Kirtsaeng II: Back To The High Court

Kirtsaeng v. John Wiley & Sons, Inc. will be one of those rare cases heard by the Supreme Court more than once.

Supap Kirtsaeng was a Thai graduate student studying in the U.S. While in school, he sold foreign edition English-language textbooks to fellow students that his friends and family had purchased in Thai bookstores. Because many publishers including John Wiley & Sons sold textbooks containing virtually identical content at high prices in the U.S. and low prices abroad, Kirtsaeng was able to reap a profit from his re-sales.

In 2008, John Wiley & Sons sued, alleging copyright infringement. It won at the district court and in the Second Circuit, but in 2013, the Supreme Court ruled for Kirtsaeng, holding that the first sale doctrine, which explicitly allows the resale and distribution of lawfully made copies on the secondhand market without running afoul of copyright law, applies to works first distributed overseas. Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2013). The decision was a momentous one, settling a hotly debated question that had ended in a 4-4 tie only three years earlier, in Costco Wholesale Corp. v. Omega, S.A., 562 U.S. 40 (2010). After the Supreme Court's decision, Kirtsaeng's attorneys asked the District Court for attorney fees. Section 505 of the Copyright Act allows judges to award attorney fees to the prevailing party at their discretion. The prospect of attorney fees can influence decisions to defend or settle a case, since attorney fees through trial and appeals can often exceed potential damages.

Past Supreme Court precedent on the topic is vague. In Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994), the Supreme Court stated that copyright defendants are equally eligible for attorney fees as copyright plaintiffs, and should be treated alike. The Fogerty court emphasized that requiring prevailing defendants to show that the plaintiffs' claim was frivolous or in bad faith — essentially treating an award of attorney fees to defendants as a punishment — was too narrow a view of the purposes of the Copyright Act and the attorney fees provision. Instead, the "primary objective of copyright is... to promote the Progress of Science and useful Arts," and "defendants who seek to advance a variety of meritorious copyright defenses should be encouraged to litigate them to the same extent that plaintiffs are encouraged to litigate meritorious claims of infringement."

Nevertheless, any award of fees is still at the...