Amicus Curiae Brief — Rimini Street, Inc., et al., Petitioners v. Oracle USA, Inc., et al.

No. 17-1625

In The

Supreme Court of the United States

─────  ─────

RIMINI STREET, INC., AND SETH RAVIN,

Petitioners,

V.

ORACLE USA INC., ORACLE AMERICA, INC., AND

ORACLE INTERNATIONAL CORPORATION

Respondents.

─────  ─────

On Writ of Certiorari

to the United States Court of Appeals

for the Ninth Circuit

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BRIEF OF AMICUS CURIAE

PROFESSOR PATRICK T. GILLEN

IN SUPPORT OF PETITIONERS

─────  ─────

HORVITZ & LEVY LLP

JOSHUA C. MCDANIEL (Counsel of Record)

BARRY R. LEVY

ERIC S. BOORSTIN

3601 WEST OLIVE AVENUE, 8TH FLOOR

BURBANK, CALIFORNIA 91505-4681

(818) 995-0800

jmcdaniel@horvitzlevy.com

blevy@horvitzlevy.com

eboorstin@horvitzlevy.com

Counsel for Amicus Curiae

PROFESSOR PATRICK T. GILLEN

i

TABLE OF CONTENTS

Page

TABLE OF AUTHORITIES....................................... ii

INTEREST OF AMICUS CURIAE ............................ 1

SUMMARY OF ARGUMENT ..................................... 2

ARGUMENT ............................................................... 4

I.

Under the longstanding American Rule,

litigants presumptively bear their own

legal fees and expenses..................................... 4

II.

The American Rule grew out of judicial

reluctance to chill good-faith litigation

without direction from Congress...................... 8

III.

In keeping with the American Rule, this

Court has held that nontaxable expenses

such as expert fees will be exacted from

the losing party only with express

statutory authorization. ................................. 13

IV.

The bare term “full costs” in § 505 of the

Copyright Act does not warrant

departing from the American Rule and

the limited set of taxable costs specified

by Congress. .................................................... 17

CONCLUSION .......................................................... 19

ii

TABLE OF AUTHORITIES

Page(s)

Cases

Ackerman v. Kaufman, 15 P.2d 966 (Ariz. 1932) ..... 12

Alyeska Pipeline Serv. Co. v. Wilderness Soc’y,

421 U.S. 240 (1975) ...................... 5, 7, 8, 13, 14, 17

Arcambel v. Wiseman, 3 U.S. (3 Dall.) 306

(1796) .............................................................. 3, 6, 9

Arlington Cent. Sch. Dist. Bd. of Educ. v. Murphy,

548 U.S. 291 (2006) .................................. 15, 16, 17

Burruss v. Hines, 26 S.E. 875 (Va. 1897) ................. 12

Crawford Fitting Co. v. J.T. Gibbons, Inc.,

482 U.S. 437 (1987) .................. 2, 10, 14, 15, 16, 17

Cyan, Inc. v. Beaver Cty. Emps. Ret. Fund, 138 S.

Ct. 1061 (2018) ....................................................... 4

Farmer v. Arabian Am. Oil Co., 379 U.S. 227

(1964) .................................................................... 18

Fleischmann Distilling Corp. v. Maier Brewing Co.,

386 U.S. 714 (1967) ........................................ 12, 13

Fogerty v. Fantasy, Inc., 510 U.S. 517 (1994)........... 17

Good v. Mylin, 8 Pa. 51 (1848) ............................ 10, 11

Osborn v. Moore, 12 La. Ann. 714 (1857) ................. 12

iii

Pinkham v. Camex, Inc., 84 F.3d 292

(8th Cir. 1996) ...................................................... 18

Potts v. Imlay, 4 N.J.L. 330 (1816) ......................... 3, 9

Reggio v. Braggiotti, 61 Mass. (7 Cush.) 166

(1851) .................................................................... 11

Stimpson v. The Railroads, 23 F. Cas. 103

(1847) ................................................................ 6, 10

Taniguchi v. Kan Pac. Saipan, Ltd., 566 U.S. 560

(2012) ...................................................................... 8

The Baltimore,

75 U.S. (8 Wall.) 377 (1869) ................................... 7

Twentieth Cent. Fox Film Corp. v. Entm’t Distrib.,

429 F.3d 869 (9th Cir. 2005) .......................... 17, 18

W. Va. Univ. Hosps., Inc. v. Casey, 499 U.S. 83

(1991) ........................................................ 15, 16, 17

Whittemore v. Cutter, 29 F. Cas. 1120

(C.C.D. Mass. 1813) ............................................... 6

Statutes

17 U.S.C. § 505 ...................................... 2, 4, 17, 18, 19

28 U.S.C. § 1821 ........................................ 2, 14, 15, 16

28 U.S.C. § 1821(B) ................................................... 14

28 U.S.C. § 1920 .............................. 2, 7, 14, 15, 16, 17

iv

28 U.S.C § 1988 ......................................................... 15

Act of Feb. 26, 1853, ch. 80, 10 Stat. 161 ................... 6

Act of Mar. 1, 1793, ch. 20, § 4, 1 Stat. 332 ................ 5

Rules

Federal Rule of Civil Procedure 54(d) ................ 14, 16

Miscellaneous

Cong. Globe, 32d Cong, 2d Sess. app.

207 (1853) ............................................................... 7

Patrick T. Gillen, Oppressive Taxation: Abuse of

Rule 54 and Section 1920 Threatens Justice,

58 Wayne L. Rev. 235 (2012) ............................. 3, 8

Peter Karsten & Oliver Bateman, Detecting Good

Public Policy Rationales for the American

Rule: A Response to the Ill-Conceived Calls for

“Loser Pays” Rules, 66 Duke L.J. 729 (2016) ........ 8

1

INTEREST OF AMICUS CURIAE

Amicus curiae, Professor Patrick T. Gillen, is

an Associate Professor of Law at Ave Maria School of

Law. Professor Gillen’s interest in this case stems

from his work as a civil rights litigator and a scholar

who has written on the history and scope of the federal

cost-shifting statutes. The purpose of this brief is to

demonstrate that the American Rule provides the

backdrop for Congress’s carefully crafted scheme

governing recovery of costs in the federal system,

including costs recoverable under the Copyright Act. *

─────  ─────

* No counsel for a party authored this brief in whole or in

part, and no person other than amicus curiae made a monetary

contribution to fund its preparation or submission. Counsel for

all parties have blanket consented to the filing of amicus briefs.

2

SUMMARY OF ARGUMENT

To resolve what types of costs a district court

may award under § 505 of the Copyright Act, this

Court’s decision in Crawford Fitting prescribes a

simple test: does the Act explicitly authorize shifting

of expert fees, discovery expenses, or any other item of

nontaxable expense? See Crawford Fitting Co. v. J.T.

Gibbons, Inc., 482 U.S. 437, 445 (1987). Because the

answer is clearly no, federal courts in copyright cases

“are bound by the limitations set out in 28 U.S.C.

§ 1821 and § 1920.” Id.

On its surface, the Court’s Crawford Fitting

decision was an exercise in statutory interpretation.

“As always,” the Court explained, “[w]here there is no

clear intention otherwise, a specific statute will not be

controlled or nullified by a general one, regardless of

the priority of enactment.” Id. (citation omitted).

Thus, applying the tools of statutory analysis, the

Court held that Article III courts are not “empowered

to exceed the limitations explicitly set out in §§ 1920

and 1821 without plain evidence of congressional

intent to supersede those sections.” Id.

As this brief explains, Crawford Fitting’s clearstatement requirement also rests upon another, more

fundamental basis: the “American Rule.” The American Rule is a presumption—followed by American

courts from the earliest days of our Republic—that

litigants bear their own fees and expenses except for

a small set of relatively minor costs incident to the

judgment. Early courts rejected England’s “loser

pays” preference in favor of the American Rule to

3

ensure the courts would be open to all citizens,

including those of modest means. See, e.g., Arcambel

v. Wiseman, 3 U.S. (3 Dall.) 306, 306 (1796) (per

curiam) (recognizing that the “general practice of the

United States is in opposition to” shifting attorneys’

fees to the losing party); Potts v. Imlay, 4 N.J.L. 330,

332 (1816) (recognizing that the legislature “wisely”

limited the litigation expenses a prevailing party may

recover to a small subset of “all his necessary

expenses, both of time and money,” to ensure that

“[t]he courts of law are open to every citizen”). Even

more fundamentally, early courts recognized that it is

the legislature’s job to set policy and the courts’ job to

apply the law.

The American Rule developed in these early

decisions provided the backdrop for two centuries of

interplay between Congress and the courts, resulting

in a carefully calibrated system in which Congress has

defined and limited the types and amounts of costs

that prevailing parties may recover. See generally

Patrick T. Gillen, Oppressive Taxation: Abuse of Rule

54 and Section 1920 Threatens Justice, 58 Wayne L.

Rev. 235 (2012) (detailing the scheme for cost recovery

contained in the Federal Rules of Civil Procedure and

related statutes). Over the years, Congress has on

occasion made the policy choice to depart from the

American Rule’s default by authorizing courts in

particular statutes to shift the prevailing party’s

attorneys’ fees, expert fees, or other nontaxable

expenses to the loser—but it is Congress’s job to do so,

and to do so explicitly.

4

Consequently, the American Rule provides the

broader context needed to resolve this case. Aside

from allowing courts to award a “reasonable

attorney’s fee,” Congress has not explicitly authorized

courts to award any item of nontaxable expense in

copyright cases. 17 U.S.C. § 505. Section 505’s bare

reference to “full costs” does not authorize a radical

departure from the American Rule, or from the

carefully crafted exceptions to that rule embodied in

the federal costs statutes, for the simple reason that

Congress does not “hide elephants in mouseholes.”

Cyan, Inc. v. Beaver Cty. Emps. Ret. Fund, 138 S. Ct.

1061, 1071 (2018) (citation omitted). Worse still, the

Ninth Circuit’s misuse of § 505 to tax millions of

dollars in expert fees, consultant fees, and e-discovery

costs threatens access to federal courts. The decision

below is wrong as a matter of law and policy.

─────  ─────

ARGUMENT

I.

Under the longstanding American Rule,

litigants presumptively bear their own

legal fees and expenses.

Since the beginning of the Republic, this Court

has recognized what is now known as the “American

Rule.” The rule provides that a prevailing litigant

ordinarily may not collect attorneys’ fees and

nontaxable expenses from the loser unless Congress

explicitly says so.

5

In England, costs were not allowed at common

law. Alyeska Pipeline Serv. Co. v. Wilderness Soc’y,

421 U.S. 240, 247 (1975). But from as early as the 13th

century, a series of English statutes have expressed

Parliament’s decided preference for shifting litigation

expenses, including attorneys’ fees, to the losing

party. Id. at 247 & n.18. This “loser pays” preference

is known as the “English Rule.”

In America, Congress and the courts diverged

from English practice. Shortly after ratification of the

Constitution, Congress authorized federal courts in

most cases to follow the cost- and fee-shifting practices

of the forum state. Id. at 247-48 & n.19; see, e.g., Act

of Mar. 1, 1793, ch. 20, § 4, 1 Stat. 333 (providing that

“there be allowed and taxed in the [federal courts], in

favour of the parties obtaining judgments therein,

such compensation for their travel and attendance,

and for attornies and counsellors’ fees, except in the

district courts in cases of admiralty and maritime

jurisdiction, as are allowed in the supreme or superior

courts of the respective states”). But those early

statutes were short lived. By 1800, they had all “either

expired or been repealed.” Alyeska, 421 U.S. at 249.

Against this backdrop of on-again, off-again

legislation, this Court first recognized the American

Rule in 1796. Reversing “a charge of 1600 dollars for

counsel’s fees” awarded to the prevailing party, this

Court explained:

We do not think that this charge ought

to be allowed. The general practice of the

United States is in opposition to it; and

6

even if that practice were not strictly

correct in principle, it is entitled to the

respect of the court, till it is changed, or

modified, by statute.

Arcambel v. Wiseman, 3 U.S. (3 Dall.) 306, 306 (1796)

(per curiam); accord Stimpson v. The Railroads, 23 F.

Cas. 103, 104-05 (1847) (No. 13,456) (citing Arcambel

to show that “the best authority” supports the rule

that a “defendant’s delinquency” is not “measured by

the expenses of the plaintiff in prosecuting the suit”);

Whittemore v. Cutter, 29 F. Cas. 1120, 1123 (C.C.D.

Mass. 1813) (No. 17,600) (citing Arcambel as

authority that “the extraordinary expenses of

vindicating the right of the plaintiffs, such as counsel

fees and expenses of witnesses beyond the taxable

costs, ought” not be awarded). And ever since, “[t]his

Court has consistently adhered to that early holding.”

Alyeska, 421 U.S. at 250 (citing cases).

More than fifty years later, Congress reinforced

and standardized the American practice recognized in

Arcambel by passing the 1853 Fee Act—a “farreaching Act specifying in detail the nature and

amount of the taxable items of cost in the federal

courts.” Id. at 251-52. For example, the Act allowed

the prevailing party to recover $5 to $20 for the

proctor’s docket fee, $2.50 for each deposition

admitted into evidence, $5 for cases appealed to the

circuit court, and fees for “exemplifications and copies

of papers necessarily obtained for use on trial.” Act of

Feb. 26, 1853, ch. 80, 10 Stat. 161-162, 168.

7

The 1853 Act replaced the prevailing system in

which, lacking any direction from Congress, federal

courts had continued to borrow home state rules for

awarding costs. Alyeska, 421 U.S. at 250. As Senator

Bradbury noted in urging adoption of the Act, “[t]here

[we]re no two States where the allowance [wa]s the

same.” Id. at 251 n.24 (quoting Cong. Globe, 32d

Cong., 2d Sess. app. 207 (1853)). As a result, “[o]ne

system prevail[ed] in one district, and a totally

different one in another.” Id. (citation omitted). In

some States, little or no fees were taxable to the losing

party. Id. (citation omitted). In other States, the fees

“swelled to an amount exceedingly oppressive to

suitors” and “altogether disproportionate to … the

labor bestowed.” Id. (citation omitted). The Act put a

stop to this disparate state-by-state approach by

streamlining the taxation of fees and “prescribing a

limited number of definite items to be allowed.” Id.

(citation omitted).

Congress’s intent to limit taxable costs and fees

was then, in turn, “repeatedly enforced by this Court.”

Id. at 253. In one early case, for example, the Court

set aside a $500 allowance for counsel’s fees,

reasoning that “[f]ees and cost … are now regulated

by the act of the 26th of February, 1853,” which

provides that “the following and no other

compensation shall be allowed.” The Baltimore, 75

U.S. (8 Wall.) 377, 392 (1869); see also Alyeska, 421

U.S. at 253-55 (citing additional examples).

Over the years, the Fee Act has been amended

and recodified “without any apparent intent to change

the controlling rules,” and now finds its home in 28

8

U.S.C. § 1920 and related statutes. See Alyeska, 421

U.S. at 255-57 & nn.26-29. See generally Gillen, supra,

at 253-56 (detailing how the federal costs statute

evolved from 1853 to the present). Like their 1853

forebear, these present-day cost statutes limit taxable

costs to a narrowly defined list of expenses such “as

clerk fees, court reporter fees, expenses for printing

and witnesses, expenses for exemplification and

copies, docket fees, and compensation of courtappointed experts.” Taniguchi v. Kan Pac. Saipan,

Ltd., 566 U.S. 560, 573 (2012).

Thus, consistent with the American Rule,

Congress has for more than a century and a half

limited taxable costs to “relatively minor, incidental

expenses” that are often “a fraction of the nontaxable

expenses borne by litigants for attorneys, experts,

consultants, and investigators.” Id.

II.

The American Rule grew out of judicial

reluctance to chill good-faith litigation

without direction from Congress.

Early American courts rejected the English

Rule for many reasons, but a few dominant reasons

emerged. See Peter Karsten & Oliver Bateman,

Detecting Good Public Policy Rationales for the

American Rule: A Response to the Ill-Conceived Calls

for “Loser Pays” Rules, 66 Duke L.J. 729, 737-48

(2016). Some judges expressed concerns that a “loser

pays” rule would limit the ability of those who are less

wealthy to advance meritorious claims for fear of

ruinous liability if they lost. Others worried that by

expanding the concept of damages or writing new

categories of costs into the cost statutes, courts

9

usurped Congress’s role. Fundamentally, judges

believed the English Rule was inconsistent with

American principles and institutions.

As already mentioned, this Court touched off

the discussion in 1796 when it rejected a prevailing

party’s argument that attorneys’ fees “might fairly be

included under the idea of damages.” Arcambel v.

Wiseman, 3 U.S. (3 Dall.) 306, 306 (1796) (per curiam).

After noting that “[t]he general practice of the United

States is in opposition to it,” the Court recognized that

reversing the traditional approach would be up to

Congress, not the Court. Id. “[E]ven if that practice

were not strictly correct,” the Court explained, “it is

entitled to the respect of the court, till it is changed,

or modified, by statute.” Id. (emphasis added).

Over the course of the 19th century, state and

federal courts continued to develop the rule first

articulated by this Court. Twenty years after

Arcambel, the New Jersey Supreme Court of

Judicature reversed a verdict awarding $50 to the

plaintiff to compensate him for the defendant’s

“malicious prosecution” of two small causes. Potts v.

Imlay, 4 N.J.L. 330, 331 (1816). According to Chief

Justice Kirkpatrick, the lower court had overstepped

its role: “If we were legislators, indeed, perhaps we

should be inclined to say that the costs, in all cases

where costs are given, should completely indemnify

the party for all his necessary expenses, both of time

and money.” Id. at 332. But “in this state,” he added,

“those to whom this high trust is committed … have

wisely thought otherwise.” Id. Unlike in England,

where courts have discretion to award fees and

10

expenses based on “the circumstances of the case,”

“[t]he courts of law [in America] are open to every

citizen,” and the costs “fixed by statute” are “the only

penalty the law has given against a plaintiff for

[unsuccessfully] prosecuting a suit in a court of

justice.” Id.

In 1847, Circuit Justice Grier reversed a jury

verdict premised on an instruction that permitted the

jury, “if they saw fit,” to “allow the plaintiff as part of

his actual damages any expenditures for counsel fees

or other charges which were necessarily incurred to

vindicate the rights derived under his patent and are

not taxable in the bill of costs.” Stimpson v. The

Railroads, 23 F. Cas. 103, 103-04 (1847). In language

mirroring Crawford Fitting’s clear-statement rule,

Justice Grier reasoned that “[t]here is certainly

nothing in the [patent statute], or in the phrase

‘actual damages,’ which it uses, to countenance the

doctrine” of allowing the plaintiff to recover attorneys’

fees and nontaxable expenses. Id. at 104. If allowed,

the alleged infringer would “truly be said to be … at

the mercy both of court and jury.” Id. Awarding costs

beyond those set by law would, in short, “work

inequality and injustice.” Id. at 105.

The next year, the Pennsylvania Supreme

Court rejected a similar instruction allowing the jury

to award not only “nominal damages” (for the

disruption of the plaintiff’s mill caused by the

defendant’s dam) but also “damages sufficient to

compensate the plaintiff for … the trouble and

expense of establishing his right.” Good v. Mylin, 8 Pa.

51, 52-53 (1848). “No lawsuit,” the court explained, “is

11

prosecuted without trouble and expense; and were

compensation for these recoverable, … the claim

would be a standing dish.” Id. at 56. Giving the trier

of fact unfettered discretion to make “every successful

plaintiff” entirely “whole” would “be without bound or

limit” and would be “contrary to the genius of the

common law, which does not give even costs.” Id. at

55-56.

Invoking similar concerns, the Massachusetts

Supreme Judicial Court disallowed a jury’s award of

$350 in attorneys’ fees to the prevailing party. Reggio

v. Braggiotti, 61 Mass. (7 Cush.) 166, 168 (1851). The

fees, the court wrote, were “incurred by the party for

his own satisfaction.” Id. at 170. The court thus

concluded “that it would be dangerous to permit [the

prevailing party] to impose such a charge upon an

opponent,” contrary to the law, which “measures the

expenses incurred in the management of a suit by the

taxable costs.” Id.

The Louisiana Supreme Court reached the

same conclusion. Reversing a verdict awarding the

defendant $150 for expenses and time “in preparing

his defence,” Chief Justice Merrick explained:

It is desirable that the courts of justice

should be open to all men, and that

suitors should not be deterred from

pursuing their rights through fear that

they should be compelled to pay for the

loss of time of their adversary, nor from

using, in good faith, the process of the

court and the means of redress

12

prescribed by law, through apprehensions that they should be [liable for]

vindictive damages, if from any unforeseen cause, they should fail in their

action.

Osborn v. Moore, 12 La. Ann. 714, 714 (1857); accord

Burruss v. Hines, 26 S.E. 875, 878 (Va. 1897) (“Where

parties in good faith differ as to their rights, and

resort to law to settle their differences, the law has

prescribed what costs should be taxed, and what shall

be therein included as the fee of the winning party. In

such case no greater fee should be allowed to be

proved or recovered.”).

Courts in the 20th century continued to develop

the same themes. The Arizona Supreme Court, for

example, reaffirmed that “the law does not desire to

throw around the right of a party to appeal to the

courts such risks that a fear of the result might deter

him from asserting a claim in which he has an honest

belief.” Ackerman v. Kaufman, 15 P.2d 966, 967 (Ariz.

1932). Courts have power to award only “the very

meager costs allowed” by statute, the court explained,

because “the honest plaintiff should not be frightened

from asking the aid of the law by the fear of an

extremely heavy bill of costs against him should he

lose.” Id.

This Court continued to uphold the American

Rule for the same reasons, concluding that “one

should not be penalized for merely defending or

prosecuting a lawsuit.” Fleischmann Distilling Corp.

v. Maier Brewing Co., 386 U.S. 714, 718 (1967).

13

Without the American Rule, the Court explained, “the

poor might be unjustly discouraged from instituting

actions to vindicate their rights if the penalty for

losing included the fees of their opponents’ counsel.”

Id.

This long line of state and federal decisions

explains why the American Rule is the American

Rule. Courts throughout the country have rejected

England’s “loser pays” rule because imposing such a

rule by judicial fiat would overstep the courts’ limited

role and could deter litigants—especially the poor—

from asserting good claims or defenses in court.

III.

In keeping with the American Rule, this

Court has held that nontaxable expenses

such as expert fees will be exacted from

the losing party only with express

statutory authorization.

Consistent with the decisions above, this Court

has determined that the general cost statutes enacted

by Congress limit the costs that may be recovered by

prevailing parties in federal court—unless Congress

explicitly directs otherwise.

In Alyeska, the Court rejected the idea that

district courts have inherent power to award

attorneys’ fees to a prevailing party who acts as a

“private attorney general.” Alyeska Pipeline Serv. Co.

v. Wilderness Soc’y, 421 U.S. 240, 241 (1975). To grant

courts such power, the Court explained, would be “to

fashion a far-reaching exception to th[e] ‘American

Rule’”—a rule “deeply rooted in our history and in

congressional policy.” Id. at 247, 271. While noting

14

that “Congress has made specific provision for

attorneys’ fees under certain federal statutes,” the

Court reasoned that Congress “has not changed the

general statutory rule that allowances for counsel fees

are limited to the sums specified by the costs statute.”

Id. at 254-55. “Nor has [Congress] extended any

roving authority to the Judiciary to allow counsel fees

as costs or otherwise whenever the courts might deem

them warranted.” Id. at 260. To the contrary, the

Court concluded, “the circumstances under which

attorneys’ fees are to be awarded and the range of

discretion of the courts in making those awards are

matters for Congress to determine” and “it is not for

us to invade the legislature’s province by

redistributing litigation costs in th[is] manner.” Id. at

262, 271.

The Court then addressed courts’ power to shift

expert witness fees in Crawford Fitting Co. v. J.T.

Gibbons, Inc., 482 U.S. 437 (1987). The district court

ruling under review had held that Federal Rule of

Civil Procedure 54(d)—which then provided that

“costs shall be allowed as of course to the prevailing

party unless the court otherwise directs”—gave the

court discretion to award expert fees in excess of the

$30-per-day witness fee allowed by 28 U.S.C. §§ 1920

and 1821(b). Id. at 439, 441 (citation omitted). But this

Court disagreed. The district court’s reading of Rule

54(d), the Court explained, would leave the general

cost statutes “entirely without meaning,” and the

Court would “not lightly infer that Congress has

repealed §§ 1920 and 1821, either through Rule 54(d)

or any other provision not referring explicitly to

[expert] witness fees”—“regardless of the priority of

15

enactment.” Id. at 441, 444-45 (emphasis added)

(citation omitted). So the Court put in place a brightline rule: “[A]bsent explicit statutory … authorization

for the taxation of the expenses of a litigant’s witness

as costs, federal courts are bound by the limitations

set out in 28 U.S.C. § 1821 and § 1920.” Id. at 445.

The Court then applied the bright-line rule in

Casey, holding that 28 U.S.C. § 1988’s allowance of an

“attorney fee” did not supply “the ‘explicit statutory

authority’” necessary to shift expert fees to the losing

party. W. Va. Univ. Hosps., Inc. v. Casey, 499 U.S. 83,

87 (1991); see also id. at 87 n.3 (noting “the same is

true of the word ‘costs’ in § 1988”). Sections 1920 and

1821, the Court reaffirmed, “define the full extent of a

federal court’s power to shift litigation costs absent

express statutory authority to go further.” Id. at 86.

And so again in Murphy, the Court applied

Crawford Fitting’s clear-statement test to conclude

that a provision in the Individuals with Disabilities

Education Act (IDEA) allowing courts to “award

reasonable attorneys’ fees as part of the costs” did not

allow prevailing parents to recover expert fees.

Arlington Cent. Sch. Dist. Bd. of Educ. v. Murphy, 548

U.S. 291, 293-94 (2006). Murphy reiterated that “no

statute will be construed as authorizing the taxation

of” litigation expenses other than those enumerated in

§ 1920 “unless the statute ‘refer[s] explicitly to’” those

categories of expenses. Id. at 301 (emphasis added);

see also id. at 298 (noting that “‘costs’ is a term of art”

that “obviously” refers to “the list set out in 28 U.S.C.

§ 1920” and “§ 1821” (citation omitted)).

16

The Court’s reasoning in Crawford Fitting,

Casey, and Murphy largely rested on statutory

interpretation, not the American Rule per se. See, e.g.,

Crawford Fitting, 482 U.S. at 441, 449 (discerning

‘[t]he logical conclusion from the language and

interrelation” of Rule 54(d), § 1821, and § 1920 and

applying the “specific vs. general canon” of statutory

construction); Casey, 499 U.S. at 88, 92 (concluding

from the “record of statutory usage” that “attorney’s

fees and expert fees are regarded as separate

elements of litigation cost,” for otherwise “dozens of

statutes referring to the two separately [would]

become an inexplicable exercise in redundancy”);

Murphy, 548 U.S. at 296-303 (concluding from the

statutory text, as well as the reasoning of Crawford

Fitting, that the IDEA does not authorize courts to

shift expert fees to prevailing parents).

But this trilogy of decisions is also informed

by—and grounded in—the American Rule. The clearstatement requirement first established in Crawford

Fitting and then applied in Casey and Murphy is

rooted in Congress’s longstanding “rigid controls on

cost-shifting in federal courts’” and the recognition

that courts are not empowered “to evade [a] specific

congressional command” in this area. Crawford

Fitting, 482 U.S. at 442, 444. And the rule’s default

choice—that “costs” means taxable costs unless

Congress says otherwise—ensures that plaintiffs and

defendants alike need not fear that advancing a goodfaith claim or defense may subject them to crushing

liability for the other side’s nontaxable litigation

expenses.

17

In short, Crawford Fitting, Casey, and Murphy

promote the separation of powers and longstanding

practice by declining to infer “a bold departure” from

the American Rule absent “explicit statutory

language.” Fogerty v. Fantasy, Inc., 510 U.S. 517, 534

(1994).

IV.

The bare term “full costs” in § 505 of the

Copyright Act does not warrant departing

from the American Rule and the limited

set of taxable costs specified by Congress.

Section 505 of the Copyright Act allows district

courts to award a “reasonable attorney’s fee,” but does

not specifically authorize any other kind of nontaxable

expense. 17 U.S.C. § 505. Nothing in the provision

refers, for example, to expert fees, jury consulting fees,

or e-discovery expenses. Nor, as this Court has

already made clear, does the term of art “costs”

encompass such nontaxable expenses. To the

contrary, “§ 1920 defines the term ‘costs’” for purposes

of federal law. Crawford Fitting Co. v. J.T. Gibbons,

Inc., 482 U.S. 437, 441 (1987). As in Alyeska, Crawford

Fitting, Casey, and Murphy, this Court is yet again

“asked to hold that a specific congressional enactment

on the shifting of litigation costs is of no moment.” Id.

at 444.

The Ninth Circuit’s contrary decision in

Twentieth Century Fox was wrong. Despite

recognizing that “Crawford Fitting instructs us to

carefully inspect § 505 for clear evidence of

congressional intent that non-taxable costs should be

available,” the Ninth Circuit quickly concluded that

“full” must mean any and all expenses, including any

18

type of nontaxable expense. Twentieth Cent. Fox Film

Corp. v. Entm’t Distrib., 429 F.3d 869, 885 (9th Cir.

2005) (“[W]e think that there can be no other import

to the phrase ‘full costs’ within § 505.”). In its haste,

the Ninth Circuit apparently did not consider that

“full costs” simply means the full amount of taxable

costs, as opposed to two-thirds, double, or treble costs

(as were available under some state cost-shifting

provisions at the time). See Pet. Br. 42-44.

As the Eighth Circuit correctly recognized,

nothing about “the ‘full costs’ language ‘clearly,’

‘explicitly,’ or ‘plainly’ evidences congressional intent

to treat 17 U.S.C. § 505 costs differently from costs

authorized in other statutes.” Pinkham v. Camex, Inc.,

84 F.3d 292, 295 (8th Cir. 1996) (per curiam). “Full

costs” means full taxable costs, nothing less and

nothing more.

This reading of § 505 best comports with the

American Rule and the carefully considered

departures from that rule embodied in the federal cost

statutes. As Justice Goldberg aptly put it: “It has not

been accident that the American litigant must bear

his own cost of counsel and other trial expense save

for minimal court costs, but a deliberate choice to

ensure that access to the courts be not effectively

denied those of moderate means.” Farmer v. Arabian

Am. Oil Co., 379 U.S. 227, 237 (1964) (Goldberg, J.,

concurring). By requiring explicit statutory authorization before shifting nontaxable expenses to the losing

party in copyright cases, this Court preserves this

deliberate choice and respects the respective roles of

the judicial and policy-setting branches.

19

Of course, if Congress ever decides to shift

expert fees and other nontaxable expenses to the

losing party in copyright cases (as it has done with

attorneys’ fees), it can easily do so. But until Congress

explicitly acts, this Court should adhere to the

American Rule and hold that § 505 allows district

courts to award full taxable costs and nothing more.

─────  ─────

CONCLUSION

By forcing parties to litigate under peril of

ruinous costs awards on the basis of vague statutory

text, the Ninth Circuit’s decision undermines the

American Rule, the separation of powers, and access

to justice. The decision below should be reversed.

Respectfully submitted,

HORVITZ & LEVY LLP

JOSHUA C. MCDANIEL

Counsel of Record

Barry R. Levy

Eric S. Boorstin

3601 W. Olive Avenue, 8th Floor

Burbank, California 91505

(818) 995-0800

jmcdaniel@horvitzlevy.com

blevy@horvitzlevy.com

eboorstin@horvitzlevy.com

Counsel for Amicus Curiae