Sunday, 14 October 2012

First Sale Doctrine

On August 15, 2011, the US Court of Appeals, Second Circuit delivered the appeal judgement between the publisher of academic, including textbooks for sale in domestic and international market and Thai student, who moved to US from Thailand to pursue an undergraduate degree in mathematics at Cornell University and moved the California to pursue a doctoral degree in the case of John Wiley & Sons, Inc. v. Supap Kirtsaeng. This case concerning about the infringement of copyright and trademark and unfair competitive doctrine and the first sale doctrine was brought to the case. 

the "first sale doctrine" is a copyright law permits the owner of a lawfully purchased copyrighted work to resell it without limitations imposed by the copyright holder. this doctrine. this doctrine was brought to the US Court system in the case of Bobbs-Merrill Co. v. Straus (210 U.S. 339, 350 (1908), which the Supreme Court held that the owner of the copyright could not impose price controls on sales of a copy righted work beyond the initial sale.

In John Wiley & Sons, Inc. v. Supap Kirtsaeng Case,  the defendant alleged participated in the transactions, which his friends and family shipped his foreign edition textbook printed aboard by Wiley Asia and sold them on commercial website such as form this commercial transactions, the defendant would reimburse his family and friends for the costs that they occurred during the process of acquiring and shipping the books. 

on September 2008, Wiley filed the action against Kirtsaeng in the US District Court for the Southern District of New York, claiming copyright infringement, trademark infringement, and unfair competition.

At the Trial, the District Court charged the jury to determine whether Kirtsaeng had infringed the copyrights of each of eight works and whether any such infringement had been willful? (if the jury found that the defendant had infringed Wiley's copyright, it could award no less that $750 and no more than $30,000 in damages for each infringed work.

 Ultimately, the jury found Kirtsaeng liable for willful copyright as $200 per infringement of all eight works and imposed damages of $75,000 of each of eight works (total $601,600) [See trial judgement)

Kirtsaeng appealed the judgement before the US Court of Appeals, Second Circuit by claiming that (1) the District Court erred in holding that the first sale doctrine was not an available defense in the  circumstances presented; (2) the District Court should have advised the jury of the first sale doctrine as a defense to the claim of willful infringement; and (3) with respect to the jury's assessment of statutory damages, the admission into evidence of testimony regarding the amount of Kirtsaeng's gross receipts was unduly prejudicial.

Before the appeal, the court hold that (1) the first sale doctrine does not apply to manufactured outside the US; (2) the District Court did not err in declining to instruct the jury regarding the unsettled state of the first sale doctrine; and (3) the District Court did not err in admitting evidence of Kirtsaeng's gross revenues. The Court affirms the judgement of the District Court including damages. [See appeal judgement]


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