by David Hanna, MJLST Lead Article Editor, UMN J.D./M.S. in Chemistry Joint Degree Candidate
On February 7, 2013, John Wiley & Sons, Inc. [“Wiley”] announced that it would make 12,200 Online Books available in eighty developing countries through the Research4Life initiatives of HINARI (the World Health Organization’s Health InterNetwork Access to Research Initiative.), AGORA (Access to Global Online Research in Agriculture) and OARE ( Online Access to Research in the Environment). With Wiley’s contribution, Research4Life can now boast an impressive number of almost 30,000 peer reviewed scientific journals, books and databases made available to developing countries for free or for low cost access. With the Supreme Court of the United States [“SCOTUS”] currently deciding the fate for Wiley in a pending case against petitioner Supap Kirtsaeng d/b/a Bluechristine99 [“Kirtsaeng”], could Wiley’s charitable contributions come at a more convenient time?
On October 29, 2012, SCOTUS heard oral arguments on behalf of petitioner Kirtsaeng and respondent Wiley in a case involving the first-sale doctrine in copyright law which enables owners to sell or transfer copyrighted items to other parties without seeking permission from the original copyright holder. In the case, SCOTUS is deciding on the particular issue of whether the first-sale doctrine applies to copies of copyrighted works made and legally acquired outside the United States and then imported into the United States.
How does the “good guy” fit into the picture? Wiley brought a copyright infringement suit against Kirtsaeng, a graduate foreign student currently in the United States who had been receiving textbooks produced by Wiley Asia from his family and friends outside of the United States and then selling them for a profit on eBay. In responding to Wiley’s suit, Kirtsaeng presented the first-sale doctrine as a defense. Both the District Court and Second Circuit denied Kirtsaeng the “first sale” doctrine and ruled that the defense did not apply to foreign-manufactured books.
The Minnesota Journal of Law Science & Technology’s recent publication, “John Wiley & Sons, Inc. v. Kirtsaeng: The Uncertain Future of the First-Sale Doctrine,” identifies the important implications of SCOTUS’s upcoming decision on the U.S. economy. Author Benjamin Hamborg states, “In an already struggling economy, the last thing that the country needs is precedent giving companies a further incentive to move manufacturing plants overseas.”
Will Wiley’s recent contributions cast a positive light on the company while SCOTUS decides whether to uphold the lower courts’ holding which denied a first-sale doctrine defense to Kirtsaeng? Will SCOTUS consider the implications of the case on this country’s disintegrating economy? Now, Kirtsaeng has to worry not only about his pending copyright infringement case before the superior court of the land but also about his opponent’s charitable good deed. Perhaps, Kirtsaeng might find it in his best interest between now and the time SCOTUS releases its decision to make a charitable donation from some of the profits earned from his book buying and selling business.