Supap Kirtsaeng built himself a business on eBay buying textbooks in Asia and reselling them to students in the US. That practice made him the target of a copyright lawsuit by John Wiley & Sons, a large textbook company that didn't like Kirtsaeng undercutting their US prices. Lawyers for Wiley said that they should control the right to import their copyrighted works.

Kirtsaeng won a resounding victory in 2013, when the Supreme Court said he was protected by the first-sale doctrine. He'd bought the books legally and could resell them, even if that involved moving the books across the border.

After his win, Kirtsaeng sought to get his attorneys' fees paid. It's now clear that fee fight will result in a second trip to the high court, which granted his petition (PDF) on Friday.

In the US legal system, parties must generally bear their own expenses. However, copyright law allows for judges to "award a reasonable attorney’s fee to the prevailing party," at their discretion. Because of that provision, fee-shifting is more common in copyright cases.

Kirtsaeng didn't get his fee award, having been rejected by both the district court and the US Court of Appeals for the 2nd Circuit. Now he has appealed to the Supreme Court, complaining of a "circuit split" in how appeals courts treat such copyright fees. Kirtsaeng argues that if he had been sued almost anywhere else in the country, his legal bills would be paid—and that's an injustice that the Supreme Court needs to remedy. As his petition (PDF) states:

Had Kirtsaeng prevailed in the Ninth or Eleventh Circuit, he would have obtained his reasonable attorneys’ fees. Had he prevailed in the Fifth or Seventh Circuits, he would have had a rebuttable presumption in favor of obtaining his attorneys’ fees. Had he prevailed in the Third, Fourth, or Sixth Circuits, Kirtsaeng very likely would have obtained his attorneys’ fees. Unluckily for Kirtsaeng, Wiley sued him in the Southern District of New York, and so when Kirtsaeng prevailed, he prevailed in the Second Circuit, where Second Circuit precedent meant Kirtsaeng could not obtain his attorneys’ fees.

For the 2nd Circuit, the key factor is whether a losing party's argument was "objectively unreasonable." Wiley's argument wasn't, in the lower court's view, so it shouldn't have to pay Kirtsaeng's bills.

Kirtsaeng says the 2nd Circuit's view on copyright fee awards is an outlier. The Supreme Court must weigh in to harmonize the various circuits, he says, because they're in "utter disarray" about what the standard for fee requests should be.

Petition Granted

Even though the Supreme Court has agreed to hear Kirtsaeng's fee argument, it's far from clear that he will see a payday. The Supreme Court could choose to uphold the 2nd Circuit and impose its more strict view on copyright fees nationwide. That result could make it substantially harder to win a fee award in places like the 9th Circuit, where fee awards to winners of copyright cases are often awarded as a matter of course.

Wiley's only Supreme Court brief (PDF) filed so far contends that it brought a reasonable lawsuit over a complex issue. The company notes that the Supreme Court split 4-4 in Costco v. Omega, an earlier case that raised the same issue as Kirtsaeng. The textbook company contends that granting Kirtsaeng an outsized fee award would be unjust, and discourage the filing of legitimate copyright cases.

"Petitioner sought more than $2 million in fees, nearly all of which had been incurred by Petitioner’s Supreme Court counsel who had agreed to represent Petitioner without charging him anything," Wiley's attorneys state.

The 2nd Circuit focused on the "objective reasonableness" of their lawsuit, and it was right to do so, Wiley lawyers argue. They say the 5th, 6th, 8th, and 9th Circuits make similar considerations. Rather, they claim it's the Chicago-based 7th Circuit that's the outlier, with its presumption in favor of a fee award.