Discouraging Frivolous Copyright Infringement Claims: Fee Shifting under Rule 11 or 28 U.S.C. § 1927 as an Alternative to Awarding Attorney’s Fees under Section 505 of the Copyright Act

The United States Supreme Court’s 2016 decision in Kirtsaeng v. John Wiley & Sons resolved a disagreement over when it is appropriate to award attorney’s fees to a prevailing defendant under section 505 of the Copyright Act, and ended a perceived venue advantage for losing plaintiffs in some jurisdictions. The Court ruled unanimously that courts are correct to give substantial weight to the question of whether the losing side had a reasonable case to fight, but that the objective reasonableness of that side’s position does not give rise to a presumption against fee shifting. It made clear that other factors should also be taken into account beyond the reasonableness of litigating positions when a court exercises its broad discretion to award fees under the Copyright Act. However, prior to the Kirtsaeng decision courts were in agreement about the appropriateness of awarding fees to a prevailing defendant under section 505 when a court determined that the losing party pursued its claim in bad faith, that the losing claim was frivolous or objectively unreasonable, or that the losing party had no reasonable grounds for the position it took during the litigation. Interestingly, these reasons have been offered by many courts to explain the award of attorney’s fees to a prevailing defendant in a copyright infringement case under Rule 11 of the Federal Rules of Civil Procedure, 28 U.S.C. § 1927 and under a federal court’s inherent powers. The courts making fee awards pursuant to these alternative bases for fee shifting often describe the same kind of litigation misconduct which warrants fees under section 505 of the Copyright Act. In short, in some copyright infringement cases there can be substantial overlap in the factors pertinent to Rule 11, section 1927, inherent authority and the Copyright Act’s fee shifting provision, section 505. This article analyzes many of the Rule 11, section 1927, and inherent authority decisions in which attorney’s fees were awarded in copyright infringement actions, and provides guidance on what constitutes a frivolous claim, an objectively unreasonable claim, or a claim inconsistent with the purpose of the Copyright Act. Most importantly, the article explains when a prevailing defendant might seek sanctions under Rule 11, section 1927 or inherent power in lieu of, or in addition to, seeking fees under section 505 of the Copyright Act. The article acknowledges that the facts in many cases in which attorney’s fees are awarded under section 505 would not support an award of fees under Rule 11, section 1927 or inherent authority. However, in those instances in which a court can conclude that a plaintiff’s copyright claim is frivolous or objectively unreasonable in order to justify a fee award under section 505, there often will be significant overlap with the standard justifications for awarding fees under Rule 11 and/or section 1927, and sometimes under inherent authority. In these ‘overlap’ cases, if the prevailing party and the court want to punish and deter opposing counsel instead of visiting his or her sins on the plaintiff, then it would be appropriate to turn to Rule 11 and its provisions on sanctions, or to 28 U.S.C. § 1927, to justify the fee award instead of relying on section 505 of the Copyright Act. Moreover, if the misconduct is serious enough the court might be able turn to Rule 11, section 1927 or inherent powers along with section 505 to hold the losing counsel and his or her client jointly and severally liable for attorney’s fees and costs