Singer Management Consultants, Inc. v. Milgram

PRECEDENTIAL

UNITED STATES COURT OF APPEALS
FOR THE THIRD CIRCUIT
_______________

No. 09-2238
_______________

SINGER MANAGEMENT CONSULTANTS, INC.;
LIVE GOLD OPERATIONS, INC.,

v.

ANNE MILGRAM,
Attorney General of the State of New Jersey

Live Gold Operations, Inc., Appellant

_______________

On Appeal from the United States District Court
For the District of New Jersey
(D.C. Civil Action No. 2-07-cv-03929)
District Judge: Honorable Dickinson R. Debevoise
_______________

Argued before original panel on November 17, 2009
Petition for Rehearing En Banc granted September 1, 2010
Argued En Banc February 23, 2011
_______________
 Before: McKEE, Chief Judge, SLOVITER, SCIRICA,
RENDELL, BARRY, AMBRO, FUENTES, SMITH,
FISHER, CHAGARES, JORDAN, HARDIMAN,
GREENAWAY JR., VANASKIE, ALDISERT
and ROTH, Circuit Judges

(Opinion filed: June 15, 2011)

William L. Charron, Esquire (Argued)
Pryor Cashman
7 Times Square
New York, NY 10036
Counsel for Appellant

Jeffrey A. Koziar, Esquire
Andrea M. Silkowitz, Esquire (Argued)
Office of Attorney General or New Jersey
124 Halsey Street
P.O. Box 45029
Newark, NJ 07102-0000
Counsel for Appellee
_______________

OPINION OF THE COURT
_______________

AMBRO, Circuit Judge, with whom SCIRICA, RENDELL,
BARRY, FUENTES, SMITH, FISHER, CHAGARES,
JORDAN, HARDIMAN, GREENAWAY, JR., and
VANASKIE, Circuit Judges, join.

Does a party ―prevail‖ within the meaning of 42 U.S.C.
§ 1988 if it obtains a temporary restraining order the day after
it files suit (after a hearing but before briefing from the

2
opposing side), but 22 days later is denied a preliminary
injunction because the opposing party‘s voluntary change of
position moots the case? Because we believe that Supreme
Court precedent requires us to answer no, we affirm the same
determination by the District Court.1

I. Factual Background and Procedural History

Live Gold Operations, Inc. manages and promotes the
music recording and performing groups known as ―The
Platters‖ and ―The Cornell Gunter Coasters‖ pursuant to
licenses of unregistered trademarks. In August 2007, the
State of New Jersey learned that Live Gold had scheduled a
two-week concert, to begin on August 18, of the Platters and
Coasters groups at the Hilton Hotel in Atlantic City. The
State informed Live Gold that its use of the trademarks ―The
Platters‖ and ―The Cornell Gunter Coasters‖ might violate the
New Jersey Truth in Music Act, which provides in pertinent
part:

A person shall not advertise or
conduct a live musical
performance or production
through the use of an affiliation,
connection or association between
the performing group and the
recording group unless:

(a) The performing group is the
authorized registrant and owner of
a federal service mark for the
group registered in the United

1
The District Court had jurisdiction under 28 U.S.C. § 1331.
We have jurisdiction under 28 U.S.C. § 1291.

3
 States Patent and Trademark
Office; or

(b) At least one member of the
performing group was a member
of the recording group and has a
legal right by virtue of use or
operation under the group name
without having abandoned the
name or affiliation of the group;
or

(c) The live musical performance
or production is identified in all
advertising and promotion as a
salute or tribute; or

(d) The advertising does not
relate to a live musical
performance or production taking
place in this State; or

(e) The performance or
production is expressly authorized
by the recording group.

N.J. Stat. Ann. § 2A:32B-2.

Live Gold responded by providing the State with
evidence of its ownership of common law unregistered
trademarks in each group‘s name and asserting that the
unregistered trademarks should be considered ―express
authorizations‖ under subsection (e). Not satisfied that
ownership of an unregistered trademark could comply with
the Truth in Music Act, the State advised the Hilton Hotel
that it could avoid liability under the Act by ticketing and

4
advertising the concert as a ―tribute‖ or ―salute‖ to the
Platters and Coasters groups. Hilton complied.

On August 17, 2007, the day before the first Hilton
concert, Live Gold sued the State, seeking a TRO and
injunctive relief against its enforcement of the Truth in Music
Act in the manner it advised. Live Gold argued, among other
things, that the State‘s enforcement of the Act conflicted with
the federal Lanham Act, 15 U.S.C. § 1125, and violated its
civil rights.

At the TRO hearing before Judge Debevoise, Live
Gold asserted that it had the right to conduct performances
using its unregistered trademarks, and objected to the State‘s
actions that caused the Hilton to label the groups‘
performances inaccurately as ―tributes‖ or ―salutes.‖ The
State responded that, because Live Gold‘s unregistered
trademarks were not ―express authorizations‖ under the Act,
the Hilton concert must be billed as a tribute or salute. Judge
Debevoise expressed doubts about the State‘s position:

That is not what [Live Gold‘s
groups] want to do. That is not
what they say accurately describes
them. So, in effect, the State is
telling the Hilton to advertise or
publicize this event in a way
which is not in accordance with
the description which these
promoters of the events say is
accurate.

...

I think there is sufficient problem
with the State‘s position so that I

5
 – there is a likelihood of success
on the merits in this particular
case.

...

[T]here may be substantial federal
rights being impaired by the
action of the State in this case,
generally, under the statute . . .
important federal rights are at
issue, both freedom of speech
rights under the Lanham Act and
private rights to nonregistered
trademark – trade name.
Consequently, the Temporary
Restraining Order will issue.

...

[W]e‘ll have an opportunity to get
to the merits of this case on
September 7th.

(Emphasis added.) The TRO ―temporarily restrained and
enjoined [the State] from interfering in any way with [the
Hilton concert], and the marketing and promotion thereof.‖

On September 7, 2007, the parties returned to the
District Court for a hearing on the preliminary injunction. In
its written submission prior to the hearing, 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, included an
original member, or denominated itself as a tribute or salute
to the original group. The State contended that its

6
interpretation of the Act was consistent with the Lanham Act,
the First Amendment, and the Equal Protection Clause of the
Fourteenth Amendment. It also objected to Live Gold‘s suit
on jurisdictional grounds.

Judge Debevoise began the preliminary injunction
hearing by asking the State why it insisted on distinguishing
between registered and unregistered trademarks: ―Why
shouldn‘t they proceed on an equal basis, two valid
trademarks?‖ In response, the State contended that because
the Lanham Act accorded a rebuttable presumption of validity
to registered trademarks, its action here against unregistered
trademarks was consistent with federal law. Judge Debevoise
repeatedly rejected this argument, explaining that the
differences under federal law between registered and
unregistered trademarks for purposes of validity did not
authorize the State to discriminate against an unregistered
trademark, once proven valid. ―There‘s no reason for it,‖ he
declared. Nevertheless, the State continued to press its
interpretation of the Truth in Music Act. Judge Debevoise
again rejected the State‘s position, stating, ―Well, I fail to see
it.‖

After rejecting the State‘s arguments, Judge Debevoise
suggested that the State reconcile the Truth in Music Act with
the Lanham Act by interpreting subsection (e) of the former
to permit unregistered trademark holders to perform under
their group names without any additional requirements. The
State suddenly capitulated, effectively adopting Live Gold‘s
interpretation of the Act. Incredulous, Live Gold objected
that the State had made ―a 180 degree shift in position.‖
Judge Debevoise agreed, telling the State that the position in
its brief was ―contrary to what I [just] understood you to say.‖
In response, the State explained that its previous position
―was inadvertently put into the brief.‖ The Judge then

7
declared that the State would be ―bound‖ by its new
interpretation of the Act.

Live Gold then moved for summary disposition,
contending that it ―should win‖ because the State had
―admitt[ed] the allegations‖ in the complaint. Judge
Debevoise observed that the State‘s new position resolved the
―basic legal problem, which was an equal protection problem,
a First Amendment problem, [and] a due process problem.‖
He again took note of the State‘s ―evolved‖ position, but saw
no need to ―go any further.‖ He then announced:

We have a statement by the State
of New Jersey as to what the
meaning of this statute is insofar
as it relates to common law
trademarks, and I think we‘ve
stated it. If there‘s a valid
common law trademark under the
Lanham Act, and if whoever has
possession of it can establish a
right to that possession, he is to be
treated – or she is to be treated in
the same way as the holder of a
registered trademark. Now, no
necessity of – to say or give any
tribute to anybody. So we have
an agreement on that.

The Court then vacated the TRO, which had already expired
―by its own term[s] [after] 10 days, and . . . was directed
primarily to the August performance at the Hilton.‖ Having
secured the State‘s position going forward, Judge Debevoise
left open the option of continuing consideration of the
preliminary injunction, but he found no need to convert the
TRO to a preliminary injunction at that time.

8
 Subsequently, Pryor Cashman LLP sought leave to
move for an award of its attorney‘s fees and costs incurred in
representing Live Gold. The issue was referred to Magistrate
Judge Salas, who denied Pryor Cashman‘s application,
concluding that Live Gold was not a ―prevailing party‖ under
42 U.S.C. § 1988(b) because the State had voluntarily
changed its position on the meaning of the Truth in Music
Act.

Live Gold sought review of Judge Salas‘s order by the
District Court. The State filed a motion to dismiss. Judge
Debevoise addressed both issues in a hearing on March 16,
2009. At that hearing, he first addressed the State‘s motion
to dismiss. Seeking to identify any unresolved constitutional
issues, he asked the State to confirm that ―[e]ven though
literally . . . [the Truth in Music Act] might be interpreted to
exclude [performing groups holding unregistered
trademarks], it doesn‘t really do so and you‘re not
interpreting it to do so.‖ The State concurred, stating that
―[t]he [revised] position we took on September 7, 2007, in
this courtroom, is the position we‘re taking now.‖ Judge
Debevoise then obtained the agreement of all parties that the
preliminary injunction hearing resolved Live Gold‘s
constitutional claims, and asked, ―Why shouldn‘t [Live
Gold‘s complaint] be dismissed, other than [Pryor
Cashman‘s] application for attorney‘s fees?‖ After hearing
Live Gold‘s arguments, he remained unpersuaded, explaining
―I just don‘t know what else there is to address. . . . In effect,
[Live Gold] won the case.‖

Judge Debevoise then turned to Pryor Cashman‘s
application for attorney‘s fees. After hearing from Live Gold,
he asked, ―State, why shouldn‘t you be responsible for
attorney‘s fees[?]‖ In response, the State replied that a fee
award was inappropriate because ―there was no past
enforcement action‖ and because it had never taken any

9
position on the Truth in Music Act. Judge Debevoise
disagreed with the latter contention, reminding the State that
it made a ―180 degree change in position because [it] came in
negating everything that [Live Gold] [was] urging, and in
effect conceded [Live Gold] [was] right, and permitted
everything to go forward.‖ The State again distanced itself
from its initial arguments, explaining that they were ―not . . .
as clear as they could have been‖ because the State was
rushed in responding to the TRO application. The Court took
the matter under advisement.

One month later, Judge Debevoise entered an order
affirming the Magistrate Judge‘s order denying
reimbursement of Live Gold‘s attorney‘s fees and granting
the State‘s motion to dismiss. In his order, Judge Debevoise
held that Live Gold was not a prevailing party because he
―did not enter a preliminary injunction or any other order on
the merits of the case.‖ He also concluded that the State
voluntarily changed its position, stating that ―[w]hile it may
be true that this court‘s involvement aided in the resolution of
the constitutional issues between the parties, the fact remains
that the issues were not resolved as the result of a court
order.‖ In granting the State‘s motion to dismiss, Judge
Debevoise concluded that Live Gold‘s claims were moot in
light of the parties‘ agreement that the preliminary injunction
hearing had resolved all of Live Gold‘s constitutional claims.
In this appeal, Live Gold challenges only the denial of
attorney‘s fees.

II. Governing Precedent

To be eligible to make a prevailing-party claim under
§ 1988, the plaintiff must, ―at a minimum, . . . be able to point
to a resolution of the dispute which changes the legal
relationship between itself and the defendant.‖ Tex. State
Teachers Ass’n v. Garland Indep. Sch. Dist., 489 U.S. 782,

10
792 (1989). The change must be ―judicially sanctioned,‖
Buckhannon Bd. & Care Home v. W. Va. Dep’t of Health &
Human Res., 532 U.S. 598, 605 (2001), and must ―achieve[]
some of the benefit the part[y] sought in bringing suit,‖
Hensley v. Eckerhart, 461 U.S. 424, 433 (1983) (internal
quotation marks and citation omitted). A ―voluntary change
in conduct . . . lacks the necessary judicial imprimatur on the
change.‖ Buckhannon, 532 U.S. 598-99. In other words, ―a
plaintiff does not become a ‗prevailing party‘ solely because
his lawsuit causes a voluntary change in the defendant‘s
conduct.‖ People Against Police Violence v. City of
Pittsburgh, 520 F.3d 226, 232 (3d Cir. 2008) (―PPAV‖).
Rather, the change in the parties‘ legal relationship must be
the product of judicial action. See Buckhannon, 532 U.S. at
605-06.

The Supreme Court so far has identified two
resolutions that establish prevailing party eligibility: (1)
judgments on the merits, and (2) court-ordered consent
decrees (including settlement agreements enforced through
consent decrees). Id. at 604. The first resolution contains
two independent requirements: (1) a judgment (2) that was
on the merits.2

A. The judgment requirement

A grant of summary judgment or a trial verdict in
favor of the plaintiff is no doubt a ―judgment.‖ In contrast, a
court‘s ―judicial pronouncement that the defendant has
violated the Constitution‖ does not create the requisite
―material alteration of the legal relationship between the

2
Live Gold does not argue that the second resolution, ―court-
ordered consent decree,‖ is in play here, nor could it for the
reasons discussed below. See infra note 3.

11
parties . . . until the plaintiff becomes entitled to enforce a
judgment.‖ Farrar v. Hobby, 506 U.S. 103, 112–13 (1992).

Thus, when an appellate court, in reversing the district
court‘s dismissal of the plaintiff‘s claim, ruled that the
plaintiff‘s constitutional rights were violated, the Supreme
Court held that the plaintiff had not ―prevailed‖ because there
was no enforceable judgment. Hewitt v. Helms, 482 U.S.
755, 760 (1987). The only ―relief‖ to the plaintiff from this
appellate victory was ―the moral satisfaction of knowing that
a federal court concluded that his rights had been violated.‖
Id. at 762.

B. The merits requirement

Any judgment must also be ―on the merits.‖ As
recognized by the Supreme Court shortly after § 1988 was
amended to allow attorney‘s fees, ―Congress intended to
permit the interim award of counsel fees only when a party
has prevailed on the merits of at least some of his claims.‖
Hanrahan v. Hampton, 446 U.S. 754, 758 (1980) (per
curiam) (emphases added); see also id. at 757 (―[I]t seems
clearly to have been the intent of Congress to permit such an
interlocutory award only to a party who has established his
entitlement to some relief on the merits of his claims, either in
the trial court or on appeal.‖). Similarly, the Supreme Court
has observed that ―[r]espect for ordinary language requires
that a plaintiff receive at least some relief on the merits of his
claim before he can be said to prevail.‖ Hewitt, 482 U.S. at
760.

Indeed, in an area of the law that ―has been framed in
various ways,‖ Hensley, 461 U.S. at 433, the merits-based
requirement established in Hanrahan and Hewitt has been
consistently repeated throughout the Court‘s ―prevailing
party‖ jurisprudence. See Sole v. Wyner, 551 U.S. 74, 82

12
(2007); Buckhannon, 532 U.S. at 603–04, 608; Farrar, 506
U.S. at 110–12; Garland, 489 U.S. at 790, 792. We have
followed suit to hold that, to be entitled to prevailing party
fees based on interim relief, relief must be ―derived from
some determination on the merits.‖ J.O. v. Orange Twp. Bd.
of Educ., 287 F.3d 267, 274 (3d Cir. 2002).

III. Live Gold did not receive a “judgment on the
merits,” and therefore was not a prevailing party.

A. The temporary restraining order was not
issued on the merits.

In this case, we have a temporary restraining order. In
PAPV, we held that injunctive relief ―can, under appropriate
circumstances, render a party ‗prevailing.‘‖ 520 F.3d at 233.

However, the ―merits‖ requirement is difficult to meet
in the context of TROs and preliminary injunctions, as the
plaintiff in those instances needs only to show a likelihood of
success on the merits (that is, a reasonable chance, or
probability, of winning) to be granted relief. A ―likelihood‖
does not mean more likely than not. Cf. Hackett v. Price, 381
F.3d 281, 290-91 (3d Cir. 2004). Because of this, we have
held that a court‘s finding of ―reasonable probability of
success on the merits‖ is not a resolution of ―any merit-based
issue.‖ John T. v. Del. County, 318 F.3d 545, 559 (3d Cir.
2003) (internal quotation marks and citation omitted). As this
―probability‖ ruling is usually the only merits-related legal
determination made when courts grant TROs and preliminary
injunctions, it follows that parties will not often ―prevail‖
based solely on those events.

Our decision in PAPV provides an example of that rare
situation where a merits-based determination is made at the
injunction stage. There, a rally organizer challenged the

13
constitutionality of an ordinance that required groups to
prepay police protection costs before they could receive a
permit for parades and rallies. PAPV, 520 F.3d at 229. At the
first hearing in the case, the District Court granted the
requested TRO after ―concluding that [the ordinance] ‗was
facially unconstitutional,‘‖ and that, even if the City
voluntarily did not enforce the ordinance (as it had offered to
do), ―a permit regime devoid of any prescribed process would
also be unconstitutional.‖ Id. Therefore, the Court enjoined
the City from enforcing the law, imposed its own temporary
procedures governing permits, and directed the parties to
meet and confer concerning a new proposal. Id. at 229–30.
The City later proposed a revised ordinance, but the Court
found it lacking, converted the TRO to a preliminary
injunction, and requested further briefing. Id. at 230.

The City submitted a second revised ordinance, and in
the meantime formally repealed the unconstitutional
provision. Id. After this repeal, the City moved to dismiss
the suit. Id. The Court denied the motion because no new
procedures had taken the now-repealed ordinance‘s place, and
a lack of guidelines was itself unconstitutional. Id. The
injunction remained in effect for over two years until a new
ordinance was enacted that satisfied the concerns of the
Court. Id. Only then did it lift the injunction and close the
case with the parties‘ agreement. Id.

The legal victories in PAPV are far from the events
now before us. Judge Debevoise here never ruled, as did the
PAPV Court, that the challenged law (or application of the
law) was unconstitutional. Id. at 234. Instead, the TRO was
based only on a ―likelihood of success on the merits.‖3 App.
3
While Judge Debevoise suggested at the TRO hearing that
the State‘s interpretation of the law posed ―a very serious
problem‖ and recognized ―a significant risk there may be

14
187. In PAPV, the TRO prohibited enforcement of the
challenged ordinance and affirmatively created new
procedures to govern the City. The TRO in our case merely
enjoined the State of New Jersey ―from interfering in any way
with live performances by [Live Gold‘s] . . . groups at the
Hilton Hotel in Atlantic City, New Jersey, and the marketing
and promotion thereof.‖ The State remained free to enforce
the Truth in Music Act (so long as it did not interfere with the
Hilton performances).4

substantial federal rights being impaired by the action of the
State,‖ that will be true in almost all of these cases—§ 1988
deals with civil rights cases, which typically involve ―very
serious‖ and ―substantial federal rights.‖ Judge Debevoise
acknowledged that ―the State maybe has some merit to its
position‖ (emphasis added), and stated it could resolve the
merits ―at a later date upon the return day of the Order to
Show Cause.‖
4
Contrary to the concerns expressed by Judge Roth, we do
not mean to ―cast[] doubt‖ on the ―well-supported legal
proposition‖ that, in some cases, interim injunctive relief may
be sufficient to warrant attorney‘s fees. We agree that
―interim relief remains a proper basis for an award of
attorney‘s fees when that relief is based on a determination of
the merits of the plaintiff‘s claims.‖ We emphasize, however,
that the determination must be merits-based, like the PAPV
Court‘s decision that the challenged law in that case was
unconstitutional, and may not be merely a finding of a
likelihood of success on the merits, as in this case.

15
 Therefore, the TRO here was not merits-based.5 As
such, it does not confer eligibility for prevailing party status.
We thus turn to whether anything occurred after the TRO to
resolve the controversy on the merits and render Live Gold
the prevailing party under § 1988.

B. The State’s actions after the TRO issued
were voluntary, and no judgment was issued
on the merits.

There was no determination on the merits in this case
because the State mooted the case at the preliminary
injunction hearing by agreeing with Live Gold‘s position. As
noted, the Supreme Court has identified two formal
resolutions that make a winning attorney eligible for a fee
award: (1) enforceable judgments on the merits, and (2)
court-ordered consent decrees. Buckhannon, 532 U.S. at 604.
Buckhannon characterized these two resolutions as
―examples‖ of decisions that create the necessary material
alteration of the legal relationship of the parties. Id. at 604–
05. There may be resolutions other than the two identified in
Buckhannon that warrant prevailing party status (although the
Supreme Court has yet to identify any). But even if they are

5
Judge Roth argues that the TRO was a ―functional
determination on the merits‖ because it ―protected Live Gold
from a potential enforcement action by the State‖ and allowed
the concert series to proceed without being labeled a
―tribute.‖ Thus, she contends, ―Live Gold had largely
obtained the relief it requested.‖ While this has surface
appeal, the Supreme Court has told us it is not enough. As we
have explained, Live Gold did not obtain a judgment on the
merits of its claim. Without that, it is simply not entitled to
attorney‘s fees.

16
merely examples, Buckhannon precludes the events in this
case from qualifying as a third form of resolution that can
support prevailing party status.

Some background helps to understand the sea change
caused by Buckhannon in this area of the law. Prior to that
decision, the rule in most circuits was that a plaintiff was a
―prevailing party‖ if it ―achieve[d] the desired result because
the lawsuit brought about a voluntary change in the
defendant‘s conduct.‖ Id. at 601–02. This became known as
the ―catalyst theory.‖ Id.

For example, we held pre-Buckhannon that a plaintiff
who could ―prove that the existence of the lawsuit
accomplished the original objectives of the lawsuit without a
formal judgment c[ould] be a ‗prevailing party.‘‖
Baumgartner v. Harrisburg Hous. Auth., 21 F.3d 541, 544
(3d Cir. 1994), overruled by Buckhannon, 532 U.S. at 602–
05. We applied the ―well-established‖ catalyst theory to
allow attorney‘s fees when defendants ―voluntarily changed
their behavior to eliminate the complained-of conduct.‖ Id.
To support this theory, we relied in part on the policy
consideration that ―if defendants could deprive plaintiffs of
attorney‘s fees by unilaterally mooting the underlying case by
conceding to plaintiffs‘ demands, attorneys might be more
hesitant about bringing these civil rights suits, a result
inconsistent with Congress‘ intent in enacting section 1988.‖
Id. at 548. Thus, we held that plaintiffs could be prevailing
parties ―notwithstanding the absence of a judgment or consent
decree‖ so long as they ―accomplished the original objectives
of the lawsuit.‖ Id. at 544, 551.

Were this the law governing us today, we would hold
the prevailing party requirement satisfied, as Live Gold
accomplished its objectives by filing a lawsuit that
―catalyzed‖ the State to change its position voluntarily. In

17
Baumgartner it did not matter that there was no judgment or
consent decree; because the ―existence of the lawsuit
accomplished the original objectives of the lawsuit,‖
attorney‘s fees would be warranted. Id. at 544.

But Buckhannon overruled Baumgartner, and the latter
is no longer the law. In Buckhannon, the Supreme Court
reiterated that theretofore it had ―only awarded attorney‘s
fees‖ when the plaintiff obtained a ―judgment on the merits‖
or a ―court-ordered consent decree.‖ 532 U.S. at 605. It had
not awarded attorney‘s fees under the following
circumstances: where the plaintiff acquired a ―judicial
pronouncement that the defendant has violated the
Constitution unaccompanied by ‗judicial relief,‘‖ id. at 606
(quoting Hewitt, 482 U.S. at 760) (emphasis in original);
where the plaintiff ―secured the reversal of a directed
verdict,‖ id. at 605–06 (citing Hanrahan, 446 U.S. at 759); or
where there was a ―nonjudicial alteration of actual
circumstances,‖ id. at 606 (citation omitted) (internal
quotations marks omitted). The ―catalyst theory‖ was added
to this list, as there is no ―judicially sanctioned change‖ in the
parties‘ ―legal relationship.‖ Id. at 605. ―A defendant‘s
voluntary change in conduct, although perhaps accomplishing
what the plaintiff sought to achieve by the lawsuit, lacks the
necessary judicial imprimatur on the change.‖ Id. Thus, the
Supreme Court concluded, ―the ‗catalyst theory‘ is not a
permissible basis for the award of attorney‘s fees . . . .‖ Id. at
610.

In so holding, it considered the same policy argument
we raised in Baumgartner—that without the catalyst theory
―defendants [could] unilaterally moot[] an action before
judgment in an effort to avoid an award of attorney‘s fees‖—
but was not swayed. Buckhannon, 532 U.S. at 608–09. Thus,

18
however persuasive that argument may seem, it cannot
influence our decision here.6

* * * * *

The TRO Live Gold obtained was plainly not a
―judgment on the merits.‖ Judge Debevoise, who entered the
TRO, certainly did not think so. At the preliminary
injunction hearing the State chose to agree with the position
pressed by the plaintiff. As that agreement resolved the
constitutional issues, the case was mooted. Even if there are
circumstances where a ―judgment on the merits‖ or a ―court-
ordered consent decree‖ is not required for prevailing-party
status, Buckhannon prevents the events in this case from
qualifying.

Because no enforceable judgment on the merits issued
in this case and the State‘s actions that mooted the case were
voluntary, Buckhannon tells us that Live Gold was not a
prevailing party. Given that precedent, we affirm.

6
We doubt that the consequences of our decision today will
be nearly as severe as Judge Aldisert foreshadows. In any
event, our job is to follow Supreme Court precedent. Judge
Aldisert writes about what the law should be, but we must
deal with what the law is.

19
 Singer Management Consultants, Inc. v. Milgram

No. 09-2238

ROTH, Circuit Judge, dissenting, with whom McKEE, Chief
Judge, SLOVITER and ALDISERT, Circuit Judges, join.

“When does a party „prevail‟ within the meaning of 42
U.S.C. § 1988?” That is the basic question that both parties
here are asking. The Majority qualifies the question by
referring to certain facts of record: “Does a party „prevail‟ if
it obtains a temporary restraining order the day after it files
suit . . . but 22 days later is denied a preliminary injunction
because the opposing party‟s voluntary change of position
moots the case?” The Majority answers “No” to the question.

I would add different facts to the basic question – and,
by doing so, I arrive at a different answer. My “different”
qualifying facts are clearly found in the record of this case.
Moreover, my facts support a finding of “prevailing party.”

I acknowledge that the qualifying facts that the
Majority depends upon are reflected in the record before us.
As the Majority states, there was a temporary restraining
order (TRO) granted. The Majority does not mention,
however, that the TRO granted a large part of the relief
plaintiffs sought.

Again, as the Majority states, there was no preliminary
injunction (PI) granted when the parties returned for the
September 7 hearing. But, insofar as Live Gold was asking to
enjoin the State‟s interference with the August concert, the
issue was moot. The concert had been performed as Live
Gold requested, that relief had been granted, and there was no
further need to consider it. The issue remaining was whether
the State would attempt to force other concerts by the holder
of a valid common law trademark to be designated as
“tributes” or “salutes.” The State agreed that it would not
apply the Act in such a way. Moreover, the PI, which would
have addressed this issue, was not dismissed out of hand. The
court left open the option of continuing consideration of the
PI at a later time if necessary, explaining “[s]o I‟m not setting
a date, I‟m vacating the temporary restraining order, and if
there‟s any serious problems that arise which the plaintiffs
think require emergent relief, they can ask for it to be
rescheduled on short notice.” (App. 389.) That the court felt
that such relief would not be necessary is evident from the
fact that the court had declared that the State would be
“bound by” the State‟s new interpretation of the Act. (App.
387.) The court saw no need to “go any further.” (App.
388.)

The court took note of the State‟s “evolved” position
and then stated:

We have a statement by the State of New Jersey
as to what the meaning of this statute is insofar
as it relates to common law trademarks, and I
think we‟ve stated it. If there‟s a valid common
law trademark under the Lanham Act, and if
whoever has possession of it can establish a
right to that possession, he is to be treated – or
she is to be treated in the same way as the
holder of a registered trademark. Now, no

2
 necessity of – to say or give any tribute to
anybody. So we have an agreement on that.

(App. 388.) There was no dissent.

This conclusion by the court, that a valid common law
trademark was to be recognized in the same way as a
registered trademark, was the merits question put to the court
by Live Gold – and the State of New Jersey was now bound
in this action by this legal conclusion. I cannot imagine that
the State would dare come again before the District Court and
take any position contrary to the ruling of the court: “So we
have an agreement on that.” Nor, as I discuss later, would the
State be in the position to contend in any future action before
the New Jersey District Court that a valid common law
trademark was not to be accorded the same recognition as a
registered one. If it did so, the State would be barred by
judicial estoppel.

With these facts in mind, I state my question as
follows: “Does a party „prevail‟ under the meaning of 42
U.S.C. § 1988 when it has obtained a TRO, granting an
important part of the relief sought, and further when its
opponent has been bound by the District Court to the position
of law that grants complete relief on the merits of the
complaint.” I answer “Yes.” I conclude from this factual
setting, supported by the record, that Live Gold is clearly a
prevailing party and, thus, deserves an award of its reasonable
attorney‟s fees.

Moreover, this conclusion is within the boundaries of
“prevailing party” as the Supreme Court has set them out.
First, I agree with the Majority that the Court points to two

3
types of outcomes – judgments on the merits and consent
decrees – that confer prevailing party status, and it cites one
outcome – a voluntary change in conduct as a result of
litigation – that does not. Buckhannon Bd. & Care Home,
Inc. v. W. Va. Dep’t of Health & Human Res., 532 U.S. 598,
603-05 (2001). Nevertheless, as the Majority concedes, the
Court has left the door open to other, yet to be defined, results
that may confer prevailing party status. See ante, 16-17.

The Court has articulated two factors relevant to the
prevailing party inquiry: (1) whether there is a “judicially
sanctioned change in the legal relationship of the parties,” id.
at 603, that “achieves some of the benefit the part[y] sought
in bringing suit,” Hensley v. Eckerhart, 461 U.S. 424, 433
(1983) (internal quotation marks and citation omitted), and
(2) whether the party “receive[s] at least some relief on the
merits of his claims,” Buckhannon, 532 U.S. at 604 (“„It
seems clearly to have been the intent of Congress to permit . .
. an interlocutory award only to a party who has established
his entitlement to some relief on the merits of his claims,
either in the trial court or on appeal.‟” (quoting Hanrahan v.
Hampton, 446 U.S. 754, 757 (1980))).

The Majority contends, however, that Live Gold did
not receive a judgment on the merits. The Majority does
agree that the TRO Live Gold obtained constituted a
judgment and that injunctive relief “can, under appropriate
circumstances, render a party „prevailing.‟” See ante, 13
(quoting People Against Police Violence v. City of Pittsburgh
(PAPV), 520 F.3d 226, 233 (3d Cir. 2008)). But, I part ways
with the Majority on its conclusion that the TRO here was not
a resolution on the merits.

4
 I find it clear that the TRO obtained by Live Gold was
a “judicially sanctioned change in the legal relationship”
between Live Gold and the State of New Jersey. The TRO
allowed Live Gold to achieve much of the benefit it sought in
bringing suit and provided some relief on the merits of its
claims. Before the TRO hearing, New Jersey indicated that
Live Gold could be penalized if the Platters and the Coasters
were not billed as “tribute” bands. After the District Court
issued the TRO, the bands were permitted to perform under
the names “Platters” and “Coasters” without modifiers like
“tribute” or “salute to,” and the State was prohibited from
penalizing Live Gold for doing so.

Perhaps, the Majority balks at the straightforward
conclusion that there was relief here on the merits because it
fears that “consent decrees” and “judgments on the merits,”
or their equivalents, are the only types of outcomes that
confer prevailing party status. However, as the Majority
seems to concede, there is little doubt that a plaintiff who
gains preliminary relief may be a prevailing party. The
Supreme Court has not disturbed the longstanding rule that
“„plaintiffs may be considered „prevailing parties‟ for
attorneys‟ fees purposes if they succeed on any significant
issue in litigation which achieves some of the benefit the
parties sought in bringing suit,‟” Farrar v. Hobby, 506 U.S.
103, 109 (1992) (quoting Hensley, 461 U.S. at 433), as long
as the relief obtained provides at least some relief on the
merits, see Buckhannon, 532 U.S. at 604, and consists of a
judicially sanctioned change in the legal relationship of the
parties, see Rhodes v. Stewart, 488 U.S. 1, 4 (1988) (per
curiam) (plaintiff not prevailing party where declaratory

5
judgment was entered after his death and thus could not
change his legal relationship to defendants).1

Moreover, the precedent of this Circuit – and that of
every other circuit but one – is clear that interim injunctive
relief can, in appropriate cases, constitute a “court-ordered
change in the legal relationship between the plaintiff and the
defendant” to confer prevailing party status. See PAPV, 520
F.3d at 232-33 (concluding that “relief on the merits achieved
in the form of a preliminary injunction can confer „prevailing
party‟ status”) (internal quotations omitted).2 The Majority‟s

1
Farrar makes clear that the benefit need not be
significant. There, the Court held that a plaintiff awarded
nominal damages is a prevailing party, because the award
“modifies the defendant‟s behavior for the plaintiff‟s benefit
by forcing the defendant to pay an amount of money he
otherwise would not pay.” 506 U.S. at 113.
2
Accord McQueary v. Conway, 614 F.3d 591, 596-602
(6th Cir. 2010) (opining on whether granting a preliminary
injunction may render a party prevailing always, sometimes,
or never, and favoring an award when the interim relief
indicates probable success on the merits and effects “a lasting
change in the legal relationship between the parties”);
Lorillard Tobacco Co. v. Engida, 611 F.3d 1209, 1217 (10th
Cir. 2010) (“[T]o be a prevailing party on the basis of a
preliminary injunction requires „relief on the merits‟ . . . .”);
Garcia v. Yonkers Sch. Dist., 561 F.3d 97, 102 (2d Cir. 2009)
(“the entry of an enforceable judgment, such as a stay or
preliminary injunction, may permit the district court to confer
prevailing-party status on the plaintiff notwithstanding the
absence of a final judgment on the underlying claim”);
Common Cause/Ga. v. Billups, 554 F.3d 1340, 1355-56 (11th

6
Cir. 2009) (awarding prevailing party status to plaintiffs that
had obtained a preliminary injunction, but were later denied a
permanent injunction as a result of intervening legislation);
Dearmore v. City of Garland, 519 F.3d 517, 524-26 (5th Cir.
2008) (noting the absence of Supreme Court authority on
point and variety in the circuits‟ handling of the issue and
applying its own three-part test to find that granting a
preliminary injunction conferred prevailing party status);
Advantage Media, LLC v. City of Hopkins, 511 F.3d 833, 837
(8th Cir. 2008) (recognizing “a preliminary injunction can in
some instances carry the judicial imprimatur required by
Buckhannon to convey prevailing party status,” but finding
that final judgment in the case before it reversed the effect of
the preliminary injunction); Dupuy v. Samuels, 423 F.3d 714,
723, 723 n.4 (7th Cir. 2005) (affirming that a preliminary
injunction may justify an award of attorney‟s fees based on
prevailing party status); Watson v. Cnty. of Riverside, 300
F.3d 1092, 1096 (9th Cir. 2002) (“A preliminary injunction
issued by a judge carries all the „judicial imprimatur‟
necessary to satisfy Buckhannon.”); Race v. Toledo-Davilla,
291 F.3d 857, 859 (1st Cir. 2002) (“an individual may be
entitled to attorney‟s fees without having obtained a favorable
final judgment following a full trial on the merits, but he must
obtain relief based on the merits of at least some of his
claims.”) (internal citations and quotations omitted)); but see
Smyth v. Rivero, 282 F.3d 268, 274-78 (4th Cir. 2002)
(expressing doubts as to whether a preliminary injunction
may confer prevailing party status); cf. PAPV, 520 F.3d at
232-33, 233 n.4 (noting that the Fourth Circuit is the “only
one arguably dissenting Court of Appeals” (citing Smyth, 282
F.3d at 276-77)).

7
analysis casts doubt upon this well-supported legal
proposition. I hope, however, that this Court will continue to
recognize that interim relief remains a proper basis for an
award of attorney‟s fees when that relief is based on a
determination of the merits of a plaintiff‟s claim.

Furthermore, the Majority‟s conclusion that the TRO
in this case was not granted “on the merits” suffers from the
failure of the Majority to offer a definition or test for when a
decision is “on the merits” in a case involving the grant of
preliminary relief. Rather, the Majority states merely that
“the „merits‟ requirement is difficult to meet in the context of
TROs and preliminary injunctions,” and that the “decision in
PAPV provides an example of that rare situation where a
merits-based determination is made at the injunction stage.”
Ante, 13. This conclusion is confusing in light of the
Majority‟s acknowledgment that to obtain a TRO or
preliminary injunction, the plaintiff needs to “show a
likelihood of success on the merits.” Id.; see also Munaf v.
Geren, 553 U.S. 674, 690 (2008). One would expect that
when a plaintiff makes a sufficient showing of likelihood of
success on the merits to obtain “an „extraordinary and drastic
remedy,‟” a remedy that is “never awarded as of right,”
Munaf, 533 U.S. at 689-90, this victory would frequently
result in prevailing party status. 3

3
The Majority attempts to evade this common-sense
conclusion by mistakenly arguing that “„likelihood‟ does not
mean more likely that than not.” Ante at 13 (citing Hackett v.
Price, 381 F.3d 281, 290-91 (3d Cir. 2004).) But Hackett
was not a preliminary injunction case – it was a habeas case
concerning the constitutionality of jury instructions at the
penalty phase of a capital case, where the question was

8
 Instead, the Majority argues that a preliminary
injunction reflects a determination on the merits only in a
case like PAPV, where the court granted a preliminary
injunction lasting two years, and stated that the challenged
statute was “facially unconstitutional.” While it was clear in
PAPV that the District Court‟s determination was “on the
merits,” I disagree with the Majority‟s suggestion that such
elaboration of facts is required. This Court‟s post-
Buckhannon precedents have never applied such a standard.
Rather, in J.O. v. Orange Twp., we stated simply that
plaintiffs “who achieve favorable interim relief may be
entitled to prevailing party attorney‟s fees as long as the
interim relief granted derived from some determination on the
merits.” 287 F.3d 267, 274 (3d Cir. 2002) (emphasis added).
Contrary to the Majority‟s reasoning, PAPV did not
distinguish “reasonable probability” from “more likely than
not,” nor did it consider whether the district court had found
that the plaintiffs were more likely than not to prevail on their

“whether there is a reasonable likelihood that the jury has
applied the challenged instruction in a way that prevents the
consideration of constitutionally relevant evidence.” Id. at
290. Hackett acknowledged that “[a]s one definition of
„likely‟ is „having a better chance of existing or occurring
than not,‟ Webster’s Third New International Dictionary
1310 (1971), someone could plausibly argue that „reasonable
likelihood‟ is not a lesser standard than „more likely than
not.‟” Indeed, “courts use a bewildering variety of
formulations of the need for showing some likelihood of
success.” 11A CHARLES ALAN WRIGHT & ARTHUR R.
MILLER, FEDERAL PRACTICE AND PROCEDURE § 2948.3 (2d.
ed. 2010).

9
claims. It simply noted that, as was the case here, the grant of
preliminary injunctive relief reflected a “finding of a
likelihood of plaintiff‟s success on the merits.” Id. at 233.

I submit that the proper test to determine whether
interim relief is on the merits is to distinguish (1) whether the
relief is a “„stay put‟ order[] which merely serve[s] to
maintain the status quo pendente lite” and which “do[es] not
afford meaningful relief on the merits of the underlying
claims,” PAPV, 520 F.3d at 226 (citing John T. ex rel. Paul T.
v. Del. Cnty. Intermediate Unit, 318 F.3d 545, 558-59 (3d Cir.
2003)), or (2) whether the relief “placed a judicial imprimatur
on plaintiffs‟ entitlement to substantially all the relief they
sought in the complaint.” 520 F.3d at 233.4

4
We address temporary restraining orders and
preliminary injunctions together, as the two share nearly
identical factors which courts evaluate in granting such
interim relief and, in certain circumstances, have identical
legal effect. See Miller v. Mitchell, 598 F.3d 139, 145 (3d
Cir. 2010). The most significant differences are that
temporary restraining orders may be issued with little or no
notice and may dissolve on their own accord. Id. (discussing
Fed. R. Civ. P. 65(b)(2)). Nevertheless, temporary restraining
orders, like preliminary injunctions, may touch on the merits
of a case to sufficiently alter the legal relationship between
parties to confer prevailing party status. See Fed. R. Civ. P.
54(a) (“„Judgment‟ as used in these rules includes a decree
and any order from which an appeal lies.”); Robinson v.
Lehman, 771 F.2d 772, 782 (3d Cir. 1985) (“The denial of a
temporary restraining order is not generally appealable unless
its denial decides the merits of the case or is equivalent to a
dismissal of the claim.”).

10
 Several circuits, in considering this issue, have adopted
similar rules. See, e.g., Garcia v. Yonkers Sch. Dist., 561
F.3d 97, 106 (2d Cir. 2009) (“a plaintiff‟s request for a
temporary restraining order may be sufficient grounds to
grant attorney‟s fees to the plaintiff pursuant to 42 U.S.C. §
1988(b)[,]” as long as the temporary restraining order
addresses the merits of the case and does not “merely
maintain[] the status quo”); Dearmore v. City of Garland, 519
F.3d 517, 524 (5th Cir. 2008) (“Under these facts, to qualify
as a prevailing party under § 1988(b), we hold that the
plaintiff (1) must win a preliminary injunction, (2) based
upon an unambiguous indication of probable success on the
merits of the plaintiff‟s claims as opposed to a mere balancing
of the equities in favor of the plaintiff, (3) that causes the
defendant to moot the action, which prevents the plaintiff
from obtaining final relief on the merits.”); N. Cheyenne
Tribe v. Jackson, 433 F.3d 1083, 1086 (8th Cir. 2006) (noting
that “some preliminary injunctions are sufficiently akin to
final relief on the merits to confer prevailing party status,”
whereas others that “merely maintain[] the status quo do[] not
confer prevailing party status”); Dubuc v. Green Oak Twp.,
312 F.3d 736, 753 (6th Cir. 2002) (concluding that granting a
preliminary injunction may confer prevailing party status if
the injunction represents “an unambiguous indication of
probable success on the merits, and not merely a maintenance
of the status quo ordered because the balance of equities
greatly favors the plaintiff” (internal quotation omitted)).

This well-established rule has several advantages.
First, it properly focuses the inquiry on whether the plaintiff
obtained relief based on the merits of its claims rather than
other interim relief factors. Compare PAPV, 520 F.3d at 232-

11
33 (noting district court‟s repeated findings of
unconstitutionality) with John T. v. Del. Cnty. Intermediate
Unit, 318 F.3d 545, 556 (3d Cir. 2003) (noting that TRO was
merely to preserve status quo so that court could consider the
merits of plaintiff‟s claims).

Second, this rule avoids the concerns voiced in
Buckhannon and by the Majority that the catalyst theory is
being revived: the test focuses on the nature of the district
court‟s findings, not the defendant‟s response to those
findings or its motivations.

Third, this rule promotes judicial efficiency in a
significant class of civil rights cases where the plaintiff
essentially challenges government policies prohibiting a
discreet course of action in the future, such as advertising for
a concert or demonstrating in front of city hall. The practical
reality in such cases is that a TRO or preliminary injunction
that enables the plaintiff to do what it wants to do, i.e.,
advertise for a concert or demonstrate, is often all the relief
the plaintiff wants or needs. It may be counterproductive and
wasteful of judicial resources to require a plaintiff to insist on
a final order that it no longer needs before it can be
considered a prevailing party and obtain attorney‟s fees.

When the proper test is applied, it becomes clear that
the TRO granted to Live Gold provided “at least some relief
on the merits of . . . [the] claims,” Buckhannon, 532 U.S. at
604. In PAPV, this Court emphasized that:

(1) the trial court, based upon a finding of a
likelihood of plaintiffs‟ success on the merits,
entered a judicially enforceable order granting

12
 plaintiffs virtually all the relief they sought,
thereby materially altering the legal relationship
between the parties; (2) the defendant, after
opposing interim relief, chose not to appeal
from that order and remained subject to its
restrictions for a period of over two years; and
(3) the defendant ultimately avoided final
resolution of the merits of plaintiffs‟case by
enacting new legislation giving plaintiffs
virtually all of the relief sought in the
complaint.

520 F.3d at 233.

The result here is substantially similar: the District
Court found that Live Gold was likely to succeed on the
merits of its claims, it entered a TRO affording Live Gold the
most significant relief it sought, the right to advertise and to
present the August concert outright, and not as a “tribute.” As
a result, the State was “temporarily restrained and enjoined
from interfering in any way with live performances by
Plaintiffs‟ respective groups at the Hilton Hotel in Atlantic
City, New Jersey, and the marketing and promotion thereof.”
(App. 190.) The District Court clearly indicated that it
considered the merits of the substantive legal issues during
the TRO hearing and granted the TRO in light of its view on
those issues:

I think there is sufficient problem with the
State‟s position so that I – there is a likelihood
of success on the merits in this particular case.
...

13
 [T]here may be substantial federal rights being
impaired by the action of the State in this case,
generally, under the statute . . . important
federal rights are at issue, both freedom of
speech rights under the Lanham Act and private
rights to nonregistered trademark – trade name.
Consequently, the Temporary Restraining Order
will issue.

(App. 187-88.)

The District Court‟s statement that it will “have an
opportunity to get to the merits of this case on September 7th
[at the preliminary injunction hearing]” does not nullify its
determination on the merits that the August concert proceed
as Live Gold requested; it indicates only that the court
planned to consider whether Live Gold deserved further relief
for future concerts.

In addition, the TRO obtained in this case cannot be
characterized as a “stay put” order or relief pendent lite.
Rather, in the present case, the District Court‟s issuance of a
TRO effectively gave Live Gold a complete victory on one
important issue in the litigation. The musical groups being
promoted by Live Gold – “The Platters” and “The Cornell
Gunter Coasters” – were scheduled for a two-week
engagement at the Hilton Hotel to begin on August 18. On
August 17, the day before the first Hilton concert, Live Gold
sought and obtained the TRO preventing the State from
enforcing the Truth in Music Act in relation to the
performances at issue. By the time Live Gold and the State
returned to court on September 7, for a hearing on the
preliminary injunction, the concert series had already

14
concluded – and not as a “tribute.” Thus, at that point, the
TRO had protected Live Gold from a potential enforcement
action by the State, and Live Gold had largely obtained the
relief it requested.

In this light, the TRO Live Gold obtained was a
functional determination on the merits. It exalts form over
substance to claim, as the Majority does, that Live Gold has
not succeeded on the merits when what Live Gold wanted to
do was to promote and present without interference from the
State musical groups for which it held a valid common law
trademark. The District Court issued a TRO – clearly
premised on the merits of the claims at issue – compelling the
State to permit Live Gold to do just that. In this case, Live
Gold fits comfortably within “our respect for [the] ordinary
language” definition of “prevailing party.” Buckhannon, 532
U.S. at 603.

In addition to the judicial order here, the District Court
permanently altered the legal relationship between the parties.
The court‟s statement that the State would be “bound” by its
new interpretation of the Act should bar the State from taking
any inconsistent positions in future litigation because of the
doctrine of judicial estoppel. Judicial estoppel is an equitable
doctrine that entails “„the intrinsic ability of courts to dismiss
an offending litigant‟s complaint without considering the
merits of the underlying claims when such dismissal is
necessary to prevent a litigant from playing fast and loose
with the courts.‟” In re Kane, 628 F.3d 631, 638 (3d Cir.
2010) (quoting Krystal Cadillac-Oldsmobile GMC Truck, Inc.
v. Gen. Motors Corp., 337 F.3d 314, 319-20 (3d Cir. 2003)).
“[T]he basic principle of judicial estoppel . . . is that absent
any good explanation, a party should not be allowed to gain

15
an advantage by litigation on one theory, and then seek an
inconsistent advantage by pursuing an incompatible theory.”
Krystal Cadillac, 337 F.3d at 319 (quoting Ryan Operations
G.P. v. Santiam-Midwest Lumber Co., 81 F.3d 355, 358 (3d
Cir. 1996)). “Though there is no rigid test for judicial
estoppel, three factors inform a federal court‟s decision
whether to apply it: there must be (1) „irreconcilably
inconsistent positions;‟ (2) „adopted . . . in bad faith;‟ and (3)
„a showing that . . . estoppel . . . address[es] the harm and . . .
no lesser sanction [is] sufficient.‟” G-I Holdings, Inc. v.
Reliance Ins. Co., 586 F.3d 247, 262 (3d Cir. 2009) (quoting
Chao v. Roy’s Constr., Inc., 517 F.3d 180, 186 n.5 (3d Cir.
2008)).

Here, once the State had reversed course and accepted
that a valid common law trademark must be treated in the
same way as a registered trademark, the State would be
judicially estopped from adopting a contrary interpretation of
the Act in any subsequent judicial proceeding and certainly in
any proceeding against Live Gold. This is the significance of
the District Court‟s statement that the State was “bound” to
its new interpretation. Moreover, it showed that the District
Court must have relied on this commitment by the State when
the court did not enter a permanent injunction against the
State. If the State were to assert again that the Truth in Music
Act does not recognize valid common law trademarks, it
would be asserting an inconsistent position in presumptive
bad faith after already having conceded the wrongfulness of
such an assertion. Judicial estoppel, therefore, would apply to
prevent the State from perpetuating a fraud on the court. See
New Hampshire, 532 U.S. at 751 (noting that a court
addressing judicial estoppel should consider “whether the
party seeking to assert an inconsistent position would derive

16
an unfair advantage or impose an unfair detriment on the
opposing party if not estopped”).

In conclusion, we see that the District Court‟s binding
of the State resulted in “a court-ordered „chang[e] [in] the
legal relationship between [the plaintiff] and the defendant‟”
necessary to permit an award of attorney‟s fees. Buckhannon,
532 U.S. at 604. In this sense, the State‟s voluntary
concession and the District Court‟s “binding” of the State to
that position would prevent the State from taking contrary
positions in future litigation; it can be analogized to the
voluntary action of a consent decree: in both instances,
voluntary conduct formalized by a court results in a material
alteration in the legal relationship between the parties.

Moreover, requiring a party to go further than Live
Gold did in this case by obtaining a judgment or consent
decree would endanger the practical, efficient, and informal
resolution achieved by the District Court in this case. I
suspect that Live Gold would never have accepted the District
Court‟s resolution of the case in the way it did if it had it
known that it would not be a prevailing party. Live Gold
would have insisted on greater judicial formalization of the
change in the State‟s position, a consent decree, or the like.
The Majority‟s insistence on a “judgment,” rather than
Buckhannon‟s broader “judicial imprimatur,” will only
unnecessarily drag out cases and lead to judicial inefficiency.
The essential question in the prevailing party inquiry is
whether the party has obtained a judicial alteration of the
legal relationship between the parties. Live Gold certainly
accomplished that.

17
 Under these circumstances, an award of attorney‟s fees
is consistent with Supreme Court precedent, see Buckhannon,
532 U.S. at 603, and required by this Court‟s precedent, see
PAPV, 520 F.3d at 232-33.

For the reasons set forth above, I respectfully dissent.
I would confer prevailing party status to Live Gold and award
it its attorney‟s fees.

18
Singer Management Consultants, Inc.; Live Gold Operations,
Inc. v. Annie Milgram, No 09-2238

ALDISERT, Circuit Judge, dissenting.

As I join in all respects the dissenting opinion of Judge
Roth, I deem it necessary to add these observations regarding
civil rights cases proceeding under 42 U.S.C. §§ 1983 and
1988. How a judge applies the Supreme Court‘s decision in
Buckhannon Board & Care Home, Inc. v. West Virginia
Department of Health & Human Resources, 532 U.S. 598
(2001), to this case depends on the judge‘s philosophy of law,
jurisprudence, and jurisprudential temperament, which inform
the decision to come to grips with whether or not an action is
―judicially sanctioned.‖ The Majority holds that the decisions
of the trial judge on the record in this case did not qualify as
―judicially sanctioned‖ actions. I am equally convinced that
they did.

Before setting forth detailed support for my view, it is
necessary to emphasize the specific holding or decision of the
Court in Buckhannon because it is the decision, and not the
reasoning, that forms the precedent. The expression stare
decisis is but an abbreviation of stare decisis et non quieta
movere (to stand by or adhere to decisions and not disturb
that which is settled). ―Decisis‖ means, literally and legally,
―the decision.‖ The doctrine is not ―stare dictis‖ (―to stand by
or keep to what was said‖). Nor is the doctrine stare
rationibus decidendi (―to keep to the reasoning of past
cases‖). Rather, a case is important for what it decides: for
―the what,‖ not ―the why,‖ and not ―the how.‖ Thus, stare
decisis means what the court did, not what it said.

1
 The Court in Buckhannon stated: ―we hold that the
‗catalyst theory‘ is not a permissible basis for the award of
attorney‘s fees under the [Fair Housing Amendments Act of
1988, or the Americans with Disabilities Act of 1990].‖ 532
U.S. at 610. Earlier, the Court had explained that attorney
fees should not be awarded pursuant to the catalyst theory
because that theory ―allows an award where there is no
judicially sanctioned change in the legal relationship of the
parties.‖ Id. at 605. Thus, the issue for decision in this case is
whether there was such judicially sanctioned change.

Today the Majority makes clear that the Supreme
Court has not precluded the possibility that a ―judicially
sanctioned‖ change may include events other than a judgment
on the merits or a consent decree:

As noted, the Supreme Court has identified two
formal resolutions that make a winning attorney
eligible for a fee award: (1) enforceable
judgments on the merits, and (2) court-ordered
consent decrees. Buckhannon, 532 U.S. at 604.
Buckhannon characterized these two resolutions
as ―examples‖ of decisions that create the
necessary material alteration of the legal
relationship of the parties. Id. at 604–05. There
may be resolutions other than the two identified
in Buckhannon that warrant prevailing party
status (although the Supreme Court has yet to
identify any).

Maj. Op. at 16. To hold as does the Majority that ―[b]ecause
no enforceable judgment on the merits was issued in this case,
and the State‘s actions that mooted the case were voluntary,

2
Buckhannon tells us that Live Gold was not a prevailing
party,‖ Maj. Op. at 19, is to apply a philosophy of
jurisprudence no longer in general acceptance—conceptual
jurisprudence, a philosophy that preaches that a principle, if
sound, ought to be applied wherever it logically leads,
without reference to ulterior results—and wholly
inappropriate for cases that touch upon civil rights.

Without a nod to the effects on future civil rights
cases, the Majority fashioned a major stumbling block to
success for civil rights plaintiffs in cases based on § 1983.
The plaintiff here was: (1) victorious on the merits in
obtaining a temporary restraining order, duly recorded and
altering the position of the parties, and (2) able to persuade
the District Court at the preliminary injunction hearing that
formal registration of their mark was unnecessary. That the
District Court told the plaintiff, ―in effect [you‘ve] won the
case,‖ shows that Live Gold was, in effect, the prevailing
party on the merits.
I.

I am proud of this Court‘s civil rights history from as
far back as 1939, when this Court upheld First and Fourth
Amendments rights in Hague v. Committee of Industrial
Organization, 101 F.2d 774 (3d Cir. 1939), aff‘d and
modified, 307 U.S. 496 (1939). Introducing his opinion for
our Court, Judge Biggs wrote: ―The question presented by the
appeal at bar is whether or not certain fundamental civil
liberties safeguarded by the Constitution of the United States
shall be observed and protected in Jersey City or shall there
stand abridged.‖ Id. at 777. Thus, more than 20 years before
the resuscitation of 42 U.S.C. § 1983 in Monroe v. Pape, 365
U.S. 167 (1961), this Court was in the business of expanding,

3
not contracting, civil rights protections.1 Until today. Until a
Majority of this Court embarked on a jurisprudential

1
See, e.g., Albright v. Oliver, 510 U.S. 266, 270 n.4 (1994)
(identifying the Third Circuit as having ―[t]he most
expansive approach‖ among the courts of appeals as to the
extent to which a claim of malicious prosecution is
actionable under § 1983 (citing Lee v. Mihalich, 847 F.2d
66, 70 (3d Cir. 1988) (Becker, Hutchinson, Scirica)));
Pfeiffer by Pfeiffer v. Marion Ctr. Area Sch. Dist., 917
F.2d 779, 788 (3d Cir. 1990) (Higginbotham, Scirica,
Aldisert) (diverging from other courts of appeals to hold
that compensatory relief is available for certain Title IX
violations), abrogated on other grounds by Fitzgerald v.
Barnstable Sch. Comm., 555 U.S. 246 (2009); Melo v.
Hafer, 912 F.2d 628, 635 (3d Cir. 1990) (Sloviter, Becker,
Stapleton) (holding that state officers sued in their
individual capacities are ―persons‖ for the purposes of
§ 1983), aff‘d, 502 U.S. 21 (1991); E.E.O.C. v. Univ. of
Pa., 850 F.2d 969 (3d Cir. 1988) (Becker, Hutchinson,
Scirica) (holding that under the circumstances and in light
of the purposes of Title VII of the Civil Rights Act of
1964, the first-filed rule did not govern the case), aff‘d,
493 U.S. 182 (1990); Al-Khazraji v. Saint Francis Coll.,
784 F.2d 505, 514–517 (3d Cir. 1986) (Adams, Gibbons,
Stapleton) (providing a broad definition of ―race‖ under 42
U.S.C. § 1981), aff‘d, 481 U.S. 604 (1987); Ricks v. Del.
State Coll., 605 F.2d 710, 712 (3d Cir. 1979) (Adams,
Rosenn, Higginbotham) (identifying the ―humanitarian and
remedial purpose‖ of Title VII to hold that its limitations
period does not run until termination of employment),
rev‘d, 449 U.S. 250 (1980); Goode v. Rizzo, 506 F.2d 542
(3d Cir. 1974) (Staley, Gibbons, Weis) (upholding a

4
adventure that makes it unnecessarily difficult for civil rights
plaintiffs who seek to enforce federal rights and statutes. The
Majority does so by erecting roadblocks before plaintiffs who
seek to qualify as a ―prevailing party‖ under § 1988.

The Majority employs a stingy interpretation of
―judicially sanctioned,‖ declaring that there was no act of
sanctioning notwithstanding that: (1) the District Court
entered a Temporary Restraining Order based on the merits,
and (2) in the subsequent preliminary injunction hearing the
District Court told the defendant that it completely agreed

district court‘s finding that violations of constitutional
rights by Philadelphia police occurred in a high number of
instances and allowing injunctive relief), rev‘d, 423 U.S.
362 (1976); Hackett v. McGuire Bros., Inc., 445 F.2d 442,
446 (3d Cir. 1971) (McLaughlin, Aldisert, Gibbons)
(concluding that the phrase ―by a person to be aggrieved‖
in Civil Rights Act of 1964 showed ―a congressional
intention to define standing as broadly as is permitted by
Article III of the Constitution‖), quoted approvingly by
Trafficante v. Metro. Life Ins. Co., 409 U.S. 205, 209
(1972), abrogated by Thompson v. N. Am. Stainless, LP,
131 S. Ct. 863, 869 (2011); Douglas v. City of Jeannette,
130 F.2d 652 (3d Cir. 1942) (Biggs, Maris, Jones,
Goodrich) (holding that federal courts have jurisdiction
over alleged deprivations of constitutional rights pursuant
to the Civil Rights Act of 1871), aff‘d, 319 U.S. 157
(1943); Minersville Sch. Dist. v. Gobitis, 108 F.2d 683 (3d
Cir. 1939) (Biggs, Clark, Kalodner) (affirming an
injunction against compulsory flag salutes in schools),
rev‘d, 310 U.S. 586 (1940), overruled by W. Va. State Bd.
of Educ. v. Barnette, 319 U.S. 624 (1943).

5
with the plaintiff, (3) the defendant conceded that the State of
New Jersey would be bound by the District Court‘s
interpretation of the trademark, (4) the plaintiff moved for
entry of summary judgment in its favor, and (5) the District
Court declared entry of summary judgment was unnecessary
because, ―I just don‘t know what else there is to address . . .
in effect, [Live Gold] has won the case.‖

The Majority nonetheless contends that although Live
Gold won the case, the win was not ―judicially sanctioned‖
because the District Court did not enter on the record five
words: ―Plaintiff‘s summary judgment motion granted,‖ or
four words ―Judgment ordered for plaintiff.‖

The Majority nonetheless contends that although the
District Court told the parties that the plaintiff won the case,
the win was not ―judicially sanctioned‖ because the District
Court did not formally enter its decision on the record. The
Majority‘s interpretation of ―judicially sanctioned‖ is
reminiscent of the writ-based common law pleading rules,
which were so inflexible that a plaintiff that used the wrong
writ was out of court. It was a system ―that had become rigid
and rarified‖ and a system in which ―a party could easily lose
on technical rules.‖2 I therefore disagree with my colleagues
of the Majority who believe Buckhannon prohibits us from
determining that the plaintiff was a prevailing party. That
case does not establish technical rules that prohibit us from
acknowledging that the plaintiff was the prevailing party.
Let‘s face it. It‘s not that Buckhannon prohibits us. It‘s a

2
Stephen N. Subrin, How Equity Conquered Common Law:
The Federal Rules of Civil Procedure in Historical
Perspective, 135 U. Pa. L. Rev. 909, 917 (1987).

6
matter of choice. The Majority simply chooses to not extend
its holding to different facts and precepts involving attorney
fees in civil rights actions. I prefer to follow the history of this
Court in expanding holdings in civil rights cases in new and
fresh fact patterns. In so doing, I adhere to what our Court has
been doing since 1939, and we carry forward the pioneer
efforts of American jurisprudents from as early as the end of
the Nineteenth Century.

II.

The distance between the Majority and the dissent in
this case can be traced through more than one hundred years
of American legal history. As early as 1897, American courts
were being chided for undue reliance on theoretical concepts.
This was the philosophy behind European attempts to
establish codes in every country on the continent. German
Professor Rudolf von Ihering pioneered the work of replacing
the European jurisprudence of conceptions with a
jurisprudence based upon results. Our own thinkers, across
the Atlantic Ocean, followed suit. In The Path of the Law in
1897 Oliver Wendell Holmes, Jr. gently admonished:

I think that the judges themselves have failed
adequately to recognize their duty of weighing
considerations of social advantage. The duty is
inevitable, and the result of the often
proclaimed judicial aversion to deal with such
considerations is simply to leave the very

7
 ground and foundation of judgments
inarticulate, and often unconscious . . .3

By 1906, Dean Roscoe Pound of Harvard Law School was
trumpeting the same theme. He described our system as
conceptual jurisprudence, a slavish adherence to elegantia
juris, the symmetry of law, and suggested that we resembled
too much the rigid German Begriffsjurisprudenz.4 This led
him to call upon the American Bar Association to put an end
to mechanical jurisprudence: ―The most important and most
constant cause of dissatisfaction with all law at all times is to
be found in the necessarily mechanical operation of legal
rules.‖5

In 1921, Benjamin N. Cardozo delivered the Storrs
lectures at Yale, stating: ―The final cause of law is the welfare
of society. The rule that misses its aim cannot permanently
justify its existence.‖6 The same year, he seized the
opportunity to put his new theory into practice by publicly
rejecting blind conceptual jurisprudence. See Hynes v. N.Y.
Cent. R.R., 131 N.E. 898 (N.Y. 1921).

These thinkers led us out of the methodology of
conceptual jurisprudence—the view that a legal precept

3
Oliver W. Holmes, Jr., The Path of the Law, 10 Harv. L.
Rev. 457, 467 (1897).
4
Roscoe Pound, Mechanical Jurisprudence 608, 610 (1908).
5
Roscoe Pound, The Causes of Popular Dissatisfaction with
the Administration of Justice, Address Before the Am. Bar
Ass‘n (Aug. 29th 1906).
6
Benjamin N. Cardozo. The Nature of the Judicial Process
66 (1921).

8
should be followed to its dryly logical extreme, regardless of
its effects on society. If Pound‘s 1908 warning against
mechanical decision making did not create a new American
school of jurisprudence, it at least spawned widespread
respectability for social utilitarianism. It added a new
dimension to law‘s traditional objectives of consistency,
certainty and predictability—a concern for society‘s welfare,
elegantly described by Professor Harry W. Jones as a legal
rule that ―contributes to the establishment and preservation of
a social environment in which the quality of human life can
be spirited, improving and unimpaired.‖7 In all but a few
areas of static law, mechanical jurisprudence has become
more historical than operational, except for what the Majority
does in this case.

III.

I turn now to legal philosophy, jurisprudence and
jurisprudential temperament, because part of what divides the
Majority and the dissent is a difference in views of these
concepts.8 When I speak of legal philosophy, I am addressing
a very broad inquiry into what the relationship between
individuals and their government, ought to be. In this context,
the problems of legal philosophy are problems of normative
political philosophy. So perceived, legal philosophy inquires
into the problems of terminology, legal methods, the role of
precedent, statutory interpretation, underlying rationale, the

7
Harry W. Jones, An Invitation to Jurisprudence, 74 Colum.
L. Rev. 1023, 1030 (1974).
8
Ruggero J. Aldisert, Philosophy, Jurisprudence, and
Jurisprudential of Federal Judges, 20 Ind. L. Rev. 453
(1987).

9
use of different types of authority, the efficacy of various
controls and their operation in diverse factual scenarios, and
the basic issues concerning the values that are implemented.
When I speak of a legal philosophy, I am addressing
the specific answers to these basic inquiries forthcoming from
very respectable thinkers, both in academia and on the bench.
Each thinker probably articulates or at least demonstrates
some particular legal philosophy. Hence, each of their
individual solutions to myriad problems of judicial decision
making is what I call a legal philosophy.

How a judge interprets the concept of ―judicially
sanctioned‖ depends on the legal philosophy the judge
chooses to espouse. It cannot be seriously debated that the
Majority‘s refusal to grant attorney fees in this case will limit
future civil rights actions, discouraging the Congressional
intent to provide attorney fees to civil rights plaintiffs under
§ 1988. It will discourage settlements, prolong litigation, and
make work for overburdened district judges. Defendants will
use complications in petitions for § 1988 attorney fees as
bargaining tools in negotiations for calculating damages.
Members of the Majority arrive at their decision by adhering
to a philosophy of conceptual jurisprudence, an approach to
the law that extends a legal precept to a drily logical extreme,
regardless of the results upon society, and a philosophy that
has found rejection in our courts for almost 100 years.

I turn now to the concept of jurisprudence. I perceive it
as separate and apart from legal philosophy, in that it includes
obligatory norms, both substantive and procedural, that shape
and regulate the life of a people. This concept of
jurisprudence more or less takes the form of an aggregate of
legal precepts, a sort of by-laws of a given society or rules

10
that govern a given social order. It is law as it is, not as it
ought to be. It is more properly a juridical science than a
philosophy. Yet jurisprudence may also be considered ―a
body of traditional ideas as to how legal precepts should be
interpreted and applied and causes decided, and a traditional
technique of developing and applying legal precepts whereby
these precepts are eked out, extended, restricted, and adapted
to the exigencies of administration of justice.‖9

I find it necessary to distinguish between legal
philosophy and jurisprudence. If a judge is truly following ―a
body of traditional ideas,‖ he or she is probably observing the
law as it ―is‖ and not as it ―ought to be.‖ If we talk about law
as it should be, we have entered the world of legal philosophy
and philosophical generalities. Immanuel Kant suggested that
the distinction existed in two simple Latin words. When we
ask ―quid jus?‖ we are seeking some general principle of
philosophy to help us decide what the law ought to be. When
we ask ―quid juris?‖ we are seeking what already has been
established as part of the jurisprudence.10

Unfortunately, the line between what the law is and
what it ought to be is not always a bright one. As this case
shows, one legal precept, pushed to the limit of its logic with
inadequate consideration of the results, may point to one
conclusion; another precept, followed with equal logic but
emphasis on the results, may point with equal certainty to
another conclusion. Or take the questions posed by Cardozo:

9
Roscoe Pound, The Theory of Judicial Decision, 36 Harv.
L.Rev. 641, 645 (1923).
10
Immanuel Kant, The Philosophy of Law 43-46 (Kelly ed.
1974) (Hastie trans. 1887).

11
 If a precedent is applicable, when do I refuse to
follow it? If no precedent is applicable, how do
I reach the rule that will make a precedent for
the future? If I am seeking logical consistency,
the symmetry of the legal structure, how far
shall I seek it? At what point shall the quest be
halted by some discrepant custom, by some
consideration of the social welfare, by my own
or the common standards of justice and
morals?11

It is here where that quality I call jurisprudential
temperament, or the judge‘s intuition, comes into play.
Temperament invariably influences the decision because it
inclines the decision maker one way or another.12 It is a major
determinant in the case at bar in deciding the best
interpretation of ―judicial sanctioned.‖

If, as in cases like this one, the result is not
predetermined and the law is not clear, the courts are faced
with what Professor H.L.A. Hart called the ―penumbral‖
issues, where the language of the legislation or a particular
putative precedent of a court is general.13 Whether a judge
attempts to clarify a penumbral area of the law reflects a
value judgment, and is indicative of the judge‘s

11
Cardozo, supra note 6.
12
The key word is ―jurisprudential,‖ not ―judicial‖
temperament. The latter is descriptive of a judge‘s
personality while sitting on the bench during a trial or on
appeal.
13
H.L.A. Hart, The Concept of Law 121-122 (1961).

12
jurisprudential temperament. Some judges have lower
thresholds than others, and are more inclined to find solace in
shades and fringes rather than the black-letter law. When this
problem occurs, as is the circumstance of this divided Court,
Professor Ronald Dworkin suggests that the decision depends
―on the judge‘s own preferences among a sea of respectable
extralegal standards, any one in principle eligible, because if
that were the case we could not say that any rules were
binding.‖14

The extent to which a court adheres to the legal
precepts attached to the facts in Buckhannon rather than those
present in the galaxy of our civil rights cases that have
extended plaintiffs‘ rights, is not just a matter of logical
analysis. In dealing with a putative precedent the judge‘s
function goes beyond a perception of what was really
intended; he or she exercises a choice. In the case at bar, it is
a choice between: (a) conceptual jurisprudence, which
preaches that a principle ought to be applied wherever it
logically leads, without reference to results; or (b) a
jurisprudence of results, which preaches ―the establishment
and preservation of a social environment in which the quality
of human life can be spirited, improving and unimpaired.‖15
Justice Walter V. Shaefer taught us:

[M]ost depends upon the judge‘s unspoken
notion as to the function of his court. If he
views the role of the court as a passive one, he
will be willing to delegate the responsibility for
change . . . . If he views that court as an

14
Ronald Dworkin, Taking Rights Seriously 89-90 (1977).
15
Jones, supra note 7.

13
 instrument of society designed to reflect in its
decisions the morality of the community, he
will be more likely to look precedent in the
teeth and to measure it against the ideals and the
aspiration of his time. 16

*****

Through the years, it is said that in this Court we have
dissent without dissension. It is in this spirit that I have
expressed, respectfully, a failure to agree with a large number
of my colleagues without in the least inferring any diminution
of my great respect for each of them. And so, as the Marine
Corps Hymn says, it is at this ―clime and place‖ that a
difference in legal philosophy, jurisprudence and
jurisprudential temperament is demonstrated in the
divergence between the Majority and dissenting judges‘
views upon applications for attorney fees under § 1988. That
such a difference exists is not unusual; appellate courts are
fashioned as multi-judge institutions so that different views
may be publicly and forcibly expressed. What is unfortunate
about the difference in this case, however, is the result that
the Majority‘s holding will impose upon future civil rights
plaintiffs.

16
Walter V. Schaefer, Precedent and Policy, 34 U. Chi. L.
Rev. 3, 23 (1966).

14