Supreme Court Upholds First Sale Defense
(22 March 2013) In a 6-3 decision, the Supreme Court held that the resale within and importation into the United States of copies manufactured and purchased abroad are protected under the first sale defense. Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. ___ (2013). That is, once a copyrighted article manufactured abroad is first sold abroad, any later sale or distribution of the product in or to the United States would not constitute an act of copyright infringement. The ruling is somewhat surprising given the Court’s earlier 2010 non-precedential 4-4 decision in Costco Wholesale Corp. v. Omega, S. A., 562 U.S. ___ (2010) (per curiam), affirming a Ninth Circuit decision that the first sale defense was inapplicable to foreign-made works first sold abroad and the United States’ general resistance to the movement for “international exhaustion” of copyrights, as noted in the dissenting opinion. The decision will likely serve to focus companies’ attention on trademark protection as the means (now the sole means) for protecting them against the importation of gray market goods into the U.S.
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