Kirtsaeng Looks to Take Second Bite Out of the Supreme Court Apple

Supap Kirtsaeng ("Kirtsaeng") already has one precedential U.S. Supreme Court case under his belt, and on Friday, January 15, 2016, the Supreme Court decided to give him a chance at a second when it granted certiorari of Kirtsaeng, dba Bluechristine99 v. John Wiley & Sons, Inc.

John Wiley & Sons ("Wiley") sued Kirtsaeng for copyright infringement when it discovered that he was arranging for his family and friends to purchase Wiley's English-language textbooks abroad—where they were sold at a lower price—and mail them to him in the U.S. where he sold them for a profit. Wiley claimed that Kirtsaeng's importation and resale of the textbooks violated its right to distribute the books under Section 106(3) of the Copyright Act.

Kirtsaeng won his first precedential Supreme Court decision in 2013 when the Court found in his favor, holding that the "first sale" doctrine applies to copyrighted works that are made or sold abroad. This decision overturned both the district court and the Second Circuit's decisions in favor of Wiley.

Having been decidedly victorious in the original case, Kirtsaeng sought attorneys' fees pursuant to Section 505 of the Copyright Act, which provides that a "court may...award a reasonable attorney's fee to the prevailing party." The Second Circuit refused to award attorneys' fees, holding instead that Wiley had pursued an objectively reasonable litigation position, explaining that "the imposition of a fee award against a copyright holder with an objectively reasonable litigation position will generally not promote the purposes of the Copyright Act."

This issue is now affording Kirtsaeng an opportunity to be before the Supreme Court again. The Supreme Court granted certiorari on January 15, 2016 and will now be tasked with determining the appropriate standard for awarding attorneys' fees to prevailing parties under Section 505 of the Copyright Act. This decision could remedy a circuit split, as the Ninth and Eleventh Circuits award fees when the prevailing party's arguments advanced the purposes of the Copyright Act; the Fifth and Seventh Circuits both presume in favor of attorneys' fees; the Second Circuit applies the aforementioned "objective reasonableness" test; and other Circuits consider yet more factors.

This decision will certainly be precedential, but it remains to be seen whether it will benefit Kirtsaeng.