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Supreme Court to rule on copyright protection for imported goods

The US Supreme Court [official website] granted certiorari [order list, PDF] Monday in Kirtsaeng v. John Wiley & Sons, Inc. [docket; cert. petition, PDF] to determine whether, under the Copyright Act [text], a copyrighted work obtained legally outside the US may be sold in the US without the copyright owner's permission. Defendant and Thai national Supap Kirtsaeng resold foreign-manufactured textbooks in the US. The textbooks, published by an Asian subsidiary of US publisher John Wiley & Sons, Inc., were authorized for sale only in Europe, Asia, Africa and the Middle East. The US Court of Appeals for the Second Circuit held [opinion] that the textbooks could not be resold in the US without the copyright owner's permission, because the first-sale doctrine [17 USC § 109(a)] providing that the owner of any particular copy "lawfully made under this title" may resell that good without the authority of the copyright holder, does not apply to imported goods. The court concluded "that the phrase 'lawfully made under this Title in § 109(a) refers specifically and exclusively to copies that are made in territories in which the Copyright Act is law, and not to foreign-manufactured works."

In January, the Supreme Court ruled [JURIST report] in Golan v. Holder [SCOTUSblog backgrounder] that Congress has the authority under the Copyright Act to restore copyright protection in foreign works where the work was never registered in the US and the full copyright term has expired. In December 2010, the Supreme Court split 4-4 [JURIST report], with Justice Elena Kagan recused, on the issue of copyright protection for imported goods in Costco Wholesale Corp v. Omega, SA [Cornell LII backgrounder]. Swiss watchmaker Omega [corporate website] manufactured watches in Switzerland and then sold them to authorized distributors overseas. Watches were purchased by third parties and eventually sold to Costco [corporate website], which sold them to US consumers without authorization from Omega. Because of the split among the justices, the court affirmed the ruling of the US Court of Appeals for the Ninth Circuit that the first-sale doctrine does not apply to imported goods.

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