JoshCo Tech, LLC v. Max VA Benefits Consulting Services, Inc. ( 2021 )

1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 SOUTHERN DISTRICT OF CALIFORNIA 10 11 JOSHCO TECH, LLC Case No. 20-cv-2437-BAS-AHG 12 Plaintiff, ORDER: 13 v. (1) GRANTING PLAINTIFF’S 14 MAX VA BENEFITS CONSULTING MOTION FOR VOLUNTARY SERVICES, INC, et al., 15 DISMISSAL WITH Defendants. PREJUDICE (ECF No. 45); 16 AND 17 18 (2) GRANTING DEFENDANTS LEAVE TO MOVE FOR AN 19 AWARD OF ATTORNEY’S 20 FEES AND COSTS UNDER FED. R. CIV. P. 54(d)(2)(A) 21 22 23 24 Before the Court is Plaintiff JoshCo Tech, LLC’s amended motion to voluntarily 25 dismiss this action with prejudice pursuant to Federal Rule of Civil Procedure (“Rule”) 26 41(a)(2). The Court finds the Motion suitable for determination on the papers submitted 27 and without oral argument. See Fed. R. Civ. P. 78(b); Civ. L.R. 7.1(d)(1). For the reasons 28 1 set forth below, the Court GRANTS Plaintiff’s Motion and GRANTS Defendants leave 2 to file a separate motion for attorney’s fees and costs pursuant to Rule 54(d). 3 I. BACKGROUND 4 Plaintiff claims that Defendants Max VA Benefits Consulting Services, Inc. and Jose 5 Briceno infringed upon its copyright to forms, known as “mini-DBQs,” which are used to 6 assist veterans in applying for disability benefits with the Veterans Administration (“VA”). 7 (Compl., ECF No. 1.) The mini-DBQs “synthesize and simplify information about the 8 [applicant’s] health, explain the information required by the VA to the [applicant] by way 9 of textual explanations and accompanying art, and assist the [applicant] with efficiently 10 and effectively applying for VA benefits or challenging an existing disability rating.” (Id. 11 ¶ 8.) Plaintiff avers that Defendants infringed upon these copyright-protected mini-DBQs 12 by deploying them in a competing business endeavor without acquiring a license to do so. 13 (Id. ¶¶ 21–30.) 14 Around the time that Plaintiff sued Defendants, Plaintiff also initiated several other 15 actions against additional defendants whom it alleges infringed upon the same copyright- 16 protected mini-DBQs that are the subject of this action. (Declaration of Jeffrey A. Feasby, 17 Esq. (“Feasby Decl.”) ¶ 3, ECF No. 45-2.) According to Plaintiff, it entered a settlement 18 with certain of these other defendants and that, although Defendants here “were not parties 19 to that settlement, the settlement agreement include[s] a release of the claims that Plaintiff 20 has asserted against Defendants in this case.” (Id.; see Mot. 3.) On this basis, Plaintiff 21 moves to voluntarily dismiss this action with prejudice. (Mot. 3–4.) 22 II. ANALYSIS 23 “Except as provided in Rule 41(a)(1), an action may be dismissed at the plaintiff’s 24 request only by court order, on terms that the court considers proper.” Fed. R. Civ. P. 25 41(a)(2). “The Ninth Circuit has long held that the decision to grant a voluntary dismissal 26 under Rule 41(a)(2) is addressed to the sound discretion of the [d]istrict [c]ourt[.]” 27 Hamilton v. Firestone Tire & Rubber Co., 679 F.2d 143, 145 (9th Cir. 1982) (citing, inter 28 alia, Sams v. Beech Aircraft Corp., 625 F.2d 273, 277 (9th Cir. 1980); Blue Mountain 1 Constr. Corp. v. Werner, 270 F.2d 305, 306 (9th Cir. 1959), cert. denied, 361 U.S. 931 2 (1960)). “A district court should grant a motion for dismissal under Rule 41(a)(2) unless 3 a defendant can show it will suffer some plain legal prejudice as a result.” Smith v. Lenches, 4 263 F.3d 972, 975 (2001) (footnote omitted). 5 “Legal prejudice” is “prejudice to some legal interest, some legal claim, [or] some 6 legal argument.” Westlands Water Dist. v. United States, 100 F.3d 94, 97 (9th Cir. 1996). 7 A defendant is not said to suffer “legal prejudice” from: (1) “[u]ncertainty because a 8 dispute remains unresolved” or the “threat of future litigation”; (2) the inconvenience of 9 having to defend itself in a different forum; or (3) a plaintiff gaining a tactical advantage 10 through dismissal. Smith, 263 F.3d at 976 (citing Hamilton, 679 F.2d at 145). Because 11 Defendants do not identify, nor does the Court find apparent, any legal prejudice that might 12 result from dismissal of this action with prejudice, the Court concludes that Plaintiff’s 13 Motion for voluntary dismissal should be granted. 14 Defendants do not dispute dismissal is appropriate. Rather, they ask that this Court 15 “not make any determination of the issue of attorney’s fees and costs” and “reserve for 16 determination based upon a properly noticed motion” brought pursuant to Rule 54(d)(2) 17 the question of whether Defendants are entitled to attorney’s fees and costs as a “prevailing 18 party” in this copyright infringement action under 17 U.S.C. § 505. (Opp’n 3.) Plaintiff 19 does not oppose this request and asks this Court to “grant [its] [M]otion … subject to 20 Defendants’ right to bring a motion for attorney[’s] fees if proper.” (Reply 2.) Defendants 21 have not yet brought a motion for fees and costs. 22 Applications for attorney’s fees under 17 U.S.C. § 505 must be brought in a separate 23 motion as opposed to in an opposition brief. Fed. R. Civ. P. 54(d)(2)(A) (“A claim for 24 attorney’s fees … must be made by motion …”). Thus, the issue of an award of attorney’s 25 fees and costs, if any, is better suited for a future motion (if it is filed).1 See Agri Star Meat 26 & Poultry, LLC v. Doheny Kosher Meat, Inc., No. CV-13-03384-MWF (PLAx), 2014 WL 27 1 In so holding, this Court makes no determination now as to the propriety of Defendants’ claim 28 1 |} 12567780, at *3 (C.D. Cal. Oct. 24, 2014) (granting voluntary dismissal with prejudice and 2 || leave for defendant to file motion under Rule 54(d)(2) for costs under the Lanham Act). 3 |. CONCLUSION 4 For the reasons stated above, the Court GRANTS the Motion to voluntarily dismiss 5 ||the action with prejudice. (ECF No. 45.) Additionally, the Court GRANTS Defendants 6 leave to file a motion for reasonable attorney’s fees and litigation costs incurred in this 7 || matter, pursuant to Rule 54(d)(1). The procedure for seeking payment for costs is found 8 |{in Civ. L.R. 54.1. 9 IT IS SO ORDERED. 10 A , 11 | DATED: October 13, 2021 Lin A (Lyphaa. 6 12 United States District Judge 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 _A.