No. 17-1625
`
`In the
`Supreme Court of the United States
`
`RIMINI STREET, INC., et al.,
`
`v.
`
`ORACLE USA, INC., et al.,
`
`Petitioners,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the ninth CirCUit
`
`BRIEF OF AMICUS CURIAE COPYRIGHT
`ALLIANCE IN SUPPORT OF RESPONDENTS
`
`keIth kupferSchMID
`terry hart
`copyrIGht allIance
`1331 H Street, NW, Suite 701
`Washington, DC 20005
`(202) 540-2247
`
`eleanor M. lackMan
`Counsel of Record
`Sara GateS
`cowan DebaetS abrahaMS
`& ShepparD LLP
`41 Madison Avenue, 38th Floor
`New York, New York 10010
`(212) 974-7474
`elackman@cdas.com
`
`Counsel for Amicus Curiae
`
`284932
`
`
`
`In the
`Supreme Court of the United States
`
`RIMINI STREET, INC., et al.,
`
`v.
`
`ORACLE USA, INC., et al.,
`
`Petitioners,
`
`Respondents.
`
`On Writ Of CertiOrari tO the United StateS
`COUrt Of appealS fOr the ninth CirCUit
`
`BRIEF OF AMICUS CURIAE COPYRIGHT
`ALLIANCE IN SUPPORT OF RESPONDENTS
`
`keIth kupferSchMID
`terry hart
`copyrIGht allIance
`1331 H Street, NW, Suite 701
`Washington, DC 20005
`(202) 540-2247
`
`eleanor M. lackMan
`Counsel of Record
`Sara GateS
`cowan DebaetS abrahaMS
`& ShepparD LLP
`41 Madison Avenue, 38th Floor
`New York, New York 10010
`(212) 974-7474
`elackman@cdas.com
`
`Counsel for Amicus Curiae
`
`284932
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`
` PAGE
`
`TABLE OF AUTHORITIES ..................................... iii
`
`INTERESTS OF AMICUS CURIAE ..........................1
`
`SUMMARY OF ARGUMENT .....................................3
`
`ARGUMENT ...............................................................6
`
`I. THE NINTH CIRCUIT’S
`INTERPRETATION OF 17 U.S.C.
`§ 505 TO ALLOW RECOVERY OF
`“FULL COSTS” ADVANCES THE
`PURPOSES OF COPYRIGHT LAW ....................6
`
`
`
`
` A. Awards of “Full Costs” in
`
` Copyright Cases Have a
`Long History in the Law .................................9
`
`
`
`
`B. Allowing Recovery of “Full Costs”
`Encourages Parties to Invest in
`Meritorious Claims That Protect
` Creators’ Rights and Advance
`
`the Goals of Copyright Law .......................... 12
`
`
` C. Making Full Costs Available to
` Parties in the Digital Age Is
` More Important Than Ever ......................... 18
`
` D. The Statute Is Clear and
`Supports an Award of Full Costs ................... 22
`
`
`
`
`
`
`
`
`
`
`
`ii
`
`
`
`II. PETITIONERS’ INTERPRETATION
`OF THE LAW WOULD UNDERMINE
`COPYRIGHT POLICY AND
`SIGNIFICANTLY CHILL
`COPYRIGHT CLAIMS ........................................ 28
`
`
`
`A. Barring a Prevailing Party from
`Recovering Full Costs Would
`Discourage Copyright Litigation ................ 28
`
`
`
`B. The Equities Should
`Not Favor Wrongdoers ............................... 33
`
`
`CONCLUSION .......................................................... 36
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
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`
`
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`
`
`
`
`iii
`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Page(s)
`
`Feist Publications, Inc. v. Rural Telephone
`Service Co.,
`499 U.S. 340 (1991) ................................................7
`
`Fogerty v. Fantasy, Inc.,
`510 U.S. 517 (1994) ...................................... passim
`
`Fox News Network, LLC v. TVEyes, Inc.,
`
`883 F.3d 169 (2d Cir. 2018) ........................... 19–20
`
`Harper & Row Publishers, Inc. v.
`Nation Enters.,
`471 U.S. 539 (1985) .............................................. 20
`
`Kirtsaeng v. John Wiley & Sons, Inc.,
`136 S. Ct. 1979 (2016) .................................. passim
`
`Roberts v. Sea-Land Servs., Inc.,
`566 U.S. 93 (2012) .......................................... 23–24
`
`Sony Corp. of Am. v. Universal City
`Studios, Inc.,
`464 U.S. 417 (1984) ................................................7
`
`Taniguchi v. Kan Pac. Saipan, Ltd.,
`566 U.S. 560 (2012) .............................................. 23
`
`Twentieth Century Music Corp. v. Aiken,
`422 U.S. 151 (1975) .......................................... 7, 26
`
`Williams v. Gaye,
`895 F.3d 1106 (9th Cir. 2018) .............................. 20
`
`
`
`
`
`
`
`
`
`
`iv
`
`
`
`Wisconsin Cent. Ltd. v. United States,
`138 S. Ct. 2067 (2018) .......................................... 23
`
`Wyatt Tech. Corp. v. Malvern Instruments, Inc.,
`No. CV 07-8298 ABC (RZX),
` 2010 WL 11404472
`
`(C.D. Cal. June 17, 2010) ..................................... 10
`
`Statutes & Constitutions
`
`17 U.S.C. § 101 .......................................................... 24
`
`17 U.S.C. § 505 .................................................. passim
`
`17 U.S.C. § 911 .......................................................... 25
`
`28 U.S.C. § 1821 ............................................ 11, 25, 28
`
`28 U.S.C. § 1920 ...................................... 11, 25, 28, 33
`
`1831 Act, ch. 16, § 12, 4 Stat. 436...............................9
`
`Act of Mar. 4, 1909, ch. 320, § 40,
`35 Stat. 1075 ................................................ 4, 9, 27
`
`Copyright Act of 1976 ....................................... passim
`
`U.S. CONST. art. I, § 8, cl. 8 .........................................7
`
`Other Authorities
`
`AM. INTELLECTUAL PROP. LAW ASS’N, REPORT OF
`THE ECONOMIC SURVEY 2017 (2017) .................... 13
`
`
`
`
`
`
`
`
`
`
` v
`
`
`
`
`
`Anthony Ciolli, Lowering the Stakes:
`Toward A Model of Effective
`Copyright Dispute Resolution,
`110 W. VA. L. REV. 999 (2008) ................. 12, 31, 35
`
`Copyright Alternative in Small-Claims
`Enforcement Act of 2017: Hearing on H.R.
`3945 Before the H. Comm. on Judiciary,
`115th Cong. (2018) (statement of Statement
`of Keith Kupferschmid, Chief Executive
`Officer, Copyright Alliance) ................................. 31
`
`Daniel E. Wanat & Charles D. Bullock,
`Copyright Infringement Litigation:
`Section 505 of the Copyright Act Accords
`“Evenhanded” Treatment to a
`Prevailing Defendant on the Issue of
`Whether to Award an Attorney’s Fee,
`25 SW. U. L. REV. 107 (1995). ............................. 11
`
`Full, DICTIONARY.COM,
`https://www.dictionary.com/browse/full
`(last visited Dec. 5, 2018) .................................... 24
`
`Full, MERRIAM-WEBSTER.COM,
`https://www.merriam-webster.com/
`dictionary/full (last visited Dec. 5, 2018) ............ 24
`
`Full, OXFORD LIVING DICTIONARIES,
`https://en.oxforddictionaries.com/
`definition/full (last visited Dec. 5, 2018) ............. 24
`
`H.R. Rep. No. 94-1476 (1976),
`
`reprinted in 1976 U.S.C.C.A.N. 5659 ...... 10, 25, 26
`
`
`
`
`
`
`
`
`
`
`
`vi
`
`
`
`Initial Discovery Considerations, in COPYRIGHT
`LITIGATION HANDBOOK § 14:1 (2d ed. 2018) ........ 14
`
`Jeffrey Edward Barnes, Attorney’s Fee Awards
`in Federal Copyright Litigation After
`Fogerty v. Fantasy: Defendants Are
`Winning Fees More Often, but the New
`Standard Still Favors Prevailing Plaintiffs,
`47 UCLA L. REV. 1381 (2000) ....................... 11, 35
`
`John Zuercher, Clarifying Uncertainty: Why We
`Need A Small Claims Copyright Court,
`21 MARQ. INTELL. PROP. L. REV. 105 (2017) ........ 31
`
`Linda Jellum, The Linear Approach to Statutory
`Interpretation, AM. BAR ASS’N (2018),
`https://www.americanbar.org/content/dam/ab
`a/events/administrative_law/2018meetings/0
`4/Statutory%20Interpretation%202018.pdf ....... 23
`
`Looking It Up: Dictionaries and Statutory
`Interpretation, 107 HARV. L. REV. 1437 (1994) ... 23
`
`MELVIN B. NIMMER & DAVID NIMMER,
`NIMMER ON COPYRIGHT
`(Matthew Bender rev. ed. 2013) .......................... 14
`
`Pamela Samuelson, Digital Media and the
`Changing Face of Intellectual Property Law,
`16 RUTGERS COMP. & TECH. L.J. 323 (1990) ........ 33
`
`Rachel Kim, Exploring the Bounds of Fair Use:
`Fox News v. TVEyes, COPYRIGHT ALLIANCE
`(Feb. 28, 2018), https://copyrightalliance.org/
`ca_post/fair-use-fox-news-v-tveyes/ ..................... 20
`
`
`
`
`
`
`
`
`
`
`vii
`
`
`
`RAND INSTITUTE FOR CIVIL JUSTICE, WHERE
`THE MONEY GOES: UNDERSTANDING
`LITIGANT EXPENDITURES FOR PRODUCING
`ELECTRONIC DISCOVERY 28 (2012) ................. 29–30
`
`REGISTER OF COPYRIGHTS, 87TH CONG.,
`COPYRIGHT LAW REVISION: REPORT OF
`THE REGISTER OF COPYRIGHTS ON THE
`GENERAL REVISION OF THE U.S.
`COPYRIGHT LAW (Comm. Print. 1961) ........... 10, 25
`
`REGISTER OF COPYRIGHTS,
`COPYRIGHT SMALL CLAIMS (2013) ........................ 13
`
`S. Rep. No. 94-473 (1975) .............................. 10, 25, 26
`
`Sandra M. Aistars, Ensuring Only Good
`Claims Come in Small Packages: A
`Response to Scholarly Concerns About a
`Proposed Small Copyright Claims Tribunal,
`26 GEO. MASON L. REV. (forthcoming 2018) ........ 12
`
`SEAK INC., 2017 SEAK, INC. SURVEY
`OF EXPERT WITNESS FEES (2017) ......................... 21
`
`SHAMBIE SINGER, 2A SUTHERLAND STATUTORY
`CONSTRUCTION § 46:5 (7th ed. 2018) ....... 11, 24, 25
`
`Shyamkrishna Balganesh & Gideon
`Parchomovsky, Equity’s Unstated Domain:
`The Role of Equity in Shaping Copyright
`Law, 163 U. PA. L. REV. 1859 (2015) .............. 8, 26
`
`
`
`
`
`
`
`
`
`
`viii
`
`
`
`Statutory Interpretation, AM. BAR ASS’N (2018),
`https://www.americanbar.org/content/dam/ab
`a/events/administrative_law/2018meetings/0
`4/Statutory%20Interpretation%202018.pdf ....... 23
`
`Stephen P. Anway, Mediation in Copyright
`Disputes: From Compromise Created
`Incentives to Incentive Created Compromises,
`18 OHIO ST. J. DISP. RESOL. 439 (2003) .............. 13
`
`Symposium, Session 3; To What Extent
`Should Libraries Be Permitted to
`Engage in Mass Digitization of Published
`Works, and for What Purposes?,
`36 COLUM. J.L. & ARTS 567 (2013) ..................... 33
`
`Virginia Knapp Dorell, Picturing A Remedy for
`Small Claims of Copyright Infringement,
`65 ADMIN. L. REV. 449 (2013) ........................ 12, 31
`
`William H. Wright, Litigation As A Mechanism
`for Inefficiency in Software Copyright Law,
`39 UCLA L. REV. 397 (1991) ............................... 21
`
`WILLIAM F. PATRY, 6 PATRY ON COPYRIGHT
`§ 22:221, Westlaw (section
`updated Nov. 27, 2018) ................................ passim
`
`
`
`
`
`
`
`
`BRIEF OF THE COPYRIGHT ALLIANCE AS
`AMICUS CURIAE IN SUPPORT OF
`AFFIRMANCE
`
`Pursuant to Rule 37 of the Supreme Court of the
`United States, amicus curiae the Copyright Alliance
`respectfully submits this brief in support of the
`request of respondents Oracle USA, Inc., et al., that
`the decision of the United States Court of Appeals
`for the Ninth Circuit be affirmed.1
`
`INTEREST OF AMICUS CURIAE
`
`a nonprofit,
`is
`The Copyright Alliance
`nonpartisan 501(c)(4) membership organization
`dedicated to promoting and protecting the ability of
`creative professionals to earn a living from their
`creativity. It represents the interests of individual
`authors from a diverse range of creative industries—
`including, for example, writers, musical composers
`and recording artists, journalists, documentarians
`and
`filmmakers, graphic and visual artists,
`
`
`1 Pursuant to Sup. Ct. R. 37.6, amicus curiae states that no
`counsel for any party authored this brief in whole or in part,
`and no party or counsel for any party made a monetary
`contribution intended to fund the preparation or submission of
`this brief. Only amicus curiae made such a monetary
`contribution. Respondent Oracle America, Inc. is a member of
`the Copyright Alliance. Other Copyright Alliance members
`may join other amicus briefs submitted in this case. The Clerk
`has noted Petitioners’ and Respondents’ blanket consents to
`amicus curiae briefs, dated October 24, 2018 and October 26,
`2018, respectively, on the docket.
`
`
`
`
`
`
`
`
`
` 2
`
`
`
`photographers and software developers—and the
`small businesses
`that are affected by
`the
`unauthorized use of their works. The Copyright
`Alliance’s membership encompasses these individual
`artists and creators, creative union workers, and
`small businesses in the creative industry, as well as
`the organizations and corporations that support and
`invest in them.
`
`Consistent with its mission of advocating policies
`that promote and preserve the value of copyright,
`and protecting the rights of creators, the Copyright
`Alliance participates as an amicus in this case to
`help this Court understand, from the perspective of
`content creators of all sizes, how allowing recovery of
`“full costs,” including non-taxable costs, under 17
`U.S.C. § 505 advances the purposes of, and policies
`behind, copyright
`law.
` From
`the members’
`perspective, this approach would further the goals of
`the Copyright Act by incentivizing copyright owners
`to protect their rights through litigation where
`appropriate,
`encouraging
`parties
`to
`pursue
`meritorious claims and defend against frivolous
`ones, and promoting the full and fair adjudication of
`copyright cases. The Copyright Alliance also chooses
`to participate as an amicus in this case to warn the
`Court of the significant negative effects the adoption
`of Petitioners’ proposed construction of the statute
`would have not only on copyright owners and
`litigants, but on copyright law as a whole.
`
`
`
`
`
`
`
`
`
`
`
`
` 3
`
`
`
`SUMMARY OF ARGUMENT
`
`As a matter of law and policy, the Court should
`affirm the Ninth Circuit’s decision and interpret 17
`U.S.C. § 505 to allow recovery of “full costs”
`expended in litigation. The statute, the policy
`underlying
`it, and
`the
`interpretation of
`the
`Copyright Act have all confirmed the concept that
`the district courts have the sound discretion to
`award the prevailing party compensation for due
`costs incurred in enforcement or defense of claims.
`
`Awards of “full costs” in copyright cases have a
`long history in the law, reaching back to the 1909
`Copyright Act. Making full costs available in the
`Court’s discretion also falls into line with the policies
`of the Copyright Act. The reading that Respondents
`advocate furthers several purposes of the Copyright
`Act,
`including encouraging parties
`to bring
`meritorious claims that protect creators’ rights and
`bolstering the litigation of meritorious defenses that
`further the development of copyright law.
`
`Encouraging meritorious claims advances the
`purposes of the Copyright Act for the same reasons
`that the Court in Kirtsaeng v. John Wiley & Sons,
`Inc. and Fogerty v. Fantasy Inc. found, as the victor’s
`likelihood of recovering full costs from the opposing
`party gives him an incentive to litigate the case to
`the end. Such litigation, in turn, enriches the
`general public through access to creative works by
`
`
`
`
`
`
`
`
`
`
`
`
` 4
`
`
`
`demarcating the boundaries of copyright law as
`clearly as possible.
`
`Unlike in many areas of the law, creators and
`other copyright owners cannot look to large damage
`awards to help offset the full costs of litigating a
`case. Where parties are seeking injunctive relief,
`which is often most critical in copyright cases,
`recovery of all costs becomes even more important to
`offset the high threshold of litigating in federal
`court. Making full costs available is even more
`important in the digital age, where copyright cases
`often require unique treatment, including increased
`use of technical or specialized experts. These
`experts often come with a hefty price tag, but they
`are vital to the proper adjudication of the case.
`
`Fundamentally, moreover, if a creator is going to
`be incentivized to create, a decision to leave the
`creator with no option but to invest her own funds in
`non-taxable litigation costs yields the result of
`turning the incentives upside down. If the cost of
`enforcement is too expensive, then the copyright that
`the law grants to the creator becomes devalued, if
`not entirely meaningless. The copyright laws are
`designed
`to
`encourage
`the protection
`and
`enforcement of the copyright; assuring the copyright
`owner that there is no chance to recover certain
`expensive costs does
`little to
`incentivize the
`copyright owner to take action.
`
`
`
`
`
`
`
`
`
`
`
`
` 5
`
`
`
`This is a real problem that creators would face if
`the decision below is reversed. In some cases, the
`costs are so great that the creator cannot afford to
`take a first step, or step far enough down the road.
`Similarly, if a party with a meritorious defense
`cannot afford the necessary costs of electronic
`discovery, experts, and other costs that Petitioner
`claim are excluded, that party may be discouraged
`from defending against the claim. This outcome in
`turn removes an opportunity to develop the contours
`of copyright law, as the Courts in Kirtsaeng and
`Fogerty recognized.
`
`Principles of statutory interpretation confirm
`that Section 505 should be read consistently with the
`outcome that copyright policy encourages. Leading
`scholars similarly have opined that “full costs”
`means taxable and non-taxable costs. Even the
`plain language of the statute—in using the word
`“full”
`rather
`than
`“taxable”—resolves
`to
`Respondents’ position that “full costs” are exactly
`that.
`
`In contrast, adoption of Petitioners’ proposed
`interpretation of the law would be inconsistent with
`the language of the statute, undermine copyright
`policy, and significantly chill copyright claims.
`Many copyright owners struggle to meet the high
`threshold to commence a copyright case, let alone
`bear the high costs required for experts and
`electronically stored discovery
`in order to be
`
`
`
`
`
`
`
`
`
`
`
`
` 6
`
`
`
` Barring such rights holders from
`successful.
`recovery of their full costs if they win would
`discourage creators from bringing meritorious claims
`and leave them without an available avenue to
`enforce their rights. Moreover, Petitioners’ proposed
`interpretation would create a policy that would favor
`wrongdoers and thereby embolden infringers who
`would be challenged only by well-funded copyright
`owners. As longstanding copyright law and policy
`confirms that categorical bars to recovery should not
`stand in the way of enforcement of rights and the
`development of copyright law, the Court should
`affirm
`the Ninth Circuit’s
`interpretation of
`Section 505, giving courts discretion to award a
`prevailing party their
`full costs expended
`in
`litigation.
`
`ARGUMENT
`
`I. THE NINTH CIRCUIT’S INTERPRETATION
`OF 17 U.S.C. § 505 TO ALLOW RECOVERY
`OF
`“FULL COSTS” ADVANCES THE
`PURPOSES OF COPYRIGHT LAW
`
`In interpreting the Copyright Act, the courts
`should take into account the policies and purposes
`underlying the Copyright Act, which include the
`incentive for authors to recoup and protect their
`investments in the creation of copyrightable works
`for the ultimate benefit of the public. This is what
`the Ninth Circuit did below in finding that “full
`costs” means exactly that: full costs.
`
`
`
`
`
`
`
`
`
`
`
`
` 7
`
`
`
`The essential purpose of copyright law in the
`United States is reflected in the Constitution’s grant
`of authority to Congress, “[t]o promote the Progress
`of Science and useful Arts.” U.S. CONST. art. I, § 8,
`cl. 8. In examining copyright laws, the Court has
`often recognized the importance of interpreting the
`Copyright Act to further this purpose. See, e.g.,
`Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct.
`1979, 1986–87 (2016); Fogerty v. Fantasy, Inc., 510
`U.S. 517, 526–27 (1994); Feist Publications, Inc. v.
`Rural Telephone Service Co., 499 U.S. 340, 349–50
`(1991); Sony Corp. of Am. v. Universal City Studios,
`Inc., 464 U.S. 417, 428–29 (1984); Twentieth Century
`Music Corp. v. Aiken, 422 U.S. 151, 155–56 (1975).
`
`Interpreting the law in light of the purposes of
`the Copyright Act both rewards creators and serves
`the public interest. As the Court in Twentieth
`Century Music. Corp. v. Aiken stated, “[t]he
`immediate effect of our copyright law is to secure a
`fair return for an ‘author’s’ creative labor. But the
`ultimate aim is, by this incentive, to stimulate
`artistic creativity for the general public good.” 422
`U.S. at 156. Likewise, in Fogerty v. Fantasy, Inc.,
`when the Court first examined 17 U.S.C. § 505—the
`statutory provision at issue in this case—the Court
`explained that “copyright law ultimately serves the
`purpose of enriching the general public through
`access to creative works.” 510 U.S. 517 at 527.
`
`
`
`
`
`
`
`
`
`
`
`
` 8
`
`
`
`the symbiotic
`recognized
`This Court has
`relationship between incentives to create and the
`ultimate public benefit. In each of these seminal
`cases, as well as the other examples cited above, the
`Court
`interpreted copyright
`law
`in
`light of
`Congress’s ultimate goals and considered whether
`the underlying purposes are best served by the
`proposed interpretations before the Court. See
`Shyamkrishna Balganesh & Gideon Parchomovsky,
`Equity’s Unstated Domain: The Role of Equity in
`Shaping Copyright Law, 163 U. PA. L. REV. 1859,
`1872–82 (2015) (“In area after area of substantive
`copyright jurisprudence, we find the Court relying
`on copyright’s core goals to glean meaning from
`otherwise plain
`statutory
`language.”).
`
`In
`recognizing the complexity of the policies served by
`copyright law, Fogerty, 510 U.S. at 526, the Court
`unwaveringly has given due consideration to the
`underlying purpose enshrined in the Constitution
`that ensures that authors are incentivized to create
`works for the ultimate promotion of “the progress of
`science and useful arts.” The Court should follow
`the same approach as this Court has done in the
`past and give credence to the concept that the rights
`of authors should be secured for the time period
`granted in the Copyright Act. If this Court does so,
`it will recognize that a copyright that cannot
`effectively be enforced is no incentive at all and,
`accordingly, will affirm.
`
`
`
`
`
`
`
`
`
`
`
`
` 9
`
`
`
`A. Awards of “Full Costs” in Copyright
`Cases Have a Long History in the Law.
`
`Section 505 of the Copyright Act provides that a
`“court in its discretion may allow the recovery of full
`costs by or against any party . . . .” 17 U.S.C. § 505.
`The Section also provides that a court may “award a
`reasonable attorney’s fee to the prevailing party as
`part of the costs.” Id. The term “full costs” stems
`from prior iterations of the Copyright Act, which also
`authorized recovery of “full costs.” See 1831 Act, ch.
`16, § 12, 4 Stat. 436, 438–39 (“[I]n all recoveries
`under this act, either for damages, forfeitures, or
`penalties, full costs shall be allowed thereon . . . .”);
`Act of Mar. 4, 1909, ch. 320, § 40, 35 Stat. 1075, 1084
`(“That in all actions, suits, or proceedings under this
`Act . . . full costs shall be allowed, and the court may
`award to the prevailing party a reasonable attorney’s
`fee as part of the costs.”); see also WILLIAM F. PATRY,
`6 PATRY ON COPYRIGHT § 22:221, Westlaw (section
`updated Nov. 27, 2018) (detailing the statutory
`history and stating that “copyright laws have always
`allowed ‘full costs’”). However, unlike the current
`version of the Copyright Act, the award of “full costs”
`was not always discretionary.
`
`Prior to 1976, the award of “full costs” to a
`prevailing party
`in a copyright action was
`mandatory, whereas an award of reasonable
`attorney’s fees was left to the Court’s discretion. See
`35 Stat. at 1084. Noting that “the discretionary
`
`
`
`
`
`
`
`
`
`
`10
`
`
`
`power of the courts is generally regarded as
`salutary,” the Register of Copyrights recommended
`that Congress amend the provision to give courts
`discretionary power over an award of costs as well.
`See REGISTER OF COPYRIGHTS, 87TH CONG.,
`COPYRIGHT LAW REVISION: REPORT OF THE REGISTER
`OF COPYRIGHTS ON THE GENERAL REVISION OF THE
`U.S. COPYRIGHT LAW 74, 109 (Comm. Print. 1961)
`[hereinafter REGISTER OF COPYRIGHTS, REPORT].
`Congress acquiesced and amended the provision in
`the Copyright Act of 1976
`to give
`courts
`discretionary power over an award of costs and
`attorney’s fees. See H.R. Rep. No. 94-1476, at 163
`(1976), reprinted in 1976 U.S.C.C.A.N. 5659, 5779
`(explaining that “[u]nder section 505 the awarding of
`costs and attorney’s fees are left to the court’s
`discretion”); S. Rep. No. 94-473, at 30 (1975) (same).
`
`Courts, which are best situated to evaluate the
`individual costs of each case, have often exercised
`their discretionary power pursuant to Section 505 to
`decide whether a prevailing party should recover
`their “full costs” and what those costs entail based
`on the circumstances of the case, just as they have
`determined equitable awards. See, e.g., Wyatt Tech.
`Corp. v. Malvern Instruments, Inc., No. CV 07-8298
`ABC (RZX), 2010 WL 11404472, at *1–4 (C.D. Cal.
`June 17, 2010) (awarding a variety of “reasonable”
`costs under 17 U.S.C. § 505, including costs for
`computerized research, photocopying and document
`processing, messenger and delivery, travel and
`
`
`
`
`
`
`
`
`
`
`11
`
`
`
`depositions, telephone chargers, and mediator and
`expert witness fees), aff’d, 526 F. App’x 761 (9th Cir.
`2013); cf. Jeffrey Edward Barnes, Attorney’s Fee
`Awards
`in Federal Copyright Litigation After
`Fogerty v. Fantasy: Defendants Are Winning Fees
`More Often, but the New Standard Still Favors
`Prevailing Plaintiffs, 47 UCLA L. REV. 1381, 1398
`(2000); Daniel E. Wanat & Charles D. Bullock,
`Copyright Infringement Litigation: Section 505 of the
`Copyright Act Accords “Evenhanded” Treatment to a
`Prevailing Defendant on the Issue of Whether to
`Award an Attorney’s Fee, 25 SW. U. L. REV. 107, 126–
`28 (1995). However, Petitioners now complain that
`allowing courts to exercise their discretion to award
`“full costs” under Section 505 should be curtailed by
`arbitrary categories contained in a separate title of
`the U.S. Code. See 28 U.S.C. § 1920 (taxation of
`costs), § 1821 (per diem and mileage for witnesses).
`As briefly explained in Section I.D., infra, this
`construction of the statute is improper and is not
`supported by the underlying purposes of the
`Copyright Act.
` See SHAMBIE SINGER, 2A
`SUTHERLAND STATUTORY CONSTRUCTION § 46:5 (7th
`ed. 2018). Nor, as detailed herein, does such a
`limitation fit within the goals and policies of the
`copyright laws.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`12
`
`
`
`“Full Costs”
`B. Allowing Recovery of
`Invest
`in
`Encourages Parties
`to
`Meritorious
`Claims
`That
`Protect
`Creators’ Rights and Advance the Goals
`of Copyright Law.
`
`Without assurances that full costs may be
`available to a creator of innovative and expressive
`works, a creator who seeks to enforce her rights
`ultimately may erase the very economic gains
`created in the Copyright Act. If the creator finds
`herself having to spend thousands or millions of
`dollars in costs that can never be recouped, the
`incentives in the Act are diminished, and, in turn,
`the works created for the general public good will
`decrease. This is especially so for the millions of
`individual creators and small businesses who cannot
`shoulder non-taxable costs.
`
`As many scholars have pointed out, copyright
`litigation comes with a high price tag. See, e.g.,
`Sandra M. Aistars, Ensuring Only Good Claims
`Come in Small Packages: A Response to Scholarly
`Concerns About a Proposed Small Copyright Claims
`Tribunal, 26 GEO. MASON L. REV. (forthcoming 2018)
`(manuscript at 5) (on file with authors); Virginia
`Knapp Dorell, Picturing A Remedy for Small Claims
`of Copyright Infringement, 65 ADMIN. L. REV. 449,
`450–52 (2013); Anthony Ciolli, Lowering the Stakes:
`Toward A Model of Effective Copyright Dispute
`Resolution, 110 W. VA. L. REV. 999, 1001–06 (2008);
`
`
`
`
`
`
`
`
`
`
`13
`
`
`
`Stephen P. Anway, Mediation in Copyright Disputes:
`From Compromise Created Incentives to Incentive
`Created Compromises, 18 OHIO ST. J. DISP. RESOL.
`439, 449 (2003); see also REGISTER OF COPYRIGHTS,
`COPYRIGHT SMALL CLAIMS 8, 24–26
`(2013).
`According to the American Intellectual Property
`Association’s (“AIPLA”) most recent Report of the
`Economic Survey, the median cost of litigating a
`copyright infringement lawsuit, inclusive of all costs
`for pre- and post-trial, including an appeal when
`applicable, is in excess of $200,000 (if less than $1
`million is at risk). AM. INTELLECTUAL PROP. LAW
`ASS’N, REPORT OF THE ECONOMIC SURVEY 2017 at 44
`(2017).2
`
`For the millions of individual creators and small
`business throughout the United States, being able to
`recoup their costs in litigation may be the deciding
`factor in whether or not they can commence a case
`and enforce their rights. This concern is especially
`critical in cases in which creators are seeking only
`injunctive relief and are not expecting to recover any
`monetary damages that might offset some of the
`costs. Injunctive relief is critical in copyright cases,
`especially where recoverable damages are limited or
`otherwise will not adequately protect a creator’s
`
`
`2 That number increases to $388,000 (if $1 million to $10 is at
`risk), $600,000 (if $10 million to $25 million at risk), and $1
`million (if more than $25 million at risk). AM. INTELLECTUAL
`PROP. LAW ASS’N, supra.
`
`
`
`
`
`
`
`
`
`
`14
`
`
`
`rights, or where infringement has gone “viral” and
`injunctive relief is the only remedy to stem the harm
`to the creator’s rights.
`
`Furthermore, preliminary injunctive relief often
`necessitates the use of expedited discovery, experts
`who can testify on irreparable harm, and substantive
`interpretation on points relating to the merits, all of
`which impose additional costs. See 4 MELVIN B.
`NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT
`§ 14.06[A][6][a]–[b] (Matthew Bender rev. ed. 2013);
`6 NIMMER,
`supra, § 35.02;
`Initial Discovery
`Considerations, in COPYRIGHT LITIGATION HANDBOOK
`§ 14:1 (2d ed. 2018).
`
`costs and
`these
`together, all of
`Taken
`considerations present a significant obstacle to
`litigation, especially when there is no monetary
`recovery to help offset the costs the creator would
`need to spend to litigate the case through to
`judgment. When a copyright owner is facing the
`difficult dilemma of deciding whether to share his
`creation with the public, and thereby risk not being
`able to protect that creation or enforce his rights
`through litigation, the creator may decide to keep
`the creation private in order to avoid litigation, or
`decide not to create at all.
`
`Accordingly, discouraging copyright owners from
`enforcing and protecting their rights through
`litigation undercuts the policy of incentivizing the
`creation of and investment in valuable copyrightable
`
`
`
`
`
`
`
`
`
`
`15
`
`
`
`expressive works. Preventing recovery of “full costs”
`under Section 505 would do just that; whereas, on
`the other hand, allowing recovery of “full costs”
`enables copyright owners to have a chance to offset
`the high threshold costs of litigating a case, so that
`they may maintain the value of their creative
`investments by enforcing their rights through
`litigation. This policy would thereby serve the public
`good by encouraging copyright owners to continue to
`create without concern that they would not be able
`to protect the investment in their work. Thus,
`consistent with the underlying purposes of copyright
`law—to encourage creators to create for the public
`good and to reward those creators who do—copyright
`owners should be incentivized to use copyright
`litigation to enforce and protect their rights.
`
`Beyond the reasons discussed above, encouraging
`parties to bring meritorious claims, and to defend
`against unmeritorious copyright claims, is central to
`the policy goals of copyright law. The Supreme
`Court has repeatedly acknowledged the role fee
`awards plays in advancing this purpose. The
`Kirtsaeng Court,
`in addressing the underlying
`policies in considering attorney’s fee awards under
`the Copyright Act, found that Section 505 “achieves
`that end by striking a balance between two
`subsidiary aims: encouraging and
`rewarding
`authors’ creations while also enabling others to build
`on that work.” 136 S. Ct. at 1986. Thus, the Court
`concluded, “fee awards under Section 505 should
`
`
`
`
`
`
`
`
`
`
`16
`
`
`
`encourage the types of lawsuits that promote those
`purposes,” i.e., “useful copyright litigation.” Id.
`
`The Ninth Circuit’s interpretation of “full costs”
`in Section 505 advances the purposes of the
`Copyright Act for the same reasons that the
`Kirtsaeng
`Court
`found Wiley’s
`objective-
`reasonableness approach to awarding attorney’s fees
`“passes that test.” Id. In Kirtsaeng, the Court held
`that Wiley’s approach,
`in which courts give
`“substantial
`weight”
`to
`the
`“objective
`reasonableness” of a party’s infringement claim in
`deciding whether to shift attorney’s fees, advances
`the Copyright Act’s goals
`“because
`it both
`encourages parties with strong legal positions to
`stand on their rights and deters those with weak
`ones from proceeding with litigation.” Id. The policy
`is equally applicable here. Allowing a prevailing
`party to recover the “full costs” expended
`in
`litigation, pursuant to Section 505, advances the
`same objectives by encouraging “useful copyright
`litigation.” Id. Indeed, as in Kirtsaeng, when a
`litigant has a meritorious claim or defense, the
`likelihood that he will recover “full costs” from the
`opposing party gives him an incentive to litigate the
`case all the way to end. Id. Conversely, when the
`opposing party does not have a meri
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