By Dennis Crouch
Kirtsaeng v. John Wiley & Sons (Supreme Court 2013)
In a 6-3 decision, the Supreme Court here holds that the first-sale doctrine applies to copies of a copyrighted work lawfully made abroad. Although the decision does not mention patent law, the case has obvious implications for patent law by weakening the ability of a patentee to legally enforce country-by-country market segmentation. The case may also have some implications for streaming of copyrighted content based on national origin.
Kirtsaeng moved to the US from Thailand and set up a side business of importing textbooks from Thailand and reselling them in the US for a substantial profit. To be clear, the imported books were not counterfeit but actual authorized versions of textbooks. Still, Wiley sued Kirtsaeng for copyright infringement and argued that the first-sale doctrine did not apply to its authorized foreign sales.
The first sale doctrine – also known as "exhaustion" – is a core feature of both copyright and patent law. The doctrine holds that intellectual property (IP) rights associated with a particular copy of a work are exhausted once there is an authorized sale or manufacture of the that copy. This doctrine allows for a robust chain of distribution and secondary market where distributors and resellers don't need to worry about IP infringement so long as they are not dealing in counterfeit copies. One difference between copyright and patent law is that the first-sale doctrine is codified in the Copyright Act but is purely federal common law for patents. 17 U.S.C. §109(a).
In holding that a foreign authorized sale exhausts a company's U.S. copyright, the Supreme Court obviously walked through some amount of statutory interpretation. However, the court held that its decision is also consistent with common law ideals of "impeccable historic pedigree." The result here is that this case strongly challenges the Federal Circuit's precedent in cases such as Jazz Photo that reject the notion of international exhaustion. To be clear, however, the Kirtsaeng decision does not actually mention patent law.
The Supreme Court is sitting on the first-sale patent case of Bowman v. Monsanto. Although that is not an international exhaustion case, parts of this decision have implications there. First, the court favorably discussed old common law doctrines that refuse to permit or enforce restraints on the alienation of chattels. In addition to citing Lord Coke, the court also wrote that the first-sale doctrine fits within that sphere of thought because it "frees courts from the administrative burden of trying to enforce restrictions upon difficult-to-trace, readily movable goods. And it avoids the selective enforcement inherent in any such effort."
The patent case most directly impacted is Ninestar Tech. v. ITC that is pending a decision from the Supreme Court on Ninestar's petition for writ of certiorari. That case asks the exact parallel question of "Whether the initial authorized sale outside the United States of a patented item terminates all patent rights to that item." At this point, the Court will do well to ask the Federal Circuit to take a fresh look at their decision in that case.
The court did recognize that the decision weakens the value of the given intellectual property right. In that regard, the court basically said "tough luck" – writing that "the Constitution's language nowhere suggests that its limited exclusive right should include a right to divide markets or a concomitant right to charge different purchasers different prices for the same book, say to increase or to maximize gain." We can expect some amount of push-back from right-holders on this case. And, Congress would certainly be able to change the law through a new statute.