I Prevailed, Now Give Me My Attorneys' Fees

The U.S. Supreme Court recently granted certiorari in Kirtsaeng v. John Wiley & Sons, Inc. in order, once again, to review the proper standard that district courts should follow for awarding attorneys' fees to prevailing parties in copyright infringement actions. The Copyright Act authorizes, but does not require, a court to award attorneys' fees to a prevailing party.1 In a 1994 decision, the Supreme Court leveled the playing field and held that prevailing plaintiffs and defendants are to be treated alike and that attorneys' fees are to be awarded to prevailing parties only as a matter of the district court's discretion. Fogerty v. Fantasy, 510 U.S. 517 (1994). In Fogerty, the Supreme Court expressly rejected an automatic recovery of attorneys' fees, and as guidance adopted several non-exclusive factors for courts to consider in exercising their discretion: "frivolousness, motivation, objective unreasonableness (both in the factual and in the legal components of the case) and the need in particular circumstances to advance considerations of compensation and deterrence." Interestingly, the Supreme Court cited these same factors when it made recent landmark rulings on attorney fee awards in patent cases.

With the passage of time, different circuits have developed diverging approaches to applying the Fogerty factors. For example, the Fifth and Seventh Circuits employ a presumption in favor of attorneys' fees for a prevailing party that the losing party must overcome. In contrast, the Ninth and Eleventh Circuits award attorneys' fees when the prevailing party's successful claim or defense advances the purposes of the Copyright Act. The Third, Fourth and Sixth Circuits primarily employ the several "nonexclusive factors" the Supreme Court identified in Fogerty. Finally, the Second Circuit places "substantial weight" on whether the losing party's claim or defense was "objectively unreasonable." Thus, in the Kirtsaeng case, as to which the Supreme Court has now granted certiorari, the Second Circuit affirmed the district court's denial of attorneys' fees, stating that the lower court correctly placed substantial weight on the reasonableness of the losing party's position.

In essence, then, a party could be awarded fees in one circuit but be denied fees in another circuit on precisely the same facts for the sole reason that circuit law differs. Moreover, since appellate courts review lower court decisions to award or refuse attorneys' fees to...