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COPYRIGHT || JTS
KIRTSAENG v. JOHN WILEY & SONS Geographical view of the first sale doctrine.
Under any of these geographical interpretations, 109(a)s
568 US ___ | March 19, 2013 | Breyer
first sale doctrine would not apply to the Wiley Asia books
THE DISTRIBUTION RIGHT
at issue here. And, despite an American copyright owners
Re: distribution of textbooks; Asian version v. US version
permission to make copies abroad, one who buys a copy of
FACTS
any such book or other copyrighted workwhether at a retail
John Wiley & Sons is a textbook publishing company.
store, over the Internet, or at a library salecould not resell
John Wiley & Sons, Inc., publishes academic textbooks. Wiley
(or otherwise dispose of) that particular copy without further
obtains from its authors various foreign and domestic
permission.
copyright assignments, licenses and permissionsto the

point that we can, for present purposes, refer to Wiley as the
Non-geographical view of the first sale doctrine.
relevant American copyright owner. It has a subsidiary, John
109(a)s first sale doctrine would apply to copyrighted
Wiley & Sons (Asia) Pte. Ltd., which has the rights to publish,
works as long as their manufacture met the requirements of
print, and sell Wileys English language textbooks abroad.
American copyright law. In particular, the doctrine would

apply where, as here, copies are manufactured abroad with
The textbook caveat.
the permission of the copyright owner.
Each copy of a Wiley Asia foreign edition will likely contain

language making clear that the copy is to be sold only in a
HELD:
particular country or geographical region outside the United
The language of 109(a) read literally favors Kirtsaengs
States. For example:
nongeographical interpretation, namely, that lawfully made
Copyright 2008 John Wiley & Sons (Asia) Pte Ltd[.] All
rights reserved. This book is authorized for sale in Europe, under this title means made in accordance with or in
Asia, Africa, and the Middle East only and may be not exported compliance with the Copyright Act. The language of 109(a)
out of these territories. Exportation from or importation of says nothing about geography.
this book to another region without the Publishers
authorization is illegal and is a violation of the Publishers ON INTERPRETATION OF LAWFULLY MADE UNDER THIS
rights. The Publisher may take legal action to enforce its TITLE, LETS GO BACK TO ENGLISH
rights. . . . Printed in Asia. Where is the Copyright Act applicable?
The Act does not instantly protect an American copyright
Basically, there are 2 versions of a Wiley textbook: holder from unauthorized piracy taking place abroad. But that
1. American version printed and sold in the US; fact does not mean the Act is inapplicable to copies made
2. Foreign version manufactured and sold abroad, in which abroad. As a matter of ordinary English, one can say that a
Wiley makes that these copies be not taken (without statute imposing, say, a tariff upon any rhododendron grown
permission) into the US. in Nepal applies to all Nepalese rhododendrons. And,
similarly, one can say that the American Copyright Act is
Kirtsaeng is a Thai national who studied in the US. applicable to all pirated copies, including those printed
Supap Kirtsaeng, a citizen of Thailand, moved to the US in overseas.
1997 to study mathematics at Cornell University. He paid for
his education with the help of a Thai Government scholarship lawfully made under this title, interpretation.
which required him to teach in Thailand for 10 years on his The appropriateness of this linguistic usage is underscored by
return. Kirtsaeng successfully completed his undergraduate the fact that 104 of the Act itself says that works subject to
courses at Cornell, successfully completed a Ph. D. program in protection under this title include unpublished works
mathematics at the University of Southern California, and without regard to the nationality or domicile of the author,
then, as promised, returned to Thailand to teach. and works first published in any one of the nearly 180
nations that have signed a copyright treaty with the United
He asked his friends and family to buy textbooks in States. Thus, ordinary English permits us to say that the Act
Thailand because it was cheaper there. applies to an Irish manuscript lying in its authors Dublin
While he was studying, Kirtsaeng asked his friends and family desk drawer as well as to an original recording of a ballet
in Thailand to buy copies of foreign edition English-language performance first made in Japan and now on display in a
textbooks at Thai book shops, where they sold at low prices, Kyoto art gallery.
and mail them to him in the US. Kirtsaeng would then sell
them, reimburse his family and friends, and keep the profit. ON HISTORICAL AND CONTEMPORARY CONTEXT
Congress did not contemplate on a geographical
Wiley brought a case against Kirtsaeng for copyright interpretation.
infringement. Both historical and contemporary statutory context indicate
Wiley claimed that Kirtsaengs unauthorized importation of that Congress, when writing the present version of 109(a),
its books and his later resale of those books amounted to an did not have geography in mind. In respect to history, we
infringement of Wileys 106(3) exclusive right to dis- tribute compare 109(a)s present language with the language of its
as well as 602s related import prohibition. immediate predecessor.

Kirtsaeng replied that the books he had acquired were No geographical application even with the preceding
lawfully made and that he had acquired them legitimately. provision.
In his view, 109(a)s first sale doctrine permitted him to The predecessor says that the first sale doctrine protects
resell or otherwise dispose of the books without the copyright the transfer of any copy the possession of which has been
owners further permission. lawfully obtained. The present version says that the owner
of a particular copy or phonorecord lawfully made under this
ISSUE: Whether Kirtsaeng be held liable for his reselling of title is entitled to sell or otherwise dispose of the possession
the books. NO. First sale doctrine applies in a non-geographic of that copy or phonorecord.
manner, which is in accordance with his arguments.
BASIL MAGUIGAD | GAITA MASANGKAY | KAT NIETO | JO SANTOS | TYN SISON | ALLEN UY
(72) COPYRIGHT || JTS
Even the other provisions of the present statute supports Neither Wiley nor any of its many amici deny that a
a non-geographical interpretation. geographical interpretation could bring about these
Manufacturing clause was phased out in new statute. horriblesat least in principle.
For one thing, the statute phases out the manufacturing
clause, a clause that appeared in earlier statutes and had For another thing, reliance upon the first sale doctrine is
limited importation of many copies (of copyrighted works) deeply embedded in the practices of those, such as
printed outside the US. The phasing out of this clause sought booksellers, libraries, museums, and retailers, who have long
to equalize treatment of copies manufactured in America and relied upon its protection.
copies manufactured abroad.
Quality King case does not argue on the interpretation of
First Sale Doctrine, defined. lawfully made under this title, provision.
It is a common law doctrine that permits a copyright holder to In Quality King we rejected the superfluous argument for
control the resale or other disposition of a chattel once sold is similar reasons. But, when rejecting it, we said that, where an
similarly against Trade and Traffi[c], and bargaining and author gives exclusive American distribution rights to an
contracting. American publisher and exclusive British distribution rights
to a British publisher, presumably only those [copies] made
Lord Coke emphasizes the importance of leaving buyers of by the publisher of the United States edition would be
goods free to compete with each other when reselling or lawfully made under this title within the meaning of 109(a).
otherwise disposing of those goods. American law too has The language lawfully made under this title was not at issue
generally thought that competition, including freedom to in Qual- ity King; the point before us now was not then fully
resell, can work to the advantage of the consumer. argued; we did not canvas the considerations we have here
set forth; we there said nothing to suggest that the example
First sale doctrine avoids selective enforcement. assumes a first sale; and we there hedged our state- ment
The first sale doctrine also frees courts from the with the word presumably. Most importantly, the statement
administrative burden of trying to enforce restrictions upon is pure dictum.
difficult-to-trace, readily movable goods. And it avoids the
selective enforcement inherent in any such effort. Thus, once Section 109 only applies to the initial disposition of
youve sold a copy legally, you cant restrict its resale. copies.
Section 109(a) provides that the distribution right may be
In relation to libraries, used-book dealers, tech exercised solely with respect to the initial disposition of
companies, consumer-goods retailers, and museums.,, copies of a work, not to prevent or restrict the resale or other
Libraries. further transfer of possession of such copies.
Library collections contain at least 200 million books
published abroad (presumably, many were first published in Congress reports also support the non-geographical view.
one of the nearly 180 copyright-treaty nations and enjoy Section 109(a) restates and confirms the principle that,
American copyright protection; that many others were first where the copyright owner has transferred ownership of a
published in the US but printed abroad because of lower particular copy or phonorecord of a work, the person to
costs; and that a geographical interpretation will likely require whom the copy or phonorecord is transferred is entitled to
the libraries to obtain permission (or at least create significant dispose of it by sale, rental, or any other means. Under this
uncertainty) before circulating or otherwise distributing these principle, which has been established by the court decisions
books. Such action would be costly and highly tedious with and . . . the present law, the copyright owners exclusive right
respect to obtaining permission from the copyright owner. of public distribution would have no effect upon anyone who
owns a particular copy or phonorecord lawfully made under
Used-book dealers. this title and who wishes to transfer it to someone else or to
The dealers say that they have operat[ed] . . . for centuries destroy it.
under the assumption that the first sale doctrine applies.
But under a geographical interpretation a contemporary To come within the scope of section 109(a), a copy or
tourist who buys, say, at Shakespeare and Co. (in Paris), a phonorecord must have been lawfully made under this title,
dozen copies of a foreign book for American friends might though not necessarily with the copyright owners
find that she had violated the copyright law. The used-book authorization. For example, any resale of an illegally pirated
dealers cannot easily predict what the foreign copyright holder phonorecord would be an infringement but the disposition of
may think about a readers effort to sell a used copy of a novel. a phonorecord legally made under the compulsory licensing
And they believe that a geographical interpretation will injure provisions of section 115 would not.
a large portion of the used-book business.
This reiterates:
Tech companies. 1. Full ownership of a lawfully made copy authorizes its owner to
Many techonologies are made abroad with the American dispose of it freely.
2. It says nothing about geography.
copyright holders permission and then sold and imported
3. Nor did it say that Section 109s predecesor say anything about
(with that permission) to the US. A geographical geography.
interpretation would prevent the resale of, say, a car, without 4. Any lack of legislative history pertaining to the first sale
the permission of the holder of each copyright on each piece doctrine tends to bolster our psotion that Congress revision did
of copyrighted automobile software. Yet there is no reason to not intend to create a drastic geographical change in its revision
believe that foreign auto manufacturers regularly obtain this to that provision.
kind of permission from their software component supplier. DISPOSITION
For these reasons we conclude that the considerations supporting
Kirtsaengs nongeographical interpretation of the words lawfully
Overall, a geographical interpretation brings about more
made under this title are the more persuasive. The judgment of the
horribles. Court of Appeals is reversed, and the case is remanded for further
proceedings consistent with this opinion. It is so ordered.
BASIL MAGUIGAD | GAITA MASANGKAY | KAT NIETO | JO SANTOS | TYN SISON | ALLEN UY