In 'Doo-Wop' Case, 3rd Circuit to Consider 'Prevailing Party' Fees Issue

3rd Circuit to Consider 'Prevailing Party' Fees Issue

Shannon P. Duffy

The Legal Intelligencer

A court battle over modern-day rights to the names of two 1950s doo-wop groups -- The Platters and The Coasters -- has now sparked an appeal that could have far-reaching effects in civil rights litigation.

In Singer Management Consultants Inc. v. Milgram, the 3rd U.S. Circuit Court of Appeals has granted en banc rehearing before a 16-judge court to decide on the proper test for determining when a plaintiff is entitled to attorney fees as the "prevailing party."

The vote to rehear the case en banc was a swift one, and it vacates an Aug. 5 decision that said plaintiffs may be entitled to fees even when a case is declared moot if the presiding judge played a role in persuading government officials to change their legal positions.

A dissenting judge, however, said he believes that a plaintiff never enjoys the status of prevailing party unless he emerges from court with an enforceable order. Apparently that dissenting view has now swayed a majority of the court's judges to vote for rehearing.

The underlying court battle started when New Jersey officials threatened to take action against a music promoter who was selling tickets for an August 2007 concert series in Atlantic City featuring The Platters (best known for "Only You" and "The Great Pretender") and The Coasters (whose greatest hit was "Yakety Yak").

The officials warned that New Jersey's Truth in Music Act prohibits advertising such concerts without identifying it as a "tribute" or "salute." But Live Gold Operations Inc. insisted that it had every right to advertise the two musical groups however it saw fit because it was the rightful owner of the trademarks for both names.

At an emergency injunction hearing, U.S. District Judge Dickinson Debevoise of the District of New Jersey sided with the promoter and issued a TRO that enjoined the state from "interfering in any way" with the concert.

The case was poised to proceed to further injunction hearings, and it seemed at first that the state would be defending its right to enforce the law. In its brief, the state argued that an unregistered trademark satisfied the Truth in Music Act only if the performing group obtained express authorization from an original group member, or included an original member.

When Debevoise made clear that he was rejecting the state's arguments, the state capitulated, effectively adopting Live Gold's interpretation of the law.

Live Gold's lawyer said in the hearing that the state had made "a 180-degree shift in position."

Debevoise agreed and declared that the state would now be "bound" by its newly announced interpretation of the law.

But when Live Gold's lawyers petitioned for attorney fees, Debevoise refused, saying the state's decision to concede the case had left the plaintiff without a judgment in its favor and therefore unable to claim the status of "prevailing party."

On appeal, Live Gold won a ruling on Aug. 5 that said it should be entitled to fees when the 3rd Circuit, by a 2-1 vote, declared that Debevoise was too strict in his reading of the U.S. Supreme Court's 2001 decision in Buckhannon Board and Care Home v. West Virginia Department of Health and Human Resources.

In Buckhannon, the justices declared that a "voluntary change in conduct" lacks the necessary judicial imprimatur, and that a plaintiff does not become a prevailing party solely because his lawsuit causes a voluntary change in the defendant's conduct.

Writing for the majority, Senior Judge Jane R. Roth concluded that Buckhannon did not control because New Jersey did not concede its position until Debevoise made clear that he was poised to rule in Live Gold's favor.

"As a practical matter, the state's unilateral actions mooted Live Gold's claims just when it appeared that the District Court would enter an order in Live Gold's favor," Roth wrote in an opinion joined by Senior Judge Ruggero J. Aldisert.

But in a lengthy dissent, Judge Thomas L. Ambro said he believed his colleagues were wrong to ignore the clear mandate of Buckhannon.

"Because no enforceable judgment on the merits was issued in this case, and the state's actions that mooted the case were voluntary, I believe Buckhannon tells us that Live Gold was not a prevailing party," Ambro wrote.

Live Gold is represented in the appeal by attorney William L. Charron of Pryor Cashman in New York. Assistant Attorney General Jeffrey Koziar argued the appeal for the state.

Charron could not be reached for comment. Koziar declined to comment on the court's vote.