Kirtsaeng v. Wiley: How 'Objective Reasonableness' Anchors Copyright Fee-Shifting

Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. 197 (2016), No. 15-375, argued April 25, 2016 and decided June 16, 2016, is the Supreme Court’s definitive statement on how a district court should exercise its discretion to award attorneys’ fees to a prevailing party under § 505 of the Copyright Act. Justice Kagan wrote for a unanimous Court, which vacated the Second Circuit’s judgment and remanded. This was Supap Kirtsaeng’s second appearance before the Court: three years earlier, in Kirtsaeng v. John Wiley & Sons, 568 U.S. 519 (2013), he had won the underlying merits dispute over the first-sale doctrine and the importation of foreign-made textbooks. Having prevailed, he returned to the district court seeking more than $2 million in fees — and lost. The fee dispute became the vehicle for the Court to refine the standard it had announced two decades earlier in Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994).

At a glance

• Case: Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. 197 (2016), No. 15-375
• Decided: June 16, 2016; Justice Kagan, for a unanimous Court (8-0)
• Disposition: Second Circuit judgment vacated and remanded
• Statute: 17 U.S.C. § 505 (“the court may … award a reasonable attorney’s fee to the prevailing party”)
• Holding: A district court must give substantial weight to the objective reasonableness of the losing party’s position, but must also consider all other relevant circumstances, and retains discretion to award fees even where the loser’s position was reasonable

The question presented

Section 505 says only that a court “may” award “a reasonable attorney’s fee to the prevailing party.” The statute supplies no standard. In Fogerty, the Court had established two guideposts: fees are available to prevailing plaintiffs and prevailing defendants on an even-handed basis (no presumption favoring either), and the decision is committed to the district court’s equitable discretion guided by several nonexclusive factors — frivolousness, motivation, objective unreasonableness, and the need to advance considerations of compensation and deterrence.

But Fogerty left a gap that produced a circuit split. How much weight should a court give to one factor in particular — the objective reasonableness of the losing party’s litigating position? The Second Circuit had treated objective reasonableness as the controlling consideration, creating something close to a presumption against fees whenever the loser’s arguments were reasonable. Other circuits gave the factor no special prominence, and the Ninth Circuit emphasized whether an award would further the purposes of the Copyright Act. The Court took the case to resolve how this factor fits within the broader discretionary inquiry.

The holding: substantial weight, not dispositive weight

The Court charted a middle course, and the precision of its formulation is the decision’s enduring contribution. District courts should accord substantial weight to the reasonableness of the losing party’s position — but reasonableness is not dispositive, and the inquiry does not end there.

Justice Kagan grounded that emphasis in the statute’s purpose. The “objective” of the Copyright Act, she wrote, is to enrich the general public through access to creative works by striking a balance between encouraging and rewarding authors’ creations and enabling others to build on that work. Giving substantial weight to objective reasonableness serves that balance because it encourages parties with strong positions to litigate them — a defendant with a meritorious defense will not be deterred by the prospect of a fee award, and a plaintiff with a strong infringement claim will press it. The threat of fees thus channels litigation toward clarifying the boundaries of copyright. By contrast, a party advancing an unreasonable claim or defense faces the realistic prospect of paying its opponent’s fees, which discourages weak suits and weak defenses alike.

Yet the Court was careful not to convert that emphasis into a rule. Objective reasonableness can be only an “important factor” — it cannot be the controlling one — because § 505 confers broad discretion, and several other considerations may, in a given case, outweigh it. The Court gave two concrete examples. A court might award fees against a party that litigated reasonably but engaged in litigation misconduct, in order to deter that conduct. And a court might award fees to deter a pattern of overaggressive assertions of copyright claims, even where any single suit was not objectively unreasonable. In both situations, the equities can justify fees notwithstanding the reasonableness of the losing position.

Why the case was remanded

Although the Court endorsed the substance of the Second Circuit’s approach — it had not committed legal error by placing significant weight on reasonableness — it was not satisfied that the lower courts had applied the standard with the correct understanding. The opinion expressed concern that the district court’s language could be read to have treated reasonableness as effectively dispositive, rather than as one substantial factor among several. To ensure the discretion was exercised on the proper understanding, the Court vacated and remanded so the district court could take another look, giving substantial weight to reasonableness while keeping the full range of considerations in view. The remand underscores a recurring theme in fee jurisprudence: the appellate concern is less about the outcome of any single award than about whether the trial court understood the scope of its discretion.

Open questions

Kirtsaeng clarifies the weight of one factor but leaves the texture of the inquiry to case-by-case development. It does not define how courts should measure “reasonableness” at the margins — for instance, when a losing position was reasonable when filed but became untenable as the law developed mid-litigation. It does not specify how much litigation misconduct or how clear a pattern of overaggressive assertion is required to override an otherwise reasonable position. And because the standard is deliberately holistic, it offers limited predictability to risk-averse litigants weighing whether to bring or defend a close case — precisely the population whose behavior the fee regime is meant to influence.

Implications

• For copyright plaintiffs: A strong, well-grounded infringement claim carries a reduced risk of a fee award even if it ultimately fails; but a pattern of aggressive or marginal assertions can still draw fees as a deterrent.
• For defendants: Mounting a reasonable defense is now a meaningful shield against fee exposure, which lowers the cost of contesting overbroad claims and supports the Act’s goal of testing copyright’s limits.
• For district courts: The opinion is a discretion-preserving decision. Courts must weigh reasonableness heavily, articulate that they have also considered the other Fogerty factors, and avoid language suggesting reasonableness alone controls.
• For litigation strategy generally: Because misconduct and overaggressive enforcement can independently justify fees, conduct during the case — not just the strength of the position — is squarely relevant to fee exposure.

Frequently asked questions

Did Kirtsaeng get his attorneys’ fees? Not as a result of this decision. The Supreme Court vacated the denial and sent the case back to the district court to reconsider under the clarified standard; the Court did not itself order an award.

Does a reasonable losing position guarantee no fee award? No. Reasonableness gets substantial weight, but a court may still award fees based on other circumstances — for example, litigation misconduct or a need to deter a pattern of overreaching claims.

How does this relate to the earlier Kirtsaeng decision? The 2013 decision resolved the merits, holding that the first-sale doctrine applies to copies lawfully made abroad. The 2016 decision concerns only the fee dispute that followed his merits victory.

Authorities and sources

• Kirtsaeng v. John Wiley & Sons, Inc., 579 U.S. 197 (2016), No. 15-375 (June 16, 2016). Opinion and holding via Justia and Cornell LII.
• Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994) (establishing the even-handed, discretionary fee standard).
• Case background and procedural posture: SCOTUSblog case file and Wikipedia summary.
• Statute: 17 U.S.C. § 505.