Opinion: Kirtsaeng v. John Wiley & Sons, Inc.
Opinion: Kirtsaeng v. John Wiley & Sons, Inc.
Opinion: Kirtsaeng v. John Wiley & Sons, Inc.
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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 pre-
sent 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 lan-
guage, 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 treat-
ment” principle is difficult to square with a geographical interpreta-
tion that would grant an American copyright holder permanent con-
trol 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 conse-
quences 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 previ-
ously 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 enact-
ed a year later. Pp. 17–19.
(4) Library associations, used-book dealers, technology compa-
nies, 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 re-
quire 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
4 KIRTSAENG v. JOHN WILEY & SONS, INC.
Syllabus
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 inter-
pretation. Reliance on the “first sale” doctrine is also deeply embed-
ded 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 prac-
tical 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.
No. 11–697
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349–350.
We also explained why we rejected the claim that our
interpretation would make §602(a)(1) pointless. Those
advancing that claim had pointed out that the 1976 Copy
right Act amendments retained a prior anti-piracy provi
sion, prohibiting the importation of pirated copies. Qual
ity King, supra, at 146. Thus, they said, §602(a)(1) must
prohibit the importation of lawfully made copies, for to
allow the importation of those lawfully made copies after a
first sale, as Quality King’s holding would do, would leave
§602(a)(1) without much to prohibit. It would become
superfluous, without any real work to do.
We do not believe that this argument is a strong one.
Under Quality King’s interpretation, §602(a)(1) would still
forbid importing (without permission, and subject to the
exceptions in §602(a)(3)) copies lawfully made abroad, for
example, where (1) a foreign publisher operating as the
licensee of an American publisher prints copies of a book
overseas but, prior to any authorized sale, seeks to send
them to the United States; (2) a foreign printer or other
manufacturer (if not the “owner” for purposes of §109(a),
e.g., before an authorized sale) sought to send copyrighted
goods to the United States; (3) “a book publisher trans
ports copies to a wholesaler” and the wholesaler (not yet
the owner) sends them to the United States, see Copyright
Law Revision, pt. 4, at 211 (giving this example); or (4)
a foreign film distributor, having leased films for distri-
bution, or any other licensee, consignee, or bailee sought to
send them to the United States. See, e.g., 2 Nimmer on
Copyright §8.12[B][1][a], at 8–159 (“Section 109(a) pro
vides that the distribution right may be exercised solely
with respect to the initial disposition of copies of a work,
not to prevent or restrict the resale or other further trans
fer of possession of such copies”). These examples show
that §602(a)(1) retains significance. We concede it has less
significance than the dissent believes appropriate, but the
Cite as: 568 U. S. ____ (2013) 27
No. 11–697
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that outcome, see 523 U. S., at 151–152, the Solicitor General offered a
cogent argument to the contrary. He reasoned that §109(a) does not
limit §602(a)(1) because the former authorizes owners only to “sell” or
“dispose” of copies—not to import them: The Act’s first-sale provision
and its importation ban thus regulate separate, non-overlapping
spheres of conduct. See Brief for United States as Amicus Curiae in
Quality King, O. T. 1996, No. 96–1470, pp. 5, 8–10. That reading
remains the Government’s preferred way of construing the statute. See
Tr. of Oral Arg. 44 (“[W]e think that we still would adhere to our view
that section 109(a) should not be read as a limitation on section
602(a)(1)”); see also ante, at 32–33; post, at 21, n. 15 (GINSBURG, J.,
dissenting).
Cite as: 568 U. S. ____ (2013) 3
No. 11–697
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§109(a) “little, if any, linguistic work to do.” Ante, at 9. That is not so.
My reading gives meaning to each word in the phrase “lawfully made
8 KIRTSAENG v. JOHN WILEY & SONS, INC.
applications”).7
The Court’s decision also overwhelms 17 U. S. C.
§602(a)(3)’s exceptions to §602(a)(1)’s importation prohibi
tion. 2 P. Goldstein, Copyright §7.6.1.2(a), p. 7:141 (3d ed.
2012) (hereinafter Goldstein).8 Those exceptions permit
the importation of copies without the copyright owner’s
authorization for certain governmental, personal, schol-
arly, educational, and religious purposes. 17 U. S. C.
§602(a)(3). Copies imported under these exceptions “will
often be lawfully made gray market goods purchased
through normal market channels abroad.” 2 Goldstein
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7 Notably, the Court ignores the history of §602(a)(1), which reveals
III
The history of §602(a)(1) reinforces the conclusion I
draw from the text of the relevant provisions: §109(a)
does not apply to copies manufactured abroad. Section
602(a)(1) was enacted as part of the Copyright Act of 1976,
90 Stat. 2589–2590. That Act was the product of a lengthy
revision effort overseen by the U. S. Copyright Office. See
Mills Music, Inc. v. Snyder, 469 U. S. 153, 159–160 (1985).
In its initial 1961 report on recommended revisions, the
Copyright Office noted that publishers had “suggested
that the [then-existing] import ban on piratical copies
should be extended to bar the importation of . . . foreign
edition[s]” in violation of “agreements to divide interna
tional markets for copyrighted works.” Copyright Law
Revision: Report of the Register of Copyrights on the
General Revision of the U. S. Copyright Law, 87th Cong.,
1st Sess., 126 (H. R. Judiciary Comm. Print 1961) (herein
after Copyright Law Revision). See Copyright Act of 1947,
§106, 61 Stat. 663 (“The importation into the United
States . . . of any piratical copies of any work copyrighted
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§109(a) is consistent with Congress’ use of that phrase in §104. Fur
thermore, §104 describes which works are entitled to copyright protec
tion under U. S. law. But no one disputes that Wiley’s copyrights in the
works at issue in this case are valid. The only question is whether
Kirtsaeng’s importation of copies of those works infringed Wiley’s
copyrights. It is basic to copyright law that “[o]wnership of a copyright
. . . is distinct from ownership of any material object in which the work
is embodied.” 17 U. S. C. §202. See also §101 (“ ‘Copies’ are material
objects, other than phonorecords, in which a work is fixed by any
method now known or later developed, and from which the work can be
perceived, reproduced, or otherwise communicated, either directly or
with the aid of a machine or device.”). Given the distinction copyright
law draws between works and copies, §104 is inapposite to the question
here presented. 4 Patry §13:44.10, at 13–129 (“There is no connection,
linguistically or substantively, between Section[s] 104 and 109: Section
104 deals with national eligibility for the intangible work of authorship;
Section 109(a) deals with the tangible, physical embodiment of the
work, the ‘copy.’ ”).
14 KIRTSAENG v. JOHN WILEY & SONS, INC.
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11 As the Court observes, ante, at 29, Irwin Karp of the Authors
League of America stated at the 1964 panel discussion that §44(a) ran
counter to “the very basic concept of copyright law that, once you’ve sold
a copy legally, you can’t restrict its resale.” Copyright Law Revision
Part 4, at 212. When asked if he was “presenting . . . an argument
against” §44(a), however, Karp responded that he was “neutral on th[e]
provision.” Id., at 211. There is thus little reason to believe that any
changes to the wording of §44(a) before its codification in §602(a) were
made in response to Karp’s discussion of “the problem of restricting
[the] transfer of . . . lawfully obtained [foreign] copies.” Ibid.
12 There is but one difference between this language from the 1965
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13 The Court purports to find support for its position in the House and
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14 Chiappetta,The Desirability of Agreeing to Disagree: The WTO,
TRIPS, International IPR Exhaustion and a Few Other Things, 21
Mich. J. Int’l L. 333, 340 (2000) (hereinafter Chiappetta) (internal
quotation marks omitted).
20 KIRTSAENG v. JOHN WILEY & SONS, INC.
tion when that is its intent. Indeed, Congress has expressly provided
for international exhaustion in the narrow context of semiconductor
chips embodying protected “mask works.” See 17 U. S. C. §§905(2),
906(b). See also 2 M. Nimmer & D. Nimmer, Copyright §8A.06[E],
p. 8A–37 (2012) (hereinafter Nimmer) (“[T]he first sale doctrine under
[§906(b)] expressly immunizes unauthorized importation.”).
Cite as: 568 U. S. ____ (2013) 23
B
The Court sees many “horribles” following from a hold
ing that the §109(a) phrase “lawfully made under this
title” does not encompass foreign-made copies. Ante, at 22
(internal quotation marks omitted). If §109(a) excluded
foreign-made copies, the Court fears, then copyright own
ers could exercise perpetual control over the downstream
distribution or public display of such copies. A ruling in
Wiley’s favor, the Court asserts, would shutter libraries,
put used-book dealers out of business, cripple art muse
ums, and prevent the resale of a wide range of consumer
goods, from cars to calculators. Ante, at 19–22. See also
ante, at 2–3 (KAGAN, J., concurring) (expressing concern
about “imposing downstream liability on those who pur
chase and resell in the United States copies that happen
to have been manufactured abroad”). Copyright law and
precedent, however, erect barriers to the anticipated
horribles.18
1
Recognizing that foreign-made copies fall outside the
ambit of §109(a) would not mean they are forever free of
the first sale doctrine. As earlier observed, see supra, at 2,
the Court stated that doctrine initially in its 1908 Bobbs-
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on the distribution of its own textbooks. See Hovenkamp, Post-Sale
Restraints and Competitive Harm: The First Sale Doctrine in Perspec
tive, 66 N. Y. U. Ann. Survey Am. L. 487, 488 (2011) (“vertical re
straints” include “limits [on] the way a seller’s own product can be
distributed”).
18 As the Court observes, ante, at 32–33, the United States stated at
the §106(3) distribution right does not leave §109(a) with no work to do.
There can be little doubt that the books at issue in Bobbs-Merrill were
published and first sold in the United States. See Bobbs-Merrill Co. v.
Straus, 139 F. 155, 157 (CC SDNY 1905) (the publisher claiming copy-
right infringement in Bobbs-Merrill was incorporated and had its
principal office in Indiana). See also Copyright Act of 1891, §3, 26 Stat.
1107–1108 (generally prohibiting importation, even by the copyright
owner, of foreign-manufactured copies of copyrighted books); 4 Patry
§13:40, at 13–111 (under the Copyright Act of 1891, “copies of books by
both foreign and U. S. authors had to be printed in the United States”).
But cf. ante, at 18 (asserting, without acknowledging the 1891 Copy
right Act’s general prohibition against the importation of foreign-made
copies of copyrighted books, that the Court is unable to find any “geo
graphical distinctions . . . in Bobbs-Merrill ”). Thus, exhaustion occurs
under Bobbs-Merrill only when a copy is distributed within the United
Cite as: 568 U. S. ____ (2013) 27
work of art because the Copyright Act defines the term “copies” to
“includ[e] the material object . . . in which the work is first fixed.” §101.
30 KIRTSAENG v. JOHN WILEY & SONS, INC.
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25 Principlesof fair use and implied license may also allow a U. S.
tourist “who buys a copyrighted work of art, a poster, or . . . a bumper
sticker” abroad to publicly “display it in America without the copyright
owner’s further authorization.” Ante, at 15. (The tourist could lawfully
bring the work of art, poster, or bumper sticker into the United States
under 17 U. S. C. §602(a)(3)(B), which provides that §602(a)(1)’s impor
tation ban does not apply to “importation . . . by any person arriving
from outside the United States . . . with respect to copies . . . forming
part of such person’s personal baggage.”). Furthermore, an individual
clearly would not incur liability for infringement merely by displaying a
foreign-made poster or other artwork in her home. See §106(5) (grant
ing the owners of copyrights in “literary, musical, dramatic, and chore
ographic works, pantomimes, and pictorial, graphic, or sculptural
works” the exclusive right “to display the copyrighted work publicly”
(emphasis added)). See also §101 (a work is displayed “publicly” if it is
displayed “at a place open to the public or at any place where a sub
stantial number of persons outside of a normal circle of a family and its
social acquaintances is gathered” (emphasis added)). Cf. 2 Nimmer
§8.14[C][1], at 8–192.2(1) (“[A] performance limited to members of
the family and invited guests is not a public performance.” (footnote
omitted)).
Cite as: 568 U. S. ____ (2013) 31
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make available for sale in this country. To protect their profit margins
in the U. S. market, copyright owners may raise prices in less devel
oped countries or may withdraw from such markets altogether. See
Brief for United States as Amicus Curiae 26; Brief for Text and Aca
demic Authors Association as Amicus Curiae 12; Brief for Association of
American Publishers as Amicus Curiae 37. See also Chiappetta 357–
358 (a rule of national exhaustion “encourages entry and participation
in developing markets at lower, locally more affordable prices by
eliminating them as risky sources of cheaper parallel imports back into
premium markets”). Such an outcome would disserve consumers—and
especially students—in developing nations and would hardly advance
the “American foreign policy goals” of supporting education and eco
nomic development in such countries. Quality King Brief 25–26.
Cite as: 568 U. S. ____ (2013) 33