# Petition for Writ of Certiorari — Loose v. Cadkin

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 2010
- **Citation:** 559 U.S. 1007

## Text

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,
y

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

1

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?

1]
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

1V

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

Vv

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)

Vi

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,

EP
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
Copyright Act. After four years of litigation, three
orders of dismissal, an abandonment of all remaining
federal claims and an impending order of dismissal with
prejudice, the district court found Respondents’
copyright claims were objectively unreasonable, denied
a request for remand, deemed Petitioner prevailing
party and awarded fees. After the tentative order of

4

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.

5

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.

6

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

7

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
Copyright Act, (2) the factual allegations (still) lacked
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

8

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

9

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

10

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

li

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

12
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

13

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.

14

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.

14

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)

17

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

18

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.

19

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

20

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)

21

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

22

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.

23

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

24

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)

25

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

26

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

27

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.

28

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

omitted);© see also N. Cheyenne Tribe, 433 F.3d at 1086

6

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)

29

(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

30

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

4]

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

32

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

33

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.

34

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

35

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

36

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

37

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386017_1491%3A1. Public record. Not legal advice.