First Sale, “Lawfully Made,” and Copyright Stalking-Horses

The Supreme Court heard oral argument this morning in Kirtsaeng v. John Wiley & Sons, Inc., despite Hurricane Sandy’s imminent arrival and the fact the entire federal government in Washington DC is shut down today. Kirtsaeng is a copyright case raising the issue, argued two years ago in Costco Wholesale Corp. v. Omega, S.A., of whether the first sale doctrine applies to third-party imports of goods manufactured under the authority of the copyright owner abroad. (Costco resulted in a 4-4 affirmance due to Justice Kagan’s recusal.) In more plain English, if someone in the United States purchases legitimate copies of some item abroad that has a copyrighted work somewhere in it, can they import those items into the United States and resell them here without violating the Copyright Act? The specific issue in Kirtsaeng involves used textbooks, but it could just as easily apply to watches with a copyrighted logo on the back (the good at issue in Omega), shampoo with a copyrighted label on the bottle (Quality King v. L’Anza), or any product with copyrighted software in it.

Costco indicates the mischief that could come about from a holding saying that the first sale doctrine does not apply to imported goods. There is zero chance that Omega was actually concerned about the redistribution of its copyrighted logo, located inconspicuously on the backs of its watches, as opposed to the grey market arbitrage of the watches themselves, which of course are not copyrightable. But mischief that does not rise to a constitutional level doesn’t tell us what the law is. The arguments in Kirtsaeng focus on the meaning of the phrase “lawfully made under this title.” Section 109(a) provides that:

Notwithstanding the provisions of section 106(3), the owner of a particular copy or phonorecord lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy or phonorecord.

Kirtsaeng, the petitioner, argues that “lawfully made under this title” means “made with the authority of the copyright owners as required by Title 17, or otherwise authorized by specific provisions of Title 17,” a theory Kirtsaeng borrows from the Solicitor General’s brief back in Quality King. Wiley argues that because Title 17 does not have extraterritorial application, “lawfully made under this title” must mean “lawfully made in the United States pursuant to Title 17.”

That’s the question that cert. was granted on, but the whole debate strikes me as off-target. As a result I don’t think either side’s briefs really grapple with the problem here.

Continue ReadingFirst Sale, “Lawfully Made,” and Copyright Stalking-Horses

Eric Hobsbawm and Law on the Ground

Following David’s post last week, I thought I’d remark on another historian who recently passed away: Eric Hobsbawm, who died last Monday. (NY Times obituary.) Hobsbawm, like Genovese, was a Marxist historian who wrote in the 1960s and 1970s, but unlike Genovese, he never altered his view. Hobsbawm is most widely known for his masterful history of the “long nineteenth century,” a term he coined to describe the period from 1789 to 1914 (which has a lot going for it as a sensible periodization).

Hobsbawm was a formative influence on me, but not because of his three-volume masterwork on the Victorian era. In 1959, three years before “The Age of Revolution: 1789-1848,” Hobsbawm wrote a slim volume of essays that looked at bandits: Primitive Rebels: Studies in Archaic Forms of Social Movement in the 19th and 20th Centuries. The specific argument of the book was that bandits can in some circumstances be seen as proto-revolutionaries fighting against landed interests or capital. But the part that has stuck with me is a more general one: that actions outside of law, possibly even contrary to law, are part of a web of enforcement of the rules of a given society. Hobsbawm’s bandits were not simply rulebreakers; they were, in his telling, attempting to enforce different rules from the ones being imposed from the top down. And they had their own procedures — rituals — that they followed in doing so.

Continue ReadingEric Hobsbawm and Law on the Ground

Seventh Circuit to Form 19: Drop Dead!

Last week I bemoaned how the Seventh Circuit had thoroughly botched the already confusing state of affairs that is the elements of a prima facie copyright infringement claim. But as a bonus, the Peters v. West opinion also had troubling things to say about what is now required to successfully plead a copyright infringement claim under the new “plausibility” regime announced by the Supreme Court in Twombly and Iqbal.

As a refresher, here’s how the Peters court defined the element of infringement (the other element for a claim of copyright infringement being ownership of a valid and registered copyright):

Fundamentally, proving the basic tort of infringement simply requires the plaintiff to show that the defendant had an actual opportunity to copy the original (this is because independent creation is a defense to copyright infringement), and that the two works share enough unique features to give rise to a breach of the duty not to copy another’s work.

Note that the court is discussing what the plaintiff must ultimately prove, which even after Twombly and Iqbal is not necessarily what the plaintiff must allege. Swierkiewicz v. Sorema, which distinguished between those two, is still good law; Iqbal simply requires that the plaintiff allege enough to make a claim plausible, which may or may not require pleading specific facts. Nevertheless, many courts even pre-Twombly have been requiring plaintiffs to march through the elements in their complaints, and now post-Iqbal, each of those elements must be “plausible.”

So what does a plaintiff, according to the Seventh Circuit, now have to plead in order to plausibly allege infringement?

Continue ReadingSeventh Circuit to Form 19: Drop Dead!
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