In the June 2016 decision of Kirtsaeng v. John Wiley & Sons, Inc. (2016), the Supreme Court held that in copyright cases, district courts should give “substantial weight” to the objective reasonableness of the losing party’s position when determining whether to award attorney’s fees. The Court vacated the Second Circuit’s ruling against awarding attorney’s fees in copyright cases, cautioning that “substantial” does not mean “dispositive” – or that it will determine the outcome of the case. The Court further noted that while district courts have broad discretion and “objective reasonableness” is the most important factor, district courts should also consider all other relevant factors.

Under this framework, district courts have the broad discretion to award attorney’s fees despite the losing party’s reasonableness arguments. Conversely, although the losing party made an unreasonable argument, district courts may deny attorney’s fees.

For example, a court may order fee-shifting because of a party’s litigation misconduct, whatever the reasonableness of his claims or defenses. Or a court may do so to deter repeated instances of copyright infringement or overaggressive assertions of copyright claims, again even if the losing position was reasonable in a particular case. Although objective reasonableness carries significant weight, courts must view all the circumstances of a case on their own terms, in light of the Copyright Act’s essential goals.

Kirtsaeng, 579 U.S. ______ (2016).

According to the Court, fee awards should encourage the type of lawsuits that promote the Copyright Act’s balance between encouraging and rewarding author’s work while allowing others to build on that work. In Kirtsaeng, the issue was whether giving substantial weight to the reasonableness of the losing party’s position or the lawsuit’s role in settling significant and uncertain legal issues would predictably encourage useful copyright litigation. The Court believed that the objective reasonableness approach incentivizes parties with strong legal positions to stand on their rights and deters those with weak positions from proceeding to litigation. For example, the likelihood that a clearly correct party will be awarded attorney’s fees will encourage it to litigate the case until the end. In contrast, the party that has a less than favorable position is less likely to proceed to litigation if it knows that it will have to pay two sets of attorney’s fees. Although the Court agreed that the litigation of close cases can ensure that the boundaries of copyright law are clear, the Court rejected the lawsuit’s role approach because fees increase the reward for victory and penalty for defeat.

The Court remanded this case, giving the lower court broad discretion on how to apply the standard. Giving no example, courts are allowed to apply the standard as they see fit, and therefore, the impact of the standard will likely vary depending on the circuit in which the litigation is brought. Additionally, the Court’s standard will likely impact other areas of intellectual property, such as patent cases, because it calls for an analysis that considers all relevant factors when determining whether to award attorney’s fees.

Contact Revision Legal’s team of experienced copyright attorneys through the form on this page or call 855-473-8474.

Practical Implications of Kirtsaeng for Copyright Litigants

Kirtsaeng v. John Wiley and Sons, Inc., 579 U.S. 197 (2016), reshaped the attorney’s fees landscape in federal copyright litigation. For both plaintiffs pursuing infringement claims and defendants defending against them, the Court’s substantial weight standard has concrete implications for litigation strategy, settlement decisions, and risk assessment.

The Statutory Framework: 17 U.S.C. § 505

Section 505 of the Copyright Act provides that the court may award reasonable attorney’s fees to the prevailing party as part of the costs. Unlike fee-shifting provisions in statutes like the RICO Act or various consumer protection laws, Section 505 is discretionary. Prior to Kirtsaeng, courts applied varying and inconsistent standards. The Supreme Court’s decision harmonized this inquiry around objective reasonableness as the most important — though not exclusive — factor.

What Objective Reasonableness Means in Practice

A losing party whose legal position was objectively reasonable — meaning it had a colorable, non-frivolous basis in existing law — carries significant weight against a fee award under Kirtsaeng. This does not mean fee awards are unavailable against reasonable losers; the Court expressly stated that objective reasonableness is not dispositive. Courts retain discretion to award fees despite reasonable positions in cases of litigation misconduct, to deter serial copyright plaintiffs who file mass infringement claims with weak factual foundations, or to incentivize defendants who correctly and firmly asserted valid defenses. Conversely, a prevailing plaintiff who defeats an objectively unreasonable infringement defense has a stronger case for fee-shifting.

Registration as a Prerequisite to Fee-Shifting

A critical and often overlooked limitation: a copyright plaintiff cannot recover attorney’s fees at all unless the work was registered with the U.S. Copyright Office before the infringement occurred, or within three months of first publication. 17 U.S.C. § 412. A copyright owner who discovers infringement and then rushes to register cannot recover attorney’s fees or statutory damages for pre-registration infringement. Prospective registration — filing registrations for important works before infringement is ever suspected — is the only way to preserve full access to the Copyright Act’s remedies.

Statutory Damages and the Fee-Shifting Calculation

Attorney’s fees under Section 505 are separate from statutory damages under 17 U.S.C. § 504. In cases of registered works, a plaintiff can elect statutory damages ranging from $750 to $30,000 per infringed work, or up to $150,000 per work for willful infringement. When statutory damages are available, the threat of fee-shifting compounds the defendant’s exposure significantly and often drives settlement. Defense counsel representing alleged infringers must now seriously analyze both statutory damage exposure and the probability of a fee award when counseling clients on settlement.

Impact Beyond Copyright: Patent and Trademark Fee-Shifting

As the Kirtsaeng Court noted, its analysis has implications beyond copyright. In patent law, the Supreme Court’s decisions in Octane Fitness, LLC v. ICON Health and Fitness, Inc., 572 U.S. 545 (2014), and Highmark Inc. v. Allcare Health Management Systems, Inc., 572 U.S. 559 (2014), adopted a similarly flexible, totality-of-the-circumstances standard for fee awards under 35 U.S.C. § 285. In trademark cases, the Lanham Act’s fee-shifting provision (15 U.S.C. § 1117(a)) for exceptional cases has also been interpreted with reference to this evolving all-circumstances approach. The net effect is that courts have more latitude to award fees than they did a decade ago — meaning both plaintiffs and defendants must factor fee-shifting risk into every litigation decision.

If you are facing a copyright infringement claim or evaluating whether to pursue one, Revision Legal’s copyright attorneys can analyze your fee exposure and develop a litigation strategy. Contact us through the form on this page or call 855-473-8474.

Strategic Implications: Register Early, Litigate Strategically

The post-Kirtsaeng copyright landscape rewards rights holders who register promptly and litigate strategically. A copyright owner with a timely registration and a strong infringement claim can credibly threaten both statutory damages and attorney fees, dramatically improving settlement leverage. Defendants facing such claims must account for the combined cost of potential damages awards and fee exposure when evaluating settlement offers. The practical implication for any business that creates original content — written, visual, audiovisual, or software — is to develop a systematic registration program that covers new works promptly after publication. Revision Legal helps clients implement copyright registration programs and navigate the litigation process when infringement occurs. Contact us through the form on this page or call 855-473-8474.