Kirtsaeng v. John Wiley & Sons, Inc. ( 2013 )

(Slip Opinion) OCTOBER TERM, 2012 1
Syllabus
NOTE: Where it is feasible, a syllabus (headnote) will be released, as is
being done in connection with this case, at the time the opinion is issued.
The syllabus constitutes no part of the opinion of the Court but has been
prepared by the Reporter of Decisions for the convenience of the reader.
See United States v. Detroit Timber & Lumber Co., 200 U. S. 321, 337.
SUPREME COURT OF THE UNITED STATES
Syllabus
KIRTSAENG, DBA BLUECHRISTINE99 v. JOHN WILEY
& SONS, INC.
CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR
THE SECOND CIRCUIT
No. 11–697. Argued October 29, 2012—Decided March 19, 2013
The “exclusive rights” that a copyright owner has “to distribute copies
. . . of [a] copyrighted work,” 17 U. S. C. §106(3), are qualified by the
application of several limitations set out in §§107 through 122, in-
cluding the “first sale” doctrine, which provides that “the owner of a
particular copy or phonorecord lawfully made under this title . . . is
entitled, without the authority of the copyright owner, to sell or oth-
erwise dispose of the possession of that copy or phonorecord,” §109(a).
Importing a copy made abroad without the copyright owner’s permis-
sion is an infringement of §106(3). See §602(a)(1). In Quality King
Distributors, Inc. v. L’anza Research Int’l, Inc., 523 U. S. 135, 145,
this Court held that §602(a)(1)’s reference to §106(3) incorporates the
§§107 through 122 limitations, including §109’s “first sale” doctrine.
However, the copy in Quality King was initially manufactured in the
United States and then sent abroad and sold.
Respondent, John Wiley & Sons, Inc., an academic textbook pub-
lisher, often assigns to its wholly owned foreign subsidiary (Wiley
Asia) rights to publish, print, and sell foreign editions of Wiley’s Eng-
lish language textbooks abroad. Wiley Asia’s books state that they
are not to be taken (without permission) into the United States.
When petitioner Kirtsaeng moved from Thailand to the United States
to study mathematics, he asked friends and family to buy foreign edi-
tion English-language textbooks in Thai book shops, where they sold
at low prices, and to mail them to him in the United States. He then
sold the books, reimbursed his family and friends, and kept the
profit.
Wiley filed suit, claiming that Kirtsaeng’s unauthorized importa-
tion and resale of its books was an infringement of Wiley’s §106(3)
2 KIRTSAENG v. JOHN WILEY & SONS, INC.
Syllabus
exclusive right to distribute and §602’s import prohibition. Kirtsaeng
replied that because his books were “lawfully made” and acquired le-
gitimately, §109(a)’s “first sale” doctrine permitted importation and
resale without Wiley’s further permission. The District Court held
that Kirtsaeng could not assert this defense because the doctrine
does not apply to goods manufactured abroad. The jury then found
that Kirtsaeng had willfully infringed Wiley’s American copyrights
and assessed damages. The Second Circuit affirmed, concluding that
§109(a)’s “lawfully made under this title” language indicated that the
“first sale” doctrine does not apply to copies of American copyrighted
works manufactured abroad.
Held: The “first sale” doctrine applies to copies of a copyrighted work
lawfully made abroad. Pp. 7–33.
(a) Wiley reads “lawfully made under this title” to impose a geo-
graphical limitation that prevents §109(a)’s doctrine from applying to
Wiley Asia’s books. Kirtsaeng, however, reads the phrase as impos-
ing the non-geographical limitation made “in accordance with” or “in
compliance with” the Copyright Act, which would permit the doctrine
to apply to copies manufactured abroad with the copyright owner’s
permission. Pp. 7–8.
(b) Section 109(a)’s language, its context, and the “first sale” doc-
trine’s common-law history favor Kirtsaeng’s reading. Pp. 8–24.
(1) Section 109(a) says nothing about geography. “Under” can
logically mean “in accordance with.” And a nongeographical inter-
pretation provides each word in the phrase “lawfully made under this
title” with a distinct purpose: “lawfully made” suggests an effort to
distinguish copies that were made lawfully from those that were not,
and “under this title” sets forth the standard of “lawful[ness]” (i.e.,
the U. S. Copyright Act). This simple reading promotes the tradi-
tional copyright objective of combatting piracy and makes word-by-
word linguistic sense.
In contrast, the geographical interpretation bristles with linguistic
difficulties. Wiley first reads “under” to mean “in conformance with
the Copyright Act where the Copyright Act is applicable.” Wiley then
argues that the Act “is applicable” only in the United States. Howev-
er, neither “under” nor any other word in “lawfully made under this
title” means “where.” Nor can a geographical limitation be read into
the word “applicable.” The fact that the Act does not instantly pro-
tect an American copyright holder from unauthorized piracy taking
place abroad does not mean the Act is inapplicable to copies made
abroad. Indeed, §602(a)(2) makes foreign-printed pirated copies sub-
ject to the Copyright Act. And §104 says that works “subject to pro-
tection” include unpublished works “without regard to the [author’s]
nationality or domicile,” and works “first published” in any of the
Cite as: 568 U. S. ____ (2013) 3
Syllabus
nearly 180 nations that have signed a copyright treaty with the
United States. Pp. 8–12.
(2) Both historical and contemporary statutory context indicate
that Congress did not have geography in mind when writing the pre-
sent version of §109(a). A comparison of the language in §109(a)’s
predecessor and the present provision supports this conclusion. The
former version referred to those who are not owners of a copy, but
mere possessors who “lawfully obtained” a copy, while the present
version covers only owners of a “lawfully made” copy. This new lan-
guage, including the five words at issue, makes clear that a lessee of
a copy will not receive “first sale” protection but one who owns a copy
will be protected, provided that the copy was “lawfully made.” A
nongeographical interpretation is also supported by other provisions
of the present statute. For example, the “manufacturing clause,”
which limited importation of many copies printed outside the United
States, was phased out in an effort to equalize treatment of copies
made in America and copies made abroad. But that “equal treat-
ment” principle is difficult to square with a geographical interpreta-
tion that would grant an American copyright holder permanent con-
trol over the American distribution chain in respect to copies printed
abroad but not those printed in America. Finally, the Court normally
presumes that the words “lawfully made under this title” carry the
same meaning when they appear in different but related sections,
and it is unlikely that Congress would have intended the conse-
quences produced by a geographical interpretation. Pp. 12–16.
(3) A nongeographical reading is also supported by the canon of
statutory interpretation that “when a statute covers an issue previ-
ously governed by the common law,” it is presumed that “Congress
intended to retain the substance of the common law.” Samantar v.
Yousuf, 560 U. S. ___, ___. The common-law “first sale” doctrine,
which has an impeccable historic pedigree, makes no geographical
distinctions. Nor can such distinctions be found in Bobbs-Merrill Co.
v. Straus, 210 U. S. 339, where this Court first applied the “first sale”
doctrine, or in §109(a)’s predecessor provision, which Congress enact-
ed a year later. Pp. 17–19.
(4) Library associations, used-book dealers, technology compa-
nies, consumer-goods retailers, and museums point to various ways
in which a geographical interpretation would fail to further basic
constitutional copyright objectives, in particular “promot[ing] the
Progress of Science and useful Arts,” Art. I, §8, cl. 8. For example, a
geographical interpretation of the first-sale doctrine would likely re-
quire libraries to obtain permission before circulating the many books
in their collections that were printed overseas. Wiley counters that
such problems have not occurred in the 30 years since a federal court
4 KIRTSAENG v. JOHN WILEY & SONS, INC.
Syllabus
first adopted a geographical interpretation. But the law has not been
settled for so long in Wiley’s favor. The Second Circuit in this case
was the first Court of Appeals to adopt a purely geographical inter-
pretation. Reliance on the “first sale” doctrine is also deeply embed-
ded in the practices of booksellers, libraries, museums, and retailers,
who have long relied on its protection. And the fact that harm has
proved limited so far may simply reflect the reluctance of copyright
holders to assert geographically based resale rights. Thus, the prac-
tical problems described by petitioner and his amici are too serious,
extensive, and likely to come about to be dismissed as insignificant—
particularly in light of the ever-growing importance of foreign trade
to America. Pp. 19–24.
(c) Several additional arguments that Wiley and the dissent make
in support of a geographical interpretation are unpersuasive. Pp. 24–
33.
654 F. 3d 210, reversed and remanded.
BREYER, J., delivered the opinion of the Court, in which ROBERTS,
C. J., and THOMAS, ALITO, SOTOMAYOR, and KAGAN, JJ., joined. KAGAN,
J., filed a concurring opinion, in which ALITO, J., joined. GINSBURG, J.,
filed a dissenting opinion, in which KENNEDY, J., joined, and in which
SCALIA, J., joined except as to Parts III and V–B–1.
Cite as: 568 U. S. ____ (2013) 1
Opinion of the Court
NOTICE: This opinion is subject to formal revision before publication in the
preliminary print of the United States Reports. Readers are requested to
notify the Reporter of Decisions, Supreme Court of the United States, Wash­
ington, D. C. 20543, of any typographical or other formal errors, in order
that corrections may be made before the preliminary print goes to press.
SUPREME COURT OF THE UNITED STATES
_________________
No. 11–697
_________________
SUPAP KIRTSAENG, DBA BLUECHRISTINE99,
PETITIONER v. JOHN WILEY & SONS, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE SECOND CIRCUIT
[March 19, 2013]
JUSTICE BREYER delivered the opinion of the Court.
Section 106 of the Copyright Act grants “the owner of
copyright under this title” certain “exclusive rights,”
including the right “to distribute copies . . . of the copy­
righted work to the public by sale or other transfer of
ownership.” 17 U. S. C. §106(3). These rights are quali­
fied, however, by the application of various limitations set
forth in the next several sections of the Act, §§107 through
122. Those sections, typically entitled “Limitations on
exclusive rights,” include, for example, the principle of
“fair use” (§107), permission for limited library archival
reproduction, (§108), and the doctrine at issue here, the
“first sale” doctrine (§109).
Section 109(a) sets forth the “first sale” doctrine as
follows:
“Notwithstanding the provisions of section 106(3) [the
section that grants the owner exclusive distribution
rights], the owner of a particular copy or phonorecord
lawfully made under this title . . . is entitled, without
the authority of the copyright owner, to sell or other­
wise dispose of the possession of that copy or
2 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
phonorecord.” (Emphasis added.)
Thus, even though §106(3) forbids distribution of a copy of,
say, the copyrighted novel Herzog without the copyright
owner’s permission, §109(a) adds that, once a copy of Her-
zog has been lawfully sold (or its ownership otherwise
lawfully transferred), the buyer of that copy and subse­
quent owners are free to dispose of it as they wish. In
copyright jargon, the “first sale” has “exhausted” the
copyright owner’s §106(3) exclusive distribution right.
What, however, if the copy of Herzog was printed abroad
and then initially sold with the copyright owner’s permis­
sion? Does the “first sale” doctrine still apply? Is the
buyer, like the buyer of a domestically manufactured copy,
free to bring the copy into the United States and dispose of
it as he or she wishes?
To put the matter technically, an “importation” provi­
sion, §602(a)(1), says that
“[i]mportation into the United States, without the au­
thority of the owner of copyright under this title, of
copies . . . of a work that have been acquired outside
the United States is an infringement of the exclusive
right to distribute copies . . . under section 106 . . . .”
17 U. S. C. §602(a)(1) (2006 ed., Supp. V) (emphasis
added).
Thus §602(a)(1) makes clear that importing a copy
without permission violates the owner’s exclusive distri-
bution right. But in doing so, §602(a)(1) refers explicitly to
the §106(3) exclusive distribution right. As we have just
said, §106 is by its terms “[s]ubject to” the various doc­
trines and principles contained in §§107 through 122, in-
cluding §109(a)’s “first sale” limitation. Do those same
modifications apply—in particular, does the “first sale”
modification apply—when considering whether §602(a)(1)
prohibits importing a copy?
In Quality King Distributors, Inc. v. L’anza Research
Cite as: 568 U. S. ____ (2013) 3
Opinion of the Court
Int’l, Inc., 523 U. S. 135, 145 (1998), we held that
§602(a)(1)’s reference to §106(3)’s exclusive distribution
right incorporates the later subsections’ limitations, in­
cluding, in particular, the “first sale” doctrine of §109.
Thus, it might seem that, §602(a)(1) notwithstanding, one
who buys a copy abroad can freely import that copy into
the United States and dispose of it, just as he could had he
bought the copy in the United States.
But Quality King considered an instance in which the
copy, though purchased abroad, was initially manufac­
tured in the United States (and then sent abroad and
sold). This case is like Quality King but for one important
fact. The copies at issue here were manufactured abroad.
That fact is important because §109(a) says that the “first
sale” doctrine applies to “a particular copy or phonorecord
lawfully made under this title.” And we must decide here
whether the five words, “lawfully made under this title,”
make a critical legal difference.
Putting section numbers to the side, we ask whether
the “first sale” doctrine applies to protect a buyer or other
lawful owner of a copy (of a copyrighted work) lawfully
manufactured abroad. Can that buyer bring that copy
into the United States (and sell it or give it away) without
obtaining permission to do so from the copyright owner?
Can, for example, someone who purchases, say at a used
bookstore, a book printed abroad subsequently resell it
without the copyright owner’s permission?
In our view, the answers to these questions are, yes. We
hold that the “first sale” doctrine applies to copies of a
copyrighted work lawfully made abroad.
I
A
Respondent, John Wiley & Sons, Inc., publishes aca-
demic textbooks. Wiley obtains from its authors various
foreign and domestic copyright assignments, licenses and
4 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
permissions—to the point that we can, for present pur­
poses, refer to Wiley as the relevant American copyright
owner. See 654 F. 3d 210, 213, n. 6 (CA2 2011). Wiley
often assigns to its wholly owned foreign subsidiary, John
Wiley & Sons (Asia) Pte Ltd., rights to publish, print, and
sell Wiley’s English language textbooks abroad. App. to
Pet. for Cert. 47a–48a. Each copy of a Wiley Asia foreign
edition will likely contain language making clear that the
copy is to be sold only in a particular country or geograph­
ical region outside the United States. 654 F. 3d, at 213.
For example, a copy of Wiley’s American edition says,
“Copyright © 2008 John Wiley & Sons, Inc. All rights
reserved. . . . Printed in the United States of America.”
J. Walker, Fundamentals of Physics, p. vi (8th ed. 2008).
A copy of Wiley Asia’s Asian edition of that book says:
“Copyright © 2008 John Wiley & Sons (Asia) Pte
Ltd[.] All rights reserved. This book is authorized for
sale in Europe, Asia, Africa, and the Middle East only
and may be not exported out of these territories. Ex­
portation from or importation of this book to another
region without the Publisher’s authorization is illegal
and is a violation of the Publisher’s rights. The Pub­
lisher may take legal action to enforce its rights. . . .
Printed in Asia.” J. Walker, Fundamentals of Physics,
p. vi (8th ed. 2008 Wiley Int’l Student ed.).
Both the foreign and the American copies say:
“No part of this publication may be reproduced, stored
in a retrieval system, or transmitted in any form or
by any means . . . except as permitted under Sections
107 or 108 of the 1976 United States Copyright Act.”
Compare, e.g., ibid. (Int’l ed.), with Walker, supra, at
vi (American ed.).
The upshot is that there are two essentially equivalent
versions of a Wiley textbook, 654 F. 3d, at 213, each ver­
Cite as: 568 U. S. ____ (2013) 5
Opinion of the Court
sion manufactured and sold with Wiley’s permission: (1)
an American version printed and sold in the United
States, and (2) a foreign version manufactured and sold
abroad. And Wiley makes certain that copies of the second
version state that they are not to be taken (without per­
mission) into the United States. Ibid.Petitioner, Supap Kirtsaeng, a citizen of Thailand,
moved to the United States in 1997 to study mathemat-
ics at Cornell University. Ibid. He paid for his educa-
tion with the help of a Thai Government scholarship which
required him to teach in Thailand for 10 years on his
return. Brief for Petitioner 7. Kirtsaeng successfully
completed his undergraduate courses at Cornell, success­
fully completed a Ph. D. program in mathematics at the
University of Southern California, and then, as promised,
returned to Thailand to teach. Ibid. While he was study­
ing in the United States, Kirtsaeng asked his friends and
family in Thailand to buy copies of foreign edition English­
language textbooks at Thai book shops, where they sold at
low prices, and mail them to him in the United States.
Id., at 7–8. Kirtsaeng would then sell them, reimburse
his family and friends, and keep the profit. App. to Pet. for
Cert. 48a–49a.
B
In 2008 Wiley brought this federal lawsuit against
Kirtsaeng for copyright infringement. 654 F. 3d, at 213.
Wiley claimed that Kirtsaeng’s unauthorized importation
of its books and his later resale of those books amounted
to an infringement of Wiley’s §106(3) exclusive right to dis­
tribute as well as §602’s related import prohibition. 17
U. S. C. §§106(3) (2006 ed.), 602(a) (2006 ed., Supp. V).
See also §501 (2006 ed.) (authorizing infringement action).
App. 204–211. Kirtsaeng replied that the books he had
acquired were “ ‘lawfully made’ ” and that he had acquired
them legitimately. Record in No. 1:08–CV–7834–DCP
6 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
(SDNY), Doc. 14, p. 3. Thus, in his view, §109(a)’s “first
sale” doctrine permitted him to resell or otherwise dispose
of the books without the copyright owner’s further permis­
sion. Id., at 2–3.
The District Court held that Kirtsaeng could not assert
the “first sale” defense because, in its view, that doctrine
does not apply to “foreign-manufactured goods” (even if
made abroad with the copyright owner’s permission). App.
to Pet. for Cert. 72a. The jury then found that Kirtsaeng
had willfully infringed Wiley’s American copyrights by
selling and importing without authorization copies of eight
of Wiley’s copyrighted titles. And it assessed statutory
damages of $600,000 ($75,000 per work). 654 F. 3d, at
215.
On appeal, a split panel of the Second Circuit agreed
with the District Court. Id., at 222. It pointed out that
§109(a)’s “first sale” doctrine applies only to “the owner of
a particular copy . . . lawfully made under this title.” Id.,
at 218–219 (emphasis added). And, in the majority’s view,
this language means that the “first sale” doctrine does not
apply to copies of American copyrighted works manufac­
tured abroad. Id., at 221. A dissenting judge thought that
the words “lawfully made under this title” do not refer “to
a place of manufacture” but rather “focu[s] on whether a
particular copy was manufactured lawfully under” Amer-
ica’s copyright statute, and that “the lawfulness of the
manufacture of a particular copy should be judged by U. S.
copyright law.” Id., at 226 (opinion of Murtha, J.).
We granted Kirtsaeng’s petition for certiorari to con-
sider this question in light of different views among the
Circuits. Compare id., at 221 (case below) (“first sale”
doctrine does not apply to copies manufactured outside the
United States), with Omega S. A. v. Costco Wholesale
Corp., 541 F. 3d 982, 986 (CA9 2008) (“first sale” doctrine
applies to copies manufactured outside the United States
only if an authorized first sale occurs within the United
Cite as: 568 U. S. ____ (2013) 7
Opinion of the Court
States), aff ’d by an equally divided court, 562 U. S. ___
(2010), and Sebastian Int’l, Inc. v. Consumer Contacts
(PTY) Ltd., 847 F. 2d 1093, 1098, n. 1 (CA3 1988) (limita­
tion of the first sale doctrine to copies made within the
United States “does not fit comfortably within the scheme
of the Copyright Act”).
II
We must decide whether the words “lawfully made
under this title” restrict the scope of §109(a)’s “first sale”
doctrine geographically. The Second Circuit, the Ninth
Circuit, Wiley, and the Solicitor General (as amicus) all
read those words as imposing a form of geographical limi­
tation. The Second Circuit held that they limit the “first
sale” doctrine to particular copies “made in territories in
which the Copyright Act is law,” which (the Circuit says)
are copies “manufactured domestically,” not “outside of the
United States.” 654 F. 3d, at 221–222 (emphasis added).
Wiley agrees that those five words limit the “first sale”
doctrine “to copies made in conformance with the [United
States] Copyright Act where the Copyright Act is appli­
cable,” which (Wiley says) means it does not apply to copies
made “outside the United States” and at least not to “for­
eign production of a copy for distribution exclusively
abroad.” Brief for Respondent 15–16. Similarly, the
Solicitor General says that those five words limit the “first
sale” doctrine’s applicability to copies “ ‘made subject to
and in compliance with [the Copyright Act],’ ” which (the
Solicitor General says) are copies “made in the United
States.” Brief for United States as Amicus Curiae 5
(hereinafter Brief for United States) (emphasis added).
And the Ninth Circuit has held that those words limit the
“first sale” doctrine’s applicability (1) to copies lawfully
made in the United States, and (2) to copies lawfully made
outside the United States but initially sold in the United
States with the copyright owner’s permission. Denbicare
8 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
U. S. A. Inc. v. Toys “R” Us, Inc., 84 F. 3d 1143, 1149–1150
(1996).
Under any of these geographical interpretations,
§109(a)’s “first sale” doctrine would not apply to the Wiley
Asia books at issue here. And, despite an American copy­
right owner’s permission to make copies abroad, one who
buys a copy of any such book or other copyrighted work—
whether at a retail store, over the Internet, or at a library
sale—could not resell (or otherwise dispose of) that partic­
ular copy without further permission.
Kirtsaeng, however, reads the words “lawfully made
under this title” as imposing a non-geographical limita­
tion. He says that they mean made “in accordance with”
or “in compliance with” the Copyright Act. Brief for Peti­
tioner 26. In that case, §109(a)’s “first sale” doctrine
would apply to copyrighted works as long as their manu­
facture met the requirements of American copyright law.
In particular, the doctrine would apply where, as here,
copies are manufactured abroad with the permission of the
copyright owner. See §106 (referring to the owner’s right
to authorize).
In our view, §109(a)’s language, its context, and the
common-law history of the “first sale” doctrine, taken
together, favor a non-geographical interpretation. We also
doubt that Congress would have intended to create the
practical copyright-related harms with which a geograph­
ical interpretation would threaten ordinary scholarly,
artistic, commercial, and consumer activities. See Part II–
D, infra. We consequently conclude that Kirtsaeng’s
nongeographical reading is the better reading of the Act.
A
The language of §109(a) read literally favors Kirtsaeng’s
nongeographical interpretation, namely, that “lawfully
made under this title” means made “in accordance with” or
“in compliance with” the Copyright Act. The language of
Cite as: 568 U. S. ____ (2013) 9
Opinion of the Court
§109(a) says nothing about geography. The word “under”
can mean “[i]n accordance with.” 18 Oxford English Dic­
tionary 950 (2d ed. 1989). See also Black’s Law Dictionary
1525 (6th ed. 1990) (“according to”). And a nongeograph­
ical interpretation provides each word of the five-word
phrase with a distinct purpose. The first two words of the
phrase, “lawfully made,” suggest an effort to distinguish
those copies that were made lawfully from those that were
not, and the last three words, “under this title,” set forth
the standard of “lawful[ness].” Thus, the nongeograph-
ical reading is simple, it promotes a traditional copyright
objective (combatting piracy), and it makes word-by-word
linguistic sense.
The geographical interpretation, however, bristles with
linguistic difficulties. It gives the word “lawfully” little,
if any, linguistic work to do. (How could a book be unlaw­
fully “made under this title”?) It imports geography into a
statutory provision that says nothing explicitly about it.
And it is far more complex than may at first appear.
To read the clause geographically, Wiley, like the Sec­
ond Circuit and the Solicitor General, must first empha­
size the word “under.” Indeed, Wiley reads “under this
title” to mean “in conformance with the Copyright Act
where the Copyright Act is applicable.” Brief for Respond­
ent 15. Wiley must then take a second step, arguing that
the Act “is applicable” only in the United States. Ibid.
And the Solicitor General must do the same. See Brief for
United States 6 (“A copy is ‘lawfully made under this title’
if Title 17 governs the copy’s creation and the copy is made
in compliance with Title 17’s requirements”). See also
post, at 7 (GINSBURG, J., dissenting) (“under” describes
something “governed or regulated by another”).
One difficulty is that neither “under” nor any other
word in the phrase means “where.” See, e.g., 18 Oxford
English Dictionary, supra, at 947–952 (definition of “un­
der”). It might mean “subject to,” see post, at 6, but as this
10 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
Court has repeatedly acknowledged, the word evades a
uniform, consistent meaning. See Kucana v. Holder, 558
U. S. 233, 245 (2010) (“ ‘under’ is chameleon”); Ardestani v.
INS, 502 U. S. 129, 135 (1991) (“under” has “many dic­
tionary definitions” and “must draw its meaning from its
context”).
A far more serious difficulty arises out of the uncer­
tainty and complexity surrounding the second step’s effort
to read the necessary geographical limitation into the word
“applicable” (or the equivalent). Where, precisely, is the
Copyright Act “applicable”? The Act does not instantly
protect an American copyright holder from unauthorized
piracy taking place abroad. But that fact does not mean
the Act is inapplicable to copies made abroad. As a matter
of ordinary English, one can say that a statute imposing,
say, a tariff upon “any rhododendron grown in Nepal”
applies to all Nepalese rhododendrons. And, similarly,
one can say that the American Copyright Act is applicable
to all pirated copies, including those printed overseas.
Indeed, the Act itself makes clear that (in the Solicitor
General’s language) foreign-printed pirated copies are “sub­
ject to” the Act. §602(a)(2) (2006 ed., Supp. V) (refer-
ring to importation of copies “the making of which either
constituted an infringement of copyright, or which would
have constituted an infringement of copyright if this title
had been applicable”); Brief for United States 5. See also
post, at 6 (suggesting that “made under” may be read as
“subject to”).
The appropriateness of this linguistic usage is under­
scored by the fact that §104 of the Act itself says that
works “subject to protection under this title” include un­
published works “without regard to the nationality or
domicile of the author,” and works “first published” in any
one of the nearly 180 nations that have signed a copyright
treaty with the United States. §§104(a), (b) (2006 ed.)
(emphasis added); §101 (2006 ed., Supp. V) (defining
Cite as: 568 U. S. ____ (2013) 11
Opinion of the Court
“treaty party”); U. S. Copyright Office, Circular No. 38A,
International Copyright Relations of the United States
(2010). Thus, ordinary English permits us to say that the
Act “applies” to an Irish manuscript lying in its author’s
Dublin desk drawer as well as to an original recording of
a ballet performance first made in Japan and now on
display in a Kyoto art gallery. Cf. 4 M. Nimmer & D.
Nimmer, Copyright §17.02, pp. 17–18, 17–19 (2012) (herein­
after Nimmer on Copyright) (noting that the principle that
“copyright laws do not have any extraterritorial operation”
“requires some qualification”).
The Ninth Circuit’s geographical interpretation pro-
duces still greater linguistic difficulty. As we said, that Cir­
cuit interprets the “first sale” doctrine to cover both (1)
copies manufactured in the United States and (2) copies
manufactured abroad but first sold in the United States
with the American copyright owner’s permission. Den­
bicare U. S. A., 84 F. 3d, at 1149–1150. See also Brief
for Respondent 16 (suggesting that the clause at least
excludes “the foreign production of a copy for distribution
exclusively abroad”); id., at 51 (the Court need “not de-
cide whether the copyright owner would be able to restrict
further distribution” in the case of “a downstream domes­
tic purchaser of authorized imports”); Brief for Petitioner
in Costco Wholesale Corp. v. Omega, S. A., O. T. 2010,
No. 08–1423, p. 12 (excepting imported copies “made by
unrelated foreign copyright holders” (emphasis deleted)).
We can understand why the Ninth Circuit may have
thought it necessary to add the second part of its defini­
tion. As we shall later describe, see Part II–D, infra,
without some such qualification a copyright holder could
prevent a buyer from domestically reselling or even giving
away copies of a video game made in Japan, a film made
in Germany, or a dress (with a design copyright) made in
China, even if the copyright holder has granted permission
for the foreign manufacture, importation, and an initial
12 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
domestic sale of the copy. A publisher such as Wiley
would be free to print its books abroad, allow their im-
portation and sale within the United States, but prohibit
students from later selling their used texts at a campus
bookstore. We see no way, however, to reconcile this half­
geographical/half-nongeographical interpretation with the
language of the phrase, “lawfully made under this title.”
As a matter of English, it would seem that those five
words either do cover copies lawfully made abroad or they
do not.
In sum, we believe that geographical interpretations
create more linguistic problems than they resolve. And
considerations of simplicity and coherence tip the purely
linguistic balance in Kirtsaeng’s, nongeographical, favor.
B
Both historical and contemporary statutory context in­
dicate that Congress, when writing the present version of
§109(a), did not have geography in mind. In respect to
history, we compare §109(a)’s present language with the
language of its immediate predecessor. That predecessor
said:
“[N]othing in this Act shall be deemed to forbid, pre­
vent, or restrict the transfer of any copy of a copy­
righted work the possession of which has been lawfully
obtained.” Copyright Act of 1909, §41, 35 Stat. 1084(emphasis added).
See also Copyright Act of 1947, §27, 61 Stat. 660. The
predecessor says nothing about geography (and Wiley does
not argue that it does). So we ask whether Congress, in
changing its language implicitly introduced a geograph-
ical limitation that previously was lacking. See also Part
II–C, infra (discussing 1909 codification of common-law
principle).
A comparison of language indicates that it did not. The
Cite as: 568 U. S. ____ (2013) 13
Opinion of the Court
predecessor says that the “first sale” doctrine protects “the
transfer of any copy the possession of which has been
lawfully obtained.” The present version says that “the
owner of a particular copy or phonorecord lawfully made
under this title is entitled to sell or otherwise dispose of
the possession of that copy or phonorecord.” What does
this change in language accomplish?
The language of the former version referred to those
who are not owners of a copy, but mere possessors who
“lawfully obtained” a copy. The present version covers
only those who are owners of a “lawfully made” copy.
Whom does the change leave out? Who might have law-
fully obtained a copy of a copyrighted work but not owned
that copy? One answer is owners of movie theaters, who
during the 1970’s (and before) often leased films from
movie distributors or filmmakers. See S. Donahue,
American Film Distribution 134, 177 (1987) (describing
producer-distributer and distributer-exhibitor agreements);
Note, The Relationship Between Motion Picture Distribu­
tion and Exhibition: An Analysis of the Effects of Anti-
Blind Bidding Legislation, 9 Comm/Ent. L. J. 131, 135
(1986). Because the theater owners had “lawfully ob­
tained” their copies, the earlier version could be read as
allowing them to sell that copy, i.e., it might have given
them “first sale” protection. Because the theater owners
were lessees, not owners, of their copies, the change in
language makes clear that they (like bailees and other
lessees) cannot take advantage of the “first sale” doctrine.
(Those who find legislative history useful will find confir­
mation in, e.g., House Committee on the Judiciary, Copy­
right Law Revision, Supplementary Report of the Register
of Copyrights on the General Revision of the U. S. Copy­
right Law: 1965 Revision Bill, 89th Cong., 1st Sess., pt.
6, p. 30 (Comm. Print 1965) (hereinafter Copyright Law
Revision) (“[W]here a person has rented a print of a mo­
tion picture from the copyright owner, he would have no
14 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
right to lend, rent, sell, or otherwise dispose of the print
without first obtaining the copyright owner’s permission”).
See also Platt & Munk Co. v. Republic Graphics, Inc.,
315 F. 2d 847, 851 (CA2 1963) (Friendly, J.) (pointing out
predecessor statute’s leasing problem)).
This objective perfectly well explains the new language
of the present version, including the five words here at
issue. Section 109(a) now makes clear that a lessee of
a copy will not receive “first sale” protection but one who
owns a copy will receive “first sale” protection, provided, of
course, that the copy was “lawfully made” and not pi-
rated. The new language also takes into account that a
copy may be “lawfully made under this title” when the copy,
say of a phonorecord, comes into its owner’s possession
through use of a compulsory license, which “this title”
provides for elsewhere, namely, in §115. Again, for those
who find legislative history useful, the relevant legislative
report makes this clear. H. R. Rep. No. 94–1476, p. 79
(1976) (“For example, any resale of an illegally ‘pirated’
phonorecord would be an infringement, but the disposition
of a phonorecord legally made under the compulsory li­
censing provisions of section 115 would not”).
Other provisions of the present statute also support
a nongeographical interpretation. For one thing, the stat­
ute phases out the “manufacturing clause,” a clause that
appeared in earlier statutes and had limited importation
of many copies (of copyrighted works) printed outside the
United States. §601, 90 Stat. 2588 (“Prior to July 1, 1982
. . . the importation into or public distribution in the
United States of copies of a work consisting preponderantly
of nondramatic literary material . . . is prohibited unless
the portions consisting of such material have been manufac-
tured in the United States or Canada”). The phasing out
of this clause sought to equalize treatment of copies manu­
factured in America and copies manufactured abroad. See
H. R. Rep. No. 94–1476, at 165–166.
Cite as: 568 U. S. ____ (2013) 15
Opinion of the Court
The “equal treatment” principle, however, is difficult
to square with a geographical interpretation of the “first
sale” clause that would grant the holder of an American
copyright (perhaps a foreign national, see supra, at 10)
permanent control over the American distribution chain
(sales, resales, gifts, and other distribution) in respect to
copies printed abroad but not in respect to copies printed
in America. And it is particularly difficult to believe that
Congress would have sought this unequal treatment while
saying nothing about it and while, in a related clause (the
manufacturing phase-out), seeking the opposite kind of
policy goal. Cf. Golan v. Holder, 565 U. S. ___, ___ (2012)
(slip op., at 30) (Congress has moved from a copyright
regime that, prior to 1891, entirely excluded foreign works
from U. S. copyright protection to a regime that now “en­
sure[s] that most works, whether foreign or domestic,
would be governed by the same legal regime” (emphasis
added)).
Finally, we normally presume that the words “lawfully
made under this title” carry the same meaning when they
appear in different but related sections. Department of
Revenue of Ore. v. ACF Industries, Inc., 510 U. S. 332,
342 (1994). But doing so here produces surprising conse­
quences. Consider:
(1) Section 109(c) says that, despite the copyright own­
er’s exclusive right “to display” a copyrighted work
(provided in §106(5)), the owner of a particular copy “law-
fully made under this title” may publicly display it with­
out further authorization. To interpret these words
geographically would mean that one who buys a copy­
righted work of art, a poster, or even a bumper sticker,
in Canada, in Europe, in Asia, could not display
it in America without the copyright owner’s further
authorization.
16 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
(2) Section 109(e) specifically provides that the owner
of a particular copy of a copyrighted video arcade game
“lawfully made under this title” may “publicly perform
or display that game in coin-operated equipment” with­
out the authorization of the copyright owner. To inter­
pret these words geographically means that an arcade
owner could not (“without the authority of the copyright
owner”) perform or display arcade games (whether new
or used) originally made in Japan. Cf. Red Baron-
Franklin Park, Inc. v. Taito Corp., 883 F. 2d 275 (CA4
1989).
(3) Section 110(1) says that a teacher, without the copy­
right owner’s authorization, is allowed to perform or
display a copyrighted work (say, an audiovisual work)
“in the course of face-to-face teaching activities”—unless
the teacher knowingly used “a copy that was not law-
fully made under this title.” To interpret these words
geographically would mean that the teacher could not
(without further authorization) use a copy of a film dur­
ing class if the copy was lawfully made in Canada, Mex­
ico, Europe, Africa, or Asia.
(4) In its introductory sentence, §106 provides the Act’s
basic exclusive rights to an “owner of a copyright under
this title.” The last three words cannot support a geo­
graphic interpretation.
Wiley basically accepts the first three readings, but ar-
gues that Congress intended the restrictive consequences.
And it argues that context simply requires that the words
of the fourth example receive a different interpretation.
Leaving the fourth example to the side, we shall explain in
Part II–D, infra, why we find it unlikely that Congress
would have intended these, and other related consequences.
Cite as: 568 U. S. ____ (2013)
17
Opinion of the Court
C
A relevant canon of statutory interpretation favors a
nongeographical reading. “[W]hen a statute covers an is-
sue previously governed by the common law,” we must pre-
sume that “Congress intended to retain the substance of
the common law.” Samantar v. Yousuf, 560 U. S. ___,
___, n. 13 (2010) (slip op., at 14, n. 13). See also
Isbrandtsen Co. v. Johnson, 343 U. S. 779, 783 (1952)
(“Statutes which invade the common law . . . are to be read
with a presumption favoring the retention of long­
established and familiar principles, except when a statu-
tory purpose to the contrary is evident”).
The “first sale” doctrine is a common-law doctrine with
an impeccable historic pedigree. In the early 17th century
Lord Coke explained the common law’s refusal to permit
restraints on the alienation of chattels. Referring to Lit­
tleton, who wrote in the 15th century, Gray, Two Contri­
butions to Coke Studies, 72 U. Chi. L. Rev. 1127, 1135
(2005), Lord Coke wrote:
“[If] a man be possessed of . . . a horse, or of any other
chattell . . . and give or sell his whole interest . . .
therein upon condition that the Donee or Vendee shall
not alien[ate] the same, the [condition] is voi[d], be­
cause his whole interest . . . is out of him, so as he
hath no possibilit[y] of a Reverter, and it is against
Trade and Traffi[c], and bargaining and contracting
betwee[n] man and man: and it is within the reason of
our Author that it should ouster him of all power
given to him.” 1 E. Coke, Institutes of the Laws of
England §360, p. 223 (1628).
A law that permits a copyright holder to control the
resale or other disposition of a chattel once sold is simi-
larly “against Trade and Traffi[c], and bargaining and con-
tracting.” Ibid.
With these last few words, Coke emphasizes the im­
18 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
portance of leaving buyers of goods free to compete with
each other when reselling or otherwise disposing of those
goods. American law too has generally thought that com­
petition, including freedom to resell, can work to the ad­
vantage of the consumer. See, e.g., Leegin Creative Leather
Products, Inc. v. PSKS, Inc., 551 U. S. 877, 886 (2007)
(restraints with “manifestly anticompetitive effects” are
per se illegal; others are subject to the rule of reason
(internal quotation marks omitted)); 1 P. Areeda & H.
Hovenkamp, Antitrust Law ¶100, p. 4 (3d ed. 2006)
(“[T]he principal objective of antitrust policy is to maximize
consumer welfare by encouraging firms to behave
competitively”).
The “first sale” doctrine also frees courts from the ad­
ministrative burden of trying to enforce restrictions upon
difficult-to-trace, readily movable goods. And it avoids the
selective enforcement inherent in any such effort. Thus, it
is not surprising that for at least a century the “first sale”
doctrine has played an important role in American copy­
right law. See Bobbs-Merrill Co. v. Straus, 210 U. S. 339(1908); Copyright Act of 1909, §41, 35 Stat. 1084. See also
Copyright Law Revision, Further Discussions and Com­
ments on Preliminary Draft for Revised U. S. Copyright
Law, 88th Cong., 2d Sess., pt. 4, p. 212 (Comm. Print
1964) (Irwin Karp of Authors’ League of America express­
ing concern for “the very basic concept of copyright law
that, once you’ve sold a copy legally, you can’t restrict its
resale”).
The common-law doctrine makes no geographical dis­
tinctions; nor can we find any in Bobbs-Merrill (where
this Court first applied the “first sale” doctrine) or in
§109(a)’s predecessor provision, which Congress enacted a year
later. See supra, at 12. Rather, as the Solicitor General
acknowledges, “a straightforward application of Bobbs-
Merrill” would not preclude the “first sale” defense from
applying to authorized copies made overseas. Brief for
Cite as: 568 U. S. ____ (2013) 19
Opinion of the Court
United States 27. And we can find no language, context,
purpose, or history that would rebut a “straightforward
application” of that doctrine here.
The dissent argues that another principle of statutory
interpretation works against our reading, and points out
that elsewhere in the statute Congress used different
words to express something like the non-geographical
reading we adopt. Post, at 8–9 (quoting §602(a)(2) (prohib­
iting the importation of copies “the making of which either
constituted an infringement of copyright, or which would
have constituted an infringement of copyright if this title
had been applicable” (emphasis deleted))). Hence, Con­
gress, the dissent believes, must have meant §109(a)’s
different language to mean something different (such as
the dissent’s own geographical interpretation of §109(a)).
We are not aware, however, of any canon of interpretation
that forbids interpreting different words used in different
parts of the same statute to mean roughly the same thing.
Regardless, were there such a canon, the dissent’s inter­
pretation of §109(a) would also violate it. That is because
Congress elsewhere in the 1976 Act included the words
“manufactured in the United States or Canada,” 90 Stat.
2588, which express just about the same geographical
thought that the dissent reads into §109(a)’s very different
language.
D
Associations of libraries, used-book dealers, technology
companies, consumer-goods retailers, and museums point
to various ways in which a geographical interpretation
would fail to further basic constitutional copyright objec­
tives, in particular “promot[ing] the Progress of Science
and useful Arts.” U. S. Const., Art. I, §8, cl. 8.
The American Library Association tells us that library
collections contain at least 200 million books published
abroad (presumably, many were first published in one of
20 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
the nearly 180 copyright-treaty nations and enjoy Ameri­
can copyright protection under 17 U. S. C. §104, see supra,
at 10); that many others were first published in the United
States but printed abroad because of lower costs; and
that a geographical interpretation will likely require the li-
braries to obtain permission (or at least create significant
uncertainty) before circulating or otherwise distributing
these books. Brief for American Library Association et al.
as Amici Curiae 4, 15–20. Cf. id., at 16–20, 28 (discussing
limitations of potential defenses, including the fair use
and archival exceptions, §§107–108). See also Library and
Book Trade Almanac 511 (D. Bogart ed., 55th ed. 2010)
(during 2000–2009 “a significant amount of book printing
moved to foreign nations”).
How, the American Library Association asks, are the
libraries to obtain permission to distribute these millions
of books? How can they find, say, the copyright owner of
a foreign book, perhaps written decades ago? They may
not know the copyright holder’s present address. Brief for
American Library Association 15 (many books lack indica­
tion of place of manufacture; “no practical way to learn
where [a] book was printed”). And, even where addresses
can be found, the costs of finding them, contacting owners,
and negotiating may be high indeed. Are the libraries to
stop circulating or distributing or displaying the millions
of books in their collections that were printed abroad?
Used-book dealers tell us that, from the time when
Benjamin Franklin and Thomas Jefferson built commer­
cial and personal libraries of foreign books, American
readers have bought used books published and printed
abroad. Brief for Powell’s Books Inc. et al. as Amici
Curiae 7 (citing M. Stern, Antiquarian Bookselling in the
United States (1985)). The dealers say that they have
“operat[ed] . . . for centuries” under the assumption that
the “first sale” doctrine applies. Brief for Powell’s Books 7.
But under a geographical interpretation a contemporary
Cite as: 568 U. S. ____ (2013) 21
Opinion of the Court
tourist who buys, say, at Shakespeare and Co. (in Paris), a
dozen copies of a foreign book for American friends might
find that she had violated the copyright law. The used­
book dealers cannot easily predict what the foreign copy­
right holder may think about a reader’s effort to sell a
used copy of a novel. And they believe that a geographical
interpretation will injure a large portion of the used-book
business.
Technology companies tell us that “automobiles, micro­
waves, calculators, mobile phones, tablets, and personal
computers” contain copyrightable software programs or
packaging. Brief for Public Knowledge et al. as Amici
Curiae 10. See also Brief for Association of Service and
Computer Dealers International, Inc., et al. as Amici
Curiae 2. Many of these items are made abroad with the
American copyright holder’s permission and then sold
and imported (with that permission) to the United States.
Brief for Retail Litigation Center, Inc., et al. as Amici
Curiae 4. A geographical interpretation would prevent the
resale of, say, a car, without the permission of the holder
of each copyright on each piece of copyrighted automobile
software. Yet there is no reason to believe that foreign
auto manufacturers regularly obtain this kind of permis­
sion from their software component suppliers, and Wiley
did not indicate to the contrary when asked. See Tr. of
Oral Arg. 29–30. Without that permission a foreign car
owner could not sell his or her used car.
Retailers tell us that over $2.3 trillion worth of for-
eign goods were imported in 2011. Brief for Retail Litiga­
tion Center 8. American retailers buy many of these goods
after a first sale abroad. Id., at 12. And, many of these
items bear, carry, or contain copyrighted “packaging,
logos, labels, and product inserts and instructions for [the
use of] everyday packaged goods from floor cleaners and
health and beauty products to breakfast cereals.” Id., at
10–11. The retailers add that American sales of more
22 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
traditional copyrighted works, “such as books, recorded
music, motion pictures, and magazines” likely amount to
over $220 billion. Id., at 9. See also id., at 10 (electronic
game industry is $16 billion). A geographical interpreta­
tion would subject many, if not all, of them to the disrup­
tive impact of the threat of infringement suits. Id., at 12.
Art museum directors ask us to consider their efforts to
display foreign-produced works by, say, Cy Twombly, René
Magritte, Henri Matisse, Pablo Picasso, and others. See
supra, at 10 (describing how §104 often makes such works
“subject to” American copyright protection). A geograph­
ical interpretation, they say, would require the museums
to obtain permission from the copyright owners before
they could display the work, see supra, at 15—even if the
copyright owner has already sold or donated the work to
a foreign museum. Brief for Association of Art Museum
Directors et al. as Amici Curiae 10–11. What are the
museums to do, they ask, if the artist retained the copy­
right, if the artist cannot be found, or if a group of heirs is
arguing about who owns which copyright? Id., at 14.
These examples, and others previously mentioned, help
explain why Lord Coke considered the “first sale” doctrine
necessary to protect “Trade and Traffi[c], and bargaining
and contracting,” and they help explain why American
copyright law has long applied that doctrine. Cf. supra, at
17–18.
Neither Wiley nor any of its many amici deny that a
geographical interpretation could bring about these “hor­
ribles”—at least in principle. Rather, Wiley essentially
says that the list is artificially invented. Brief for Re­
spondent 51–52. It points out that a federal court first
adopted a geographical interpretation more than 30 years
ago. CBS, Inc. v. Scorpio Music Distributors, Inc., 569 F.
Supp. 47, 49 (ED Pa. 1983), summarily aff ’d, 738 F. 2d
424 (CA3 1984) (table). Yet, it adds, these problems have
not occurred. Why not? Because, says Wiley, the prob­
Cite as: 568 U. S. ____ (2013) 23
Opinion of the Court
lems and threats are purely theoretical; they are unlikely
to reflect reality. See also post, at 30–31.
We are less sanguine. For one thing, the law has not
been settled for long in Wiley’s favor. The Second Circuit,
in its decision below, is the first Court of Appeals to adopt
a purely geographical interpretation. The Third Circuit
has favored a nongeographical interpretation. Sebastian
Int’l, 847 F. 2d 1093. The Ninth Circuit has favored a
modified geographical interpretation with a nongeograph­
ical (but textually unsustainable) corollary designed to
diminish the problem. Denbicare U. S. A., 84 F. 3d 1143.
See supra, at 11–12. And other courts have hesitated to
adopt, and have cast doubt upon, the validity of the geo­
graphical interpretation. Pearson Educ., Inc. v. Liu, 656
F. Supp. 2d 407 (SDNY 2009); Red-Baron Franklin Park,
Inc. v. Taito Corp., No. 88–0156–A, 1988 WL 167344, *3
(ED Va. 1988), rev’d on other grounds, 883 F. 2d 275 (CA4
1989).
For another thing, reliance upon the “first sale” doctrine
is deeply embedded in the practices of those, such as book­
sellers, libraries, museums, and retailers, who have long
relied upon its protection. Museums, for example, are
not in the habit of asking their foreign counterparts to
check with the heirs of copyright owners before sending,
e.g., a Picasso on tour. Brief for Association of Art Mu­
seum Directors 11–12. That inertia means a dramatic
change is likely necessary before these institutions, in­
structed by their counsel, would begin to engage in the
complex permission-verifying process that a geographical
interpretation would demand. And this Court’s adoption
of the geographical interpretation could provide that
dramatic change. These intolerable consequences (along
with the absurd result that the copyright owner can ex-
ercise downstream control even when it authorized the
import or first sale) have understandably led the Ninth
Circuit, the Solicitor General as amicus, and the dissent to
24 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
adopt textual readings of the statute that attempt to
mitigate these harms. Brief for United States 27–28;
post, at 24–28. But those readings are not defensible, for
they require too many unprecedented jumps over linguis­
tic and other hurdles that in our view are insurmountable.
See, e.g., post, at 26 (acknowledging that its reading of
§106(3) “significantly curtails the independent effect of
§109(a)”).
Finally, the fact that harm has proved limited so far
may simply reflect the reluctance of copyright holders so
far to assert geographically based resale rights. They may
decide differently if the law is clarified in their favor.
Regardless, a copyright law that can work in practice only
if unenforced is not a sound copyright law. It is a law that
would create uncertainty, would bring about selective
enforcement, and, if widely unenforced, would breed disre­
spect for copyright law itself.
Thus, we believe that the practical problems that peti­
tioner and his amici have described are too serious, too
extensive, and too likely to come about for us to dismiss
them as insignificant—particularly in light of the ever­
growing importance of foreign trade to America. See
The World Bank, Imports of goods and services (% of
GDP) (imports in 2011 18% of U. S. gross domestic
product compared to 11% in 1980), online at http://
data.worldbank.org/indicator/NE.IMP.GNFS.ZS? (as visited
Mar. 15, 2013, and available in Clerk of Court’s case file).
The upshot is that copyright-related consequences along
with language, context, and interpretive canons argue
strongly against a geographical interpretation of §109(a).
III
Wiley and the dissent make several additional impor­
tant arguments in favor of the geographical interpretation.
First, they say that our Quality King decision strongly
supports its geographical interpretation. In that case
Cite as: 568 U. S. ____ (2013) 25
Opinion of the Court
we asked whether the Act’s “importation provision,” now
§602(a)(1) (then §602(a)), barred importation (without
permission) of a copyrighted item (labels affixed to hair
care products) where an American copyright owner au­
thorized the first sale and export of hair care products
with copyrighted labels made in the United States, and
where a buyer sought to import them back into the United
States without the copyright owner’s permission. 523
U. S., at 138–139.
We held that the importation provision did not prohibit
sending the products back into the United States (without
the copyright owner’s permission). That section says:
“Importation into the United States, without the au­
thority 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 phono­
records under section 106.” 17 U. S. C. §602(a)(1)
(2006 ed., Supp. V) (emphasis added). See also
§602(a) (1994 ed.).
We pointed out that this section makes importation an
infringement of the “exclusive right to distribute . . . under
106.” We noted that §109(a)’s “first sale” doctrine limits
the scope of the §106 exclusive distribution right. We took
as given the fact that the products at issue had at least
once been sold. And we held that consequently, importa­
tion of the copyrighted labels does not violate §602(a)(1).
523 U. S., at 145.
In reaching this conclusion we endorsed Bobbs-Merrill
and its statement that the copyright laws were not “in­
tended to create a right which would permit the holder of
the copyright to fasten, by notice in a book . . . a restriction
upon the subsequent alienation of the subject-matter of
copyright after the owner had parted with the title to one
who had acquired full dominion over it.” 210 U. S., at26 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
349–350.
We also explained why we rejected the claim that our
interpretation would make §602(a)(1) pointless. Those
advancing that claim had pointed out that the 1976 Copy­
right Act amendments retained a prior anti-piracy provi­
sion, prohibiting the importation of pirated copies. Qual­
ity King, supra, at 146. Thus, they said, §602(a)(1) must
prohibit the importation of lawfully made copies, for to
allow the importation of those lawfully made copies after a
first sale, as Quality King’s holding would do, would leave
§602(a)(1) without much to prohibit. It would become
superfluous, without any real work to do.
We do not believe that this argument is a strong one.
Under Quality King’s interpretation, §602(a)(1) would still
forbid importing (without permission, and subject to the
exceptions in §602(a)(3)) copies lawfully made abroad, for
example, where (1) a foreign publisher operating as the
licensee of an American publisher prints copies of a book
overseas but, prior to any authorized sale, seeks to send
them to the United States; (2) a foreign printer or other
manufacturer (if not the “owner” for purposes of §109(a),
e.g., before an authorized sale) sought to send copyrighted
goods to the United States; (3) “a book publisher trans­
ports copies to a wholesaler” and the wholesaler (not yet
the owner) sends them to the United States, see Copyright
Law Revision, pt. 4, at 211 (giving this example); or (4)
a foreign film distributor, having leased films for distri-
bution, or any other licensee, consignee, or bailee sought to
send them to the United States. See, e.g., 2 Nimmer on
Copyright §8.12[B][1][a], at 8–159 (“Section 109(a) pro­
vides that the distribution right may be exercised solely
with respect to the initial disposition of copies of a work,
not to prevent or restrict the resale or other further trans­
fer of possession of such copies”). These examples show
that §602(a)(1) retains significance. We concede it has less
significance than the dissent believes appropriate, but the
Cite as: 568 U. S. ____ (2013) 27
Opinion of the Court
dissent also adopts a construction of §106(3) that “signifi­
cantly curtails” §109(a)’s effect, post, at 26, and so limits
the scope of that provision to a similar, or even greater,
degree.
In Quality King we rejected the “superfluous” argument
for similar reasons. But, when rejecting it, we said that,
where an author gives exclusive American distribution
rights to an American publisher and exclusive British
distribution rights to a British publisher, “presumably
only those [copies] made by the publisher of the United
States edition would be ‘lawfully made under this title’
within the meaning of §109(a).” 523 U. S., at 148 (empha­
sis added). Wiley now argues that this phrase in the
Quality King opinion means that books published abroad
(under license) must fall outside the words “lawfully made
under this title” and that we have consequently already
given those words the geographical interpretation that it
favors.
We cannot, however, give the Quality King statement
the legal weight for which Wiley argues. The language
“lawfully made under this title” was not at issue in Qual­
ity King; the point before us now was not then fully argued;
we did not canvas the considerations we have here set
forth; we there said nothing to suggest that the example
assumes a “first sale”; and we there hedged our state-
ment with the word “presumably.” Most importantly, the
statement is pure dictum. It is dictum contained in a
rebuttal to a counterargument. And it is unnecessary
dictum even in that respect. Is the Court having once
written dicta calling a tomato a vegetable bound to deny
that it is a fruit forever after?
To the contrary, we have written that we are not neces­
sarily bound by dicta should more complete argument
demonstrate that the dicta is not correct. Central Va.
Community College v. Katz, 546 U. S. 356, 363 (2006)
(“[W]e are not bound to follow our dicta in a prior case in
28 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
which the point now at issue was not fully debated”);
Humphrey’s Executor v. United States, 295 U. S. 602,
627–628 (1935) (rejecting, under stare decisis, dicta, “which
may be followed if sufficiently persuasive but which are
not controlling”). And, given the bit part that our Quality
King statement played in our Quality King decision, we
believe the view of stare decisis set forth in these opinions
applies to the matter now before us.
Second, Wiley and the dissent argue (to those who con­
sider legislative history) that the Act’s legislative history
supports their interpretation. But the historical events to
which it points took place more than a decade before the
enactment of the Act and, at best, are inconclusive.
During the 1960’s, representatives of book, record, and
film industries, meeting with the Register of Copyrights to
discuss copyright revision, complained about the difficulty
of dividing international markets. Copyright Law Revi­
sion Discussion and Comments on Report of the Register
of Copyrights on the General Revision of the U. S. Copy­
right Law, 88th Cong., 1st Sess., pt. 2, p. 212 (Comm.
Print 1963) (English editions of “particular” books “fin[d]”
their “way into this country”); id., at 213 (works “pub­
li[shed] in a country where there is no copyright protection
of any sort” are put into “the free stream of commerce” and
“shipped to the United States”); ibid. (similar concern in
respect to films).
The then-Register of Copyrights, Abraham Kaminstein,
found these examples “very troubl[ing].” Ibid. And the
Copyright Office released a draft provision that it said
“deals with the matter of the importation for distribution
in the United States of foreign copies that were made
under proper authority but that, if sold in the United
States, would be sold in contravention of the rights of the
copyright owner who holds the exclusive right to sell
copies in the United States.” Id., pt. 4, at 203. That draft
version, without reference to §106, simply forbids unau­
Cite as: 568 U. S. ____ (2013) 29
Opinion of the Court
thorized imports. It said:
“Importation into the United States of copies or rec­
ords of a work for the purpose of distribution to the
public shall, if such articles are imported without the
authority of the owner of the exclusive right to distrib-
ute copies or records under this title, constitute an
infringement of copyright actionable under section 35
[17 U. S. C. §501].” Id., Preliminary Draft for Revised
U. S. Copyright Law and Discussions and Comments,
88th Cong., 2d Sess., pt. 3, pp. 32–33 (Comm. Print
1964).
In discussing the draft, some of those present expressed
concern about its effect on the “first sale” doctrine. For
example, Irwin Karp, representing the Authors League
of America asked, “If a German jobber lawfully buys cop-
ies from a German publisher, are we not running into the
problem of restricting his transfer of his lawfully obtained
copies?” Id., pt. 4, at 211. The Copyright Office repre­
sentative replied, “This could vary from one situation to
another, I guess. I should guess, for example, that if
a book publisher transports [i.e., does not sell] copies to a
wholesaler [i.e., a nonowner], this is not yet the kind of
transaction that exhausts the right to control disposition.”
Ibid. (emphasis added).
The Office later withdrew the draft, replacing it with a
draft, which, by explicitly referring to §106, was similar to
the provision that became law, now §602(a)(1). The Office
noted in a report that, under the new draft, importation of
a copy (without permission) “would violate the exclusive
rights of the U. S. copyright owner . . . where the copyright
owner had authorized the making of copies in a foreign
country for distribution only in that country.” Id., pt. 6, at
150.
Still, that part of the report says nothing about the “first
sale” doctrine, about §109(a), or about the five words,
30 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
“lawfully made under this title.” And neither the report
nor its accompanying 1960’s draft answers the question
before us here. Cf. Quality King, 523 U. S., at 145 (with­
out those five words, the import clause, via its reference to
§106, imports the “first sale” doctrine).
But to ascertain the best reading of §109(a), rather
than dissecting the remarks of industry representatives
concerning §602 at congressional meetings held 10 years
before the statute was enacted, see post, at 13–16, we
would give greater weight to the congressional report
accompanying §109(a), written a decade later when Con­
gress passed the new law. That report says:
“Section 109(a) restates and confirms the principle
that, where the copyright owner has transferred own­
ership of a particular copy or phonorecord of a work,
the person to whom the copy or phonorecord is trans­
ferred is entitled to dispose of it by sale, rental, or any
other means. Under this principle, which has been
established by the court decisions and . . . the present
law, the copyright owner’s exclusive right of public
distribution would have no effect upon anyone who
owns ‘a particular copy or phonorecord lawfully made
under this title’ and who wishes to transfer it to
someone else or to destroy it.
. . . . .
“To come within the scope of section 109(a), a copy
or phonorecord must have been ‘lawfully made under
this title,’ though not necessarily with the copyright
owner’s authorization. For example, any resale of an
illegally ‘pirated’ phonorecord would be an infringe­
ment but the disposition of a phonorecord legally
made under the compulsory licensing provisions of
section 115 would not.” H. R. Rep. No. 94–1476, at 79
(emphasis added).
Cite as: 568 U. S. ____ (2013) 31
Opinion of the Court
Accord, S. Rep. No. 94–473, pp. 71–72 (1975).
This history reiterates the importance of the “first sale”
doctrine. See, e.g., Copyright Law Revision, 1964 Revision
Bill with Discussions and Comments, 89th Cong., 1st
Sess., pt. 5, p. 66 (Comm. Print 1965) (“[F]ull ownership of
a lawfully-made copy authorizes its owner to dispose of
it freely”). It explains, as we have explained, the nongeo­
graphical purposes of the words “lawfully made under this
title.” Part II–B, supra. And it says nothing about geog­
raphy. Nor, importantly, did §109(a)’s predecessor provi­
sion. See supra, at 12. This means that, contrary to the
dissent’s suggestion, any lack of legislative history per­
taining to the “first sale” doctrine only tends to bolster
our position that Congress’ 1976 revision did not intend to
create a drastic geographical change in its revision to that
provision. See post, at 18, n. 13. We consequently believe
that the legislative history, on balance, supports the non-
geographical interpretation.
Third, Wiley and the dissent claim that a nongeograph­
ical interpretation will make it difficult, perhaps impos­
sible, for publishers (and other copyright holders) to divide
foreign and domestic markets. We concede that is so. A
publisher may find it more difficult to charge different
prices for the same book in different geographic markets.
But we do not see how these facts help Wiley, for we can
find no basic principle of copyright law that suggests that
publishers are especially entitled to such rights.
The Constitution describes the nature of American
copyright law by providing Congress with the power to
“secur[e]” to “[a]uthors” “for limited [t]imes” the “exclusive
[r]ight to their . . . [w]ritings.” Art. I, §8, cl. 8. The Found­
ers, too, discussed the need to grant an author a limited
right to exclude competition. Compare Letter from Thomas
Jefferson to James Madison (July 31, 1788), in 13
Papers of Thomas Jefferson 440, 442–443 (J. Boyd ed. 1956)
(arguing against any monopoly) with Letter from James
32 KIRTSAENG v. JOHN WILEY & SONS, INC.
Opinion of the Court
Madison to Thomas Jefferson (Oct. 17, 1788), in 14 id., at
16, 21 (J. Boyd ed. 1958) (arguing for a limited monopoly
to secure production). But the Constitution’s language
nowhere suggests that its limited exclusive right should
include a right to divide markets or a concomitant right
to charge different purchasers different prices for the same
book, say to increase or to maximize gain. Neither, to our
knowledge, did any Founder make any such suggestion.
We have found no precedent suggesting a legal preference
for interpretations of copyright statutes that would pro­
vide for market divisions. Cf. Copyright Law Revision, pt.
2, at 194 (statement of Barbara Ringer, Copyright Office)
(division of territorial markets was “primarily a matter of
private contract”).
To the contrary, Congress enacted a copyright law that
(through the “first sale” doctrine) limits copyright holders’
ability to divide domestic markets. And that limitation is
consistent with antitrust laws that ordinarily forbid mar­
ket divisions. Cf. Palmer v. BRG of Ga., Inc., 498 U. S. 46,
49–50 (1990) (per curiam) (“[A]greements between compet­
itors to allocate territories to minimize competition are
illegal”). Whether copyright owners should, or should
not, have more than ordinary commercial power to divide
international markets is a matter for Congress to decide.
We do no more here than try to determine what decision
Congress has taken.
Fourth, the dissent and Wiley contend that our decision
launches United States copyright law into an unprece­
dented regime of “international exhaustion.” Post, at 18–
23; Brief for Respondent 45–46. But they point to nothing
indicative of congressional intent in 1976. The dissent
also claims that it is clear that the United States now
opposes adopting such a regime, but the Solicitor General
as amicus has taken no such position in this case. In fact,
when pressed at oral argument, the Solicitor General
stated that the consequences of Wiley’s reading of the
Cite as: 568 U. S. ____ (2013) 33
Opinion of the Court
statute (perpetual downstream control) were “worse” than
those of Kirtsaeng’s reading (restriction of market seg­
mentation). Tr. of Oral Arg. 51. And the dissent’s reliance
on the Solicitor General’s position in Quality King is under-
mined by his agreement in that case with our reading
of §109(a). Brief for United States as Amicus Curiae in
Quality King, O. T. 1996, No. 1470, p. 30 (“When . . . Con­
gress wishes to make the location of manufacture relevant
to Copyright Act protection, it does so expressly”); ibid.
(calling it “distinctly unlikely” that Congress would have
provided an incentive for overseas manufacturing).
Moreover, the exhaustion regime the dissent apparently
favors would provide that “the sale in one country of a
good” does not “exhaus[t] the intellectual-property owner’s
right to control the distribution of that good elsewhere.”
Post, at 18–19. But our holding in Quality King that
§109(a) is a defense in U. S. courts even when “the first
sale occurred abroad,” 523 U. S., at 145, n. 14, has already
significantly eroded such a principle.
IV
For these reasons we conclude that the considerations
supporting Kirtsaeng’s nongeographical interpretation of
the words “lawfully made under this title” are the more
persuasive. The judgment of the Court of Appeals is
reversed, and the case is remanded for further proceedings
consistent with this opinion.
It is so ordered.
Cite as: 568 U. S. ____ (2013) 1
KAGAN, J., concurring
SUPREME COURT OF THE UNITED STATES
_________________
No. 11–697
_________________
SUPAP KIRTSAENG, DBA BLUECHRISTINE99,
PETITIONER v. JOHN WILEY & SONS, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE SECOND CIRCUIT
[March 19, 2013]
JUSTICE KAGAN, with whom JUSTICE ALITO joins,
concurring.
I concur fully in the Court’s opinion. Neither the text
nor the history of 17 U. S. C. §109(a) supports removing
first-sale protection from every copy of a protected work
manufactured abroad. See ante, at 8–16, 28–31. I recog-
nize, however, that the combination of today’s decision
and Quality King Distributors, Inc. v. L’anza Research
Int’l, Inc., 523 U. S. 135 (1998), constricts the scope of
§602(a)(1)’s ban on unauthorized importation. I write to
suggest that any problems associated with that limitation
come not from our reading of §109(a) here, but from Qual-
ity King’s holding that §109(a) limits §602(a)(1).
As the Court explains, the first-sale doctrine has played
an integral part in American copyright law for over a
century. See ante, at 17–19; Bobbs-Merrill Co. v. Straus,
210 U. S. 339 (1908). No codification of the doctrine prior
to 1976 even arguably limited its application to copies
made in the United States. See ante, at 12. And nothing
in the text or history of §109(a)—the Copyright Act of
1976’s first-sale provision—suggests that Congress meant
to enact the new, geographical restriction John Wiley
proposes, which at once would deprive American consum-
ers of important rights and encourage copyright holders to
manufacture abroad. See ante, at 8–16, 28–31.
2 KIRTSAENG v. JOHN WILEY & SONS, INC.
KAGAN, J., concurring
That said, John Wiley is right that the Court’s decision,
when combined with Quality King, substantially narrows
§602(a)(1)’s ban on unauthorized importation. Quality
King held that the importation ban does not reach any
copies receiving first-sale protection under §109(a). See
523 U. S., at 151–152. So notwithstanding §602(a)(1), an
“owner of a particular copy . . . lawfully made under this
title” can import that copy without the copyright owner’s
permission. §109(a). In now holding that copies “lawfully
made under this title” include copies manufactured
abroad, we unavoidably diminish §602(a)(1)’s scope—
indeed, limit it to a fairly esoteric set of applications. See
ante, at 26–27.
But if Congress views the shrinking of §602(a)(1) as a
problem, it should recognize Quality King—not our deci-
sion today—as the culprit. Here, after all, we merely
construe §109(a); Quality King is the decision holding that
§109(a) limits §602(a)(1). Had we come out the opposite
way in that case, §602(a)(1) would allow a copyright owner
to restrict the importation of copies irrespective of the
first-sale doctrine.1 That result would enable the copy-
right owner to divide international markets in the way
John Wiley claims Congress intended when enacting
§602(a)(1). But it would do so without imposing down-
——————
1 Although Quality King concluded that the statute’s text foreclosed
that outcome, see 523 U. S., at 151–152, the Solicitor General offered a
cogent argument to the contrary. He reasoned that §109(a) does not
limit §602(a)(1) because the former authorizes owners only to “sell” or
“dispose” of copies—not to import them: The Act’s first-sale provision
and its importation ban thus regulate separate, non-overlapping
spheres of conduct. See Brief for United States as Amicus Curiae in
Quality King, O. T. 1996, No. 96–1470, pp. 5, 8–10. That reading
remains the Government’s preferred way of construing the statute. See
Tr. of Oral Arg. 44 (“[W]e think that we still would adhere to our view
that section 109(a) should not be read as a limitation on section
602(a)(1)”); see also ante, at 32–33; post, at 21, n. 15 (GINSBURG, J.,
dissenting).
Cite as: 568 U. S. ____ (2013) 3
KAGAN, J., concurring
stream liability on those who purchase and resell in the
United States copies that happen to have been manu-
factured abroad. In other words, that outcome would tar-
get unauthorized importers alone, and not the “libraries,
used-book dealers, technology companies, consumer-goods
retailers, and museums” with whom the Court today is
rightly concerned. Ante, at 19. Assuming Congress
adopted §602(a)(1) to permit market segmentation, I sus-
pect that is how Congress thought the provision would
work—not by removing first-sale protection from every copy
manufactured abroad (as John Wiley urges us to do here),
but by enabling the copyright holder to control imports
even when the first-sale doctrine applies (as Quality King
now prevents).2
At bottom, John Wiley (together with the dissent) asks
us to misconstrue §109(a) in order to restore §602(a)(1)
to its purportedly rightful function of enabling copyright
holders to segment international markets. I think John
Wiley may have a point about what §602(a)(1) was de-
signed to do; that gives me pause about Quality King’s
holding that the first-sale doctrine limits the importation
ban’s scope. But the Court today correctly declines the
——————
2 Indeed, allowing the copyright owner to restrict imports irrespective
of the first-sale doctrine—i.e., reversing Quality King—would yield a
far more sensible scheme of market segmentation than would adopting
John Wiley’s argument here. That is because only the former approach
turns on the intended market for copies; the latter rests instead on their
place of manufacture. To see the difference, imagine that John Wiley
prints all its textbooks in New York, but wants to distribute certain
versions only in Thailand. Without Quality King, John Wiley could do
so—i.e., produce books in New York, ship them to Thailand, and pre-
vent anyone from importing them back into the United States. But
with Quality King, that course is not open to John Wiley even under its
reading of §109(a): To prevent someone like Kirtsaeng from re-
importing the books—and so to segment the Thai market—John Wiley
would have to move its printing facilities abroad. I can see no reason
why Congress would have conditioned a copyright owner’s power to
divide markets on outsourcing its manufacturing to a foreign country.
4 KIRTSAENG v. JOHN WILEY & SONS, INC.
KAGAN, J., concurring
invitation to save §602(a)(1) from Quality King by destroy-
ing the first-sale protection that §109(a) gives to every
owner of a copy manufactured abroad. That would swap
one (possible) mistake for a much worse one, and make
our reading of the statute only less reflective of Congres-
sional intent. If Congress thinks copyright owners need
greater power to restrict importation and thus divide
markets, a ready solution is at hand—not the one John
Wiley offers in this case, but the one the Court rejected in
Quality King.
Cite as: 568 U. S. ____ (2013) 1
GINSBURG, J., dissenting
SUPREME COURT OF THE UNITED STATES
_________________
No. 11–697
_________________
SUPAP KIRTSAENG, DBA BLUECHRISTINE99,
PETITIONER v. JOHN WILEY & SONS, INC.
ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF
APPEALS FOR THE SECOND CIRCUIT
[March 19, 2013]
JUSTICE GINSBURG, with whom JUSTICE KENNEDY joins,
and with whom JUSTICE SCALIA joins except as to Parts III
and V–B–1, dissenting.
“In the interpretation of statutes, the function of the
courts is easily stated. It is to construe the language so as
to give effect to the intent of Congress.” United States v.
American Trucking Assns., Inc., 310 U. S. 534, 542 (1940).
Instead of adhering to the Legislature’s design, the Court
today adopts an interpretation of the Copyright Act at
odds with Congress’ aim to protect copyright owners
against the unauthorized importation of low-priced, foreign­
made copies of their copyrighted works. The Court’s bold
departure from Congress’ design is all the more stunning,
for it places the United States at the vanguard of the
movement for “international exhaustion” of copyrights—a
movement the United States has steadfastly resisted on
the world stage.
To justify a holding that shrinks to insignificance copy­
right protection against the unauthorized importation of
foreign-made copies, the Court identifies several “practical
problems.” Ante, at 24. The Court’s parade of horribles,
however, is largely imaginary. Congress’ objective in
enacting 17 U. S. C. §602(a)(1)’s importation prohibition
can be honored without generating the absurd conse­
quences hypothesized in the Court’s opinion. I dissent
2 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
from the Court’s embrace of “international exhaustion,”
and would affirm the sound judgment of the Court of
Appeals.
I
Because economic conditions and demand for particular
goods vary across the globe, copyright owners have a
financial incentive to charge different prices for copies of
their works in different geographic regions. Their ability
to engage in such price discrimination, however, is under-
mined if arbitrageurs are permitted to import copies
from low-price regions and sell them in high-price regions.
The question in this case is whether the unauthorized
importation of foreign-made copies constitutes copyright
infringement under U. S. law.
To answer this question, one must examine three provi­
sions of Title 17 of the U. S. Code: §§106(3), 109(a), and
602(a)(1). Section 106 sets forth the “exclusive rights” of a
copyright owner, including the right “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.” §106(3). This distribution right is limited by
§109(a), which provides: “Notwithstanding the provisions
of section 106(3), the owner of a particular copy or phono-
record lawfully made under this title . . . is entitled,
without the authority of the copyright owner, to sell or
otherwise dispose of the possession of that copy or
phonorecord.” Section 109(a) codifies the “first sale doc­
trine,” a doctrine articulated in Bobbs-Merrill Co. v.
Straus, 210 U. S. 339, 349–351 (1908), which held that a
copyright owner could not control the price at which re­
tailers sold lawfully purchased copies of its work. The
first sale doctrine recognizes that a copyright owner
should not be permitted to exercise perpetual control over
the distribution of copies of a copyrighted work. At some
point—ordinarily the time of the first commercial sale—
Cite as: 568 U. S. ____ (2013) 3
GINSBURG, J., dissenting
the copyright owner’s exclusive right under §106(3) to
control the distribution of a particular copy is exhausted,
and from that point forward, the copy can be resold or
otherwise redistributed without the copyright owner’s
authorization.
Section 602(a)(1) (2006 ed., Supp. V)1—last, but most
critical, of the three copyright provisions bearing on this
case—is an importation ban. It reads:
“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 infringe-
ment of the exclusive right to distribute copies or
phonorecords under section 106, actionable under sec­
tion 501.”
In Quality King Distributors, Inc. v. L’anza Research
Int’l, Inc., 523 U. S. 135, 143–154 (1998), the Court held
that a copyright owner’s right to control importation under
§602(a)(1) is a component of the distribution right set forth
in §106(3) and is therefore subject to §109(a)’s codification
of the first sale doctrine. Quality King thus held that
the importation of copies made in the United States but
sold abroad did not rank as copyright infringement
under §602(a)(1). Id., at 143–154. See also id., at 154
(GINSBURG, J., concurring) (Quality King “involve[d] a
‘round trip’ journey, travel of the copies in question from
the United States to places abroad, then back again”).2
——————
1 In 2008, Congress renumbered what was previously §602(a) as
§602(a)(1). See Prioritizing Resources and Organization for Intellectual
Property Act of 2008 (PROIPA), §105(b)(2), 122 Stat. 4259. Like the
Court, I refer to the provision by its current numbering.
2 Although JUSTICE KAGAN’s concurrence suggests that Quality King
erred in “holding that §109(a) limits §602(a)(1),” ante, at 2, that recent,
unanimous holding must be taken as a given. See John R. Sand &
Gravel Co. v. United States, 552 U. S. 130, 139 (2008) (“[S]tare decisis
in respect to statutory interpretation has ‘special force,’ for ‘Congress
4 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
Important to the Court’s holding, the copies at issue in
Quality King had been “ ‘lawfully made under [Title
17]’ ”—a prerequisite for application of §109(a). Id., at 143,
n. 9 (quoting §109(a)). Section 602(a)(1), the Court noted,
would apply to “copies that were ‘lawfully made’ not under
the United States Copyright Act, but instead, under the
law of some other country.” Id., at 147. Drawing on an
example discussed during a 1964 public meeting on pro­
posed revisions to the U. S. copyright laws,3 the Court
stated:
“If the author of [a] work gave the exclusive United
States distribution rights—enforceable under the
Act—to the publisher of the United States edition and
the exclusive British distribution rights to the pub­
lisher of the British edition, . . . presumably only those
[copies] made by the publisher of the United States
edition would be ‘lawfully made under this title’
within the meaning of §109(a). The first sale doctrine
would not provide the publisher of the British edition
who decided to sell in the American market with a de­
fense to an action under §602(a) (or, for that matter,
——————
remains free to alter what we have done.’ ” (quoting Patterson v.
McLean Credit Union, 491 U. S. 164, 172–173 (1989))). The Court’s
objective in this case should be to avoid unduly “constrict[ing] the scope
of §602(a)(1)’s ban on unauthorized importation,” ante, at 1 (opinion of
KAGAN, J.), while at the same time remaining faithful to Quality King’s
holding and to the text and history of other Copyright Act provisions.
This aim is not difficult to achieve. See Parts II–V, infra. JUSTICE
KAGAN and I appear to agree to this extent: Congress meant the ban on
unauthorized importation to have real force. See ante, at 3 (acknowl­
edging that “Wiley may have a point about what §602(a)(1) was de­
signed to do”).
3 See Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 523
U. S. 135, 148, n. 20 (1998) (quoting Copyright Law Revision Part 4:
Further Discussions and Comments on Preliminary Draft for Revised
U. S. Copyright Law, 88th Cong., 2d Sess., 119 (H. R. Judiciary Comm.
Print 1964) (hereinafter Copyright Law Revision Part 4) (statement of
Harriet Pilpel)).
Cite as: 568 U. S. ____ (2013) 5
GINSBURG, J., dissenting
to an action under §106(3), if there was a distribution
of the copies).” Id., at 148.
As the District Court and the Court of Appeals concluded,
see 654 F. 3d 210, 221–222 (CA2 2011); App. to Pet. for
Cert. 70a–73a, application of the Quality King analysis to
the facts of this case would preclude any invocation of
§109(a). Petitioner Supap Kirtsaeng imported and then
sold at a profit over 600 copies of copyrighted textbooks
printed outside the United States by the Asian subsidiary
of respondent John Wiley & Sons, Inc. (Wiley). App. 29–
34. See also ante, at 3–5 (opinion of the Court). In the
words the Court used in Quality King, these copies “were
‘lawfully made’ not under the United States Copyright
Act, but instead, under the law of some other country.”
523 U. S., at 147. Section 109(a) therefore does not ap-
ply, and Kirtsaeng’s unauthorized importation constitutes
copyright infringement under §602(a)(1).
The Court does not deny that under the language I have
quoted from Quality King, Wiley would prevail. Ante, at
27. Nevertheless, the Court dismisses this language, to
which all Members of the Quality King Court subscribed,
as ill-considered dictum. Ante, at 27–28. I agree that the
discussion was dictum in the sense that it was not essen­
tial to the Court’s judgment. See Quality King, 523 U. S.,
at 154 (GINSBURG, J., concurring) (“[W]e do not today
resolve cases in which the allegedly infringing imports
were manufactured abroad.”). But I disagree with the
Court’s conclusion that this dictum was ill considered.
Instead, for the reasons explained below, I would hold,
consistently with Quality King’s dictum, that §602(a)(1)
authorizes a copyright owner to bar the importation of a
copy manufactured abroad for sale abroad.
II
The text of the Copyright Act demonstrates that Con­
gress intended to provide copyright owners with a potent
6 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
remedy against the importation of foreign-made copies of
their copyrighted works. As the Court recognizes, ante, at
3, this case turns on the meaning of the phrase “lawfully
made under this title” in §109(a). In my view, that phrase
is most sensibly read as referring to instances in which a
copy’s creation is governed by, and conducted in compli­
ance with, Title 17 of the U. S. Code. This reading is
consistent with the Court’s interpretation of similar lan­
guage in other statutes. See Florida Dept. of Revenue v.
Piccadilly Cafeterias, Inc., 554 U. S. 33, 52–53 (2008)
(“under” in 11 U. S. C. §1146(a), a Bankruptcy Code provi­
sion exempting certain asset transfers from stamp taxes,
means “pursuant to”); Ardestani v. INS, 502 U. S. 129, 135
(1991) (the phrase “under section 554” in the Equal Access
to Justice Act means “subject to” or “governed by” 5
U. S. C. §554 (internal quotation marks omitted)). It also
accords with dictionary definitions of the word “under.”
See, e.g., American Heritage Dictionary 1887 (5th ed.
2011) (“under” means, among other things, “[s]ubject to
the authority, rule, or control of ”).
Section 109(a), properly read, affords Kirtsaeng no
defense against Wiley’s claim of copyright infringement.
The Copyright Act, it has been observed time and again,
does not apply extraterritorially. See United Dictionary
Co. v. G. & C. Merriam Co., 208 U. S. 260, 264 (1908)
(copyright statute requiring that U. S. copyright notices be
placed in all copies of a work did not apply to copies pub­
lished abroad because U. S. copyright laws have no “force”
beyond the United States’ borders); 4 M. Nimmer & D.
Nimmer, Copyright §17.02, p. 17–18 (2012) (hereinafter
Nimmer) (“[C]opyright laws do not have any extraterrito­
rial operation.”); 4 W. Patry, Copyright §13:22, p. 13–66
(2012) (hereinafter Patry) (“Copyright laws are rigor-
ously territorial.”). The printing of Wiley’s foreign­
manufactured textbooks therefore was not governed by
Title 17. The textbooks thus were not “lawfully made
Cite as: 568 U. S. ____ (2013) 7
GINSBURG, J., dissenting
under [Title 17],” the crucial precondition for application
of §109(a). And if §109(a) does not apply, there is no dis­
pute that Kirtsaeng’s conduct constituted copyright in­
fringement under §602(a)(1).
The Court’s point of departure is similar to mine. Ac­
cording to the Court, the phrase “ ‘lawfully made under
this title’ means made ‘in accordance with’ or ‘in compli­
ance with’ the Copyright Act.” Ante, at 8. But the Court
overlooks that, according to the very dictionaries it cites,
ante, at 9, the word “under” commonly signals a relation­
ship of subjection, where one thing is governed or regu-
lated by another. See Black’s Law Dictionary 1525 (6th ed.
1990) (“under” “frequently” means “inferior” or “subordi­
nate” (internal quotation marks omitted)); 18 Oxford
English Dictionary 950 (2d ed. 1989) (“under” means,
among other things, “[i]n accordance with (some regulative
power or principle)” (emphasis added)). See also Webster’s
Third New International Dictionary 2487 (1961) (“under”
means, among other things, “in . . . a condition of sub-
jection, regulation, or subordination” and “suffering re­
striction, restraint, or control by”). Only by disregarding
this established meaning of “under” can the Court arrive
at the conclusion that Wiley’s foreign-manufactured text­
books were “lawfully made under” U. S. copyright law,
even though that law did not govern their creation. It is
anomalous, however, to speak of particular conduct as
“lawful” under an inapplicable law. For example, one
might say that driving on the right side of the road in
England is “lawful” under U. S. law, but that would be so
only because U. S. law has nothing to say about the sub­
ject. The governing law is English law, and English law
demands that driving be done on the left side of the road.4
——————
4 The Court asserts that my position gives the word “lawfully” in
§109(a) “little, if any, linguistic work to do.” Ante, at 9. That is not so.
My reading gives meaning to each word in the phrase “lawfully made
8 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
The logical implication of the Court’s definition of the
word “under” is that any copy manufactured abroad—even
a piratical one made without the copyright owner’s author­
ization and in violation of the law of the country where it
was created—would fall within the scope of §109(a). Any
such copy would have been made “in accordance with” or
“in compliance with” the U. S. Copyright Act, in the sense
that manufacturing the copy did not violate the Act (be­
cause the Act does not apply extraterritorially).
The Court rightly refuses to accept such an absurd
conclusion. Instead, it interprets §109(a) as applying only
to copies whose making actually complied with Title 17, or
would have complied with Title 17 had Title 17 been ap­
plicable (i.e., had the copies been made in the United
States). See ante, at 8 (“§109(a)’s ‘first sale’ doctrine would
apply to copyrighted works as long as their manufacture
met the requirements of American copyright law.”). Con­
gress, however, used express language when it called for
such a counterfactual inquiry in 17 U. S. C. §§602(a)(2)
and (b). See §602(a)(2) (“Importation into the United
States or exportation from the United States, without the
authority of the owner of copyright under this title, of
copies or phonorecords, the making of which either consti­
tuted an infringement of copyright, or which would have
constituted an infringement of copyright if this title had
been applicable, is an infringement of the exclusive right
to distribute copies or phonorecords under section 106.”
(emphasis added)); §602(b) (“In a case where the making
——————
under this title.” The word “made” signifies that the conduct at issue is
the creation or manufacture of a copy. See Webster’s Third New
International Dictionary 1356 (1961) (defining “made” as “artificially
produced by a manufacturing process”). The word “lawfully” indicates
that for §109(a) to apply, the copy’s creation must have complied with
some body of law. Finally, the prepositional phrase “under this title”
clarifies what that body of law is—namely, the copyright prescriptions
contained in Title 17 of the U. S. Code.
Cite as: 568 U. S. ____ (2013) 9
GINSBURG, J., dissenting
of the copies or phonorecords would have constituted an
infringement of copyright if this title had been applicable,
their importation is prohibited.” (emphasis added)). Had
Congress intended courts to engage in a similarly hypo­
thetical inquiry under §109(a), Congress would pre-
sumably have included similar language in that section.
See Russello v. United States, 464 U. S. 16, 23 (1983)
(“ ‘[W]here Congress includes particular language in one
section of a statute but omits it in another section of the
same Act, it is generally presumed that Congress acts
intentionally and purposely in the disparate inclusion
or exclusion.’ ” (quoting United States v. Wong Kim Bo,
472 F. 2d 720, 722 (CA5 1972) (per curiam); brackets in
original)).5
——————
5 Attempting to show that my reading of §109(a) is susceptible to the
same criticism, the Court points to the now-repealed “manufacturing
clause,” which required “copies of a work consisting preponderantly of
nondramatic literary material . . . in the English language” to be
“manufactured in the United States or Canada.” Copyright Act of 1976,
§601(a), 90 Stat. 2588. Because Congress expressly referred to manu­
facturing in this provision, the Court contends, the phrase “lawfully
made under this title” in §109(a) cannot mean “manufactured in the
United States.” Ante, at 19. This argument is a non sequitur. I do not
contend that the phrases “lawfully made under this title” and “manu­
factured in the United States” are interchangeable. To repeat, I read
the phrase “lawfully made under this title” as referring to instances in
which a copy’s creation is governed by, and conducted in compliance
with, Title 17 of the U. S. Code. See supra, at 6. Not all copies “manu­
factured in the United States” will satisfy this standard. For example,
piratical copies manufactured in the United States without the copy­
right owner’s authorization are not “lawfully made under [Title 17].”
Nor would the phrase “lawfully manufactured in the United States” be
an exact substitute for “lawfully made under this title.” The making of
a copy may be lawful under Title 17 yet still violate some other provi­
sion of law. Consider, for example, a copy made with the copyright
owner’s authorization by workers who are paid less than minimum
wage. The copy would be “lawfully made under [Title 17]” in the sense
that its creation would not violate any provision of that title, but the
copy’s manufacturing would nonetheless be unlawful due to the viola­
10 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
Not only does the Court adopt an unnatural construc­
tion of the §109(a) phrase “lawfully made under this title.”
Concomitantly, the Court reduces §602(a)(1) to insignifi­
cance. As the Court appears to acknowledge, see ante, at
26, the only independent effect §602(a)(1) has under to­
day’s decision is to prohibit unauthorized importations
carried out by persons who merely have possession of, but
do not own, the imported copies. See 17 U. S. C. §109(a)
(§109(a) applies to any “owner of a particular copy or
phonorecord lawfully made under this title” (emphasis
added)).6 If this is enough to avoid rendering §602(a)(1)
entirely “superfluous,” ante, at 26, it hardly suffices to give
the owner’s importation right the scope Congress intended
it to have. Congress used broad language in §602(a)(1); it
did so to achieve a broad objective. Had Congress intended
simply to provide a copyright remedy against larcenous
lessees, licensees, consignees, and bailees of films and
other copyright-protected goods, see ante, at 13–14, 26, it
likely would have used language tailored to that narrow
purpose. See 2 Nimmer §8.12[B][6][c], at 8–184.31, n. 432
(“It may be wondered whether . . . potential causes of
action [against licensees and the like] are more than theo­
retical.”). See also ante, at 2 (KAGAN, J., concurring) (the
Court’s decision limits §602(a)(1) “to a fairly esoteric set of
——————
tion of the minimum-wage laws.
6 When §602(a)(1) was originally enacted in 1976, it played an addi­
tional role—providing a private cause of action against importers of
piratical goods. See Quality King, 523 U. S., at 146. In 2008, however,
Congress amended §602 to provide for such a cause of action in
§602(a)(2), which prohibits the unauthorized “[i]mportation into the
United States . . . of copies or phonorecords, the making of which either
constituted an infringement of copyright, or which would have consti­
tuted an infringement of copyright if [Title 17] had been applicable.”
See PROIPA, §105(b)(3), 122 Stat. 4259–4260. Thus, under the Court’s
interpretation, the only conduct reached by §602(a)(1) but not
§602(a)(2) is a nonowner’s unauthorized importation of a nonpiratical
copy.
Cite as: 568 U. S. ____ (2013) 11
GINSBURG, J., dissenting
applications”).7
The Court’s decision also overwhelms 17 U. S. C.
§602(a)(3)’s exceptions to §602(a)(1)’s importation prohibi­
tion. 2 P. Goldstein, Copyright §7.6.1.2(a), p. 7:141 (3d ed.
2012) (hereinafter Goldstein).8 Those exceptions permit
the importation of copies without the copyright owner’s
authorization for certain governmental, personal, schol-
arly, educational, and religious purposes. 17 U. S. C.
§602(a)(3). Copies imported under these exceptions “will
often be lawfully made gray market goods purchased
through normal market channels abroad.” 2 Goldstein
——————
7 Notably, the Court ignores the history of §602(a)(1), which reveals
that the primary purpose of the prescription was not to provide a
remedy against rogue licensees, consignees, and bailees, against whom
copyright owners could frequently assert breach-of-contract claims even
in the absence of §602(a)(1). Instead, the primary purpose of §602(a)(1)
was to reach third-party importers, enterprising actors like Kirtsaeng,
against whom copyright owners could not assert contract claims due to
lack of privity. See Part III, infra.
8 Section 602(a)(3) provides:
“This subsection [i.e., §602(a)] does not apply to—
“(A) importation or exportation of copies or phonorecords under the
authority or for the use of the Government of the United States or of
any State or political subdivision of a State, but not including copies or
phonorecords for use in schools, or copies of any audiovisual work
imported for purposes other than archival use;
“(B) importation or exportation, for the private use of the importer or
exporter and not for distribution, by any person with respect to no more
than one copy or phonorecord of any one work at any one time, or by
any person arriving from outside the United States or departing from
the United States with respect to copies or phonorecords forming part
of such person’s personal baggage; or
“(C) importation by or for an organization operated for scholarly,
educational, or religious purposes and not for private gain, with respect
to no more than one copy of an audiovisual work solely for its archival
purposes, and no more than five copies or phonorecords of any other
work for its library lending or archival purposes, unless the importation
of such copies or phonorecords is part of an activity consisting of sys­
tematic reproduction or distribution, engaged in by such organization
in violation of the provisions of section 108(g)(2).”
12 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
§7.6.1.2(a), at 7:141.9 But if, as the Court holds, such
copies can in any event be imported by virtue of §109(a),
§602(a)(3)’s work has already been done. For example,
had Congress conceived of §109(a)’s sweep as the Court
does, what earthly reason would there be to provide, as
Congress did in §602(a)(3)(C), that a library may import
“no more than five copies” of a non-audiovisual work for its
“lending or archival purposes”?
The far more plausible reading of §§109(a) and 602(a),
then, is that Congress intended §109(a) to apply to copies
made in the United States, not to copies manufactured
and sold abroad. That reading of the first sale and impor­
tation provisions leaves §602(a)(3)’s exceptions with real,
meaningful work to do. See TRW Inc. v. Andrews, 534
U. S. 19, 31 (2001) (“It is a cardinal principle of statutory
construction that a statute ought, upon the whole, to be so
construed that, if it can be prevented, no clause, sen­
tence, or word shall be superfluous, void, or insignificant.”
(internal quotation marks omitted)). In the range of circum-
stances covered by the exceptions, §602(a)(3) frees indi­
viduals and entities who purchase foreign-made copies
abroad from the requirement they would otherwise face
under §602(a)(1) of obtaining the copyright owner’s per­
mission to import the copies into the United States.10
——————
9 The term “gray market good” refers to a good that is “imported out­
side the distribution channels that have been contractually negotiated
by the intellectual property owner.” Forsyth & Rothnie, Parallel
Imports, in The Interface Between Intellectual Property Rights and
Competition Policy 429 (S. Anderman ed. 2007). Such goods are also
commonly called “parallel imports.” Ibid.
10 The Court asserts that its reading of §109(a) is bolstered by §104,
which extends the copyright “protection[s]” of Title 17 to a wide variety
of foreign works. See ante, at 10–11. The “protection under this title”
afforded by §104, however, is merely protection against infringing
conduct within the United States, the only place where Title 17 applies.
See 4 W. Patry, Copyright §13:44.10, pp. 13–128 to 13–129 (2012)
(hereinafter Patry). Thus, my reading of the phrase “under this title” in
Cite as: 568 U. S. ____ (2013) 13
GINSBURG, J., dissenting
III
The history of §602(a)(1) reinforces the conclusion I
draw from the text of the relevant provisions: §109(a)
does not apply to copies manufactured abroad. Section
602(a)(1) was enacted as part of the Copyright Act of 1976,
90 Stat. 2589–2590. That Act was the product of a lengthy
revision effort overseen by the U. S. Copyright Office. See
Mills Music, Inc. v. Snyder, 469 U. S. 153, 159–160 (1985).
In its initial 1961 report on recommended revisions, the
Copyright Office noted that publishers had “suggested
that the [then-existing] import ban on piratical copies
should be extended to bar the importation of . . . foreign
edition[s]” in violation of “agreements to divide interna­
tional markets for copyrighted works.” Copyright Law
Revision: Report of the Register of Copyrights on the
General Revision of the U. S. Copyright Law, 87th Cong.,
1st Sess., 126 (H. R. Judiciary Comm. Print 1961) (herein­
after Copyright Law Revision). See Copyright Act of 1947,
§106, 61 Stat. 663 (“The importation into the United
States . . . of any piratical copies of any work copyrighted
——————
§109(a) is consistent with Congress’ use of that phrase in §104. Fur­
thermore, §104 describes which works are entitled to copyright protec­
tion under U. S. law. But no one disputes that Wiley’s copyrights in the
works at issue in this case are valid. The only question is whether
Kirtsaeng’s importation of copies of those works infringed Wiley’s
copyrights. It is basic to copyright law that “[o]wnership of a copyright
. . . is distinct from ownership of any material object in which the work
is embodied.” 17 U. S. C. §202. See also §101 (“ ‘Copies’ are material
objects, other than phonorecords, in which a work is fixed by any
method now known or later developed, and from which the work can be
perceived, reproduced, or otherwise communicated, either directly or
with the aid of a machine or device.”). Given the distinction copyright
law draws between works and copies, §104 is inapposite to the question
here presented. 4 Patry §13:44.10, at 13–129 (“There is no connection,
linguistically or substantively, between Section[s] 104 and 109: Section
104 deals with national eligibility for the intangible work of authorship;
Section 109(a) deals with the tangible, physical embodiment of the
work, the ‘copy.’ ”).
14 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
in the United States . . . is prohibited.”). The Copyright
Office originally recommended against such an extension
of the importation ban, reasoning that enforcement of
territorial restrictions was best left to contract law. Copy­
right Law Revision 126.
Publishing-industry representatives argued strenuously
against the position initially taken by the Copyright Of­
fice. At a 1962 panel discussion on the Copyright Office’s
report, for example, Horace Manges of the American Book
Publishers Council stated:
“When a U. S. book publisher enters into a contract
with a British publisher to acquire exclusive U. S.
rights for a particular book, he often finds that the
English edition . . . of that particular book finds its
way into this country. Now it’s all right to say, ‘Com­
mence a lawsuit for breach of contract.’ But this is
expensive, burdensome, and, for the most part, inef­
fective.” Copyright Law Revision Part 2: Discussion
and Comments on Report of the Register of Copy­
rights on the General Revision of the U. S. Copyright
Law, 88th Cong., 1st Sess., 212 (H. R. Judiciary
Comm. Print 1963).
Sidney Diamond, representing London Records, elabo­
rated on Manges’ statement. “There are many situations,”
he explained, “in which it is not necessarily a question of
the inadequacy of a contract remedy—in the sense that it
may be difficult or not quick enough to solve the particular
problem.” Id., at 213. “Very frequently,” Diamond stated,
publishers “run into a situation where . . . copies of [a]
work . . . produced in a foreign country . . . may be shipped
[to the United States] without violating any contract of the
U. S. copyright proprietor.” Ibid. To illustrate, Diamond
noted, if a “British publisher [sells a copy] to an individual
who in turn ship[s] it over” to the United States, the indi­
vidual’s conduct would not “violate [any] contract between
Cite as: 568 U. S. ____ (2013) 15
GINSBURG, J., dissenting
the British and the American publisher.” Ibid. In such a
case, “no possibility of any contract remedy” would exist.
Ibid. The facts of Kirtsaeng’s case fit Diamond’s example,
save that the copies at issue here were printed and ini-
tially sold in Asia rather than Great Britain.
After considering comments on its 1961 report, the
Copyright Office “prepared a preliminary draft of provi­
sions for a new copyright statute.” Copyright Law Revi­
sion Part 3: Preliminary Draft for Revised U. S. Copyright
Law and Discussions and Comments on the Draft, 88th
Cong., 2d Sess., V (H. R. Judiciary Comm. Print 1964).
Section 44 of the draft statute addressed the concerns
raised by publishing-industry representatives. In particu­
lar, §44(a) provided:
“Importation into the United States of copies or rec­
ords of a work for the purpose of distribution to the
public shall, if such articles are imported without the
authority of the owner of the exclusive right to dis­
tribute copies or records under this title, constitute an
infringement of copyright actionable under section 35
[i.e., the section providing for a private cause of action
for copyright infringement].” Id., at 32–33.
In a 1964 panel discussion regarding the draft statute,
Abe Goldman, the Copyright Office’s General Counsel, left
no doubt about the meaning of §44(a). It represented, he
explained, a “shif[t]” from the Copyright Office’s 1961
report, which had recommended against using copyright
law to facilitate publishers’ efforts to segment interna­
tional markets. Copyright Law Revision Part 4: Further
Discussions and Comments on Preliminary Draft for
Revised U. S. Copyright Law, 88th Cong., 2d Sess., 203
(H. R. Judiciary Comm. Print 1964). Section 44(a), Gold­
man stated, would allow copyright owners to bring in­
fringement actions against importers of “foreign copies
that were made under proper authority.” Ibid. See also
16 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
id., at 205–206 (Goldman agreed with a speaker’s com­
ment that §44(a) “enlarge[d]” U. S. copyright law by ex­
tending import prohibitions “to works legally produced in
Europe” and other foreign countries).11
The next step in the copyright revision process was the
introduction in Congress of a draft bill on July 20, 1964.
See Copyright Law Revision Part 5: 1964 Revision Bill
with Discussions and Comments, 89th Cong., 1st Sess., III
(H. R. Judiciary Comm. Print 1965). After another round
of public comments, a revised bill was introduced on Feb­
ruary 4, 1965. See Copyright Law Revision Part 6: Sup­
plementary Report of the Register of Copyrights on the
General Revision of the U. S. Copyright Law: 1965 Revi­
sion Bill, 89th Cong., 1st Sess., V (H. R. Judiciary Comm.
Print 1965) (hereinafter Copyright Law Revision Part 6).
In language closely resembling the statutory text later
enacted by Congress, §602(a) of the 1965 bill provided:
“Importation into the United States, without the au­
thority of the owner of copyright under this title, of
copies or phonorecords of a work for the purpose of
distribution to the public is an infringement of the ex­
clusive right to distribute copies or phonorecords un­
der section 106, actionable under section 501.” Id., at
292.12
——————
11 As the Court observes, ante, at 29, Irwin Karp of the Authors
League of America stated at the 1964 panel discussion that §44(a) ran
counter to “the very basic concept of copyright law that, once you’ve sold
a copy legally, you can’t restrict its resale.” Copyright Law Revision
Part 4, at 212. When asked if he was “presenting . . . an argument
against” §44(a), however, Karp responded that he was “neutral on th[e]
provision.” Id., at 211. There is thus little reason to believe that any
changes to the wording of §44(a) before its codification in §602(a) were
made in response to Karp’s discussion of “the problem of restricting
[the] transfer of . . . lawfully obtained [foreign] copies.” Ibid.
12 There is but one difference between this language from the 1965
bill and the corresponding language in the current version of §602(a)(1):
Cite as: 568 U. S. ____ (2013) 17
GINSBURG, J., dissenting
The Court implies that the 1965 bill’s “explici[t] re­
fer[ence] to §106” showed a marked departure from §44(a)
of the Copyright Office’s prior draft. Ante, at 29. The
Copyright Office, however, did not see it that way. In its
summary of the 1965 bill’s provisions, the Copyright Office
observed that §602(a) of the 1965 bill, like §44(a) of the
Copyright Office’s prior draft, see supra, at 15–16, permit­
ted copyright owners to bring infringement actions against
unauthorized importers in cases “where the copyright
owner had authorized the making of [the imported] copies
in a foreign country for distribution only in that country.”
Copyright Law Revision Part 6, at 149–150. See also id.,
at XXVI (Under §602(a) of the 1965 bill, “[a]n unauthorized
importer could be enjoined and sued for damages both
where the copies or phonorecords he was importing
were ‘piratical’ (that is, where their making would have
constituted an infringement if the U. S. copyright law
could have been applied), and where their making was
‘lawful.’ ”).
The current text of §602(a)(1) was finally enacted into
law in 1976. See Copyright Act of 1976, §602(a), 90 Stat.
2589–2590. The House and Senate Committee Reports on
the 1976 Act demonstrate that Congress understood, as
did the Copyright Office, just what that text meant. Both
Reports state:
“Section 602 [deals] with two separate situations: im­
portation of ‘piratical’ articles (that is, copies or
phonorecords made without any authorization of the
——————
In the current version, the phrase “for the purpose of distribution to the
public” is omitted and the phrase “that have been acquired outside the
United States” appears in its stead. There are no material differences
between the quoted language from the 1965 bill and the corresponding
language contained in the 1964 bill. See Copyright Law Revision Part
6: Supplementary Report of the Register of Copyrights on the General
Revision of the U. S. Copyright Law: 1965 Revision Bill, 89th Cong., 1st
Sess., 292–293 (H. R. Judiciary Comm. Print 1965).
18 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
copyright owner), and unauthorized importation of
copies or phonorecords that were lawfully made. The
general approach of section 602 is to make unauthor-
ized importation an act of infringement in both cases,
but to permit the Bureau of Customs to prohibit im­
portation only of ‘piratical’ articles.” S. Rep. No. 94–
473, p. 151 (1975) (emphasis added). See also H. R.
Rep. No. 94–1476, p. 169 (1976) (same).
In sum, the legislative history of the Copyright Act of
1976 is hardly “inconclusive.” Ante, at 28. To the con-
trary, it confirms what the plain text of the Act conveys:
Congress intended §602(a)(1) to provide copyright owners
with a remedy against the unauthorized importation of
foreign-made copies of their works, even if those copies
were made and sold abroad with the copyright owner’s
authorization.13
IV
Unlike the Court’s holding, my position is consistent with
the stance the United States has taken in international­
trade negotiations. This case bears on the highly con­
tentious trade issue of interterritorial exhaustion. The
issue arises because intellectual property law is territorial
in nature, see supra, at 6, which means that creators of
intellectual property “may hold a set of parallel” intellec­
tual property rights under the laws of different nations.
Chiappetta, The Desirability of Agreeing to Disagree: The
WTO, TRIPS, International IPR Exhaustion and a Few
Other Things, 21 Mich. J. Int’l L. 333, 340–341 (2000)
(hereinafter Chiappetta). There is no international con­
——————
13 The Court purports to find support for its position in the House and
Senate Committee Reports on the 1976 Copyright Act. Ante, at 30–31.
It fails to come up with anything in the Act’s legislative history, how­
ever, showing that Congress understood the words “lawfully made under
this title” in §109(a) to encompass foreign-made copies.
Cite as: 568 U. S. ____ (2013) 19
GINSBURG, J., dissenting
sensus on whether the sale in one country of a good in-
corporating protected intellectual property exhausts the
intellectual property owner’s right to control the distribu­
tion of that good elsewhere. Indeed, the members of the
World Trade Organization, “agreeing to disagree,”14 pro­
vided in Article 6 of the Agreement on Trade-Related
Aspects of Intellectual Property Rights (TRIPS), Apr. 15,
1994, 33 I. L. M. 1197, 1200, that “nothing in this Agree­
ment shall be used to address the issue of . . . exhaustion.”
See Chiappetta 346 (observing that exhaustion of intellec­
tual property rights was “hotly debated” during the TRIPS
negotiations and that Article 6 “reflects [the negotiators’]
ultimate inability to agree” on a single international
standard). Similar language appears in other treaties to
which the United States is a party. See World Intellectual
Property Organization (WIPO) Copyright Treaty, Art. 6(2),
Dec. 20, 1996, S. Treaty Doc. No. 105–17, p. 7 (“Nothing in
this Treaty shall affect the freedom of Contracting Parties
to determine the conditions, if any, under which the ex­
haustion of the right [to control distribution of copies of a
copyrighted work] applies after the first sale or other
transfer of ownership of the original or a copy of the work
with the authorization of the author.”); WIPO Perfor­
mances and Phonograms Treaty, Art. 8(2), Dec. 20, 1996,
S. Treaty Doc. No. 105–17, p. 28 (containing language
nearly identical to Article 6(2) of the WIPO Copyright
Treaty).
In the absence of agreement at the international level,
each country has been left to choose for itself the exhaus­
tion framework it will follow. One option is a national­
exhaustion regime, under which a copyright owner’s right
——————
14 Chiappetta,The Desirability of Agreeing to Disagree: The WTO,
TRIPS, International IPR Exhaustion and a Few Other Things, 21
Mich. J. Int’l L. 333, 340 (2000) (hereinafter Chiappetta) (internal
quotation marks omitted).
20 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
to control distribution of a particular copy is exhausted
only within the country in which the copy is sold. See
Forsyth & Rothnie, Parallel Imports, in The Interface
Between Intellectual Property Rights and Competition
Policy 429, 430 (S. Anderman ed. 2007) (hereinafter
Forsyth & Rothnie). Another option is a rule of international
exhaustion, under which the authorized distribution of a
particular copy anywhere in the world exhausts the copy­
right owner’s distribution right everywhere with respect
to that copy. See ibid. The European Union has adopted
the intermediate approach of regional exhaustion, under
which the sale of a copy anywhere within the European
Economic Area exhausts the copyright owner’s distribu­
tion right throughout that region. See id., at 430, 445.
Section 602(a)(1), in my view, ties the United States to a
national-exhaustion framework. The Court’s decision, in con-
trast, places the United States solidly in the international­
exhaustion camp.
Strong arguments have been made both in favor of, and
in opposition to, international exhaustion. See Chiappetta
360 (“[r]easonable people making valid points can, and
do, reach conflicting conclusions” regarding the desirability
of international exhaustion). International exhaustion
subjects copyright-protected goods to competition from
lower priced imports and, to that extent, benefits con-
sumers. Correspondingly, copyright owners profit from a
national-exhaustion regime, which also enlarges the mon­
etary incentive to create new copyrightable works. See
Forsyth & Rothnie 432–437 (surveying arguments for and
against international exhaustion).
Weighing the competing policy concerns, our Govern­
ment reached the conclusion that widespread adoption of
the international-exhaustion framework would be incon­
sistent with the long-term economic interests of the United
States. See Brief for United States as Amicus Curiae in
Quality King, O. T. 1997, No. 96–1470, pp. 22–26 (herein­
Cite as: 568 U. S. ____ (2013) 21
GINSBURG, J., dissenting
after Quality King Brief).15 Accordingly, the United States
has steadfastly “taken the position in international trade
negotiations that domestic copyright owners should . . .
have the right to prevent the unauthorized importation of
copies of their work sold abroad.” Id., at 22. The United
States has “advanced this position in multilateral trade
negotiations,” including the negotiations on the TRIPS
Agreement. Id., at 24. See also D. Gervais, The TRIPS
Agreement: Drafting History and Analysis §2.63, p. 199
(3d ed. 2008). It has also taken a dim view of our trading
partners’ adoption of legislation incorporating elements
of international exhaustion. See Clapperton & Corones,
Locking in Customers, Locking Out Competitors: Anti-
Circumvention Laws in Australia and Their Potential
Effect on Competition in High Technology Markets, 30
Melbourne U. L. Rev. 657, 664 (2006) (United States
expressed concern regarding international-exhaustion leg-
islation in Australia); Montén, Comment, The Inconsistency
Between Section 301 and TRIPS: Counterproductive
With Respect to the Future of International Protection
of Intellectual Property Rights? 9 Marq. Intellectual
——————
15 The Court states that my “reliance on the Solicitor General’s posi­
tion in Quality King is undermined by his agreement in that case with
[the] reading of §109(a)” that the Court today adopts. Ante, at 33. The
United States’ principal concern in both Quality King and this case,
however, has been to protect copyright owners’ “right to prevent paral­
lel imports.” Brief for United States as Amicus Curiae in Quality King,
O. T. 1997, No. 96–1470, p. 6 (hereinafter Quality King Brief). See also
Brief for United States as Amicus Curiae 14 (arguing that Kirtsaeng’s
interpretation of §109(a), which the Court adopts, would “subver[t]
Section 602(a)(1)’s ban on unauthorized importation”). In Quality King,
the Solicitor General urged this Court to hold that §109(a)’s codification
of the first sale doctrine does not limit the right to control importation
set forth in §602(a). Quality King Brief 7–30. After Quality King
rejected that contention, the United States reconsidered its position,
and it now endorses the interpretation of the §109(a) phrase “lawfully
made under this title” I would adopt. Brief for United States as Amicus
Curiae 6–7, 13–14.
22 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
Property L. Rev. 387, 417–418 (2005) (same with respect
to New Zealand and Taiwan).
Even if the text and history of the Copyright Act were am-
biguous on the answer to the question this case presents—
which they are not, see Parts II–III, supra16—I
would resist a holding out of accord with the firm position
the United States has taken on exhaustion in internation­
al negotiations. Quality King, I acknowledge, discounted
the Government’s concerns about potential inconsistency
with United States obligations under certain bilateral
trade agreements. See 523 U. S., at 153–154. See also
Quality King Brief 22–24 (listing the agreements). That
decision, however, dealt only with copyright-protected
products made in the United States. See 523 U. S., at 154(GINSBURG, J., concurring). Quality King left open the
question whether owners of U. S. copyrights could retain
control over the importation of copies manufactured and
sold abroad—a point the Court obscures, see ante, at 33
(arguing that Quality King “significantly eroded” the
national-exhaustion principle that, in my view, §602(a)(1)
embraces). The Court today answers that question with a
resounding “no,” and in doing so, it risks undermining the
United States’ credibility on the world stage. While the
Government has urged our trading partners to refrain
from adopting international-exhaustion regimes that could
benefit consumers within their borders but would impact
adversely on intellectual-property producers in the United
States, the Court embraces an international-exhaustion
rule that could benefit U. S. consumers but would likely
——————
16 Congress hardly lacks capacity to provide for international exhaus­
tion when that is its intent. Indeed, Congress has expressly provided
for international exhaustion in the narrow context of semiconductor
chips embodying protected “mask works.” See 17 U. S. C. §§905(2),
906(b). See also 2 M. Nimmer & D. Nimmer, Copyright §8A.06[E],
p. 8A–37 (2012) (hereinafter Nimmer) (“[T]he first sale doctrine under
[§906(b)] expressly immunizes unauthorized importation.”).
Cite as: 568 U. S. ____ (2013) 23
GINSBURG, J., dissenting
disadvantage foreign holders of U. S. copyrights. This
dissonance scarcely enhances the United States’ “role as a
trusted partner in multilateral endeavors.” Vimar Seguros
y Reaseguros, S. A. v. M/V Sky Reefer, 515 U. S. 528,
539 (1995).
V
I turn now to the Court’s justifications for a decision
difficult to reconcile with the Copyright Act’s text and
history.
A
The Court asserts that its holding “is consistent with
antitrust laws that ordinarily forbid market divisions.”
Ante, at 32. See also ante, at 18 (again referring to anti­
trust principles). Section 602(a)(1), however, read as I do
and as the Government does, simply facilitates copyright
owners’ efforts to impose “vertical restraints” on distribu­
tors of copies of their works. See Forsyth & Rothnie 435
(“Parallel importation restrictions enable manufacturers
and distributors to erect ‘vertical restraints’ in the market
through exclusive distribution agreements.”). See gener-
ally Leegin Creative Leather Products, Inc. v. PSKS, Inc.,
551 U. S. 877 (2007) (discussing vertical restraints). We
have held that vertical restraints are not per se illegal
under §1 of the Sherman Act, 15 U. S. C. §1, because such
“restraints can have procompetitive effects.” 551 U. S., at881–882.17
——————
17 Despite the Court’s suggestion to the contrary, this case in no
way implicates the per se antitrust prohibition against horizontal
“ ‘[a]greements between competitors to allocate territories to minimize
competition.’ ” Ante, at 32 (quoting Palmer v. BRG of Ga., Inc., 498
U. S. 46, 49 (1990) (per curiam)). Wiley is not requesting authority to
enter into collusive agreements with other textbook publishers that
would, for example, make Wiley the exclusive supplier of textbooks
on particular subjects within particular geographic regions. Instead,
Wiley asserts no more than the prerogative to impose vertical restraints
24 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
B
The Court sees many “horribles” following from a hold­
ing that the §109(a) phrase “lawfully made under this
title” does not encompass foreign-made copies. Ante, at 22
(internal quotation marks omitted). If §109(a) excluded
foreign-made copies, the Court fears, then copyright own­
ers could exercise perpetual control over the downstream
distribution or public display of such copies. A ruling in
Wiley’s favor, the Court asserts, would shutter libraries,
put used-book dealers out of business, cripple art muse­
ums, and prevent the resale of a wide range of consumer
goods, from cars to calculators. Ante, at 19–22. See also
ante, at 2–3 (KAGAN, J., concurring) (expressing concern
about “imposing downstream liability on those who pur­
chase and resell in the United States copies that happen
to have been manufactured abroad”). Copyright law and
precedent, however, erect barriers to the anticipated
horribles.18
1
Recognizing that foreign-made copies fall outside the
ambit of §109(a) would not mean they are forever free of
the first sale doctrine. As earlier observed, see supra, at 2,
the Court stated that doctrine initially in its 1908 Bobbs-
——————
on the distribution of its own textbooks. See Hovenkamp, Post-Sale
Restraints and Competitive Harm: The First Sale Doctrine in Perspec­
tive, 66 N. Y. U. Ann. Survey Am. L. 487, 488 (2011) (“vertical re­
straints” include “limits [on] the way a seller’s own product can be
distributed”).
18 As the Court observes, ante, at 32–33, the United States stated at
oral argument that the types of “horribles” predicted in the Court’s
opinion would, if they came to pass, be “worse than the frustration of
market segmentation” that will result from the Court’s interpretation
of §109(a). Tr. of Oral Arg. 51. The United States, however, recognized
that this purported dilemma is a false one. As the United States
explained, the Court’s horribles can be avoided while still giving mean­
ingful effect to §602(a)(1)’s ban on unauthorized importation. Ibid.
Cite as: 568 U. S. ____ (2013) 25
GINSBURG, J., dissenting
Merrill decision. At that time, no statutory provision
expressly codified the first sale doctrine. Instead, copy­
right law merely provided that copyright owners had “the
sole liberty of printing, reprinting, publishing, completing,
copying, executing, finishing, and vending” their works.
Copyright Act of 1891, §1, 26 Stat. 1107.
In Bobbs-Merrill, the Court addressed the scope of the
statutory right to “ven[d].” In granting that right, the
Court held, Congress did not intend to permit copyright
owners “to fasten . . . a restriction upon the subsequent
alienation of the subject-matter of copyright after the
owner had parted with the title to one who had acquired
full dominion over it and had given a satisfactory price for
it.” 210 U. S., at 349–350. “[O]ne who has sold a copy­
righted article . . . without restriction,” the Court ex­
plained, “has parted with all right to control the sale of it.”
Id., at 350. Thus, “[t]he purchaser of a book, once sold by
authority of the owner of the copyright, may sell it again,
although he could not publish a new edition of it.” Ibid.Under the logic of Bobbs-Merrill, the sale of a foreign­
manufactured copy in the United States carried out with
the copyright owner’s authorization would exhaust the
copyright owner’s right to “vend” that copy. The copy
could thenceforth be resold, lent out, or otherwise redis­
tributed without further authorization from the copyright
owner. Although §106(3) uses the word “distribute” rather
than “vend,” there is no reason to think Congress intended
the word “distribute” to bear a meaning different from the
construction the Court gave to the word “vend” in Bobbs-
Merrill. See ibid. (emphasizing that the question before
the Court was “purely [one] of statutory construction”).19
——————
19 It appears that the Copyright Act of 1976 omitted the word “vend”
and introduced the word “distribute” to avoid the “redundan[cy]”
present in pre-1976 law. Copyright Law Revision: Report of the Regis­
ter of Copyrights on the General Revision of the U. S. Copyright Law,
87th Cong., 1st Sess., 21 (H. R. Judiciary Comm. Print 1961) (noting
26 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
Thus, in accord with Bobbs-Merrill, the first authorized
distribution of a foreign-made copy in the United States
exhausts the copyright owner’s distribution right under
§106(3). After such an authorized distribution, a library
may lend, or a used-book dealer may resell, the foreign­
made copy without seeking the copyright owner’s permis­
sion. Cf. ante, at 19–21.
For example, if Wiley, rather than Kirtsaeng, had
imported into the United States and then sold the foreign­
made textbooks at issue in this case, Wiley’s §106(3) dis­
tribution right would have been exhausted under the
rationale of Bobbs-Merrill. Purchasers of the textbooks
would thus be free to dispose of the books as they wished
without first gaining a license from Wiley.
This line of reasoning, it must be acknowledged, signifi­
cantly curtails the independent effect of §109(a). If, as I
maintain, the term “distribute” in §106(3) incorporates the
first sale doctrine by virtue of Bobbs-Merrill, then
§109(a)’s codification of that doctrine adds little to the
regulatory regime.20 Section 109(a), however, does serve
——————
that the exclusive rights to “publish” and “vend” works under the
Copyright Act of 1947, §1(a), 61 Stat. 652–653, were “redundant”).
20 My position that Bobbs-Merrill lives on as a limiting construction of
the §106(3) distribution right does not leave §109(a) with no work to do.
There can be little doubt that the books at issue in Bobbs-Merrill were
published and first sold in the United States. See Bobbs-Merrill Co. v.
Straus, 139 F. 155, 157 (CC SDNY 1905) (the publisher claiming copy-
right infringement in Bobbs-Merrill was incorporated and had its
principal office in Indiana). See also Copyright Act of 1891, §3, 26 Stat.
1107–1108 (generally prohibiting importation, even by the copyright
owner, of foreign-manufactured copies of copyrighted books); 4 Patry
§13:40, at 13–111 (under the Copyright Act of 1891, “copies of books by
both foreign and U. S. authors had to be printed in the United States”).
But cf. ante, at 18 (asserting, without acknowledging the 1891 Copy­
right Act’s general prohibition against the importation of foreign-made
copies of copyrighted books, that the Court is unable to find any “geo­
graphical distinctions . . . in Bobbs-Merrill ”). Thus, exhaustion occurs
under Bobbs-Merrill only when a copy is distributed within the United
Cite as: 568 U. S. ____ (2013) 27
GINSBURG, J., dissenting
as a statutory bulwark against courts deviating from
Bobbs-Merrill in a way that increases copyright owners’
control over downstream distribution, and legislative
history indicates that is precisely the role Congress in­
tended §109(a) to play. Congress first codified the first
sale doctrine in §41 of the Copyright Act of 1909, 35 Stat.
1084.21 It did so, the House Committee Report on the
1909 Act explains, “in order to make . . . clear that [Con­
gress had] no intention [of] enlarg[ing] in any way the
construction to be given to the word ‘vend.’ ” H. R. Rep.
No. 2222, 60th Cong., 2d Sess., 19 (1909). According to the
Committee Report, §41 was “not intended to change [exist­
ing law] in any way.” Ibid. The position I have stated and
explained accords with this expression of congressional
intent. In enacting §41 and its successors, I would hold,
Congress did not “change . . . existing law,” ibid., by strip­
ping the word “vend” (and thus its substitute “distribute”)
of the limiting construction imposed in Bobbs-Merrill.
In any event, the reading of the Copyright Act to which
I subscribe honors Congress’ aim in enacting §109(a)
while the Court’s reading of the Act severely diminishes
§602(a)(1)’s role. See supra, at 10–12. My position in no
way tugs against the principle underlying §109(a)—i.e.,
that certain conduct by the copyright owner exhausts the
——————
States with the copyright owner’s permission, not when it is distributed
abroad. But under §109(a), as interpreted in Quality King, any author­
ized distribution of a U. S.-made copy, even a distribution occurring in
a foreign country, exhausts the copyright owner’s distribution right
under §106(3). See 523 U. S., at 145, n. 14. Section 109(a) therefore
provides for exhaustion in a circumstance not reached by Bobbs-Merrill.
21 Section 41 of the 1909 Act provided: “[N]othing in this Act shall be
deemed to forbid, prevent, or restrict the transfer of any copy of a
copyrighted work the possession of which has been lawfully obtained.”
35 Stat. 1084. This language was repeated without material change in
§27 of the Copyright Act of 1947, 61 Stat. 660. As noted above, see
supra, at 2, 17 U. S. C. §109(a) sets out the current codification of the
first sale doctrine.
28 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
owner’s §106(3) distribution right. The Court, in contrast,
fails to give meaningful effect to Congress’ manifest intent
in §602(a)(1) to grant copyright owners the right to control
the importation of foreign-made copies of their works.
2
Other statutory prescriptions provide further protection
against the absurd consequences imagined by the Court.
For example, §602(a)(3)(C) permits “an organization oper­
ated for scholarly, educational, or religious purposes” to
import, without the copyright owner’s authorization, up to
five foreign-made copies of a non-audiovisual work—
notably, a book—for “library lending or archival purposes.”
But cf. ante, at 19–20 (suggesting that affirming the Se­
cond Circuit’s decision might prevent libraries from lend­
ing foreign-made books).22
The Court also notes that amici representing art muse­
ums fear that a ruling in Wiley’s favor would prevent
museums from displaying works of art created abroad.
Ante, at 22 (citing Brief for Association of Art Museum
Directors et al.). These amici observe that a museum’s
right to display works of art often depends on 17 U. S. C.
§109(c). See Brief for Association of Art Museum Direc­
tors et al. 11–13.23 That provision addresses exhaustion of
——————
22 A group of amici representing libraries expresses the concern
that lower courts might interpret §602(a)(3)(C) as authorizing only
the importing, but not the lending, of foreign-made copies of
non-audiovisual works. See Brief for American Library Association
et al. 20. The United States maintains, and I agree, however, that
§602(a)(3)(C) “is fairly (and best) read as implicitly authorizing lending,
in addition to importation, of all works other than audiovisual works.”
Brief for United States as Amicus Curiae 30, n. 6.
23 Title 17 U. S. C. §109(c) provides: “Notwithstanding the provisions
of section 106(5), the owner of a particular copy lawfully made under
this title, or any person authorized by such owner, is entitled, without
the authority of the copyright owner, to display that copy publicly,
either directly or by the projection of no more than one image at a time,
to viewers present at the place where the copy is located.”
Cite as: 568 U. S. ____ (2013) 29
GINSBURG, J., dissenting
a copyright owner’s exclusive right under §106(5) to
publicly display the owner’s work. Because §109(c), like
§109(a), applies only to copies “lawfully made under this
title,” amici contend that a ruling in Wiley’s favor would
prevent museums from invoking §109(c) with respect to
foreign-made works of art. Id., at 11–13.24
Limiting §109(c) to U. S.-made works, however, does not
bar art museums from lawfully displaying works made in
other countries. Museums can, of course, seek the copy­
right owner’s permission to display a work. Furthermore,
the sale of a work of art to a U. S. museum may carry with
it an implied license to publicly display the work. See 2
Patry §5:131, at 5–280 (“[C]ourts have noted the potential
availability of an implied nonexclusive licens[e] when the
circumstances . . . demonstrate that the parties intended
that the work would be used for a specific purpose.”).
Displaying a work of art as part of a museum exhibition
might also qualify as a “fair use” under 17 U. S. C. §107.
Cf. Bouchat v. Baltimore Ravens Ltd. Partnership, 619
F. 3d 301, 313–316 (CA4 2010) (display of copyrighted logo
in museum-like exhibition constituted “fair use”).
The Court worries about the resale of foreign-made
consumer goods “contain[ing] copyrightable software pro­
grams or packaging.” Ante, at 21. For example, the Court
observes that a car might be programmed with diverse
forms of software, the copyrights to which might be
owned by individuals or entities other than the manu-
facturer of the car. Ibid. Must a car owner, the Court
asks, obtain permission from all of these various copyright
owners before reselling her car? Ibid. Although this
question strays far from the one presented in this case and
briefed by the parties, principles of fair use and implied
——————
24 The word “copy,” as it appears in §109(c), applies to the original of a
work of art because the Copyright Act defines the term “copies” to
“includ[e] the material object . . . in which the work is first fixed.” §101.
30 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
license (to the extent that express licenses do not exist)
would likely permit the car to be resold without the copy­
right owners’ authorization.25
Most telling in this regard, no court, it appears, has
been called upon to answer any of the Court’s “horribles”
in an actual case. Three decades have passed since a
federal court first published an opinion reading §109(a) as
applicable exclusively to copies made in the United States.
See Columbia Broadcasting System, Inc. v. Scorpio Music
Distributors, Inc., 569 F. Supp. 47, 49 (ED Pa. 1983),
summarily aff ’d, 738 F. 2d 424 (CA3 1984) (table). Yet
Kirtsaeng and his supporting amici cite not a single case
in which the owner of a consumer good authorized for sale
in the United States has been sued for copyright infringe­
ment after reselling the item or giving it away as a gift or
to charity. The absence of such lawsuits is unsurprising.
Routinely suing one’s customers is hardly a best business
——————
25 Principlesof fair use and implied license may also allow a U. S.
tourist “who buys a copyrighted work of art, a poster, or . . . a bumper
sticker” abroad to publicly “display it in America without the copyright
owner’s further authorization.” Ante, at 15. (The tourist could lawfully
bring the work of art, poster, or bumper sticker into the United States
under 17 U. S. C. §602(a)(3)(B), which provides that §602(a)(1)’s impor­
tation ban does not apply to “importation . . . by any person arriving
from outside the United States . . . with respect to copies . . . forming
part of such person’s personal baggage.”). Furthermore, an individual
clearly would not incur liability for infringement merely by displaying a
foreign-made poster or other artwork in her home. See §106(5) (grant­
ing the owners of copyrights in “literary, musical, dramatic, and chore­
ographic works, pantomimes, and pictorial, graphic, or sculptural
works” the exclusive right “to display the copyrighted work publicly”
(emphasis added)). See also §101 (a work is displayed “publicly” if it is
displayed “at a place open to the public or at any place where a sub­
stantial number of persons outside of a normal circle of a family and its
social acquaintances is gathered” (emphasis added)). Cf. 2 Nimmer
§8.14[C][1], at 8–192.2(1) (“[A] performance limited to members of
the family and invited guests is not a public performance.” (footnote
omitted)).
Cite as: 568 U. S. ____ (2013) 31
GINSBURG, J., dissenting
practice.26 Manufacturers, moreover, may be hesitant to
do business with software programmers taken to suing
consumers. Manufacturers may also insist that soft-
ware programmers agree to contract terms barring such
lawsuits.
The Court provides a different explanation for the
absence of the untoward consequences predicted in its
opinion—namely, that lower court decisions regarding the
scope of §109(a)’s first sale prescription have not been
uniform. Ante, at 23. Uncertainty generated by these
conflicting decisions, the Court notes, may have deterred
some copyright owners from pressing infringement claims.
Ante, at 23–24. But if, as the Court suggests, there are a
multitude of copyright owners champing at the bit to bring
lawsuits against libraries, art museums, and consumers in
an effort to exercise perpetual control over the down­
stream distribution and public display of foreign-made
copies, might one not expect that at least a handful of such
lawsuits would have been filed over the past 30 years?
The absence of such suits indicates that the “practical
problems” hypothesized by the Court are greatly exagger­
ated. Ante, at 24.27 They surely do not warrant disregard­
——————
26 Exerting extensive control over secondary markets may not always
be in a manufacturer’s best interest. Carmakers, for example, often
trumpet the resale value of their vehicles. See, e.g., Nolan, UD grad
leads Cadillac marketing, Dayton Daily News, Apr. 2, 2009, p. A8
(“Cadillac plays up its warranty coverage and reliable resale value to
prospective customers.”). If the transaction costs of reselling vehicles
were to rise, consumers’ perception of a new car’s value, and thus the
price they are willing to pay for such a car, might fall—an outcome
hardly favorable to automobile manufacturers.
27 It should not be overlooked that the ability to prevent importation
of foreign-made copies encourages copyright owners such as Wiley to
offer copies of their works at reduced prices to consumers in less devel­
oped countries who might otherwise be unable to afford them. The
Court’s holding, however, prevents copyright owners from barring the
importation of such low-priced copies into the United States, where
they will compete with the higher priced editions copyright owners
32 KIRTSAENG v. JOHN WILEY & SONS, INC.
GINSBURG, J., dissenting
ing Congress’ intent, expressed in §602(a)(1), to grant
copyright owners the authority to bar the importation of
foreign-made copies of their works. Cf. Hartford Under-
writers Ins. Co. v. Union Planters Bank, N. A., 530 U. S. 1,
6 (2000) (“[W]hen the statute’s language is plain, the sole
function of the courts—at least where the disposition
required by the text is not absurd—is to enforce it accord­
ing to its terms.” (internal quotation marks omitted)).
VI
To recapitulate, the objective of statutory interpretation
is “to give effect to the intent of Congress.” American
Trucking Assns., 310 U. S., at 542. Here, two congres-
sional aims are evident. First, in enacting §602(a)(1), Con-
gress intended to grant copyright owners permission to
segment international markets by barring the importation
of foreign-made copies into the United States. Second, as
codification of the first sale doctrine underscores, Congress
did not want the exclusive distribution right conferred in
§106(3) to be boundless. Instead of harmonizing these
objectives, the Court subordinates the first entirely to the
second. It is unsurprising that none of the three major
treatises on U. S. copyright law embrace the Court’s con­
struction of §109(a). See 2 Nimmer §8.12[B][6][c], at
——————
make available for sale in this country. To protect their profit margins
in the U. S. market, copyright owners may raise prices in less devel­
oped countries or may withdraw from such markets altogether. See
Brief for United States as Amicus Curiae 26; Brief for Text and Aca­
demic Authors Association as Amicus Curiae 12; Brief for Association of
American Publishers as Amicus Curiae 37. See also Chiappetta 357–
358 (a rule of national exhaustion “encourages entry and participation
in developing markets at lower, locally more affordable prices by
eliminating them as risky sources of cheaper parallel imports back into
premium markets”). Such an outcome would disserve consumers—and
especially students—in developing nations and would hardly advance
the “American foreign policy goals” of supporting education and eco­
nomic development in such countries. Quality King Brief 25–26.
Cite as: 568 U. S. ____ (2013) 33
GINSBURG, J., dissenting
8–184.34 to 8–184.35; 2 Goldstein §7.6.1.2(a), at 7:141; 4
Patry §§13:22, 13:44, 13:44.10.
Rather than adopting the very international-exhaustion
rule the United States has consistently resisted in
international-trade negotiations, I would adhere to the
national-exhaustion framework set by the Copyright
Act’s text and history. Under that regime, codified in
§602(a)(1), Kirtsaeng’s unauthorized importation of the
foreign-made textbooks involved in this case infringed
Wiley’s copyrights. I would therefore affirm the Second
Circuit’s judgment.