Ryan v. Editions Ltd. West

The Copyright Act’s preemption of state law only includes preemption of laws falling within the scope of the Act, or those that conflict with its purpose.

Victoria Ryan entered into a contract (the “Agreement”) with Editions Limited West, Inc. (“ELW”), giving ELW a license to publish her artwork as posters in exchange for royalties. The Agreement did not address derivative works. The Agreement stated that if litigation occurred, the prevailing party would be entitled to costs and attorney fees. Ryan later filed suit, alleging that ELW violated the Agreement, the Copyright Act (“the Act”), and California law by knowingly suppling buyers with posters of her art for the purpose of creating derivative works. The district court held that the Act did not preclude enforcement of the fee-shifting provision, finding that Ryan was only entitled to a fraction of her attorney fees. Both parties appealed. The Ninth Circuit held that the district court abused its discretion by impermissibly excluding the majority of Ryan’s requested fees, and failing to give an adequate explanation for the reduction. The panel also held that pro rata reduction of Ryan's fees was inappropriate given the interrelated nature of her claims. The panel held that California law permitting contractual fee-shifting provisions did not fall within the scope of the Act, or conflict with its purpose, therefore, the Act did not preempt enforcement of the fee provision. The panel affirmed the district court's holding that Ryan was not judicially estopped from requesting attorney fees, as Ryan consistently maintained that she was entitled to fees. The panel vacated the district court’s award of attorney fees, remanded, and affirmed all other holdings. AFFIRMED in Part, VACATED in Part, and REMANDED.