Who would have thought a handful of textbooks purchased in Thailand and shipped to the U.S. would be the subject of repeated discussion at the United States Supreme Court?  Once again, Kirtsaeng v. John Wiley & Sons, involving the resale of textbooks, is heading to the U.S. high court.  In 2013, the Court decided Kirtsaeng I and held that the first sale doctrine applies to lawful copies of copyrighted works, irrespective of where the copy was made.  On remand, the issue of attorney’s fees became highly contested.  The Second Circuit decided not to award Kirstaeng attorney’s fees, which was premised on the finding that John Wiley & Sons’ claim of copyright infringement was not “objectively unreasonable.”  Kirtsaeng petitioned for certiorari, citing the split amongst various circuits regarding the standard for the award of attorneys’ fees in copyright cases.

Copyright: nbvf / 123RF Stock Photo
Copyright: nbvf / 123RF Stock Photo

On January 15, 2016, the Court granted Kirtsaeng’s petition to resolve this five-way circuit split.  The last time the Supreme Court addressed attorney’s fees in copyright cases was over two decades ago in Fogerty v. Fantasy, Inc.  Fogerty stood for three propositions: (1) prevailing plaintiffs and defendants should be treated equally; (2) attorney’s fees should not be granted automatically, but should be granted when the claim or defense advances the purposes of copyright; and (3) to assess whether a district court should grant attorney’s fees, the court may use the non-exclusive factors of (a) frivolousness, (b) motivation, (c) objective unreasonableness (both in the factual and legal components of the case), and (d) the need in particular circumstances to advance considerations of compensation and deterrence.

Currently, the Circuits have five different approaches on whether to grant attorney’s fees to the prevailing party in copyright matters.

  • Circuits that focus on the strength of the non-prevailing party’s arguments (First and Second Circuits).
  • Circuits that create a presumption in favor of granting attorney’s fees to the prevailing party (Fifth and Seventh Circuits).
  • Circuits faithful to the objectives of the Copyright Act (Ninth and Eleventh Circuits).
  • Circuits faithful to applying the non-exclusive Fogerty factors (Third, Fourth, Sixth and Eighth Circuits).
  • Circuits that are a hybrid of faithfulness to the objectives of the Copyright Act and the non-exclusive Fogerty factors (Tenth Circuit).

Given how critical 17 U.S.C. § 505 (the statutory provision on attorney’s fees) is to copyright litigation, Kirtsaeng II is likely to have further reaching and longer lasting implications on copyright than Kirtsaeng I.

Lincoln Bandlow and Rom Bar-Nissim recently wrote an article for the December 2015 Media Law Resource Center Bulletin on this subject, entitled “To Give Fees Or Not To Give Fees, That Is the Question (With A Different Answer In Every Circuit): The Circuit Split Over Attorneys’ Fees Awards Under The Copyright Act.”