United States: Litigation Alert: U.S. Supreme Court Addresses Attorney's Fee Awards In Copyright Cases

Last week in Kirtsaeng v. John Wiley & Sons Inc., the Supreme Court held that district courts have wide discretion to grant attorney's fee awards but should give substantial weight to whether the losing party was objectively unreasonable.

Who is Kirtsaeng?

Supap Kirtsaeng won an earlier Supreme Court decision that his purchase of textbooks overseas did not infringe the 17 U.S.C. § 109 distribution right of John Wiley & Sons Inc. when he brought them to the United States for resale. His sales fell under the 17 U.S.C. § 109(a) exception to liability for copies lawfully made (commonly referred to as the "first sale doctrine"). Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013).

Fogerty and Attorney's Fees in Copyright Cases

After winning the case, Kirtsaeng sought his attorney's fees under 17 U.S.C. § 505, which states that a "court may [] award a reasonable attorney's fee to the prevailing party as part of the costs." The Supreme Court last addressed when such fees should be awarded over two decades ago in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994). There, the Supreme Court instructed that a court may not award attorney's fees "as a matter of course" (id. at 533-534) and may not treat prevailing plaintiffs and prevailing defendants differently (id. at 522-525). In Fogerty the Court also cited with approval four non-exclusive factors within a Third Circuit opinion: (1) frivolousness, (2) motivation, (3) objective unreasonableness (both factual and legal), and (4) the need to compensate or deter. Id. at 534, n. 19 citing Lieb v. Topstone Industries, Inc., 788 F.2d 151, 156 (3d Cir. 1986). The Court stated that these factors "may be used...so long as such factors are faithful to the purposes of the Copyright Act." Id.

In the wake of Fogerty, different circuits of the U.S. Court of Appeals applied different tests to determine fee awards in copyright cases. Some circuits gave greater weight to certain factors among the four in Fogerty and other circuits considered additional factors. See Inhale, Inc. v. Starbuzz Tobacco, Inc., 739 F.3d 446, 449 (9th Cir. 2014)(evaluating "the degree of success obtained"). Some even "routinely awarded" the discretionary fees. See General Universal Sys., Inc. v. Lee, 379 F.3d 131, 147 (5th Cir. 2004). Kirtsaeng sought over $2 million in attorney's fees but the district court denied fees and the Second Circuit affirmed the denial.

Objective Reasonableness Is Important but Not Determinative

In its new decision the Court first addressed the purposes of the Copyright Act to frame the factors to consider in awarding fees. The Court found it "well-settled" that the Copyright Act enables "access to creative works by striking a balance between encouraging and rewarding authors' creations and enabling others to build on that work." Fee awards to plaintiffs reward creative authors while fee awards to defendants deter overbroad or chilling assertions of copyrights. The Court held that the fee provision itself supports this dichotomy. That "the court may [] award a reasonable attorney's fee to the prevailing party" suggests that plaintiffs and defendants should seek the award equally. 17 U.S.C. § 505.

The Court confirmed the utility of the four "nonexclusive factors" footnoted in Fogerty: frivolousness, motivation, objective unreasonableness, and compensation or deterrence. The Court then held that the objective unreasonableness of the losing party's position in litigation is "an important factor" that "carries significant weight" or "substantial weight." Heightened weight of this factor encourages parties with strong legal positions to continue litigating even if they (as plaintiffs) do not seek large fees or (as defendants) may endure a costly defense. Conversely, any party with a weak case may be deterred by the specter of two sets of fees.

Nevertheless, the Court ruled that objective unreasonableness is not a "controlling" factor, and courts "must view all the circumstances of a case on their own terms, in light of the Copyright Act's essential goals." Even if the losing party's conduct is reasonable, there is no presumption against fees. Such a bright-line rule would "cabin" the district court's broad discretion. The Court specifically identified two instances where these "other factors" might tilt the balance: (1) litigation misconduct and (2) where the party has been overzealous as a plaintiff in asserting copyright claims or as a defendant involved in "repeated instances of copyright infringement." (For this the Court cited Viva Video, Inc. v. Cabrera, 9 Fed. Appx. 77, 80 (2d Cir. 2001) and Bridgeport Music, Inc. v. WB Music Corp., 520 F. 3d 588, 593–595 (6th Cir. 2008)). In these instances, the court may grant a fee award even against a party with reasonable defenses. The Supreme Court's approval of Bridgeport may be instructive. In Bridgeport, the Sixth Circuit permitted fees despite the losing party's argument having some legal merit, holding that "objective reasonableness is not an impenetrable shield against fees and costs." Id. at 593-594. Bridgeport also found relevant Bridgeport's dubious litigation in companion cases, which further incentivized the Sixth Circuit to deter Bridgeport from "questionable litigation tactics." Id. at 595.

The Court did warn against unfettered discretion, where a court's "utterly freewheeling inquiries" would prevent parties "from predicting how fee decisions will turn out" and thus whether to litigate. But the Court did not worry about hindsight bias in determining objectively unreasonable behavior. Mere liability is insufficient to find a legal defense unreasonable. The Court stated that it would be an abuse of discretion if a court "confuses the issue of liability with that of reasonableness."

After giving this guidance on copyright fee awards the Court remanded the case because the district court did not appreciate the full scope of its discretion. The Court instructed the district court to "giv[e] substantial weight to the reasonableness of [the losing party's] position, but also tak[e] into account all other relevant factors."

Relation to Other Recent Decisions

The Court has recently taken a similar approach in two cases involving patent law. In 2014, in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), the Court addressed the statutory standard for fee awards in patent cases. (The standards in patent and copyright law differ: the patent statute calls for awards in "exceptional" cases.) Last month, in Halo Elecs., Inc., v. Pulse Elecs., Inc., Nos. 14-1513, 14-1520 (June 13, 2016), the Court addressed a court's discretion to award enhanced patent damages. In both Octane Fitness and Halo the Court rejected unduly rigid rules that limited a trial court's discretion. Taking Kirtsaeng along with those cases, the Court has repeatedly sent a strong message of support for trial court discretion — while acknowledging that discretion is not boundless — in decisions about certain statutory remedies that depend upon appraisal of the litigants' positions and conduct.

The Application to Future Copyright Cases

The Supreme Court gave only a few examples of a losing party's objectively reasonable litigation that could still warrant a fee award against it. The Court justified its decision on the grounds that it made the issue of fee awards more "administrable," but there remains ample room for vigorous debate over the considerations that will apply to fee awards. Lower courts may continue to shape the law inconsistently for years before the Court weighs in again.

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
25 Oct 2017, Conference, California, United States

CALOBA is excited to bring you our General Counsel (GC) roundtable event. Our distinguished panel of top legal counsel will share their experiences at the helm of some of the top technology companies.

30 Oct 2017, Seminar, California, United States

This program will address some of the hottest legal and policy topics that online platforms have brought to the fore: free speech, hate speech, fake news, privacy and surveillance, artificial intelligence, augmented reality, changing notions of “ownership” of information and software-enabled consumer products, and the perennial issue of copyright.

8 Nov 2017, Conference, California, United States

Fenwick & West is proud to be participating in PLI’s 49th Annual Institute on Securities Regulation scheduled for November 8-10, 2017 at The Roosevelt Hotel in New York City. The Institute is considered the premier conference, as well as one of the longest running, in the securities law field.

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.