Kirtsaeng v. John Wiley & Sons, Inc.

PETITIONER: Supap Kirtsaeng
RESPONDENT: John Wiley & Sons, Inc.
LOCATION: Cornell University

DOCKET NO.: 11-697
DECIDED BY: Roberts Court (2010-2016)
LOWER COURT: United States Court of Appeals for the Second Circuit

CITATION: 568 US (2013)
GRANTED: Apr 16, 2012
ARGUED: Oct 29, 2012
DECIDED: Mar 19, 2013

E. Joshua Rosenkranz - for the petitioner
Malcolm L. Stewart - Deputy Solicitor General, Department of Justice, for the United States as amicus curiae supporting the respondent
Theodore B. Olson - for the respondent

Facts of the case

Supap Kirtsaeng came to the United States from Thailand in 1997. He obtained an undergraduate degree at Cornell University before being accepted into a PhD program at the University of Southern California. To subsidize the cost of his education, Kirtsaeng asked friends and family in Thailand to buy copies of textbooks in Thailand and to ship those books to him in the United States. Kirstaeng then sold the textbooks on eBay at a profit. Among the books Kirtsaeng sold, were eight textbooks printed in Asia by John Wiley and Sons, Inc.

Wiley sued Kirtsaeng in district court for copyright infringement under Section 602(a)(1) of the Copyright Act, which makes it impermissible to import a work "without the authority of the owner." Kirtsaeng asserted a defense under Section 109(a) of the Copyright Act, which allows the owner of a copy "lawfully made under this title" to sell or otherwise dispose of the copy without the copyright owner's permission. The district court rejected Kirtsaeng's argument, and held that the doctrine was inapplicable to goods manufactured in a foreign country.

Kirtsaeng appealed to the United States Court of Appeals for the Second Circuit. A divided panel acknowledged that it was a difficult question of statutory construction, but the majority held that Section 109(a) referred specifically to works that are made in the United States and did not apply to works manufactured abroad. Kirtsaeng's request for rehearing was denied, and he appealed the appellate court's decision.


If a copy was made legally, acquired abroad and then imported into the United States, can that foreign-made copy ever be resold within the United States without the copyright owner's permission under Section 602(a)(1) and Section 109(a) of the copyright act?

Media for Kirtsaeng v. John Wiley & Sons, Inc.

Audio Transcription for Oral Argument - October 29, 2012 in Kirtsaeng v. John Wiley & Sons, Inc.

Audio Transcription for Opinion Announcement - March 19, 2013 in Kirtsaeng v. John Wiley & Sons, Inc.

John G. Roberts, Jr.:

Justice Breyer has the opinion of the Court in two cases this morning.

Stephen G. Breyer:

The first case is Kirtsaeng versus John Wiley, and the respondent is John Wiley and Sons as a publisher of textbooks.

It holds a copyright on certain textbooks that it publishes in the United States, but it's granted an Asian subsidiary the right to publish the same textbooks abroad.

The petitioner, Supap Kirtsaeng is a Thai national who is studying on a scholarship in the United States.

He discovered that the Asian edition of his textbooks that Wiley had licensed was cheaper and he had his friends in relations buy copies of that edition in Thailand, send them to him in the United States, and he resold them at a profit.

Because of a copyright law provision called “the first-sale doctrine,” if Kirtsaeng or anyone else had bought copies made in the United States after he bought them, he would be free to resell them.

The first-sale doctrine provides that if you buy a first -- the first -- if you a first-sale, once the book is sold, that exhausts the copyright and the buyer is pretty much free, you or anybody else, to do what he wants with the copy that he's bought.

But does that doctrine, which is in Section 109 of a Copyright Act, does that doctrine apply when the copy was made not in the United States, but it was made abroad?

That legal question is difficult.

We held in a case called Quality King that the first-sale doctrine is a defense in a copyright infringement suit that involved the importation of a book from abroad.

And we further said it wasn't relevant whether the first-sale took place domestically or abroad, but Quality King was a case where the copyrighted items were made in the United States and they were sent abroad and somebody was trying to bring them back.

But here, the copies were made abroad and that fact is important because Section 109 of the Copyright Doctrine says that first law -- says that the first-sale doctrine applies to copies “lawfully made under this title.”

So, what do those five words, “lawfully made under in this title,” what do those five words mean?

Should we interpret them geographically?

Holding that they apply?

And does the first-sale doctrine applies only to copies that have been made in the United States?

That is what Wiley and the Solicitor General roughly argue.

Or should we interpret the words non-geographically?

As applying to copies, whether made here or abroad, but have been made in accordance with the Copyrights Act requirements.

That is what Kirtsaeng argues.

Ultimately, we conclude that Kirtsaeng's is the better interpretation.

It is more consistent with the legislative intent that the act reflects.

Four sets of considerations lead us to this conclusion.

First, we think the language leans at least slightly in Kirtsaeng's favor.

As interpreted non-geographically, those five words, “lawfully made under this title,” basically distinguished, lawfully made copies from pirated copies.

Protecting purchasers only when they -- when what they buy has been lawfully made, according to the U.S. Copyright Act.

The geographical interpretation, however, bristles with linguistic difficulties.

Since the phrase says nothing about geography, Wiley, for example, must claim that it refers to where the act applies and then add the act does not apply to copies made abroad.

It doesn't, why not?

At least linguistically speaking, a statute that imposes a tariff on rhododendrons grown in Nepal applies in some sense to those foreign rhododendrons from the day they first bud.