Opposition Brief — Robi v. Reed

Buprersa Caurt, Usd

FIRED

‘ Sia: he °I96

No. 99-363

a HE CLERK

In The

Supreme Court of the United States

+

MARTHA ROBI,

Petitioner,

HERBERT REED, JOHN VILLANO,

J.P. PRODUCTIONS,

Respondents.

On Petition For A Writ Of Certiorari

To The United States Court Of Appeals

For The Ninth Circuit

+

RESPONDENTS’ BRIEF IN OPPOSITION

TO PETITION FOR WRIT OF CERTIORARI

+

T. CHuristorpHER DONNELLY

Counsel of Record

DoNNELLY, Conroy & GetHaar, LLP

One Post Office Square

Boston, MA 02109-2105

(617) 542-7400

Counsel for Respondents

COCKLE LAW BRIEF PRINTING CO, (800) 225-6964

OR CALL COLLECT (402) 342-2831

PARTIES TO THE PROCEEDING

Petitioner has accurately identified Martha Robi

(“Robi”) as petitioner and Herb Reed (“Reed”) and John

Villano (“Villano”) as respondents. The third respondent

identified by petitioner, “J.P. Productions” is not a juridi-

cal entity. In the lower courts and herein, the third

respondent (defendant and counterclaim plaintiff) was

and is John P. Productions, !nc. (“JPPI”), a corporation

that has no parent companies or subsidiaries.

ii

TABLE OF CONTENTS

PARTIES TO THE PROCEEUMINGS oscccccsccsccssess i

CONSTITUTIONAL PROVISIONS AND STATUTES... 1

STATEMENT OF TRIE CARE. ccs cvccscccesvsunseses 1

Nature OF Gee Cai os s.csccevssssevige eueeeeaneat 3

Course of Procemdee. « os.css isi ceasaeesuaeseen 3

FRO PUOOGINED 0 occ ccevevessenucteeseaeeseueben 3

The summary judgment proceedings........... 4

Robi’s post-judgment motions................65 7

The court of appeals rulings...............005. 8

Ongoing proceedings in the lower courts ...... 8

Sentommant OF FRCWs iaccvncsaceccgneveneeueeeneeen 9

ARGUMENT - REASONS FOR DENYING THE

VUIREE 3 0900006060608664600 08 MOR ewes 15

I. THE DECISION DOES NOT CONFLICT WITH

A DECISION OF ANOTHER CIRCUIT COURT

OR STATE COURT OF LAST RESORT....... 15

Il. THE PRECLUSION ISSUE NOW RAISED IN

QUESTION 1 WAS NOT RAISED IN ROBI’S

OPENING BRIEF IN THE COURT OF

APPEALS AND RELIES ON MATTERS NOT

BEFORE THE LOWER COURT .............. 16

Il. THE COURT OF APPEALS DID NOT ESTAB-

LISH A “FEDERAL PARTNERSHIP LAW”

AND ITS DECISION WAS IN ANY EVENT

CORRECT UNDER CALIFORNIA LAW...... 17

TABLE OF CONTENTS - Continued

Page

IV. THE COURT OF APPEALS DECISION,

PLAINLY HOLDING THAT REED HAS THE

RIGHT TO EXCLUDE ROBI’S USE OF THE

MARK, IS NOT INTERNALLY INCONSIS-

MRE Ser peents devoedeevuvedvetevcceesvons 21

iv

TABLE OF AUTHORITIES

Page

Cases

Adickes v. S.H. Kress & Co., 398 U.S. 144 (1970)

pocdededqucddes ciesekenacsuadeatdungenecastal 9, 13, 17

Albertini v. Giglio, (E.D.Pa. 1979) (unpublished;

discussed in The Four Aces Litigation: What's In

A Name?, 5 Art & The Law 67 (1980))............ 19

Bell v. Streetwise Records, Ltd., 761 F.2d 67 (lst

COR DD oc eawcccvecccccvcdies cavndeteddctegeices 19

Boogie Kings v. Guillory, 188 So.2d 445 (La. App. 3

CO TE hed cccccussvedesqevesdivoubsveesesanavans 19

Brown v. Felsen, 442 U.S. 127 (1979) ................ 16

Century 21 Real Estate Corp. v. Sandlin, 846 F.2d

SEF Gree Ge Bee hc nsec cencreccasceneeesteusss 6, 7

Columbia Mill Co. v. Alcorn, 150 U.S. 460 (1893).... 18

Columbia Pictures Industries, Inc. v. Professional

Real Estate Investors, Inc., 944 F.2d 1525 (9th

Cir. 1991), aff'd, 508 U.S. 49 (1993).......... 9, 10, 13

Davis v. United States, 417 U.S. 333 (1974)....... 15, 16

Ellis v. State of Maine, 448 F.2d 1325 (1st Cir. 1971) ..... 2

Erie R. Co. v. Tompkins, 304 U.S. 64 (1938) ......... 16

Giammarese v. Delfino, 197 U.S.P.Q. 162 (N.D.IIl.

GON oe vpngbbsvuesukihso0dses desket dasuabdvestins 19

Harkins Amusement Enterprises, Inc. v. General

Cinema Corp., 850 F.2d 477 (9th Cir. 1988), cert.

denied, 466 US. 1019 (1909) ......cvesscvese 9, 10, 13

HEC Enterprises, Ltd. v. Deep Purple, Inc., 213

USTED FFG GT Cab, Fie cvcccccccctvccecsses 19

Vv

TABLE OF AUTHORITIES - Continued

Page

In re Marriage of Shelton, 118 Cal. App.3d 811,

173 Cal. Rptr. 629 (3d Dist. 1981)................. 19

Johnson v. Bd. Of County Com’rs, 868 F.Supp.

1226 (D. Colo. 1994), aff'd, 85 F.3d 489 (10th Cir.

BRMEP xcs avessndesevddesns ses ceeeekancareeeredbanres 2

Kingsmen v. K-Tel Int'l, Ltd, 557 F.Supp. 178

GEA Es BOUND so vndcvvssccccceaebaseveaeassun 18, 19

LaSociete Anonyme Des Parfums Le Galion v.

Jean Patou, Inc., 495 F.2d 1265 (2d Cir. 1974) ..... 18

Menendez v. Holt, 128 U.S. 514 (1888) .............. 18

National Industries, Inc. v. Republic Nat. Life Ins.

Co., 677 F.2d 1256 (Sth Cir. 1962).....cccccccccss, 10

O’Reilly v. New York Times Co., 692 F.2d 863 (2d

ay SOD wavedccwasenhes 0uaacuhenadceneeeacesie 2

Pa. Dept. of Corrections v. Yeskey, 524 U.S. 206

CERF Fé ec dvoensestbisaunvsancaanee bakers eeaesa 16

Parklane Hosiery Co., Inc. v. Shore, 439 U.S. 322

NSE od Jisceccecevcususdesscthdnnenstiensencens 16

Robi v. Five Platters, Inc., 918 F.2d 1439 (9th Cir.

Orr er erry rr 5, 11, 12, 13, 16

Robi v. Five Platters, Inc., 838 F.2d 318 (9th Cir.

yn. 00¢ Un000 Uevabietetns gue thal pended sand 4, 5, 16

Robi v. Reed, 173 F.3d 736 (9th Cir. 1999)............ 8

Sengoku Works Ltd. v. RMC Intern., Ltd., 96 F.3d

1217 (9th Cir. 1996), cert. denied, 521 U.S. 1103

GOTT sou o000s es nn ones ctcacuissbes bA0s ease enceeen 18

vi

TABLE OF AUTHORITIES —- Continued

Page

United States v. Williams, 504 U.S. 36 (1992)..... 16, 17

USA Petroleum Co. v. Atlantic Richfield Co., 13

Fee Tare Crt GO WRG os ve steveesinyseceseeene 13

STATUTES

UBS. 6 IA 6.0 <cockddccscvastebnee 6

Se ace © BIO eccctvccsccssicéeddusesspenieen 9

SP ae © BLEND cccccccccccedesssevesuenaseeneneas 4

i, © WOU vad ico veces cccedaeceuietent en 9

28 U.S.C. § 636(b)(1)(A). 0... ccc cceceeceeceeceuces 5, 6

Ca Comp, Cote © 10GR. oc ccccrsccaeveccescovssas 1, 20

Ce SOO Cote S Ble cs cccccvcessccucetaccseers 1, 20

Ce COO Cote © TUGGB sc vcccstcscveevcsecssieres 1, 20

a, wis Ga By Se evdauneetecdévindeenaleoeeee 7

ROUGE WEEE DOs ctrecccecepssrevicetausnsacuseesueais 5

Nevada Revised Statutes 598A.210 ..............0005. )

Supreme Court Rule 10(a) ...........eecceeeeeeees 2, 15

Supreme Court Rade 12.5 ....ccessecsesccccccscevcscs 2

Supreme Court Rude 19.2 ..csccccsececccccvscccesceve 2

CONSTITUTIONAL PROVISIONS AND STATUTES

Petitioner has presented the text of the Supremacy

Clause and Commerce Clause, but nowhere argues that

the Ninth Circuit decision conflicts with or even impli-

cates those provisions.

The pertinent text of the California partnership stat-

ute, Cal. Corp. Code §§ 15029, 15038 and § 15043, is set

forth at page 20 below.

STATEMENT OF THE CASE

The petition for a writ of certiorari filed by Robi -

who has been represented by counsel throughout, but

now purports to appear “in pro se”! — concedes by its

' In the district court and court of appeals Robi has been

and still is represented by Allen Hyman. On July 14, 1999, in

support of Robi’s motion in the Ninth Circuit to stay issuance of

the mandate, Attorney Hyman declared under penalty of

perjury: “Our office has completed a draft of the Petition for a

Writ of Certiorari to the United States Supreme Court for

Martha Robi.” He further reported that Robi had “associated the

law firm of Pepper & Corazzini [in Washington, DC] to consult

and assist with the preparation of [the petition]” and that firm

was undertaking a review of and providing their input into the

initial draft. On August 11, 1999, in support of a further stay of

the mandate, Attorney Hyman said Robi’s petition was

complete but “Allen Hyman, counsel for Appellant Robi, has

been required to be away from his offices on unanticipated

mandatory legal matters, and has been unable to proofread,

finalize, and duplicate the Petition for a Writ of Certiorari to the

United States Supreme Court for filing and service.” On August

26, 1999, Attorney Hyman, as counsel to Robi, notified the Ninth

Circuit that the petition for a writ of certiorari had been filed.

silence the absence of any reasons identified in Rule 10(a)

for granting the writ. The ruling does not conflict with a

decision of another United States court of appeals, it does

not involve an important federal question that conflicts

with a decision by a state court of last resort, and there is

no call for this Court to exercise its supervisory powers.

At most, Robi is claiming the circuit court misapplied

settled rules of law concerning issue preclusion and part-

nership. There is no basis for granting Robi’s petition

and, as shown below, the lower court’s decision was

correct.

Robi’s statement of the case (Pet., at 3-15) is replete

with misstatements and, in addition, relies extensively on

matters that were not properly before the district court or

the court of appeals and, thus, cannot be considered by

this Court. As detailed below, items F, K, L, M, N, O, Q,

R, U, BB and CC in Robi’s Appendix (“App.”) were not

part of the summary judgment record and, therefore, are

not properly before this Court. In light of the admonition

in Sup. Ct. R. 15.2 regarding possible waiver of misstate-

ments not identified in opposition to a petition for a writ

of certiorari, respondents present the following accurate

statement of the case:

On September 7, 1999, Attorney Hyman forwarded to

respondents the notice required by Sup. Ct. Rule 12.3.

Obviously, Robi is not without counsel and, therefore, should

not receive any of the indulgences sometimes accorded pro se

litigants. See O'Reilly v. New York Times Co., 692 F.2d 863, 868 (2d

Cir. 1982); Ellis v. State of Maine, 448 F.2d 1325, 1328 (1st Cir.

1971); Johnson v. Bd. Of County Com’rs, 868 F.Supp. 1226, 1231 (D.

Colo. 1994), aff'd, 85 F.3d 489 (10th Cir. 1996).

Nature of the Case

This case is a contest between Reed and Robi for

exclusive rights to perform under the service mark “The

Platters”. Reed is a musical performer who, in 1953,

named and founded The Platters singing group and first

performed under “The Platters” mark. Reed used the

mark extensively in public performances and, by early

1954, had further used and commercialized the mark to

the point of recording songs. Reed is the only original

member of The Platters who is still providing musical

entertainment services. Robi, who did not enter the

United States until 1958, has never personally performed

using the mark “The Platters.” She had nothing to do

with Herb Reed’s origination and use of the mark, and

she did not use the mark in any respect until 1988. She

claims exclusive rights to “The Platters” service mark

through her status as widow of Paul Robi, who joined

The Platters approximately a year after Reed formed and

named the group, who left the group in 1965 after his

arrest and who died in 1989.

Course of Proceedings

The pleadings

In late 1995, Robi filed suit against Reed, Villano,

JPPI and others.? Claiming to have exclusive rights to the

mark “The Platters”, Robi proceeded on theories of

2 Robi never served defendant The Five Platters, Inc.

(“FPI”), and she settled with the three other defendants (Tony

Cee Associates, Cuzin Richard Entertainment Associates, and

United Concert Productions Corp.).

declaratory relief, unfair competition under 15 U.S.C.

§ 1125(a) and a Nevada statute, slander of title and inter-

ference with economic relations. (CR 1%). Reed, Villano

and JPPI denied Robi’s allegations and filed a six count

counterclaim against her. (CR 69). Reed alleged that he

has exclusive rights to “The Platters” mark and, accord-

ingly, Robi is liable to him, Villano and JPPI for violations

of 15 U.S.C. § 1125(a), interference with contractual and

prospective relations, fraudulent application for and

receipt of state service mark registrations, and unfair

competition, deceptive trade practices and false advertis-

ing in violation of Nevada statutes and the common law.

The summary judgment proceedings

In April 1996, the district court denied Martha Robi’s

motion for a temporary restraining order (CR 37) and in

August 1996 it denied Robi’s preliminary injunction

motion, concluding in a seven page order that “plaintiff

has not demonstrated a likelihood of success on the

merits.” (CR 83).

On September 17, 1996, Reed and the other respon-

dents moved for summary judgment. (CR 87). They

expressly relied on the affidavit of Reed and exhibits

thereto (App. Y (partial); see CR 56). On October 4, 1996,

Robi filed her opposition to the summary judgment

motion (CR 97). Robi elected not to submit any opposing

affidavits, instead relying exclusively on legal arguments.

She cited no cases other than Robi v. Five Platters, Inc., 838

3 “CR” refers to the district court clerk’s record, i.e., the

number from the docket sheet.

F.2d 318 (9th Cir. 1988) and 918 F.2d 1439 (9th Cir. 1990).

In addition, in her counter-statement of facts that she

contended were in dispute, Robi attempted to dispute

only four facts asserted in Reed’s summary judgment

motion. (CR 98A). Thus, she effectively conceded all

other facts in Reed’s summary judgment motion.4

Later, weeks after the deadline for opposing the

motion had passed, Robi filed additional papers, purpor-

tedly in further opposition to appellees’ summary judg-

ment motion. Reed opposed the supplemental filings. (CR

123). Well within its discretion, the district court denied

Robi leave to file her out-of-time supplemental papers.

(CR 140).

Along with their motion for summary judgment,

Reed, Villano and JPPI filed on September 17, 1996 a

motion for protective order, seeking a stay of all discov-

ery pending decision on summary judgment. (CR 86).

Robi opposed the protective order motion (CR 90) and

moved to continue her summary judgment opposition in

order to obtain discovery (CR 91). The magistrate judge

to whom all discovery matters had been referred pur-

suant to 28 U.S.C. § 636(b)(1)(A) granted Reed’s protec-

tive order motion and denied Robi’s motion for

discovery. (CR 101). Robi subsequently filed with the

* Local Rule 56.1 of the Nevada district court provided:

“Motions for summary judgment and responses thereto shall

include a concise statement setting forth each fact material to

the disposition of the motion which the party claims is or is not

genuinely in issue, citing the particular portions of any

pleading, affidavit, deposition, interrogatory, answer,

admission, or other evidence on which the party relies.”

(Emphasis added).

district judge objections to the discovery rulings, pur-

suant to 28 U.S.C. § 636(b)(1)(A). (CR 107). The district

court denied Robi’s objections. (CR 140).

While the summary judgment motion was under

advisement, on February 24, 1997, Robi requested the

district court to take judicial notice of FPI’s bankruptcy

filing. (CR 137). Reed, Villano and JPPI opposed. (CR

138). The district court denied Robi’s request. (CR 140).

By Order dated September 29, 1997 (App. C; CR 140),

the district court granted summary judgment. It ruled

that (1) all original members of a musical group who

created its goodwill have collective ownership of the

service mark rights in the group’s name, (2) such mem-

bers do not take such rights with them when they leave

the group and (3) the last remaining original member

who carries on the group continues ownership of the

service mark rights. The court concluded that “[sJince

Reed was the original member who remained with The

Platters as the others left, it is Reed who now owns the

exclusive right to the mark The Platters.” The court also

ruled that even if Paul Robi had retained some individual

right to “The Platters” mark when he left in 1965, that

right would have been personal to him and therefore

could not be assigned to Martha Robi and ceased upon

his death in 1989. In accordance with 15 U.S.C. § 1116(a)

and well-settled case law, e.g., Century 21 Real Estate Corp.

v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. 1988), the district

court entered a judgment permanently enjoining Robi,

her agents, servants, employees, attorneys, and persons

in active concert or participation from using in any man-

ner the mark “The Platters” alone or in conjunction with

any other names or words. (CR 141). The court also

ordered cancellation of Robi’s state registrations, destruc-

tion of all goods bearing “The Platters” mark, and an

assessment of damages. (Id.).

On October 1, 1997, Robi filed a notice of appeal. (CR

142).

Robi’s post-judgment motions

Although none of Robi’s post-judgment motions

were properly before the court of appeals for review, Robi

has attempted to supplement the summary judgment

record by relying on post-judgment materials in her brief

to this Court. Thus, the following summary is provided,

but without waiver of Reed’s contention that the court of

appeals lacked and this Court lacks jurisdiction over the

post-judgment matters.

On October 8, 1997, the district court denied Robi’s

motion for a temporary stay of the injunction against her

use of “The Platters” mark, ordered her not to book any

future engagements, and stayed only the destruction and

cancellation of state registrations portions of the injunc-

tion. (CR 148).

On October 14, 1997, Robi moved pursuant to Fed. R.

Civ. P. 59(e) to vacate, alter or amend the judgment and

order, (CR 154). The district court denied the motion,

reiterating its ruling that Robi’s reliance on prior deci-

sions adverse to FPI to show Paul Robi’s right precludes

her from avoiding those same rulings when it comes to

Reed. (Tr. 10/27/97, pp. 28-32).

Later, Robi requested the district court to take judi-

cial notice of certain documents from a case between

Reed and FPI in the Southern District of Florida. (CR

162). Although Reed had identified that case at the outset

of the present action (in December 1995) (CR 8B), Robi

made no effort to present the Florida papers until after

judgment was entered by the district court. Well within

its discretion, the district court denied the request for

judicial review. (Tr. 10/27/97, pp. 32-33). Robi did not

appeal from that denial.

The court of appeals rulings

In December 1997, Robi filed with the court of

appeals various motions to stay, for an injunction and for

expedited briefing and a request for judicial notice. By

Order dated January 26, 1998, the Ninth Circuit denied

the motions and granted the request for judicial notice.

(App. B).

On April 2, 1999, the Ninth Circuit affirmed the

district court’s permanent injunction, holding that Reed

“retains the right to use of the service mark [‘The Plat-

ters’] to the exclusion of Robi.” Robi v. Reed, 173 F.3d 736,

740 (9th Cir. 1999); App. A, 8a.

Ongoing proceedings in the lower courts

In the district court, Robi objected to production of

damages documents and information, requiring Reed,

Villano and JPPI to file a motion to compel, which the

district court granted. After Robi’s non-compliance, in

June 1999 the district court found Robi in contempt. A

hearing to assess damages is scheduled for October 4,

1999.

Under advisement in the court of appeals is Reed’s

application for attorney’s fees pursuant to 15 U.S.C.

§ 1117(a) and Nevada Revised Statutes 598A.210. Also

pending is the Ninth Circuit’s order directing Robi’s

counsel to show cause why he should not be responsible

for a portion of Reed’s appellate counsel fees, pursuant to

28 U.S.C. § 1927, for unreasonably and vexatiously multi-

plying -those proceedings.

Statement of Facts

Set forth below are the essential facts that were prop-

erly before the district court when it ruled on summary

judgment. Many of the factual assertions included in

Robi’s petition appeared in affidavits and exhibits that

were filed late, in violation of court rule. The district

court properly refused consideration of those pleadings.

(CR 140). Robi did not challenge that ruling in the court

of appeals. The alleged facts that are based on those

stricken materials (CR 109-120) cannot be considered by

this Court. Adickes v. S.H. Kress & Co., 398 U.S. 144,

157-58, n.16 (1970); Harkins Amusement Enterprises, Inc. v.

General Cinema Corp., 850 F.2d 477, 482 (9th Cir. 1988),

cert. denied, 488 U.S. 1019 (1989). Other factual assertions

were presented only in Robi’s post-judgment papers (CR

154, 157, 158, 159, 162, 164, 165, 169) and, again, are not

properly before this Court. Adickes, 398 U.S. at n.16;

Columbia Pictures Industries, Inc. v. Professional Real Estate

Investors, Inc., 944 F.2d 1525, 1527 & n.3 (9th Cir. 1991),

aff'd, 508 U.S. 49 (1993). Still others are drawn from

testimony and exhibits presented by Robi at the prelimi-

nary injunction hearing. Because that testimony and all

but a few of the exhibits were not referenced in Robi’s

10

summary judgment opposition, those materials and the

factual assertions founded on those materials are also not

properly before this Court on review of the district

court’s summary judgment grant. Id.; Harkins, 850 F.2d at

482; National Industries, Inc. v. Republic Nat. Life Ins. Co.,

677 F.2d 1258, 1270 (9th Cir. 1982).

In sum, the only materials Robi properly placed

before the district court in opposition to summary judg-

ment are an opposition brief that cited only two cases (CR

97), a statement challenging only four of Reed’s undis-

puted facts (CR 98A), and five exhibits referenced in

Robi’s opposition (only two of which are included in

Robi’s Appendix - App. G&P).

Since Reed organized and named the musical group

“The Platters” in 1953, he has earned his living by singing

and performing under that name. (HR Aff.,5 {4 5-92; DX

1-65). When Reed formed the group in 1953, The Platters

were himself, Joe Jefferson, Alex Hodge and Cornell Gun-

ther. In 1954, Jefferson and Gunther ceased performing

with Reed, and David Lynch and Tony Williams began

performing with Reed and Hodge as The Platters. After

they recorded several songs together as The Platters, Zola

Taylor joined them as part of the ensemble. (HR Aff,

{1 5-19; DX 1-5).

Paul Robi began performing with Reed as a member

of The Platters in August or September 1954, when he

5 “HR. Aff.” refers to the Affidavit of Herb Reed, sworn to

May 7, 1996, submitted in support of Reed’s summary judgment

motion. “DX” refers to Defendants’ Exhibits attached thereto. A

portion of Reed’s affidavit, without the exhibits, appears at App

%

11

replaced Hodge. Around 1957, Martha Robi (then using a

different surname) and Paul Robi met one another. (HR

Aff. {Y 18-22).

Martha Robi, who is not a musical entertainer, never

performed with The Platters. (Jd. { 23). Her use of the

mark began in 1988, as a promoter and producer, around

the time of Paul Robi’s death and 35 years after Herb

Reed’s first use. (Tr. 5/14/96 (afternoon session), at 54).°

Reed is the only original member of The Platters who

is still personally performing musical entertainment. (HR

Aff., { 21). Gunther, Hodge, Lynch, Williams, and Paul

Robi are all deceased. (Id. {{ 11, 20).

In the 1950s, Buck Ram became the manager of The

Platters, and wrongfully induced Reed, Williams, Lynch,

Taylor and Paul Robi to purportedly assign to a supposed

corporation called The Five Platters, Inc. (“FPI”) all of

their rights to the mark “The Platters.” (Id. {{ 43-44).

Those assignments were subsequently deemed ineffec-

tive. See Robi, 918 F.2d at n.2, in which the Ninth Circuit

affirmed the trial court’s adoption of findings that FPI

“was a sham used by Ram to obtain ‘The Platters’ name”;

that “the FPI stock was issued to the group members

illegally”; and that “the members received nothing for

their interest in ‘The Platters’ name”.

In 1965, Paul Robi was arrested for possession of

illegal narcotics; the charges resulted in a felony convic-

tion. (HR Aff. { 36; DX 19). He severed his relationship

with Reed, and he ceased any musical performances with

6 Robi’s testimony at the preliminary injunction hearing

was referenced in Reed’s summary judgment motion (CR 87).

12

Reed and The Platters group which had comprised Reed,

Paul Robi, Williams, Lynch and Taylor. (Id.). Thereafter,

without authority from Reed, Paul Robi performed with

others under various names, including “Paul Robi’s Plat-

ters”, “The World Famous Platters”, and “Paul Robi’s

World Famous Platters”. (Id.).

In 1969, Reed discontinued his relationship with Ram

and Ram’s sham corporation, FPI. Reed continued per-

forming under “The Platters” mark and, later, under that

mark joined with his name. Reed has continuously pro-

vided musical entertainment using the mark “The Plat-

ters” and “Herb Reed and The Platters.” None of those

performances have been under the authority of FPI. (HR

Aff. 1 45-46; DX 25).

After Reed disassociated himself from Ram and FPI,

that sham corporation sought to prevent Paul Robi from

using the mark “The Platters.” A California state court

ultimately determined that FPI had no right to stop Paul

Robi from using “The Platters” mark, as the purported

“assignments” from the performers were fraudulently

obtained by FPI and, therefore, invalid. (App. G). A fed-

eral district court in California reached the same conclu-

sion. Robi, 918 F.2d at 1441. While on appeal, Paul Robi

died and Martha Robi was substituted by agreement as a

party. Robi, 918 F.2d at n.1. At the time of the substitution,

however, no court adjudicated or even considered

whether Paul Robi’s personal service rights, if any, in

“The Platters” mark could be assigned to a non-per-

former or anyone else. The Ninth Circuit ultimately

affirmed the money judgment against FPI and affirmed

cancellation of all “The Platters” marks held-by FPI. Robi,

918 F.2d at 1441. The Ninth Circuit did not, however, rule

ee

13

that Martha Robi had any performance rights (or any

other rights) to “The Platters” mark.

Earlier, in 1987, FPI and Reed had settled a suit in the

Southern District of Florida by agreement under which

Reed retained the right to perform as “Herb Reed and

The Platters” and conditionally agreed not to use the

name “The Platters” by itself unless FPI were found to

have no rights in the name. (HR Aff., I 62).” That condi-

tion in fact occurred when the California federal court

confirmed that FPI was a sham and canceled its marks - a

decision affirmed by the Ninth Circuit. Robi, 918 F.2d at

1441.8

7 The settlement agreement itself (App. K) was not in the

record at the time of the district court’s ruling. Only after entry

of judgment did Robi seek to present that document (CR 162).

The district court properly declined consideration of the

document, denying Robi’s judicial notice request. Robi never

appealed that denial. Therefore, the document is not part of the

«ecord that should be considered in assessing the lower court's

injunction ruling. E.g., Adickes, 398 U.S. at n.16; Columbia

Pictyres, 944 F.2d at 1527, n.3; Harkins, 850 F.2d at 482.

8 The April 1, 1975 “Agreement” on which Robi now

attempts to rely (App. Q) is not signed by all the purported

parties and, in any event, expires by its own terms when

litigation commenced - which in fact occurred in Florida federal

court. The document also provides that Reed was not waiving

or prejudicing his ownership of “The Platters” name. In

addition, Robi did not bring the document to the district court’s

attention until after judgment was entered against her. (CR 162).

The district court refused to take judicial notice of it. Thus, the

document is among those with which Robi improperly

attempted to supplement the record, and the document may not

be considered. Adickes, 398 U.S. at n.16; USA Petroleum Co. v.

Atlantic Richfield Co., 13 F.3d 1276, 1279 (9th Cir. 1994); Columbia

Pictures, 944 F.2d at 1527, n.3.

14

Since Paul Robi’s death in 1989, Robi has waged an

unlawful campaign to misappropriate Reed’s mark “The

Platters” and to dilute the economic value of that mark to

Reed. Without authorization from Reed, Robi has pro-

moted, produced and sold performances of singers she

bills as “The Platters.” These counterfeit groups do not

include any former members of the original group The

Platters. Robi has operated as many as three of these

groups simultaneously around the country. (HR Aff.

{1 93).

In furtherance of her unlawful scheme, Robi and her

agents have falsely informed customers and potential

customers of Reed that he has no right to use the name

“The Platters” or “Herb Reed and The Platters”, and that

she has the rights to the mark “The Platters.” (DX 67-68;

HR Aff. { 96). Robi has falsely asserted to Reed’s cus-

tomers and potential customers that she has a federal

registration for “The Platters” mark. (Id.). In addition, she

fraudulently obtained several state registrations. Robi’s

actions have severely damaged Reed, reducing the

number of his performances and the prices he can charge.

(HR Aff. { 97).

Robi also filed two applications in the United States

Patent and Trademark Office (“PTO”) seeking registration

of the mark “The Platters,” falsely declaring in both that

she was the owner of the mark and that no other person

has the right to use the mark. (DX 66; HR Aff. {{ 94-95).

Robi also falsely claimed that she first used the mark in

1956 (later changed to 1953-1954), before she had even

met Paul Robi. (/d.). Robi ultimately abandoned her first

application, and her second application is the subject of a

pending PTO opposition proceeding commenced by

15

Reed. (Id.). (The PTO has stayed the opposition proceed-

ings pending resolution of this case.)

None of the above facts concerning Robi’s false state-

ments to the PTO, to Reed’s potential customers and to

the consuming public were refuted by Robi in her sum-

mary judgment opposition. (CR 97, 98A).

Reed was never a party to any of the litigation

between Paul Robi and FPI, and prior to the Nevada

district court’s ruling no court had ever adjudicated Paul

Robi’s rights vis-a-vis Reed to the mark “The Platters.”

From the time Paul Robi left The Platters in 1965 until his

death in 1989, he never claimed that Reed was barred

from using “The Platters” mark or that Reed had cheated

him as a partner.

S

ARGUMENT - REASONS FOR DENYING THE WRIT

I. THE DECISION DOES NOT CONFLICT WITH A

DECISION OF ANOTHER CIRCUIT COURT OR

STATE COURT OF LAST RESORT

Robi’s petition does not satisfy any of the criteria

(guiding but not wholly controlling) set forth in Sup. Ct.

R. 10(a). Robi does not contend the Ninth Circuit decision

conflicts with the decision of another circuit court or

conflicts with the decision by a state court of last resort

concerning an important federal question.

Although far from clear, insofar as Robi may be

claiming the Ninth Circuit decision conflicts with other

decisions of the same circuit court, discretionary review

by this Court is not appropriate. See, e.g., Davis v. United

16

States, 417 U.S. 333, 340 (1974). Notably, the Ninth Circuit

denied Robi’s petition for rehearing en banc.

Il. THE PRECLUSION ISSUE NOW RAISED IN

QUESTION 1 WAS NOT RAISED IN ROBI’S

OPENING BRIEF IN THE COURT OF APPEALS

AND RELIES ON MATTERS NOT BEFORE THE

LOWER COURT

In her first “question presented”, Robi contends the

court of appeals misapplied claim and issue preclusion

principles in failing to give effect to a conditional 1987

settlement agreement between Reed and FPI. Robi never

raised this issue in her opening brief in the court of

appeals. Robi’s failure to raise the issue is confirmed by

the fact that her opening brief never cited Parklane Hosiery

Co., Inc. v. Shore, 439 U.S. 322 (1979); Brown v. Felsen, 442

U.S. 127 (1979); or Erie R. Co. v. Tompkins, 304 U.S. 64

(1938), the three Supreme Court cases on which she relies

in her petition. Not surprisingly, the Ninth Circuit deci-

sion did not undertake any lengthy preclusion analysis,

merely ruling sub silentio that Robi was bound by the

findings favorable to Paul Robi (petitioner’s assignor)

made in a 1974 lawsuit with FPI and in subsequent fed-

eral cases, see Robi v. Five Platters, Inc., 838 F.2d 318 (9th

Cir. 1988) and 918 F.2d 1439 (9th Cir.1990) — including the

fact that the purported assignments by Reed, Paul Robi

and other performers were ineffective.

It is well settled that this Court will not grant cer-

tiorari or otherwise consider issues that were not pressed

before or considered by the court of appeals. Pa. Dept. of

Corrections v. Yeskey, 524 U.S. 206 (1998); United States v.

17

Williams, 504 U.S. 36, 41-44 (1992); Adickes, 398 U.S. at 147

n.2.

An additional reason for not considering petitioner’s

first question is its central reliance on a document not

before the district court on summary judgment and not

properly before the court of appeals. Robi did not submit

the 1987 Florida settlement document in opposition to

Reed’s summary judgment motion. Instead, Robi first

attempted to get it before the district court after entry of

the permanent injunction judgment. The district judge

denied Robi’s request to take judicial notice of the docu-

ment, a decision that Robi did not appeal. Thus, the

document certainly cannot be considered by this Court.

Adickes, 398 U.S. at n.16.

In any case, the 1987 settlement document does noth-

ing for Robi’s case. Reed retained the right to use “The

Platters” mark with his own name and, further, the right

to use “The Platters” alone if FPI were found to have no

rights in the name - a condition which in fact occurred.

See page 13, supra. Thus, the lower court decisions in this

case were entirely consistent with the 1987 conditional

settlement.

Ill. THE COURT OF APPEALS DID NOT ESTABLISH

A “FEDERAL PARTNERSHIP LAW” AND ITS

DECISION WAS IN ANY EVENT CORRECT

UNDER CALIFORNIA LAW

The heart of the Ninth Circuit’s ruling is its conclu-

sion that “The Platters” mark was owned collectively by

the musical group’s original five performers, and that

Reed — “the one who founded and named the group and

18

as the person who has maintained continuity with the

group and has been in a position to control the quality of

its services” — retained the right to use the mark because

the others left the group or passed away. The ruling

follows general partnership principles enunciated by this

Court more than 100 years ago and is correct under the

California partnership statute, even assuming arguendo it

is applicable.?

First, it is well established that a departing partner

does not take with him a right to use the partnership’s

name or mark. Menerdez v. Holt, 128 U.S. 514 (1888).

There, a partnership sold flour under the mark “La

Favorita.” One of the partners, Ryder, resigned and began

selling flour under the same mark. This Court affirmed

an injunction prohibiting Ryder from using the mark. It

expressly rejected the former partner’s contcation that he

should be allowed “his share” in the goodwill by using

the mark. Id. at 522. So long as the partnership remains in

business, it retains ownership of the mark. Id. While not a

music group case, Robi has offered no reason why the

rationale and holding of Menendez should not be applied

here.

The cases cited by the court of appeals and district

court are all in accord. Kingsmen v. K-Tel Int'l, Ltd, 557

9 Reed has argued, and still contends, that he is entitled to

exclusive rights as the undisputed first user of “The Platters”

mark. Columbia Mill Co. v. Alcorn, 150 U.S. 460, 463-64 (1893);

Sengoku Works Ltd. v. RMC Intern., Ltd., 96 F.3d 1217, 1219 (9th

Cir. 1996), cert. denied, 521 U.S. 1103 (1997); LaSociete Anonyme

Des Parfums Le Galion v. Jean Patou, Inc., 495 F.2d 1265, 1271 (2d

Cir. 1974). The court of appeals did not reach Reed’s contention.

WO dre siensans a

19

F.Supp. 178 (S.D.N.Y. 1983); HEC Enterprises, Ltd. v. Deep

Purple, Inc., 213 U.S.P.Q. 991 (C.D. Cal. 1980); Albertini v.

Giglio, (E.D.Pa. 1979) (unpublished; discussed in The Four

Aces Litigation: What's In A Name?, 5 Art & The Law 67

(1980)); Giammarese v. Delfino, 197 U.S.P.Q. 162 (N.D.IIl.

1977); Boogie Kings v. Guillory, 188 So.2d 445 (La. App. 3

Cir. 1966). Robi’s efforts to distinguish those cases are

unavailing. Robi has failed to offer any argument or law

suggesting how Paul Robi (never mind Martha, who has

never performed) could have usurped the group’s owner-

ship of the mark when he left the group due to a narcotics

arrest. Notably, Robi has not cited a single pertinent case

in her petition in support of her claim that the lower

court erred.!°

Second, when the partnership dissolved on Robi’s

arrest and departure in 1965, California partnership law

may have provided for a distribution of partnership

property. (None of the partners, however, requested such

a distribution. See discussion of partnership law, infra). In

view of the principle that service mark law normally

requires an exclusive award to a single user, Bell v. Street-

wise Records, Ltd., 761 F.2d 67, 76 (1st Cir. 1985) (Breyer

and Coffin, concurring), an award to all five partners

would not have been appropriate. See In re Marriage of

Shelton, 118 Cal. App. 3d 811, 173 Cal. Rptr. 629, 630-31

(3d Dist. 1981), in which the court ruled that a mark

10 Robi’s likening Reed to someone assisting Serbian

soldiers in their purge of Albanian Kosovars (Pet., at n.8) is not

only wide of the mark, but grossly offensive and scandalous,

warranting sanctions against Robi and her ghost writing

counsel. See note 1, supra.

20

owned jointly by a married couple doing business

together should be awarded in divorce to only one

spouse. Principles of equity would have compelled such

an award be made to Reed, the person who brought the

name to the partnership and originated the group.

Third, an alternative analysis of rights under the

California partnership statute - which Robi contends is

applicable — also results in an award of exclusive rights to

Reed. Under the statute, Paul Robi’s departure from The

Platters group in 1965 because of his arrest operated as a

“dissolution” of the partnership, defined as “the change

in the relation of the partners caused by any partner

ceasing to be associated in the carrying on as distin-

guished from the winding up of the business.” Cal. Corp.

Code § 15029. As that dissolution was caused wrongfully

by Paul Robi, and the business continued on, then Paul

Robi (not Martha) had a claim against his co-partners “to

have the value of his interest in the partnership, less any

damages caused to his co-partners by the dissolution,

ascertained and paid to him in cash .. . but in ascertain-

ing the value of the partner’s business the good-will of

the business shall not be considered.” Id. § 15038(2)(c)(II).

Any such claim by Paul Robi accrued “at the date of

dissolution”, i.e., in 1965. Id. § 15043. Paul Robi never

brought any claim against Reed or his other co-partners,

and by now any such claim would be time-barred. None

of Reed’s other partners brought any claim against him

after they left the partnership. Thus, as the last partner,

Reed owns “The Platters” mark.

21

IV. THE COURT OF APPEALS DECISION, PLAINLY

HOLDING THAT REED HAS THE RIGHT TO

EXCLUDE ROBI’S USE OF THE MARK, IS NOT

INTERNALLY INCONSISTENT

The Ninth Circuit decision is not “anomalous”, as

Robi contends. (Pet., at 25). It is entirely clear and inter-

nally consistent. The Ninth Circuit correctly recognized:

[O]ur previous decisions did not address Paul

Robi’s rights to use the name “The Platters” as

compared to Herb Reed’s, nor did they address

Martha Robi’s rights to use that name as com-

pared to Herb Reed’s. Rather, they addressed

FPI’s rights to prevent Paul Robi from using the

name “The Platters.”

App. A, 4a; 173 F.3d at 738. The court then held “the

district court was correct in ruling that Reed had a right

to use of the name to the exclusion of [Martha] Robi.”

App. A, 8a; 173 F.3d at 740. The court’s statement in

footnote 1 is addressed not to Reed personally — who the

court ruled has the right to use “The Platters” mark — but

to other members of his present group.

In any event, there is no reason for this Court to

review a footnote in this decision or any other court of

appeals decision.

22

CONCLUSION

Reed, Villano and JPPI respectfully request the court

to deny Robi’s petition for writ of certiorari.

Respectfully submitted,

T. CHRISTOPHER DONNELLY

Counsel of Record

DONNELLY, CONROY & GELHAAR, LLP

One Post Office Square

Suite 3350

Boston, MA 02109-2105

Tel. (617) 542-7400

Counsel for Respondents