Thursday, October 19, 2006

Parallel Imports and Penguins

Last week I was reading a book review of a work entitled "Why Don't Penguins' Feet Freeze? And 114 Other Questions." The book is a compilation of questions submitted to the "Last Word" column of New Scientist magazine. I went to and typed in a search, but nothing came up. Since the magazine is from the UK, I went to Amazon's UK site, where I found it, for 8 pounds. The book was quickly dispatched to me. I received it less time than it takes a letter to get from New York City to my home in Connecticut, 35 miles away.

No doubt the book will eventually be available in the United States, but not now. The Internet and international booksellers have made available to U.S. consumers works before their U.S. distributors do. In some cases, such as the Harry Potter books, U.S. consumers create quite a demand for such parallel imports.

From 1790 to 1891, U.S. authors whose works were copyrighted in the United States could prohibit all parallel imports. At the same time, however, not only were the parallel importation rights repealed for American authors, but significant exceptions to the importation of works not complying with the manufacturing clause were made, not for the benefit of the author but for the benefit of certain importers. In addition, books, engravings, photographs, etchings, maps, and charts that were printed, bound, or manufactured more than 20 years before the date of importation, or imported by authority or for the use of the United States or the Library of Congress, could be brought in without the copyright owner’s permission.

The appropriateness of an importation right for both piratical and parallel copies was vigorously debated during the discussion leading up to passage of the 1909 Act. A compromise was reached in Section 30 of that Act. Importation of piratical copies and copies that did not comply with the manufacturing clause (even if authorized by the copyright owner) was prohibited except that one such copy could be imported either for individual use or for the use of any educational, literary, philosophical, scientific, religious, or fine arts society, educational institution, or free public library. While a theoretical argument could be made that a “piratical copy” included a work that was imported in violation of a territorial contract, Customs regulations took a contrary view, and thus there was no parallel import right under the 1909 Act.

The grant of a parallel importation right raises different issues than a right to ban the importation of piratical copies. With parallel imports, the copyright owner has authorized the reproduction and initial distribution. In addition, a parallel importation right might impose restrictions on individuals who purchase lawfully made copies in good faith, unaware of any territorial agreement. Furthermore, the very low standard of originality for copyrighted works has been used as a way around perceived deficiencies in the trademark law in order to stop importation of consumer products such as hair products, via an “original” label. For such consumer products, protection of copyright is not even an afterthought; it is not a thought at all. Instead, assertion of copyright in a shampoo label to ban the sale of a lawfully made product is a ruse to prevent the public from purchasing that product at a reasonable price. It is not coincidental that the majority of parallel import cases involve packaging for consumer products.

In the debates that led up to the 1976 revision of the 1909 Act, there was no disagreement about the need to give the copyright owner the right to ban the importation of piratical copies, and such a right was included in Section 602(b). The right to prohibit parallel imports was not as easily obtained. The 1961 report of the Register of Copyrights recommended against what it tellingly called “agreements to divide international markets,” favoring reliance on contractual protection. the Copyright Office expressed concern that a parallel import right “would impose . . . territorial restriction[s] upon third persons with no knowledge of the agreement. And even as between the [contracting] parties, Customs does not seem to be an appropriate agency for the enforcement of private contracts.”

Ultimately, though, the request of publishers for a right to prevent the importation of copies made overseas and brought in contrary to a contract with a foreign copyright owner granting them the exclusive right to distribute in this country was successful (see Section 602), but with three exemptions: (1) importation of copies or phonorecords under the authority of or for the use of the United States, any state, or political subdivision of a state (but not including schools); (2) importation of one copy or phonorecord of any one work at any one time for personal use (and and (3) importation by a scholarly, educational, or religious organization not for private gain of no more than one copy of any audiovisual work for archival purposes, or no more than five copies or phonorecords of any other type of work for lending or archival purposes.

It is the second of these exemptions that let me get my book from amazon UK. The penguin question, by the way, takes it place in a chapter dealing with questions such as "Why don't birds fall off of their branches when sleeping?" and "Why do sheep always run in a straight line in front of a car and not to the side?" For now, you will either have to order to book as I did from the UK or wait for a U.S. distributor.


Anonymous said...

Great post, and here's how it is from the UK side of the pond. Not for books, but DVDs. Let's take the first of the Lord Of The Rings DVD(I forget the name).

When it came out in the UK, it was 2 discs with a few extras, that was it.

When it came out in the US, it was 2 discs, more extras, better packaging, and a voucher that (I think) got you into the cinema for the next movie free (or possibly majorly discounted).

Is it any wonder that people in the UK are keen to get their DVD player to be region-free and then import US discs (particularly more expensive boxed sets)?

Glad that the UK got their first for you! Not often that happens :-)


William Patry said...

Thanks for the post Andy. The region-coding is a killer though, and I thought that our first big anti-circumvention case here in NY was over (at least it was alleged) coding to use Linux to read region-coded disks.

Anonymous said...

While the consumer buying the import gets off the hook under the import for personal use exemption, what about the stores (brick-and-mortar or online) that sell the import books, DVDs, CDs, and so forth? Would they run afoul of the importation right for selling and/or mailing the foreign work to US consumers? Here are the scenarios I have in mind:

1. A store/website located in a foreign country.

2. A brick-and-mortar store in the US that stocks import works on its store shelves.

3. A store/website located in the US that takes orders from US customers, imports whatever items the customers ordered, and ships them to the customers.

4. A website with locations in both the US and outside the US.

It would seem that the store/website in #1 does not infringe the importation right because the customer is the one importing (whether it's the customer bringing it into the US physically from abroad or it's the foreign store mailing the item to the customer) and is thus not covered by the importation right.

The store in #2 would seem to violate the importation right because it's the store that is the importer in the first instance and the store is not importing for personal use.

For the store/website in #3, that's a harder call to make, but I would say that the store is infringing because it's still the importer in the first instance (the store is the one receiving the work sent from abroad).

I don't have an answer with regard to #4. Would it depend on whether it was the US or foreign location that shipped the item to the customer?

Lewis Perdue said...

Actually, the book IS available in the U.S., and is sent by New Scientist to its subscribers. The magazine is a great read for those wishing to keep up on science -- getting a full story rather than short think-bites presented by American media.

It's also fun to try your hand at submitting answers to the questions. You forfeit rights to your answer, but then they send you money (always good!) and include your answer in the book.

The last time one of my answers was accepted, I think the check was for about US$40 which was not bad for five minutes work. (Almost as good on an hourly basis as being an attorney!)

Anonymous said...

See U2 Home Entertainment v. Gatechina, c 05-260 JF (PVT) (N.D. Cal. March 27, 2007) for a contrary view of 602 (a)(2)