09-4896-cv
John Wiley & Sons, Inc. v. Supap Kirtsaeng



                                  UNITED STATES COURT OF APPEALS
                                     FOR THE SECOND CIRCUIT

                                                August Term, 2009

(Argued: May 19, 2010                                                              Decided: April 23, 2013)

                                              Docket No. 09-4896-cv


            _______________________________________________________________


                                             JOHN WILEY & SONS, INC.,

                                                  Plaintiff-Appellee,


                                                           v.


                            SUPAP KIRTSAENG, doing business as BLUECHRISTINE99,

                                                Defendant-Appellant.


            _______________________________________________________________


Before: CABRANES and KATZMANN, Circuit Judges, and MURTHA, District Judge.*

          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.” Kirtsaeng v. John Wiley &

Sons, Inc., 133 S. Ct. 1351, 1358 (2013). Based on this holding, we have nothing left to decide in this

case. Kirtsaeng’s liability was erroneously premised on the inapplicability of the first sale doctrine to

     *.The Honorable J. Garvan Murtha, of the United States District Court for the District of Vermont, sitting by
designation.

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copyrighted works manufactured abroad. The judgment of 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) is reversed and the cause is remanded for such further proceedings as

may be appropriate prior to entry of final judgment.



                                        William Dunnegan (Laura Scileppi, on the brief), Dunnegan
                                               LLC, New York, NY, for plaintiff-appellee.

                                        Sam P. Israel, New York, NY, for defendant-appellant.

                                        John T. Mitchell, Interaction Law, Washington, DC, for amici
                                               curiae Entertainment Merchants Association and National
                                               Association of Recording Merchandisers.

                                        Norman H. Levin (Aaron J. Moss, on the brief), Greenberg
                                             Glusker Fields Claman & Machtinger LLP, Los
                                             Angeles, CA, for amicus curiae Costco Wholesale
                                             Corporation.

                                        Charles A. Weiss, Kenyon & Kenyon LLP (Mark A. Abate,
                                               Goodwin Proctor LLP, on the brief), New York, NY,
                                               for amicus curiae New York Intellectual Property Law
                                               Association.


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.” Kirtsaeng v. John Wiley &

Sons, Inc., 133 S. Ct. 1351, 1358 (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 Kirtsaeng liable of copyright infringement based on his importation and
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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 Kirtsaeng’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.

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