A recent Law 360 story by Bill Donahue, “2^nd Circ. To Reduce Fee Award in $655M Madoff Settlement” reports that a year later, experts say the impact of the U.S. Supreme Court’s Kirtsaeng v. John Wiley ruling on attorneys' fees in copyright cases has been clarity and consistency, not a huge change in the ways courts are ruling.

That the decision, issued one year ago, hasn’t caused a sea change in the way courts award fees to prevailing parties isn’t particularly surprising: After all, the overarching message of Kirtsaeng was one of lower court discretion and case-by-case consideration, of flexible and holistic analysis over bright-line rules.

Though Justice Elena Kagan offered up one straightforward dictate — that courts should “give substantial weight to the objective reasonableness of the losing party’s position” — she immediately softened it with a warning to also consider “all other circumstances.”

“Courts must view all the circumstances of a case on their own terms, in light of the Copyright Act's essential goals," the justice wrote at the time.  The results of that language has been increased clarity on how courts will weigh fees, but no huge change in the rate at which courts are actually awarding them, experts told Law360 in the lead up to the one-year anniversary.

“In applying that flexible standard, courts don’t seem to be reaching decisions that are much different,” said Arminda B. Bepko, an attorney with Cleary Gottlieb Steen & Hamilton LLP.  “The frequency with which attorneys' fees were awarded is not that far off from where it was the previous year.”

Of course, even without bold pronouncements or dramatic effects, experts say the ruling was still certainly important.  It had been 22 years since Fogerty v. Fantasy Inc., when the justices laid down four “nonexclusive factors” for courts to consider when weighing fees under the Copyright Act, and over the intervening years, lower courts had developed widely divergent approaches to applying them.

Some courts weighed all four factors evenly; others simply tried to serve the "purposes of the Copyright Act;" others presumed fees should be awarded; others placed a strong emphasis on the “objective unreasonableness” factor that could, in certain circumstances, be trumped by other factors.

In the year since it came down, Kirtsaeng’s guidance on that issue — consider all four factors, but give added weigh to “reasonableness” — has brought a “welcome uniformity” that’s made seeking fees “more predictable and less venue-dependent than it was,” said James E Griffith, an attorney with Marshall Gerstein & Borun LLP.

“Litigants can now expect fees to be awarded in particularly strong cases that should be resolved before judgment or in cases where the conduct of the opposition is egregious,” Griffith said.  “On the other hand, in cases where the merits are close and reasonable parties may differ, litigants can have more confidence that fees are unlikely to be awarded.”  As one might expect from the wording of the ruling, experts say the decisions applying it tend to defy neat trends.

Courts have indeed focused more on whether the losing party’s position was “unreasonable” and have been less likely post-Kirtsaeng to award fees when a party has advanced a reasonable, albeit unsuccessful, position.

In October, for instance, a California federal judge refused to grant defendant Home Box Office Inc. $120,000 in attorneys' fees after the cable network quickly beat an infringement lawsuit over the TV show “Ballers.”  Though he’d tossed the suit less than eight months after it was filed, the judge said the plaintiff's claims were still reasonable.

“Even though I rendered the judgment call in favor of the defendants, that’s not to say that it was a situation where the claims didn’t pass the laugh test,” the judge said at the time, adding that there was “something there,” but “it just wasn’t sufficient” to prove infringement.

“The Supreme Court was clear that they didn’t want parties to suffer a double punishment by standing their ground if it was a reasonable argument, even if it was ultimately unsuccessful,” said David H. Herrington, another attorney from Cleary Gottlieb.  “Kirtsaeng gives courts ammunition to deny awards in those circumstances.”

But, following the justices’ instruction to look beyond merely that factor, judges have not treated a “reasonable” position as a total safe harbor against fees.  Case in point: In August, after a verdict shot down infringement claims in Johnson v. Storix, a California federal judge ruled that the plaintiff’s position was objectively reasonable but still ordered him to pay the defendants attorneys' fees.

The ruling, which came after the court sought out briefing on the newly issued Kirtsaeng ruling, said the plaintiff filed the case with improper motives, seeking not just to secure an infringement judgment, but also to “force the [defendant] to close its doors."  It also said he “engaged in a variety of behavior that should be deterred,” such as harassing the defendant’s customers.

"If you're the losing party and your position is not objectively unreasonable, that's not a get-out-of-jail-free card as far as attorneys' fees go,” said Michael D. Steger, an attorney who’s written about the decision for the American Bar Association.  “Courts may still award fees against losing parties whose positions are not found to be objectively unreasonable."

Looking ahead past the one year anniversary, another key ruling on Kirtsaeng’s impact could be coming soon.  In March 2016, the Beastie Boys and their record company won $845,000 in attorneys’ fees and costs after defeating a copyright infringement suit filed by the litigious label TufAmerica Inc., which had accused them of illegally sampling songs by 1980s funk outfit Trouble Funk.  But in July, following the release of Kirtsaeng, a New York federal judge agreed to formally reconsider that award in light of the new case law.

In subsequent briefing, TufAmerica has argued that even if, like the judge decided, the company’s position was “unreasonable,” the Kirtsaeng decision requires that the court look to other factors that weigh against an award of fees.  The company says its motives were good, and that there is no need for deterrence — two of the factors that the high court told courts to consider.

“It will be interesting to see what the court's decision will be in that case,” Steger said.  “It could provide some guidance, since the original ruling came before Kirtsaeng, and any modification to it would likely rest on the influence of Kirtsaeng.”