Safeguard your business and IP with a trusted legal partner.
Photo of Ronald J. Tong

Awarding attorney’s fees under §505

Supap Kirtsaeng v. John Wiley & Sons, Inc.

John Wiley & Sons, Inc., a United States publisher, filed a copyright infringement claim against Kirtsaeng for the sale of textbooks in the United States that he purchased from the suppliers in Thailand at a lower cost due to the different price structures that John Wiley & Sons had in place. Kirtsaeng provided a valid affirmative defense using the first-sale rule, and later sought attorney fees from John Wiley & Sons.

The court ultimately denied Kirtsaeng’s claim for attorney fees saying that “imposing a fee award against a losing party that had taken reasonable positions during litigation would not serve the Act’s purpose.” Specifically, 17 U.S. Code §505 – Remedies for Infringement: Cost and attorney’s fees reads: In any civil action under this title, the court in its discretion may allow the recovery of full costs by or against any party other than the United States or an officer thereof. Except as otherwise provided by this title, the court may also award a reasonable attorney’s fee to the prevailing party as part of the costs.”

Regarding the methods of addressing the applicability of an award of attorney’s fees, the court decided on the following:

  1. “A district court cannot award attorney’s fees as a matter of course; rather a court must make a more particularized, case-by-case assessment.”
  2. A court may not treat a prevailing plaintiff differently from a prevailing defendant.
  3. That courts should consider the following nonexclusive factors in their decision: frivolousness, motivation, objective reasonableness, and the need in particular circumstances to advance considerations of compensation and deterrence.
  4. And finally, added the objective-reasonableness approach that looked at the specific circumstances if the case.

Effectively, §505 provides courts with a “wide latitude to award attorney’s fees based on the totality of circumstances in a case.”

This article is provided for informational purpose only and is not intended as a form of legal advice. If you have any questions on the subject matter of this article, call Roland Tong, at 949-298-6867 or email Mr. Tong at [email protected]. Mr. Tong has been obtaining patent, trademark, copyright, and trade secret protections for his clients since 2001. He has represented a wide range of clients from start-up companies to Fortune 500 companies in a wide range of industries.