We all know the thirft shop. You go. You buy The Great Gatsby. It is used. It is cheap. It is a great read. And potentially illegal contraband? That could be so. Under the Second Circuit’s ruling in John Wiley & Sons, Inc. v. Kirtsaeng, you may not resell copyrighted materials that are manufactured overseas in the U.S. The Supreme Court heard oral arguments in the case on Monday. Until Congress amends the Copyrigt Act to limit the first sale doctrine to copyrighted materials manufactured in this U.S., the Supreme Court should overrule the Second Circuit.
Under the first sale doctrine, you are permitted to buy a book and then resell it. The copyright owner no longer has a right to restrain your use of the book once you have paid for it. However, there is a provision in the Copyright Act which prohibits you from importing copyrighted works into the U.S. without first obtaining the copyright owner’s permission. The question is whether that provision of the Act applies to copyrighted works that are used.
In Wiley, the Second Circuit was asked to resolve the apparent conflict between these provisions of the Copyright Act. The defendant had family members buy academic books overseas and then send the books to him in the U.S. When here, he sold the books for a profit. The books were manufactured overseas, and were protected by U.S. copyright law. The plaintiff, a publisher of some of the books that defendant was importing, sued him for copyright infringement, claiming he was violating their right to decide what copyrighted goods to import, or not. His defense was that he was protected by the first sale doctrine because all of the books he was importing were used. The lower court refused to instruct the jury about the potential applicability of the defense, and the man was found liable for copyright infringment.
Using some mental gymnastics, the Second Circuit held in Wiley that the first sale doctrine did not apply to the books in question because they were manufactured overseas, whereas there would have been a defense had the books been manufactured domestically. The Second Circuit came to this decision after reading a concurrence by Justice Ginsberg in Quality King, a previous Supreme Court decision in which the court held that the first sale doctrine applies to copyrighted products produced in the United States and resold here after being re-imported. Even though the majority opinion in Quality King didn’t peg its first sale doctrine holding to the fact that the product in question was domestically produced, Justice Ginsberg suggested a different outcome could result if a product were produced overseas and then imported.
It seems if Congress wanted to expand a copyright holder’s rights beyond the first sale depending on whether the product in question was produced oversears, it could easily do so by amending the Copyright Act. Until then, it seems the best way to keep cool local thrift shops (and others) from getting sued and put out of business by major book publishers (or others) for selling used books (or other copyrighted items) manufactured overseas is for the Supreme Court to reverse the Second Circuit.
Dewey, Cheatem, & Howe. P.C. (“Dewey”) is a Dutch based professional corporation, pictured above, that helps Somalia pirates rob and steal from you, a Nigerian citizen, on the high seas. The U.S. Supreme Court heard oral arguments on Tuesday in Kiobel v. Royal Dutch Pertroleum Company to determine whether you would be able to sue Dewey in the United States under the Alien Tort Statute (“ATS”) even though Dewey is a corporation. Given that corporations are considered “persons” for First Amendment purposes, companies should also be considered persons subject to suit under ATS. Otherwise, the lawyers at Dewey — Curly, Moe, and Larry — would be free to aid and abet the pirates, while none of them alone would be able to.
In Kiobel, 12 Nigerian citizens sued Royal Dutch Petroleum (“Royal Dutch”) under the ATS in U.S. federal court for allegedly aiding and abetting human rights violations by the Abacha dictatorship in Nigeria. The ATS, passed in 1789, allows federal courts to hear “any civil action by an alien for a tort only, committed in violation of the law of nations or a treaty of the United States.” The issue in the case is whether Royal Dutch may be sued even though it is a company and not a natural person. The law to date has only included natural persons within the scope of the ATS, which only defines who may sue but not who may be sued.
The opposing sides have arguments that are not supported by the text of the statute. Royal Dutch’s appellate lawyer, Kathleen Sullivan, argued to the Court that “[t]here is no country in the world that provides a civil cause of action against a corporation under their domestic law for a violation of the of nations,” reports The New York Times in Court Debates Rights Case Aimed at Corporations. Instead, she claims that “every convention for every international tribune excludes corporations.” The deputy solicitor general, Edwin S. Kneedler, argues on behalf of the plaintiffs that there need not to be a constraint on who may or may not be sued under the ATS because it “does not identify who the defendant may be.”
Regardless of what other countries do or the absence of textual guidance in the ATS, the Supreme Court recently reaffirmed its position that corporations are “persons” within the meaning of the First Amendment in Citizens United v. Federal Election Commissions. If Dewey were a professional corporation based in New York, it would have just as much protection under the First Amendment as you do. Given that this is the law of the land, it seems intellectually disingenuous to count corporations beyond the scope of the ATS as a matter of law but within the scope of the First Amendment. It seems a better approach would be to allow suits against companies like Dewey or Royal Dutch under the ATS but then potentially dismiss the suit for other reasons, including no violation of the law of nations or a treaty of the United States, until Congress hopefully amends the ATS to make it clearer.
Doth not a rose by any other name smell as sweet? Of course it does. The same is true of an isolated gene. It may have different uses and molecular characteristics once separated from the human genome. However, the genetic code within the gene remains the same. Because such code is found in nature, the isolated gene should not be patentable subject matter. And yet the United States Court of Appeals for the Federal Circuit recently ruled in The Assoc. for Molecular Pathology, et. al. v. Myriad Genetics, Inc. (“Myriad”) that such a gene is patentable. In so holding, the Court went too far.
Myriad filed a patent over BRCA, which is an isolated gene from the human genome. Think of the BRCA as a link from a chain link fence. The company then used BRCA for various purposes, including the treatment for breast cancer. Indeed, the company filed a patent for such uses and applications. This patent was not the subject of the dispute.
Instead, the dispute centers on whether Myriad has the right to a government sanctioned monopoly over BRCA. A majority of the Federal Circuit held that it did. The majority’s reasoning: while the genetic code that underlies the BRCA is the same as the genetic code found in the human genome, the molecular nature of the BRCA changes once isolated from its chain. This is akin to saying that a link from a chain link fence can be heated and bent into forms that would not be possible if the link were still in the chain link fence.
However, the fact remains that the link still is made of the metal from which it came, just as the BRCA has the same generic code. Of course, Myriad should be — and was — rewarded with a patent for new and non-obvious applications or uses of the BRCA for the treatment of breast cancer. And the Court rightly upheld Myriad’s patent over a genetically modified gene that the company constructed in the laboratory and which did not naturally occur in nature.
In the end, allowing Myriad to monopolize the BRCA gene with a patent precludes others from experimenting with the gene in order to find new commercial and non-commercial applications that benefit society. In so doing, the Federal Circuit has placed too much undeserved power over a naturally occurring item in the hands of one company.