NEWPORT BEACH, CA – Gunnar Gundersen, partner with intellectual property, technology, and media law firm One LLP, drafted an amicus brief on March 7 in Kirtsaeng v. John Wiley & Sons, Inc., a copyright case currently pending in the Supreme Court. The brief was filed on behalf of the Intellectual Property Owners Association, a trade association for owners of patents, trademarks, copyrights, and trade secrets. 
In this case, the Supreme Court will examine what standard should be used to determine attorneys’ fees in copyright cases. The case arose from a dispute over whether Mr. Kirtsaeng, the defendant and prevailing party in the case, is entitled to attorneys’ fees.
“The Supreme Court’s decision will have a significant impact on the current standards of determining attorneys’ fees,” says Mr. Gundersen. “More specifically, in this case, the Supreme Court will determine if using the reasonableness of the losing party’s claim should always be a significant factor in how attorneys’ fees are awarded.”
John Wiley & Sons, Inc., a global publishing company, filed suit against Mr. Kirtsaeng for copyright infringement. Mr. Kirtsaeng, a citizen of Thailand who was studying at the University of Southern California at the time the suit was filed, discovered that textbooks were substantially less expensive in his home country than in the U.S. He began asking relatives to ship him international editions of textbooks, including some published by John Wiley & Sons, which he sold on eBay for a profit. 
Mr. Kirtsaeng was under the impression that it was legal for him to resell international editions of textbooks in the U.S. based on the first-sale doctrine, which provides that “the owner of a particular copy…is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy.”
The district court disagreed and ordered that Mr. Kirtsaeng pay $75,000 in statutory damages per infringed work to John Wiley & Sons, totaling $600,000. The Second Circuit agreed with the lower court, but the decision was reversed on appeal and Mr. Kirtsaeng prevailed.
Although the district court ultimately sided with Mr. Kirtsaeng, the court did not award him attorneys’ fees. Under Second Circuit law, the court was required to assign “substantial weight” to whether or not John Wiley & Sons’ claim was “objectively unreasonable”—a standard based on the presumption that imposing a fee on a copyright holder for litigating a reasonable claim will discourage copyright holders from protecting their intellectual property. Since the court determined John Wiley & Sons’ claim was reasonable, Mr. Kirtsaeng was denied attorneys’ fees.
In his appeal to the Supreme Court, Mr. Kirtsaeng is arguing that giving any one factor in a case “substantial weight” is a formula, which undermines the court’s flexibility and authority. The Supreme Court granted certiorari on January 15 and will begin hearing arguments for the case on April 25.
Read full amicus brief.