June 16, 2016 Last Updated 1:39 pm

Supreme Court says student who won copyright battle with publisher can go after legal fees

Ruling vacates an earlier Appeals Court ruling in favor of John Wiley & Sons, sending it back to the lower court of further consideration

The Supreme Court today unanimously ruled (PDF) that a Thai student who won a copyright case involving imported textbooks could go after the textbook publisher over his legal fees. The publisher, John Wiley & Sons, has sued Supap Kirtsaeng for copyright infringement when the student, realizing that the same textbook cost less in Thailand, bought the foreign edition, claiming that it had the exclusive right to distribute the textbooks.

“Kirtsaeng invoked the “first-sale doctrine” as a defense,” the court described in its ruling today. “That doctrine typically enables the lawful owner of a book (or other work) to resell or otherwise dispose of it as he wishes.”

The court said today that the litigant has an “unreasonable litigating position” and loses in court the party being sued has cause to seek compensation for their legal fees.

“The copyright holder with no reasonable infringement claim has good reason not to bring suit in the first instance (knowing he cannot force a settlement and will have to proceed to judgment); and the infringer with no reasonable defense has every reason to give in quickly, before each side’s litigation costs mount,” the court said today.

The court ruling was only a partial victory of Kirtsaeng, who was seeking $2 million in legal fees. The court rejected his argument that

“Kirtsaeng’s proposal would not produce any sure benefits,” the court wrote. “We accept his premise that litigation of close cases can help ensure that “the boundaries of copyright law [are] demarcated as clearly as possible,” thus advancing the public interest in creative work. But we cannot agree that fee-shifting will necessarily, or even usually, encourage parties to litigate those cases to judg- ment. Fee awards are a double-edged sword: They in- crease the reward for a victory—but also enhance the penalty for a defeat.”

In most cases each side is responsible for their own legal fees, but the Copyright Act allows a judge to award legal fees – thus, it is assumed, preventing the bringing of nuisance cases. Here, the student was denied being compensated by the publisher because the publisher had initially won their case, only to finally lose it when it got to the Supreme Court in 2013.

Now the ruling by the Court of Appeals is vacated the case goes back to the lower court for consideration.

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