Petition: Resolve Copyright Case Fee Shift Standards

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By Tony Dutra

Oct. 6 — A petition for U.S. Supreme Court review filed Sept. 24 asks whether the standard for awarding attorneys' fees to the prevailing party in a copyright infringement case should be the same as in a patent case (Kirtsaeng v. John Wiley & Sons, Inc., U.S., No. 15-375, review sought 9/24/15).

John Wiley & Sons Inc.'s losing complaint of copyright infringement by Supap Kirtsaeng went all the way to the high court in 2013, and the U.S. Court of Appeals for the Second Circuit rejected Kirtsaeng's request for attorneys' fees because of it.

If the dispute was so close that the Supreme Court had to decide it, the appeals court reasoned, Wiley's argument couldn't have been so “objectively unreasonable”—a patent law reference—as to warrant shifting fees.

In an unrelated twist, Kirtsaeng's win—related to buying a copyrighted item overseas and importing it into the U.S.—is now a hot topic in patent law, with the full Federal Circuit hearing arguments Oct. 2 on whether patent law should adopt the same standard(192 PTD, 10/5/15)(192 DER, 10/05/15).

Will Court Take Kirtsaeng's Appeal Again?

Wiley challenged Kirtsaeng's practice of purchasing lower-priced Asian editions of textbooks and importing and selling them to students in the U.S. Wiley won at the district court level and on appeal, but the Supreme Court ruled that Kirtsaeng's sales were protected under the Copyright Act's first sale doctrine, 17 U.S.C. §109(a). Kirtsaeng d/b/a Bluechristine99 v. John Wiley & Sons Inc., 133 S. Ct. 1351, 2013 BL 72102, 106 U.S.P.Q.2d 1001 (U.S. 2013) (85 PTCJ 695, 3/22/13).

On remand, the U.S. District Court for the Southern District of New York denied Kirtsaeng's motion for an award of attorneys' fees and reimbursement of litigation expenses under 17 U.S.C. §505. 2013 BL 351518, 109 U.S.P.Q.2d 1242 (S.D.N.Y. 2013) (87 PTCJ 424, 1/3/14). The Second Circuit affirmed. John Wiley & Sons v. Kirtsaeng, 605 Fed. Appx. 48, 2015 BL 165455 (2d Cir. 2015) (83 U.S.L.W. 1864, 6/9/15)(90 PTCJ 2248, 6/5/15)(105 DER, 6/2/15)(105 PTD, 6/2/15).

Kirtsaeng's petition for writ of certiorari identifies the Second Circuit's standard for Section 505 awards as “placing ‘substantial weight' on whether the losing party’s claim or defense was ‘objectively unreasonable.'”

That standard may well map to whether a case is “exceptional,” as required in 35 U.S.C. §285 of the Patent Act, according to Kirtsaeng. But Section 505 of the Copyright Act simply says that a district court “may” award fees to the prevailing party.

The petition cites three other standards at play in other circuits:

• Ninth and Eleventh Circuits: when the prevailing party’s successful claim or defense advanced the purposes of theCopyright Act.

• Fifth and Seventh Circuits: a presumption in favor of attorneys’ fees for a prevailing party that the losing party must overcome.

• Third, Fourth and Sixth Circuits: reliance on the four “non-exclusive factors” listed in Fogerty v. Fantasy, Inc. , 510 U.S. 517, 534 n.19, 29 U.S.P.Q.2d 1881 (1994), which Kirtsaeng argued was dicta.

The simple question presented in the petition is:

What is the appropriate standard for awarding attorneys’ fees to a prevailing party under §505 of the CopyrightAct?

E. Joshua Rosenkranz of Orrick, Herrington & Sutcliffe LLP, New York, filed the petition. A response is due Oct. 28. Paul M. Smith of Jenner & Block LLP, Washington, represented Wiley before the Second Circuit.

Source Material:

Kirtsaeng v. John Wiley & Sons, Inc.

Cert. Petition:
No. 15-375 (Sept. 24, 2015)