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Kirtsaeng v. John Wiley & Sons, Inc.

Supreme Court of the United States

April 25, 2016, Argued; June 16, 2016, Decided

No. 15-375


 [****1772]  JUSTICE Kagan delivered the opinion of the Court.

Section 505 of the Copyright Act provides that a district court “may . . . award a reasonable attorney’s fee to the prevailing party.” 17 U. S. C. §505. The question presented here is whether a court, in exercising that authority, should give substantial weight to the objective reasonableness of the losing party’s position. The answer, as both decisions below held, is yes—the court should. But the court must also give due consideration to all other circumstances relevant to granting fees; and it retains discretion, in light of those factors, to make an award even when the losing party advanced a reasonable claim or defense. Because we are not certain that the lower [***6]  courts here understood the full scope of that discretion, we  [**375]  return the case for further consideration of the prevailing party’s fee application.

Petitioner Supap Kirtsaeng, a citizen of Thailand, came to the United States 20 years ago to study math at Cornell University. He quickly figured out that respondent John Wiley & Sons, an academic publishing company, sold virtually identical English-language textbooks in the two countries—but for far less in Thailand than in the United States. Seeing a ripe opportunity for arbitrage, Kirtsaeng asked family and friends to buy the foreign editions in Thai bookstores and ship them to him in New York. He then resold the textbooks to American students, reimbursed his Thai suppliers, and pocketed a tidy profit.

Wiley sued Kirtsaeng for copyright infringement, claiming that his activities violated  [*1984]  its exclusive right to distribute the textbooks. See 17 U. S. C. §§106(3), 602(a)(1). Kirtsaeng invoked the “first-sale doctrine” as a defense. That doctrine typically enables the lawful owner of a book (or other work) to resell or otherwise dispose of it as he wishes. See §109(a). But Wiley contended that the first-sale doctrine did not apply when a book (like those Kirtsaeng sold) was manufactured [***7]  abroad.

At the time, courts were in conflict on that issue. Some thought, as Kirtsaeng did, that the first-sale doctrine permitted the resale of foreign-made books; others maintained, along with Wiley, that it did not. And this Court, in its first pass at the issue, divided 4 to 4. See Costco Wholesale Corp. v. Omega, S. A., 562 U. S. 40, 131 S. Ct. 565, 178 L. Ed. 2d 470 (2010) ( per curiam). In this case, the District Court sided with Wiley; so too did a divided panel of the Court of Appeals for the Second Circuit. See 654 F. 3d 210, 214, 222 (2011). To settle the continuing conflict, this Court granted Kirtsaeng’s petition for certiorari and reversed the Second Circuit in a 6-to-3 decision, thus establishing that the first-sale doctrine allows the resale of foreign-made books, just as it does domestic ones. See Kirtsaeng v. John Wiley & Sons, Inc., 568 U. S. ___, ___, 133 S. Ct. 1351, 185 L. Ed. 2d 392 (2013) (slip op., at 3).

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136 S. Ct. 1979 *; 195 L. Ed. 2d 368 **; 2016 U.S. LEXIS 3922 ***; 118 U.S.P.Q.2D (BNA) 1770 ****; 84 U.S.L.W. 4420; 2016 Copy. L. Rep. (CCH) P30,937; 44 Media L. Rep. 1877; 26 Fla. L. Weekly Fed. S 251


Notice: The LEXIS pagination of this document is subject to change pending release of the final published version.


John Wiley & Sons, Inc. v. Kirtsaeng, 605 Fed. Appx. 48, 2015 U.S. App. LEXIS 8695 (2d Cir. N.Y., 2015)

Disposition: Vacated and remanded.



district court, litigate, objectively reasonable, prevailing, substantial weight, fee-shifting, courts, infringement, parties, losing party, fee award, factors, losing, cases, Copyright Act, decisions, purposes, holder

Civil Procedure, Attorney Fees & Expenses, Basis of Recovery, Statutory Awards, Copyright Law, Damages, Types of Damages, Costs & Attorney Fees, Criminal Infringement, Defenses, First Sale Doctrine, Civil Infringement Actions, Business & Corporate Compliance, Copyright, Copyright Law, Constitutional Law, Congressional Duties & Powers, Copyright & Patent Clause