Supap Kirtsaeng will be returning to the Supreme Court this year. Kirtsaeng won a landmark victory in 2013 when the high court held that the first sale doctrine applies to lawfully made copies of works made abroad. Mr. Kirtsaeng purchased foreign editions of textbooks and resold them on eBay, receiving a revenue of roughly 1.2 million from his endeavors. Publisher John Wiley & Sons sued Mr. Kirtsaeng for copyright infringement, urging the court to uphold the ban on importation of copyright works without the copyright owner’s permission to import. Kirtsaeng argued, successfully, that the first sale doctrine protected his actions. The first sale doctrine allows the owner of a copyrighted work to sell or dispose of the copy as the owner sees fit.
After entry of judgment in his favor on remand, Kirtsaeng requested an award of his fees from the lower court. 17 U.S.C. § 505 provides that “the court in its discretion may allow the recovery of full costs by or against any party [and] the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.” Kirtsaeng was denied an award of fees and costs at the lower court and subsequently denied in his appeal to the Second Circuit. Kirtsaeng filed a petition for certiorari to the Supreme Court, and the high Court has agreed to hear the case.
Kirtsaeng’s Petition asks the Court to resolve the question “[w]hat is the appropriate standard for awarding attorneys’ fees to a prevailing party under §505 of the Copyright Act?” Kirtsaeng argues in hisPetition that if his suit had been litigated in any other circuit, an award of fees would have been highly likely and that this is, by definition, a circuit split ripe for resolution.
Kirtsaeng’s Petition highlights the differences in the standards imposed among the circuits when determining an award of fees for a prevailing copyright litigant. The Petition illustrates that in the Ninth and Eleventh Circuit, an award of fees’ is likely when the prevailing party’s claim or defense advances the purposes of the Copyright Act. The Fifth and the Seventh apply a rebuttable presumption in favor of fees for a prevailing party, while other circuits rely on the factors identified in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n. 19 (1994). The Second Circuit, Kirstaeng argues, is the only circuit to employ a test that places “substantial weight” on whether the losing party’s claim or defense was “objectively reasonable.” Because the lower court determined that John Wiley & Son’s argument for copyright infringement against Mr. Kirtsaeng was “objectively reasonable,” Kirtsaeng was denied an award of his costs and fees.
As a copyright practitioner, I will be following the Kirtsaeng decision carefully. Kennedy Law routinely handles federal copyright litigation and the decision will determine what standard lower courts of appeals will be applying to determine whether a prevailing copyright litigant is entitled to recover his costs and fees. Oral argument for this case will likely be set for the October term and a decision could be issued in early 2017.
Chelsie Spencer is a Senior Associate with the Dallas office of Kennedy Law, PC. She may be reached at 214-716-4345.