In Kirtsaeng v. John Wiley and Sons the Court is called to resolve a split among Circuits on the appropriate standard for awarding fee-shifting in the Copyright Act. Here the question presented:

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

On April 25, 2016 the Court held an oral argument in which interesting issues were raised. See here.

Supap Kirtsaeng was sued by the publisher John Wiley and Sons for copyright infringement because he was in the business of selling Asian-produced versions of American textbooks at a discounted price.

In a proceeding that ended up a first time in front of the Supreme Court, Mr. Kirtsaeng won (the Court found no infringement of copyright for the first sale rule), but he did not obtain his attorneys’ fees. More on the case here.

The fee-shifting provision is in Section 505 of the Copyright Act

505. Remedies for infringement: Costs and attorney’s fees

In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.

Circuits differ on the award of attorneys’ fees in these cases. In some Circuits (like the Second Circuit) defendants are seldom awarded fees (the test being whether the losing party’s claim or defense was “objectively unreasonable.”). Other Circuits (e.g. Ninth Circuit) are more generous and courts simply ask themselves whether the party “advanced the purposes” of the act. Also, plaintiffs seem to obtain attorneys’ fee more frequently than defendants. See this source.

The case is now submitted and we await decision in the near future.

For more information, Nathan M. Crystal.