On Tuesday, the Supreme Court issued its opinion in Kirtsaeng v. John Wiley & Sons, Inc., resolving a long-simmering debate by holding that copyright’s first-sale doctrine applies to copyrighted works lawfully made anywhere in the world.  The upshot is that someone who buys an authorized, foreign-made copy (Kirtsaeng involved a foreign version of a textbook) is free to resell that copy in the U.S. without the copyright owner’s permission.

As we explained in a previous post, the crux of the issue is the interplay between the Copyright Act’s “importation” provision (section 602(a)(1)) and its “first-sale” provision (section 109(a)).  Generally, a copyright owner has the exclusive right to distribute copies of the copyrighted work.  The first-sale provision, however, creates an exception to that right: it provides that someone who owns a particular copy “lawfully made under this title” (i.e., lawfully made under the Copyright Act) has the right to sell that copy without permission from the copyright owner.  Finally, the importation provision says that if you acquire a copy outside the U.S., importing that copy into the U.S. without the copyright owner’s permission infringes upon the owner’s exclusive right to distribute copies.


Continue Reading Supreme Court Clarifies Broad Geographic Reach of Copyright’s First-Sale Doctrine

House and Senate Judiciary Committee leaders joined the cell phone unlocking debate last week by introducing a pair of new bills.  If enacted, the bills would overturn an October 2012 regulation issued by the Library of Congress, which effectively prohibits consumers from unlocking cell phones purchased after January 26, 2013 so that they may be used on other networks.

The bills — H.R. 1123 and S. 517 — take a narrow approach, similar to the one advocated by the White House, by temporarily re-enacting an older Library of Congress rule that allows unlocking.  That policy would remain in place until 2015, at which point the Library would revisit the matter.  The bills also direct the Library to determine whether consumers should be permitted to unlock tablets and other wireless devices.  Senate Judiciary Committee Chairman Patrick Leahy, the Senate measure’s sponsor, explained in a March 11 floor statement that the tablet proceeding “makes sense” because “the line between phone and tablet is beginning to blur.”
Continue Reading Cell Phone Unlocking Push Moves to Congress

By Morag Peberdy and Jacqueline Clover

In a departure from the normal approach, the English High Court has found that in certain circumstances a copyright sub-licence may survive termination of the head licence. This was the Court’s holding in VLM Holdings Limited v Ravensworth Digital Services Limited [2013] EWHC 228 (Ch). Because of the specific facts of the case, termination of the head licence did not automatically terminate the sub-licence. Consequently, when the licensor subsequently exclusively licensed the same subject matter to another party, the licensor inadvertently put itself in instant breach of the exclusive licence. The case therefore illustrates some of the potential pitfalls for a licensor who does not fully understand what exactly it has permitted the licensee to do.

VLM Holdings does not hand down a rule of thumb that a sub-licence will survive termination of the head licence. The Court was very clear to confine its conclusion to the facts of the case. Notably, the head licensor was the parent of the sub-licensor and the sub-licensee was ignorant of the head licence. Nonetheless, it highlights the care which needs to be taken when drafting or interpreting licences of any kind.
Continue Reading English Court Upholds a Copyright Sub-licence Despite the Termination of the Head Licence

The Obama administration issued a statement on Monday declaring that consumers not bound by service agreements should be able to unlock their cellular devices for use with other network providers.  In the official response to a petition on the We The People website, a senior White House advisor on the Internet, innovation and privacy agreed with more than 114,000 signatories that it makes “common sense” to allow users to unlock their smart phones and, potentially, tablets without incurring criminal or other penalties.

Cell phone unlocking can run afoul of the Digital Millennium Copyright Act (DMCA), which prohibits circumvention of technological protection measures that control access to a phone’s copyrighted software.  In 2006 and 2010, the Library of Congress had exempted the practice from the DMCA’s prohibition under its power to issue three-year exemptions to the statute.  But the 2012 exemptions put in place last fall do not extend to the unlocking of cell phones acquired after January 26th of this year.

The White House statement expressed disagreement with this policy, maintaining that cell phone unlocking protects consumer choice and fosters a competitive and innovative wireless market.  Also on Monday, FCC Chairman Julius Genachowski echoed these concerns and advised that the agency is examining the issue.


Continue Reading White House Calls for Legalization of Some Cell Phone Unlocking

A series of recent decisions suggests that federal courts increasingly are accepting evidence derived from Internet Protocol (IP) geolocation databases, which make it possible to look up the geographic location of a computer or other similarly-equipped electronic device.  This development may be particularly significant in the area of copyright litigation, where alleged online infringers can resist enforcement suits on the ground that their activities are outside the court’s territorial jurisdiction.
Continue Reading Federal Courts Increasingly Receptive to IP Geolocation Data; Copyright, Other Lawsuits Affected

Last month, senior officials from the U.S. and China conducted the 23rd U.S.-China Joint Commission on Commerce and Trade (JCCT) in Washington, D.C.  The JCCT was founded in 1983 as a forum for high-level dialogue on bilateral trade issues.  This year’s JCCT resulted in several technology-related commitments from both China and the U.S.

China’s technology-related commitments included:

  • Requiring state-owned enterprises and banks to purchase and use legitimate software.
  • Reaffirming that technology transfer and cooperation will not be a precondition for market access, and pledging to revise regulations that specify an indigenous intellectual property requirement for high-level information security products.
  • Considering views of all stakeholders with regard to the regulation of information technology, telecommunications hardware, operating systems, applications, and app stores.  We previously wrote on China’s proposed regulations regarding smartphone applications here.  China also affirmed that it would not mandate any particular encryption standard (such as the ZUC standard) for commercial 4G LTE equipment.

U.S. technology-related commitments reportedly included easing restrictions high-technology and dual-use exports from the U.S. to China.  However, acting Commerce Secretary Rebecca Blank clarified that restrictions would not be eased for items on the U.S. munitions list.
Continue Reading China and U.S. Make Technology-Related Commitments at 23rd JCCT

The California court that is hearing Fox’s challenge concerning DISH’s Hopper set-top-boxes and related AutoHop feature has issued a decision denying Fox’s request for a preliminary injunction.  The Hopper can be used to automatically record primetime programming from the four major broadcast television networks, and the AutoHop feature allows viewers to automatically skip the commercials

On 30 October, 2012, press reported that the Finnish Supreme Court had rejected an appeal from Elisa, a Finnish internet service provider (ISP), against a court order that required Elisa to block its users from accessing the well-known file-sharing website, The Pirate Bay.

The order, which was granted in October 2011 in response to a

The Supreme Court heard oral arguments Monday in Kirtsaeng v. John Wiley & Sons, Inc., a case addressing whether textbooks — and other copyrighted works — made abroad can be imported and sold in the United States without the copyright holder’s permission.

The Court’s decision will clarify to what extent § 109(a) of the Copyright Act — also known as the first-sale doctrine — applies to copyrighted works made outside the U.S.  The first-sale doctrine permits the legal owner of a copyrighted work to dispose of the work without the copyright holder’s approval.

Continue Reading Supreme Court Hears Arguments in Foreign-Made Textbooks Case

On 29 October 2012, the UK’s All-Party Parliamentary Intellectual Property Group published a report examining the Government’s role in promoting and protecting intellectual property (IP).  According to the report, which is based on the written submissions of almost 60 interested bodies, Government departments often fail to understand the importance of IP to the growth of UK’s economy. The report also criticizes the UK’s Intellectual Property Office (IPO) for having lost the confidence of a large number of its main stakeholders in its IP policy-making and recommends that greater ministerial leadership will be exercised over the IPO’s activities.  While the report welcomes the IPO’s increased investment in research, the Office is critiqued for failing to view IP as a property right and promoting the creation and development of new IP.
Continue Reading UK Government Urged to Champion Intellectual Property Rights