Petition for Writ of Certiorari — Loose v. Cadkin

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09-847 JAN 19 2010

N©- OFFICE OF THE CLERK

In the

Supreme Court of the United States

TERENCE LOOSE, AS TRUSTEE OF THE WILLIAM

LOOSE FAMILY TRUST, Petstroner,

EMIL CADKIN, ET AL., Respondents,

ON PETITION FOR A WRIT OF CERTIORARI TO THE

UNITED STATES CouRT OF APPEALS

For THE NINTH CIRCUIT

PETITION F'oR A WRIT OF CERTIORARI

Sandra L Levin Peter R Afrasiabi

COLANTUONO & LEVIN Counsel of Record

300 South Grand Avenue Suite ONE LLP

2700 535 Anton Boulevard

Los Angeles, CA 90071 Suite 850

Telephone (213) 542-5700 Costa Mesa, CA 92626

Telephone (714) 434-8750

QUESTION PRESENTED

Whether civil defendants must obtain a final

preciusive judgment establishing immunity from future

federal lawsuits in order to be considered prevailing

parties for purposes of an award of attorney’s fees

under Section 505 of the Copynght Act or are

defendants who obtain favorable interim judicial orders

and court-ordered dismissal of copyright claims in the

pending lawsuit eligible for prevailing party status?

Put another way, must defendants categorically obtain

final judgment on the merits or can prevailing party

status be conferred within the meaning of Buckhannon

Bd. & Care Home, Inc. v. W. Va. Dep’t of Health &

Human Res., 532 U.S. 598 (2001), when defendants

obtain judicially sanctioned interim relief in an action

subsequently rendered moot by plaintiffs voluntary

dismissal?

LIST OF PARTIES

Petitioner is Terence Loose, 1n his capacity as

Trustee of the William Loose Trust, erroneously

named as the William Loose Family Trust

Respondents are Emil Cadkin, as an individual,

and Lila Cadkin, as Trustee of the Cadkin Trust.

Irma Loose, an individual, and May-Loo Music,

Inc., a California corporation were appellees in the

proceedings below but are not parties here

lll

TABLE OF CONTENTS

REASONS FOR GRANTING THE WRIT.................. 13

I. THE NINTH CIRCUITS PER SE

RULE REQUIRING DEFENDANTS

TO ESTABLISH IMMUNITY FROM

FUTURE LITIGATION,

REGARDLESS OF INTERIM

JUDICIAL RELIEF, CONTRAVENES

THE DECISIONS OF THIS COURT

THE NINTH CIRCUITS PER SE

RULE CONFLICTS WITH OTHER

CIRCUITS THAT HAVE

RECOGNIZED PREVAILING PARTY

STATUS DOES NOT REQUIRE

FINAL PRECLUSIVE JUDGMENT

ON THE MERITS, AND THAT HAVE

AWARDED FEES BASED ON

INTERIM RELIEF

. THIS CASE RAISES A QUESTION OF

EXCEPTIONAL IMPORTANCE ON

AN ISSUE OF FEDERAL LAW THAT

WARRANTS REVIEW

NINETY ice scnsccnes nics diiaitediniivpsisanaivanssadhtbnetapetdswnpinmbiacioand 37

PETITIONER’S APPENDIX

Court of Appeals’ Opinion... .... -.... 22. 2... .... Pet. App. la

Court of Appeals’ Order Denying Rehearing

and Rehearing En Banc... .................0. Pet. App. 19a

District Court’s Order Denying Motion for

Reconsideration. ...............:s0:::0+ ait aden -Pet. App 2la

District Court’s Order Granting Motion for

Pe Fe Wisk vicsvcicsnticvscnovneccaceseets Pet. App. 27a

District Court’s Order re: Dismissal of Second

Amended Complaint. ..............cccsceseeeee Pet. App. 36a

District Court’s Tentative Order Granting

Motion to Dismiss Second Amended

CS NIIUE saicitsienisniines eocuienetaessekaneabin’ Pet. App. 38a

District Court’s Order Denying Motion for

aie tsiseccenhacetntsinciinieh ante: aseaitiadia tases Pet. App. 43a

District Court’s Order Granting Motion to

Dismiss First Amended Complaint....Pet. App. 45a

District Court’s Order Granting Motion to

PII dncinintisactniinteenaicnendadioancidemmacaisesentel Pet. App. 48a

TABLE OF AUTHORITIES

Page(s)

CASES

Adams v. Teck Cominco Alaska, Inc.,

414 ¥. Supp. 2d 925 (D. Alaska 2006) ...... 0. 00.20... BD

American Title Ins. Co. v. Lacelaw Corp.,

BE FB Be Ce Cae, TOD vcs vnc. oo oe sees. sve pnseasersenec

Bell v. Bd. of County Comm'rs of Jefferson County,

451 F.3d 1097 (10th Cir 2006)

Buckhannon Bd. & Care Home, Ine. v. W. Va. Dep't of

Health & Human Res.,

532 U.S. 598 (2001)

Carbonell v. INS,

Be ee ee ric PD vsessccecccceicncsciscccssovs sercarese 25

City of S. Pasadena v. Mineta,

284 F.3d 1154 (9th Cir. 2002) ...............000 oaaun .. passim

Cooter & Gell v. Hartmax Corp.,

Corcoran v. Columbia Broadcasting, Inc.,

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

Dearmore v. City of Garland,

519 F.3d 517 (5th Cir. 2008)

Doctor's Assocs. v. Duree,

375 F.3d 618 (7th Cir. 2004)

Dubue v. Green Oak Township Zoning Bd. of Appeals,

312 F.3d 736 (6th Cir. 2002) ¢

Dupuy v. Samuels,

423 F.3d 714 (7th Cir. 2005)

TABLE OF AUTHORITIES (continued)

Page(s)

Eagle Serv. Corp. v. H20 Indus. Serv., dnc.,

ee ee Ge © Ee Gils IU co ccccccecescesccssonvecccconces sedaseaene

Fogerty v. Fantasy, Inc.,

ee I CID victsccececssess seceecnnes seiugkason ova -aaeuumale 8, 34

Gallo v. Acuna,

14 Cal. 4th 1090 (1997) .......... .. Wasubnisseheasuaauuasacineenmenss 19

Hewitt v. Helms,

482 U S. 755 (1987) .... .... ..... an ae cae aia 18

Ins. Co. of N. Am. v. Thompson,

Tg BN jp nn.

Ma v. Chertoff,

BT Fe Oe Ce Goi. BODE) nnccncccsccrcccescnvesccccess cosctescoseeete

MacDonald v. Joslyn,

Be Ck, FAB, AG Bee CIDGD) nesccesercccescecosecccscnsevescerccessoote

Maher v. Gagne,

I aad caeslanncanmnnnneneneenin 18

Marx v. Loral Corp.,

Be ee I EEE OE, RUPP) svnccnsscasosescsonsccnsavansecenes 11,31

Miles v. California,

320 F.3d 986 (Sth Cur. 2008) ........c.cccccccccceeee « eee |

N. Cheyenne Tribe v. Jackson,

458 FBG 1068 Gt Cr. BOO) 2.0000. secsscessere soveseeesees 24, 28

Oscar v. Alaska Dep’t of Educ. & Early Devel,

644 FB BTS BER Cir. BOGGS) qn. .ccceeesscossceccesesesesseess 10, 32

arham v. Southwest Bell. Tel. Co.,

ee ee ee ee UTED... cscconndensucancccesnoonsbnsees 20

Vil

TABLE OF AUTHORITIES (continued)

Page(s)

People Against Police Violence v. NAACP,

Be Lt Le Oe __: RI aa 27

Perez v. Westchester County Dep't of Corr.,

ee te he ee rs I ctities eeteibnsntecinsniieanioinsénsntninss 23

Pres. Coalition v. Fed. Transit Admin.,

ee ee He Ue Gis BD cscs ccccccnetesserececocescsorrsconnccae 22

tl'R Indus., Inc. v. Century Steps, Inc.,

ee BL eS | | a

Richard S. v. Dep’t of Developmental Servs.,

317 F.3d 1080 (Sth Cir. ZOOB) ..........cccccccsscccosccocesces 25, 29

Riviera Distrtb., Inc. v. Jones,

Be ee Oe CO UEE GAs OD tvtrsccccneseccsccscaricseccctonsonecsnoatt

Roberson v. Giuliani,

Rueda-Menircucci v. INS,

132 F.3d 493 (Oth Cir. 1997) ..........ccccccccceserrcseccesserrrreeee dl

Sechrest v. Ignacio,

B49 F.3d TSS (Oth Cir. BOOB) ..rccrccccscescosssccceccossevcvscsscesesth

Select Milk Producers, Inc. v. Johanns,

400 F.3d 939 (D.C. Cir. 2008) .........c.cccc. cecscccorerceccercessel

Smalbein v. City of Daytona Beach,

Se Be Bk CE TEI CWP, BOD «ce cccccccese cccoseccccccnsscscnes 2A

Smyth v. Rivero,

Be Ae Ie PE CA IUD cvceccncccdcecnctecnacnscccensexccnss: ons 29

Sole v. Wyner,

Be rade Oe MIT D ccncnisninctusecnotentnaeasesoaticosiasstiecmennn passim

Reeorewe i e- @ Se w@ *- ff +9 Ww * sm, Oe

Vill

TABLE OF AUTHORITIES (continued)

Page(s)

Sycamore Ridge Apartments LLC v. Naumann, Inc.,

157 Cal. App. 4th 1885 (2007).....cccccccccsssssesesssseceescseees 36

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

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

Tavory v. NTP, Inc.,

297 Fed. Appx. 986 (fed. Cir. 2008)

TD. v. Lagrange School lMist.,

OE te Oe Ct BD cececscecsostncsocssnceencsesecsnsvecess 2A

Texas State Teachers Ass’n v. Garland Independent

School Dist.,

RE a NO:

Thomas Vv. Bible,

Bg Lk. EE n 36

Tipton- Whittingham v. City of L.A.,

316 F.3d 1058 (9th Cir. 2003) .. .... -... ....... 25

Torres-Negron v. J & N. Records, LLC,

504 F.3d 151 (Ast Cir. 2007)... .... .... ietiasiie: Unie oun

Truesdell] v. Philadelphia Hous. Auth.,

ee I Ss MD cans cacccessvcccnvecscecnseccousossavees 00 24

Vacchio v. Ashcroft,

Fe Ge Ce GAR. BID cncececcvencceccncsecececcocess 25, 28, 30

Watson v. County of Riverside,

300 F.3d 1092 (9th Cir. 2002) 22.220... 22... .e eee foe passim

Wyner v. Strihs,

179 Fed. Appx. 566 (11th Cir. 2006)..............cccesceeeeeees 28

TABLE OF AUTHORITIES (continued)

Page(s)

STATUTES

17 U.S.C. § 5O5.... . l

28 U.S.C. § 1254(1) I

OPINIONS BELOW

The court of appeals’ opimon is reported at 569

F.3d 1142. Pet. App. la. The district court’s order

awarding attorney’s fees (Pet. App. 27a) 1s unreported.

JURISDICTION

The court of appeals’ judgment was entered on

June 26, 2009. Rehearing was denied on September 15,

2009. On December 7, 2009, Justice Anthony Kennedy

extended the time to file the petition for writ of

certioran’ until January 18, 2010. This Court has

jurisdiction pursuant to 28 U.S.C. § 1254(1),

STATUTORY PROVISION INVOLVED

Section 505 of the Copyright Act provides:

In any civil action under the 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 attorney’s fee to the

prevailing party as part of the costs.

17 U.S.C. § 505.

STATEMENT OF THE CASE

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

Dep’t of Health & Human Res., 532 U.S. 598 (2001),

this Court articulated the test for determining when a

htigant qualifies as a prevailing party under certain

federal fee-shifting statutes. Under Buckhannon, the

inquiry for determining the prevailing party requires

an examination of whether the party seeking fees has

experienced a judicially sanctioned material alteration

in the legal relationship of the parties in the lawsuit.

See id. at 605. ‘The question is whether the prevailing

party obtained some court-ordered relief on the ments

materially altering the parties’ legal relationship.

While a voluntary change outside the litigation lacks

the necessary judicial mprimatur to confer prevailing

party status, and a favorable final judgment on the

merits is sufficient to confer such status, this Court has

never held that a prevailing defendant must obtain

final preclusive judgment on the merits’ before

prevailing party status can be conferred

Several circuit courts of appeals have rejected a

per se rule that judgment on the merits is categorically

required to establish prevailing party status under

federal fee-shfting statutes. In awarding fees to

plamtffs, the courts of appeals, including the Ninth

Circuit, generally confer prevailing party status when

plaintiff obtains preliminary mterim relhef, even if

plaintiff ultimately does not succeed on the merits of its

claim, or the underlying claims are subsequently

rendered moot. In Sole v. Wyner, 551 U.S. 74 (2007),

this Court recently left open the possibility that absent

a final decision on the merits, interim success on

preliminary injunction may warrant an award of fees.

The question presented here is whether

defendants can achieve prevailing party status absent a

final preclusive judgment in the pending lawsuit. or,

instead, whether they must obtain a favorable

adjudication on the merits of plaintiff's claims sufficient

to achieve preclusive effect in future federal court

litigation. Put another way, must prevailing

defendants establish, categorically, “mmunity from

future suit, regardless of whether they obtain a

substantial degree of court-ordered relief in the

pending action, or can plaintiff unilaterally preclude a

fee award and nullify the judicial imprimatur by

subsequently voluntarily dismissing the action. In

categorically requiring prevailing defendants to obtain

a preclusive judgment, while conferring the same

status on plaintiffs who achieve interim relief, the

Ninth Circuit’s rule contravenes this Court’s mandate

in Buckhannon, imposes a disparate double standard

and creates a doctrinal split among the circuit courts.

Petitioner Terence Loose, as Trustee for the

William Loose Family Trust, seeks review of the Ninth

Circuit’s decision reversing the district court’s

$288,726.20 award of attorney’s fees under § 505 of the

orders of dismissal, an abandonment of all remaining

federal claims and an impending order of dismissal with

prejudice, the district court found Respondents’

a request for remand, deemed Petitioner prevailing

party and awarded fees. After the tentative order of

dismissal with prejudice issued, Respondents, Emil

Cadkin and Lila Cadkin, as Trustee of the Cadkin

Trust, voluntarily dismissed their federal action and re-

filed their state law claims in superior court. The

Ninth Circuit reversed the award of fees, overruling

sua sponte its 68-year-old decision in Corcoran v.

Columbia Broadcasting, Inc., 121 F.2d 575 (9th Cir.

1941), and holding that, under Buckhannon, defendants

are not prevailing parties absent a judicially preclusive

judgment foreclosing future federal court actions.

“Because the plaintiffs in this lawswt remained free to

refile their copynght clarms against the defendants in

federal court following their voluntary dismissal, .

defendants are not prevailing parties.” Pet. App. 4a.

[. Factual Background!

From about 1959 until the 1970s, Emil Cadkin,

sometimes solely and sometimes with composer

Wilham Loose, created and recorded thousands of

music cues — short musical works used in television and

film. Pet. App. 39a. Some of these cues were

administered by GRH Musie (“GRH”), owned by

Cadkin and Loose. In the 1960s, Cadkin authorized

Loose to license these music cues to third parties. Jd.

Emil Cadkin formed the Cadkin Trust for his share of

the copyright interest, and appointed his wife, Lila

Cadkin, as Trustee.

William Loose formed May-Loo Music, Inc. to

heense the music he composed and controlled, including

the works he co-authored with Cadkin. Pet. App. 5a.

The facts stated here are as recited in the opimons below.

The lcensing proceeds were split between Loose’s

wife, Irma Loose, and the William Loose Family Trust.

Terence Loose, William’s son, was appointed Trustee.

In October 2003, Em1l Cadkin and Lila Cadkin,

as Trustee of the Cadkin Trust (the “Cadkins”), filed an

action in federal district court against Terence Loose,

as Trustee of the William Loose Family Trust (the

“Trust”), and Irma Loose and May-Loo Music, Inc.

(collectively, “May-Loo”). The Cadkins alleged that

William Loose removed Emil Cadkin’s name as author

and GRH’s name as publisher from works Cadkin

composed or co-composed with Loose, and incorporated

those cues into the May-Loo music library, thereby

crediting William Loose as the sole composer and

depriving the Cadkins of their half of the royalty share.

Pet. App. 5a. The Cadkins alleged that May-Loo and

the Trust continued to license and profit from the

works after William Loose died, and that they

concealed their fraudulent action until within three

years of the Cadkins’ complaint. Pet. App. 39a.

The Cadkins’ complaint, brought more than 40

years after GRH was formed, implicated over 5000

music cues, alleged William Loose registered the works

with the U.S. Copyright Office, and asserted multiple

claims for relief, including damages, for copyright

infringement, fraud, statutory and common law unfair

competition, false designation of origin (trademark) and

various California state law claims. Pet. App. 5a-6a.

In February 2007, after extended settlement

discussions proved fruitless, the Trust and May-Loo

filed motions to dismiss, which were granted in part.

The district court found, inter alia, that the state law

claims were preempted by the Copyright Act,

dismissing them without prejudice, that the fraud

claims were not alleged with sufficient particularity,

dismissing them without prejudice, and directed the

Cadkins to join necessary parties. Pet. App. 48a-61a.

The Cadkins filed a first amended complaint,

which contained three claims for relief: (1) copyright

infringement; (2) false designation of origin

(trademark); and (3) declaratory relief. Pet. App. 6a.

The Trust and May-Loo again moved to dismiss. In

May 2007, the district court granted the motions with

leave to amend, noting that the Cadkins’ “opposition

makes no legal argument, whatever, and fails to cite to

a single source of legal authority.” Pet. App. 46a. The

first amended complaint was dismissed for failure to

allege sufficient facts; failure to plead fraud with

specifiaty; failure to state a claim for copynght

infringement; failure to state a claim for false

designation of origin; and, failure to state a claim for

declaratory relief. Jd. The dismissal admonished that,

should they choose to amend, the Cadkins “shall

provide specific identifying information as to the music

at issue,” including detailed allegations of ownership,

registration, fraud and infringement. Pet. App. 47a.

In response, the Cadkins lodged a proposed

second amended complaint and moved the district

court to remand the proceedings to state court. Pet.

App. 6a. The motion admitted that “none of the parties

herem may own the rights in any musical composition

at issue,” (Jd), and asserted that the “improprieties

[which Cadkin has unearthed} are better resolved in

state court.” Pet. App. 48a. In July 2007, the district

court denied the motion to remand, explaining that

remand was not possible when the case had been

initiated in federal court. Pet. App. 44a. Even so, the

Cadkins pressed on with the federal action.

Thereafter, the district court and the parties

treated the second amended complaint as the operative

pleading. Pet. App. 7a. The Cadkins omitted from the

amended complaint the previously dismissed copyright

infringement claims, and all other federal law claims.

The second amended complaint instead contained

strictly state law claims: declaratory judgment, unjust

enrichment and accounting for profits. Pet. App. 7a.

In September 2007, the Trust and May-Loo

moved to dismiss, arguing that the second amended

complaint should be dismissed with prejudice because

(1) all three state law claims were preempted by the

the requisite specificity and (8) any federal copynght

infringement or trademark claims were waived for the

Cadkins’ failure to include them in the second amended

complaint. Pet. App. 7a.

On September 17, 2007, the distmect court issued

its tentative ruling to dismiss the second amended

complaint without leave to amend. In its tentative

ruling, the district court deemed the Cadking’ failure to

oppose as consent to dismissal, found the state law

claims were preempted by the Copyright Act, and

concluded, as an independent ground for dismissal, that

the Cadkins failed to comply with the court’s prior

directive to plead the fraud claims with the requisite

specificity. Pet. App. 38a-42a. The district court

further determined that the copyright claim was

previously abandoned and thus could not be reasserted

in the second amended complaint. Pet. App. 42a.

The district court deferred its final ruling

however, taking the matter under submission to

consider an intervening request for voluntary dismissal

under Federal Rule of Civil Procedure 41(a)(1), which

the Cadkins had recently lodged. Pet. App. 36a-37a.

The form notice, which sought dismissal of the action in

its entirety, did not indicate whether the dismissal was

with prejudice, or without. Pet App. 14a.

The Cadkins’ voluntary dismissal was entered

without comment in October 2007. Pet. App. 7a.

In December 2007, the Trust and May-Loo

moved for an award of attorney’s fees and costs

pursuant to Section 505 of the Copynght Act, in the

amounts of $225,575 and $63,151.20, respectively. Pet.

App. 28a. The district court granted the motions and

awarded the full amounts requested, finding the Trust

and May-Loo were prevailing parties for purposes of

Section 505, and within the meaning of this Court’s

decision in Fogerty v. Fantasy, Inc., 510 U.S. 517, 534

(1994). The district court relied on longstanding Ninth

Circuit precedent which provided that where

“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 without amending the pleading,

the party sued is the prevailing party.” Corcoran v.

Columbia Broadcasting Sys., Inc., 121 F.2d 575, 576

(9th Cir. 1941). The district court noted that

defendants brought five motions to dismiss and that

the Cadkins voluntarily dismissed their action on

October 4, 2007, after the motion to dismiss the second

amended complaint was filed and served and after the

parties appeared for oral argument. Pet. App. 29a. In

light of the subsequent voluntary dismissal, the court

ultimately found the motion to dismiss was moot. Jd.

In applying the Fogerty factors and exercising

its discretion to award fees, the district court found the

Cadkins’ claims were objectively unreasonable and

frivolous, and that a fee award would deter similarly

unreasonable and frivolous future claims. Noting Emil

Cadkin’s judicial admission that he “does not own

copyrights to any of the musical pieces at issue,” and

that the copynght “allegations have never been

substantiated any evidence,” the district court found

the claims objectively unreasonable and unsupported

by law or fact. Pet. App. 30a. The court further noted

that it had previously rejected as _ objectively

unreasonable Emil Cadkin’s contention that he

composed the cues at issue in a related litigation from

2003. According to the court, “[gliven that Cadkin has

provided no evidence that he was the copyright owner

for any of the musical works at issue and now as much

as admits that he is not the owner, the Court finds that

the claims pled were frivolous.” Pet. App. 31a.

In February 2008, the district court denied the

Cadkins’ motion for reconsideration, again noting Emil

Cadkin’s judicial admission on the record “that he does

not own copyrights to any of the musical pieces at

issue.” Pet. App. 24a. Recognizing that Emil Cadkin

“is only entitled to recovery under the Copyright Act if

he owns copyrights to the works at issue,” the district

court refused to reconsider its order, which was “based

on Cadkin’s admission that he is not and was never

entitled to recovery based on his allegations.” Pet.

App. 24a-25a. Rejecting the assertion that the

Cadking’ ability to bring their claims in a state court

action rendered such claims objectively reasonable, the

district court stated that whether or not the state law

claims are preempted by federal copyright law, it is

irrelevant since the court awarded “attorney’s fees and

costs mecurred in connection with Cadkin’s protracted

federal court action, based on a federal copyright claim

that he has admitted had no factual or legal basis.” Jd.

II. The Ninth Circuit’s Opinion Below

The Ninth Circuit reversed, overruling sua

sponte its decision in Corcoran as “clearly

irreconcilable” with this Court’s’ decision in

Buckhannon, and finding defendants were not

prevailing parties. Pet. App. lia. Finding

Buckhannon’s material alteration test applies with

equal force to the prevailing party fee provision in

Section 505, the Ninth Circuit extended Oscar v.

Alaska Dep’t of Educ. & Early Devel. 541 F.3d 978

(9th Cir. 2008), where it held that because “‘a dismissal

without prejudice is not a decision on the merits’ and

plaintiff was free to re-file his complaint in federal

court, ‘dismissal without prejudice does not alter the

legal relationship of the parties because the defendant

remains subject to the nsk of re-filing.” Pet. App. 12a

(quoting Oscar, 541 F.3d at 981). The Ninth Circuit

distinguished its decision n Miles v. California, 320

F.3d 986 (9th Cir. 2003), which applied Buckhannon to

confer prevailing party status on defendant where

plaintiffs voluntary dismissal without prejudice to seek

reef in state court changed the !egal relationship

between the parties because it “climinate[d] the

federal ADA claim from further proceedings in federal

court.” Pet. App. 13a (quoting, Miles, 320 F.3d at 989).

Applying Oscar and Miles to the case at hand,

the Ninth Circuit found that the Cadkins’ voluntary

dismissal, though not expressly with prejudice, was

necessarily without prejudice because it was their first.

Accordingly, and notwithstanding the district court’s

prior orders of dismissal or its substantive rulings on

the binding nature of Emil Cadkin’s judicial

admissions, the Ninth Circuit held that the Cadkins’

subsequent voluntary dismissal failed to alter the legal

relationship of the parties because the defendants

remain subject to the risk of re-filing. Pet. App. 17a.

The Ninth Circuit rejected the contention that

the Cadkins’ abandonment of the copyright claims

(indeed, of all federal claims) in the second amended

complaint altered the relationship between the parties

because the intentional waiver functioned as a

dismissal with prejudice as to the copyright claim.

Although the Ninth Circuit has consistently held that

““all causes of action alleged in an original complaint

which are not alleged m an amended complaint are

waived,” the court refused to apply the waiver rule to

a new lawsuit after a voluntary dismissal without

prejudice. Pet. App. 15a (quoting Marx v. Loral Corp.,

87 F.3d 1049, 1055 (9th Cir 1996)). Relying on a

decision in which the Ninth Circwit refused to carry

over to a new action a state’s waiver of its sovereign of

immumity in a prior action, the court charactenzed Fed.

R. Civ. P. 41(a) as a categorical rule that “disallows the

“carry-over” of any waiver from a_ voluntarily

dismissed action,” and under which such dismissals

leave the situation “‘as 1f the action had never been

(filed].”” Pet. App. 16a (quoting City of S. Pasadena v.

Mineta, 284 F.3d 1154, 1157 (9th Cir. 2002)).

The Ninth Circuit rejected the contention that

the district court’s pnor dismissals of the copyright

claims were sufficient to confer prevailing party status

despite the Cadkins’ subsequent voluntary dismissal,

and refused to extend the reasoning of its decision in

Watson v. County of Riverside, 300 F.3d 1092, 1093

(9th Cir. 2002). Pet. App. 16a. In Watson, prevailing

party status was conferred on a plaintiff who obtained

interim preliminary injunctive relief, but whose claim

for permanent injunctive relief was rendered moot

before final judgment was entered. Watson stated the

Ninth Circuit’s rule for plaintiffs: “Having succeeded

in winning a preliminary injunction that prevented the

use of his report at the hearing, [plaintiff] obtained

significant, court-ordered relief that accomplished one

of the main purposes of his lawsuit.” /d. at 1096. That

change in the employer’s behavior, according to the

Ninth Circuit, though temporary and_ ultimately

rendered moot, “carrie[d] all the “judicial imprimatur”

necessary to satisfy Buckhannon.” Pet. App. 17a

(quoting Watson, 300 F.3d at 1096 and citing

Buckhannon, 532 U.S. at 603 (“‘a prevailing party’ is

one who has been awarded some relief by the court””)).

The Ninth Circuit refused to apply Watson’s

reasoning to confer prevailing party status on

defendants who obtain interim court-ordered relief,

which is subsequently rendered moot by plaintiffs

voluntary actions Notwithstanding that the Trust

obtained court-ordered relief in the pending lawsuit,

the Ninth Circuit required a preclusive judgment on

the merits sufficient to foreclose future federal actions.

Despite the district court’s prior dismissals, unpending

order of dismissal with prejudice, and findings of

objective unreasonableness, abandonment of federal

claims and judicial admissions, the Ninth Circuit held

that defendants are not prevailing parties under

Buckhannon where, by virtue of a voluntary dismissal!

without prejudice, plaintiffs “have not been deprived of

the ability to seek relief in federal court.” Pet. App.

17a. The Ninth Cireuit held, categorically: “{A]

defendant is a prevailing party following dismissal of a

claim if the plaintiff is judicially precluded from refiling

the claim against the defendant in federal court.” /d.

REASONS FOR GRANTING THE WRIT

The Ninth Circuit’s per se rule that defendants

must establish rmmunity from future suit in order to

qualify as prevailing parties under federal law at once

unduly restricts and contravenes this Court’s decision

in Buckhannon. Under the Ninth Circuit’s rule, unlike

plaintiffs who can be deemed prevailing parties upon

obtaining interim relief, defendants must obtain a final

judgment that precludes re-litigation of the same claim

before prevailing party status will be conferred,

notwithstanding any interim alteration in the legal

relationship during the course of the pending action.

The Ninth Circuit’s blanket rule contravenes

Buckhannon, which does not expressly limit cognizable

relief to final preclusive judgments on the merits, or

contemplate disparate standards for civil defendants.

Buckhannon establishes a rule that confers

prevailing party status upon a judicially sanctioned

material alteration in the parties’ relationship in the

pending action, and expressly rejects a rule that would

condition prevailing party status on one party’s extra

judicial voluntary act. While this Court has recently

dechned to decide whether temporary relief absent

final judgment 1s sufficient to warrant an award of fees

to plaintiff, it has never held that final preclusive

judgment is necessary for defendant, or plaintiff,

before prevailing party status can be conferred. The

pertinent question under Buckhannon is whether there

is a material alteration in the parties’ relationship in

the pending action, not whether plaintiff is forever

barred from litigating. Even so, dismissal carries

consequences in subsequent suits, where claims are

abandoned, judicially conceded or statutorily barred.

The Ninth Circuit’s categorical rule requiring

immunity from future suit creates a double standard

for defendants, and cannot be reconciled with other

circuits, which routinely confer prevailing party status

on plaintiffs who obtain non-preclusive interim relief,

This new rule applies with equal force to all claims

arising under analogous federal fee-shifting statutes

and thus affects a vast array of federal court litigants.

Review 1s warranted to clarify whether preclusive

judgment is required under Buckhannon and, if so,

whether plaintiffs must obtain equal relief to prevail.

THE NINTH CIRCUITS PER SE RULE

REQUIRING DEFENDANTS TO

ESTABLISH IMMUNITY FROM FUTURE

LITIGATION, REGARDLESS OF INTERIM

JUDICIAL RELIEF, CONTRAVENES THE

DECISIONS OF THIS COURT

In Buckhannon Bd. & Care Home, Ine. v. W. Va.

Dep’t of Health & Human Res., 532 U.S. 598 (2001),

this Court articulated the test for determining when a

litigant qualifies as a prevailing party under certain

federal fee-shifting statutes. Under Buckhannon, the

inquiry for determining the prevailing party requires

an examination of whether the party seeking fees has

expenienced a judicially sanctioned matenal alteration

in the legal relationship of the parties in the lawsuit.

See id. at 605. This Court considered whether a

plaintiff who has failed to secure a final judgment on

the merits or a court-ordered consent decree, but has

nevertheless achieved the desired result because the

lawsuit brought about a voluntary change in the

defendant’s conduct, can be deemed a prevailing party

for purposes of warranting a fee award. In rejecting

the “catalyst theory” for determining prevailing party

fee awards, this Court distinguished court-ordered or

judicially sanctioned relief from favorable outcomes

that result from a voluntary, extra-judicial change in

defendant’s conduct This Court cited final judgments

on the merits and court-ordered consent decrees as

examples of judicially enforceable relief, which stand in

contrast to relief obtained as a result of defendant's

umlateral acts. See id. at 604.

This Court held:

A defendant’s voluntary change in

conduct, although perhaps accomplishing

what the plaintiff sought to acheve by

the lawsuit, lacks the necessary judicial

imprimatur on the change. Qur

precedents thus counsel against holding

that the term “prevailing party”

authonzes an award of attorney’s fees

without a corresponding alteration in the

legal relationship of the parties.

Id. at 605 (emphasis in original).

This Court surveyed its past holdings awarding

attorney’s fees where plaintiff obtained a judgment on

the merits or a court-ordered consent decree, and its

refusal to award fees where plaintiff failed to obtam

any judicia/ relief on the merits but, instead, simply

survived directed verdict or secured a_ judicial

pronouncement — without any accompanying judicial

relief - that defendant violated the Constitution. See

id. at 605-606. This Court’s focus as reflected in

Buckhannon has been the judicial nature and court

ordered genesis of the relief obtained which in turn

effectuates a change in the parties’ legal relationship,

not the timing, durability or preclusive effect of the

judicial relief obtained. Thus, while Buckhannon

recognized that “[njever have we awarded attorney’s

fees for a nonjudicial ‘alteration of actual

circumstances,” the Court did not expressly hold that

only judgments on the merits qualify a prevailing

party. /d. at 606 (citation omitted)

And while prevailing parties do not include

plaintiff “who, simply by filing a nonfnvolous but

nonetheless potentially meritless lawsuit . ., has

reached the ‘sought-after destination’ without

obtaining any judicial relief,” nowhere in Buckhannon

did this Court expressly require rmmunity from future

suit as a condition to an award of fees. Jd. (citation

omitted). Instead, the test this Court established, by

its terms, 1s broad enough to encompass interim

judicial relief: “{A] ‘prevailing party’ is one who has

been awarded some relief by the court.” Jd. at 603.

The concurring opinion in Buckhannon further

emphasized the significance of a judicial determination

in the lawsuit — or its equivalent, “the acknowledgment

by the defendant — of the merits of plaintiff's case.” Jd.

at 612-614 & n.2; see also id. at 615 (“prevailing party”

is a term of art meaning “the party who wins the suit

or obtains a finding (or an admission) of liability”)

(Scalia, J., concurring) (emphasis added). The question

is whether some court-ordered relief is obtained in the

lawsuit (as opposed to by virtue of a mere change in

circumstances), not whether a fully litigated preclusive

judgment is entered. See id. at 615-619.

More recently, in Sole v. Wyner, 551 U.S. 74

(2007), in considering whether a plaintiff who obtained

preliminary injunctive rehef was a prevailing party,

this Court characterized the inquiry more broadly:

“The touchstone of the prevailing party inquiry,’ this

Court has stated, is ‘the material alteration of the legal

relationship of the parties in a manner which Congress

sought to promote in the fee statute.” /d. at &2

(quoting TVenas State Teachers Ass'n v. Garland

Independent School Dist., 489 U.S. 782, 792-793 (1989));

see also Hewitt v. Helms, 482 U.S. 755, 760 (1987)

(plaintiff must “receive at least some relief on the

merits of his claims before he can be said to prevail”);

Maher v. Gagne, 448 U.S. 122, 129 (1980) (upholding

fees based on consent decree and stating that “parties

may be considered to have prevailed when they

vindicate rights through a consent judgment or without

formally obtaining relief.”’) (citation omitted).

In Sole, this Court considered whether a

plaintiff who obtained preliminary injunctive relief but

then lost on the merits and suffered a judgment against

her, qualifies as a prevailing party. This Court thus

examined whether temporary interim court-ordered

relief warrants an award of fees, where such rehef is

superseded by final judgment on the merits. See Sole,

551 U.S. at 81-86. This Court did not categorically

reject the possibility that preliminary mnjunctive relief

ean confer prevailing party status, nor did it expressly

require final preclusive judgment on the ments.

Instead, this Court narrowly held that prevailing party

status “does not attend achievement of a preliminary

injunction that is reversed, dissolved, or otherwise

undone by the final decision in the same case.” Id. at 83

(emphasis added). In declining to confer prevailing

party status, this Court emphasized the abbreviated

and fleeting nature of the tentative interim relhef

plaintiff obtamned, and noted the provisional rehef

would have no preclusive effect m the continuing

litigation. Even so, this Court lmited its ruling to

preliminary injunctions that are reversed by judgment

on the merits in the same action. See id. at 85-86.

This Court did not suggest that all prelimimary

relief is categorically insufficient, or that such relief

must achieve preclusive effect not only in the

continuing litigation but also in all future actions. To

the contrary, this Court expressly declined to issue a

per se rule regarding all intenm relhef and instead left

open the possibility that preliminary injunctions

obtained in the absence of a final decision on the merits

may sometimes warrant an award of fees. See id. at 86

(“We express no view on whether, in the absence of a

final decision on the merits of a claim for permanent

injunctive relief, success in gaining preliminary

injunction may sometimes warrant an award of counsel

fees. We decide only that a plaintiff who gains a

preliminary injunction does not quahfy for an award of

counsel fees under § 1988(b) if the merits of the case

are ultimately decided against her.”) (emphasis added).

Preliminary injunction, by definition, is not a

final judgment on the merits — or even, necessarily, an

adjudication of the merits — and it 1s accorded no

preclusive effect in the pending action or in future

actions between the same parties.2 Presumably, had

2 Under Cahforma law, which governs the preclusive effect of

judgments obtained 1n this case, a prelmimary mjunction 1s not an

adjudication on the merits and 1s accorded no res judicata or

collateral estoppel effect in future litigation between the parties

See Gallo v Acuna, 14 Cal 4th 1090, 1009 (1997) Thus, where

plaintiff obtains preliminary injunction and the case 1s dismissed

for mootness, defendant remains at msk for future hitigation on the

same claims (should they recur), and the previously obtaimed

preliminary injunction has no preclusive effect in the second suit

See id

this Court construed “prevailing party” as defined in

Buckhannon to categorically preclude all interim

judicial relief absent a final preclusive judgment it

would have so held in Sole. Indeed, this Court has

unanimously recognized that a plamtiff can be

“prevailing party” without obtaming final relief on the

“central issue in the suit.” Texas State Teachers, 489

U.S. at 790. The question 1s whether there has been a

“material alteration of the legal relationship of the

parties.” Jd. at 792-793; id. at 791. That Buckhannon

clarified such change must be court-ordered does not

constitute a per se rule requiring defendants to obtain

immunity from future suits ?

Here, in requiring defendants to establish

immunity from future suit, regardless of the interim

and ultimate judicial relief obtained, the Ninth Circuit

created a per se rule that contravenes the material

alteration test as articulated by this Court. This Court

has never expressly held that a final preclusive

judgment on the merits — sufficient to achieve not only

preclusive effect in the pending action but also

immunity from future suits — is necessary before

prevailing party status can be conferred. Such a rule

requires defendants to litigate every case to finality —

at the risk of an extorted settlement — while plaintiffs

3 Buckhannon approved Parham v Southwestern Bell Tel

Co., 433 F.2d 421, 427-429 (8th Cir. 1970), where plaintiff was

deemed prevaihng party and awarded fees when defendant

changed its employment polices after a judicial finding of

discrimination but absent an award of judicial relief. See

Buckhannon, 5382 US at 616-617 & n.3 (fee award upon finding of

disernmination but no judicial rehef) (Scalia, J., concurrmg)

can obtain fees by securing temporary interim relief on

a single claim. Here, the Trust achieved a judicially

sanctioned alteration in the parties’ relationship: it

obtained court-ordered dismissal of the copyright

claims, an admission of no _ liability, and an

abandonment of all federal claims in the pending action

These judicial findings and the abandonment of federal

claims were given preclusive effect in the pending

action, and were never reversed, dissolved or undone.

But for the subsequent voluntary dismissal, which

rendered the action moot, the Trust would have

achieved final preclusive judgment on the merits.

A rule that allows plamtiffs through subsequent

voluntary dismissals to moot final judgment for the

purpose of nullifying the preclusive effect of judicial

findings cannot be squared with Buckhannon or Sole.

WY THE NINTH CIRCUITS PER SE RULE

CONFLICTS WITH OTHER CIRCUITS

THAT HAVE RECOGNIZED PREVAILING

PARTY STATUS DOES NOT REQUIRE

FINAL PRECLUSIVE JUDGMENT ON THE

MERITS, AND THAT HAVE AWARDED

FEES BASED ON INTERIM RELIEF

The Ninth Circuit’s rule requiring immunity from

future suit is tantamount to a rule requiring final

judgment on the ments. But several circuits have

expressly recognized that under Buckhannon

dispositions other than final judgments on the merits can

confer prevailing party status. More significantly,

several circuits, mcluding the Ninth Circuit, have

conferred prevailing party status on plaintiffs who

obtain interim relief, even when plaintiff ultumately

fails on the merits of the case, fails to obtain permanent

relief, or the underlying claims are rendered moot.

The Second Circuit m Vacchio v. Ashcroft, 404

F.3d 663 (2d Cir. 2005), expressly rejected the

contention that plaintiff is considered a prevailing

party only if the court finally adjudicated the merits of

plaintiffs clam In finding plaintiff the prevailing

party, the Second Circuit found the material alteration

test applies to “any interim judicial relhef that alters

the parties’ legal relationship.” Jd. at 673. It stated:

Buckhannon does not limit fee awards to

enforceable judgments on the merits or to

consent decrees. While these orders

were cited by the Court as examples of

the types of actions that would convey

the judicial imprimatur necessary to a fee

award, broader language in Buckhannon

indicates that these examples are not an

exclusive list.

Id. at 674 (quoting Pres. Coalition v. Fed. Transit

Admin., 356 F.3d 444, 452 (2d Cir. 2004) (quoting

Buckhannon, 532 US. at 604)). Applying this

reasoning, the Second Circuit found plaintiff was a

prevailing party for having obtained an interim order

granting him release pending appeal, even absent

preclusive final judgment on the merits, because the

ruling “involved an assessment of the merits, [and]

unquestionably materially altered the existing legal

relationship between the parties.” Jd.

Previously, in Roberson v. Gniliany, 346 F.3d 75

(2d Cir. 2003), the Second Circuit expressly rejected a

narrow reading of Buckhannon that would limit

cognizable relief to final judgments on the merits:

We therefore join the majority of courts

to have considered the issue since

Buckhannon in concluding that judicia/

action other than a judgment on the

merits or a consent decree can support an

award of attorney's fees, so long as such

action carries with it sufficient judicial

imprimatur.

Id. at 81-82 (collecting cases) (emphasis added); see also

Perez v. Westchester County Dep’t of Corr., 587 F.3d

143, 150-151 (2d Cir. 2009) (rejecting contention that

Buckhannon \imited prevailing party status to final

judgments on the merits, consent decrees or court-

ordered settlements and stating: “Although the

Supreme Court specifically mentioned merits decisions

and consent decrees, it did not suggest that one of

these two conditions was necessary for a party to

prevail. Indeed, it referred to them as ‘examples’ of

sufficient outcomes.”’) (emphasis added).

Indeed, the majonty of circuits to have

considered the issue have refused to construe

Buckhannon as restricting prevailing party status to

litigants who obtain final judgment on the merits. See,

e.g., Dearmore v. City of Garland, 519 F.3d 517, 521

(5th Cir. 2008) (“Although an enforceable judgment on

the merits and a court-ordered consent decree have

sufficient judicial imprimatur, these examples are not

exclusive.”); NW. Cheyenne Tribe v. Jackson, 433 F.3d

1083, 1085 & 2 (8th Cir. 2006) (noting open question

whether court orders, such as declaratory judgments

and preliminary injunctions, may create judicially

sanctioned material alteration in parties’ relationship);

Smalbein v. City of Daytona Beach, 353 F.3d 901, 905

(11th Cir. 2008) (concluding, consistent with sister

circuits, that “judicial action with sufficient judicial

imprimatur other than a judgment on the merits or a

court-ordered consent decree may allow for an award

of attorney’s fees.”); 7.D. v. Lagrange School Dist., 349

F.3d 469, 478 (7th Cir. 2003) (“a litigant must have

obtained a judgment on the merits, a consent decree, or

some similar form of judicially sanctioned relief.”);4 see

also Bell v. Bd. of County Comm’rs of Jefferson

County, 451 F 3d 1097, 1103 (10th Cir. 2006) (private

settlement agreements can qualify); Truesdell v.

Philadelphia Hous. Auth., 290 F.3d 159, 164 (8d Cir.

2002) Gudicially enforceable settlements can suffice).

The Ninth Circuit, too, when considering

prevailing plaintiffs, has repeatedly recognized that

litigants can achieve prevailing party status without

obtaining a judgment on the merits. The Ninth Circuit

has expressly rejected overly narrow interpretations of

Buckhannon and has held on numerous occasions that

‘Sudgments and consent decrees are examples... but

they are not the only examples” of judicial action

4 The Federal Circuit in an unpublished decision refused to

find that defendant cannot prevail absent judgment on the ments

See Tavory v NTP, Ine, 297 Fed. Appx 986, 990 & n3 (Fed Cir

2008)

suffiaent to convey prevailing party status. Watson v.

County of Riverside, 300 F.3d 1092, 1096 (9th Cir. 2002)

(emphasis added); see also Carbonell v. INS, 429 F.3d

894, 899 (9th Cir. 2005) (recognizing that litigants can

prevail for purposes of fees “as a result of judicial

action other than a judgment on the merits”); Richard

S. v. Dep’t of Developmental Servs., 317 F.3d 1080,

1086 (9th Cir. 2003) (“prevailing party status is not

determined by the degree of success achieved. . . . [it] is

determined by inquiring whether the party’s “actual

relief on the merits of [their] claam materially alters the

legal relationship between the parties by modifying the

defendant’s behavior in a way that directly benefits the

plaintiff.”’) (citation omitted); 7ipton-Whittingham v.

City of L.A., 316 F.3d 1058, 1062 (9th Cir. 2003)

(Buckhannon’s examples of judgments and consent

decrees are “illustrative, not exhaustive” types of relief

capable of conferring prevailing party status).

More significantly, several circuits, including the

Ninth Circuit, have conferred prevailing party status

on plamtiffs who obtain preliminary or other interim

relief, even where plaintiff never succeeds in obtainng

a final judgment on, or adjudication of, the merits, and

even where plaintiffs underlying claims and request

for final relief are subsequently rendered moot by

defendant’s intervening actions. In such cases, the

question is not whether plaintiff obtained a final

preclusive judgment on the merits, which affords

permanent relief and forecloses future actions. The

question, rather, 1s whether the plaintiff obtained a

merits-based judicially sanctioned material alteration

in the parties’ legal relationship for the pertinent time

pertod in the pending action during which the desired

relief was sought and obtained.

In Dearmore v. City of Garland, 519 F.3d 517

(5th Cir. 2008), the Fifth Circuit, noting that this Court

has not expressly defined the precise scope of the

‘Sudicial imprimatur” requirement, recognized that

while “enforceable judgments on the ments and

consent decrees are sufficient for prevailing party

status,” they are not necessary under Buckhannon. Id.

at 521. Noting also that this Court has not decided

whether preliminary injunctions in the absence of final

judgment can confer prevailmg party status, the Fifth

Circuit declined to adopt a per se rule and instead

considered a fact-specific standard. See id. at 521-523.

The Fifth Circuit ultimately conferred prevailing party

status on plamtiff who, in the absence of final

adjudication on the merits, obtained preliminary

injunctive relief that was subsequently rendered moot

by defendant’s accession to the prior court order.

The Fifth Cireuit fashioned a three-part test and

concluded that a merits-based preliminary injunction

coupled with defendant’s voluntary mooting of the

action “im direct response” to the district court’s order,

which precluded final relief on the merits, “caused a

material alteration in the legal relationship between

the parties.” Jd. at 526. The Fifth Circuit concluded

that Buckhannon embraces the possibility that interim

judicial relief, including preliminary mjunctions, may

result in a court-ordered change in the parties’

relationship, even in the absence of an admission or

final adjudication of liability. See id. Rejecting the

contention that defendant’s post-order, prejudgment

voluntary change in behavior precluded plaintiffs

prevailing party status, the Fifth Circuit stated:

“Buckhannon does not stand for the proposition that a

defendant should be allowed to moot an action to avoid

the payment of the plaintiffs attorney’s fees when a

district court grants a preliminary injunction based

upon an unambiguous indication of probable success on

the merits.” Jd. at 524. Thus, where interim relief is

obtained upon a judicial assessment of the merits, and

final relief is mooted after the judicial determination is

made, prevailing party status can be conferred. °

The Thmrd Circuit in People Against Police

Violence v. NAACP, 520 F.3d 226 (3d Cir. 2008),

applied similar reasoning to reach the same result.

Noting that this Court left open the possibility that

temporary interim relief can confer prevailing party

status, the Third Circwt expressly stated that

“litigation need not progress to a final judgment on the

merits” for a fee award to be proper under

Buckhannon. Id. at 232. The Third Circuit joined its

sister circuits to conclude that relief on the merits in

the form of a provisional preliminary injunction can

confer prevailing party status even if final judgment is

never reached. See id. at 232-234 & na (collecting

cases). The Third Circuit rejected the contention that

defendant’s post-injunction voluntary consent to the

relief precluded fees because defendant acquesced

5 The Fifth Cirewmt emphasized that defendant’s mooting of

the action in direct response to the interim order should be

construed as acquiescence in determining prevailing party status

See id at n 3.

after it opposed judicial relief, and its requests for

dismissal were denied. See Jd. at 234-235.

The Second, Sixth, Seventh and District of

Columbia Circuits are in accord, and have recognized

that prelimmary interim judicial relief, even absent

final preclusive adjudication on the merits, can confer

prevailing party status. These circuits reject a per se

rule and instead consider the facts and circumstances

surrounding the interim order to determmne whether

Buckhannon has been satisfied. See, e.g., Dupuy v.

Samuels, 423 F.3d 714, 723-724 & n.4 (7th Cir. 2005)

(rejecting per se rule that prelimimary injunction can

never serve as predicate for interim fee award);

Vacchio, 404 ¥' 3d at 672-674 (rejecting per se rule that

interim stay or preliminary injunction absent final

judgment requires automatic denial of fees); Select

Milk Producers, Inc. v. Johanns, 400 F.3d 939, 945-946

(D.C. Cir. 2005) (rejecting contention that Buckhannon

established per se rule that preliminary injunction can

never warrant prevailing party fees and adopting case

by-case test); Dubuc v. Green Oak Township Zoning

Bd. of Appeals, 312 F.3d 736, 753-754 (6th Cir. 2002)

(noting preliminary injunction can qualify if based on

‘““an unambiguous indication of probable success on the

merits, and not merely a maintenance of the status quo

ordered because [of] the balance of equities”’) (citation

The Eleventh Cirewt m an unpublished decision found

that merits-based preliminary injunctions warrant fees. See

Wyner v Struhs, 179 Fed Appx 566 (llth Cir 2006), rev’d on

other grounds, Sole v Wyner, 551 U.S 74 (2007)

(suggesting that some merits-based preliminary relief

could confer prevailing party status); cf Smyth v.

Rivero, 282 F.3d 268, 275-277 & nn.8-9 (4th Cir. 2002).

The Ninth Cirewit has adopted a generous

approach when considering whether plaintiffs who

obtain interim relief but fail to secure final preclusive

judgment on the merits are prevailing parties, stating

that a “preliminary injunction issued by a judge carries

all the ‘judicial imprimatur’ necessary to satisfy

Buckhannon.” Watson v. County of Riverside, 300

F.3d 1092, 1096 (9th Cir. 2002). The Ninth Circuit

holds that plaintiffs who win preliminary relief are

prevailing parties notwithstanding the subsequent

mooting of their actions and failure to obtain final

relief. So long as interim relief is mooted, and not

reversed, prevailing party status can be conferred. See

id. The Ninth Circuit does not require preclusive

judgments for plaintiffs, nor a merits-based ruling.

The relevant inquiry is whether the interim order

materially altered the parties’ legal relationship for the

“pertinent time period” during the pending action. /d.

at 1095 (citation omitted); 7d. at 1098 (plaintiff who

obtains preliminary injunction prevails “even though

he did not recover any other relief’); Aichard S., 317

F.3d at 1088-1089 (rejecting that preliminary injunction

issued to preserve status quo without assessment of

merits cannot confer prevailing party status).

The Ninth Circuit has extended this rule to

confer prevailing party status on a plaintiff who

obtained an interim stipulated 45 day stay from

deportation, and thus achieved the desired result for

the pertinent time period — notwithstanding that he

was under a final deportation order and failed to obtain

any affirmative relief in the underlying action. See

Carbonell, 429 F.3d at 899-902 (citing Rueda-Menicucei

v. INS, 132 F.3d 4938, 495 (9th Cir. 1997) (planntiff

prevails upon securing remand without adjudication of

merits or grant of affirmative relief)); cf Vacchio, 404

i'.3d 663 (stays, injunctions and “any interim judicial

relief that alters the parties’ legal relationship” can

confer status if governed by assessment of merits).

These cases demonstrate that circuit courts

uniformly confer prevailing party status on plaintiffs

who obtain interim relief without securing a final

preclusive judgment. By definition, preliminary

injunctions and stays are not preclusive in the pending

action and are accorded no preclusive effect in future

actions between the parties. Preliminary relief cannot

immunize plaintiffs from the risk of future suits, nor

foreclose the possibility that defendants will re-

commence the offending conduct and invite a second

action. Yet, plaintiffs are not required to obtain

preclusive judgments as a condition of awarding fees

Circuit courts confer prevailing party status not

because plaintiffs obtain a preclusive final judgment on

the merits, but, rather, because they obtain a judicially

sanctioned change in the parties’ legal relationship for

the pertinent time pertod during the pending action.

In categorically requiring defendants to obtain

immunity from future suit by securing preclusive final

judgments, while plaintiffs prevail by obtaining non-

preclusive temporary relief, the Ninth Circuit has

created a profound and irreconcilable doctrinal conflict

among the circuits, and a disparate double standard for

defendants, which cannot be justified by Buckhannon.

Where, as here, a defendant who obtains successive

judicial dismissals, an irrevocable and unequivocal

express abandonment of federal claims and accession to

imminent dismissal with prejudice through voluntary

termination of the action has undoubtedly secured a

judicially sanctioned change in the parties’ legal

relationship. Whether or not the failure to replead

federal claims “carries over” to a second action, it is

beyond dispute that intentionally abandoned claims

cannot be resurrected in the pending action. See e.g.,

Marx v. Loral Corp., 87 F.3d 1049, 1055-1056 (9th Cir.

1996) (“Ninth Circuit authority clearly states that all

causes of action . . . not alleged in an amended

complaint are waived.’”). This Court has never held

that plaintiffs can unilaterally nullify the effect of an

intentional abandonment of claims in a pending action

through voluntary dismissal (and resurrection in a

second action) for the express purpose defeating

prevailing party status. Yet, this is precisely the rule

the Ninth Circuit has embraced. The Ninth Circuit’s

rule thus turns Buckhannon on tts head, as it empowers

plaintiffs to unilaterally determine by mooting their

own actions whether interim orders will be given

preclusive effect and prevailing party status conferred.

In fashioning its per se rule, the Ninth Circuit

relied on circuit decisions that have characterized

dismissals without prejudice as non-final, and have

refused to confer prevailing party status as a result.

However, none of the cited cases stands for the

proposition that plaintiffs subsequent voluntary

dismissal can be used as a device to nullify prior

judicial orders, resurrect abandoned claims or

supersede binding merits-based findings or admissions.

None of the cases involved successive orders of judicial

dismissal prior to voluntary dismissal over the course

of protracted litigation, interim assessments of the

merits, binding judicial admissions, or pre-dismissal

abandonment of federal claims.?7 See, e.g, Oscar v.

Alaska Dep’t of Ed. & Early Devel. 541 F.3d 978, 981-

982 (9th Cir. 2008) (motion to dismiss granted without

prejudice for failure to sign complaint; no voluntary

dismissal entered); Torres-Negron v. J & N. Records,

LLG, 504 F.3d 151, 164-165 (1st Cir. 2007) (dismissal

for lack of subject matter jurisdiction not decision on

merits absent ruling on copyright infringement claims);

RFR Indus., Ine. v. Century Steps, Inc., 477 F.3d 1348,

1358 (Fed. Cir. 2007) (voluntary dismissal deemed

entered before ruling for defendant); Szabo Food Serv.,

Ine. v. Canteen Corp., 823 F.2d 1073, 1075-1077 (‘7th

Cir. 1987) (voluntary dismissal filed before court ruled).

Extending these decisions to create a per se rule

effectuates a substantial expansion of existing circuit

law and places civil defendants at a profound

disadvantage. Review is warranted to clarify whether

7 Decisions finding dismissal with prejudice sufficient to

award fees areinapposite See, eg, Aiviera Distrib., Inc v Jones,

517 F 3d 926 (7th Cir 2008) (dismissal with prejudice satisfies

Buckhannon, even absent adjudication of merits), cf Miles v.

California, 329 F 3d 986, 989 (9th Cir 2003) (dismissal without

prejudice sufficient where federal claim foreclosed). That

preclusive final judgment 1s sufficient to confer prevailing party

status does not make it necessary

Buckhannon requires preclusive judgments and

immunity from suit, reconcile the disparate standards

for plaintiffs and defendants the Ninth Circuit created,

and ensure uniformity among the lower federal courts.

i. THIS CASE RAISES A QUESTION OF

EXCEPTIONAL IMPORTANCE ON AN

ISSUE OF FEDERAL LAW THAT

WARRANTS REVIEW

This Court has never held that a prevailing

litigant must achieve immunity from future suit in

order to qualify for prevailing party status. A per se

rule requiring that defendants obtain immunity from

future suit, notwithstanding a material alteration of the

parties’ legal relationship in the pending action, is

tantamount to requiring defendants to obtain an

enforceable judgment on the merits. Such a categorical

rule, however, has been expressly and repeatedly

rejected by several circuit courts, and by this Court.

Indeed, a rule that allows plaintiffs to deprive

defendants of prevailing party status by voluntarily

dismissing their actions after defendants have obtained

significant judicial relief fundamentally undermines

Buckhannon, which rejected the idea that parties

through their own actions could confer prevailing party

status. In essence, this rule permits plaintiffs to

unilaterally nullify a prior maternal alteration of the

parties’ legal relationship by withdrawing their claims

in the face of imminent judicial action, and to annul the

impact of interim judicial orders by dismissing at the

eleventh hour.

This new rule, that “a defendant 1s a prevailing

party following dismissal of a claim if the plaintiff is

judicially precluded from relitigating the claim against

the defendant in federal court,” applies with equal force

not only to Copyright Act actions, but to all fee awards

governed by M#uckhannon and, thus, affects the

construction of numerous federal statutes and htigants

throughout the federal courts. See, eg., Ma v.

Chertoff, 547 F.3d 342, 344 (2d Cir. 2008).

The Ninth Circuit’s rule creates disparate

standards for determining prevailing party status for

plaintiffs and defendants. In the Ninth Circuit,

prevailing defendants are required to _ establish

immunity from future lawsuits by obtaining relief with

preciusive effect. In contrast, prevailing plaintiffs are

not required to obtain preclusive relief or foreclose the

risk of future litigation. Rather, plaintiffs are entitled

to prevailing party status upon obtaining interim relief

(which, by definition, has no preclusive effect), whether

or not they ultimately prevail on the merits of the

underlying claims and whether or not defendant’s

conduct renders the action moot. Such disparate

treatment cannot be justified by Buckhannon and

contravenes the unique nature of the Copyright Act’s

symmetrical fee-shifting provision. This Court has

directed that parties in a copynght action must be

treated symmetrically; thus, unlike other fee-shifting

statutes that favor plaintiffs, “prevailing plaintiffs and

prevailing defendants are to be treated alike” under

the Copyright Act. Fogerty v. Fantasy, 510 U.S. 517,

534 (1994); see also Eagle Serv. Corp. v. H20 Indus.

Serv., Ine., 582 F.3d 620, 624 (7th Cir. 2008) (because

prevailing defendants receive a small award or no

award, the presumption in favor of awarding fees

under Fogerty is “very strong”).

Even assuming immunity from suit is required

by Buckhannon and permitted by Fogerty, it is simply

not true that an abandonment of claims and dismissal

without prejudice leave the situation “as if the action

never had been filed.” Pet. App. 16a (citing City of S-

Pasadena v. Mineta, 284 F.3d 1154 (9th Cir. 2002)). The

fiing of a case that is subsequently dismissed does

have lasting effects. While cases voluntarily dismissed

without prejudice normally do not have collateral

estoppel or preclusive effect, they indisputably do

affect the relationship of the parties. For example,

party allegations constitute judicial admissions, even in

a subsequent action. See, e.g., American Title Ins. Co.

v. Lacelaw Corp., 861 F.2d 224, 226 (9th Cir. 1988)

(“Under federal law, stipulations and admissions 1n the

pleadings are generally binding on the parties and the

Court.”); Ins. Co. of N. Am. v. Thompson, 318 F.2d 677,

682 (9th Cir. 1967); Adams v. Teck Cominco Alaska,

Ine., 414 ¥. Supp. 2d 925 (D. Alaska 2006). Voluntarily

dismissed claims can result in an award of sanctions,

including costs or even fees. See Cooter & Gell v.

Hartmax Corp. 496 U.S. 382, 395-96 (1990)

(recognizing power to impose Rule 11 sanctions after

action is n9 longer pending, even after voluntary

dismissal).

Dismissals without prejudice can be “final”

where the court conclusively disposed of the claims and

determined that the complaint could not be saved by

amendment, or where the statute of limitations bars

future suit. See, e.g., Doctor’s Assocs. v. Duree, 375

I'.3d 618, 622 (7th Cir. 2004). Previously abandoned

claims can be barred by judicial estoppel or the law of

the case doctrine. See, e.g., Sechrest v. Ignacio, 549

F.3d 789, 805 (9th Cir. 2008); Thomas v. Bible, 983 F 2d

152, 154 (9th Cir. 1993). Under California law, a

voluntary dismissal, even one without prejudice, 1s

presumed to be a favorable termination on the merits

for purposes of establishing malicious prosecution. See

MacDonald v. Joslyn, 275 Cal. App. 2d 282, 289 (1969);

Sycamore Ridge Apartments LLC v. Naumann, 157

Cal. App. 4th 1385, 1400 (2007).

In these respects, the parties are not left as

though the case had never been filed. The Ninth

Circuit stretched City of South Pasadena too far when

it took that case as authority for the proposition that

abandoned claims can be resurrected in subsequent

suits by filing a voluntary dismissal in the first action.®

Even where a second action 1s not barred by res

judicata, plaintiffs express abandonment of a claim,

which is obtained as a direct result of the district

court’s orders of dismissal, and which occurs prior to

8 nty of South Pasadena did not mvolve or address

whether a voluntanly abandoned claum can be resurrected in a

subsequent lawsuit and did not disapprove or criticize the strong,

express line of cases establishing abandonment by failure to

replead. The court there concluded that a waiver of sovereign

immunity in an action that was voluntanly dismissed doves not

constitute consent to be sued in a new action on a new claim 25

years later - 1t did not purport to create a per se rule permitting

plaintiffs to resurrect claims they intentionally abandoned

the dismissal of the federal action, materially alters the

parties’ legal relationship during the pending action.

The Ninth Circuit’s departure from existing

precedent to create a per se rute fundamentally

undermines the purpose of Section 505 and effectively

precludes defendants from establishing prevailing

party status in cases where plaintiffs unilaterally moot

final yadgment. Such a blanket rule — which applies to

all voluntary dismissals without regard to the stage of

litigation, intentional waivers or mterim judicial orders

— creates a disparate standard for civil defendants,

fundamentally undercuts M#uckhannon, encourages

abusive tactics and effectively requires prevailing

defendants to disprove plaintiffs’ claims.

CONCLUSION

For the reasons above, the petition should be

granted.

Dated: January 18, 2010

Respectfully submitted,

Sandra J Levin Peter R. Afrasiabi

COLANTUONO & LEVIN Counsel of Record

300 South Grand Avenue ONE LLP

Suite 2700 535 Anton Boulevard

Los Angeles, CA 90071 Suite 850

Telephone: (213) 542-5700 Costa Mesa, CA 92626

Telephone: (714) 434-8750

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.