For our weekly SoCal IP Institute meeting on Monday, June 20, 2016, we will discuss the following:
Kirtsaeng v. John Wiley & Sons, No. 15-375 (June 16, 2016) (available here). The Supreme Court took up a copyright damages case where the defendant in this case, Mr. Kirtsaeng, had won a copyright lawsuit brought by John Wiley for alleged infringement of John Wiley textbooks Mr. Kirtsaeng bought in Thailand and re-sold in the U.S. After Mr. Kirtsaeng won the suit, only after appeal to the Supreme Court, on the basis that the first sale doctrine applies equally to foreign sales as well as domestic.
After his successful defense, Mr. Kirtsaeng then sought an award of more than $2 million in attorney’s fees from Wiley. The district court denied his motion finding that John Wiley’s position was objectively reasonable and, therefore, attorney’s fees were not warranted. Mr. Kirtsaeng appealed and the Supreme Court granted certiorari in order to address disagreement in lower courts as to how to deal with attorney’s fees motions in copyright cases.
Here, the Supreme Court essentially adopts a flexible, discretionary standard — one that does not raise a presumption against fees. So, courts determining applications for attorney’s fees in copyright cases should use discretion to further the purposes of the Copyright Act, considering the reasonableness of each party’s position and the way in which the case was litigated while not treating prevailing defendants or plaintiffs differently. The Court repeatedly emphasized that district courts should exercise broad discretion.
Defend Trade Secrets Act of 2016 (available here). We will discuss the recently-enacted Defend Trade Secrets Act. It adds a federal cause of action for trade secret misappropriation, includes a whistleblower protection provision, and provides for seizure of assets, should the seizure prevent the spread of the trade secret. Here are a few useful commentaries on the act. This marked up text of the act from Patently-O is probably the most succinct, yet accurate.
All are invited to join us on Monday, June 20, 2016, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Moniquee Brown by 9 am Monday morning.