• Home
  • Latest
  • Fortune 500
  • Finance
  • Tech
  • Leadership
  • Lifestyle
  • Rankings
  • Multimedia

Trendingnow

1

Egg companies made $1.22 billion in profit off a $6 carton — now they’re buying their way out of a price-fixing case with 53 million donated eggs

2

Meet the Zillennials: The luckiest micro-generation in the workforce, born between 1993 and 1998

3

Economists have found an answer to slowing cognitive decline: Avoid retiring early, study finds

1

Egg companies made $1.22 billion in profit off a $6 carton — now they’re buying their way out of a price-fixing case with 53 million donated eggs

2

Meet the Zillennials: The luckiest micro-generation in the workforce, born between 1993 and 1998

3

Economists have found an answer to slowing cognitive decline: Avoid retiring early, study finds

The copyright case that brought Costco and MoMA together

By
Roger Parloff
Roger Parloff
Down Arrow Button Icon
By
Roger Parloff
Roger Parloff
Down Arrow Button Icon
October 29, 2012, 2:42 PM ET
Add Fortune on Google for similar content.

By Roger Parloff, senior editor



FORTUNE — On Monday the U.S. Supreme Court will hear a copyright case that is attracting great interest not just from the usual suspects — publishers, movie studios, digital rights groups, and free culture advocates — but also from merchants like Costco and eBay, luxury purveyors such as Omega, thrift-shop Goodwill Industries, as well as cultural icons including the Museum of Modern Art.

The case, which pits former University of Southern California grad student Supap Kirtsaeng against textbook publisher John Wiley & Sons, involves the murky status of gray-market goods in a world of global e-commerce. Gray-market goods are authentic products that are sold in the United States outside their authorized distribution channels. (In other words, they are not knock-offs.) The phenomenon often arises when a U.S. manufacturer markets a premium product in the U.S., sells a cheaper version abroad, and then sees its strategy undermined when an opportunist resells the foreign versions in the U.S. at a markup.

A provision of the Copyright Law, known as Section 602(a)(1), gives copyright holders strong powers to combat gray-market trafficking. Any unauthorized “importation” of a copyrighted work, according to that section, infringes the copyright holder’s exclusive distribution right. As a consequence, rights holders can sue any unauthorized U.S. seller of their imported products — or, at least, they have been able to up until now.

MORE: Chevron claims Patton Boggs tried to cover up a fraud

Theoretically, consumer goods manufacturers don’t have as powerful tools to police their favored distribution channels and must rely, instead, on their licensed foreign distributors to honor contractual obligations. But these manufacturers have learned to ride piggy-back on the stronger copyright protections by claiming infringement of a copyrighted component of their otherwise noncopyrightable product. A bottle of shampoo, for instance, will have a copyrighted label pasted on the front; a watch may have a copyrighted logo on the back; almost any electronics product these days will have copyrighted software inside. For this reason, Section 602(a)(1) is now invoked more promiscuously than Congress may have originally envisioned.

The targets of these suits — be it an individual like Kirtsaeng or a giant company like Costco (COST) — often seek shelter from a different provision of the copyright law: the so-called first-sale doctrine (also known as “copyright exhaustion”). Though relatively few readers may have heard of this doctrine, almost all readers intuitively understand its gist, which amounts to simple common sense. It is implicated every time you pass an aging baby-boomer trying to sell a stack of Creedence Clearwater Revival records from a blanket on the sidewalk. Assuming the individual hasn’t sought prior permission from Creedence’s old record label, Fantasy Records, is he violating that company’s exclusive right to distribute those recordings?

The answer is “of course not” and the reason is the first-sale doctrine. Adopted by the Supreme Court in 1908 and then codified by statute the following year, the doctrine holds that once a copyright holder sells a copy of his work, the buyer is free to resell that copy (or rent it or give it away) as he sees fit.

MORE: Megaupload and the twilight of copyright 

Here’s how Kirtsaeng’s activities implicated each of these seemingly conflicting copyright provisions — the importation restriction and the first-sale doctrine. While at Cornell college and, later U.S.C. graduate school, he decided that university professors and their publishers had a bit of a racket going where the professor could write a textbook, update it modestly every year, and then assign the most recent edition to his classes, leaving students little choice but to buy the latest version at a seemingly exorbitant price. A math major raised in Thailand, Kirtsaeng saw an arbitrage opportunity. He asked family members in Asia to buy and send to him the much cheaper versions of English-language textbooks that publishers print through foreign subsidiaries and market for foreign distribution only. (These often use inferior materials and printing techniques, but have largely identical text.) He then resold these foreign editions to American students over eBay (EBAY) for a handsome profit. His gross revenue, he later acknowledged, was at least $900,000.

Eight of the titles he arbitraged in this way were published by an Asian unit of John Wiley & Sons, which sued him in Manhattan federal court in 2008. Wiley said Kirtsaeng had violated Section 602(a)(1)’s ban on unauthorized importation of copyrighted works. Kirtsaeng invoked the first-sale doctrine in his defense. So the question became, basically: Which provision trumps which?

In October 2009, a federal district judge ruled for Wiley on that legal issue, and a jury ordered Kirtsaeng to pay $600,000 in damages. In August 2011, a panel of the U.S. Court of Appeals for the Second Circuit affirmed by a 2-1 vote. The majority ruled that because the provision defining the first-sale doctrine specifies that it only covers works “lawfully made under this title,” it only applies to works made in the U.S., not to works made overseas.

MORE: Why lawyers are still fighting over 9/11

Kirtsaeng appealed to the Supreme Court, protesting that a more sensible reading would be that the first-sale doctrine applies to any work for which U.S. copyright protection is claimed, regardless of where the work happens to have been manufactured. Since Wiley claims U.S. copyright protection for all its textbooks, including the ones printed in Asia, the foreign-made books should be covered, according to Kirtsaeng’s lawyers at Orrick Herrington & Sutcliffe. (Orrick’s E. Joshua Rosenkranz will argue the case for Kirtsaeng.)

In fact, Kirtsaeng’s lawyers argue in their brief, if the rule were otherwise, an overreaching movie studio — the inevitable bogeyman of all contemporary copyright hypotheticals — might perversely set up a factory abroad to print DVDs intended for reintroduction to the United States, hoping to then control all downstream resales of its products, and enabling it to spring lawsuits on unsuspecting librarians, flea marketers, used-book stores, and Goodwill thrift store managers.

“If Wiley’s right,” says Rosenkranz in an interview, “car manufacturers can shut down used-car sales, publishers can shut down used-book stores and libraries, and movie makers can shut down Netflix (NFLX). All they have to do is make their products outside the United States.”

Wiley counters that such hypothetical abuses are improbable in the extreme, impractical as a business proposition, and have never arisen in the real world. It adds thatKirtsaeng’s interpretation would gut Section 602(a)(1)’s importation restriction in precisely the situation it was most obviously designed to apply: where a bona fide copyright holder’s market segmentation strategies are being torpedoed for commercial gain.

If the U.S. higher-education textbook market can be undermined by gray-market goods, argues Tom Allen, the CEO of the American Association of Publishers in an interview, it will diminish the capacity of publishers to maintain quality, put American jobs at risk, lower compensation for textbook authors, and prevent publishers from selling textbooks in secondary markets at locally affordable prices. Ted Olson of Gibson Dunn & Crutcher will be arguing the case for Wiley. Deputy U.S. Solicitor General Malcolm Stewart, representing the U.S. Copyright Office and the Justice Department, will argue in support of Wiley’s position.

While the reader can probably see why Costco and eBay care about this case, he may still wonder about those art museums. Well, in addition to the right to control distribution, copyright holders enjoy a right to control public display of their works. So if a museum pays $80 million to buy a Picasso that was painted in Paris, it doesn’t want some heir of the painter showing up and demanding payment every time it tries to display its treasured acquisition to the public. (Original artworks count as “copies” under the copyright law.)

Had such a situation arisen in the past, museums could have invoked the first-sale doctrine, but if Kirtsaeng is upheld, they may lose that argument, according to Stefan Mentzer of White & Case, who has filed an amicus brief for more than two dozen art museums and the Association of Art Museum Directors. (Mentzer does acknowledge, however, that no matter how Kirtsaeng comes out, museums could maintain that they still have a “fair use” right to exhibit their foreign-made acquisitions.)

With so many businesses sweating this case for so many different reasons, the justices have a lot to juggle in their minds at once. We know they find the task difficult because they were presented with it just two years ago in a case in which Omega sued Costco for selling its imported watches (with a copyrighted logo on the back) without permission. On that occasion, with Justice Elena Kagan recused, the justices deadlocked 4-4. That result automatically affirmed the decision below (for Omega) but set no precedent.

This time around, with a full complement of justices, the court should settle some long simmering questions with far-reaching repercussions.

About the Author
By Roger Parloff
See full bioRight Arrow Button Icon
Add Fortune on Google for similar content.

Latest in

Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025

Most Popular

Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Finance
Lorem ipsum dolor sit amet, consectetur adipiscing elit, sed do eiusmod tempor incididunt ut labore et dolore magna aliqua. Ut enim ad minim veniam
By Fortune Editors
October 20, 2025
Fortune Secondary Logo
Rankings
  • 100 Best Companies
  • Fortune 500
  • Global 500
  • Fortune 500 Europe
  • Most Powerful Women
  • World's Most Admired Companies
  • See All Rankings
  • Lists Calendar
Sections
  • Finance
  • Fortune Crypto
  • Features
  • Leadership
  • Health
  • Commentary
  • Success
  • Retail
  • Mpw
  • Tech
  • Lifestyle
  • CEO Initiative
  • Asia
  • Politics
  • Conferences
  • Europe
  • Newsletters
  • Personal Finance
  • Environment
  • Magazine
  • Education
Customer Support
  • Frequently Asked Questions
  • Customer Service Portal
  • Privacy Policy
  • Terms Of Use
  • Single Issues For Purchase
  • International Print
Commercial Services
  • Advertising
  • Fortune Brand Studio
  • Fortune Analytics
  • Fortune Conferences
  • Business Development
  • Group Subscriptions
About Us
  • About Us
  • Press Center
  • Work At Fortune
  • Terms And Conditions
  • Site Map
  • About Us
  • Press Center
  • Work At Fortune
  • Terms And Conditions
  • Site Map
  • Facebook icon
  • Twitter icon
  • LinkedIn icon
  • Instagram icon
  • Pinterest icon

Latest in

Trump allies double down on efforts to reshape Federal Reserve
PoliticsFederal Reserve
Trump allies double down on efforts to reshape Federal Reserve
By Saleha Mohsin, Joshua Green and BloombergJuly 4, 2026
33 minutes ago
Ukrainian drones target more Russian oil infrastructure as fuel crisis adds political pressure on Putin, who shrugs off attacks as ‘not critical’
EnergyUkraine invasion
Ukrainian drones target more Russian oil infrastructure as fuel crisis adds political pressure on Putin, who shrugs off attacks as ‘not critical’
By The Associated PressJuly 4, 2026
47 minutes ago
Costco CEO promises the $1.50 hot dog isn’t going away: ‘The price will not change as long as I’m around’
RetailCostco
Costco CEO promises the $1.50 hot dog isn’t going away: ‘The price will not change as long as I’m around’
By Sydney LakeJuly 4, 2026
2 hours ago
Older worker sad at laptop
SuccessGen X
A quarter of young baby boomers and Gen Xers who’ve been laid off in the last decade are still unemployed—and 11% have taken pay cuts to work
By Emma BurleighJuly 4, 2026
2 hours ago
usa
North Americahistory
Before independence, America tried — and failed — to conquer Canada
By Sarah M.S. Pearsall and The ConversationJuly 4, 2026
2 hours ago
The 1964 box set that predicted Dylan going electric — and still explains American music today
Arts & EntertainmentMusic
The 1964 box set that predicted Dylan going electric — and still explains American music today
By Ted Olson and The ConversationJuly 4, 2026
3 hours ago

Most Popular

Egg companies made $1.22 billion in profit off a $6 carton — now they’re buying their way out of a price-fixing case with 53 million donated eggs
Law
Egg companies made $1.22 billion in profit off a $6 carton — now they’re buying their way out of a price-fixing case with 53 million donated eggs
By Wyatte Grantham-Philips and The Associated PressJuly 2, 2026
2 days ago
Meet the Zillennials: The luckiest micro-generation in the workforce, born between 1993 and 1998
AI
Meet the Zillennials: The luckiest micro-generation in the workforce, born between 1993 and 1998
By Nick LichtenbergJuly 3, 2026
1 day ago
Economists have found an answer to slowing cognitive decline: Avoid retiring early, study finds
Economy
Economists have found an answer to slowing cognitive decline: Avoid retiring early, study finds
By Sasha RogelbergJuly 2, 2026
2 days ago
On Wall Street, analysts increasingly don’t believe the U.S. government’s 'misleading' job numbers
Economy
On Wall Street, analysts increasingly don’t believe the U.S. government’s 'misleading' job numbers
By Jim EdwardsJuly 3, 2026
1 day ago
Even as Elon Musk calls philanthropy ‘very hard,’ every day Americans gave a record $617 billion—despite feeling the squeeze over the cost of living
Success
Even as Elon Musk calls philanthropy ‘very hard,’ every day Americans gave a record $617 billion—despite feeling the squeeze over the cost of living
By Preston ForeJuly 4, 2026
8 hours ago
$25 billion CEO says one-hour interviews are a waste of time—he puts candidates through six hours of tests and wants them to order wine at lunch
Success
$25 billion CEO says one-hour interviews are a waste of time—he puts candidates through six hours of tests and wants them to order wine at lunch
By Orianna Rosa RoyleJuly 3, 2026
1 day ago

© 2026 Fortune Media IP Limited. All Rights Reserved. Use of this site constitutes acceptance of our Terms of Use and Privacy Policy | CA Notice at Collection and Privacy Notice | Do Not Sell/Share My Personal Information
FORTUNE is a trademark of Fortune Media IP Limited, registered in the U.S. and other countries. FORTUNE may receive compensation for some links to products and services on this website. Offers may be subject to change without notice.