In a major civil rights and trademark case that a number of legal experts think may ultimately go to the U.S. Supreme Court, a full 16-judge panel of the U.S. Court of Appeals for the Third Circuit reheard argument on February 23, 2011 from Pryor Cashman Litigation partner William Charron against the Office of the Attorney General for the State of New Jersey concerning whether Pryor Cashman’s client, a promoter of doo-wop music singing groups, was a “prevailing party” entitled to reimbursement of attorneys’ fees arising out of the New Jersey Attorney General’s past enforcement of New Jersey’s so-called “Truth In Music Act.”

Pryor Cashman had successfully argued to the U.S. District Court below that the Attorney General had enforced the statute in a way that unconstitutionally discriminated between federally registered and unregistered, or common law, trademarks. Finding a likelihood of success on the merits of Pryor Cashman’s First Amendment, Equal Protection and Supremacy Clause arguments, the District Court had entered a temporary restraining order against the Attorney General’s enforcement of the act.

At the subsequent hearing on whether to convert the TRO into a preliminary injunction, the Attorney General was forced to concede that Pryor Cashman’s arguments were correct and that her enforcement had caused constitutional problems. The District Court “bound” the Attorney General to her change in position, but later ruled that Pryor Cashman’s client, Live Gold Operations, Inc., was not a “prevailing party” under the federal civil rights statute. Pryor Cashman appealed that ruling to the Third Circuit.

In an initial decision issued on August 5, 2010, the Third Circuit ruled, by a 2-1 vote, that the District Court had erred in denying “prevailing party” status to Live Gold. The Third Circuit instead held that the District Court’s actions below constituted a sufficient judicial sanctioning of Live Gold’s positions on the merits and that the District Court was responsible for the Attorney General’s ultimate change in position, such that Live Gold should be considered a “prevailing party” as a matter of law. The full panel of the Third Circuit subsequently voted to rehear the case “en banc.”

Such re-hearings are very rarely held and are reserved for only the most important cases addressed in a given term. Pryor Cashman’s argument on February 23, 2011 was one of only three en banc re-arguments heard by the Court.

To read an article about the argument and the case from the February 22, 2011 edition of The Legal Intelligencer, please click here.

Live Gold was represented in the litigation by Pryor Cashman Litigation Partner William L. Charron and associate Mona Simonian.

The case received substantial media attention prior to the argument as well. To read an article from The New Jersey Law Journal entitled “Did Live Gold Prevail?,” please click here.

To read an article from Forbes.com entitled “Appeals Court Hands NJ a Defeat In Music Law Case" please click here.

To read an article from The New Jersey Law Journal entitled “No Judgment on Merits, But N.J. Hit With Fees Over Truth-in-Music Law,” please click here.

To read an article from BNA's Patent, Trademark & Copyright Journal, please click here.