John Wiley & Sons, Inc. v. Supap Kirtsaeng

713 F.3d 1142, 2013 WL 1729729, 2013 U.S. App. LEXIS 8131

• Court: Court of Appeals for the Second Circuit
• Decided: April 23, 2013
• Docket: Docket 09-4896-cv
• Status: Published

Opinion

PER CURIAM:

This case returns to us on remand from the Supreme Court of the United States, which reversed our prior decision by holding that the “first sale” doctrine, see 17 U.S.C. § 109(a), provides a defense against a copyright infringement claim based on unauthorized resale “where, as here, copies are manufactured abroad with the permission of the copyright owner.” Kirt-saeng v. John Wiley & Sons, Inc., — U.S. -, 133 S.Ct. 1351, 1358, 185 L.Ed.2d 392 (2013). We assume the parties’ familiarity with the facts and procedural history of this case.

Based on the Supreme Court’s holding, we have nothing left to decide. A jury found defendant-appellant Supap Kirt-saeng liable of copyright infringement based on his importation and resale of copyrighted works manufactured abroad. 1 Kirtsaeng’s liability was premised on the inapplicability of the first sale doctrine to copyrighted works manufactured abroad, even when (as here) the copyrighted works were manufactured and initially sold in accordance with the copyright laws of the United States. 2 The United States District Court for the Southern District of New York (Donald C. Pogue, Judge of the United States Court of International Trade, sitting by designation) denied Kirt-saeng’s motion to instruct the jury regarding the applicability of the first sale defense.

In light of the Supreme Court’s holding that the first sale doctrine does apply to such works, thus providing Kirtsaeng with a valid defense to copyright infringement, the District Court’s judgment is REVERSED, and the cause is REMANDED for such further proceedings as may be appropriate prior to entry of final judgment.

1 . Plaintiff-appellee originally asserted trademark infringement and unfair competition claims, which were voluntarily dismissed with prejudice prior to trial. See Joint Pre-Trial Order, John Wiley & Sons, Inc. v. Kirtsaeng, 08 Civ. 7834(DCP) (S.D.N.Y. Oct. 28, 2009), ECF No. 64, at 14 ("Pre-Trial Order”).

2 . The parties’ joint stipulation of facts prior to trial states, in relevant part, that the textbooks .at issue "are only Wiley textbooks originally acquired from the foreign copyright owner” and "were manufactured in accordance with [United States copyright law].... There is no claim here that these were counterfeit books.” Pre-Trial Order at 11.