How the Court rejected its own earlier hints
Why the Court rejected those hints
Why the decision impacts far more than copyright law
Last Tuesday the United States Supreme Court decided that a US copyright owner who allows a copyrighted item to be sold abroad cannot prevent the buyer from importing it into the United States and reselling it here. The Court reversed a $600,000 judgment against a former student from Thailand who had imported and sold over 600 copies of foreign-made US-copyrighted textbooks to help finance his American education. (Kirtsaeng v. John Wiley & Sons, Inc.
The decision was remarkable for two reasons. First, in a previous, similar case over fifteen years earlier, the Court had given an unmistakable hint that any case like Kirtsaeng
would come out the other way. Second, the Court’s decision was a small step along the long road back from judging by semantics and sophistry.
For the public and posterity, the second reason is by far the most important. Combined with decisions having more universal importance, it suggests a slow sea change in our Supreme Court, as Chief Justice John Roberts and President Obama’s two female appointees begin to put their own unique stamps on it.
How the Court rejected its own earlier hints
The first reason why the decision was surprising was a bit of inside baseball. Our copyright act has two relevant provisions, drafted at different times, by different Congresses, for different purposes. Their language just doesn’t fit together well.
confirms an venerable principle, called the “first-sale” or “exhaustion” doctrine. Under this principle, an item controlled by copyright—a “copy”—loses copyright protection after its first sale under the copyright owner’s authority. That is, the first authorized sale exhausts copyright protection for that copy
This “exhaustion” of copyright applies only to the single copy itself. Copyright still prevents anyone from making or distributing unauthorized or “piratical” copies, and from doing infringing business. But the copyright no longer prevents the item sold from being subject to the buyer’s whim. Once a consumer buys a book, a CD, or (if without restriction) an MP3 file, he can do with it what he pleases. He can sell it, lend it, bury it in a time capsule, or even destroy it, without accounting to the copyright owner.
What made the issue of importation difficult is another, entirely separate provision
of our copyright act. Its prohibits importing
pirated copies of copyrighted works while allowing legitimate copies in.
As often happens, the two separate Congresses that drafted these distinct provisions didn’t think nearly hard enough about how they fit together. In tandem, they are a drafting mess, with multiple, confusing and inconsistent internal-cross references to several basic provisions of the copyright act. Their histories are almost equally obscure.
The Supreme Court’s decision in the earlier case, Quality King Distributors, Inc. v. L’anza Research Int’l, Inc.,
was a mind bender. It tried valiantly to make sense of nonsense. But it strained the mind. I taught copyright law for 23 years. This earlier case was the only one for which I had to review my notes in detail (often several times) every time I taught it. Even my best students had trouble understanding the reasons for the Court’s decision.
I’ll spare you, gentle reader, the complexity of it all. In essence, that previous decision turned on a simple semantic point. The statutory clause expressing the first-sale doctrine
refers to copies “lawfully made under this title,” i.e., under our copyright act itself. Like nearly all our law, our copyright act has no direct effect outside our borders. So the Court decided that this language did not apply to copies lawfully made under foreign copyright laws.
In this earlier case, the copies at issue had been made in the United States, exported, and then imported without the copyright owner’s permission. Since the original manufacture had occurred here at home, the earlier Court decided that “this title” applied, and so did the first-sale doctrine. Therefore, the copyright owner could not prevent the importation of the home-made and exported copies.
In her concurring opinion in this earlier case, Justice Ginsburg called the copies’ history a “round trip.” While agreeing with the majority ruling, she emphasized this point. She strongly implied that a copyright owner could
exclude from importation copies lawfully made and first sold abroad. While less clear on this point, the majority seemed to accept this logic of their largely semantic ruling.
Together, the two opinions in the earlier case seemed to leave little doubt how the Court would rule in the more pedestrian case, when copies are lawfully manufactured and first sold abroad. The hints were as strong as any the Court leaves as guidance for future decisions.
But last Tuesday’s decision rejected those hints entirely. It re-interpreted the language of the copyright act, holding that copies lawfully manufactured abroad and first sold there, like their counterparts lawfully sold here first and later exported, can be imported and resold freely by anyone, whether or not the US copyright owner objects.
Now here’s the bit of inside baseball. Lawyers and judges know that hints
in previous cases are not the law. They are only hints, which lawyers and judges call “dicta.”
Under our Constitution, judges can decide only actual cases, not hypothetical ones. Since the previous decision involved exported copies, the Roberts Court was free to disregard these earlier hints.
Why the Court rejected those hints
Having disposed of the inside baseball, we can now cut to the chase. Did the Court do right in rejecting the clear hints from its own earlier decision?
It did. Economically and socially, the first-sale doctrine is a vitally important rule. It allows buyers to treat copies of copyrighted works like any tangible thing sold and bought in the marketplace. A similar rule applies to patented articles.
Imagine how much more complex your life would be if you had to trace the copyright or patent pedigree of every thing you bought and own in order to know when, how and even whether you can use it. The law and lawyers would not just dominate our society, as they do today. They would dominate all the tiny transactions of your everyday life and make its ordinary functioning a complex, over-lawyered hell.
The old English common law had a powerful antidote to this happening. It outlawed legal restraints on things you buy. It called them “restraints on the alienation of chattels,” and it nearly always struck them down. In so doing, it not only made your life much easier. It made free markets possible.
The common law’s disfavor of restraints on the alienation of chattels is a pillar of our competitive free-market system. The first-sale or exhaustion doctrine in intellectual-property law is an important corollary. It lets the intellectual-property owner control the making, marketing and distribution of copies of protected items, ie, the business protected by the intellectual property. But once the copies are sold under her authority, it keeps markets in them free. (As the Court had done in an old patent case, the Kirtsaeng
Court ignored that fact that the copyright owner had tried to limit geographic distribution of foreign-made copies with a restrictive notice. In so doing, the Court implied that restrictive licensing may
be possible, but must involve actual assent by the buyer, not mere notice.)
In re-enforcing this age-old principle, the Kirtsaeng
decision also advanced and accommodated two increasingly important facets of modern life: globalization and free trade. The first-sale doctrine has been a fact of commercial life in our nation since its Founding. To restrict its application simply because copies were first made and sold abroad would allow copyright owners to engage in a subtle form of trade protectionism.
That was exactly what the copyright owners had tried to do in both Quality King
. They had authorized the sale of protected products abroad, in the first case after export and in the second after foreign manufacture. But because of differences in the foreign markets and cultures, their foreign distributors had offered much lower prices than were available here at home. (That’s why Kirtsaeng was able to help finance his American education by buying authorized copies of textbooks in Thailand and reselling them here.)
By agreement with their foreign distributors, both copyright owners had tried to prevent the cheaper foreign copies from coming back into (or just into) the United States. For whatever reason, those agreements were ineffective. So when a discounter or Kirtsaeng bought those legitimate products abroad and imported them into the United States, the copyright owner sued to stop it from selling them.
In the Quality King
case, the Court let the cheaper foreign versions in. Why should it not do the same in Kirtsaeng
, when the copies’ initial manufacture and sale had been properly authorized by the copyright owner, merely because they had occurred abroad?
The dissenters in Kirtsaeng
said it should not because Congress intended it not to. They also noted that our international trade negotiators have pushed to avoid so-called “international exhaustion”—a point on which the TRIPs agreement—the intellectual-property part of the World Trade Organization agreements—is neutral. They argued that the provision prohibiting importation of unlawfully made foreign copies was designed to do just that. They acknowledged that their view would also restrict use and resale
of those copies after
importation, but they belittled the practical trouble those restrictions would cause.
In essence, the dissenters felt the Court’s decision would undermine the power to restrain unauthorized importation that Congress intended copyright owners to have. The majority felt that allowing that restraint would undermine the first-sale doctrine and the principle of unrestrained trade in chattels that lies at its core. In the end, the decision and the views on both sides were judgment calls, despite an enormous amount of ink wasted on semantics and attempts to divine Congress’ unclear intent.
In one small way, the Court’s decision may help bring jobs back home. If Kirtsaeng
had come out the other way, copyright owners who had cheap copies made abroad could block their importation into the US, while those who manufactured copies at home and exported them could not block their re-entry. Thus US copyright owners would have two
incentives to outsource the manufacture of copies abroad: (1) the legal ability to price discriminate between foreign and domestic markets, and (2) the presumed lower cost of manufacturing abroad. By ruling as it did, the Supreme Court avoided this possible additional cause of outsourcing.
The decision was a clear win for globalization, legal simplicity, practical simplicity, free markets, American jobs, and common sense. But it had to step over the barrier of the strong hints in the previous case. In doing so, it surprised Justice Ginsburg, who had phrased those hints most clearly in her concurrence, and who accordingly wrote a lengthy dissent in Kirtsaeng
. (It also embarrassed me, who had predicted a contrary result in my treatise, based on the earlier strong hints.)
Why the decision impacts far more than copyright law
In allowing products legitimately sold abroad to be imported no matter where they are made, last week’s decision was a practical one. It reaffirmed the age-old rule against restraints on the alienation of chattels. It leveled the playing field between products manufactured at home and abroad. It advanced globalization and free trade and struck a blow against protectionism. At the same time, it avoided an economic disincentive to keeping manufacturing jobs at home.
But it also had importance far beyond copyright. Chief Justice Roberts and the two Obama appointees to the Court (Justices Kagan and Sotomayor, both females) all joined the majority opinion. Their doing so suggests they are beginning to put their indelible stamp on the Court and our law.
There are two irreconcilably opposed views of judging. One holds that judges only “apply” the law; they don’t make it. The other holds that judges really make law, at least in deciding what the law is when it’s unclear.
Cases don’t rise to the attention of the United States Supreme Court when the law on point is clear. The mere fact that a dispute has come to the Court shows that the “law,” by itself, is not clear enough to decide the case. That’s why we have judges.
If the law is so unclear that it can’t decide a dispute big enough to justify the expense and years of delay of a trip to our Supreme Court, can you really say the law exists?
Maybe you can if you are a sophist. But there is little practical difference between a law that decides nothing (insofar as a particular case is concerned) and a law that does not exist. In either case, a human judge has to make a decision based on reason, wisdom, common sense, and simple justice. Human beings, sitting as judges, then must “make” the law.
There is nothing wrong with this. Our Constitution distinguishes judges from legislatures. Legislatures are “sovereign,” in much the same way that kings and queens once were. They can make law on anything
, including hypothetical cases and future contingencies. Judges can only make law in “cases and controversies” properly brought before them, which involve past
real disputes. In other words, they make law only when, in all practical effect, there is
no law that matters, and a real, live dispute awaits resolution.
This simple principle—a fundament of Anglo-American law—prevents unelected judges from ever sitting as legislatures or overstepping the bounds of their limited authority. They “make” law only when the legislature fails to do so—or when our Founders failed to do so in our Constitution— and then only when parties to a lawsuit bring a resulting dispute to their attention.
That is, in essence, the genius of Anglo-American common law. It is realistic. It recognizes that no legislature, however smart and prescient its members may be, can anticipate every contingency, let alone in the tricky and contentious process of political compromise. So it lets courts fill the gaps, as well as make law in a vacuum, as necessary to resolve real disputes and do justice.
In contrast, the so-called “civil law” that prevails in non-English-speaking jurisdictions pretends that legislatures are omniscient. Only their statutes are “law,” it says. Judges merely apply legislatures’ words, with little or no precedential effect, no matter how unclear those words may be. One judge can ignore another’s earlier decision because no judge has power to “make” law, for example, by precedent.
For about two decades, a small minority of justices on our Supreme Court have slyly tried to insinuate a civil-law system into our United States. Legislatures make the law, they said. Judges only apply it.
Anything else, they implied, is judicial “activism,” a pastime of Satan. God forbid that judges should even think
The result has been a generational pendulum swing toward empty formalism and away from wisdom and realism in judging. Semantics and sophistry became the lodestars. Even mentioning “policy” became verboten.
The two longest opinions in Kirtsaeng
amply demonstrate how this recent trend reduces judges’ focus to mindless trivia. Both the majority and Justice Ginsburg in dissent devote the vast bulk of their opinions to semantics. They delicately parse the language of the various inconsistent statutory provisions. Then they do the same with the legislative history.
What was their momentous conclusion after this Herculean effort? That the law is unclear. Both sides actually agree
on that point, although they scarcely acknowledge their agreement. Both sides could have cut dozens of largely worthless pages from their collective opus by acknowledging that fact and moving on. They could credibly have reached the same conclusion simply by observing that the case had made it all the way up to their supreme tribunal, and that they had agreed to review it.
But that’s not what they did. In their lengthy expositions, each side dissected and attempted to refute the other’s semantic reasoning, politely repeating it to demonstrate detailed understanding of the opposing view. As a result, the two chief opinions resemble summaries of opposing legal briefs, rather than decisions or rulings of a body endowed with constitutional authority.
One suspects that the clerks who produced the first drafts of each opinion actually cribbed much of this semantic clutter from the numerous legal briefs of the parties and amici curiae
. Wholly missing—until near the very end of lengthy discussions—is serious treatment of what the public and posterity care about: consequences.
Is it any wonder that such verbal shenanigans are causing the Court and the law to lose respect and public authority? Modern behavioral psychologists tell us how we humans really
make decisions. We intuit them. Then, and only then, we rationalize them with linear reasoning.
In the Kirtsaeng
case, putting all the inconclusive semantic nonsense first fooled no one. But it does keep most non-lawyers from reading on to the real
If you read the opinions carefully (and tirelessly!), the real basis of the majority’s and dissent’s views are crystal clear. Both sides agreed that the statute
is unclear on the precise point at issue. So the majority decided the case in a way that makes markets freer, the law simpler, and commerce in things subject to copyright protection more fluid. In contrast, the dissent discerned an unrealized intention on the part of Congress to allow copyright owners to engage in geographic price discrimination
. Since that practice might enhance the value of their copyrights and thereby, in the long run, encourage the creativity that copyright motivates, they would have given that unexpressed (or imperfectly expressed) intention legal force.
was a purely statutory case. The Constitution was not involved. So if Congress doesn’t like the Court’s decision, it can “overrule” it legislatively, any time it wants to.
There is just one practical problem with this nice theory. Congress is utterly dysfunctional. It can’t pass a budget—its most basic task—let alone decide how big to make our military, our public safety nets, or government itself.
Under these circumstances, what do we want our high Court to do? Do we want it to do what the majority did, namely, figure out, in the absence of clarity in existing law, what the best
law would be? Or do we want it to do what the dissent did, namely, try to divine what Congress may
have meant to do (but failed to express) when it was less dysfunctional, and follow that course? For me as a citizen, law professor and sometime lawyer, the right answer is obvious.
Although our Constitution was not at issue in Kirtsaeng
, I can’t leave the subject of the damage our anti-“activism” crusade has done to judging without a few words on interpreting our Constitution.
Where our Constitution
is at issue, the anti-“activism” inquisitors have a simple command. Judges should pore over every iota of history, trying to determine what our Founders, dead now for close to two centuries, thought in 1791 when they ratified our Constitution. Like mediums holding a seance, they plumb the minds of specters, whose lives, cities, technology, culture, livelihood and stresses were wildly different from ours.
I can’t imagine any exercise more ridiculous. As a citizen of a great, thriving democracy, I don’t want justices to hold seances, let alone live in the past. I don’t want them to imagine what they might think if they had been Thomas Jefferson or Alexander Hamilton in 1791. I want them to resolve modern problems with knowledge of all that has happened (and not happened) in the intervening 222 years, relying on the Founders’ general vision of a democratic society
, but without asking how they would have decided a narrow issue, let alone trying to call them back to life.
Our Founders’ vision (and their brilliance) is apparent from the Constitution as a whole
. But their views on particular issues (if they left any hints at all) are hardly relevant to our times. In their day, science was still in the womb. None of the things that enrich and complicate our modern lives existed—not electric power, cars, railroads, aircraft, radio, television, movies, the Internet, cell phones, nuclear weapons or automatic firearms.
What our Founders would have thought about our modern life and situation, when all these things do
exist and make a difference, are matters of sheer conjecture. They are just as speculative looking backward as science fiction is looking forward. Do we want our law to be based on retrospective science fiction?
No amount of historical research or speculation can build a time machine. If you really want to say what our Founders would have thought on most particular issues of modern importance, you just have to make the answer up. Far better to think for yourself
what would be a good
answer consistent with their general plan.
An even bigger problem is that our Founders were not all of one mind. Jefferson and Hamilton, among many others, had widely different ideas about the power and functioning of central government. Jefferson and Adams had similar disagreements about the advisability of war with France, which had been our national midwife.
So which is better? Choosing the Founder you like best, in order to cloak a decision made intuitively on other grounds? Or explaining the real basis for your decision?
That’s how I view the lengthy discussions of legislative semantics in Kirtsaeng
. They are a smokescreen—a mask to hide the real reasons for the main opposing
views. They come first only because our anti-“activism” crusade forces judges to pretend that judging is a mechanical process, like Chief Justice Roberts’ famous metaphor of a baseball referee calling balls and strikes.
Justice Antonin Scalia is the Grand Inquisitor of the anti-“activism” crusade. But he doesn’t credit legislative histories. He thinks that Congress ought to say what it means clearly in statutory language, not rely on background materials drafted largely by legislators’ staff.
Yet he joined the dissent in Kirtsaeng
. He pointedly refrained from joining Justice Ginsburg’s detailed (and excruciatingly long) expositions of legislative history. Nevertheless, he did not refuse to joint Part VI of the dissent, which states, “Congress intended to grant copyright owners permission to segment international markets by barring the importation of foreign-made copies into the United States.”
In other words, Scalia wants to force Congress to be clearer. But he joined both the part of the dissent that demonstrated a lack of sufficient clarity and the part that rewarded Congress for incompletely expressing its intent. Isn’t that inconsistent?
Semantics, sophistry and unexpressed intent. (And, for our Constitution, “original intent.”) Those have been the lodestars and will be the legacies of Scalia and his protégés. But his star is waning.
One reason is his intemperate dissent in Bush v. Boumediene
, one of the Supreme Court’s most important decisions in a generation
. There, the Court decided that the age-old writ of habeas corpus may
apply to aliens captured abroad, and that the Court itself retains power to decide when it does.
With that decision, we Yanks preserved our courts’ ability to restrain the Executive’s unchecked power—a restraint handed down to us nearly eight centuries ago in Magna Carta.
Scalia would have none of it. In his dissent, he hinted that the majority were activists. But in fact it was Scalia himself who would have been the activist. “America is at war with Islamic extremists[,]” he wrote. The rest of his dissent is a paean to raw Executive power in times of stress. He had little doubt that Dubya’s “war on terrorism” (an attack on a few hundred extremists and a noun) was a “war” in the same sense as our Civil War or World War II, the two bloodiest wars in our history, in each of which well over half a million of us died in combat.
You can agree or disagree with that point of view. But there is little doubt that it is “policy,” not law, let alone the law of habeas corpus
. The majority opinion in Boumediene
, penned by Justice Kennedy, confined itself to law and history. The contrast revealed Scalia, on the issue of judicial “activism,” to be an hypocrite of historic proportions.
So the world turns, and so the pendulum begins to swing back from sophistry to real decisions. Kirtsaeng
was a small step in that direction. It gave fulsome obeisance to semantics and legislative intent. But it also discussed consequences, consistency, wisdom, common sense and (dare I say it?) policy. Especially in a statutory matter, where Congress can—at least in theory—change the result of a court’s decision any time it wants to, that seems the least that judges can do.
It is no coincidence that Justice Breyer authored the majority opinion. He is the Court’s leading expert on antitrust law, what foreigners call “competition law.” He is therefore the Court’s leading economist. His brilliant book analyzing public regulation of natural monopolies is still a leader in its field.
Justice Breyer understands what makes free markets work and what can gum them up, including restraints on alienation. So where the law was unclear, he extended the first-sale doctrine, which keeps free markets free, into our modern, global economy, notwithstanding a lack of absolute clarity in the statute.
The two newest members of the Court, Justices Kagan and Sotomayor, signed on to Justice Breyer’s opinion. In so doing, they also recognized what judges really
do: make law where law is absent or unclear, bringing to bear their human wisdom and understanding of probable consequences. Judges are not automatons, and semantics is not law.
Chief Justice Roberts signed on, too. His personal philosophy of judging remains unclear. During his confirmation hearings, he made that famous analogy to calling balls and strikes. Does he really believe that we don’t want judges’ wisdom and judgment, just their eyesight?
In upholding most of so-called “Obamacare,” he took
a subtle and wise approach. He construed the word “tax” differently as used in legislation and our Constitution, with the finesse of a Cardozo or Brandeis. His end result (and no doubt his goal) was to let the political process, not unelected judges, decide how to manage a socioeconomic dispute over financing health care that had raged for a century and is still raging.
Perhaps his legal legerdemain was only a sign of judicial restraint. But at very least it revealed a mind acute to the need for wisdom, not just semantics and sophistry, in judging.
When Solomon ordered the baby split, there was no “law” to that effect. Any society that regularly split babies would not likely survive. But Solomon made his strange decree in order to reach a just and wise result. The real mother ended up with her child.
Consequences matter. Judicial decisions have real effects on people’s lives. We appoint judges as wise experts not so much for their technical knowledge of the law. That’s only a minimum requirement for judging, an admission ticket. Far more important, we seek the wisdom to make sure that the consequences of decisions where law is unclear are just, practical and reasonable. The process
of reasoning is secondary. Semantics and sophistry come in a distant third.
Neither dead words on paper nor attempts to read minds dead for nearly two centuries can make sure we reach wise decisions, let alone at the highest level. Only wise and astute minds, trained in the law and sensitive to human consequences, can do that. The length and focus of its longer opinions give more than a glance backwards, but Kirtsaeng
is yet another sign of a younger, more dynamic Court ready to abandon empty formalism and take up real judging again.
While joining Justice Breyer’s majority opinion in full, Justice Sotomayor (joined by Justice Alito) also penned a brief and incisive concurring opinion. Like Solomon, she would have split the baby, imposing restrictions on importation, but not on subsequent use and resale, of copies lawfully manufactured abroad. That approach might have better realized Congress’ intent in both of the relevant statutory provisions, but doing so would have required overruling Quality King
, just fifteen years after a unanimous decision. Apparently there was little support for that.
As I used to tell my students, in economics the word “discrimination” does not bear the taint that it does in interracial or inter-ethnic relations. Price “discrimination” is just selling the same thing to different customers at different prices.
Where it is lawful, price discrimination can be beneficial. For example, business and leisure air travelers pay famously different fares. Without that price discrimination, which airlines enforce largely by advance-purchase requirements for leisure travelers, tourists would pay much higher prices, and the airline industry would suffer from reduced traffic.
But price discrimination is not always
lawful. As I have explained in detail in another post
price discrimination often violates the antitrust laws. It does so, for example, when it is used as a means of subsidizing below-cost selling in one market in order to drive competition out and achieve a monopoly there.
Price discrimination is not always unlawful, or even unwise, as the airline example shows. Because the intellectual-property laws are exceptions to our general rule of free competition, Congress could rationally permit geographic price discrimination by copyright owners in order to increase the economic incentive for creativity that copyright protection provides. What the majority and dissent in Kirtsaeng
disagreed on was whether Congress had actually done
so with sufficient clarity to decide the case, and whether the clarity, simplicity and free-market-preserving character of the first-sale doctrine required Congress to act with special clarity in undermining it.