United States: The Supreme Court's Take On Kirtsaeng II Will Impact Attorneys' Fees Decisions In Copyright Matters

The landmark copyright case Kirtsaeng v. John Wiley & Sons is back before the US Supreme Court, this time on the issue of the appropriate standard for determining whether to award attorneys' fees to a prevailing party. Whatever its outcome, this decision will have important implications for plaintiffs and defendants alike in copyright and possibly other intellectual property cases.

In 2013, the Supreme Court decided Kirtsaeng v. John Wiley & Sons I, a dispute over gray-market copyrighted material (plaintiff publisher's textbooks) produced overseas for foreign markets but imported to the United States and resold without plaintiff's permission. Publisher John Wiley & Sons sued the defendant, a graduate student who had legally purchased the books overseas and sold them for a profit in the United States, on eBay, for copyright infringement. The Supreme Court concluded that the "First Sale" doctrine (codified at 17 U.S.C. §109(a)) applied and that defendant could not be liable for copyright infringement, thereby reversing the Second Circuit Court of Appeals' decision to the contrary. Kirtsaeng I, 133 S. Ct. 1351 (2013).

On remand, the defendant, Mr. Kirtsaeng, sought to recover his attorney's fees as the prevailing party.  After both the district court and Second Circuit denied his claim for fees, Kirtsaeng successfully petitioned the Supreme Court to hear his case again, this time arguing that the Second Circuit's standard for awarding attorney's fees in copyright cases "splits with the approaches of the other courts of appeals" and is inconsistent with Supreme Court precedent. (Granting petition for certiorari, January 15, 2016; Dkt. No. 15-375). The parties' positions are summarized below.

Petitioner Under the Copyright Act, a "court may ... award a reasonable attorney's fee to the prevailing party." 17 U.S.C. § 505. Kirtsaeng asserts that the various circuits' application of this statutory language has varied widely, from simply asking "whether the prevailing party's claim or defense furthered the interests of the Copyright Act, with no presumptions one way or the other" (Ninth and Eleventh Circuits), to applying a presumption in favor of a fee award for prevailing parties (Fifth and Seventh Circuits), to applying some or all of the four "nonexclusive factors" (i.e., "frivolousness, motivation, objective unreasonableness ...[,] and ... considerations of compensation and deterrence") listed in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534 n.19 (1994) (Third, Fourth, and Sixth Circuits).  Kirtsaeng contends that the Second Circuit's approach is unique among the circuits:  while acknowledging the four factors mentioned in Fogerty, the Second Circuit places "'substantial weight' on whether the losing party's claim or defense was objectively unreasonable—which is to say, whether the losing party's claim was clearly without merit or devoid of legal or factual basis." According to Kirtsaeng, this creates a "presumption against awarding fees."

Kirtsaeng further asserts that the Second Circuit's standard makes fees for prevailing defendants "a rare punishment against plaintiffs who brought frivolous, baseless, or unreasonable lawsuits."  As such, it is allegedly contrary to the Supreme Court's decision in Fogerty, which rejected a "'dual' standard" treating prevailing plaintiffs "differently" from prevailing defendants. 510 U.S. at 520, 533. Because "a successful defense of a copyright infringement action may further the policies of the Copyright Act," defendants should "be encouraged to litigate them to the same extent that plaintiffs are encouraged to litigate meritorious claims of infringement." Id. at 527. Kirtsaeng argues that the Second Circuit's approach is "not evenhanded" on its face (because its opinions "speak... only to the objectively reasonable claims of a copyright holder, not of those by an accused defendant"), and its "practical effect is that prevailing plaintiffs much more easily obtain fee awards than prevailing defendants (emphasis added)."

Respondent Publisher Wiley argues that Kirtsaeng's "description of an elaborate multi-faceted circuit split" combines "a caricature of the law of the Second Circuit with exaggerated descriptions of differences with other circuits." According to Wiley, what Kirtsaeng characterizes as a circuit "split" amounts to nothing more than courts "using their best judgment" in applying "the equitable multi-factor" test approved in Fogerty. Far from being an "outlier" among federal appellate courts, the Second Circuit's emphasis on Fogerty's "objective reasonableness" factor is derived from "examining the approaches of other federal appellate courts. . . . Indeed, a review of section 505 cases reveals that every circuit emphasizes objective reasonableness." Nor does placing substantial weight on whether a party's actions and arguments were objectively unreasonable disfavor prevailing defendants, argues Wiley. "While [Kirtsaeng's] defenses may have furthered" the purposes of copyright law, "so did [Wiley's] claims," and it was "within the district court's discretion to decide how to strike the right incentives balance under section 505."

In short, the courts below did not rely on "objective reasonableness" alone or rely on an unfair presumption, Wiley contends. Instead, they "specifically considered and applied all four Fogerty factors," focusing on "how the facts and incentives at play in this case related to the purposes of the Copyright Act. . . .[T]he weight the Second Circuit places on objective reasonableness is fully consistent with treating plaintiffs and defendants evenhandedly as Fogerty mandated. It encourages the presentation and litigation of reasonable arguments by both plaintiffs and defendants to clarify the law of copyright."

Both parties contend there are also important public policy considerations at stake. Kirtsaeng asserts that the evenhanded approach to fees mandated by Fogerty is "particularly important in David vs. Goliath cases like this one," in which the plaintiff "brought its substantial resources to bear . . . against impecunious individual defendants and then engag[ed] in scorched-earth litigation tactics to force those individual defendants to give in and settle." Yet it is equally true that the law was still unsettled and not clearly on Kirtsaeng's side when Wiley sued. The Supreme Court itself had split 4-4 on the same First Sale doctrine issue in Costco Wholesale Corp. v. Omega S.A., 562 U.S. 40 (2010) not long before Wiley brought suit. As a result, it may be difficult to characterize Wiley's election to sue as "unreasonable."  Assessing fees in such circumstances could deter the bringing of meritorious copyright cases that are necessary to test and set the boundaries of the law, argues Wiley.

Regardless of whether Kirtsaeng is correct in describing the circuit courts' standards as widely varying, or whether Wiley is correct in characterizing the alleged circuit "split" as essentially the petitioner's invention, the Court has now taken up the standard for awarding attorneys' fees in copyright cases. This case bears close attention to see what impact the resulting decision will have on the recent trend in intellectual property cases toward adopting a "loser pays" approach (cf. Octane Fitness, LLC v. Icon Health & Fitness, Inc.,  572 U.S. ____ (Dkt. No. 12-1184; 2014)).

Dentons is the world's first polycentric global law firm. A top 20 firm on the Acritas 2015 Global Elite Brand Index, the Firm is committed to challenging the status quo in delivering consistent and uncompromising quality and value in new and inventive ways. Driven to provide clients a competitive edge, and connected to the communities where its clients want to do business, Dentons knows that understanding local cultures is crucial to successfully completing a deal, resolving a dispute or solving a business challenge. Now the world's largest law firm, Dentons' global team builds agile, tailored solutions to meet the local, national and global needs of private and public clients of any size in more than 125 locations serving 50-plus countries. www.dentons.com.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Events from this Firm
24 Oct 2017, Seminar, Washington, DC, United States

The Dentons Forum for Women Executives invites you to join us for a luncheon featuring guest speaker Liza Mundy, journalist and author. Ms. Mundy recently released her latest book, Code Girls, the riveting untold story of more than 10,000 spirited young American women who cracked German and Japanese codes to help win World War II.

27 Oct 2017, Seminar, New York, United States

Please join us for a milestone event, our 10th annual CLE Seminar for In-House Counsel.

1 Nov 2017, Seminar, Washington, DC, United States

Celebrate the 58th anniversary of Dentons' Government Contracts practice

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.