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Copyright Law

Kirtsaeng v. John Wiley & Sons - Post-Decision SCOTUScast

SCOTUScast 7-28-16 featuring Christopher Newman
Christopher Newman July 28, 2016

On June 16, 2016, the Supreme Court decided Kirtsaeng v. John Wiley & Sons. Academic textbook publisher John Wiley & Sons, Inc. (Wiley) owns the American copyright for textbooks and often assigns its rights to its foreign subsidiaries to publish, print, and sell its textbooks abroad. Supap Kirtsaeng, a Thai citizen who came to the United States in 1997 to study mathematics, asked friends and family in Thailand to buy the English-language versions of his textbooks in Thailand, where they were cheaper and mail them to him. Kirtsaeng would then sell these textbooks in America, reimburse his friends and family, and make a profit.

In 2008, Wiley sued Kirtsaeng for copyright infringement. He ultimately prevailed before the U.S. Supreme Court on the question whether the “first sale” doctrine--under which the owner of a “lawfully made” copy can dispose of it without permission of the copyright owner--applies to copies of a copyrighted work lawfully made abroad. On remand, the U.S. Court of Appeals for the Second Circuit ruled that the “first sale” doctrine provided Kirstaeng with a complete defense to Wiley’s infringement claim. Kirtsaeng thereafter sought an award of attorneys’ fees pursuant to Section 505 of the Copyright Act, which allows the award of fees to a prevailing party at the court’s discretion. The federal Courts of Appeals have applied several different standards in resolving such fee requests. Here, the Second Circuit affirmed the denial of attorneys’ fees to Kirtsaeng based on the district court’s view that Wiley had taken an “objectively reasonable” position in the underlying litigation.

The U.S. Supreme Court again granted certiorari, to address the following question: What is the appropriate standard for awarding attorneys’ fees to a prevailing party under section 505 of the Copyright Act?

By a vote of 8-0, the Supreme Court vacated the judgment of the Second Circuit and remanded the case. Justice Kagan delivered the opinion for a unanimous Court, which held that (1) when deciding whether to award attorney's fees under the Copyright Act’s fee-shifting provision, a district court should give substantial weight to the objective reasonableness of the losing party's position, while still taking into account all other circumstances relevant to granting fees; and (2) while the Second Circuit properly calls for district courts to give "substantial weight" to the reasonableness of a losing party's litigating positions, its language at times suggests that a finding of reasonableness raises a presumption against granting fees, and that goes too far in cabining the district court's analysis.

To discuss the case, we have Christopher M. Newman, who is Associate Professor of Law at George Mason University School of Law.

The American IP System

Short video featuring Adam Mossoff
Adam Mossoff June 15, 2016

Adam Mossoff, Professor of Law at the Antonin Scalia Law School, George Mason University, gives a brief overview of the United States' intellectual property system. He discusses the United States' innovative manner of treating patents and trademarks as property rights. He also explains how the United States has influenced many modern countries' approaches.

Kirtsaeng v. John Wiley & Sons - Post-Argument SCOTUScast

SCOTUScast 5-12-16 featuring Christopher Newman
Christopher Newman May 12, 2016

On April 25, 2016, the Supreme Court heard oral arguments in Kirtsaeng v. John Wiley & Sons. Academic textbook publisher John Wiley & Sons, Inc. (Wiley) owns the American copyright for textbooks and often assigns its rights to its foreign subsidiaries to publish, print, and sell its textbooks abroad. Supap Kirtsaeng, a Thai citizen who came to the United States in 1997 to study mathematics, asked friends and family in Thailand to buy the English-language versions of his textbooks in Thailand, where they were cheaper and mail them to him. Kirtsaeng would then sell these textbooks in America, reimburse his friends and family, and make a profit.

In 2008, Wiley sued Kirtsaeng for copyright infringement. He ultimately prevailed before the U.S. Supreme Court on the question whether the “first sale” doctrine--under which the owner of a “lawfully made” copy can dispose of it without permission of the copyright owner--applies to copies of a copyrighted work lawfully made abroad. On remand, the U.S. Court of Appeals for the Second Circuit ruled that the “first sale” doctrine provided Kirstaeng with a complete defense to Wiley’s infringement claim. Kirtsaeng thereafter sought an award of attorneys’ fees pursuant to Section 505 of the Copyright Act, which allows the award of fees to a prevailing party at the court’s discretion. The federal Courts of Appeals have applied several different standards in resolving such fee requests. Here, the Second Circuit affirmed the denial of attorneys’ fees to Kirtsaeng based on the district court’s view that Wiley had taken an “objectively reasonable” position in the underlying litigation.

The U.S. Supreme Court again granted certiorari, to address the following question: What is the appropriate standard for awarding attorneys’ fees to a prevailing party under section 505 of the Copyright Act?

To discuss the case, we have Christopher M. Newman, who is Associate Professor of Law at George Mason University School of Law.

The Role of Congress and Executive Agencies in 21st Century IP Regimes - Event Audio/Video

2015 National Lawyers Convention
Sandra Aistars, John F. Duffy, David S. Olson, Arti K. Rai, Thomas B. Griffith November 19, 2015

The Constitution specifically vests power in Congress to grant authors and inventors exclusive rights in their writings and inventions. The first Congress passed laws setting forth the requirements and procedures for granting patents and copyrights. In these early days, copyrights were granted for registered works, and Thomas Jefferson himself examined patents as a member of President George Washington's cabinet. As IP laws developed, however, they gave substantial deference to both the Patent and Trademark Office (PTO), and the Copyright Office, on matters of reviewing, granting, limiting, and defining IP rights. These agencies have come to wield significant influence over the U.S. IP regime. Recently, and notwithstanding its delegations of power, Congress has been particularly active in passing new patent and copyright legislation. Sometimes Congress specifies how the law shall be interpreted and administered, and other times it delegates this to the relevant agencies, or to the courts. By considering specific examples, this panel will examine the role of Congress, Congressional delegation, and executive agencies in crafting and administering our modern intellectual property systems.

Intellectual Property: The Role of Congress and Executive Agencies in 21st Century IP Regimes
11:00 a.m. – 12:30 p.m.
State Room

  • Prof. Sandra Aistars, Clinical Professor, George Mason School of Law and Sr. Scholar and Director, Copyright Policy & Research, Center for the Protection of Intellectual Property
  • Prof. John F. Duffy, Samuel H. McCoy II Professor of Law, University of Virginia School of Law
  • Prof. David S. Olson, Associate Professor, Boston College Law School
  • Prof. Arti K. Rai, Elvin R. Latty Professor of Law and co-Director, Duke Law Center for Innovation Policy
  • Moderator: Hon. Thomas B. Griffith, U.S. Court of Appeals, D.C. Circuit

The Mayflower Hotel
Washington, DC

Current Issues in Patent Law and Policy - Event Audio/Video

2015 National Student Symposium
Phyllis Turner-Brim, A. Douglas Melamed, Michael J. Meurer, Adam Mortara, Danny J. Boggs April 17, 2015

Our patent system has historically been thought to be an engine of innovation, but it is much criticized today. Is a one-size-fits all model for patent duration appropriate in today's technological environment or does it simply incentivize unnecessary litigation? For instance, the rapid pace of technological change in some areas may obviate the need of lengthy patents in some areas. Should certain innovation—such as business processes be patentable? Should the patent office be reorganized or split up to better assess patents. What other types of incentives, including those provided by copyright or prizes, provide alternatives to patents?

  • Ms. Phyllis Turner-Brim, Chief Intellectual Property Counsel, Intellectual Ventures
  • Prof. Doug Melamed, Visiting Professor, Stanford Law School
  • Prof. Michael Meurer, Boston University School of Law
  • Mr. Adam Mortara, Partner, Bartlit Beck Herman Palenchar & Scott LLP
  • Moderator: Hon. Danny J. Boggs, U.S. Court of Appeals, Sixth Circuit

This program was presented on February 21, 2015, as part of the 2015 Federalist Society National Student Symposium.