. Pp. 8-24.

(1) Section 109(a) says nothing about geography. "Under" can logically
mean "in accordance with." And a nongeographical interpretation
provides each word in the phrase "lawfully made under this title" with
a distinct purpose: "lawfully made" suggests an effort to distinguish
copies that were made lawfully from those that were not, and "under
this title" sets forth the standard of "lawful[ness]" (i.e., the U. S.
Copyright Act). This simple reading promotes the traditional copyright
objective of combatting piracy and makes word-by-word linguistic
sense.

In contrast, the geographical interpretation bristles with linguistic
difficulties. Wiley first reads "under" to mean "in conformance with
the Copyright Act where the Copyright Act is applicable." Wiley then
argues that the Act "is applicable" only in the United States.
However, neither "under" nor any other word in "lawfully made under
this title" means "where." Nor can a geographical limitation be read
into the word "applicable." The fact that the Act does not instantly
protect an American copyright holder from unauthorized piracy taking
place abroad does not mean the Act is inapplicable to copies made
abroad. Indeed, §602(a)(2) makes foreign-printed pirated copies
subject to the Copyright Act. And §104 says that works "subject to
protection" include unpublished works "without regard to the
[author's] nationality or domicile," and works "first published" in
any of the Cite as: 568 U. S. ____ (2013) 3 Syllabus nearly 180
nations that have signed a copyright treaty with the United States.
Pp. 8-12.

(2) Both historical and contemporary statutory context indicate that
Congress did not have geography in mind when writing the present
version of §109(a). A comparison of the language in §109(a)'s
predecessor and the present provision supports this conclusion. The
former version referred to those who are not owners of a copy, but
mere possessors who "lawfully obtained" a copy, while the present
version covers only owners of a "lawfully made" copy. This new
language, including the five words at issue, makes clear that a lessee
of a copy will not receive "first sale" protection but one who owns a
copy will be protected, provided that the copy was "lawfully made." A
nongeographical interpretation is also supported by other provisions
of the present statute. For example, the "manufacturing clause," which
limited importation of many copies printed outside the United States,
was phased out in an effort to equalize treatment of copies made in
America and copies made abroad. But that "equal treatment" principle
is difficult to square with a geographical interpretation that would
grant an American copyright holder permanent control over the American
distribution chain in respect to copies printed abroad but not those
printed in America. Finally, the Court normally presumes that the
words "lawfully made under this title" carry the same meaning when
they appear in different but related sections, and it is unlikely that
Congress would have intended the consequences produced by a
geographical interpretation. Pp. 12-16.

(3) A nongeographical reading is also supported by the canon of
statutory interpretation that "when a statute covers an issue
previously governed by the common law," it is presumed that "Congress
intended to retain the substance of the common law." Samantar v.
Yousuf, 560 U. S. ___, ___. The common-law "first sale" doctrine,
which has an impeccable historic pedigree, makes no geographical
distinctions. Nor can such distinctions be found in Bobbs-Merrill Co.
v. Straus, 210 U. S. 339, where this Court first applied the "first
sale" doctrine, or in §109(a)'s predecessor provision, which Congress
enacted a year later. Pp. 17-19.

(4) Library associations, used-book dealers, technology companies,
consumer-goods retailers, and museums point to various ways in which a
geographical interpretation would fail to further basic constitutional
copyright objectives, in particular "promot[ing] the Progress of
Science and useful Arts," Art. I, §8, cl. 8. For example, a
geographical interpretation of the first-sale doctrine would likely
require libraries to obtain permission before circulating the many
books in their collections that were printed overseas. Wiley counters
that such problems have not occurred in the 30 years since a federal
court first adopted a geographical interpretation. But the law has not
been settled for so long in Wiley's favor. The Second Circuit in this
case was the first Court of Appeals to adopt a purely geographical
interpretation. Reliance on the "first sale" doctrine is also deeply
embedded in the practices of booksellers, libraries, museums, and
retailers, who have long relied on its protection. And the fact that
harm has proved limited so far may simply reflect the reluctance of
copyright holders to assert geographically based resale rights. Thus,
the practical problems described by petitioner and his amici are too
serious, extensive, and likely to come about to be dismissed as
insignificant—particularly in light of the ever-growing importance of
foreign trade to America. Pp. 19-24.

(c) Several additional arguments that Wiley and the dissent make in
support of a geographical interpretation are unpersuasive. Pp. 24-33.
654 F. 3d 210, reversed and remanded.

BREYER, J., delivered the opinion of the Court, in which ROBERTS, C.
J., and THOMAS, ALITO, SOTOMAYOR, and KAGAN, JJ., joined. KAGAN, J.,
filed a concurring opinion, in which ALITO, J., joined. GINSBURG, J.,
filed a dissenting opinion, in which KENNEDY, J., joined, and in which
SCALIA, J., joined except as to Parts III and V-B-1.

On Mar 19, 1:08 pm, Kim Gainer <kgai...@radford.edu> wrote:
> Coverage of Supreme Court decision on Kirtsaeng v. Wiley at Scholarly

> Communications @ Duke:http://blogs.library.duke.edu/scholcomm/2013/03/19/international-firs...
> .