No Attorneys' Fees to Kirtsaeng But 2nd Circ. Says Don't Discount Pro Bono Representation

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By Tony Dutra

June 1 — The fact that John Wiley & Sons made it all the way to the Supreme Court before losing its copyright infringement case was sufficient “objective reasonableness” to justify denying Supap Kirtsaeng's request for attorneys' fees, the Second Circuit ruled on May 27.

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.

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.

The appeals court affirmed, concluding that the lower court did not abuse its discretion in granting “substantial weight” to the reasonableness of Wiley's position in the case. However, the court said, “we may not agree in every instance with the district court’s evaluation of these other factors,” as set forth in Matthew Bender & Co. v. W. Pub’g Co., 240 F.3d 116, 122 (2d Cir. 2001).

And in a footnote, it said, “In particular, we respectfully question the conclusion that considerations of compensation did not favor a fee award because the appellant was represented pro bono at the Supreme Court.”

The court said that the law should generally encourage counsel to take cases like this one pro bono because “it is peculiarly important that the boundaries of copyright law be demarcated as clearly as possible,” quoting Fogerty v. Fantasy, Inc., 510 U.S. 517, 527, 29 U.S.P.Q.2d (1994).

The per curiam opinion was joined by Chief Judge Robert A. Katzmann and Judges John M. Walker Jr. and Denny Chin. Only Katzmann was on the 2011 panel that ruled in favor of Wiley on the merits.

Paul M. Smith of Jenner & Block LLP, Washington, represented Wiley. Andrew D. Silverman of Orrick, Herrington & Sutcliffe LLP, New York, represented Kirtsaeng.

To contact the reporter on this story: Tony Dutra in Washington at

To contact the editor responsible for this story: Anandashankar Mazumdar in Washington at

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