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

Supreme Court briefDec 20, 2018

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No. 17-1625

In the Supreme Court of the United States

RIMINI STREET, INC. AND SETH RAVIN,

Petitioners,

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

BRIEF OF BSA | THE SOFTWARE ALLIANCE

AS AMICUS CURIAE IN SUPPORT

OF RESPONDENTS

ANDREW J. PINCUS

Counsel of Record

PAUL W. HUGHES

MATTHEW A. WARING

Mayer Brown LLP

1999 K Street, NW

Washington, DC 20006

(202) 263-3000

apincus@mayerbrown.com

Counsel for Amicus Curiae

TABLE OF CONTENTS

Page

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

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

INTRODUCTION AND SUMMARY OF

ARGUMENT ...............................................................2

ARGUMENT ...............................................................3

Costs Not Taxable Under 28 U.S.C. § 1920 Are

Recoverable Under The Copyright Act. ......................3

A. Appropriate Enforcement Of Software

Copyrights Is Important To The U.S.

Economy. ...........................................................4

1. Software innovations fuel the

nation’s economic growth. ...........................4

2. Software R&D relies on copyright

protection. ....................................................5

B. Balanced Copyright Enforcement

Requires District Court Discretion To

Award Prevailing Copyright Litigants

All Of Their Costs, Not Just GenerallyTaxable Costs. ...................................................7

C. Section 505’s Provision For “Full Costs”

Includes Authority To Award

Otherwise-Nontaxable Costs.......................... 10

1. The statutory term “full costs”

means an award of all litigation

expenses, in accordance with

prevailing practice at the time of its

enactment. ................................................. 11

2. Petitioners’ reading of this Court’s

precedents is wrong. .................................. 12

CONCLUSION .......................................................... 16

TABLE OF AUTHORITIES

Page(s)

Cases

Arlington Central School District Board

of Education v. Murphy,

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

Campbell v. Acuff-Rose Music, Inc.,

510 U.S. 569 (1994) ................................................ 8

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

Inc.,

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

Denton v. DaimlerChrysler Corp.,

645 F. Supp. 2d 1215 (N.D. Ga.

2009) ..................................................................... 10

Fogerty v. Fantasy, Inc.,

510 U.S. 517 (1994) ................................................ 9

Kappos v. Hyatt,

566 U.S. 431 (2012) .............................................. 12

Kirtsaeng v. John Wiley & Sons, Inc.,

136 S. Ct. 1979 (2016) ........................................ 2, 9

Marmo v. Tyson Fresh Meats, Inc.,

457 F.3d 748 (8th Cir. 2006) .................................. 9

Merrill Lynch, Pierce, Fenner & Smith

Inc. v. Manning,

136 S. Ct. 1562 (2016) .......................................... 11

iii

TABLE OF AUTHORITIES—continued

Page(s)

S-1 By and Through P-1 v. State Bd. of

Educ. of N.C.,

6 F.3d 160 (4th Cir. 1993) .................................... 10

Wall Data Inc. v. L.A. Cty. Sheriff’s

Dep’t,

447 F.3d 769 (9th Cir. 2006) .................................. 6

West Virginia University Hospitals, Inc.

v. Casey,

499 U.S. 83 (1991) ................................................ 15

Statutes, Rules and Regulations

11 U.S.C. § 363(n)...................................................... 13

15 U.S.C. § 2087(b)(7)(B) .......................................... 13

15 U.S.C. § 2618(d) .................................................... 13

17 U.S.C. § 505 .................................................. passim

28 U.S.C. § 1821 ........................................................ 16

28 U.S.C. § 1920 ................................................ passim

28 U.S.C. § 1920(2) .................................................... 10

30 U.S.C. § 938(c) ...................................................... 13

42 U.S.C. § 247d-6d(e)(9) .......................................... 13

42 U.S.C. § 1988 ........................................................ 15

TABLE OF AUTHORITIES—continued

Page(s)

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

332 ........................................................................ 12

Act of Feb. 15, 1819, ch. 19, 3 Stat. 481 ................... 12

Stat. 436 ..................................................... 3, 11, 12

Fee Act of 1853, ch. 80, 10 Stat. 161................... 12, 16

Fed. R. Civ. P. 54(b)................................................... 14

Fed. R. Civ. P. 54(d) .................................................. 14

U.S. Copyright Office, Copyright Small

Claims: A Report of the Register of

Copyrights (Sept. 2013), perma.cc/

8VLG-BFRJ ............................................................ 7

Other Authorities

Clark D. Asay, Transformative Use in

Software, 70 Stan. L. Rev. Online 9

(2017) ...................................................................... 6

Shyamkrishna Balganesh, Copyright

Infringement Markets, 113 Colum. L.

Rev. 2277 (2013) ................................................. 7, 8

BSA, The $1 Trillion Economic Impact

of Software (June 2016) ..................................... 4, 5

TABLE OF AUTHORITIES—continued

Page(s)

Bureau of Lab. Stat., Occupational

Outlook Handbook: Software

Developers, perma.cc/77VA-2MHQ ....................... 5

Barry Jaruzelski et al., PwC, Softwareas-a-Catalyst, strategy+business

(Oct. 25, 2016), perma.cc/8SAHWDTX ..................................................................... 5

McKinsey Global Inst., Solving the

Productivity Puzzle: The Role of

Demand and the Promise of

Digitization (Feb. 2018) ......................................... 4

INTEREST OF THE AMICUS CURIAE

BSA | The Software Alliance is an association of

the world’s leading software and hardware technology

companies. On behalf of its members, BSA promotes

policies that foster innovation, growth, and a competitive marketplace for commercial software and related

technologies. Because copyright policy is vitally important to promoting the innovation that has made

the United States the world’s leader in software development, BSA members have a strong stake in the

proper functioning of the U.S. copyright system.1

BSA members are among the Nation’s leading

technology companies, producing much of the hardware and software that power computer and telecommunication networks. Due to the complexity and commercial success of their products, these companies are

frequently the subject of copyright infringement

claims. At the same time, by virtue of their software

development activities, BSA members hold numerous

copyrights that they enforce against infringers in appropriate circumstances. Because BSA members are

both innovators as well as substantial copyright holders, and are both plaintiffs and defendants in infringement actions, they have a particularly acute interest

in ensuring that the cost-shifting rules for copyright

litigation are fair and promote sound copyright policy.

The members of BSA include Adobe, Akamai, ANSYS, Apple, Autodesk, Bentley Systems, Box, CA

Pursuant to Rule 37.6, amicus affirms that no counsel for a

party authored this brief in whole or in part and that no person

other than amicus and its counsel made a monetary contribution

to its preparation or submission. The parties have filed blanket

consents to the filing of amicus briefs with the Clerk’s office.

Technologies, Cadence, CNC/Mastercam, DataStax,

DocuSign, IBM, Informatica, MathWorks, Microsoft,

Okta, Oracle, PTC, salesforce.com, SAS Institute, Siemens PLM Software, Slack, Splunk, Symantec,

TrendMicro, Trimble Solutions Corporation, Twilio,

and Workday.

INTRODUCTION AND

SUMMARY OF ARGUMENT

The Copyright Act provision governing awards of

costs and attorneys’ fees, 17 U.S.C. § 505, should be

interpreted to “encourage the types of lawsuits that

promote th[e] purposes” of the Copyright Act—which

are “encouraging and rewarding authors’ creations

while also enabling others to build on that work.”

Kirtsaeng v. John Wiley & Sons, Inc., 136 S. Ct. 1979,

1986 (2016).

Amicus and its members—leading companies in

the U.S. software industry—recognize the importance

of both of these goals. If software creators fear that

they will not be able to afford to bring infringement

litigation when their copyrights are infringed, they

will be deterred from making the investments needed

to create new software. And if companies fear that

they will incur substantial costs in defending against

abusive infringement claims, they will be chilled from

building upon others’ copyrighted software in the

manner permitted by fair use and other copyright

principles—thereby frustrating innovation.

The reading of Section 505 that best promotes

both goals of the Copyright Act—encouraging meritorious infringement lawsuits while discouraging abusive claims—is that district courts have discretion in

appropriate cases to award to prevailing parties all

costs of litigation, including generally nontaxable

costs.

Litigating a copyright suit to judgment imposes

significant costs on both plaintiffs and defendants.

Shifting all of those costs where appropriate is necessary to ensure that both plaintiffs and defendants

with meritorious positions will be incentivized to

press to a decision on the merits, and are not forced to

abandon meritorious claims or defenses due to cost

pressures.

This reading of Section 505 is also the one compelled by principles of statutory interpretation. Congress adopted the “full costs” language in the Copyright Act of 1831 as a departure from other statutes

that allowed for “single costs” or expressly incorporated state law. Although Congress has since adopted

a narrower definition of the costs that are taxable by

default in federal court (see 28 U.S.C. § 1920), it has

left the statutory provision for award of “full costs” unchanged in every successive version of the Copyright

Act. That text should therefore be interpreted to mean

what Congress originally intended—permitting a district court to award to the prevailing party all costs of

the litigation, including otherwise nontaxable costs.

ARGUMENT

Costs Not Taxable Under 28 U.S.C. § 1920 Are Recoverable Under The Copyright Act.

This Court should affirm the decision below and

hold that Section 505 confers upon district courts the

discretion, in appropriate cases, to award to prevailing parties otherwise-nontaxable costs. Congress intended that such costs be awardable to prevailing copyright litigants, and shifting these costs when war-

ranted is necessary to enable both victims of infringement and noninfringing innovators to vindicate their

rights under the Copyright Act.

A. Appropriate Enforcement Of Software

Copyrights Is Important To The U.S.

Economy.

1. Software innovations fuel the nation’s

economic growth.

Software is a key driver—if not the driver—of the

U.S. economy today. The software industry contributes more than one trillion dollars to the U.S. economy

every year. BSA, The $1 Trillion Economic Impact of

Software 3 (June 2016), perma.cc/L28J-D8X5. That

number includes $475.3 billion in direct GDP contributions and over $525 billion in indirect and induced

contributions attributable to the software industry.

Ibid.

Software innovations play an especially important

role in increasing American economic productivity.

“[A]ging economies,” like the United States’, “depend

on productivity gains to drive economic growth.” See,

e.g., McKinsey Global Inst., Solving the Productivity

Puzzle: The Role of Demand and the Promise of Digitization 1 (Feb. 2018), perma.cc/A3W5-7F2R. And software is a key contributor to American productivity

gains in virtually every industry sector. Id. at 7. Indeed, software has enabled enormous breakthroughs

in a range of fields, from transportation and logistics,

to medicine, to agriculture, to cloud computing. The $1

Trillion Economic Impact of Software, supra, at 6-9.

The software industry also contributes to economic growth through its significant investments in

research and development (“R&D”). Companies have

responded to “the supercharged pace of improvement

in what software can do” by “strengthen[ing] their

software and service offerings,” and this “rapid change

is powerfully affecting the mix of R&D spending.”

Barry Jaruzelski et al., PwC, Software-as-a-Catalyst,

strategy+business (Oct. 25, 2016), perma.cc/8SAHWDTX. Software is the fastest growing category of

R&D spending in the entire economy (ibid.), and now

accounts for more than $50 billion of R&D spending

per year. The $1 Trillion Economic Impact of Software, supra, at 4.

Finally, the software industry supports nearly 10

million American jobs. The $1 Trillion Economic Impact of Software, supra, at 3. Of those jobs, 2.5 million

are created directly by the software industry. These

are high-quality, high-paying jobs: Software developers earned an average of $108,760 in 2014—more than

twice the average annual wage for all U.S. occupations. Id. at 1. And the industry’s growth is expected

to create even more of these jobs in the coming years:

the Department of Labor projects that, as a result of

“increased demand for computer software,” “[e]mployment of software developers is projected to grow 24

percent from 2016 to 2026, much faster than the average for all occupations.” Bureau of Lab. Stat., Occupational Outlook Handbook: Software Developers,

perma.cc/77VA-2MHQ.

2. Software R&D

protection.

relies

Companies’ ability to continue investing these

huge sums in software development—and, therefore,

the continued growth of the software industry’s contribution to the economy—depends on appropriate,

balanced judicial enforcement of copyright law.

Intellectual property protection is especially important to the software industry. “Software fundamentally differs from more traditional forms of medium, such as print or phonographic materials, in

that software can be both[] more readily and easily copied on a mass scale in an extraordinarily short

amount of time and relatively inexpensively.” Wall

Data Inc. v. L.A. Cty. Sheriff’s Dep’t, 447 F.3d 769, 781

(9th Cir. 2006) (internal quotation marks omitted). Indeed, the ease and speed with which software can be

copied “make[] it extraordinarily vulnerable to illegal copying and piracy.” Ibid. (internal quotation

marks omitted). Thus, absent legal protection against

unauthorized copying and use, software developers

would be unable to recoup the costs of their investment in their software.

At the same time, software creators must have appropriate breathing room to borrow from prior software developments in lawful, noninfringing ways. Developers frequently reuse pieces of others’ software or

code in new software that builds on those elements,

and copyright law authorizes such conduct through

the fair use defense. See, e.g., Clark D. Asay, Transformative Use in Software, 70 Stan. L. Rev. Online 9,

19 (2017) (“Software reuse is an important means by

which to spur robust software innovation. Copyright

law’s fair use defense is one important means of enabling such reuse.”). Copyright law should encourage

this innovative conduct, which yields tremendous economic benefits when undertaken lawfully.

B. Balanced

Enforcement

Requires District Court Discretion To

Award Prevailing Copyright Litigants

All Of Their Costs, Not Just GenerallyTaxable Costs.

The copyright system can properly balance these

competing goals only if district courts are able, in appropriate cases, to make prevailing litigants whole for

all costs associated with litigation—not just the subset of “taxable costs” enumerated in 28 U.S.C. § 1920.

Without the availability of such relief, many copyright

litigants will face the prospect of substantial financial

loss even if they prevail in litigation—which opens the

door to gamesmanship and abuse in the litigation system.

costly form of litigation for both sides of a case. As of

2013, the average cost of litigating a copyright case

through trial ranged “from $384,000 to over $2 million,

for

both

plaintiffs

and

defendants.”

Shyamkrishna Balganesh, Copyright Infringement

Markets, 113 Colum. L. Rev. 2277, 2288 (2013). And

the “necessarily fact-intensive nature” of the issues,

including whether copying occurred, whether two

works are “‘substantially similar,’” and whether a use

qualified as a fair use. Id. at 2289.

These high costs burden both plaintiffs and defendants. “Copyright owners whose works are infringed often are deterred from enforcing their rights

due to the burden and expense of pursuing litigation

in the federal system.” U.S. Copyright Office, Copyright Small Claims: A Report of the Register of Copyrights 24, 97 (Sept. 2013), perma.cc/8VLG-BFRJ. A

determined defendant can threaten to draw out litigation and thus frustrate a plaintiff’s legitimate infringement claim.

High costs are also a threat to copyright defendants, because they “discourage defendants from contesting palpably frivolous and overbroad infringement

claims by copyright owners.” Balganesh, 113 Colum.

L. Rev. at 2291. Faced with the high cost of litigating

a copyright claim to judgment (and of proving fair use,

which is an affirmative defense (see Campbell v.

Acuff-Rose Music, Inc., 510 U.S. 569, 590 (1994))), a

defendant that has engaged in lawful, non-infringing

innovation may agree to pay an unjustified settlement

rather than defending its conduct through summary

judgment and trial.

Although the Copyright Act unquestionably allows prevailing parties to recover generally-taxable

costs and attorneys’ fees, shifting those costs alone often may not be sufficient to alleviate the problem of

high costs in copyright litigation. Indeed, as this case

illustrates, precluding the recovery of nontaxable

costs would leave many prevailing copyright litigants

uncompensated for a significant portion of litigation

expenses.

Here, respondents were awarded $12.7 million in

nontaxable costs, as opposed to only $3.4 million in

taxable costs. Pet. App. 33a-34a. And the nontaxable

costs awarded were 25% less than respondents had

sought (id. at 71a)—indicating that respondents’ actual nontaxable costs were even higher. Allowing district courts to award prevailing parties all of their litigation costs—including generally-nontaxable costs—

is therefore necessary to ensure that victims of in-

fringement can be made whole and that innocent defendants have proper incentives to resist and defeat

unjustified infringement lawsuits.

Making nontaxable costs available would not open

the door to massive awards in every case. Rather, the

amount of costs to be awarded in a particular case

would be committed to district courts’ discretion, as

Section 505 directs. See 17 U.S.C. § 505 (“[T]he court

in its discretion may allow the recovery of full costs by

or against any party.”) (emphasis added). In exercising this discretion, district courts—like the district

court here (Pet. App. 60a)—are properly guided by the

standard this Court outlined for attorneys’ fee claims

under Section 505 in Fogerty v. Fantasy, Inc., 510 U.S.

517 (1994), and Kirtsaeng v. John Wiley & Sons, Inc.,

136 S. Ct. 1979 (2016).

That approach, as Kirtsaeng clarified, gives “substantial weight” to the objective reasonableness of the

losing party’s litigation position (136 S. Ct. at 1986),

but also looks to a number of other “nonexclusive factors,” including “frivolousness, motivation, * * * and

the need in particular circumstances to advance considerations of compensation and deterrence.” Fogerty,

510 U.S. at 534 n.19 (internal quotation marks omitted). This multi-factor approach allows district courts

to award a prevailing party all of its litigation costs

when the circumstances warrant, while giving courts

flexibility to award reduced costs (or no costs) in less

egregious cases.

Petitioners object that permitting awards of nontaxable costs would create administrability problems

and lead to “significant post-trial litigation.” Pet. Br.

46. But that concern is misplaced. What qualifies as a

“taxable cost” under Section 1920 in any given case is

already subject to debate. See, e.g., Marmo v. Tyson

Fresh Meats, Inc., 457 F.3d 748, 763 (8th Cir. 2006)

(district court did not abuse discretion in refusing to

tax costs related to witnesses who were withdrawn by

plaintiff or ruled inadmissible); Denton v. DaimlerChrysler Corp., 645 F. Supp. 2d 1215, 1227 (N.D.

Ga. 2009) (concluding that “shipping and handling

charges and the costs of obtaining exhibits” for depositions were recoverable costs under Section 1920(2)

but that “incidental expenses associated with depositions,” such as CD-ROMs, rough transcripts, etc.,

were not recoverable).

Similarly, “legal battles over attorneys’ fees” can

often require “another round of protracted litigation”

to resolve. See S-1 By and Through P-1 v. State Bd. of

Educ. of N.C., 6 F.3d 160, 171 (4th Cir. 1993) (Wilkinson, J., dissenting), adopted by 21 F.3d 49, 52 (4th

Cir. 1994) (en banc). And parties can seek to have

courts award nontaxable costs pursuant to their inherent authority—which would lead to additional litigation. See Resp. Br. 52.

Cost awards require nothing more than a

straightforward exercise of the district court’s discretion, informed by the same equitable analysis that a

district court already will be applying to the prevailing party’s attorneys’ fee request. For that reason, allowing awards of generally-nontaxable costs would

not add any meaningful additional litigation burden.

C. Section 505’s Provision For “Full Costs”

Includes Authority To Award OtherwiseNontaxable Costs.

Awarding nontaxable costs to prevailing copyright

litigants is not only the proper approach as a matter

of policy—it is the approach that best comports with

the text of Section 505 and the context in which the

provision was originally enacted.

1. The statutory term “full costs” means an

award of all litigation expenses, in

accordance with prevailing practice at the

time of its enactment.

Section 505 is distinctive in its use of the phrase

“full costs”; most of the cost-shifting provisions in the

U.S. Code refer only to “costs,” either alone or in conjunction with other terms (Pet. Br. 24 n.1).

This intentional choice of words is crucial to resolving the question presented. As this Court has often stated, “when Congress enacts a statute that uses

different language from a prior statute, we normally

presume that Congress did so to convey a different

meaning.” Merrill Lynch, Pierce, Fenner & Smith Inc.

v. Manning, 136 S. Ct. 1562, 1578 (2016). Thus, Section 505 should be read in light of its particular language, which authorizes the award of a broader range

of litigation costs than those available under other

statutes that refer simply to “costs.”

The history of the language “full costs” confirms

that Congress intended the term to encompass more

than the costs now identified as taxable under Section

1920. At the time Congress enacted the Copyright Act

of 1831, there was no generally applicable federal

statute governing cost-shifting in federal court. Instead, Congress had enacted statutes that expressly

incorporated state law, or otherwise limited which

costs were recoverable. Resp. Br. 37. The 1831 Act, by

contrast, broadly provided that “in all recoveries under this act, either for damages, forfeitures, or penalties, full costs shall be allowed thereon, any thing in

any former act to the contrary notwithstanding.” Copyright Act of 1831, ch. 16, § 12, 4 Stat. 436, 438-39.

In 1853, Congress passed the Fee Act, which provided that “in lieu of the compensation now allowed by

law,” only certain fixed categories of costs would be

taxable by federal courts. Fee Act of 1853, ch. 80, 10

Stat. 161, 161. But that law did not disturb the broad,

preexisting language of the 1831 Copyright Act, and

Congress has not done so since.

Congress’s preservation of the 1831 Act’s language is a strong indicator that it intended to preserve

the 1831 Act’s broad provision for award of all costs.

See, e.g., Kappos v. Hyatt, 566 U.S. 431, 440-41 (2012)

(holding that because the “core language” of a statute

later incorporated into the Patent Act “remains

largely unchanged,” the predecessor statute “and the

judicial decisions interpreting that statute should inform our understanding of” the current statute).2

2. Petitioners’ reading

precedents is wrong.

this

Court’s

Petitioners’ argument that “full costs” under Section 505 are limited to taxable costs under Section

2 The United States observes that the States in 1831 regulated

the amounts of costs that could be recovered and their rates, and

asserts that, in providing for “full costs,” “Congress signaled that

costs in copyright suits should be taxed at the listed state-law

rates—no more and no less.” U.S. Br. 21. But that ignores the

fact that Congress chose to incorporate state law explicitly when

it wished to do so—and it did not do so in the 1831 Copyright Act.

See, e.g., Act of Mar. 1, 1793, ch. 20, § 4, 1 Stat. 332, 333. The

1831 Congress’s determination that the “full” amount of such

costs should be recoverable, a determination that has never been

overturned, supports a broad construction of Section 505.

1920 rests on a flawed reading of this Court’s precedents.

In petitioners’ view, those precedents impose a

rigid, three-category structure for litigation-related

expenses: “costs,” which means only the costs taxable

under Section 1920; “fees,” meaning amounts charged

by attorneys and other professionals; and “expenses,”

a catchall for other types of expenditures. Pet. Br. 20.

Petitioners contend that the term “costs” never refers

to any expenditures other than the taxable costs enumerated in Section 1920 and, as a result, a statute using the term “costs” presumptively does not authorize

awarding any other kind of costs unless—and only to

the extent that—it also refers to “fees” or “expenses.”

Id. at 25.

Petitioners’ approach is an incorrect oversimplification. There is no ironclad rule that applies to every

instance of fee-shifting language in the U.S. Code because Congress itself does not consistently employ the

three terms in petitioners’ rigid structure. In some instances, it speaks of “costs” as separate from “fees” or

“expenses.” See, e.g., 11 U.S.C. § 363(n) (referring to

“any costs, attorneys’ fees, or expenses incurred”); 15

U.S.C. § 2618(d) (referring to “costs of suit and reasonable fees for attorneys and expert witnesses”). But in

other instances, Congress speaks of “costs” or “expenses” as including “fees.” See, e.g., 15 U.S.C.

§ 2087(b)(7)(B) (“costs of litigation (including reasonable attorneys’ and expert witness fees)”); 30 U.S.C.

§ 938(c) (“all costs and expenses (including the attorney’s fees)”); 42 U.S.C. § 247d-6d(e)(9) (“reasonable expenses * * * including a reasonable attorney’s fee”).

In sum, there is no one definition of “costs” that

applies in every situation; rather, the question

whether a statute authorizes awarding generally-nontaxable costs must be determined on the basis of each

statute’s particular text and context. Here, for the reasons explained above, that context demonstrates that

Congress’s intent, when it adopted the language now

found in Section 505, was to provide for awards of all

kinds of litigation costs.3

Petitioners also invoke a trio of this Court’s precedents—but none offers support for their position that

“full costs” excludes nontaxable costs.

First, in Crawford Fitting Co. v. J.T. Gibbons,

Inc., 482 U.S. 437 (1987), the Court held that prevailing defendants in antitrust actions could not obtain

expert witness fees beyond the limited reimbursement

authorized by Section 1920. The district court in that

case had awarded expert witness fees in excess of

those available under Section 1920, purporting to act

pursuant to its discretion under Rule 54(d). Id. at 439.

This Court rejected this use of Rule 54(d), holding that

“[Section] 1920 defines the term ‘costs’ as used in Rule

54(d).” Id. at 441.

Crawford Fitting thus established that in cases in

which Rule 54(d) and Section 1920 govern awards of

costs, the taxable costs enumerated in Section 1920

are the only costs that a court may award. But the

Court did not hold that Section 1920 precludes awards

of other types of costs in cases governed by a statute

whose text and context departs from Rule 54(b) and

3 That conclusion is corroborated by the fact that four other fed-

eral statutory provisions, all of which were enacted after 1976,

also use the phrase “full costs”—and as respondents note, the

legislative history of one of these provisions indicates that Congress understood the term to include more than the costs that

are taxable under Section 1920. Resp. Br. 7.

Section 1920. To the contrary, the Court acknowledged that its default rule could be displaced by “explicit statutory or contractual authorization.” 482 U.S.

at 445. That is precisely the circumstance here.

Next, in West Virginia University Hospitals, Inc.

v. Casey, 499 U.S. 83 (1991), the Court considered

whether 42 U.S.C. § 1988—which at the time authorized “a reasonable attorney’s fee”—also allowed for

awards of expert witness fees. The Court held that it

did not, concluding based on statutory and judicial usage that the term “attorney’s fee” was not ordinarily

used to refer to expert witness fees and thus did not

give “explicit statutory authority” to award expert

fees. That unremarkable proposition is the most that

Casey can be read to hold—and it is irrelevant here,

given that Section 505 entitles prevailing parties to

“full costs,” a term that at the time of its adoption

meant all costs associated with litigation.

Finally, in Arlington Central School District

Board of Education v. Murphy, the Court held that expert witness fees could not be recovered under the Individuals with Disabilities Education Act (“IDEA”),

which provided that a court could award “reasonable

attorneys’ fees as part of the costs.” 548 U.S. 291, 293

(2006) (internal quotation marks omitted). The

Court’s decision in Murphy turned on essentially the

same reasoning as Casey: indeed, Murphy noted that,

in order to award expert witness fees to the plaintiffs,

the Court would have had to “hold that the relevant

language in the IDEA * * * exactly the opposite of

what the nearly identical language in 42 U.S.C. § 1988

was held to mean in Casey.” Id. at 302. Thus, Murphy

is inapposite here for the same reasons as Casey.

To be sure, Murphy referred to “the principle, recognized in Crawford Fitting, that no statute will be

construed as authorizing the taxation of witness fees

as costs unless the statute ‘refer[s] explicitly to witness fees.’” 548 U.S. at 301 (quoting Crawford Fitting,

482 U.S. at 445). But to the extent that Crawford Fitting recognized such a “principle,” it was one that

looked forward from the enactment of Section 1920:

the Crawford Court was loath to “infer that Congress

has repealed §§ 1920 and 1821” through a statute “not

referring explicitly to witness fees.” 482 U.S. at 445.

Such a forward-looking rule makes perfect sense—for

legislation enacted after Section 1920, it is logical to

understand Congress to have departed from Section

1920’s taxable cost baseline only where it said it was

doing so.

But the relevant language of Section 505 of the

noted above, that language predates even the original

Fee Act. Congress’s clear intent in the 1831 Act to provide for full shifting of litigation costs should not be

abrogated based on an interpretive rule grounded in a

statute (Section 1920) that was enacted more than one

hundred years later.

CONCLUSION

The judgment of the court of appeals should be affirmed.

Respectfully submitted.

ANDREW J. PINCUS

Counsel of Record

PAUL W. HUGHES

MATTHEW A. WARING

Mayer Brown LLP

1999 K Street, NW

Washington, DC 20006

(202) 263-3000

apincus@mayerbrown.com

Counsel for Amicus Curiae

DECEMBER 2018

This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.