1. Class 23 Copyright, Autumn, 2016 International Issues
11/10/2018
Class 23 Copyright, Autumn, International Issues
Randal C. Picker
James Parker Hall Distinguished Service Professor of Law
Ludwig & Hilde Wolf Teaching Scholar
The Law School
The University of Chicago

2. November 10, 2018
BBC News Magazine

3. November 10, 2018
BBC News Magazine

4. November 10, 2018
Berne Convention

5. November 10, 2018
Berne Convention

6. Berne Convention Implementation Act of 1988
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7. Protecting Foreign Authors
Section 104(b):
“The works specified by sections 102 and 103, when published, are subject to protection under this title if—
(1) on the date of first publication, one or more of the authors is a national or domiciliary of the United States, or is a national, domiciliary, or
November 10, 2018

8. Protecting Foreign Authors
sovereign authority of a treaty party, or is a stateless person, wherever that person may be domiciled; or
(2) the work is first published in the United States or in a foreign nation that, on the date of first publication, is a treaty party;
November 10, 2018

9. Definition Backfill from 101
“Treaty party”
“ is a country or intergovernmental organization other than the United States that is a party to an international agreement.”
November 10, 2018

10. Definition Backfill from 101
An “international agreement” is –
(1) the Universal Copyright Convention; (2) the Geneva Phonograms Convention; (3) the Berne Convention; (4) the WTO Agreement; (5) the WIPO Copyright Treaty; (6) the WIPO Performances and Phonograms Treaty; and (7) any other copyright treaty to which the United States is a party.
November 10, 2018

11. U.S. Law and Not Berne Directly
“No right or interest in a work eligible for protection under this title may be claimed by virtue of, or in reliance upon, the provisions of the Berne Convention, or the adherence of the United States thereto.”
November 10, 2018

12. U.S. Law and Not Berne Directly
“Any rights in a work eligible for protection under this title that derive from this title, other Federal or State statutes, or the common law, shall not be expanded or reduced by virtue of, or in reliance upon, the provisions of the Berne Convention, or the adherence of the United States thereto.”
November 10, 2018

13. First Sale Doctrine As to distribution right:
109(a): “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.”
November 10, 2018

14. First Sale Doctrine As to display right:
109(c): “Notwithstanding the provisions of section 106(5), the owner of a particular copy lawfully made under this title, or any person authorized by such owner, is entitled, without the authority of the copyright owner, to display that copy publicly, either directly or by the projection of no more than one image at a time, to viewers present at the place where the copy is located.”
November 10, 2018

15. Used Books in Buffalo, NY
11/10/2018
Used Books in Buffalo, NY
Hypo: All U.S.
A U.S. author prints a book in the U.S. bearing a U.S. copyright.
Author sells the book to Customer, a U.S. citizen, in the U.S.
Customer seeks to resell the book to Buyer, a U.S. citizen, in the U.S.
Does Section 109 apply to this?
November 10, 2018

16. 11/10/2018
Answer
Yes, of course
This is exactly what the first-sale doctrine, developed in Bobbs-Merrill and added to the statute in Section 109, covers
November 10, 2018

17. Used Books in Toronto Hypo: All Canadian
11/10/2018
Used Books in Toronto
Hypo: All Canadian
A Canadian author prints a book in Canada bearing a Canadian copyright.
Author sells the book to Customer, a Canadian citizen, in Canada
Customer seeks to resell the book to Buyer, a Canadian citizen, in Canada
November 10, 2018

18. Used Books in Toronto Question
11/10/2018
Used Books in Toronto
Question
When Author goes into a Canadian court to try to block the sale of the book to Buyer should the Buyer rely on Section 109?
November 10, 2018

19. 11/10/2018
Answer
I doubt it
Hard to see any relevance that U.S. law and Sec. 109 would have in this situation
Right question is whether Canada has some version of the first sale doctrine. It appears to do so: see Theberge v. Galerie D’Art, [2002] 2 S.C.R. 336
Author probably loses under Canadian law
November 10, 2018

20. Answer Different Question
11/10/2018
Answer
Different Question
Is the Canadian book “lawfully made under this title” as Section 109 puts it?
What turns on the answer to that question?
November 10, 2018

21. Used Books in Buffalo, NY (Printed in Toronto)
11/10/2018
Used Books in Buffalo, NY (Printed in Toronto)
Hypo: Add Canadian Printing
A U.S. author prints a book in Toronto bearing a U.S. copyright.
Author moves the book from Toronto to Buffalo
Author sells the book to Customer, a U.S. citizen, in the U.S.
Customer seeks to resell the book to Buyer, a U.S. citizen, in the U.S.
November 10, 2018

22. Used Books in Buffalo, NY (Printed in Toronto)
11/10/2018
Used Books in Buffalo, NY (Printed in Toronto)
Questions
How does the printing of the books in Toronto matter? Does that mean that Canadian law somehow applies? Does the printing there somehow alter that application of 109?
What does importation do?
Importation Rules and Extraterritoriality
November 10, 2018

23. Navigating 17 USC 602 (a)(1) (a)(2) Copies sold outside of the U.S.
Infringing copies
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24. 602. Infringing importation or exportation
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602. Infringing importation or exportation
(a)(1)
Importation into the United States, without the authority of the owner of copyright under this title, of copies or phonorecords of a work that have been acquired outside the United States is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under section 501.
November 10, 2018

25. 602. Infringing importation or exportation
Importation into the United States or exportation from the United States, without the authority of the owner of copyright under this title, of copies or phonorecords, the making of which either constituted an infringement of copyright, or
November 10, 2018

26. 602. Infringing importation or exportation
which would have constituted an infringement of copyright if this title had been applicable, is an infringement of the exclusive right to distribute copies or phonorecords under section 106, actionable under sections 501 and 506.
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27. 501. Infringement of copyright
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501. Infringement of copyright
(a)
Anyone who violates any of the exclusive rights of the copyright owner as provided by sections 106 through 122 or of the author as provided in section 106A(a), or who imports copies or phonorecords into the United States in violation of section 602, is an infringer of the copyright or right of the author, as the case may be.
November 10, 2018

28. Answer 602 Not Applicable Here
Both (a)(1) and (a)(2) are keyed to importation without the authority of the copyright owner.
Here it is the copyright owner who printed in Toronto and who is bringing the books back into the U.S.
November 10, 2018

29. Answer What Does that Mean about First Sale?
Are the books printed in Toronto no longer “lawfully made under this title” and therefore outside of 109(a) first sale?
Turn to Extraterritoriality
November 10, 2018

30. November 10, 2018
EEOC v. ARAMCO (US 1991)

31. November 10, 2018
EEOC v. ARAMCO (US 1991)

32. November 10, 2018
EEOC v. ARAMCO (US 1991)

33. Answer
Not clear but
Really doubt courts would give publishers option on application of first sale (meaning if publisher prints outside of U.S. not making it possible for publisher to evade application of first sale)
But that does treat book printed outside the country as “lawfully made under this title”
November 10, 2018

34. Used Books in Toronto (Printed in Buffalo)
11/10/2018
Used Books in Toronto (Printed in Buffalo)
Hypo
A U.S. author prints a book in the U.S. bearing a U.S. copyright.
Author exports the book to Canada where she sells the book to Customer, a Canadian citizen, in Canada
Customer seeks to resell the book to Buyer, a Canadian citizen, in Canada
November 10, 2018

35. Used Books in Toronto II
11/10/2018
Used Books in Toronto II
Question
When Author goes into a Canadian court to try to block the sale of the book to Buyer should the Buyer rely on Section 109?
November 10, 2018

36. Answer Multiple Angles
“Lawfully made under this title” language seems to attach at point of printing in U.S. meaning first sale rights have attached
That said, might easily find local Canadian court would apply local law in face of conflict (int’l conflicts of law Q)
November 10, 2018

37. Used Books in Buffalo (Export and Reimportation)
11/10/2018
Used Books in Buffalo (Export and Reimportation)
Hypo
A U.S. author prints a book in the U.S. bearing a U.S. copyright.
Author exports the book to Canada where she sells the book to Customer, a Canadian citizen, in Canada
November 10, 2018

38. Used Books in Buffalo II
11/10/2018
Used Books in Buffalo II
Hypo
Customer in turn exports the book back to the U.S. where Customer seeks to resell the book to Buyer, a U.S. citizen, in Buffalo
Does Section 109 apply to this case? Section 602?
This is Quality King.
November 10, 2018

39. November 10, 2018
The Legal Infrastructure of Business. Copyright © Randal C. Picker.

40. November 10, 2018
The Legal Infrastructure of Business. Copyright © Randal C. Picker.

41. Quality King Core Facts
11/10/2018
Quality King
Core Facts
L’anza makes shampoo; labels are copyrighted works
L’anza sells at higher prices in the US than in foreign markets
Quality King acts as middleman to bring shampoo back to US
November 10, 2018

42. 11/10/2018
Quality King
Ninth Circuit rules for L’anza, saying that applying 109 first-sale defense would gut 602
November 10, 2018

43. Quality King Result This is the “round trip” case
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Quality King Result
This is the “round trip” case
Books started in US, left and returned
Under Quality King, 109(a) first-sale rights “attach”
Attach based on location of printing in US—“lawfully made under this title”
That is independent of where the particular copy of the book is sold (see fn. 14)
November 10, 2018

44. Ginsburg Concurrence Her Opinion
“This case involves a ‘round trip’ journey, travel of the copies in question from the United States to places abroad, then back again. I join the Court's opinion recognizing that we do not today resolve cases in which the allegedly infringing imports were manufactured abroad.”
November 10, 2018

45. Making, Selling, Importing
11/10/2018
Making, Selling, Importing
Hypo: US Printing, Foreign Sale
I print a copyrighted book in the US
I sell copies in the US for $50
I export copies to Canada and sell them there myself for $25
Importer buys in Canada for $25, takes the book to the US and sells for $35
How does Sec. 602 apply to this situation?
November 10, 2018

46. Answer Variant on Quality King
First sale right attaches on production in the U.S.
Might think that 602(a)(1) would block this but doesn’t
Reference to 106 understood to pick up limit on 106 in 109
November 10, 2018

47. Making, Selling, Importing
11/10/2018
Making, Selling, Importing
Hypo: Foreign Printing, Foreign Sale
I print a copyrighted book in the US and sell copies in the US for $50
I print copies in Canada and sell them there for $25
Importer buys in Canada for $25, takes the book to the US and sells for $35
How does Sec. 602 apply to this situation?
November 10, 2018

48. Answer This is Kirtsaeng Key Question
Does first sale attach given printing overseas as in my hypo of books printed in Toronto and imported by Wiley for sale in U.S.?
Or does 602(a)(1) preclude this?
November 10, 2018

49. Wiley’s American Edition Copyright Page
In the U.S.
“Copyright © 2008 John Wiley & Sons, Inc. All rights reserved.... Printed in the United States of America.” 
November 10, 2018

50. Wiley’s Asian Edition Copyright Page
11/10/2018
Wiley’s Asian Edition Copyright Page
In Asia
“Copyright © 2008 John Wiley & Sons (Asia) Pte Ltd[.] All rights reserved. This book is authorized for sale in Europe, Asia, Africa, and the Middle East only and may be not exported out of these territories.”
November 10, 2018

51. Wiley’s Asian Edition Copyright Page
In Asia
“Exportation from or importation of this book to another region without the Publisher’s authorization is illegal and is a violation of the Publisher’s rights. The Publisher may take legal action to enforce its rights.... Printed in Asia.”
November 10, 2018

52. Extraterritorial Application of the U.S. Copyright Act
From the Majority Opinion in Kirtsaeng
“Thus, ordinary English permits us to say that the Act ‘applies’ to an Irish manuscript lying in its author’s Dublin desk drawer as well as to an original recording of a ballet performance first made in Japan and now on display in a Kyoto art gallery.”
November 10, 2018

53. Extraterritorial Application of the U.S. Copyright Act
From the Majority Opinion in Kirtsaeng
“Cf. 4 M. Nimmer & D. Nimmer, Copyright § 17.02, pp , (2012) (hereinafter Nimmer on Copyright) (noting that the principle that ‘copyright laws do not have any extraterritorial operation’ ‘requires some qualification’).
November 10, 2018

54. Extraterritorial Application of the U.S. Copyright Act
From the Dissenting Opinion
“The Copyright Act, it has been observed time and again, does not apply extraterritorially. See United Dictionary Co. v. G. & C. Merriam Co., 208 U.S. 260, 264 (1908) (copyright statute requiring that U.S. copyright notices be placed in all copies of a work did not apply to copies published abroad
November 10, 2018

55. Extraterritorial Application of the U.S. Copyright Act
From the Dissenting Opinion
“because U.S. copyright laws have no ‘force’ beyond the United States’ borders); 4 M. Nimmer & D. Nimmer, Copyright § 17.02, p (2012) (hereinafter Nimmer) (‘[C]opyright laws do not have any extraterritorial operation.’); 4 W. Patry, Copyright § 13:22, p (2012) (hereinafter Patry) (‘Copyright laws are rigorously territorial.’).
November 10, 2018