Orrick Prevails in Key U.S. Supreme Court Copyright Case


In an important ruling for litigants fighting for their rights under the Copyright Act, the U.S. Supreme Court has provided new guidance for the award of attorney’s fees in copyright cases. The Supreme Court on June 16 agreed with the core arguments of an Orrick appellate team that a decision by the U.S. Second Circuit Court of Appeals set too rigid a standard for the recovery of legal fees.

The Supreme Court’s ruling provides Supap Kirtsaeng, a Thai graduate student, with another opportunity to persuade the lower courts he is entitled to attorney’s fees for his previous win in the Supreme Court in a copyright infringement action brought against him by global publishing giant John Wiley & Sons. That first win, in which Kirtsaeng was also represented by an Orrick appellate team led by partner Josh Rosenkranz, clarified that the first sale doctrine applies to foreign made copies, rejecting the publisher’s copyright infringement claims.

In this latest round in the Supreme Court, Kirtsaeng asked the justices to overturn the Second Circuit’s rejection of his attorney’s fees claim. The Orrick team argued that the Second Circuit’s “objective reasonableness” standard for securing fees is too rigid, and that the courts should look to factors beyond the reasonableness of the losing party’s position. In a unanimous ruling, the Supreme Court agreed with Kirtsaeng that lower courts should have the flexibility to award fees even where the other side’s position is reasonable. “In deciding whether to fee shift, (the court) must take into account a range of considerations beyond the reasonableness of the litigation,” Justice Elena Kagan wrote.

Orrick’s appellate team considers that conclusion important for individuals in Kirtsaeng’s position seeking to vindicate their rights in defending against powerful publishing interests. “This is the classic case where that rule should apply: where David fights Goliath and defies all odds to vindicate critical rights for all of us,” Rosenkranz said.

The Supreme Court’s decision vacates the Second Circuit ruling and sends the case back for a new hearing on fees. The ruling attracted widespread attention for providing clarity on how lower courts should assess fees in the copyright context. The New York Times, Reuters, The Recorder.

In addition to Josh, the team representing Kirtsaeng included partners Annette Hurst, Lisa Simpson and Tom Bondy, and associates Christopher Cariello and Andrew Silverman.