Yesterday the U.S. Supreme Court heard oral arguments in the closely watched copyright case of Supap Kirtsaeng v. John Wiley & Sons, Inc. The case concerns an interpretive conflict between two principles codified in the Copyright Act. One is the First Sale doctrine, which holds that once a copyright owner has made a lawful sale of a particular copy of a copyrighted work, the owner’s rights are exhausted and the owner can no longer control what happens to that particular copy, which can then be resold, leased, given as a gift, or even destroyed without risk of copyright infringement liability (Section 109(a)). The other is the Importation Ban principle, which holds that importing into the U.S., without permission of the copyright owner, copies of copyrighted works obtained overseas constitutes copyright infringement (Section 602(a)). The case arose when Supap Kirtsaeng, a Thai student pursuing a doctorate in California, asked family and friends in Thailand to purchase copies of foreign edition textbooks published by Wiley Asia and ship them to Kirtsaeng in California, so that Kirtsaeng could then sell those copies on eBay to U.S. customers. Wiley sued Kirtsaeng for copyright infringement under the §602(a) Importation Ban, and Kirtsaeng invoked the §109(a) First Sale doctrine as a defense.
The heart of the dispute is the interpretation of a phrase that occurs in §109(a) and says that the First Sale principle applies to copies “lawfully made under this title.” For Wiley, the key language is “under this title,” which Wiley glosses as “pursuant to Title 17” in reference to the Copyright Act, and so, for Wiley, the whole phrase applies only to goods made in the United States and restricts the First Sale principle in accordance with U.S. borders. For Kirtsaeng, the key language is “lawfully made,” which Kirtsaeng glosses as “made with the authority of the copyright owner,” so that the whole phrase can be interpreted to allow for manufacture anywhere in the world so long as the manufacturing is made with the authority of the copyright owner and in accordance with Title 17. If the Supreme Court adopts Kirtsaeng’s interpretation, Kirtsaeng has no liability, and if the Court adopts Wiley’s interpretation, Kirtsaeng is an infringer.
Counsel for Kirtsaeng began his argument by telling the Court that “Our definition is the more consistent with the English language,” which was not an argument that Kirtsaeng made in his briefs but which sounded the parsing tone of some of the argument on both sides. Returning to this point in the four minutes he allotted for rebuttal, he said the following:
“Justice Kagan asked a question about essentially sentence diagramming. Our view is that ‘under this title’ modifies ‘lawfully.’ You use the U.S. metric of U.S. law to figure out whether it’s lawful. The government’s and Wiley’s position is that ‘under this title’ modifies both ‘made’ and ‘lawfully.’ At least the way I learned grammar, you can’t use the same phrase to modify both terms.”
Although they would have risked being escorted out of chambers by Secret Service agents, any grammarians in the gallery might have been tempted to shout “Why not?” at this declaration of Kirtsaeng’s counsel, which was offered without any citation to authority. In my experience, the centuries-old pliancy of the supple hodge-podge of Anglo-Saxon, French, Latin, and Greek which we call English imposes no such inflexible restriction on the applicability of adverbs. H.W. Fowler, the grammarian’s grammarian, makes no mention of any such rule in A Dictionary of Modern English Usage (first published in 1944), and, in the context of linking verbs (which Fowler hilariously terms “copulative verbs”) he suggests that multiple modification by an adverb of both parts of a compound verb is entirely permissible: “it is a delusion to suppose that the insertion of an adverb between the two parts is a solecism, or even, like the splitting of the infinitive, a practice to be regarded as abnormal” (p. 449).
Unless a better authority than H.W. Fowler comes forward to support Kirtsaeng’s argument that there’s no double-dipping for adverbs, then it appears that, at least on the level of English grammar, both Wiley’s and Kirtsaeng’s interpretations stand up, and so the Supreme Court will have to look for other grounds on which to sort out this apparent collision of provisions in the Copyright Act.