Petition for Writ of Certiorari — John Abdelsayed, et al., Petitioners v. Affordable Aerial Photography, Inc.

Supreme Court briefSep 4, 2024

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No. 24-____

IN THE

Supreme Court of the United States

JOHN ABDELSAYED and

TRENDS REALTY USA CORP,

Petitioners,

AFFORDABLE AERIAL PHOTOGRAPHY, INC.,

Respondent.

On Petition for a Writ of Certiorari to the United

States Court of Appeals for the Eleventh Circuit

PETITION FOR A WRIT OF CERTIORARI

GRIFFIN C. KLEMA

KLEMA LAW, P.L.

420 W. Kennedy Boulevard

Second Floor

Tampa, FL 33606

(202) 713-5292

Griffin@KlemaLaw.com

Counsel for Petitioners

QUESTIONS PRESENTED

The Copyright Act provides that a <court may . . .

award a reasonable attorney9s fee to the prevailing

party.= 17 U.S.C. § 505. In CRST Van Expedited, Inc.

v. EEOC, 578 U.S. 419 (2016), this Court held that <a

defendant need not obtain a favorable judgment on

the merits in order to be a 8prevailing party9= for purposes of statutory attorney9s fees, id. at 431, but <decline[d] to decide= whether <a defendant must obtain

a preclusive judgment in order to prevail,= id. at 434.

That important question has divided the circuits 7-3,

and is cleanly presented in this copyright case:

1. Does a dismissal without prejudice that

reestablishes the pre-suit status quo

make a defendant the <prevailing party=

under 17 U.S.C. §§ 505 and 1203(b)(5)?

A further and related question left unaddressed in

Delta Air Lines, Inc. v. August, 450 U.S. 346 (1981), is

presented, and important to all civil litigants:

2. Is a final judgment of voluntary dismissal without prejudice, entered in response to a plaintiff9s request under Rule

41(a)(2), a <judgment that [a plaintiff] finally obtains= for purposes of Rule 68?

These questions provide related, defendant-based

counterpoise to those now pending in Lackey v. Stinnie, 144 S. Ct. 1390 (2024).

PARTIES TO THE PROCEEDINGS AND

CORPORATE DISCLOSURE STATEMENT

Petitioner Trends Realty USA Corp does not have

a parent corporation and no publicly held company

owns 10% or more of its stock.

In addition to the caption, the district court proceedings included third-parties who, while they appear in the caption of the Eleventh Circuit, were not

parties to the appeal, and are not parties to this petition:

Robert Stevens

Cornelius McGinnis

Old Palm Real Estate, LLC

iii

DIRECTLY RELATED PROCEEDINGS

Affordable Aerial Photography, Inc. v. Abdelsayed et

al., No. 9:21-cv-81331-AMC (S.D. Fla.); case closing order entered Jan. 6, 2023.

Affordable Aerial Photography, Inc. v. Trends Realty

USA Corp, et al., No. 23-11662 (11th Cir.); judgment entered February 28, 2024; rehearing denied

May 8, 2024.

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED ........................................ i

INTRODUCTION ....................................................... 1

OPINIONS BELOW ................................................... 3

JURISDICTION.......................................................... 3

STATUTES AND RULES INVOLVED ..................... 4

STATEMENT OF THE CASE .................................... 4

REASONS FOR GRANTING THE PETITION ......... 9

II.

The circuits are split on whether a

defendant is a <prevailing party=

when an action is dismissed

without prejudice .................................... 12

Three circuits hold that preclusive

effect is irrelevant to a defendant9s

prevailing party status ....................... 13

Seven circuits employ a <risk of

refiling= test and require

preclusive effect for a defendant to

be deemed prevailing .......................... 17

The <risk of refiling= test is

atextual, ahistorical, and incorrect ..... 22

III. The circuits are also divided on

whether a Rule 41(a)(2) judgment

has judicial imprimatur ......................... 25

IV. The questions presented are

important and recurring issues on

which both plaintiffs and

defendants need guidance ..................... 26

Fee- and cost-shifting statutes are

many, and cases often end without

a preclusive judgment ......................... 26

Whether a Rule 68 offer is

enforceable after a voluntary

dismissal is an important, logically

related question to <prevailing

party= status ........................................ 28

This case is a clean vehicle to

address what both CRST and Delta

Air Lines did not while potentially

complimenting a decision in Lackey

v. Stinnie .................................................... 29

CONCLUSION.......................................................... 31

APPENDIX

OPINIONS AND ORDERS

Appendix A: Opinion, U.S. Court of Appeals for

the Eleventh Circuit (February 28, 2024) .......... 1a

Appendix B: Order Denying Motion for Entitlement to Attorneys9 Fees, U.S. District Court

for the Southern District of Florida (April 14,

2023)................................................................... 10a

Appendix C: Order Closing Case, U.S. District

Court for the Southern District of Florida

(January 6, 2023)............................................... 16a

Appendix D: Order Granting Voluntary Motion

to Dismiss, U.S. District Court for the Southern District of Florida (January 3, 2023) ......... 18a

REHEARING ORDERS

Appendix E: Order Denying Petition for Rehearing En Banc, U.S. Court of Appeals for the

Eleventh Circuit (May 8, 2024) ......................... 20a

Appendix F: Order Denying Motion for Reconsideration, U.S. District Court Southern District of Florida (May 16, 2023) .......................... 22a

vii

TABLE OF CITATIONS

Page(s)

Cases

Affordable Aerial Photography, Inc. v. Win

Capital, LLC, No. 22-cv-22671, 2022 WL

3975192 (S.D. Fla. Sept. 1, 2022)...................... 5

Beach Blitz Co. v. City of Elizabeth,

13 F.4th 1289 (11th Cir. 2021) 10, 18, 21, 22, 24

Bryson v. Sullivan,

412 S.E.2d 327 (N.C. 1992) ............................. 22

Buckhannon Bd. & Care Home, Inc. v. W.

Virginia Dep’t of Health & Hum. Res., 532

U.S. 598 (2001) ............. 2, 11, 14, 15, 16, 17, 18,

............................................ 20, 22, 23, 24, 25, 30

Burlington v. Dague,

505 U.S. 557 (1992) ......................................... 26

Burton v. Vectrus Sys. Corp.,

834 F. App9x 444 (10th Cir. 2020) ................... 14

Cadkin v. Loose,

569 F.3d 1142 (9th Cir. 2009) ............... 2, 16, 20

Camesi v. Univ. of Pittsburgh Med. Ctr.,

753 Fed. App9x 135 (3d Cir. 2019) ................... 15

Campbell-Ewald Co. v. Gomez,

577 U.S. 153 (2016) ......................................... 28

Cantrell v. IBEW, AFL-CIO, Local 2021,

69 F.3d 456 (10th Cir. 1995) ............... 12, 13, 14

Citi Trends, Inc. v. Coach, Inc.,

780 F. App9x 74 (4th Cir. 2019) ....................... 10

Citizens for a Better Env’t v. Steel Co.,

230 F.3d 923 (7th Cir. 2000) ........................... 19

viii

Cohan v. Richmond,

86 F. 2d 680 (2d Cir. 1936) .............................. 16

Corcoran v. Columbia Broadcasting Sys.,

121 F.2d 575 (9th Cir. 1941) ............... 16, 20, 23

Cortés-Ramos v. Sony Corp. of Am.,

889 F.3d 24 (1st Cir. 2018) ........................ 18, 30

Criminal Prods., Inc. v. Cordoba,

808 F. App9x 585 (9th Cir. 2020) ..................... 20

CRST Van Expedited, Inc. v. EEOC,

578 U.S. 419 (2016) ..... i, 1, 3, 10, 11, 12, 17, 18,

...................................... 19, 20, 21, 23, 26, 29, 30

Dattner v. Conagra Foods, Inc.,

458 F.3d 98 (2d Cir. 2006) ............................... 17

Dean v. Riser,

240 F.3d 505 (5th Cir. 2001) ........................... 19

Delta Air Lines, Inc. v. August,

450 U.S. 346 (1981) ...................... i, 9, 28, 29, 30

Dunster Live, LLC v. LoneStar Logos Mgmt.

Co., 908 F.3d 948 (5th Cir. 2018) .................... 19

Epps v. Fowler,

351 S.W.3d 862 (Tex. 2011) ....................... 24, 26

Fogerty v. Fantasy, Inc.,

510 U.S. 517 (1994) ......................................... 24

Gieseke & Devrient GmbH v. United States,

No. 22-2002, 2024 WL 3171658 (Fed. Cir.

Jun. 26, 2024) ............................................ 20, 21

Hanrahan v. Hampton,

446 U.S. 754 (1980) ......................................... 19

Hensley v. Ekerhart,

461 U.S. 424 (1983) ......................................... 24

Highway Equip. Co. v. Feco, Ltd.,

469 F.3d 1027 (Fed. Cir. 2006)........................ 25

Home Owners’ Loan Corp. v. Huffman,

134 F.2d 314 (8th Cir. 1943) ........................... 23

Hughes v. Repki,

578 F.2d 483 (3d Cir. 1978) ............................. 14

In re Paoli R.R. Yard PCB Litig.,

221 F.3d 449 (3d Cir. 2000) ............. 1, 13, 14, 17

Jordan v. Time Inc.,

111 F.3d 102 (11th Cir. 1997) ........................... 1

Kenny ex rel. Winn v. Perdue,

547 F.3d 1319 (11th Cir. 2008) ....................... 27

Kirtsaeng v. John Wiley & Sons, Inc.,

597 U.S. 197 (2016) ......................................... 24

Lackey v. Stinnie,

144 S. Ct. 1390 (2024) ...................... i, 11, 28, 30

Live Face on Web, LLC v. Cremation Soc’y of

Ill., Inc., 77 F.4th 630 (7th Cir. 2023) ............. 25

Manhattan Review LLC v. Yun,

919 F.3d 149 (2d Cir. 2019) ............................. 17

Marek v. Chesny,

473 U.S. 1 (1985) ......................................... 1, 28

Marks v. Leo Feist, Inc.,

8 F.2d 460 (2d Cir. 1925) ........................... 16, 23

Marx v. Gen. Revenue Corp.,

568 U.S. 371 (2013) ......................................... 27

Mr. L. v. Sloan,

449 F.3d 405 (2d Cir. 2006) ............................. 17

Noxell Corp. v. Firehouse No. 1 Bar-B-Que

Rest., 760 F.2d 312 (D.C. Cir. 1985) ............... 15

Noxell Corp. v. Firehouse No. 1 Bar-B-Que

Rest., 771 F.2d 521 (D.C. Cir. 1985) ......... 15, 16

O.F. Mossberg & Sons, Inc. v. Timney

Triggers, LLC,

955 F.3d 990 (Fed. Cir. 2020).......................... 21

Riviera Distribs., Inc. v. Jones,

517 F.3d 926 (7th Cir. 2008) ........................... 25

Schwarz v. Folloder,

767 F.2d 125 (5th Cir. 1985) ..................... 14, 19

Sims v. Viacom, Inc.,

544 F. App9x 99 (3d Cir. 2013) ........................ 24

SnugglyCat, Inc. v. Opfer Commc’ns, Inc.,

953 F.3d 522 (8th Cir. 2020) ........................... 20

Sole v. Wyner,

551 U.S. 74 (2007) ............................... 18, 20, 30

Szabo Food Serv., Inc. v. Canteen Corp.,

823 F.2d 1073 (7th Cir. 1987) ......................... 19

United States v. $32,820.56 in U.S.

Currency, 838 F.3d 930 (8th Cir. 2016) .... 19, 20

United States v. $70,670.00 in U.S.

Currency, 929 F.3d 1293 (11th Cir. 2019) . 8, 12,

17, 18, 21

Versa Prods., Inc. v. Home Depot, USA, Inc.,

387 F.3d 1325 (11th Cir. 2004) ....................... 29

Wakefern Food Corp. v. Marchese,

No. 20-15949 (WJM), 2022 WL 1639044

(D.N.J. May 24, 2022) ..................................... 11

Warner Bros. Inc. v. Dae Rim Trading, Inc.,

877 F.2d 1120 (2d Cir. 1989) ..................... 16, 17

Statutes

17 U.S.C. § 40 (1970) ........................................... 23

17 U.S.C. § 505 ..................................... i, 1, 4, 7, 23

17 U.S.C. § 1203(b)(5)........................................ 1, 7

Rules

Fed. R. Civ. P. 12(b) ............................................. 21

Fed. R. Civ. P. 15(a)(2) .................................. 20, 30

Fed. R. Civ. P. 41(a)(1) ........................................ 20

Fed. R. Civ. P. 41(a)(2) ...................... 21, 25, 28, 30

Fed. R. Civ. P. 54(d)(1) .................................. 27, 28

Fed. R. Civ. P. 54(d)(2)(D) ..................................... 7

Fed. R. Civ. P. 68(d)............... 1, 4, 7, 25, 28, 29, 30

S.D. Fla. R. 7.3 ....................................................... 7

Other Authorities

Admin. Office of the U.S. Courts,

STATISTICAL TABLES FOR THE FEDERAL

JUDICIARY, Table C-4 (2023) ............................ 27

Black9s Law Dictionary 1024-28 (3d ed.

1933)................................................................. 23

Daniel Schlein, Asymmetric Fees Awards in

Civil Rights Litigation: A Critical

Reevaluation, 48 RUTGERS L. REC. 77

(2021) ............................................................... 23

John F. Vargo, The American Rule on

Attorney Fee Allocation: The Injured

Person’s Access to Justice, 42 AM. U.L.

REV. 1567 (1993) .............................................. 26

Melissa Eckhause, Fighting Image Piracy or

of Photography Copyright Infringement

Lawsuits, 86 ALB. L. REV. 111 (2023) ............. 27

xii

Nathan Nash et al., Comment, The

Tarnished Golden Rule: The Corrosive

Effect of Federal Prevailing-Party

Standards on State Reciprocal-Fee

Statutes, 127 YALE L.R. 1068 (2018) . 2, 9, 24, 26

Restatement (First) of Judgments

§ 53 cmt. a (1942) ............................................ 13

Restatement (Second) of Judgments

§ 20(1)(b) (1982) ............................................... 22

INTRODUCTION

The district court denied petitioners9 motion for attorney9s fees after more than a year of defensive effort4effort that resulted in fulfilling their primary objective of ending the lawsuit and completely resisting

the plaintiff9s attempt to obtain relief. The Eleventh

Circuit affirmed, concluding petitioners had both won

and lost at the same time: They could not be the <prevailing party= for purposes of §§ 505 or 1203(b)(5) of

the Copyright Act because they did not secure a preclusive judgment (defendants lost), nor could they recover their fees as costs under Rule 68(d)1 because the

judgment was <unfavorable= to the plaintiff (defendants won).

This case presents an issue expressly reserved in

CRST Van Expedited, Inc. v. EEOC, 578 U.S. 419

(2016) whether a preclusive judgment is necessary for

a defendant to be a <prevailing party.= The circuits

have splintered answering that question, as both the

Fourth and Eleventh Circuits have recognized.

Consistent with more than a century of history, the

minority view is that if a lawsuit ends without the

plaintiff altering its legal relationship with the defendant, the defendant has prevailed in the action. In

re Paoli R.R. Yard PCB Litig., 221 F.3d 449, 471 n.10

(3d Cir. 2000) (<the majority rule [is] that defendants

can be 8prevailing parties9 when a plaintiff voluntarily

dismisses his action without prejudice=).

But a sea change occurred after this Court9s decision in Buckhannon Bd. & Care Home, Inc. v. W.

1 Under Eleventh Circuit precedent, costs under Rule 68 include attorney9s fees in copyright actions. Jordan v. Time Inc.,

111 F.3d 102 (11th Cir. 1997) (citing Marek v. Chesny, 473 U.S.

1 (1985)).

Virginia Dep’t of Health & Hum. Res., 532 U.S. 598

(2001). A new majority has eschewed text and history,

with the Ninth Circuit abandoning its longstanding

view. Cadkin v. Loose, 569 F.3d 1142, 1147-49 (9th

Cir. 2009) (overruling its 1942 precedent which held a

<clearly irreconcilable with Buckhannon=). Post-Buckhannon, a majority of circuits now employ a <risk of

refiling= test in which a defendant is nonprevailing

whenever it remains <at risk= of a second suit. And

further division exists respecting whether defendants

must accomplish their goal of exiting a case with judicial imprimatur. Commentators have alarmed at this

shift. See Nathan Nash et al., Comment, The Tarnished Golden Rule: The Corrosive Effect of Federal

Prevailing-Party Standards on State Reciprocal-Fee

Statutes, 127 YALE L.R. 1068, 1084-89 (2018) (the

<original understanding of when [d]efendants prevail

is undermined by post-Buckhannon developments=).

The conflict among the circuits presents an intolerable

environment for defendants, whose status as prevailing party depends solely on where they are haled into

court. That divide is mature and urgently in need of

resolution.

The new <risk of refiling= test is ahistorical, atextual, and inconsistent with the Copyright Act in particular. It discourages defendants from standing on

meritorious defenses while encouraging plaintiffs to

file unreasonable infringement claims. The rule also

defies common sense because defendants are never

immunized from being forced to defend even barred

suits. Nor is imprimatur required for a defendant to

accomplish its primary objective.

The question reserved in CRST is cleanly presented in this simple copyright case. More precise

guidance for each type of litigant is needed to avoid

further confusion and stem the drift away from historic, commonsense understanding of what it means

for a defendant to prevail. That confusion may only

increase without a concurrent counterpart to the

Court9s decision this term in Lackey v. Stinnie, 144 S.

Ct. 1390 (2024), because plaintiffs9 and defendants9 objectives in litigation are different, CRST, 578 U.S. at

431.

John Abdelsayed and Trends Realty USA Corp petition the Court to issue a writ of certiorari to review

the judgment of the Unites States Court of Appeals for

the Eleventh Circuit in this case, to resolve the question reserved in CRST which has divided the lower

courts, and to clarify when judgments trigger Rule 68.

OPINIONS BELOW

The Eleventh Circuit9s opinion is unreported, but

available at 2024 WL 835235 (App. 1a-9a). The order

of the United States District Court for the Southern

District of Florida denying petitioners9 post-judgment

motion for attorney9s fees is unreported but is available at 2023 WL 3597542 (App. 10a-15a).

JURISDICTION

The Eleventh Circuit Court of Appeals entered its

opinion on February 28, 2024, and petitioners timely

sought rehearing en banc, which it denied on May 8,

2024. On July 28, 2024, Justice Thomas extended the

time to file this petition for a writ of certiorari to September 5, 2024. The Court has jurisdiction under 28

U.S.C. § 1254(1).

STATUTES AND RULES INVOLVED

The Copyright Act of 1976 prevailing party fee provision, 17 U.S.C. § 505 (2018), provides, in full:

In any civil action under this title, the

court in its discretion may allow the recovery of full costs by or against any

party other than the United States or an

officer thereof. Except as otherwise provided by this title, the court may also

award a reasonable attorney9s fee to the

prevailing party as part of the costs.

The Digital Millenium Copyright Act prevailing

party fee provision, 17 U.S.C. § 1203(b)(5) (2018), provides, in relevant part:

In an action brought under subsection

(a), the court4 . . . in its discretion may

award reasonable attorney9s fees to the

prevailing party;

Federal Rule of Civil Procedure 68(d) provides:

If the judgment that the offeree finally

obtains is not more favorable than the

unaccepted offer, the offeree must pay

the costs incurred after the offer was

made.

STATEMENT OF THE CASE

A. The action and its termination

John Abdelsayed and his small business, Trends

Realty USA Corp, thought an email they received alleging copyright infringement and demanding immediate payment of $35,000 based on the presence of a

photograph on Trends Realty9s website was a scam.

He was quickly disabused of that notion when Affordable Aerial Photography, Inc. (<Affordable Aerial=)

brought suit against him and Trends Realty, alleging

direct and vicarious copyright infringement under 17

U.S.C. § 501 and copyright management information

(<CMI=) removal under 17 U.S.C. § 1202(b). He had no

means to pay Affordable Aerial9s large settlement demand. When the district court struck Trends Realty9s

pro se answer for not being signed by an attorney, he

was forced to find a lawyer to represent his business

or else face a potential six-figure default judgment.2

He retained counsel willing to represent him and

Trends Realty on a contingency fee basis4just as

plaintiffs like Affordable Aerial routinely do4and

they raised defenses that the Copyright Act incentivized them to pursue through the Act9s fee-shifting provisions. They also availed themselves of the protections provided by Rule 68, and made Affordable Aerial

the best offer they could within their financial means

to try and avoid litigation.

Affordable Aerial rejected that offer and more than

a year of intense litigation ensued, including through

the completion of discovery, multiple rounds of summary judgment briefing, and further reopening of discovery after Affordable Aerial9s principle made false

statements in its opposition to the defendants9 summary judgment. As a direct consequence of their defensive effort, Affordable Aerial admitted its CMI

2 Large default judgments are often awarded for a photograph appearing on the accused9s website. E.g., Affordable Aerial

Photography, Inc. v. Win Capital, LLC, No. 22-cv-22671, 2022

WL 3975192 (S.D. Fla. Sept. 1, 2022) ($124,839.80 awarded by

default, including attorney9s fees and costs). Affordable Aerial includes these default judgments as representative cases in its demand letters, like the one petitioners received.

removal claim was objectively unreasonable (<I admit

that the [subject image] didn9t have the CMI=), and

abandoned that claim by amended pleading pursuant

Rule 15(a)(2). Discovery also revealed serious problems with Affordable Aerial9s infringement claims, including multiple arguments they briefed on summary

judgment that Affordable Aerial9s claims were timebarred, that it could not claim statutory damages or

attorney9s fees as a consequence of 17 U.S.C. § 412,

that it had no actual damages, that the image was not

registered, and that they had acquired a license to it

in any event. All of those defensive issues4issues that

Affordable Aerial forced petitioners to develop through

litigation4ultimately caused Affordable Aerial to

abandon its remaining infringement claims seventeen

months after it initiated the lawsuit. It called petitioners9 dispositive arguments <novel legal theories= that it

did not think was <worth the continued effort= to address.

Affordable Aerial9s decision to abandon its case

came just after the district court instructed defendants to refile their Rule 12(b)(1) and Rule 56 motions

together as a single combined dispositive motion. Affordable Aerial quickly moved to voluntarily dismiss

its action under Rule 41(a)(2) without prejudice. Petitioners then immediately filed their second renewed

motion for summary judgment and opposed Affordable Aerial9s voluntary dismissal, seeking a merits ruling on the arguments they had invested in developing

and which were ripe for disposition. They attacked Affordable Aerial9s purported reason for seeking dismissal without prejudice as disingenuous because, as a

practical matter, it would never file a second suit.

They argued Affordable Aerial9s motion was calculated solely to avoid the consequences of its doomed

litigation by escaping any liability for the defendants9

attorney9s fees.

The district court allowed Affordable Aerial to suffer a voluntary nonsuit, with the exact conditions it

requested. It entered a judgment of dismissal reestablishing the defendants9 pre-suit status, including repayment of their taxable costs incurred in their defense. App. 16a. That judgment ultimately fulfilled

their primary objective of terminating the litigation

without any obligation to Affordable Aerial.

B. The post-judgment fees litigation

Based on the final judgment of dismissal, John Abdelsayed and Trends Realty moved for their attorney9s

fees under the Copyright Act, 17 U.S.C. §§ 505 and

1203(b)(5), arguing they were the prevailing parties.

They also argued, pursuant to Rule 68(d), that their

unaccepted offer was more favorable than the dismissal Affordable Aerial requested, mandating cost-shifting, which includes fees in copyright cases under Eleventh Circuit precedent. They proceeded with the conferral requirements and deadlines prescribed by the district court9s local rules, and timely filed their fees motion. See Fed. R. Civ. P. 54(d)(2)(D) (providing for special procedures by local rule); S.D. Fla. R. 7.3(a), (b).

The district court denied defendants9 entitlement

to fees. Rather than viewing it as a post-judgment fees

motion, the court perceived it as a motion for <reconsideration of the Court9s Order Granting Plaintiff9s

Motion to Voluntarily Dismiss= and concluded that

<[r]econsideration is not warranted.= App. 12a. Consequently, it did not decide which party prevailed, and

did not reach the Rule 68 issue. App. 15a. Abdelsayed

and Trends Realty sought reconsideration and highlighted the difference between a judge9s equitable discretion under Rule 41 prior to dismissal and prevailing

party status post-judgment under § 505 and Rule 68.

The district court denied that motion. App. 22a-23a.

C. The court of appeals’ opinion

Abdelsayed and Trends Realty appealed, arguing

that they had prevailed because they rebuffed Affordable Aerial9s CMI removal claim by its own admission

and it left court emptyhanded on its infringement

claims. They further argued that the dismissal order

was, at a minimum, an enforceable costs judgment

and judicially-sanctioned end to the lawsuit that satisfied any requirement for <judicial imprimatur.=

At the same time, they argued the judgment of dismissal was one that Affordable Aerial had requested,

and therefore it had <obtained= that judgment for purposes of Rule 68, thus mandating cost-shifting regardless of prevailing party status.

The Eleventh Circuit affirmed the denial of petitioners9 attorney9s fees, but on different grounds. App.

3a. It concluded that a judgment of voluntary dismissal without prejudice4though requiring Affordable

Aerial to reimburse Abdelsayed and Trends Realty

thousands of dollars in costs and reestablishing the

status quo ante4did not carry <judicial imprimatur=

to make the defendants prevailing parties. App. 7a-8a.

It reasoned that the <dismissal does not prevent AAP

from refiling its claims,= App. 8a, and relied on its

prior decision in United States v. $70,670.00 in U.S.

Currency,

929 F.3d 1293 (11th Cir. 2019), holding that a preclusive judgment is necessary for petitioners to be

deemed prevailing.

Despite concluding that Abdelsayed and Trends

Realty had not prevailed, the circuit court simultaneously agreed with them that Affordable Aerial <secured no affirmative relief= and reasoned Rule 68 did

not apply because the judgment was <adverse= to Affordable Aerial. App. 5a (<an adverse judgment against

the plaintiff does not trigger Rule 68=). Because the

judgment was unfavorable to Affordable Aerial, it

could not have <obtained= that judgment, and relied

on the <favorability= language from Delta Air Lines,

Inc. v. August, 450 U.S. 346 (1981). App. 4a-6a.

According to the Eleventh Circuit, petitioners both

won and lost, saying the dismissal was a <judgment

against the plaintiff= under Rule 68, App. 5a, yet also

stating defendants did not receive a <judgment rejecting the [plaintiff9s] claim= under the Copyright Act,

App. 8a. The net result, under its rule, is that a copyright plaintiff can litigate its claims without risk of

fees liability under § 505 or Rule 68, so long as it obtains a dismissal without prejudice as soon as it

senses a possible defeat4even if, as here, that occurs

after more than a year of intense litigation.

The Eleventh Circuit has joined six other circuits

which employ a <risk of refiling= test, requiring a judgment to have preclusive effect before a defendant can

be deemed a prevailing party. Three circuits remain

focused on the termination itself, with the split recognized by the Fourth Circuit.

REASONS FOR GRANTING THE PETITION

The circuits are divided on whether a defendant is

a <prevailing party= without the entry of a preclusive

judgment. A clear divide has emerged, shaped by this

Court9s prevailing plaintiff jurisprudence. See Nash,

The Tarnished Golden Rule, 127 YALE L.R. at 1087-88

(<the pre-Buckhannon 8general rule . . . [was] that the

defendant is regarded as having prevailed9 when a

plaintiff voluntarily withdraws the action without

consideration=). While the language of the circuits in

the post-Buckhannon majority varies, they all share a

common rationale: where the suit9s end does not

preclude a second suit on the same issue, a defendant

cannot be the prevailing party. Seven circuits subscribe to this <risk of refiling= test. Conversely, three

circuits focus on the suit9s outcome to the defendant

without requiring a preclusive judgment.

The Fourth Circuit expressly recognized the new

divide. The disharmony, it concluded, resulted from

CRST declining <to decide whether a nonmerits judgment without preclusive effect is sufficient for a party

to prevail.= Citi Trends, Inc. v. Coach, Inc., 780 F.

App9x 74, 79 (4th Cir. 2019). It observed both district

and circuit <courts that have addressed whether a partially preclusive judgment suffices to achieve prevailing party status have disagreed.= Ibid. Illustrating the

difficulty faced by the lower courts in the present environment, the Fourth Circuit <decline[d] to determine whether [the defendant] was a prevailing party=

and disposed of the appeal on the exceptionality requirement of § 1117(a) the Lanham Act. Ibid.

The Eleventh Circuit too has observed that <courts

operating after CRST have taken differing positions

on= whether <certain types of non-merits involuntary

dismissals confer prevailing party status.= Beach Blitz

Co. v. City of Elizabeth, 13 F.4th 1289, 1301 (11th Cir.

2021) (emphasis in original).

Even apart from conflict among the circuits, intracircuit tension exists together with a separate divide on whether defendants must show judicial imprimatur, resisting rules of ready administrability which

calls out for this Court9s authoritative voice.

The <risk of refiling= rule is wrong because it fails

to appreciate how a defendant9s objectives in litigation

differs from a plaintiff9s. It is not grounded in either

text or history while also contravening the very purpose of fee-shifting statutes, like the Copyright Act.

The importance of clarifying <prevailing party= status for a defendant, as compared to plaintiffs, is also

evident, as district courts struggle to apply CRST. See

Wakefern Food Corp. v. Marchese, No. 20-15949

(WJM), 2022 WL 1639044 at *3 (D.N.J. May 24, 2022)

(<it is unclear, based on the authority cited by both

Plaintiff [(Buckhannon)] and Defendants [(CRST)]

whether Defendants are the prevailing party following the Court9s dismissal of Plaintiff9s claims without

prejudice=). This case, together with Lackey v. Stinnie,

presents an ideal opportunity to clarify4concurrently

in a pair of decisions over the same term4what is a

<prevailing party= for opposite sides of a lawsuit that

ends without trial.

In addition to copyright cases, the issue is relevant

to a vast number of other civil actions where costs or

fees are awarded the <prevailing party= either by rule

or statute. Proper framing of the issue for each type of

party is also paramount to provide needed guidance to

litigants across contexts in evaluating the risks of litigation, including both cost-shifting and fee-shifting

rules and statutes.

This is an ideal case to address the ongoing confusion based on a simple record, post-judgment, respecting a purely legal question of a defendant9s prevailing

party status in <the first part of the fee-shifting inquiry.= CRST, 578 U.S. at 423. At the same time, it

also highlights and presents the opportunity to clarify

whether defendants can avail themselves of the protections afforded by Rule 68 when a plaintiff obtains a

judgment of voluntary dismissal.

The circuits are split on whether a defendant is a <prevailing party= when an

action is dismissed without prejudice

Courts need guidance to determine when a defendant prevails. After this Court9s decision in Buckhannon, circuits questioned and overruled their own

longstanding precedents, resulting in a divide that

turns not on fulfillment of the defendant9s objectives,

CRST, 578 U.S. at 431, but rather on whether a defendant remains <at risk= of being sued again. Seven

circuits subscribe to this <risk of refiling= test where a

defendant cannot be the <prevailing party= for purposes of fees- or costs-shifting statutes where the action ends through a dismissal without prejudice. In

contrast, the minority rule, subscribed to by three circuits, is that the termination of the action without an

alteration of the parties9 legal relationship is paramount; a defendant prevails upon the occurrence of

that outcome irrespective of the possibility it might be

sued again in a second action.

Here, the Eleventh Circuit applied the <risk of refiling= test, holding that a defendant cannot prevail if

the action terminates by a dismissal without prejudice

because, so it reasons, the district court9s <order of dismissal does not prevent [plaintiff] from refiling its

claims.= App. 8a (relying on $70,670, 929 F.3d at

1303).

Though not in a copyright case, the Tenth Circuit

has held directly to the contrary: <a defendant is a prevailing party= when <the plaintiff dismisses its case

against the defendant, whether the dismissal is with

or without prejudice.= Cantrell v. IBEW, AFL-CIO, Local 2021, 69 F.3d 456, 456 (10th Cir. 1995) (en banc).

That was the majority position prior to Buckhannon,

as the Third Circuit observed. In re Paoli, 221 F.3d at

471 n.10. Together with the D.C. Circuit, these three

courts remain true to history, text, and common sense.

Only this Court can provide the guidance needed

to resolve this direct and mature conflict.

A. Three circuits hold that preclusive effect is irrelevant to a defendant’s prevailing party status

Historically, a defendant was the prevailing party

whenever the plaintiff9s action was dismissed,

whether that dismissal was entered with or without

prejudice. See Restatement (First) of Judgments § 53

cmt. a (1942) (a plaintiff may <abandon the action= and

<submit to a nonsuit= if <the plaintiff feared that the

verdict would be rendered against him,= in which case

judgment would then <be given for the defendant=

even though <the judgment would not preclude the

plaintiff from bringing a new action=). Three circuits

remain true to that history, though without expressly

acknowledging it. They focus on the outcome obtained

by the defendant rather than forward-looking speculation about whether the plaintiff might file a second

lawsuit.

The leading case for the minority view, and which

presents a square conflict with the decision below, is

the Tenth Circuit9s en banc decision in Cantrell, where

it addressed a defendant9s post-dismissal claim to

costs as the <prevailing party= under Rule 54(d).

Cantrell, 69 F.3d at 457. It overruled its prior precedent, finding persuasive the rationale of the Fifth Circuit that was critical of it: <With all due respect to the

[Tenth Circuit], we are completely at a loss to explain

[its] distinction= because a <dismissal with prejudice

[simply] affords a defendant considerably more relief

than a dismissal without prejudice.= Schwarz v.

Folloder, 767 F.2d 125, 131 n.8 (5th Cir. 1985). Except

in cases of settlement, the Tenth Circuit holds a defendant is the <prevailing party= if a plaintiff9s action

is voluntarily dismissed, <whether that dismissal occurs with or without prejudice.= Cantrell, 69 F.3d at

458.

It has since emphasized Cantrell9s abandonment of

the with/without prejudice distinction for prevailing

defendants was central to its holding, and in one case

resisted imbuing its prevailing defendant jurisprudence with language from Buckhannon. <Cantrell

makes clear that the defendant . . . qualifies as a 8prevailing party9 under Rule 54(d)(1) as a result of the

dismissal of the action.= Burton v. Vectrus Sys. Corp.,

834 F. App9x 444, 446 (10th Cir. 2020). In Burton,

looked to the outcome of the action, reasoning that <we

fail to see how a defendant is a prevailing party under

Cantrell when a plaintiff voluntarily dismisses an action without prejudice, but a defendant who successfully litigates a motion to dismiss under Rule 12(b)(6)

and obtains a dismissal without prejudice and a final

judgment in its favor is not.= Ibid. It repeatedly added

emphasis to the word <plaintiff= in distinguishing

Buckhannon, noting it <did not involve a defendant.=

Id. at 447. It also added that <even before Cantrell this

court held that a voluntary dismissal without prejudice triggers prevailing-party status.= Id. at 446 n.2.

But it has recently held a defendant was not a prevailing party where there is no judicial imprimatur,

demonstrating a further conflict among the circuits

post-Buckhannon. See Section III, infra.

Similar to the Tenth Circuit9s focus on the outcome

to the defendant, the Third Circuit instructs district

courts to <analyze the results obtained by the petitioning party.= Hughes v. Repki, 578 F.2d 483, 486 (3d Cir.

1978); see also In re Paoli, 221 F.3d at 471 n.10 (<the

majority rule is that defendants can be 8prevailing

parties9 when a plaintiff voluntarily dismisses his action without prejudice=). Even after Buckhannon, it

still subscribes to that (now minority) rule. Camesi v.

Univ. of Pittsburgh Med. Ctr., 753 Fed. App9x 135, 140

(3d Cir. 2019) (<a defendant can still be the 8prevailing

party9 where a plaintiff9s claims are dismissed without

prejudice=).

The D.C. Circuit agrees with the Tenth and Third.

Two of this Court9s former justices, while judges of the

D.C. Circuit, held the defendant was the prevailing

party upon a dismissal of the plaintiff9s action based

on inconvenient forum. Noxell Corp. v. Firehouse No.

1 Bar-B-Que Rest., 771 F.2d 521 (D.C. Cir. 1985) (Noxell II). The plaintiff argued the defendants had not

prevailed because the dismissal was <not preclusive of

a second action elsewhere.= Id. at 524. Then-judges

Ginsberg and Scalia rejected that argument, noting

the circuit court, in its prior decision, had <ordered the

district court to dismiss a trademark infringement action, pursuant to 28 U.S.C. § 1406(a) (1982), because

venue had been laid in the wrong district.= Id. at 523

(citing Noxell Corp. v. Firehouse No. 1 Bar-B-Que

Rest., 760 F.2d 312, 317 (D.C. Cir. 1985) (Noxell I)).

Thus, the D.C. Circuit held the defendant was the prevailing party under the Lanham Act, even though the

plaintiff could file a new action in the Northern District of California on the same dispute, because the

plaintiff9s <suit stands dismissed= in the District of Columbia. Id. at 525. The court reasoned that the Congressional goal of fee-shifting statutes included

awarding fees to defendants who <obtain[ed] dismissal

of the proceeding,= id. at 526, and <aligned [the D.C.

Circuit] with the position taken by the Ninth Circuit

under the copyright act provision for attorney9s fees,=

id. at 525 (citing Corcoran v. Columbia Broadcasting

Sys., 121 F.2d 575 (9th Cir. 1941)).

In Corcoran, the Ninth Circuit originally led the

pre-Buckhannon majority. Looking to the text of the

fee shifting statute, § 40 of the 1909 Copyright Act, it

concluded the provision <is not in terms limited to the

allowance of fees to a party who prevails only after a

trial on the merits.= Corcoran, 121 F.22 at 576. It

found that where <a defendant has been put to the expense of making an appearance and of obtaining an

order for the clarification of the complaint, and the

plaintiff then voluntarily dismisses,= then the <party

sued is the prevailing party within the spirit and intent of the statute even though he may, at the whim

of the plaintiff, again be sued on the same cause of action.= Ibid. In reaching its decision, it found the Second Circuit9s opinions in Marks v. Leo Feist, Inc., 8

F.2d 460 (2d Cir. 1925) and Cohan v. Richmond, 86 F.

2d 680 (2d Cir. 1936) instructive. Ibid. Congress even

cited Corcoran as an example of when a defendant

prevails. See Noxell II, 771 F.2d at 525. The Ninth Circuit, however, has since concluded that Corcoran was

<clearly irreconcilable with Buckhannon and no longer

good law= and adopted the <risk of refiling= test. Cadkin, 569 F.3d at 1147-50.

In Marks, the Second Circuit likewise held under

the 1909 Copyright Act that a defendant had prevailed upon a plaintiff9s voluntary dismissal. Marks, 8

F.2d at 460-61 (plaintiff9s voluntary dismissal was entered <in favor of defendant= and affirmed defendant9s

fee award). In keeping with that rationale, it also held

the withdrawal of a copyright infringement claim by

amendment <in effect made the defendants the prevailing parties on that issue= and cited Corcoran for

that proposition. Warner Bros. Inc. v. Dae Rim Trading, Inc., 877 F.2d 1120, 1126 (2d Cir. 1989). However,

without overruling Marks, Cohan, or Dae Rim

Trading, it has since held that Buckhannon <applies

to 8prevailing defendant9 cases.= Mr. L. v. Sloan, 449

F.3d 405 (2d Cir. 2006) (Sotomayor, J.). It has also

held that a dismissal for forum non conveniens does

not make a defendant the prevailing party because

such a dismissal does not <immunize a defendant from

the risk of further litigation.= Dattner v. Conagra

Foods, Inc., 458 F.3d 98 (2d Cir. 2006). Although the

Second Circuit has recently questioned Dattner in

view of CRST, Manhattan Review LLC v. Yun, 919

F.3d 149, 153 (2d Cir. 2019), it illustrates tension

within Second Circuit jurisprudence on whether a preclusive judgment is necessary for a defendant to prevail.

Before Buckhannon the majority rule was a defendant is the <prevailing party= upon a voluntary dismissal without prejudice. In re Paoli, 221 F.3d at 471

n.10. But since 2001, a new majority has formed that

that disentitles fees to defendants who successfully

exit a lawsuit without any obligation towards the

plaintiff.

B. Seven circuits employ a <risk of refiling= test and require preclusive effect

for a defendant to be deemed prevailing

In contrast to the Tenth, Third, and D.C. Circuits,

the Eleventh Circuit aligned itself with the new majority of circuits which have subscribed to a <risk of

refiling= test in which a defendant cannot be a prevailing party if an action is dismissed without prejudice

because, so they reason, such a terminal event <poses

8no legal bar precluding= the plaintiff from <refiling the

same= action. $70,670, 929 F.3d at 1303.

<What matters= according to the Eleventh Circuit,

<is that the [defendants] have not obtained a 8final

judgment reject[ing] the [plaintiff9s] claim.= Ibid. Because the proceedings are <a nullity= which <leaves the

parties as if the action had never been brought,= ibid.

the plaintiff9s claim <remains unadjudicated,= id. at

1304. In declining to find a defendant prevails except

upon a preclusive judgment, it joined the First, Fifth,

Eighth, Ninth, Federal, and (perhaps) Second circuits,

all of which now read an <at risk= disqualification into

the term <prevailing party= for a defendant. Despite

its alignment with the new majority, the Eleventh Circuit nevertheless recognized that <courts operating after CRST have taken differing positions on= when dismissals confer prevailing party status. Beach Blitz, 13

F.4th at 1301.

In a copyright case, the First Circuit held that a

defendant is not a prevailing party where the plaintiff9s claims would be heard in an arbitral forum instead, even though the court had dismissed the action

with prejudice under Rule 12(b)(6). Cortés-Ramos v.

Sony Corp. of Am., 889 F.3d 24 (1st Cir. 2018). Notwithstanding the <with prejudice= aspect of the district court9s judgment, it reasoned that the plaintiff9s

claims need to be fully <extinguished= for a defendant

to prevail, and cited Sole v. Wyner, 551 U.S. 74, 82

(2007) rather than CRST. Cortés-Ramos, 889 F.3d at

25.

The Fifth Circuit originally appeared poised to follow the Tenth Circuit. Before Buckhannon, it reasoned that any <rule that categorically forecloses the

possibility of a defendant being found a prevailing

party . . . could seriously threaten= the purpose of feeshifting statutes by allowing a plaintiff to <be able to

shirk responsibility for his actions [and] strip the defendant9s protection= provided by such laws. Dean v.

Riser, 240 F.3d 505, 510 (5th Cir. 2001); see also

Schwarz, 767 F.2d at 131 n.8. But it ultimately abandoned its rationale in Schwarz and Dean when it applied Buckhannon to the defendant9s status. Dunster

Live, LLC v. LoneStar Logos Mgmt. Co., 908 F.3d 948,

951 (5th Cir. 2018) (a defendant cannot be the prevailing party when plaintiff dismisses without prejudice

because <the litigation is just postponed with the possibility of the winner being declared at a later time in

a new arena=). Like the First Circuit, it did not cite

CRST and instead looked to this Court9s prevailing

plaintiff decisions.

The Seventh Circuit was one of the first proponents of the <risk of refiling= test. In Szabo Food Serv.,

Inc. v. Canteen Corp., 823 F.2d 1073 (7th Cir. 1987), it

held the defendant did not prevail in the federal action

because the voluntary dismissal did <not decide the

case on the merits= and the <defendant remain[ed] at

risk= of a second lawsuit, even though the defendant

did, in fact, win that second case. Ibid. The mere risk

of the second suit alone precluded the defendant from

being the prevailing party in the first action. Id. at

1076-77. It reaffirmed that position in Citizens for a

Better Env’t v. Steel Co., 230 F.3d 923 (7th Cir. 2000),

reasoning that some defensive victories <merely prolon[g] litigation= and if the <dispute will continue

later, or elsewhere, . . . it remains to be seen who will

prevail=) (citing Hanrahan v. Hampton, 446 U.S. 754

(1980)).

Like the First, Fifth, Seventh, and Eleventh circuits, the Eighth Circuit also employs a <risk of refiling= test. United States v. $32,820.56 in U.S. Currency, 838 F.3d 930, 934 (8th Cir. 2016) (an order of

dismissal <without prejudice does not preclude the

[plaintiff] from refiling an action=). It <see[s] no basis

in the text= of the fee statute (28 U.S.C. § 2465(b)(1))

to say that a forfeiture <claimant, even if analogous to

a civil defendant, may recover fees without any judicially sanctioned change in the relationship between

parties.= Id. at 936. And it continues to adhere to that

logic for defendants specifically, even after CRST, because <[w]here an action is dismissed without prejudice, there is no 8prevailing party;9= it is <pure speculation= <which party would have prevailed had the action continued.= SnugglyCat, Inc. v. Opfer Commc’ns,

Inc., 953 F.3d 522, 527 (8th Cir. 2020) (citing its prior

precedent relying on Buckhannon and Sole).

The Ninth Circuit was, for sixty-eight years before

Buckhannon, aligned with the Tenth and D.C. circuits. It previously held that a defendant <is the prevailing party within the spirit and intent of the [1909

the plaintiff, again be sued on the same cause of action.= Corcoran, 121 F.2d at 576. But it then overruled

itself, finding that Corcoran was <clearly irreconcilable with Buckhannon and no longer good law= because

the plaintiffs <remained free to refile their copyright

claims against the defendants.= Cadkin, 569 F.3d at

1145. CRST has not altered its adherence to the <risk

of refiling= test. Criminal Prods., Inc. v. Cordoba, 808

defendant9s argument that CRST made her the prevailing party after plaintiff dismissed its infringement

claims without prejudice).

The Federal Circuit similarly concludes that a patent infringement defendant cannot be a prevailing

party where the plaintiff is allowed to abandon claims

without prejudice either by withdrawing them

through an amended pleading under Rule 15(a)(2),

Gieseke & Devrient GmbH v. United States, No. 222002, 2024 WL 3171658 (Fed. Cir. Jun. 26, 2024), or

by unilaterally dismissing them under Rule 41(a)(1),

O.F. Mossberg & Sons, Inc. v. Timney Triggers, LLC,

955 F.3d 990 (Fed. Cir. 2020), because <regardless of

whether the dismissal is voluntary or involuntary,

8the risk of re-filing underlying their reasoning applies

in both procedural postures,9= Gieseke & Devrient,

2024 WL 3171658 at *3.

Within the Eleventh Circuit, fee exposure is unpredictable, with inconsistent outcomes under its varying

formulations of the <risk of refiling= test. On the one

hand, a defendant is not a prevailing party where the

action ends through a non-preclusive dismissal under

Rule 41(a)(2). $70,670, 929 F.3d at 1303 (voluntary

dismissal without prejudice). But on the other hand, a

defendant is the prevailing party where an action

ends through a non-preclusive dismissal under Rule

12(b). Beach Blitz, 13 F.4th at 1297-1301 (involuntary

dismissal without prejudice). In Beach Blitz the court

struggled to reconcile the <without prejudice= aspect

of the district court9s judgment, calling it a <problem=

and stating that <we usually understand 8without

prejudice9 to mean that a judgment is not claim-preclusive.= Id. at 1300. Rather than employing the risk

of refiling test4as it had in $70,6704the Eleventh

Circuit simply concluded that a <8without prejudice9 label, without more, cannot alter our conclusion in this

case= because, so it said, the <practical= effect of the

dismissal without prejudice had rebuffed the plaintiff9s claims. Ibid.

Like the Fourth Circuit, it too noted that <some of

our sister circuits have held after CRST that certain

types of non-merits involuntary dismissals confer prevailing party status= but took <no position= on

<whether other types of non-merits involuntary dismissals should confer prevailing party status.= Ibid.

(emphasis in original). Thus, the Eleventh Circuit9s

version of the <risk of refiling= test further includes a

<dismissal type= prong and leaves open myriad other

possible outcomes4outcomes difficult for litigants to

predict which party might ultimately be found the

prevailing party. Although the dismissals without

prejudice here and in Beach Blitz fulfilled each defendant9s objectives (ending the litigation and reestablishing the status quo ante without effecting a material alteration between the parties), under Eleventh

Circuit precedent only one is considered a prevailing

defendant.

The judgment of the Eleventh Circuit below and

the views of its sister circuits4many of which had previously constituted the majority rule just two decades

ago4now form a new post-Buckhannon majority subscribing to a <risk of refiling= test that requires preclusive effect for a defendant to prevail. Three circuits

still adhere to historically-accurate notions of when

defendant prevails, and an intractable 7-3 divide exists among the circuits on the issue that calls out for

this Court9s authoritative clarity.

II.

The <risk of refiling= test is atextual,

ahistorical, and incorrect

The <risk of refiling= test is incorrect and unworkable. It runs counter to what was long settled federal

and common law, where a defendant prevails upon a

plaintiff9s voluntary surrender. Restatement (Second)

of Judgments § 20(1)(b) (1982) (a <judgment for the defendant= occurs <[w]hen the plaintiff agrees to or

elects a nonsuit (or voluntary dismissal) without prejudice=); accord, e.g., Bryson v. Sullivan, 412 S.E.2d

327, 338 (N.C. 1992).

In their analysis of the prevailing party issue,

courts have ignored historical case-ending events, like

judgments of nonsuit, retraxit, and nolle prosequi, see,

e.g., Black9s Law Dictionary 1024-28 (3d ed. 1933), to

inform their analysis of the effect of a dismissal under

the modern Rules of Civil Procedure. More particularly for this case, those historical judgments occurred

while the 1909 Copyright Act3 was in force. It was under those procedural and substantive laws that Marks

was decided. Corcoran then applied the logic of Marks

within the new procedural environment created by the

Federal Rules of Civil Procedure to reach the same result. See also Home Owners’ Loan Corp. v. Huffman,

134 F.2d 314 (8th Cir. 1943). These decisions have

fallen out of favor by the passage of time and recency

of Buckhannon.

Nor have courts looked to the statutory text to provide context for when a defendant prevails. See Daniel

Schlein, Asymmetric Fees Awards in Civil Rights Litigation: A Critical Reevaluation, 48 RUTGERS L. REC.

77, 94 (2021) (the <recurrent theme among= courts

which have resisted awarding defendants9 statutory

fees is <not based on a plain reading of the text=). Here,

as in most statutes, Congress explicitly identified

what terminates: the <action.= 17 U.S.C. §§ 505,

1203(b)(5).

The <risk of refiling= rule also undermines the

even-handedness of § 505 the Copyright Act by <blocking a whole category of defendants= at <the first part

of the fee-shifting inquiry.= CRST, 578 U.S. at 432;

423. That category is substantial: nearly eleven percent of all cases. See Section IV.A., infra. A preclusivity barrier to prevailing party status discourages defendants from <advanc[ing] a variety of meritorious

3 The 1909 Act9s fees provision is nearly identical to the current 1976 Act. Compare 17 U.S.C. § 40 (1970), with 17 U.S.C.

§ 505 (2018).

517, 527 (1994), because it permits plaintiffs, at the

second step, to evade scrutiny of <the totality of circumstances in a case,= including <frivolousness, motivation, [and] objective unreasonableness,= Kirtsaeng

v. John Wiley & Sons, Inc., 597 U.S. 197, 203 (2016).

The <risk of refiling= test also works against the

simplicity principle this Court has emphasized for fee

disputes. Hensley v. Ekerhart, 461 U.S. 424, 437

(1983) (the determination of fees <should not result in

a second major litigation=). The Eleventh Circuit9s

type-based formulation illustrates the problem, as evidenced by its extensive analysis wrestling with the

non-preclusive effect of the district court9s judgment.

Beach Blitz, 13 F.4th at 1297-1301; see also id. at

1306-09 (Newman, J., concurring) (finding the majority9s <mix of reasons= <confusing=).

And from a practical standpoint, preclusivity does

not <immunize= a defendant from being forced to defend a lawsuit in any event because such defenses

must nevertheless be asserted in a barred action, with

the burden lying on the defendant. E.g., Sims v. Viacom, Inc., 544 F. App9x 99 (3d Cir. 2013) (affirming dismissal of third copyright suit as barred under res judicata). So a defendant is never truly free from a <risk=

of being sued.

Preclusive effect has, both historically and commonsensically, never had any bearing on whether a

defendant prevails in a given action, until recently,

and increasingly so post-Buckhannon. Nash, The Tarnished Golden Rule, 127 Yale L.R. at 1082 (<[t]he federal trend towards restricting the definition of 8prevailing party9 was cemented in 2001, in Buckhannon=);

see also Epps v. Fowler, 351 S.W.3d 862, 872-73 (Tex.

2011) (Hecht, J., dissenting) (criticizing the majority9s

reliance on Buckhannon in deciding Texas common law).

The <risk of refiling= test employed by the majority

is incorrect. So too is the Eleventh Circuit9s conclusion

that a plaintiff9s request for a judgment is not one that

it <obtains= under Rule 68.

III.

The circuits are also divided on

whether a Rule 41(a)(2) judgment has

judicial imprimatur

In addition to the split on whether a case must end

with preclusive effect for a defendant to prevail, the

circuits are also divided on whether a Rule 41(a)(2)

judgment has <judicial imprimatur.=

Here, the Eleventh Circuit concluded that the

judgment of dismissal under Rule 41(a)(2) requiring

Affordable Aerial to pay the defendants9 costs carried

no judicial imprimatur. App. 7a-8a.

In conflict with the Eleventh Circuit, the Seventh

and Federal Circuits implicitly hold that a Rule

41(a)(2) order of voluntary dismissal has judicial imprimatur, provided it has preclusive effect. See Live

Face on Web, LLC v. Cremation Soc’y of Ill., Inc., 77

F.4th 630 (7th Cir. 2023) (reversing district court9s denial of copyright defendant9s attorney9s fees after

plaintiff voluntarily dismissed with prejudice); accord

Riviera Distribs., Inc. v. Jones, 517 F.3d 926 (7th Cir.

2008); Highway Equip. Co. v. Feco, Ltd., 469 F.3d

1027, 1035 (Fed. Cir. 2006).

Consequently, a further conflict exists among the

circuits on whether a court order of dismissal under

Rule 41(a)(2) has judicial imprimatur.

That rationale applied to defendants, however, is

incorrect. While a <material alteration= of the relationship marked by <judicial imprimatur= supported rejecting the catalyst test, Buckhannon, 532 U.S. at 60405, it is illogical to apply that rationale to defendants

because they <come to court with different objectives,=

CRST, 578 U.S. at 431; see also Epps, 351 S.W.3d at

873; Nash, The Tarnished Golden Rule, 127 YALE

L.R. at 1085-86 (<defendants do not require a 8judicial

imprimatur9 to achieve their goal=).

IV.

The questions presented are important

and recurring issues on which both

plaintiffs and defendants need guidance

The importance of the two questions in this case is

evident, with the issues applicable to more than just

the fee-shifting provisions of the Copyright Act, and to

both plaintiffs and defendants alike. Parties need to

evaluate fee exposure risks pre-suit, during the course

of litigation, and upon its termination.

A. Fee- and cost-shifting statutes are

many, and cases often end without a

preclusive judgment

One-hundred or more statutes provide for the <prevailing party= to be awarded fees. See John F. Vargo,

The American Rule on Attorney Fee Allocation: The Injured Person’s Access to Justice, 42 AM. U.L. REV.

1567, 1588 (1993) (<over 200 federal statutes . . . provide for shifting of attorney9s fees=). This Court has

previously granted certiorari in construing the term

<reasonable=4a word common to many fee-shifting

statutes. Burlington v. Dague, 505 U.S. 557, 561-62

(1992) (<our case law construing what is a 8reasonable9

fee applies uniformly to all of= the <many other federal

fee-shifting statutes= with similar language). The issue there, as here, is also a recurring one because it

<affects the proper application of at least one hundred

federal fee-shifting statutes that allow the prevailing

party to recover a reasonable attorney9s fee from the

losing party.= Kenny ex rel. Winn v. Perdue, 547 F.3d

1319, 1331 (11th Cir. 2008) (Carnes, J., dissenting

from denial of rehearing en banc). Even apart from

fee-shifting, rules and statutes respecting costs for the

<prevailing party= are implicated. E.g., Fed. R. Civ. P.

54(d)(1); Marx v. Gen. Revenue Corp., 568 U.S. 371,

385-86 (2013) (<Numerous statutes overlap with Rule

54(d)(1).=).

This case is representative of thousands of suits

abandoned by plaintiffs without a preclusive judgment. Copyright infringement cases in particular are

some of the rarest cases to reach trial, just 0.2 percent

in 2023, while also having one of the highest rates of

resolution without any court action: 42.8 percent. Admin. Office of the U.S. Courts, STATISTICAL TABLES

FOR THE FEDERAL JUDICIARY, Table C-4 (2023). Among

those terminated without court action, nearly eleven

percent are voluntarily dismissed without prejudice,

and less than one percent reach a merits outcome either at trial or through Rules 12 or 56. Melissa

Eckhause, Fighting Image Piracy or Copyright Trolling?

An Empirical Study of Photography Copyright Infringement Lawsuits, 86 ALB. L. REV. 111, 152-53 (2023).

The issue of prevailing party status for defendants, as

well as accurately anticipating that status by plaintiffs, is important and recurring.

Confusion among the district and circuit courts

about whether a defendant prevails when a case ends

without a preclusive judgment has substantial practical importance to civil litigants well beyond copyright,

where costs or attorney9s fees may accrue to the <prevailing party= upon termination of the suit, and which

thus influence both suit initiation in terms of pre-filing risk analysis, as well as when and how lawsuits

end. A decision clarifying defendants9 status will

compliment that of plaintiffs9 this term in Lackey v.

Stinnie.

Indeed, the very adversarial nature of litigation

yields the unavoidable question of <Who won?= each

time a case ends without settlement.

B. Whether a Rule 68 offer is enforceable

after a voluntary dismissal is an important, logically related question to

<prevailing party= status

Whether a plaintiff9s voluntary dismissal is a

<judgment that the offeree finally obtains= is also a recurring and important question for litigants. It is applicable to any civil case as a cost-shifting mechanism,

and takes on special importance where a statute defines fees as costs. There are many such statutes. See

Marek v. Chesny, 473 U.S. 1, 44-48 (1985) (Brennan,

J., dissenting) (identifying 63 statutes where costs include attorney9s fees). By its operation, Rule 68 transforms what might be a discretionary event under Rule

41(a)(2) or Rule 54(d)(1) into a mandatory one.

Like the Eleventh Circuit9s rationale denying defendants prevailing party status, its analysis of the

Rule 68 issue is incorrect for overlooking the history

of tender <which led to Rule 68,= Campbell-Ewald Co.

v. Gomez, 577 U.S. 153, 169 (2016) (Thomas, J., concurring), as well as ignoring the plain text of the rule

itself, requiring only that the plaintiff <obtain= the

judgment, Fed. R. Civ. P. 68(d).

A voluntary dismissal was simply not a kind of

judgment contemplated by the three categories used

in Delta Air Lines to illustrate the majority9s analogical and deductive reasoning. Only five justices subscribed to the notion that <a judgment 8obtained9 by

the plaintiff is also a favorable one.= 450 U.S. at 362

(Powell, J., concurring) (disagreeing with the majority9s reasoning). Delta Air Lines9 holding, regardless of

the <favorability= of a judgment, is that Rule 68 <is

simply inapplicable= where <it [i]s the defendant that

obtain[s] the judgment.= Id. at 352. Rule 68(d) should

apply when the plaintiff elects a nonsuit, because if

the court grants what the plaintiff requests, then it

surely has <obtained= such a judgment even if by doing

so the plaintiff suffers a defeat. See Versa Prods., Inc.

v. Home Depot, USA, Inc., 387 F.3d 1325, 1327 (11th

Cir. 2004) (<the plaintiff has acquired that which he

sought=). Defendants and plaintiffs alike must understand and be able to predict the enforceability of an

offer of judgment with its corresponding increase in

costs and possibly fees that perhaps only one side will

bear.

The Rule 68 issue is an important and recurring

one given its applicability in any civil action, and

should be addressed together with the prevailing defendants issue.

This case is a clean vehicle to address

what both CRST and Delta Air Lines

did not while potentially complimenting a decision in Lackey v. Stinnie

The Eleventh Circuit9s judgment crisply framed

the issue as whether a defendant can prevail and enforce its Rule 68 offer where a suit ends in a non-preclusive dismissal, and more particularly where a court

orders a voluntary dismissal without prejudice. Unlike the <fact-sensitive= issue in CRST that led the

Court to defer considering such a question, here there

is only one plaintiff which alleged three related causes

of action all arising under the Copyright Act against

two related defendants. All of Affordable Aerial9s

claims were abandoned; one by way of amendment under Rule 15, and the other two pursuant to Rule

41(a)(2). There is no mixed outcome; Affordable Aerial

requested and received a judgment that ended its action, and the statute of limitations has run.

Besides CRST expressly reserving the question

presented here, Delta Air Lines neither reached nor

contemplated voluntary dismissals. And so this case

is also a clean vehicle to clarify when a plaintiff <obtains= a <judgment= for purposes of Rule 68.

Additionally, the Court has taken up related issues

of prevailing plaintiffs in Lackey v. Stinnie, 144 S. Ct.

1390 (2024). The questions there are framed broadly

(<a party=) and assume all litigants have the same objectives. The Court clarified in CRST that is untrue,

but lower courts, in deciding defendant-based issues,

have looked past CRST to Buckhannon and other prevailing plaintiff cases. The ongoing lack of appreciation for the <different objectives= of the various types

of litigants illustrates how a decision in Lackey could

easily be misread and misapplied by courts if not

thoughtfully counterbalanced by an explicitly defendant-framed decision on preclusive judgments, which

this case presents. Notably, the First Circuit9s opinion

in Cortés-Ramos, decided two years after CRST but

citing to Sole, illustrates the urgency of needed contrast and clarification.

Given the lower courts9 transition from a majority

to minority view of when defendants prevail postBuckhannon, their confusion after CRST, and the influence this Court9s decisions have had on state common law prevailing party jurisprudence, this Court9s

authoritative voice is needed to provide clear counterpoise guidance for both types of litigants.

CONCLUSION

The petition for a writ of certiorari should be

granted.

Respectfully submitted,