605 F. App'x 48
2d Cir.2015Background
- Defendant Supap Kirtsaeng imported and resold foreign-printed textbooks; John Wiley & Sons sued for copyright infringement.
- The district court and the Second Circuit initially ruled for Wiley; the Supreme Court ultimately ruled for Kirtsaeng in a split decision.
- After the Supreme Court loss, Kirtsaeng moved in district court for attorneys’ fees under 17 U.S.C. § 505; the district court denied the motion.
- The district court placed substantial weight on Wiley’s objectively reasonable litigation position in declining fees, while considering other Fogerty factors (frivolousness, motivation, objective unreasonableness, compensation, deterrence).
- Kirtsaeng appealed the denial of fees to the Second Circuit, which reviewed for abuse of discretion and affirmed the district court’s decision.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether fees under § 505 should be awarded to prevailing defendant | Wiley argued its litigation position was objectively reasonable and fees were not warranted | Kirtsaeng argued fees should be awarded despite Wiley’s reasonableness, urging other factors to outweigh reasonableness | Court held no abuse of discretion: Wiley’s objective reasonableness weighed heavily and justified denying fees |
| Proper application of Fogerty factors | Wiley relied on objective reasonableness and policy concerns against fee-shifting | Kirtsaeng claimed district court overemphasized reasonableness and underweighted compensation/deterrence | Court affirmed that Matthew Bender permits substantial weight on reasonableness and district court did not improperly fixate |
| Effect of pro bono representation on compensation factor | Wiley noted pro bono representation of Kirtsaeng at the Supreme Court | Kirtsaeng argued compensation factor favored fees despite pro bono counsel | Court questioned but ultimately accepted district court’s view that pro bono status reduced compensation rationale; not an abuse of discretion |
| Standard of review for fee awards | Wiley relied on district court discretion | Kirtsaeng sought reversal of denial | Court applied highly deferential abuse-of-discretion standard and affirmed |
Key Cases Cited
- Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (establishes discretionary, equitable Fogerty factors for awarding copyright attorneys’ fees)
- Matthew Bender & Co. v. West Pub’g Co., 240 F.3d 116 (2d Cir. 2001) (emphasizes objective reasonableness of a copyright holder’s position as a weighty factor against fee awards)
- Alderman v. Pan Am World Airways, 169 F.3d 99 (2d Cir. 1999) (states standard of review for attorney’s fees is highly deferential to the district court)