96-1470

IN THE SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1996

QUALITY KING DISTRIBUTORS, INC., PETITIONER

v.

L'ANZA RESEARCH INTERNATIONAL, INC.

ON WRIT OF CERTIORARI
TO THE UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

BRIEF FOR THE UNITED STATES
AS AMICUS CURIAE SUPPORTING RESPONDENT

SETH P. WAXMAN
Acting Solicitor General

FRANK W. HUNGER
JOEL I. KLIEN
Assistant Attorneys General

LAWRENCE G. WALLACE
Deputy Solicitor General

PATRICIA A. MILLET
Assistant to the Solicitor General

MICHAEL JAY SINGER
IRENE M. SOLET
Attorneys

Department of Justice
Washington, D.C. 20530-0001
(202)514-2217
                     
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QUESTION PRESENTED

The Copyright Act of 1976, 17 U.S.C.  101 et seq.,
accords the owner of a copyright "the exclusive
right  * * *  to distribute copies or phonorecords of
the copyrighted work to the public."  17 U.S.C.  106(3).
Under the first sale doctrine, however, the owner of a
particular, lawfully made copy of a copyrighted work
may, without the consent of the copyright owner,
"sell or otherwise dispose of the possession of that
copy."  17 U.S.C.  109(a).  A separate section of the
Copyright Act provides that  "[i]mportation 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."
17 U.S.C.  602(a),  The  question  presented is:

Whether, when a copyright owner  has  sold  copies of
its copyrighted work abroad but has not authorized
their importation into the United States, the first
sale doctrine precludes the copyright owner from
suing for copyright infringement, under Section
602(a), a subsequent purchaser who imports those
copies into the United States.

(I)

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TABLE OF CONTENTS

Page

Interest of the United States  . . . .  1
Statement  . . . .  2
Summary of argument  . . . .  5

Argument:

A copyright owner's right to prevent infringement
through the unauthorized importation of copies of
its work is not affected by the first sale of those
copies abroad  . . . .  7

A.  The first sale doctrine of Section  109(a) does
not extend to importation  . . . .  7
1.  Plain language  . . . .  8
2.  Legislative  history  . . . .  10
3.  Petitioner's  proposed  construction  would
deprive Section  602(a) of any practical
application  . . . .  16

B.  The importation right created by Section 602(a)
is distinct from the distribution right that is
subject to the first sale doctrine  . . . .  18
1.  Plain language  . . . .  18
2.  Legislative  history  . . . .  21

C.  Application of the first sale doctrine to the
unauthorized importation of copies sold abroad
would be inconsistent with international agree-
ments negotiated by the United States  . . . .  22
D.  Alternative constructions of  the interrela-
tionship of Sections 602(a) and 109(a) are
incorrect  . . . .  27

Conclusion  . . . .  31

(III)

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IV

TABLE OF AUTHORITIES

Cases:

A.  Bourjois  &  Co.  v.  Katzel, 260  U.S.  689  (1923)  . . . .  28
BMG Music v.  Perez, 952 F.2d  318  (9th Cir.
1991), cert.  denied, 505  U.S.  1206  (1992)  . . . .  29
Bailey  v.  United States, 116S. Ct.  501  (1995)  . . . .  9, 20
Blackmer  v.  United States, 284 U.S.  421  (1932)  . . . .  16
Bobbs-Merrill Co.  v.  Strausy 21 U.S.  339  (1908)  . . . .  3
Brotherhood of Locomotive Engineers  v.  Atchison,
Topeka   &  Santa  Fe  R.R., 116S. Ct. 595  (1996)  . . . .  8
Columbia Broadcasting Sys., Inc.  v.  Scorpio Music
Distribution, Inc., 569 F. Supp.  47  (E.D. Pa. 1983),
aff'd mem., 738 F.2d 421  &  424  (3d Cir. 1984)  . . . .  17, 29
Gozlon-Perez  v.  United States, 498  U.S.  395
(1991)  . . . .  10 
Harper  &  Row, Publishers, Inc.  v.  Nation Enter-
prises,  471  U.S.  539  (1985)  . . . .  28
INS  v.  Cardoza-Fonseca, 480 U.S.  421  (1987)  . . . .  17
K Mart Corp.  v.  Carter, Inc., 486 U.S.  281
(1988)  . . . .  28 
Mazer  v.  Stein, 347  U.S.  201  (1954)  . . . .  7, 28
Mills Music, Inc.  v.  Snyder, 469  U.S.  153  (1985)  . . . .  11
Parfums Givenchy, Inc.  v.  C  &  C  Beauty Sales,
Inc., 832 F. Supp. 1378 (C.D. Cal. 1993)  . . . .  29, 30 
Sebastian  Int'l, Inc.  v.  Consumer Contacts  (PTY)
Ltd., 847 F.2d 1093  (3d Cir. 1988)  . . . .  5, 27 
Sony Corp.  of Am.  v.  Universal City Studios, Inc.,
464 U.S.  417  (1984)  . . . .  17, 28 
United States  v. Shabani, 513 U.S. 10 (1994)  . . . .  10, 15 
United States  v. Smith, 499 U. S. 160(1991)  . . . .  9  
Vimar Seguros y Reaseguros, S.A.  v.  M/V Sky
Reefer,  515 U.S.  528  (1995)  . . . .  25 

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V

Page 

Constitution, treaties,  statutes  and  regulations:     

U.S.   Const.  Art. I,  8, Cl.  8  . . . .  2
Agreement  Between  the United States  of America
and the Kingdom of Cambodia  on Trade Relations
and Intellectual Property Rights Protection
(signed at Washington Oct, 4, 1996)  . . . .  23
Agreement Concerning the Protection And Enforce-
ment of Intellectual Property Rights Between the
Government of the United States of America and
the Government of Ecuador  (signed at Washington
Oct. 15,1993)  . . . .  23
Agreement Concerning the Protection and Enforce-
ment of Intellectual Property Rights Between the
Government of the United States of America and
the Government of Jamaica  (signed at Kingston
Mar. 17,1994)  . . . .  23
Agreement on the Protection and Enforcement of
Intellectual Property Rights Between the United
States of America and the Democratic Socialist
Republic of Sri Lanka  (signed at Colombo Sept.
20, 1991)  . . . .  23-24
Berne Convention for the Protection of Literary and
Artistic Works, Art.  5(2) (1971)  . . . .  15-16, 24
Memorandum of Understanding Between the
Government of the United States of America
and the Government of Trinidad and Tobago
Concerning Protection of Intellectual Property
Rights  (signed at Washington Sept.  26, 1994)  . . . .  23
Universal Copyright Convention  (1971)  . . . .  24
Copyright Act of 1976, Pub.  L.  No.  94-553, 90 Stat.
2541  . . . .  20
Copyright  Act of 1976, 17 U.S.C. 101  et  seq. . . . 1, 2
17 U.S.C.  101  . . . .  27, 28
17 U.S.C.  106 (1970)  . . . .  10
17 U.S.C.  106  . . . .  19, 20, 21
17 U.S.C.  106(3)  . . . .  2, 4, 7, 18, 19, 21
17 U.S.C.  106A  . . . .  19

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VI

Statutes and regulations-Continued:        

Page

17 U.S.C.  107 (1970)  . . . .  10
17 U.S.C.  109(a)  . . . .  passim
17 U.S.C.  501  . . . .  3, 19
17 U.S.C.  501(a)  . . . .  3, 19
17 U.S.C.  502-505  . . . .  3
17 U.S.C.  506(a)  . . . .  3
17 U.S.C.  601  . . . .  30
17 U.S.C.  601(a)  . . . .  19-20, 30
17 U.S.C.  602  . . . .  13, 14, 19
17 U.S.C.  602(a)  . . . .  passim
17 U.S.C.  602(a)(l)  . . . .  9
17 U.S.C.  602(a)(2)  . . . .  9
17 U.S.C.  602(a)(3)  . . . .  9
17 U.S.C.  602(b)  . . . .  13
17 U.S.C.  701  . . . .  1
17 U.S.C.  1002(a)  . . . .  20
17 U.S.C. 1008  . . . .  20
Semiconductor Chip Protection Act of 1984,
17 U.S.C.  901 et seq.:
17 U.S.C.  905(2)  . . . .  20
17 U.S.C.  906(b)  . . . .  9, 15, 20
17 U.S.C.  907(a)  . . . .  20
17 U.S.C.  908  . . . .  10
35 U.S.C.  271(a)  . . . .  29
19  C.F.R.:
Section 133.21(b)  . . . .  28
Section 133.21(c)(1)  . . . .  28
Section 133.21(c)(2)  . . . .  28

Miscellaneous:

Copyright Law Revision:  Hearings on H.R.  4347,
H.R.  5680, H.R.  6831, H.R.  6835 Before Subcomm.
No.  3 of  the  House Comm. on  the Judiciary, 89th
Cong., 1st Sess.  (1965)  . . . .  14, 15
Department of State Telegram No.  384388  (Nov. 13,
1990)  . . . .  24, 26

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VII

Miscellaneous-Continued:

Page 

Department of State Telegram No.  175323  (Aug.  22,
1996)  . . . .  25, 26
House Comm.  on the Judiciary, 87th Cong., 1st
Sess., Copyright Law Revision:  Report of the 
Register of Copyrights on the General Revision 
of the U.S.  Copyright Law  (Comm.  Print July
1961  . . . .  11
House Comm.  on the Judiciary, 88th Cong., 1st
Sess., Copyright Law Revision Part 2:  Discus-
sion and Comments on Report of the Register of 
Copyrights on the General Revision of the U.S.
Copyright Law  (Comm.  Print Feb.  1963)  . . . .  11
House Comm.  on the Judiciary, 88th Cong., 2d
Sess., Copyright Law Revision Part 3:  Prelim-
inary Draft for Revised U.S.  Copyright Law
and Discussions and Comments on the Draft
(Comm.  Print Sept.  1964)  . . . .  12, 21
House Comm.  on the Judiciary, 88th Cong., 2d Sess.,
Copyright Law Revision Part 4:  Further Discus-
sions and Comments on Preliminary Draft for 
Revised  U.S.  Copyright Law  (Comm. Print Dec.
1964)  . . . .  12, 13, 21
 House Comm.  on the Judiciary, 89th Cong., 1st
Sess., Copyright Law Revision Part 6:  Supple-
mentary Report of the Register of Copyrights
on the General Revision of the U.S.  Copyright
Law  (Comm.  Print May 1965)  . . . .  11, 12, 13, 14, 15, 21
H.R.  Rep.  No.  2222, 60th Cong., 2d Sess.  (1909)  . . . .  10
H.R.  Rep.  No.  1476, 94th Cong., 2d Sess.  (1976)  . . . .  7-8, 14
15, 22, 30
S.  Rep.  No.  983, 93d Cong., 2d Sess.  (1974)  . . . .  22, 30
S.  Rep.  No.  473, 94th Cong., 1st Sess.  (1975)  . . . .  8, 14
15, 22, 30
S.M.  Stewart, International Copyright and Neigh-
bouring Rights  (2d ed.  1989)  . . . .  16

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IN THE SUPREME COURT OF THE UNITED STATES

OCTOBER TERM, 1996

No. 96-1470

QUALITY KING DISTRIBUTORS, INC., PETITIONER

v.

L' ANZA RESEARCH INTERNATIONAL, INC.

ON  WRIT  OF CERTIORARI

TO THE UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT

BRIEF FOR THE UNITED STATES
AS AMICUS CURIAE SUPPORTING RESPONDENT

INTEREST OF THE UNITED STATES
 
This case presents the question whether a copy-
right owner can prevent the importation into the
United States of copies of a work that it has sold
abroad, but that it has not authorized for importation.
The case turns upon the interpretation of three
separate provisions of the Copyright Act of 1976,
17  U.S.C.  101 et seq.  The United States has an
interest in the resolution of this question for several
reasons.  First, the United States Copyright Office,
which administers the Copyright Act, 17 U.S.C.  701,
and which contributed significantly to Congress's
drafting of the relevant provisions, has an interest in
ensuring the Act's proper construction. Second, the

(1)

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2

Court's resolution of the statutory question pre-
sented could have a substantial impact on the federal
government's foreign trade and copyright relations.
In international trade agreements and negotiations,
the United States has repeatedly endorsed the right
of copyright owners to control the terms and condi-
tions for importation and distribution of copies of
their works in their own countries.  Third, the federal
government has primary responsibility for enforcing
the antitrust laws, which establish a national policy
favoring economic competition as a means to advance
the public interest.
        
STATEMENT

1.  The Constitution vests in Congress the power
"[t]o promote the Progress of Science and useful
Arts, by securing for limited Times to Authors and
Inventors the exclusive Right to their respective
Writings and Discoveries,"  U.S.  Const. Art. I, 8,
Cl. 8.  Pursuant to that authority, Congress substan-
tially revised United States copyright law through
enactment of the Copyright Act of 1976, 17 U.S.C.  101
et seq.
The present case arises at the intersection of three
provisions of the Copyright Act.  1.  The first, 17  U.S.C.
106(3), provides that  "the owner of copyright under
this title has the exclusive right[]  * * *  to distri-
bute copies or phonorecords of the copyrighted work
to the public by sale or other transfer of ownership, or
by rental, lease, or lending."
    The second provision, 17  U.S.C.  109(a), expressly
limits Section 106(3), by providing that the owner of  a
lawfully made copy may  "sell or otherwise dispose of

___________________(footnotes)

1  The relevant provisions are reproduced at Pet.  App.  El-
E3.

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3

the possession of that copy"  without the copyright
owner's authorization.  Section 109(a) is often re-
ferred to as the  "first sale doctrine,"  because it is
generally viewed as providing that the copyright
owner's sale of a copy of his work terminates his
right to control distribution of that copy.  See also
Bobbs-Merrill  Co.  v.  Straus, 210 U.S.  339 (1908).
The last provision, 17 U.S.C.  602(a), states that
"[i]mportation 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 ac-
quired outside the United States is an infringement
of the exclusive right to distribute copies or phono-
records under section 106, actionable under section
501."  Section 501, in turn, provides that  "[a]nyone
who violates any of the exclusive rights of the
copyright owner as provided in sections 106 through
118  * * *,  or who imports copies or phonorecords into
the United States in violation of section 602, is an
infringer of the copyright,"  17 U.S.C.  501(a), and may
be subject to a civil action by the copyright owner, 17
U.S.C.  502-505.  2.
2.  Respondent manufactures and distributes in the
United States a variety of hair care products.  Pet.
App.  A2, B2.  Respondent has copyrighted the label
that is affixed to those products.  Id. at A3.  As part of
its marketing strategy, respondent requires its do-
mestic distributors to sell its products exclusively to
authorized vendors, such as beauty salons and col-
leges.  Id. at A2.  Respondent also sells to foreign
distributors, who may sell the products only within
defined geographical areas.  Ibid.  Respondent offers

___________________(footnotes)

2  In addition, the Copyright Act criminalizes willful copy-
right infringement undertaken  "for purposes of commercial
advantage  or  private financial gain."  17 U.S.C.  506(a).

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4

its products to overseas distributors at a reduced
price, because they  "do not receive the benefit of
[respondent's] extensive advertising and promotional
activities conducted in the United States but rather,
must market the products themselves."  Ibid.
Respondent sold the products in question here at a
discounted price through its distributor in the United
Kingdom to a foreign purchaser, L.  Intertrade.  Pet.
App. A2.  The sale occurred outside the United
States.  Id. at B6.  Respondent made the sale with the
understanding that its products and the label they
bear would be distributed only in Malta and perhaps
Libya.  Id.  at A2. L.  Intertrade, however, sold the
products to petitioner, which imported them into the
United States without respondent's permission and
subsequently sold them to several domestic buyers
for retail distribution.  Id. at A3.
3.  a.  Respondent sued petitioner and its customers,
alleging that the importation and subsequent dis-
tribution of the hair care products bearing the copy-
righted label, without respondent's authorization,
constituted copyright infringement under Sections
106(3)  and  602(a), contributory copyright infringe-
ment, and conspiracy.  Pet.  App.  A3; J.A.  32-33.  3.  Peti -
tioner asserted as an affirmative defense the first sale
doctrine of Section  109(a), J.A.  44.  Respondent moved
for summary judgment on the question whether the
first sale doctrine barred this action.  Pet.  App.  A4.
The district court granted summary judgment,
holding that Section  109(a)  does not bar liability
if the first sale occurs outside the United States.

___________________(footnotes)

3  The complaint also asserted intentional interference with
contract, intentional interference with prospective economic
advantage, and unfair competition claims under California law.
J.A.  33-37.  None of those claims is at issue at this stage.

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5

Pet.  App.  B6-B7.  The district court permanently
enjoined petitioner from  "importing"  and  "selling"
respondent's labeled products if they were obtained
overseas, and awarded a stipulated amount of dam-
ages.  J.A.  113-114.
b.  The court of appeals affirmed, holding that the
first sale doctrine does not limit the copyright
owner's importation right under Section 602(a).  Pet.
App.  A1-A23.  Unauthorized imports, the court ex-
plained,  "cause copyright owners to lose control over
domestic distribution, thus driving prices down for
goods sold through authorized channels in, the  U.S.
market."  Id.  at A15.  The court further concluded
that Congress's expansion of Section  602(a) in the
1976 Copyright Act  "would be rendered meaningless
if  109(a)  were found to supersede the prohibition on
importation."  Id. at A9.  The court of appeals ac-
knowledged that its decision was inconsistent with
the Third Circuit's ruling in Sebastian Interna-
tional, Inc.  v.  Consumer Contacts  (PTY)  Ltd., 847
F.2d 1093 (1988).  Pet.  App.  A14.

SUMMARY OF ARGUMENT

This Court need look no further than the literal
terms of the Copyright Act to resolve the question of
statutory construction presented in this case.  First,
Section  109(a)'s first sale doctrine only restricts the
copyright owner's ability to prevent the copy owner
from  "sell[ing] or otherwise disposing]"  of the copy.
Importation is neither a sale nor a disposal of a copy
it is a distinct activity left unaffected by the first sale
doctrine.  Indeed, the exceptions that the importation
provision identifies pertain to copies that are im-
ported for purposes other than their further sale or
distribution.  Second, the language and structure of
the Copyright Act distinguish the copyright owner's

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6

importation right from the general distribution right
that is subject to the first sale doctrine.  Finally,
other intellectual property legislation reveals that,
when Congress intends an importation right to be
affected by a first sale, it says so in express terms.
The legislative history confirms that a first sale
abroad does not vitiate a copyright owner's right to
prevent importation of that copy to the United States.
Before 1976, the Copyright Act banned the importa-
tion only of pirated versions of a copyrighted work.
The 1976 Copyright Act expanded the importation
provision to make the unauthorized importation of
legitimate copies an infringement as well.  That ex-
pansion reflected a direct legislative response to
strongly voiced industry concerns over the problem of
parallel imports.  While the historical discussion of
the interrelationship between Sections  109(a) and
602(a) is limited, the relevant commentary supports
recognition of an importation right that is unaffected
by the first sale doctrine.  Petitioner's proposed in-
terpretation, by contrast, would empty of practical
significance Section 602(a)'s expansion to legitimate-
ly made copies.
Furthermore, the United States has repeatedly ad-
vanced in international trade negotiations the posi-
tion that the domestic copyright owner's right to
prevent parallel imports is not diminished by a first
sale abroad, and has strongly encouraged other na-
tions to adopt similar protections.  Adoption of peti-
tioner's proposed construction of the Copyright Act
would be inconsistent with a number of international
trade agreements concluded by the United States and
would directly undercut the United States' negotiati-
ng position regarding the terms of other proposed
intellectual property agreements, because it would be

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9

excepts from the copyright owner's control importa-
tions by the state or federal government  "for the use
of  the  Government"  (17 U.S.C.  602(a)(1)); importations
for  "private use"  (17 U.S.C.  602(a)(2)); and importa-
tions by  "organization[s] operated for scholarly, edu-
cational, or religious purposes and not for private
gain"  (17 U.S.C.  602(a)(3)).  Congress thus was aware
that importation constitutes an activity distinct from
sales and other disposals of goods.
Furthermore, if Congress had intended the first
sale doctrine to apply to sales abroad, the listing of
the three exceptions would have been unnecessary
because a first sale will have occurred almost any
time one of the excepted activities is undertaken.
Congress should not be presumed to have enacted
the exceptions as superfluous or redundant words.
Bailey v.  United States, 116 S.  Ct.  501, 507  (1995).  In
any event, had Congress intended the copyright
owner's importation right not to apply to copies
acquired abroad and then imported into the United
States, Congress would likely have provided such a
fourth exception to Section 602(a).  See United States
v.  Smith, 499 U.S.  160, 167 (1991) ("Where Congress
expressly enumerates certain exceptions to a general
prohibition, additional exceptions are not to be im-
plied, in the absence of evidence of a contrary legis-
lative intent.").
Finally, when, in the intellectual property arena,
Congress intended for a first sale to diminish the
importation right as well as the distribution right,
Congress expressly and deliberately included the
term  "import"  in the first sale provision.  See 17
U.S.C.  906(b) (owner of a particular semiconductor
chip product  "may import, distribute, or otherwise
dispose of or use"  that product without the authority

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10

of the owner of the mask  work).  6.  To judicially  supple-
ment Section 109(a)'s authority for the copy owner
"to sell or otherwise dispose of"  possession with the
additional ability to  "import"  copies, as petitioner pro-
poses, would set at naught Congress's express in-
clusion and exclusion of importation rights in the
different first sale provisions of its intellectual prop-
erty legislation.  See United States v.  Shabani, 513
U.S.  10, 14 (1994)  (when statutory term is absent. in
one statute, but explicit in a closely analogous stat-
ute,  "Congress' silence  * *  speaks volumes"); cf.
Gozlon-Perez  v.  United States, 498  U.S.  395, 404
(1991) ("Where Congress Includes particular lan-
guage in one section of a statute but omits it in
another section of the same Act,"  courts must  "pre-
sume[] that Congress acts intentionally and pur-
posely in the disparate inclusion or exclusion.").

2. Legislative history

The legislative history confirms that the first sale
doctrine does not limit the copyright owner's im-
portation right.  Prior to 1976, the Copyright Act
barred the importation only of pirated versions of a
copyrighted work.  17 U.S.C.  106, 107 (1970); see also
H.R.  Rep.  No.  2222, 60th Cong., 2d Sess.  17  (1909).
Amicus  AFTA  is correct (AFTA  Br. 11-12) that,
when the copyright law revision process commenced
in 1961, the Register of Copyrights initially proposed
retaining the narrow scope of the importation pro-
vision and not expanding it to address importations in
violation of  "agreements to divide international mar-
kets for copyrighted works."  House Comm.  on the
Judiciary, 87th Cong., 1st Sess., Copyright Law

___________________(footnotes)

6  The Copyright Office is charged with administering the
statutory protections afforded mask works.  See 17 U.S.C.  908.

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11

Revision:  Report  of  the Register of  Copyrights on
the General Revision of  the U.S.  Copyright Law 126
(Comm.  Print July 1961).  The purpose of the Regis-
ter's 1961 proposal, however,  "was not to state a final
Copyright Office position or even to argue the
ultimate merits of a particular point of view,"  but
rather was  "to furnish a tangible core around which
opinions and conclusions could crystallize."  House
Comm.  on the Judiciary,  89th  Cong.,  1st   Sess.,  Copy-
right Law Revision Part 6: Supplementary Report
of  the Register of Copyrights on the General Revi -
sion of  the  U.S. Copyright  Law  IX  (Preface) (Comm.
Print  May 1965).  7.
The narrow importation provision elicited a flurry
of opposition, Industry representatives explained that
copyright owners could not, as the Register's Report
had initially suggested, rely upon breach of contract
actions to enforce agreements limiting domestic im-
portation and distribution by foreign owners of copies.
See House Comm.  on the Judiciary, 88th Cong., 1st
Sess., Copyright Law Revision Part 2:  Discussion
and Comments on Report of the Register of Copy-
rights on the General Revision of  the  U.S.  Copyright
Law 212  (Comm. Print Feb. 1963)  (bringing such
lawsuits  "is expensive, burdensome, and, for the most
part, ineffective"); id. at 213  (noting circumstances
where  "[t]here is just no possibility of any contract
remedy"); id. at 275.

___________________(footnotes)

7  Although petitioner selectively disparages  (compare Pet.
Br.  21 with Pet.  Br.  16 n.7)  consideration of the copyright law
revision process as a guide to interpreting the Copyright Act of
1976, this Court has recognized its relevance.  See Mills Music,
Inc.  v.  Snyder, 469 U.S.  153, 159-161  &  nn. 14-25, 170-176 &
nn.37-42  (1985).

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12

In light of "  the detailed comments and  suggestions
[the Register]  had received,"  Copyright Law Revi-
sion Part 6, supra, at IX (Preface), the Copyright
Office prepared a preliminary draft to revise the
copyright law.    The draft proposed amending the
importation provision to afford statutory protection
for the copyright owner's efforts to prevent the un-
authorized importation of its work and provided that
this right would be enforceable by the copyright
owner in an infringement action.  See House Comm.
on the Judiciary, 88th Cong., 2d Sess., Copyright Law
Revision Part 3:  Preliminary Draft for Revised
U.S.  Copyright Law and Discussions and Comments
on the Draft 28, 32  (Comm.  Print Sept.  1964).  The
Copyright Office explained that the new provision
would pertain to foreign copies that, although prop-
erly authorized for distribution abroad,  "if sold in the
United States, would be sold in contravention of the
rights of the copyright owner who holds the exclusive
right to sell copies in the United States."  House
Comm. on the Judiciary, 88th Gong., 2d Sess., Copy-
right Law Revision Part 4:  Further Discussions
and Comments on Preliminary Draft for Revised
U.S.  Copyright Law 203  (Comm.  Print Dec.  1964).
The draft thus envisioned that the copyright owner's
authorization for the sale or manufacture of copies
abroad would not affect the copyright owner's  "ex-
clusive right to sell copies in the United States."
Ibid.; see also id.  at 205-206,209-210.
As petitioner and amicus AFTA both note  (Pet. Br.
22-23; AFTA Br.  13-14), the 1964 discussions on the
preliminary draft touched upon the interrelationship
of the first sale doctrine and the new importation
provision.  Copyright Law Revision Part  4, supra, at
211-212.  A full review of the exchange between indus-

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13

try representatives and the Copyright Office, how-
ever, reveals no statements supporting petitioner's or
AFTA's proposed view of the frost sale doctrine's
scope.  To the contrary, the exchange primarily
reveals that the propriety of importation will often
turn upon factual questions regarding what domestic
first sales and authorizations may have preceded
the importation.  See id.  at 211.  8.  In fact, when one
commentator voiced concern over the tension he
perceived between the first sale doctrine and the
importation right, the Copyright Office representa-
tive simply inquired whether the gentleman was
"presenting this as an argument against this kind of
provision."  Ibid.  Of course, if it were clear that the
first sale provision limited the importation right, the
comment would not have been construed as an
"argument against"  the new provision.
Despite that exchange, moreover, no substantive
language changes were made in either the first sale
provision or the importation provision that would
suggest that the former limits the latter.  And sub-
sequent descriptions and analysis of the importation
provision hinged its application solely on whether the
copyright owner authorized the importation, paying
no heed to whether the copyright owner had first sold
the copy abroad.  E.g., Second Supplementary Report

___________________(footnotes)

8  Indeed, it was because of the complex factual questions
that would frequently underlie the determination of whether
an importation was authorized by the copyright owner that
Section 602 does not require Customs agents to bar the entry of
lawfully made copies.  17 U.S.C.  602(b).  While the Copyright
Act requires Customs to prevent the importation of piratical
copies, enforcement of the importation right against lawfully
made copies acquired abroad is left to the copyright owner.
Ibid.; see also Copyright Law Revision Part 4, supra, at 212-
213;  Copyright Law Revision Part 6, supra, at XXVI  (Preface).

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14

of the Register of Copyrights on the General Revi-
sion of the.  U.S.  Copyright Law:  1975 Revision Bill
51  (Oct Dec, 1975)  (Section 602(a)  deals with  "un-
authorized importation of lawfully-made copies");
Copyright Law Revision Part 6, supra, at 149.  If the
importation were unauthorized, it could be enjoined
"before any public distribution  * * *  had taken
place."  Copyright Law Revision Part 6, supra, at
149.  Even where the  "copyright owner had authorized
the making of copies in a foreign country for dis-
tribution only in that country,"  importation of those
copies into the United States without the separate
authorization of the copyright owner "would be an
infringement and could be enjoined."  Id.  at 150;
see also Copyright Law Revision:  Hearing on
H.R.  4347, H.R, 5680, H.R.  6831, H.R.  6835 Before
Subcomm.  No. 3 of the House Comm.  on the Judici-
ary, 89th Cong., lst Sess.  1064  (1965)  (1965 House
Hearings)  (Section 602 makes it an infringement
of the U.S.  copyright owner's rights  "if copies or
phonorecords of any copyrighted work are imported
without his permission,"  even if the copies are
"authentically made abroad (e.g., under the authority
of the foreign copyright owner)"); id. at 1119  (im-
portation  "without the authority of the copyright
owner"  is an infringement).
The House and Senate reports accompanying the
Copyright Act of 1976 continued to discuss Sec-
tion 602 in those terms.  S.  Rep. No.  473, supra, at
151  ("unauthorized importation is an infringement
merely if the copies or phonorecords 'have been ac-
quired abroad' "); id. at 152  (" If none of the three
exemptions applies, any unauthorized importer of
copies of phonorecords acquired abroad could be
sued."); H.R.  Rep.  No.  1476, supra, at 169-170  (same).

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15

The legislative history of the first sale provision
also offers no support for petitioner's proposed ex-
pansion of Section  109(a)'s  scope beyond sales and
disposals of possession to include imports.  To the
contrary, descriptions of the first sale doctrine's
operation speak consistently in terms of sales or
other disposals of possession, without any reference
to the distinct activity of importation.  See, e.g.,  S.
Rep.  No.  473, supra, at 71  (first sale doctrine gives
copyright owner no ability to interfere with a legiti-
mate copy owner's decision to  "dispose of  [a copy by
sale, rental, or any other means"  or  "to transfer it to
someone else or to destroy it"); H.R.  Rep.  No.  1476,
supra, at 79  (same); Copyright Law Revision Part 6,
supra, at  29  (under  first  sale doctrine,  owner  of a copy
may  "  sell,  lend,  rent  it,   give  it away, or destroy it").
Finally, petitioner asserts that  "Congress was
* * *  aware of the view"  (Br. 22 n.9)  held by some
that the first sale doctrine  "should"  apply to foreign
sales, ibid.  (quoting 1965 House Hearings 468).  Con-
gressional cognizance, however, simply makes the
legislature's  failure  to  reference  importation  of those
foreign-sold  copies  in  Section  109(a)'s first sale provi-
sion, as it did in Section 906(b)'s separate first sale
provision, all the more telling.  Congress's silence
must be considered to reflect a deliberate legislative
judgment about the scope of Section 109(a), to which
this Court should defer.   See Shabani, 513 U.S.  at 14.  9.

___________________(footnotes)

9  In addition to being contrary to the statutory language
and congressional intent, petitioner's contention that a copy-
right owner's activities abroad  (a first sale)  can also diminish its
rights under domestic copyright law overlooks that interna-
tional copyright relations have generally been structured on
the principle of territoriality.  See, e.g.,  Berne Convention for
the Protection of Literary and Artistic Works, Art. 5(2) (Paris

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16

3.  Petitioner's proposed construction would deprive
Section  602 (a)  of any practical application

By extending Section 602(a)'s importation protec-
tion from solely piratical copies to copies acquired
abroad, the 1976 Copyright Act worked a significant
expansion in the rights of copyright owners.  Yet if,
as petitioner urges, the first sale doctrine extin-
guishes the importation right whenever the copies in
question were first sold abroad by the copyright
owner  (or with his authority), the copyright owner's
right under Section  602(a)  to prevent importation of
legitimate copies would be drained of practical signifi-
cance.  Indeed, the few remote and random factual
scenarios that petitioner is willing to concede would
still fall within  Section  602(a)  reveal how cramped and
circumscribed petitioner's proposed statutory con-
struction   is.  10.  Tellingly, those examples make no
significant appearance in the legislative history of
the revision process and receive no mention in the
House or Senate reports accompanying the 1976
legislation.

___________________(footnotes)

Act 1971).  See generally S.M.  Stewart, International Copy-
right and Neighboring Rights M 3.16-3.17, at 37-39  (2 d ed.
1989)  (discussing the territoriality principle in the context of
the national treatment obligations under international copy-
right conventions);  of Blackmer   v.  United States, 284 U.S.  421,
437 (1932).

10  See Pet.  Br.  26-27  (limiting infringement suits for the
unauthorized importation of legitimate copies to  (1)  a thief who
stole the copies,  (2)  a bailee who had possession but not owner-
ship of the copies,  (3)  a licensee who was licensed to reproduce
the work but did not have title to the copies he produced, or
(4)  an entity that somehow produced copies under a foreign
copyright without the authorization of the  U.S.  copyright
owner).

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19

at 660, 661.  "Distribution,"  on the other hand, ad-
dresses the activity that generally precedes or post-
dates importation:  "To divide and dispense in por-
tions; parcel out,"  American Heritage Dictionary,
supra, at 383, by, in the terms of the Copyright Act,
"sale or other transfer of ownership, or by rental,
lease, or lending,"  17 U.S.C.  106(3).  See also IV
Oxford English Dictionary, supra, at 867.  The two
terms thus address discrete steps in an overall eco-
nomic undertaking by a copyright owner.
The Copyright Act, moreover, repeatedly identifies
importation as an activity separate and apart from the
conduct protected by Section 106, which includes
distribution.  Section 501, for example, defines "in-
fringement of  copyright"  as  follows:

Anyone who violates any of the exclusive rights of
the copyright owner as provided by sections 106
through 118 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.

17 U.S.C.  501(a) (emphasis added).  Congress thus
specifically recognized a violation of Section 602's
importation right to be a distinct and separate in-
fringement of the copyright.  12.
The Copyright Act's manufacturing clause, like-
wise, expressly describes  "importation"  and  "public
distribution"  as two distinct regulated activities.  17
 
___________________(footnotes)

12  This provision also answers petitioner's contention  (Br. 16-
17)  that, if Congress intended Section 602 to create a distinct
right, it would have framed Section 602 like Section 106A,
which petitioner concedes creates a separate and independent
right. Section 501(a)  accords Section 602 the same textually
distinct status as a basis for infringement that it affords Section
106A.

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20

U.S.C.  601 (a).  See also  17 U.S.C.  1002(a)  (''No person
shall import, manufacture, or distribute any digital
audio recording device or digital audio interface
device.")  (emphasis added), 1008  ("No action may be
brought under this title alleging infringement of
copyright based on the manufacture, importation, or
distribution"  of specified digital devices)  (emphasis
added); cf.  17  U.S.C.  905(2)  (exclusive rights in mask
works include "to import or distribute a semi-
conductor chip product in which the mask work is
embodied")  (emphasis added),  906(b)  (owner of a par-
ticular semiconductor chip product  "may import,
distribute, or otherwise dispose of or use"  that chip),
907(a) (innocent purchaser shall incur no liability for
"importation or distribution") (emphasis added).
Congress's persistent, disjunctive use of the two
terms counsels against a construction of the Copy-
right Act, such as petitioner proposes, that would
render those references  to  importation  redundant  and
of no independent force.  Bailey, 116 S.  Ct.  at 506-507
(statutory construction begins  "with the assumption
that Congress intended each of its terms to have
meaning"  and  "[j]udges should hesitate  * * *  to
treat [as surplusage] statutory terms in any set-
ting").  Congress's physical separation of the im-
portation right into its own chapter of the Copyright
Act further underscores its distinct identity.  See
Pub.  L.  No. 94-553,90 Stat. 2541.
It is true that Section 602(a)  describes a proscribed
importation as an infringement of the Section 106
"right to distribute copies or phonorecords."  That
connection, however, was meant to identify who may
sue to enforce the Section 602  importation right, not
to delimit the scope of that right. The initial draft
legislation creating the importation right identified

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21

the unlawful importation as  "an infringement of
copyright actionable under section  35  [the precursor
to Section 501]."  Copyright Law Revision Part 3,
supra, at 32.  The language was subsequently recon-
figured to make clear that only copyright owners who
retain their distribution rights can enforce the im-
portation right.  That change ensured that copyright
owners who are subject to a compulsory license  (and
thus have no Section 106(3)  distribution right)  could
not interfere with importations.  See Copyright Law
Revision Part 4,  supra, at 205-206, 211, 213.

2.  Legislative history

The legislative history confirms that drafters
considered the importation right to be distinct from
and supplementary to the previously recognized
rights of copyright owners.  When the precursor to
Section  602(a)  was first proposed in a preliminary
draft of legislation prepared by the Copyright Office,
the Copyright Office explained that, as before, an in-
fringement action could be based upon violation of the
rights currently outlined in Section 106  (then Section
5).  Copyright Law Revision Part 4, supra, at 116.
The Copyright Office noted, however, that the draft
"add[ed] a new concept: that an importation  [of non-
pirated works]  into the United States is an infringe-
ment. We don't have that in the law now."  Ibid.
(emphasis added).  See also Copyright Law Revision
Part 6, supra, at 131  (unauthorized importation is an
act of infringement that is "in addition to violations
of the copyright owner's exclusive rights,"  such as
distribution)  (emphasis added); id. at 149 (Section
602(a) violation can occur  "even before any public
distribution of imported copies or phonorecords ha[s]
taken place").

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22

The House and Senate reports accompanying the
1976 Copyright Act confirmed the status of  importa-
tion as a distinctly protected right.  Both reports
explained that an  "unauthorized importation"  is an
infringement  "merely if the copies or phonorecords
'have been acquired outside the United States.'"
H.R.  Rep.  No.  1476, supra, at 169; S.  Rep.  No.  473,
supra, at 151; see also H.R.  Rep. No. 1476, supra, at
170  ("[T]he mere act of importation in this situation
would constitute an act of infringement and could be
enjoined."); S.  Rep.  No.  473, supra, at 152 (same);
S.  Rep.  No.  983, 93d Cong., 2d Sess.  201 (1974) (same).
Distribution was thus considered unnecessary to
state a violation of the copyright owner's importation
right:  "[A]ny unauthorized importer of copies or
phonorecords acquired abroad could be sued for dam-
ages and enjoined from making any use of them, even
before any public distribution in this country has
taken place."  H.R.  Rep. No. 1476, Supra, at 170;
S. Rep. No. 473, supra, at 152.  In sum, Congress did
not make an exercise of the importation right de-
pendent upon whether or how the copyright owner's
distribution right had been exercised.

C.  Application Of The First Sale Doctrine To The
Unauthorized Importation Of Copies Sold Abroad
Would Be Inconsistent With International Agree-
ments Negotiated By The United States

The United States has taken the position in inter-
national trade negotiations that domestic copyright
owners should, and do under United States law, have
the right to prevent the unauthorized importation of
copies of their work sold abroad. Currently, at least,
five international trade agreements embody that
principle and will obligate the United States to pro-

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23

vide such protection in its copyright law.  13.  See
Agreement Between the United States of America
and the Kingdom of  Cambodia on Trade Relations and
Intellectual Property Rights Protection at 11  (signed
at Washington Oct. 4, 1996)  ("Each Party shall
provide to authors and their successors in interest
* * *  the right to authorize or prohibit  * * *  the
importation into the Party's territory of copies of the
work, regardless of whether such copies have been
placed on the market by the relevant right holder.");
Memorandum of Understanding Between the Govern-
ment of the United States of America and the Govern-
ment of Trinidad and Tobago Concerning Protection
of Intellectual Property Rights at 3  (signed at Wash-
ington Sept. 26, 1994)  (same); Agreement Concerning
the Protection and Enforcement of Intellectual Prop-
erty Rights Between the Government of the United
States of America and the Government of Jamaica at 5
(signed at Kingston Mar. 17, 1994)  ("Each Party shall
provide in respect of works protected under paragraph
(1)  of this Article, the economic rights of authors and
their successors in interest  * * *.  For this purpose,
the Parties agree that such rights shall include the
following  * * *  the right to authorize or prohibit
the importation into the territory of the Party
of copies of the work."); Agreement Concerning the
Protection and Enforcement of Intellectual Property
Rights Between the Government of the United States
of America and the Government of Ecuador at 4-5
(signed at Washington Oct. 15, 1993)  (same); Agree-
ment on the Protection and Enforcement of Intel-
lectual Property Rights Between the United States
of America and the Democratic Socialist Republic of

___________________(footnotes)

13  Although all of the agreements have been signed, not all of
them have entered into force at this time.

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24

Sri Lanka at 3 (signed at Colombo Sept. 20, 1991)
(defining rights that each party shall protect to
include "the exclusive right to import or authorize
the importation into the territory of the Party of
lawfully made copies of the work'').  14.
The United States has also advanced this position
in multilateral trade negotiations. See, e.g., World
Intellectual Property Org., Draft Proposal Submitted
to the Committee of Experts on a Possible Protocol
to the Berne Convention 4  (Dec. 5, 1995) ("Authors
and their successors in interest shall have the
exclusive right to authorize  * * *  the importation,
including by transmission, of the original and copies
of the work, even following any sale or other transfer
of ownership of the copies by or pursuant to authori-
zation and irrespective of whether the imported
copies were made with or without authorization.");
World Intellectual Property Org., Draft Proposal
Submitted to the Committee of Experts on a Possible
Instrument for the Protection of the Rights of
Performers and Producers of Phonograms 2  (Dec. 5,
1995) (same, with respect to musical performers' con-
trol of  phonograms).  15.  Even when the United States
has not been successful in having parallel import
protection included in final treaty language, the
United States' strong position on this question has

___________________(footnotes)

14  We have lodged copies of these five international trade
agreements, along with the draft agreements and State Depart-
ment telegrams discussed infra, with the Clerk of the Court.

15  See also Department of State Telegram No.  38488, at 4-5
(dated Nov. 13, 1990) (describing United States negotiating
position).  Neither the Universal Copyright Convention  (1971)
nor the Berne Convention for the Protection of Literary and
Artistic Works addresses the issue of parallel imports.

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25

prevented the adoption of language that would spe-
cifically deny copyright owners the authority to
control importation of copies of their work acquired
abroad.

As this Court has recognized,
[i]f the United States is to be able to gain the
benefits of international accords and have a role as
a trusted partner in multilateral endeavors, its
courts should be most cautious before interpreting
its domestic legislation in such manner as to
violate international agreements.

Vimar Seguros y Reaseguros,  S.A.  v.  M/V Sky
Reefer, 515 U.S.  528, 539 (1995).  Petitioner's proposed
construction of the Copyright Act, however, would
require this Court to adopt an interpretation of the
Act that is inconsistent with our commitments under
international agreements and our representations to
foreign governments regarding the status of United,
States copyright protection against parallel imports.
See also Department of State Telegram No.  175323, at
3 (dated Aug.  22, 1996)  ("If a U.S.  copyright owner
consents to the sale of its goods in  [for example]
China, it has not exhausted its rights to control dis-
tribution as to those copies should they be imported
into the U.S. ");  Department of State Telegram No.
384388, at 3,7-10  (dated Nov.  13, 1990).
The provision of such domestic and international
protection against parallel imports to copyright
owners, moreover, reflects important international
economic development policies of the United States,
especially with respect to developing nations. With
the encouragement of the federal government, book
publishers and other producers of copyrighted materi-
als have offered special and cheaper editions of their

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26

works to meet  local needs in underdeveloped coun-
tries.  Effective restrictions on the export of those
special editions back to the United States are critical
to maintaining the willingness of American busi-
nesses to offer products with concessionary pricing
to developing countries and thus to support Ameri-
can foreign policy goals.  See Department of State
Telegram No.  384388, supra, at 4  ("In effect, the
U.S.  private sector has voluntarily reflected U.S.
Government policy in seeking to assist and support
lesser developed countries.  If these special editions
could be introduced into other markets in competi-
tion with locally authorized editions, the ability of
publishers to support these concessions by adequate
reward from worldwide markets would be impaired.").
Petitioner's proposed limitation on the importation
right would seriously frustrate the federal govern-
ment's pursuit of this important international devel-
opmental and economic policy.  16.

___________________(footnotes)

16  Even if we assume that it has some relevance to the
statutory construction issue presented, petitioner's suggestion
(Pet.  Br.  3, 7-9, 29-31; Pet.  20-23)  that a narrow reading of
Section 602(a)  would best promote the economic interests of
American citizens fails to take account of these international
economic concerns.  Over the long term, promoting economic
growth in lesser-developed nations through lower prices for
copyrighted materials can increase both the demand for domes-
tic production and competition in the affected markets.  Fur-
thermore, petitioner's proposed construction of the Copyright
Act could reduce exports and, therefore, lower domestic em-
ployment.  Petitioner's position might also result in curtailed
promotional activities by U.S.  manufacturers, which could
harm consumers.   Protection from parallel imports, on the
other hand, permits the efficient partitioning of the world into
national markets and the customization of product marketing
to meet local needs and circumstances.  See also Department of
State Telegram No.  175323, supra, at 3  (The effects of parallel

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27

D.  Alternative Constructions Of The Interrelationship
Of Sections 602(a)  And 109(a)  Are Incorrect

None of the alternative approaches adopted by
courts in construing Sections 109(a)  and  602(a)  of the
Copyright Act can withstand scrutiny.
1.  Some  courts  have  read  into  Section 109(a) a dis-
tinction between copies made and sold by the copy-
right owner and those made and sold by a licensee.
See, e.g.,  Sebastian  Int'l, Inc.  v.  Consumer Contacts
(PTY)  Ltd., 847 F.2d 1093, 1098  (3d Cir. 1988).  But
neither the language of the first sale provision nor its
legislative history assigns any relevance to the iden-
tity of the seller of particular copies.  That omission
is not surprising, given the lack of significance in
copyright law of the identity of the person lawfully
exercising the copyright owner's rights.  Once
authorized by the copyright owner, a licensee can
exercise the licensed rights in the same manner as
the copyright owner.  In fact, the Act considers an
exclusive license to be a  "transfer"  of rights (17
U.S.C.  101), and denominates the licensee a "copy-

___________________(footnotes)

imports  "can be severe and quite contrary to the domestic
interests of a country.  In some cases, it will be so difficult for
[a] higher-priced domestically produced product to compete
with the less expensive import that domestic production will
cease.  This could result in the loss of the domestic manu-
facturing jobs and jobs related to the support of such manu-
facturing.  It could also result in the loss of tax revenue.").
More generally, petitioner's position would impede a copyright
owner's ability to distribute its products worldwide in the most
efficient manner, thereby leading to reductions in output. In
short, strong domestic and international economic policies
support Congress's grant of an importation right to copyright
owners that is not affected by a first sale abroad.

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28

right owner"  with respect to the licensed rights
(ibid. ).  17.       

___________________(footnotes)

17  The attempt to distinguish between sales by a copyright
owner and sales by a licensee in applying Section   109(a)  to
parallel imports confuses copyright and trademark concepts.
Unlike copyright law, trademark law looks to the identity of
the seller and its relationship to the right holder in determin-
ing whether the latter can bar parallel imports.  See, e.g., 19
C.F.R.  133.21(b), (c)(l)  and (2)  (creating an exception to the
statutory ban on importation of goods bearing a U.S.  trade-
mark without the owner's authorization for goods that are
manufactured by the trademark owner himself or a related
entity); K  Mart Corp.  v.  Cartier, Inc., 486 U.S.  281 (1988).
This Court has noted  "the fundamental differences between
copyright law and trademark law"  and has declined to apply
the doctrines formulated in one area to the other.  Sony Corp.,
464 U.S.  at 439 n.19.  Distinguishing the two areas of law is
particularly appropriate in the parallel import context.  The
purpose of copyright law is to encourage and reward creative
effort as a means of promoting the broad, public availability of
literature, music, and other arts.  Harper  &  Row, Publishers,
Inc.  v.  Nation Enterprises, 471 U.S.  539, 545-546, 558 (1985),
Allowing copyright owners to restrict parallel imports pro-
motes this goal by increasing the incentives to authors and
artists to produce and market their works.  The primary
purposes of trademark law, by contrast, are to protect against
consumer confusion as to the source of goods and to preserve
the public good will the manufacturer creates with its product,
See, e.g., Mazer, 347 U.S.  at 207- n.5  (discussing different
purposes of trademark and copyright law); A. Bourjois  &  Co.
v. Katzel, 260 U.S.  689, 692 (1923).  The importation into the
United States of genuine goods sold abroad does not implicate
those interests.
The reliance that amici Costco Companies, et al, place on
patent law  (Costco Br. 15-16) is also misplaced. Patent and
copyright law  "are not identical twins,"  so courts should exer-
cise  "caution  * * *  in applying doctrine formulated in one
area to the other."  Sony Corp.,  464 U.S.  at 439 n.19;  see  also id.
at 442.  In 1994, moreover, Congress amended the patent law to
provide that  "whoeverwithout authority makes, uses, offers to

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29

2.  Courts have also attempted to make the avail-
ability of the first sale doctrine turn upon whether
the copyright owner has realized  "full value"  for
its work.  E.g., Pet.  App.  A11; Parfums  Givenchy, Inc.
v.  C  &  C Beauty Saks, Inc., 832 F. Supp.  1378, 1391
(C.D.  Cal.  1993).  This approach, however, finds little
support in the text of the Copyright Act or its legisla-
tive history. Section  109(a)  applies to the owner of
any  "particular copy or phonorecord lawfully made
under [the Act],"  not merely to owners of copies for
which the copyright owner has received fill value.
Similarly, the copyright  owner's  parallel  importation
right in Section  602(a)  covers  "copies  * * *  of a work
that have been acquired outside the United States,"
without any limitation as to the value the copyright
owner may already have received for those particular
copies.  Furthermore, because the full value of a
copyright depends in part on the scope of the rights
the law conveys to the copyright owner, it is circular
to use full value to define the scope of the copyright
protection in the first instance.
3.  Finally, courts have made distinctions based on
the place where copies were manufactured, holding
that  Section  109(a)  does  not apply to copies manufac-
tured abroad.  See, e.g., BMG  Music  v.  Perez, 952 F.2d
318, 319 (9th Cir. 1991), cert. denied, 505 U.S. 1206
(1992); Columbia Broadcasting  Sys., Inc.  v.  Scorpio
Music Distribution,  Inc., 569  F. Supp. 47, 49  (E.D. Pa.
1983), aff'd  mem., 738 F.2d 421 & 424 (3d Cir. 1984)
(Tables).  Those courts have reasoned that the phrase
"lawfully made under this title"  in Section 109(a)

___________________(footnotes)

sell, or sells any patented invention, within the United States
or imports into the United States any patented invention
during the term of the patent therefor, infringes the patent."
35 U.S.C.  271(a).

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30

refers to authorized copies made within the United
States, where  "this title"  is applicable.
When, however, Congress wishes to make the loca-
tion of manufacture relevant to Copyright Act protec-
tion, it does so expressly.  See, e.g., 17 U.S.C.  601(a)
(prohibiting,  prior to July 1, 1986, importation into or
public distribution in the United States of copies of
certain works  "unless the portions consisting of such
[works] have been manufactured in the United States
or Canada").  Indeed, it is distinctly unlikely that
Congress would have provided such an incentive to
manufacture abroad at the same time it was shielding
the domestic printing industry under Section 601.  18.

___________________(footnotes)

18  The correct and more natural reading of the phrase
"lawfully made under this title"  refers simply to any copy
made with the authorization of the copyright owner as re-
quired by Title 17, or otherwise authorized by specific provi-
sions of Title 17.  See Parfums Givenchy, 832  F. Supp.  at 1387.
That reading is also consistent with the legislative history. See,
e.g., H.R.  Rep.  No.  1476, supra, at 79; S. Rep. No. 473, supra,
at 72 S.  Rep.  No.  983, supra, at 123.

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31

CONCLUSION

The judgment of the court of appeals should be
affirmed.

Respectfully submitted.

SETH P. WAXMAN
Acting Solicitor General

FRANK W. HUNGER
JOEL I. KLEIN
Assistant Attorneys General

LAWRENCE G. WALLACE
Deputy Solicitor General

PATRICIA A. MILLETT
Assistant to the Solicitor
General

MICHAEL JAY SINGER
IRENE M. SOLET
Attorneys

SEPTEMBER 1997

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