**Excerpt from Harvard Law Review
What “Design Copyright”?
C. SCOTT HEMPHILL AND JEANNIE SUK
Professors C. Scott Hemphill and Jeannie Suk offer their reaction to an aspect of the recent Supreme Court decision Kirtsaeng v. John Wiley & Sons, Inc.
Earlier this month, in an important copyright ruling, the Supreme Court dropped a puzzling clue about copyright for designs that merits examination. In an opinion authored by the Court’s foremost copyright scholar, Justice Breyer, the Court posited a “design copyright” for a “dress” made in China and then sold in the United States. The statement is striking because courts have traditionally denied the copyrightability of fashion designs, including dress designs; a proposed bill to add fashion designs to copyrightable subject matter has not yet been passed by Congress. In this Reaction, we explain the Court’s unexpected comment and why it matters.
The decision, Kirtsaeng v. John Wiley & Sons, addresses the “first sale” doctrine, which permits an owner of an authorized copy to “sell or otherwise dispose of” that copy without seeking permission of the copyright holder. This common-sense limitation on the copyright holder’s right to distribute his work embodies a principle of exhaustion, promoting the free alienability of goods and reducing transaction costs. The question in Kirtsaeng was whether this doctrine applies not only to copies made in the United States, but also to copies made abroad and imported into the United States. The question was in doubt because a separate provision of the Copyright Act prohibits importation without permission. An earlier case held that the first sale doctrine trumped if the work had done a “round trip” — produced in the United States, exported overseas, and then returned to the United States for resale. Kirtsaengaccorded the same treatment to the closely related situation in which the copy was instead produced overseas and sold in the United States.
The Court’s sudden fashion moment came in the course of explaining an undesirable consequence that would arise from a contrary result: that not only importers but also subsequent transferors of the imported work would need the copyright holder’s permission. That would severely limit the free transfer of a variety of copyrighted goods. The Court named as examples three apparently paradigmatic imported goods protected by copyright: “a video game made in Japan, a film made in Germany, or a dress (with a design copyright) made in China.”