SCOTUS decision on copyright attorneys’ fees should bring comfort, say lawyers

The US Supreme Court’s decision yesterday on when judges should award attorneys’ fees in copyright cases should give “comfort” to lawyers and their clients, attorneys have said.

Yesterday, June 16, the Supreme Court said that although “objective reasonableness” carries weight, courts must view cases on “their own terms”.

The Supreme Court was ruling in the Kirtsaeng v John Wiley case after havingearlier ruled on the dispute in 2013. Then, Supap Kirtsaeng, a student from Cornell University, was cleared of copyright infringement under the first sale doctrine.

The dispute went all the way up to the Supreme Court after both the US District Court for the Southern District of New York and the US Court of Appeals for the Second Circuit found in favour of John Wiley.

In 2013 the Supreme Court ruled that legally purchased textbooks and other goods can be re-sold online and in discount stores without infringing US copyright law, and sent the case back to the Second Circuit.

When the dispute returned to the Second Circuit, Kirtsaeng’s request for attorneys’ fees was rejected on the grounds that Wiley’s copyright claim was “objectively reasonable”.

In April this year, WIPR reported that Kirtsaeng had filed a writ of certiorari to the Supreme Court and argued that if the case was litigated in other federal appeals courts, his claim for attorneys’ fees would have succeeded.

The Supreme Court’s latest unanimous decision has evoked reaction from lawyers.

Dale Cendali, partner at Kirkland & Ellis, told WIPR: “As a practical matter, the decision aids copyright lawyers as it gives nationwide clarity as to the appropriate test. It also should give comfort to lawyers and their clients that they should not be at risk of a fee-shifting award if they are taking reasonable positions based on existing law and do not otherwise engage in some form of litigation misconduct.”

Matthew Shiels, counsel at Reed Smith, referenced the Supreme Court’s recent Halo v Pulse/Stryker v Zimmer ruling, saying that the decision in Kirtsaeng clarifies that the award of attorneys’ fees under the Copyright Act—just like an award of attorneys’ fees or enhanced damages in a patent case—should be made at the district court’s discretion in view of all of the relevant factors.

“Kirtsaeng gives district courts long-sought guidance regarding the application of section 505,” he added.

Stephen Gillen, partner at Wood Herron & Evans, told WIPR that a unanimous court crystallised the objectives and application of the law on copyright fee-shifting by prevailing defendants—holding that the objective reasonableness of the losing plaintiff’s arguments should be the predominant (but not the only) factor.

“At the same time, the court acknowledged that Congress gave the courts discretion to decide the matter of fee awards so that while substantial weight should be accorded to reasonableness, other relevant circumstances … must also be considered. The end result should be more predictability in district court awards going forward.” he added.