Orrick Achieves U.S. Supreme Court Victory in First Sale Doctrine Suit

03.20.13

​Orrick attorneys won a landmark U.S. Supreme Court case on March 19, 2013, that rescued the estimated $60 billion U.S. market of copyrighted goods manufactured abroad from the brink of potential disaster. 

In the copyright case Kirtsaeng v. John Wiley Publishing, one of the highest-profile intellectual property cases to hit the Court’s docket in years, the Supreme Court held by a 6-3 margin that the “first-sale doctrine,” which allows owners of lawfully acquired copyrighted works to resell them without first getting the copyright holder’s permission, applies to all works, including works made overseas. The ruling is critical to retailers and re-sale platforms (like eBay) whose business models often depend upon a robust first-sale doctrine permitting them to offer products purchased abroad to domestic consumers for low prices. In reaching its decision, the Court rejected contrary arguments, made by manufacturers, content providers, and the Federal Government, that copyright holders should have more comprehensive control.

Just two terms ago, the Court split 4-4 on the same issue in another case, Costco v. Omega. So conventional wisdom had at least four justices against Orrick’s position from the start, namely the four justices who rejected it in Omega. And Justice Kagan was thought to be a likely fifth vote against Orrick, because, in her role as Solicitor General (which caused her recusal), she filed a brief in Omega against Orrick’s position. Remarkably, the Orrick team was able to convince Justice Kagan and another justice to change position, resulting in a 6-3 victory.

Supreme Court and appellate partner Joshua Rosenkranz gave the winning argument. And SCOTUSBlog, the most widely read blog on appellate issues, expressly recognized his ability to persuade those two justices to join Orrick’s side, writing: “A common trope says that it is common for a case to be lost at oral argument but rare for one to be won. I am not so sure....Joshua Rosenkranz managed to directly confront, and apparently defuse, the concerns of several Justices who seemed opposed to his position. This well might be the rare case of a victory at oral argument.”

“This is an important win for the American consumer,” said Rosenkranz. “For 400 years the law has been ‘if you buy it, you own it,’ no matter where it was made or whether it’s copyrighted. The Supreme Court’s decision today cements this right as the law of the land and allows the free market to work as it always has: people will buy goods where they are cheaper and sell them where they are more expensive.”

The Orrick team was led by Rosenkranz and included San Francisco intellectual property partner Annette Hurst, New York intellectual property partner Lisa Simpson, New York Supreme Court and appellate managing associate Brian Ginsberg, Washington, D.C., litigation associate Nick Lenning, returning associate Marc Shapiro and paralegal Juanita Greenfield.

View Josh Rosenkranz’s Bloomberg Law interview on Kirtsaeng.