[i] “Subject to sections 107 through 122, the owner of copyright under this title has the exclusive rights to do and to authorize any of the following … to distribute copies or phonorecords of the copyrighted work to the public by sale or other transfer of ownership, or by rental, lease, or lending….” 17 U.S.C. § 106(3) (2011).
[ii] The reader should note that the first sale doctrine in copyright law is different in many respects from the first sale doctrine in trademark law, and the Supreme Court has cautioned against applying doctrine formulated for one subject to the other. See Sony Corp. of Am. v. Universal City Studios, 464 U.S. 417, 439 n. 19 (1944).
[iii] “Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.” 17 U.S.C. § 109(a) (2011).
[iv] “Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.” 17 U.S.C. § 602(a)(1) (2011).
[v] Quality King Distribs., Inc. v. L’anza Research Int’l, Inc., 523 U.S. 135 (1998).
[vi] Sebastian Int’l, Inc. v. Consumer Contacts (PTY) Ltd., 847 F.2d 1093, 1099 n.1 (3rd Cir. 1988).
[vii] Section 601(a) states that the importation or public distribution in the U.S. of a work consisting of nondramatic literary material is prohibited “unless the portions consisting of such material have been manufactured in the United States or Canada.” 17 U.S.C. § 601(a).
[viii] See Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982, 986 (9th Cir. 2008), aff’d by an equally divided court, Costco Wholesale Corp. v. Omega S.A., 131 S.Ct. 565 (2010) for a discussion of the Ninth Circuit doctrine. The Ninth Circuit’s general rule was first articulated by the court in BMG Music v. Perez, 952 F.2d 318, 319 (9th Cir. 1991).
[ix] Parfums Givenchy, Inc. v. Drug Emporium, Inc., 38 F.3d 477 (9th Cir. 1994).
[x] See Omega, 541 F. at 990.
[xi] The Ninth Circuit will overrule their prior decisions if the SCOTUS decision "undercut[s] the theory or reasoning underlying the prior circuit precedent in such a way that the cases are clearly irreconcilable." Miller v. Gammie, 335 F.3d 889, 900 (9th Cir. 2003).
[xii] See John Wiley & Sons, Inc. v. Kirtsaeng, 654 F.3d 210 (2nd Cir. 2011); see also JOLT Digest’s coverage of Kirtsaeng, stating that the decision incentivizes “copyright owners to manufacture their goods abroad, harming American workers.”
[xiii]See 17 U.S.C. § 109(a).
[xiv] In its 9th Circular, the Copyright Office outlined the ways by which employers may own the copyrights to a work created by an employee — if that work is a “work made for hire.”
[xv] Id. (stating that the U.S. Copyright Office has construed § 1006(a)(1) of the Audio Home Recording Act to cover foreign copies on the basis of identical language).
[xvi] Restatement (Second) of Foreign Relations Law of the United States § 38 (1965).
[xvii] Holding a contrary view, the Ninth Circuit found that extending the first sale doctrine to copies manufactured abroad would “impermissibly apply the Copyright Act extraterritorially in a way that the application of the statute after foreign sales [of domestically manufactured copies] does not.” Omega, 541 F.3d at 988. In its view, holding that authorized copies manufactured abroad were “lawfully made under [Title 17]” would “ascribe legality under the Copyright Act to conduct that occurs entirely outside of the United States” even though the statute does not clearly indicate this application, and would therefore violate the presumption against extraterritoriality.
[xviii] Suggesting that the first sale doctrine would apply to products manufactured abroad, the Third Circuit stated in dicta that whether manufactured domestically or abroad, by finding that the owner of a copyright receives a “reward for his work” whether he sells copies in the United States or elsewhere. Sebastian, 847 F.2d at 1099. While it’s true that the copyright owner is able to profit to some extent whether or not the first sale doctrine applies, the question is not whether he profits, but whether he has the exclusive distribution and importation rights that the best reading of the Act gives him as an incentive to create. Since the Third Circuit’s argument seems to beg the question, it will likely not hold up in future cases.
[xix] See Denbicare U.S.A., Inc. v. Toys “R” Us, Inc., 84 F.3d 1143 (9th Cir. 1996); see also Drug Emporium, 38 F.3d at 481.