[T]he Supreme Court revisited the first sale doctrine in Kirtsaeng v. John Wiley & Sons, 133 S. Ct. at 1355 (2013). In that case, the Court considered "whether the 'first sale' doctrine applies to protect a buyer or other lawful owner of a copy (of a copyrighted work) lawfully manufactured abroad." Id. In other words, the Court asked whether the purchaser of the copyrighted work can "bring that copy into the United States (and sell it or give it away) without obtaining permission to do so from the copyright owner[.]" Id. The Court held that the answer was yes, and, thus, the "'first sale' doctrine applies to copies of a copyrighted work lawfully made abroad." Id. at 1355-56. Omega SA v. Costco Wholesale Corp., (9th Cir. 2015).
The doctrine was first recognized by the Supreme Court in Bobbs-Merrill Co. v. Straus, 210 U.S. 339, 28 S.Ct. 722, 52 L.Ed. 1086 (1908). At issue in Bobbs-Merrill was the exclusive right of a copyright owner to restrict the resale terms of its copyrighted material. The Supreme Court interpreted the then copyright statute's "sole right to vend" to bar a publisher from restricting future sales of a book by placing a notice on the book's cover that limited resale to $1 or more. Id. at 350, 28 S.Ct. 722. Apple Inc. v. Psystar Corp., 658 F. 3d 1150 (9th Cir. 2011).
Congress codified the first sale doctrine in the 1909 Copyright Act, see 17 U.S.C. § 41 (1909), and then refined the doctrine in the 1976 Copyright Act and its subsequent amendments. See 17 U.S.C. § 109 (2008). As currently constituted, the doctrine exempts subsequent owners who then sell a legitimate copy of a copyrighted work from claims of infringing the original owner's exclusive distribution rights:
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.
Id. at § 109(a). Thus, once a publisher sells a valuable, vellum-bound volume, for example, it forfeits its exclusive distribution privilege and enables the buyer, the new owner of the volume, to resell the copy to another buyer. See 2 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT § 8.12[B][1][d] (rev. ed.2010). Apple Inc. v. Psystar Corp., ibid.
The statute specifically excludes the doctrine's application, however, when the copy is transferred through "rental, lease, loan, or otherwise, without acquiring ownership of it." 17 U.S.C. at § 109(d). Thus, the first sale doctrine does not apply to a licensee. See Vernor v. Autodesk, Inc., 621 F.3d 1102, 1107-08 (9th Cir.2010) ("The first sale doctrine does not apply to a person who possesses a copy of the copyrighted work without owning it, such as a licensee."), petition for cert. filed, 79 U.S.L.W. 3674 (U.S. May 18, 2011) (No. 10-1421). Apple Inc. v. Psystar Corp., ibid.
THIS CASEBOOK contains a selection of 20 U. S. Court of Appeals decisions that analyze and interpret the first sale doctrine. The full text of the Supreme Court's Kirtsaeng decision is also included. The selection of decisions spans from 2005 to the date of publication.