Cadkin v. Loose ( 2009 )

FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
EMIL CADKIN, an individual; LILA 
CADKIN, as trustee of the CADKIN
TRUST,
Plaintiffs-Appellants,
No. 08-55311
v.
IRMA LOOSE, an individual; MAY-  D.C. No.
CV-03-01591-JVS
LOO MUSIC INC., a California
OPINION
corporation; TERENCE LOOSE, as
trustee of the William Loose
Family Trust,
Defendants-Appellees.

Appeal from the United States District Court
for the Central District of California
James V. Selna, District Judge, Presiding
Argued and Submitted
May 8, 2009—Pasadena, California
Filed June 26, 2009
Before: Betty Binns Fletcher, Raymond C. Fisher and
Ronald M. Gould, Circuit Judges.
Opinion by Judge Fisher
8081
8084 CADKIN v. LOOSE
COUNSEL
Marty O’Toole, Law Offices of Marty O’Toole, Los Angeles,
California, for the plaintiffs-appellants.
Sandra Levin (argued), Michael A. Morguess, Colantuono &
Levin, P.C., Los Angeles, California, for defendant-appellee
CADKIN v. LOOSE 8085
Terrance Loose, as Trustee of the William Loose Family
Trust.
George M Belfield, Greenberg Traurig, LLP, Santa Monica,
California, for defendants-appellees Irma Loose and May-Loo
Music, Inc.
OPINION
FISHER, Circuit Judge:
This appeal concerns whether a defendant is entitled to
attorney’s fees as a prevailing party under § 505 of the Copy-
right Act, 17 U.S.C. § 505, when a plaintiff voluntarily dis-
misses without prejudice a lawsuit containing copyright
claims. In Corcoran v. Columbia Broadcasting System, Inc.,
121 F.2d 575, 576 (9th Cir. 1941), we held a defendant in a
copyright suit was a prevailing party and was entitled to attor-
ney’s fees when the plaintiff voluntarily dismissed the com-
plaint without prejudice after the district court granted
defendant’s motion for more definite statement. The Supreme
Court, in the context of the Fair Housing Amendments Act
(FHAA), has since held prevailing party status turns on
whether there has been a “material alteration of the legal rela-
tionship of the parties,” Buckhannon Bd. & Care Home, Inc.
v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598, 604
(2001) (internal quotation marks omitted), and we have held
dismissal without prejudice does not alter the legal relation-
ship of parties for the purposes of entitlement to attorney’s
fees under a comparable fee shifting statute, see Oscar v.
Alaska Dep’t of Educ. & Early Dev., 541 F.3d 978, 981 (9th
Cir. 2008).
We conclude Corcoran is clearly irreconcilable with Buck-
hannon and no longer good law. We therefore overrule Cor-
coran and hold Buckhannon’s material alteration test applies
8086 CADKIN v. LOOSE
to § 505 of the Copyright Act. See Miller v. Gammie, 335
F.3d 889, 893 (9th Cir. 2003) (en banc) (holding thee-judge
panel can reject prior panel opinion that is “clearly irreconcil-
able” with intervening Supreme Court authority). Because the
plaintiffs in this lawsuit remained free to refile their copyright
claims against the defendants in federal court following their
voluntary dismissal of the complaint, we hold the defendants
are not prevailing parties and thus not entitled to the attor-
ney’s fees the district court awarded them.1
I. BACKGROUND
From about 1959 until the 1970s, Emil Cadkin, sometimes
solely and sometimes with William Loose, created and
recorded thousands of music cues, which are short musical
works used in television and movies. These cues were admin-
istered by GRH Music (“GRH”), a partnership owned by Emil
Cadkin and William Loose. In the 1960s, Emil Cadkin autho-
rized William Loose to license the music cues to third parties.
At some point, Emil Cadkin formed the Cadkin Trust as
owner of all his copyright interests, appointing Lila Cadkin as
trustee.
William Loose incorporated May-Loo Music, Inc. to
license music he controlled. The proceeds of May-Loo Music,
Inc. are split between Irma Loose, William Loose’s spouse,
and the William Loose Family Trust, which William Loose
formed to benefit his children. Terrence Loose is the trustee
of the William Loose Family Trust.
1
Federal Rule of Civil Procedure 41(a)(1)(B) explains the effect of a
plaintiff’s voluntary dismissal of an action: “Unless the notice or stipula-
tion states otherwise, the dismissal is without prejudice. But if the plaintiff
previously dismissed any federal- or state-court action based on or includ-
ing the same claim, a notice of dismissal operates as an adjudication on
the merits.” Here, plaintiffs voluntarily dismissed their lawsuit against
defendants and had not done so before. Thus, the dismissal was without
prejudice.
CADKIN v. LOOSE 8087
In October 2003, Emil Cadkin and Lila Cadkin (as trustee
of the Cadkin Trust) (collectively “the Cadkins”) filed a com-
plaint in federal district court against Terrence Loose (as
trustee of the William Loose Family Trust) (“the Trust”) and
Irma Loose and May-Loo Music, Inc. (collectively “May-
Loo”). The complaint alleged William Loose had removed
Emil Cadkin’s name as author and GRH’s name as publisher
from cues Emil Cadkin had composed (on his own or jointly
with William Loose), incorporated those cues into the May-
Loo music library with William Loose credited as the sole
author and then registered those cues with the U.S. Copyright
Office, thereby allowing William Loose to obtain the full roy-
alty from the cues’ use. The allegations implicated over 5000
cues. The complaint contained numerous claims for relief,
including copyright infringement, false designation of origin
(trademark) and various California state law claims.
After extended settlement discussions proved fruitless, the
Trust and May-Loo in February 2007 filed motions to dis-
miss, which the district court granted in part. The district
court found the state law claims were preempted by the Copy-
right Act, dismissing them without prejudice; found the fraud
claims were not alleged with sufficient particularity, dismiss-
ing them without prejudice; and directed the Cadkins to join
certain necessary parties.
The Cadkins thereafter filed a first amended complaint,
which contained three claims for relief: (1) copyright infringe-
ment, (2) false designation of origin (trademark) and (3)
declaratory relief. The Trust and May-Loo again moved to
dismiss. The district court, relying primarily on the Cadkins’
failure to cite any legal authority in their opposition and insuf-
ficient specificity in the amended complaint’s factual allega-
tions, granted the motion with leave to amend.
The Cadkins then moved to remand the case to state court,
with a second amended complaint appended. The motion
admitted “none of the parties herein may own the rights in
8088 CADKIN v. LOOSE
any of the musical compositions at issue.” The district court
denied the motion to remand, explaining that remand was not
possible when the case had been initiated in federal court.
Thereafter, the parties and the district court treated the second
amended complaint as the operative pleading. It contained
only state law claims: declaratory judgment, unjust enrich-
ment and accounting for profits.
The Trust and May-Loo again moved to dismiss, arguing
the second amended complaint should be dismissed without
leave to amend because (1) all three state law claims were
preempted by the Copyright Act, (2) the factual allegations
lacked specificity and (3) any federal copyright or trademark
claims were waived because they were not included in the
amended pleading. The Cadkins opposed the motion to dis-
miss and lodged a notice of voluntary dismissal under Federal
Rule of Civil Procedure 41(a). The district court deferred rul-
ing on the Trust’s and May-Loo’s motions to dismiss until it
ruled on the Cadkins’ voluntary dismissal, which was eventu-
ally entered without comment on the district court docket in
October 2007.
The Trust and May-Loo then sought attorney’s fees and
costs ($205,575 and $101,180, respectively). The Trust later
sought an additional $20,000 in fees for work related to the
attorney’s fees motion and response. At the district court’s
direction, May-Loo reduced its requested fee to carve out fees
attributable to work on a related lawsuit not involving the
Cadkins, for a final requested amount of $63,151.20.
The district court granted both motions and entered judg-
ment in favor of the Trust and May-Loo on December 27,
2007, awarding $225,575 to the Trust but not specifying the
amount awarded to May-Loo. After denying the Cadkins’
motion to reconsider, the court entered a second judgment on
CADKIN v. LOOSE 8089
February 11, 2008 in favor of May-Loo, specifying an award
of $63,151.20. The Cadkins timely appealed.2
II. STANDARD OF REVIEW
We review an award of attorney’s fees under the Copyright
Act for abuse of discretion. See Traditional Cat Ass’n, Inc. v.
Gilbreath, 340 F.3d 829, 833 (9th Cir. 2003). “A district court
abuses its discretion when its decision is based on an inaccu-
rate view of the law or a clearly erroneous finding of fact.” Id.III. DISCUSSION
A. Jurisdiction
Initially, we address our jurisdiction to consider the Cad-
kins’ appeal of the order awarding the Trust attorney’s fees.
The Trust maintains we lack jurisdiction because the Cadkins’
notice of appeal listed only the February 11, 2008 judgment
(and did not explicitly list the December 27, 2007 judgment)
on the line specifying the order being appealed. We reject this
argument.
[1] “When a party seeks to argue the merits of an order that
does not appear on the face of the notice of appeal, we con-
sider: (1) whether the intent to appeal a specific judgment can
be fairly inferred and (2) whether the appellee was prejudiced
by the mistake.” Le v. Astrue, 558 F.3d 1019, 1022-23 (9th
Cir. 2009) (internal quotation marks omitted). “In determining
whether intent and prejudice are present, we consider first,
2
Although the district court docket sheet reflects a filed date of Decem-
ber 21, 2007 for the judgment awarding the Trust attorney’s fees, the
docket reflects an entered date of December 27. Because December 27 is
the date judgment was entered, see Fed. R. App. P. 4(a)(1) & (7); United
States v. Depew, 210 F.3d 1061, 1065 (9th Cir. 2000), the notice of appeal
was timely with respect to that judgment, see Fed. R. App. P. 4(a)(4)(A)
(stating time to file notice of appeal does not run until district court
resolves timely motion to reconsider).
8090 CADKIN v. LOOSE
whether the affected party had notice of the issue on appeal;
and, second, whether the affected party had an opportunity to
fully brief the issue.” Id. (internal quotation marks omitted).
[2] The notice of appeal refers to “judgments re:
costs/attorneys’ fees” (emphasis added), indicating the Cad-
kins wished to appeal both the February 11 judgment in favor
of May-Loo and the December 27 judgment in favor of the
Trust. Moreover, the notice of appeal notification form filed
concurrently with the notice of appeal identifies two
“12/27/07” items on the line specifying the orders or judg-
ments being appealed, and the Trust had the opportunity to
fully brief the propriety of the attorney’s fees award on
appeal. The Trust plainly had notice the Cadkins were appeal-
ing the judgment in the Trust’s favor and had ample opportu-
nity to address the merits of that issue.
B. Attorney’s Fees under the Copyright Act
[3] Section 505 of the Copyright Act provides:
In any civil action under this title, the court in its dis-
cretion 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 attor-
ney’s fee to the prevailing party as part of the costs.
17 U.S.C. § 505. District courts have two tasks in applying
§ 505: first, deciding whether an award of attorney’s fees is
appropriate and, second, calculating the amount of the award.
See Gilbreath, 340 F.3d at 832-33. District courts have discre-
tion to award attorney’s fees to prevailing parties under the
Copyright Act, but that discretion is triggered only if the party
in fact prevailed on the copyright claim. See 17 U.S.C. § 505;
Fantasy, Inc. v. Fogerty, 94 F.3d 553, 555 (9th Cir. 1996)
(holding “an award of attorney’s fees to a prevailing defen-
dant that furthers the underlying purposes of the Copyright
CADKIN v. LOOSE 8091
Act is reposed in the sound discretion of the district courts”
(emphasis added)).
1. Prevailing party status under the Copyright Act
The district court found the Trust and May-Loo were pre-
vailing parties, relying on our 1941 decision in Corcoran, 121
F.2d 575. The district court was correct to follow controlling
circuit precedent, but we now overrule Corcoran because it is
“clearly irreconcilable” with the Supreme Court’s subsequent
decision in Buckhannon. Miller, 335 F.3d at 893.
[4] In Corcoran, the district court denied defendants’
motion to dismiss but granted their motion for a more definite
statement on a copyright claim. Rather than amending the
complaint, plaintiff voluntarily dismissed without prejudice,
and the district court ultimately awarded defendants attor-
ney’s fees. We rejected plaintiff’s contention that dismissal
without prejudice does not confer prevailing party status
under the Copyright Act.
The authority given is not in terms limited to the
allowance of fees to a party who prevails only after
a trial on the merits. Where, as here, a defendant has
been put to the expense of making an appearance
and of obtaining an order for the clarification of the
complaint, and the plaintiff then voluntarily dis-
misses without amending his pleading, the party
sued is the prevailing party within the spirit and
intent of the statute even though he may, at the whim
of the plaintiff, again be sued on the same cause of
action.
Corcoran, 121 F.2d at 576. Although we have not cited Cor-
coran in subsequent decisions applying the Copyright Act’s
attorney’s fees provision, neither have we overruled or ques-
tioned its continuing viability.
8092 CADKIN v. LOOSE
[5] In Buckhannon, however, the Supreme Court held a
plaintiff was not a prevailing party under the FHAA when the
“lawsuit brought about a voluntary change in the defendant’s
conduct” without a “judgment on the merits or a court-
ordered consent decree.” 532 U.S. at 600. Relying on the defi-
nition of prevailing party in Black’s Law Dictionary, the
Court concluded “a ‘prevailing party’ is one who has been
awarded some relief by the court.” Id. at 603. The key inquiry
is whether some court action has created a “material alteration
of the legal relationship of the parties.” Id. at 604 (internal
quotation marks omitted).
[6] In Oscar, 541 F.3d at 981, we followed Buckhannon in
deciding whether an involuntary dismissal without prejudice
conferred prevailing party status on the defendant in a lawsuit
under the Individuals with Disabilities Education Act.
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 risk of re-filing.” Id. Oscar distinguished Miles
v. California, 320 F.3d 986 (9th Cir. 2003), in which we
applied Buckhannon and concluded a dismissal of a claim
under the Americans with Disabilities Act (ADA) without
prejudice to plaintiff’s right to seek relief in state court did
confer prevailing party status on the defendant. This was so
because “[t]he dismissal eliminates the federal ADA claim
from further proceedings in federal court and thus has
changed the legal relationship of Miles with respect to the
State.” Id. at 989; see Oscar, 541 F.3d at 982.
[7] We conclude Corcoran cannot be reconciled with Buck-
hannon’s material alteration test. First, Corcoran focused on
the expense the defendants incurred and expressly disregarded
that the parties’ legal relationship had not changed as a result
of the voluntary dismissal. See Corcoran, 121 F.2d at 576(holding defendant to be prevailing party “even though he
may, at the whim of the plaintiff, again be sued on the same
CADKIN v. LOOSE 8093
cause of action”). Second, we construed “prevailing party” in
light of the policies underlying the Copyright Act, rather than
relying on the plain meaning of the phrase as the Supreme
Court did in Buckhannon. See Buckhannon, 532 U.S. at 607(suggesting legislative history would not overcome plain
meaning of “prevailing party”). Although the Trust and May-
Loo are correct that Buckhannon was not a copyright case, the
distinction is immaterial. As discussed, we have understood
the Court’s construction of “prevailing party” applies to fed-
eral fee shifting statutes other than the FHAA that contain that
phrase, which is appropriate given the Court’s reliance on a
dictionary definition for its holding. See Buckhannon, 532
U.S. at 603.
[8] Accordingly, we hold the material alteration test the
Supreme Court articulated in Buckhannon governs the pre-
vailing party inquiry under § 505 of the Copyright Act and
overrule Corcoran to the extent it is inconsistent with Buck-
hannon. See Miller, 335 F.3d at 893. Our holding is consistent
with every circuit court that has considered whether Buckhan-
non governs prevailing party status under the Copyright Act.
See, e.g., Riviera Distribs., Inc. v. Jones, 517 F.3d 926, 928
(7th Cir. 2008) (holding voluntary dismissal with prejudice of
copyright claims confers prevailing party status on defendants
under Buckhannon); Torres-Negron v. J & N Records, LLC,
504 F.3d 151, 164 & n.9 (1st Cir. 2007) (holding Buckhannon
material alteration test applies to copyright claims and con-
cluding dismissal for lack of subject matter jurisdiction does
not confer prevailing party status); see also Bridgeport Music,
Inc. v. London Music, U.K., 226 F. App’x 491, 493-94 (6th
Cir. 2007) (unpublished) (applying Buckhannon to copyright
claims).
2. Material alteration in legal relationship
[9] This was the Cadkins’ first voluntary dismissal of copy-
right claims against the Trust and May-Loo. Although the
notice of dismissal did not state whether the voluntary dis-
8094 CADKIN v. LOOSE
missal was with or without prejudice, “[u]nless the notice or
stipulation states otherwise, [a first voluntary] dismissal is
without prejudice.” Fed. R. Civ. P. 41(a)(1)(B); see also City
of S. Pasadena v. Mineta, 284 F.3d 1154, 1157 & n.2 (9th Cir.
2002) (noting first voluntary dismissal is without prejudice
unless otherwise specified). The Cadkins’ voluntary dismissal
“does not alter the legal relationship of the parties because
[the Trust and May-Loo] remain[ ] subject to the risk of re-
filing” following a dismissal without prejudice. Oscar, 541
F.3d at 981. We therefore hold the Trust and May-Loo are not
prevailing parties and are not entitled to attorney’s fees. See
id. at 982.
We are not persuaded by either of the Trust’s and May-
Loo’s arguments why Oscar does not control here. First, the
Trust and May-Loo maintain the legal relationship between
the parties changed because the Cadkins waived the copyright
claim by omitting it from the second amended complaint,
making the voluntary dismissal equivalent to a dismissal with
prejudice as to that claim. Although we have consistently held
“all causes of action alleged in an original complaint which
are not alleged in an amended complaint are waived,” Marx
v. Loral Corp., 87 F.3d 1049, 1055 (9th Cir. 1996) (internal
quotation marks and alteration omitted), we have never
applied this waiver rule to a new lawsuit filed after a volun-
tary dismissal without prejudice. In fact, we have squarely
held waiver in one lawsuit does not carry over to a subsequent
lawsuit following a voluntary dismissal without prejudice
under Rule 41(a). In City of South Pasadena, 284 F.3d at
1156, the city filed a lawsuit against the state of California,
which failed to invoke sovereign immunity, but the city then
voluntarily dismissed the lawsuit without prejudice and filed
a new cause of action containing many of the same claims.
When the state invoked sovereign immunity in the second
lawsuit, the district court found the state had waived that
defense by failing to assert it in the original lawsuit. See id.On appeal, we held the state had waived immunity in the prior
lawsuit, but that waiver had no effect on the new lawsuit fol-
CADKIN v. LOOSE 8095
lowing the voluntary dismissal: “The city . . . voluntarily dis-
missed [the first] action pursuant to [Rule] 41(a)(1)(ii). This
was the city’s first voluntary dismissal, and it was therefore
without prejudice. Such a dismissal leaves the situation as if
the action never had been . . . . We have adhered slavishly to
this interpretation of Rule 41(a).” Id. at 1157 (internal quota-
tion marks and footnote omitted). Rejecting the city’s argu-
ment that there is no categorical rule that waiver of sovereign
immunity cannot carry over to a subsequent action, we held
“[Rule] 41(a)(1) provides a categorical rule that is much
broader — one that disallows the ‘carry-over’ of any waivers
from a voluntarily dismissed action to its reincarnation.” Id.
at 1158. The Trust’s and May-Loo’s attempt to differentiate
between waiver of affirmative defenses and waiver of claims
is a distinction without significance in light of our character-
ization of Rule 41(a) as a categorical rule.
The Trust and May-Loo also argue the district court’s two
prior dismissals of the copyright claims are sufficient to con-
fer prevailing party status on them, relying on Watson v.
County of Riverside, 300 F.3d 1092, 1093 (9th Cir. 2002)
(upholding attorney’s fees award to plaintiff who had
obtained preliminary injunction, but no other relief). Their
reliance on Watson is misplaced. There, plaintiff obtained a
preliminary injunction to prevent his government employer
from presenting certain information at an administrative ter-
mination hearing, but his claim for permanent injunctive relief
became moot when the administrative hearing was completed.
See id. at 1094. “Having succeeded in winning a preliminary
injunction that prevented the use of his report at the adminis-
trative hearing, [plaintiff] obtained significant, court-ordered
relief that accomplished one of the main purposes of his law-
suit.” Id. at 1096. The change in the employer’s behavior
“carrie[d] all the ‘judicial imprimatur’ necessary to satisfy
Buckhannon.” Id.; see also Buckhannon, 532 U.S. at 603(holding “ ‘a prevailing party’ is one who has been awarded
some relief by the court”). In contrast, the Trust and May-Loo
remain subject to the risk that the Cadkins will refile their
8096 CADKIN v. LOOSE
copyright claims, despite the district court’s orders dismissing
without prejudice the original complaint and first amended
complaint and the voluntary dismissal without prejudice of
the second amended complaint. The Cadkins have not been
deprived of the ability to seek relief in federal court against
the Trust and May-Loo under the Copyright Act.
IV. CONCLUSION
Miles and Oscar, taken together, compel the conclusion
that 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. That is not the
circumstance here, so the Trust and May-Loo are not prevail-
ing parties and the district court erred in awarding them attor-
ney’s fees.
REVERSED.