A blog about patent, copyright and trademark law in the U.S. District Court
for the Southern District of New York

Court Denies Attorneys' Fees to Prevailing Copyright Infringement Defendant

In a December 20, 2013 ruling, Judge Donald C. Pogue, sitting by designation, declined to award attorneys’ fees under 17 U.S.C. § 505 to the prevailing defendant, Supap Kirtsaeng, in plaintiff John Wiley & Sons, Inc.’s copyright infringement action.  The Court ruled that because “Plaintiff’s claim was not unreasonable or frivolous, and because no other equitable consideration weighs in favor of Defendant’s request, . . . Defendant’s motion is denied.”  The case had been returned to the district court after the Supreme Court’s reversal of the Court’s previous ruling finding the defendant liable for copyright infringement.  The defendant imported lawfully obtained foreign editions of the plaintiff’s text books into the United States.  The Supreme Court ruled that that activity was protected by the “first sale doctrine.”

The Court began its discussion by noting that an award of fees is not mandatory under § 505, but should instead be guided by the Court’s “equitable discretion.”  Judge Pogue wrote that although there are a number of factors to consider in awarding fees, the most significant one under Second Circuit precedent is the “objective reasonableness” of the claim; “’a court should not award attorneys’ fees where the case is novel or close because such a litigation clarifies the boundaries of copyright law.’”

Judge Pogue found that fees were unwarranted because “neither the factual allegations nor the legal theory on which Wiley’s claim was based were objectively unreasonable.  Wiley’s claim – which persuaded this Court, the Court of Appeals, and three Justices of the Supreme Court – represented the legitimate attempt of a copyright holder to enforce its rights against the unauthorized importation to low-priced, foreign-made copies of its copyrighted works.”  The Court also noted that although attorneys’ fees can still be awarded where the plaintiff’s claim is objectively reasonable – such as where a claim is frivolous, brought for an improper purpose or where “considerations of compensation an deterrence” are furthered – none of these factors is present in this case.  Judge Pogue thus denied the defendant’s motion for fees.
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