DePaul University College of Law > Student Resources > Student Activities > Journals > Journal of Art, Technology & Intellectual Property Law > Symposium



Journal of Art, Technology, and Intellectual Property (JATIP) presents Copyright Law and Gray Market Goods: John Wiley & Sons v. Kirstaeng

In John Wiley & Sons, Inc. v. Kirtsaeng, 654 F.3d 210 (2d Cir. 2011), a publishing company brought an action against a defendant who was importing and selling textbooks within the US. The defendant had relatives in Thailand purchase foreign editions of textbooks legally printed abroad. The relatives would send the textbooks to the defendant and the defendant would sell them for a profit within the U.S. On appeal, the defendant argued that he should have been allowed to put forth a first sale defense. The Second Circuit affirmed the district court's rejection of a first sale defense based on a plain language interpretation of 17 USC § 602(a) and 17 U.S.C. § 109(a) and some dicta in Quality King Distributors, Inc. v. L'anza Research International, Inc., 523 U.S. 135 (1998). (Quality King involved goods that were manufactured within the US, sold abroad and then re-imported.). The Supreme Court granted cert. The Supreme Court had previously issued Costco Wholesale Corp. v. Omega, S.A., 131 S. Ct. 565 (2010), a 4-4 opinion dealing with whether or not the first sale defense was applicable to goods purchased outside of the US which were legally manufactured abroad. Justice Kagan did not take part in the Costco decision. Oral arguments were heard on Oct. 29, 2012. On March 19, 2013, Justice Breyer, writing for a majority of six, emphatically rejected the publisher’s control over the importation of “gray-market” products manufactured for overseas markets. The Court held that the “first sale” doctrine, which allows the owner of a copyrighted work to sell or otherwise dispose of that copy as he wishes, applies to copies of a copyrighted work lawfully made abroad. Justice Kagan filed a concurring opinion in which Justice Alito joined. Justice Ginsburg filed a dissenting opinion in which Justice Kennedy joined, and in which Justice Scalia joined except as to Parts III and V–B–1. The slip opinion is available here.

The program will consist of:
Noon - 1pm (1 hr IL CLE credit)
Distinguished Guest Speaker: Professor Tyler Ochoa from Santa Clara University School of Law
1pm - 1:15pm - Break, refreshments served
1:15pm - 2:15pm (1 hr IL CLE credit)

Panel Discussion featuring:

Professor Tyler Ochoa 
Special Guest Lecturer 
Tyler Ochoa is a Professor with the High Tech Law Institute at Santa Clara University School of Law in California. Professor Ochoa has co-authored several casebooks, including the popular casebook Copyright Law with Craig Joyce, Marshall Leaffer and Peter Jaszi, and Understanding Intellectual Property Law with Donald Chisum, Shubha Ghosh, and Mary LaFrace. In addition, Professor Ochoa has submitted three amicus briefs to the Supreme Court involving copyright law, and has spoken on copyright law on numerous occasions. Apart from his professional accomplishments, Professor Ochoa was a two-time champion on the television game show Jeopardy! and a champion on the television game show Win Ben Stein’s Money. He received his J.D. from Stanford Law School in 1987.

Kevin Tottis 
Kevin Tottis is the founder of the Law Offices of Kevin Tottis, a boutique intellectual property litigation firm in Chicago. Mr. Tottis has over 25 years of experience in intellectual property litigation, and has recently acted as counsel of record before the United States Supreme Court on the American Intellectual Property Law Association’s amicus filing in Kirtsaeng v. John Wiley & Sons, the case at the center of this Symposium. Mr. Tottis has given numerous talks on intellectual property, and has authored many articles on copyright law and litigation. Mr. Tottis received his J.D. from the University of Michigan Law School.

Professor Matthew Sag 
Matthew Sag is an Associate Professor of Law at Loyola University Chicago School of Law and also currently a visiting scholar at Melbourne University Law School. Professor Sag's research focuses on the intersection of law and technology. Professor Sag's works have been published in leading journals such as the California Law Review, the Northwestern Review and the Georgetown Law Journal. Prior to his academic work, Professor Sag practiced intellectual property law in the United Kingdom with Arnold & Porter, and in the Silicon Valley offices of Skadden, Arps. Professor Sag earned his law degree from the Australian National University.

Robert Paul 
Robert Paul is currently the Director of Business Operations at Compass Lexecon, a leading consulting firm specializing in damages, antitrust/mergers, securities, and other areas. Mr. Paul received his J.D. in 2012 from DePaul University College of Law. While at DePaul, Mr. Paul participated in several intellectual property student organizations and journals, including serving as the treasurer of the Intellectual Law Property Society, and serving as an editor for the Journal of Art, Technology & Intellectual Property Law.

Margit Livingston 
Margit Livingston is a Professor at DePaul University College of Law, where she teaches and writes in the areas of intellectual property, commercial law and animal law. Professor Livingston has published several articles for law reviews, and her most recent article, "Bewitched, Bothered and Bewildered: The Courts and Revised Article 9 of the Uniform Commercial Code Ten Years Later," was published in the DePaul Business & Commercial Law Journal. Apart from her writing, Professor Livingston has also won numerous awards for her teaching, scholarship and service, including the DePaul University Excellence in Teaching Award in 2008 and the DePaul College of Law Faculty Achievement Award in 2010. Professor Livingston earned her J.D. from the University of Minnesota Law School.

2:15 pm - 3pm - Reception to Follow the Panel Discussion 

Monday, April 8, 2013 
Noon to 2:15 p.m. 
Depaul Center 
Room 8005 
1 E. Jackson Blvd. 
Chicago, IL 60604


Journal of Art, Technology & Intellectual Property (JATIP) and Center for Intellectual Property Law & Information Technology (CIPLIT®)

Panel Discussion: Golan v. Holder and Constitutional Limits on the Copyright Power

In 1994, Congress amended U.S. copyright laws to allow for the restoration of foreign copyrights which had entered into the public domain in order to place the U.S. in compliance with our foreign treaty obligations under the Uruguay Round Agreements Act, codified as 17 U.S.C. §104A, 109.

In October 2011, the U.S. Supreme Court heard oral argument in Golan v. Holder, which challenges Section 514 of the Act. The Court's decision will establish critical precedents that define the limits of legislative power under the Copyright Clause and determine its relationship to the First Amendment. It also may shed light on the limits of the patent power in light of the Court's earlier dicta in Graham v. John Deere Co. that Congress may not withdraw existent knowledge from the public domain.


  • Robert Kasunic, Deputy General Counsel, U.S. Copyright Office
  • Professor Tyler Ochoa, Santa Clara University School of Law, author of an amicus brief on behalf of himself and another historical scholar
  • Professor Jennifer Urban, University of California Berkeley School of Law, author of an amicus brief on behalf of various public domain interests

Thursday, October 27, 2011 
4:00 p.m. - 5:15 p.m. (reception to follow)

DePaul Center, Room 8005 
1 East Jackson Boulevard 
Chicago, Illinois

This event is free, but seating is limited. Please RSVP to by October 24, 2011.

DePaul University College of Law is an accredited Illinois CLE provider. This program has been approved for up to 1 hour of CLE credit.