Ryan v. Editions Limited West, Inc.

Ninth Circuit holds Copyright Act does not preclude enforcement of contractual attorneys’ fee provision in copyright-based litigation.

Artist Victoria Ryan sued Editions Limited West, Inc. (ELW), a publisher of her artwork, alleging that ELW knowingly supplied other entities with posters of Ryan’s artwork to create derivative works, in violation of their publishing agreement. Ryan prevailed on a contributory copyright infringement claim against ELW. Because Ryan did not timely register her copyright in the works, however, she conceded that she was not entitled to recover fees under the Copyright Act. Instead, she sought and received an award of attorneys’ fees under the fee-shifting provision of the parties’ agreement. The parties cross-appealed and the Ninth Circuit affirmed in part, concluding that the Copyright Act does not preclude enforcement of a contractual attorneys’ fee provision in copyright-based litigation.

Noting that claims are not preempted by the Copyright Act if they fall outside the scope of §301(a)’s express preemption and are not otherwise in conflict with the Act, the Ninth Circuit reasoned that, because the subject of the preemption analysis was the state law that permitted the execution and enforcement of contractual fee-shifting provisions, Ryan’s claim for attorneys’ fees was a contract claim that included the extra element necessary to remove it from the ambit of the Copyright Act’s express preemption provision. The court noted in dicta, however, that the result might have been different if this case involved a fee-shifting statute rather than a private agreement that permitted a fee award where the Copyright Act did not.

The Ninth Circuit also vacated the ruling in part, finding that the district court abused its discretion by categorically excluding the majority of Ryan’s requested fees, which involved work relating to her prosecution of her copyright infringement claim, without engaging in any meaningful explanation.