Kirtsaeng v. WileyBy Jonathan Band and Brandon Butler, Published on November 4, 2012
What if you had to ask permission before selling, lending, or even giving away your books? On October 29, the Supreme Court heard oral argument in the case of Kirtsaeng v. Wiley & Sons, a case that could change the way we own everything from books to watches. Libraries, who own books, movies, and other copyrighted works on behalf of all of us, could be hit especially hard.
It all started when a U.S. graduate student named Supap Kirtsaeng coordinated with his family to buy inexpensive foreign editions of textbooks abroad, and re-sell them to college students in the U.S. These books were not pirate copies; they were authorized by Wiley and sold cheaply to reach an audience with less disposable income.
Since 1978, the law has protected publishers who sell products at different prices abroad than they do in the US by barring the unauthorized importation of copies purchased abroad (with exceptions for ordinary people bringing home books and such in their luggage, and, importantly, for libraries importing works for their collections). This importation right is part of a broader distribution right, which allows the copyright owner to control the distribution of copies to the public by sale or lease. Wiley invoked this law in its suit against Kirtsaeng.
In his defense, Kirtsaeng has invoked a principle that copyright law calls the "first sale doctrine," but that normal people might call owner's rights: a lawful owner of a lawful copy of a copyrighted work can generally do whatever she wants with that copy--resell, lend, donate, and even destroy it--without permission from the copyright holder. To put it another way, the author's right to control a particular copy of her work ends after the first sale. Otherwise, copyright would be inconsistent with all the ordinary expectations of owners. The first sale doctrine is especially important to libraries, whose primary activity throughout history has been to buy copies of works and make them available to their communities by lending.
Does First Sale Stop at the Border?
Wiley argues that this principle cannot apply to copies printed outside the U.S., or else they could not block grey market books from U.S. markets. Because first sale protects all distributions (including domestic resale and lending), not just importation, Wiley's argument could radically change the way foreign-made copies are treated by U.S. law. Nevertheless, so far the courts have agreed with Wiley. Even the U.S. government has filed a brief siding with the publisher. Wiley argues that copyright law should protect U.S. companies from having to compete with their own foreign editions, even if this means owners' rights in the U.S. have to be sacrificed.
A major problem with excluding foreign manufactured copies from the first sale doctrine is that it encourages publishers and other copyright owners to move their production activities overseas, so as to avoid the first sale doctrine. Copyright owners would then be able to exercise control over secondary markets for their foreign-made copies, such as the resale of used textbooks purchased in the U.S. Taken to its extreme, this approach might also enable publishers to prohibit a library from circulating foreign-printed books.
The Library's Global Mission
This is not to say that there is no room for compromise. Indeed, both Wiley and the U.S. solicitor general are at pains to provide legal theories that accommodate library lending in particular, and we proposed alternatives of our own in a friend of the court brief filed on behalf of the Library Copyright Alliance. Everyone involved in this case seems to agree on at least one thing: that whether a library can lend a book cannot depend on where the book was printed. The alternative, which could force libraries to take foreign-printed works off their shelves, is simply untenable.
Libraries are cornerstones of democracy, and from their earliest days, U.S. libraries have incorporated (and circulated) works published abroad. Thomas Jefferson was a proud collector of foreign-made books, and after the Library of Congress was decimated by the War of 1812, he donated his collection (foreign books and all) to be the seed for a new national collection. Benjamin Franklin was a founder of one of the first libraries in America, the Library Company of Philadelphia, and the Company's first book order was placed at a London bookseller.
The tradition of U.S. libraries collecting important foreign-made materials has only grown with time, and now a significant portion of U.S. library collections consist of resources that were manufactured overseas. More than 200 million books in U.S. libraries have foreign publishers. Additionally, many books published by U.S. publishers were actually printed in other countries, and often these books do not indicate where they were printed. If the Supreme Court gets this issue wrong, and a book does not carry a notice that it was printed in the United States, a library would have to rely on less certain theories, such as the fair use doctrine, to justify the lending of the book.
It is critically important for the Supreme Court to recognize the impact this case could have on libraries and the public that they serve. In 1976, in an effort to encourage a certain kind of multinational business model, Congress decided to grant authors a new right to control importation. This relatively new and narrow right may serve valid policy goals, but it can't be allowed to trump a bedrock principle in copyright--owner's rights--that is itself the foundation for institutions at the very heart of the American idea: libraries. See also the transcript of the oral argument is online, and Brandon Butler's related blog posting, Justices Consider the Horribles in Kirtsaeng.
Editor's Note: Republished with permission of the authors. This article first posted in Library Journal on October 8, 2012