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Tag Archives: Octane Fitness

Supreme Court to review standard for awarding attorneys’ fees in copyright cases

On January 15, 2016, the Supreme Court agreed to hear a case which requests that the Supreme Court determine the proper standard for attorneys’ fees awards in copyright cases.[1] The party requesting review by the Supreme Court, Kirstsaneg (“Petitioner”) prevailed against Respondent, John Wiley & Sons, Inc. (“Respondent”), who had sued the Petitioner for copyright infringement as a result of allegations that the Petitioner had purchased Respondent’s textbooks and then resold them without authorization.[2] Petitioner prevailed under the “first sale” doctrine which was found to be a complete defense to Respondent’s claims.[3] Having prevailed, Petitioner sought attorneys’ fees in the United States Court of Appeals for the Second Circuit, but his request was denied.[4] Generally, the Copyright Act provides a court with discretion to award a prevailing party its reasonable attorneys’ fees.[5]

In Petitioner’s petition for writ of certiorari requesting for the Supreme Court to hear his case, Petitioner alleges there is a split in the different Federal Circuit Courts regarding the standard for awarding attorneys’ fees in copyright cases.[6] Specifically, Petitioner alleges that had his request for attorneys’ fees been heard in a different circuit, such as the Ninth or Eleventh Circuits he would have definitely prevailed.[7] Petitioner also claims that he likely would have prevailed in the Third, Fourth, Fifth, Sixth or Seventh Circuits as well.[8] The difference between the Second Circuit and the other Circuits mentioned above, according to Petitioner, is that the Second Circuit “places ‘substantial weight’ on whether the losing party’s claim or defense was objectively unreasonable.”[9]

The Supreme Court recently addressed the standard for awarding attorneys’ fees under the Patent Act in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014). However, as the Petitioner points out, the standards under the Patent and Copyright Acts are different.[10] A decision by the Supreme Court determining the proper standard for attorneys’ fees would have a significant impact. As evidenced by the Supreme Court’s recent decision regarding attorneys’ fee award under the Patent Act, it does not appear that the Supreme Court is hesitant to make such a definitive ruling. We will be monitoring the status of this case over the next several months.

Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, Kirtsaeng v. John Wiley & Sons, Inc., 2016 WL 205944 (Jan. 15, 2016).
[2] See, http://www.scotusblog.com/wp-content/uploads/2016/01/Kirtsaeng-Cert-Petition.pdf
[3] Id.
[4] Id.
[5] See, 17 U.S.C. § 505.
[6] See, http://www.scotusblog.com/wp-content/uploads/2016/01/Kirtsaeng-Cert-Petition.pdf
[7] Id.
[8] Id.
[9] Id.
[10] Id.

Supreme Court to review Willful Patent Infringement and Damages standards

Recently, the Supreme Court agreed to hear two cases which involve questions regarding the proper standards for willful patent infringement and the enhancement of damages for infringement.[1] The Patent Act provides that damages in a patent infringement lawsuit may be enhanced where there is clear and convincing evidence that the infringement was willful.[2] Willful infringement may be found where: 1) there was an objectively high likelihood that the infringer’s actions constituted infringement, and 2) this likelihood was either known or so obvious that it should have been known to the accused infringer.[3] Further, “[o]bjective recklessness will not be found where the accused infringer’s ‘position is susceptible to a reasonable conclusion of no infringement.’”[4]

This is significant because the Supreme Court does not have to take every case that it is requested to hear and usually declines to hear most cases. In order to request for the Supreme Court to take on a case the petitioner must file a writ of certiorari. The writ of certiorari in the Stryker Corp. case, supra, focuses on whether proof of willful infringement should be a prerequisite for enhanced damages in patent infringement cases.[5] The writ makes an analogy to the Supreme Court’s recent softening of the standard for attorneys’ fee awards in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749 (2014) for support.[6] Further, the writ notes that the relevant statute does not explicitly use the term “willful” and criticizes the ability of alleged infringers to avoid a finding of willful infringement by being able to show a plausible defense, even in some situations, where the defense was not known to the alleged infringer prior to litigation.[7] The main question for the Supreme Court to decide appears to be whether proof of willfulness should be a prerequisite to enhancement of damages or if the decision should be left to the District Court’s discretion based upon an analysis of the totality of the circumstances.

If the Supreme Court rules in favor of the petitioners it will be a big victory for patent holders as it will become easier to obtain enhanced damages against patent infringers. The Patent Statute allows for damages to be enhanced up to three times.[8] Our firm will be monitoring the status of these cases. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, Halo Electronics, Inc. v. Pulse Electronics, Inc., et al., No. 14-1513, 2015 WL 3883472 (Oct. 19, 2015) and Stryker Corp., et. al. v. Zimmer, Inc., et. al., No. 14-1520, 2015 WL 3883499 (Oct. 19, 2015). These cases have been consolidated for hearing by the Supreme Court.
[2] See, 35 U.S.C. § 284.
[3] See, Stryker Corp. v. Zimmer, Inc., 782 F.3d 649, 660-661 (Fed. Cir. 2014).
[4] Id. at 661 (internal quotations omitted).
[5] See, http://www.scotusblog.com/wp-content/uploads/2015/10/Stryker-Petition-for-Certiorari.pdf
[6] Id.
[7] Id.
[8] See, 35 U.S.C. § 284.