John Wiley & Sons, Inc. v. Kirtsaeng
654 F.3d 210
| 2d Cir. | 2011Background
- Wiley published textbooks and uses Wiley Asia to manufacture foreign editions; foreign editions may differ in design and content and are labeled for regional sale.
- Kirtsaeng, a Thai student, received foreign editions of Wiley textbooks and resold them in the United States via eBay to fund his education.
- Wiley sued for copyright infringement, trademark infringement, and unfair competition, seeking injunctions and statutory damages.
- The district court ruled that the first sale doctrine did not apply to foreign-made copies and barred the defense at trial.
- During trial, Wiley attempted to introduce gross revenue evidence; the court limited some related testimony but allowed revenue testimony.
- Jury found willful infringement for eight works with $75,000 statutory damages per work.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Does §109(a) first sale apply to copies made abroad? | Kirtsaeng imports abroad-made copies; lawfully made under this title includes foreign-made copies. | First sale applies to lawfully made copies regardless of manufacture location. | First sale does not apply to foreign-made copies. |
| Should the jury have been instructed that first sale may be unsettled law? | Defense hinges on unsettled law; jury should be informed to assess willfulness accordingly. | Unsettled law instruction not required; no plain error. | No reversible error; instruction not required. |
| Was admitting evidence of gross revenues improper or prejudicial? | Gross revenues are relevant to willfulness and damages. | Revenue evidence could mislead and prejudice the jury. | Admission of gross revenue evidence was not error or abuse of discretion. |
Key Cases Cited
- Quality King Distrib., Inc. v. L'anza Research Int'l., Inc., 523 U.S. 135 (1998) (first sale and §602(a) interplay; dicta on abroad manufacturing)
- Bobbs-Merrill Co. v. Straus, 210 U.S. 339 (1908) (origin of the first sale doctrine)
- Omega S.A. v. Costco Wholesale Corp., 541 F.3d 982 (9th Cir.2008) (foreign-made copies; later affirmed by Supreme Court in equally divided decision)
- Costco Wholesale Corp. v. Omega, S.A., 131 S. Ct. 565 (2010) (supreme court affirmance on equal division; abroad-made copies context)