Daniel Gervais cited in Kirtsaeng dissent

Daniel Gervais Copyright law expert Daniel Gervais was cited in Justice Ruth Bader Ginsburg’s dissent to the U.S. Supreme Court’s decision in Kirtsaeng v. Wiley, which was handed down March 19.

In a 6-3 decision, the Court held that the “first-sale” doctrine in the U.S. Copyright Act, under which anyone is free to give, resell or rent a “lawfully made” copy of a copyrighted work that they have legally acquired, applies to copies of copyrighted works lawfully made abroad.

Justice Stephen Breyer delivered the Court’s majority opinion, joined by Chief Justice John Roberts, and Justices Clarence Thomas, Samuel Alito, Sonia Sotomayor and Elena Kagan. Justice Kagan filed a separate concurring opinion, in which she was joined by Justice Alito.

Justice Ruth Bader Ginsburg was joined in her dissent, in which she contends that copies made outside of the U.S. do not fall under the U.S. Copyright Act’s “first sale” doctrine, by Justices Anthony Kennedy and Antonin Scalia.

Justice Ginsburg cited Gervais’ definitive book on the Trade Related Aspects of Intellectual Property Rights (TRIPS) Agreement, The TRIPS Agreement: Drafting History and Analysis (Sweet & Maxwell, third edition, 2008), a fourth edition of which was released in December 2012, in a discussion of U.S. policy related to international copyright law. In international trade negotiations, she noted, the U.S. has consistently advocated for the rights of domestic copyright owners to prevent the unauthorized importation of copies or their work produced and sold in other countries. She cited Gervais’ book to point out that the U.S. advanced this position during TRIPS Agreement negotiations.

Gervais has commented on the decision in Kirtsaeng v. Wiley on his TRIPS Agreement blog.

At issue in Kirtsaeng was whether someone can sell a legal copy of a copyrighted work such as a book, DVD or CD that was purchased in another country and then brought back or imported into the United States. The appellant, Supap Kirtsaeng, a Thai student, helped pay his expenses while studying at Cornell and the University of Southern California by selling textbooks that friends and relatives purchased abroad and shipped him. The U.S. Copyright Act provides that the first-sale doctrine applies only to copies “lawfully made under [the Act].”  Kirtsaeng relied on the “first-sale doctrine.”

The main question before the Court in Kirtsaeng was whether a copy lawfully made, but in a foreign country, fits that definition. “The majority opinion spends a considerable amount of time discussing the text of the statute and in particular the phrase ‘lawfully made under this Title.’ By comparison, the dissent analyzes both legislative history and the underlying policy to arrive at a radically different conclusion,” said Gervais. “The U.S. now joins the ranks of countries allowing ‘international exhaustion’ of copyrighted works, at least until Congress changes the law.”


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