Petition for Writ of Certiorari — Anderson v. Imperial Center V, L. P.

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Supreme Geurt, U8.

FILED

98 954K 2 199%

OFFICE OF THE CLERK

IN THE

Supreme Court of the United States

October Term, 1998

LEONA R. ANDERSON,

Petitioner,

IMPERIAL CENTER V, L.P., a California

Limited Partnership, ET AL.,

Respondents.

On Petition For Writ Of Certiorari

To The United States Court of Appeals

For the Ninth Circuit

PETITION FOR A WRIT OF CERTIORARI

Leona R. Anderson

Petitioner, Pro Se

10508 Valle Vista Road

Lakeside, CA. 92040

(619) 445-7500

QUESTIONS PRESENTED FOR REVIEW

Whether a subsequent action in federal court for

jurisdiction of the United States District Court constitutes an

exception to Title 28 U.S. C., Section 1738 which provides

that state judicial proceedings "shall have the same full faith

and credit in every court within the United States as they

have by law or usage in the courts of such State from which

they are taken."

Whether a state court judgment based on an action

for breach of contract and other contract causes of action,

conversion and trespass to personal property, by the

application of the doctrine of "collateral estoppel", precludes

a subsequent action in federal court for copyright

infringement.

(i)

TABLE OF CONTENTS

QUESTIONS PRESENTED .......-ccovecsscosscecevsenses a.

TABLE OF AUTHORITIES .....:0cccedsscecsossctssesveses IV - Vi

CFE Rat Seeded OF nic nseiswcnendibinivbesseibiiavesanaebioecal l

FOIE CTE <skivonsnsiircseceviinsiannipinsiuchlineisaneiain l

STATUTORY PROVISION INVOLVED ........... l

STATEMENT OF THE CASE ..........cccossecsesnseesess 5

ARGUMENT - REASONS FOR GRANTING THE

PETITION

I. A Subsequent Action in Federal Court for

Exclusive Jurisdiction of the United States

District Court Constitutes an Exception to the

Full Faith and Credit Act, Title 28 U.S.C.,

Section 1738

The Question Presented Involves an Important

Issue Under Copyright Law ..............ccceeeeeees 9

I]. A State Court Judgment Based on an Action for

Breach of Contract and Other Contract Causes of

Action, Conversion and Trespass to Personal

Property cannot be Deemed to Preclude a

Subsequent Action in Federal Court for

Doctrine of Collateral Estoppel

The Decision of the Ninth Circuit is in Conflict

with Its Prior Decision in Oddo v. Reis(1984). 16

(ii)

TABLE OF CONTENTS - continued

Page

SP AAMEENOE <hticibdiksedshamseshestnatelichstnnetbinkeisépbninovvessveenewotes 28

PUR ETR IEE ssdishatssancsdnsateegentober cubepdiipepenbioesebtgntavscesibeniietcncs la

(ili)

TABLE OF AUTHORITIES

Page

Cases

Allen v. McCurry, (1980) 449 U.S. 90, 95 ooo... 20, 21

Architectronics, Inc. v. Comtroc Systems, Inc.

FSS F SUDO. 425, CS IIIT. VFI) ciccsscensscnsessccccsvsoees 25

Becher v. Contoure Laboratories, 279 U.S. 388,

TF Se, Sk Bs Fe eek TO CE ID wicccetctacirsncemnnsceenses 18

Bernhard v. Bank of America, 19 Cal.2d 807, 813,

LAE ce era: | RL widatnatclbinntaieipdanibicegnhinnnecvtavvens 19

Clark v. Watchie, 513 F.2d 994 (9th Cir. 1975)

cert. den. 423 U.S. 841, 96 S.Ct. 72, 46 L.Ed.60

CED Feed sebundestithhcincciatesainckaiaiieedinanklandzacminidiopbinimecrnicces 18

Del Madera Properties v. Rhodes and Gardner, Inc.

Cele Cae, TSG T) BO Fie Flas FE cessesnisacicstarsscstescterse 17

Dielsi v. Falk (DC C.D.Cal. 1996) 916 F.Supp.985, 992.. 26

Harper & Rowe Publishers v. Nation Enterprises

723 F.2d 195, 200 (2nd Cir. 1983, cert. granted

__US.__ 104. S.Ct. 1655, 81 L.Ed.2d 362

CADRE sccncicientiisikiisiainstsianiechisanias cogdtipaeiiaenataeagh ulisckiiianibeinbies 24

Kremer v. Chemical Constr. Corp., 456 U.S. 467, 468

CRUE) ccescietinnt lanes conned duiiaianhicde piiaasabdhcdaastabvaliaeananebeaiins 14

L.A. Unified School Dist. v. L.A. Branch NAACP,

TIE F.2d G25, DES CO Ce, TG Spas cenchccctcsnscvpnesccvesoveses 19

Lyons v. Westinghouse Electric Corp., 222 F.2d 184

(2d Cir. 1955), cert. den. 350 U.S. 825, 76 S. Ct.

A Ry Fa, |.) TR Se ee 18

Marrese v. American Academy of Ortho Surgeons

BPO Te, Siig Fe Te itis evieeitiitinniinaaninncton 10, 11

Matsushita Elec. Industrial Co. v. Epstein

Se SEs a Pk iced negated diiiceneinnannieianiities 10

(iv)

TABLE OF AUTHORITIES - continued

Page

Cases

Migra v. Warren City School Dist. Bd. of Ed.

GS SF Fe Ee ELON chtthenletbediicriédicdtbineiécisccnsocsonceses 1]

Motown Record Corp. v. George A. Hormel & Co.

Oe Re oy PRON i ts Rinaace i aN USSSA as eR 25

Oddo v. Ries, 743 F.2d 630, 635 (9th Cir. 1984)

icakecalisieiNaiahintaaioaasctukgebipscuaisaunsas selslindahasiabian 24, 25, 27

Radzanower v. Touche Ross & Co., 426 U.S. 148,

BE LE Te sndeiedc is bietcndustedncbenteabiadectalsneeidiclenniocacede cesta 14

Resolution Trust Corp. v. Teen Partnership

(D.Colo. 1993) 835 F.Supp. 563, 571-2 ............sceceeeess 10

Trandes Corp. v. Guy F. Atkinson Co.

996 F.2d 655, 659-660 (4th Cir. 1993)... 21,22

Trujillo v. County of Santa Clara

FTO Edt bO ais, BARGE: AO) inv cctcacimesconsnetovnones 20

Valley National Bank of Arizona v. A.F. Rouse & Co.

CPU CE. SFr) LE Oe Cl des SOAS ecttricidintsidticmeitocne 10

Statutes & Rules

BF Rhee BE CE BO srvceeccsccnsncnsnessacbcasinssapvancbion 18, 26

OF ne Ue cca nckes nisidinidoanlaniccisnseccsunebicwseunss ]

Be Sree as Pe whiieccassssccoctes RN aPC RAE oe er AE FO 7

BE Sr Ea ‘ciaesksecenoisioniersiiencssninssnscscnaounieiaeets 2

BF RR, SITs cai ichinisctoldckonsenineiinduontonessenibasaenene 5

BF Sees IE: besiebinsrcesdmiaritnsentoemnsiaronaadbties 3

Bhs Oe BE PTRED sitenthcstenisegnsscndinaiiaitbiinenbatinsbiinien l

Br SRR NOE 0 FO accachicnsvicahnsnbaehindycoventesmpsosons 4,9, 11,14

California Code of Civil Procedure

Sec. 1911 11

(v)

TABLE OF AUTHORITIES - continued

Cases

Law Treatises & Text Authorities

13 Cal Jur 3d (Rev) Part 1, Const. Law, Sec. 95

16 Cal Jur 3d (Rev) Part 1, Courts, Sec. 112

Page

Nimmer on Copyright, Sec. 1.01[B] (1) (a), (1) 25, 26

Witkin, Summary of California Law, Torts, Sec. 613

Restatement 2d of Judgments, Sec. 68.1(c)

[Tent. Draft No. 4, 1977], Sec. 28(d) (e)

Restatement 2d Judgments, 1982 Sec. 28

(d) (e); Sec. 29

Miscellaneous

S. 22, 94th Cong.2d Sess., September 3 & 22, 1976

Revision Notes and Legislative Reports, 1976 Acts;

Notes of Committee on Judiciary, House Report No.

94-1476, September 3, 1976

(vi)

OPINIONS BELOW

The opinion of the Ninth ‘Circuit Court of Appeals,

affirming the District Court in this Copyright Infringement

case and the Order denying the Petition for Rehearing are

unpublished.

JURISDICTION OF THE COURT

The Court of Appeals entered its judgment affirming

the District Court on January 16, 1998. The Court

subsequently entered on September 3, 1998, its Order

denying the Petition for Rehearing filed by Anderson. The

jurisdiction of this Court on Petition for a Writ of Certiorari

is invoked under Title 28 U.S.C., Section 1254(1).

STATUTE INVOLVED

U.S. COPYRIGHT ACT, Title 17, Sec. 101, et seq.

Title 17, U.S.C., Section 102. Subject matter of copyright: In

General

(a) Copyright protection subsists, in accordance with

this title, in original works of authorship fixed in any tangible

medium of expresion, now known or later developed, from

which they can be perceived, reproduced, or otherwise

communicated, either directly or with the aid of a machine or

device. Works of authorship include the following

categories:

€ * e € ¥ ¥

(8) architectural works.

(b) In no case does copyright protection for an

original work of authorship extend to any idea, procedure,

process, system, method of operation, concept, principle, or

discovery, regardless of the form in wich it is described,

explained, illustrated, or embodied in such work.

Title 17, U.S.C., Section 106. Exclusive rights in copyrighted

works :

Subject to sections 107 through 120, the owner of

authorize any of the following:

(1) to reproduce the copyrighted work in copies or

phonorecords;

(2) to prepare derivative works based upon the copyrighted

work;

(3) to distribute copies or phonorecords of the copyrighted

work to the public by sale or other transfer of ownership, or

by rental, lease, or lending;

(4) in the case of literary, musical, dramatic, and

choreographic works, pantomimes, and motion pictures and

other audiovisual works, to perform the copyrighted work

publicly; and

(5) in the case of literary, musical, dramatic, and

choreographic works, pantomimes, and pictorial, graphic, or

sculptural works, including the individual images of a motion

picture or other audiovisual work, to display the copyrighted

work publicly.

Title 17, U.S.C., Section 201. Ownership of copyright

(a) Initial Ownership.-Copyright in a work protected

under this title vests initially in the author or authors of the

work. The authors of a joint work are coowners of copyright

in the work.

* * w e a &

Title 17, U.S.C., Section 301. Preemption with respect to

other laws

(a) On and after January 1, 1978, all legal or equitable

rights that are equivalent to any of the exclusive rights within

the general scope of copyright as specified by section 106 in

works of authorship that are fixed in a tangible medium of

expression and come within the subject matter of copyright

as specified by sections 102 and 103, whether created before

or after that date and whether published or unpublished, are

governed exclusively by this title. Thereafter, no person is

entitled to any such right or equivalent right in any such work

under the common law or statutes of any State.

(b) Nothing in this title annuls or limits any right or

remedies under the common law or statutes of any State with

respect to —--

(1) subject matter that does not come within the subject

matter of copyright as specified by sections 102 and 103,

including works of authorship not fixed in any tangible

medium of expression; or

(2) any cause of action arising from undertakings

commenced before January 1, 1978;

(3) activities violating legal or equitable rights that are not

equivalent to any of the exclusive rights within the general

scope of copyright as specified by section 106; or

(4) State and local landmarks, historic preservation, zoning,

or building codes, relating to architectural works protected

under section 102(a)(8).

Title 17, U.S.C., Section 302. Duration of copyright: Works

created on or after January 1, 1978

(a) In General.-Copyright in a work created on or

after January 1, 1978, subsists from its creation and, except

as provided by the following subsections, endures for a term

consisting of the life of the author and fifty years after the

author’s death.

* * e * * *

FULL FAITH AND CREDIT ACT, Title 28 U.S.C. , Section

1738.

“State and Territorial statutes and judicial

proceedings; full faith and credit

“The Acts of the legislature of any State, Territory, or

Possession of the United States, or copies thereof, shall be

authenticated by affixing the seal of such State, Territory or

Possession thereto.

“The records and judicial proceedings of any court of

any such State, Territory or Possession, or copies thereof,

shall be proved or admitted in other courts within the United

States and its Territories and Possessions by the attestation of

the clerk and seal of the court annexed, if a seal exists,

together with a certificate of a judge of the court that the said

attestation is in proper form.

“Such Acts, records and judicial proceedings or

copies thereof, so authenticated, shall have the same full faith

and credit in every court within the United States and its

Territories and Possessions as they have by law or usage in

the courts of such State, Territory or Possession from which

they are taken.” (June 25, 1948, c. 646, 62 Stat. 947.)

STATEMENT OF THE CASE

FACTUAL AND PROCEDURAL BACKGROUND

In or about July, 1988, Anderson became aware of an

unimproved tract of land for sale in the City of San Diego,

California. The seller was the Catholic Church, Diocese of

San Diego Education and Welfare Corporation.

Upon acquisition of this property by a corporation in

which she had an interest, Anderson proceeded with the

development of this tract of land into a 53-lot single-family

home subdivision known as "Kings Row".

On July 3, 1989, the City of San Diego Subdivision

Board approved Anderson's Tentative Subdivision Map No.

89-0075 by a Resolution adopted by the Board.

Imperial Center V and other defendants named in

Anderson's first state court action acquired the "Kings Row"

Subdivision tract of land as a result of foreclosure

proceedings and proceeded with further development of the

property with the unauthorized use of Anderson's approved

Tentative Subdivision Development Map (TM) .

The new developers hired the engineering firm of

Hale Surveyors, Inc.(HSI) of La Mesa, California to continue

with the surveying and engineering work required for further

development of the "Kings Row" subdivision. HSI had

previously been hired by Anderson in the initial phases of the

subdivision development to continue with surveying and

engineering work required for processing the TM for

Seen ee

approval by the City of San Diego of a Final Subdivision

Development Map to permit the ensuing field work and

construction of houses in the tract.

When Anderson forfeited the property through

foreclosure, HSI proceeded to accept employment by the new

developers for performance of engineering work necessary

to pursue development of the "Kings Row" subdivision to its

final completion making available to these new developers

Anderson's approved TM and other development materials

without her knowledge and consent.

Anderson filed an action on May 27, 1994 in state

court against the new developers, Hale Surveyors, Inc. and

the City of San Diego, California alleging breach of contract

and other related contract actions, conversion and trespass to

personal property based upon the unauthorized use by the

defendants named in that lawsuit of her city-approved

Tentative Subdivision Development Map (TM). On January

26, 1995, Anderson filed a Third Amended Complaint upon

which the case proceeded to a trial on the merits against all

defendants, except the City of San Diego, California. On or

about April 28, 1995, the trial Court granted the City's

motion for summary judgment and subsequently entered an

order accordingly.

Upon the successful conclusion of her lawsuit in state

court, by recovery of a money damage judgment on a jury

special verdict against Hale Surveyors, Inc.(HSI), Anderson

proceeded to file, on August 31, 1995, a Copyright

Infringement action in federal court relating to her TM

against the new developers

named in her prior state court action and additional

defendants named in her second federal court lawsuit, who

were not named in her prior lawsuit in state court.

On October 26, 1995, the defendants named in

Anderson's Copyright Infringement action filed a Motion to

dismiss Anderson’s case under the Federal Rules of Civil

Procedure, Rule 12(b) (6) on the grounds that the Copyright

Infringement claim in federal court was barred by the

doctrine of res judicata and by license to the defendant, HSI.

On February 20, 1996, the District Court ruled on the

dismissal motion and filed an order dismissing Anderson's

because of her prior recovery of a judgment in state court

relating to her TM, citing to Robi v. Five Platters, Inc. 838

F, 2d 318, 321-23 (9th Cir. 1988), a trademark infringement

case with respect to which both the state and federal courts

have jurisdiction under state and federal law.

On February 29, 1996, at the direction of the District

Court, the Clerk of the Court entered a "final judgment"

against all defendants in the action, except Hale Surveyors,

Inc. (HSI), because the corporation was then in bankruptcy.

On March 15, 1996, Anderson filed an appeal from

the District Court's order and final judgment under the

Federal Rules of Appellate Procedure, Rules 2 and 4.

On January 16, 1998, the Court of Appeals entered its

judgment affirming the District Court. The Court of Appeals

subsequently entered, on September 3, 1998, its order

denying a Petition for Rehearing filed by Anderson.

This Petition for a Writ of Certiorari is filed

requesting a review of the decision and judgment of the

United States Court of Appeals for the Ninth Circuit entered

in this case.

;

ARGUMENT- REASONS FOR GRANTING THE PETITION

JURISDICTION OF THE UNITED STATES DISTRICT COURT

CONSTITUTES AN EXCEPTION TO THE FULL FAITH AND

CREDIT ACT, TITLE 28 U.S.C., SECTION 1738

The Constitution’s Full Faith and Credit Clause'/ is

implemented by the federal Full Faith and Credit Act, Title

28, U.S.C., Sec. 1738. That statute provides, in pertinent

part:

ag o * * * *

“Such Acts, records and judicial proceedings or

copies thereof, . . . shall have the same full faith and credit in

every court within the United States and its Territories and

Possessions as they have by law or usage in the courts of

such State, Territory or Possession from which they are

taken.”

"Full Faith and Credit shall be given in each State to the public

Acts, Records, and judicial proceedings of every other State. And the

Congress may by general Laws prescribe the Manner in which such Acts,

Records and Proceedings shall be proved, and the Effect thereof”

Generally, the Full Faith and Credit Act requires

federal courts to give state court judgments the same effect

they would have in the state in which they were rendered.

Marrese v. American Academy of Ortho Surgeons, 470

U.S.373, 380 (1985); Valley Nat. Bank of Arizona vy.

A.E.Rouse & Co. (9th Cir. 1997) 121 F.3d 1332, 1335.

However, if the federal claim would be precluded

under state law principles of preclusion, the federal court

must then “determine if an exception to Section 1738 should

apply”, Id. at 1335. Marrese, supra; Matsushita Elec.

Industrial Co. V. Epstein, 516 U.S. 367, 375 (1996); Trujillo

v. County of Santa Clara (9th Cir. 1985) 775 F.2d 1359,

1364.

Waiver, estoppel and collateral estoppel are common-

law judicial doctrines; as such, a court can establish

exceptions to their application. Resolution Trust Corp. v.

Teen Partnership (D.Colo. 1993) 835 F.Supp. 563, 571-2.

The decision by this Court in Marrese is squarely in

point with the case under review. There, the opening

remarks of that decision by Justice O’Connor writing for the

majority are, at p.375.

“This case concerns the preclusive effect of a state

court judgment in a subsequent lawsuit involving federal

antitrust claims within the exclusive jurisdiction of the

federal courts.”

That is precisely the issue involved in the case under

review, except that, instead of an antitrust action, a copyright

federal courts is the Subject of the second action filed in

federal court by Anderson.

In Marrese, this Court granted certiorari on the

question of whether the Seventh Circuit Court of Appeals

correctly held that claim preclusion required dismissal of the

subsequent federal antitrust action filed by the plaintiff in

that case, 467 U.S. 1258 (1984). The Court of Appeals was

reversed. For the reasons presented below, we urge the same

the preclusive effect in federal

court of [a] state-court Judgment is determined by [state]

law”. Migra v. Warren City School Dist. Bd of Ed., 465

U.S. 75, 81 (1984).

deemed to have been adjudged in a former judgment which

@Ppears Open upon its face to have been so adjudged, or

which was actually and necessarily included therein or

necessary thereto. CCP 191].

Legal or equitable rights acquired under the laws of

the United States may be enforced in either the federal courts

or the state courts, subject to the qualification that Congress

may, if it sees fit, give to federal courts exclusive

jurisdiction. 16 Cal Jur 3d (Rev) Part 1, Courts, Sec. 112.

The general rule, referred to in legal parlance, as the

doctrine of preemption, is that when Congress has legislated

in an area common to both the federal and state governments,

the congressional act supersedes all inconsistent state

legislation. The underlying rationale of the federal

preemption doctrine is that the supremacy clause of the US

Constitution invalidates state laws that interfere with or are

contrary to federal laws.13 Cal Jur 3d (Rev) Part 1,

Constitutional Law, Sec. 95.

Thus, in the field of intellectual works of art, the

Congress has legislated to preempt the state courts from

adjudicating controversies and issues involving the

interpretation and application of copyright law. When

congress enacted the new Copyright Act of 1976, under

which Anderson filed her copyright infringement claim

respecting her TM, the unqualified objective of that federal

law was to preempt the states from enacting any legislation

of their own in the field of copyright law and to preempt the

courts of the various states from adjudicating in any manner

disputes that might arise in connection with intellectual

documents and other works of art.

The new Copyright Act was enacted by congress in

the spirit of developing a uniform system of laws with which

to settle such disputes. Instead of a dual system of “common

;

Brin “sb Satan ie bre Nh

law copyright” for unpublished works and statutory

effect in the US since the first copyright statute was adopted

by the colonies in 1790, the new Copyright Act of 1976 was

intended to extend Statutory protection to a copyrightable

work from the moment of its creation, whether it be

published or unpublished.

By substituting a single Federal system for the old,

anachronistic and highly complicated dual system, the 1976

Act was designed to greatly improve the operation of the

the basic constitutional aims of uniformity and the promotion

of writing and scholarship.

One of the fundamental purposes behind the

Madison’s comments in The Federalist, was to promote

national uniformity and to avoid the practical difficulties of

determining and enforcing an author’s rights under differing

laws and j l 4

Revision Notes and Legislative Reports, 1976 Acts; Notes of

Committee on the Judiciary, House Report No. 94-1476,

September 3, 1976.

It is respectfully submitted that to permit a principle

of law, such as the doctrine of collateral estoppel, which

depends for its application on the law of a given state, to

prevent the Petitioner from enforcing her rights concerning

her copyrighted TM in a subsequent action in federal court,

having first brought suit in a prior state-court action to

enforce claims arising under state law, would obviously

undermine the avowed purpose and spirit of the federal

moment of creation by a uniform body of laws enforceable

only in the federal courts. To do so would create a legal

paradox.

In addressing the issue presented in the instant case,

which is identical to that presented in Marrese, supra, this

Court stated, at p. 386:

“Only if state law indicates that a particular claim or

issue would be barred, j mine if an

. Although for purposes

of this case, we need not decide if such an exception exists

for federal antitrust claims, we observe that the more general

question is whether the concerns underlying a particular

grant of exclusive jurisdiction justify a finding of an implied

partial repeal of Section 1738.

nature of the claim or issue involved in the subsequent

action. OUR PREVIOUS DECISIONS INDICATE THAT

THE PRIMARY CONSIDERATION MUST BE THE

INTENT OF CONGRESS.” (Underlining and blocking

added for emphasis). See also Matsushita Elec. Industrial

Co. v. Epstein, supra, at p. 380 quoting from Marrese.

In the instant case, there is an “irreconcilable

conflict” between the federal Copyright Act and the Full

Faith and Credit Act which is the standard for finding an

implied repeal of Section 1738. Kremer v. Chemical Constr.

Corp. 456 U.S. 467, 468 (1982); quoting Radzanower v.

Touche Ross & Co. 426 U.S. 148, 154 (1976); Matsushita,

supra.

Ag 14

ke ate areal

The decision by the Ninth Circuit in this case

applying the doctrine of collateral estoppel to bar

enforcement of Anderson’s copyright infringement claim in

federal court, fails to give due regard to the intent of

Congress and the underlying spirit and objective of the

federal Copyright Act of 1976 to create a uniform body of

federal laws enforceable only in the federal courts.

ARGUMENT-REASONS FOR GRANTING THE PETITION

POINT Il

A STATE COURT JUDGMENT BASED ON AN ACTION FOR

BREACH OF CONTRACT AND OTHER CONTRACT CAUSES OF

ACTION, CONVERSION AND TRESPASS TO PERSONAL

PROPERTY CANNOT BE DEEMED TO PRECLUDE A

SUBSEQUENT ACTION IN FEDERAL COURT FOR COPYRIGHT

INFRINGEMENT BY THE APPLICATION OF THE DOCTRINE OF

COLLATERAL ESTOPPEL

On May 27, 1994, the Petitioner filed in San Diego

Superior Court an action against Imperial Center V, a

California Limited Partnership, and other defendants”/

alleging breach of contract and other related contract actions,

conversion and trespass to personal property based upon the

unauthorized use by the defendants named in that lawsuit of

her city-approved developer’s Tentative Subdivision

Development Map (TM).

On June 6, 1995, the case proceeded to a trial on the

merits pursuant to a Third Amended Complaint filed by the

Petitioner. At the conclusion of the trial, the Jury returned a

Special Verdict in favor of the Petitioner, and awarded

2/ The defendants named in the present Copyright Infringement

action who were not named in petitioner’s prior state court action are:

Robert J. Holland, Trustee U/ D/T dated November 24, 1982, (as

amended); Joseph M. Burkhardt, as Trustee of Burkhardt Inter Vivos

Trust, dated August 27, 1982; Jon Jentz, an individual; Robert J. Holland,

as Trustee; Joseph H. Burkhardt, as Trustee.

money damages of $200,000. The trial court entered a

judgment accordingly.

Subsequently, on August 31, 1995, the Petitioner

filed in federal court the present Copyright Infringement

action relating to her TM against the defendants named in her

prior state court lawsuit’/.

A developer’s Tentative Subdivision Map is a

copyrightable document. Del Madera Properties v. Rhodes

and Gardner, Inc. (9th Cir. 1987) 820 F.2d 973, 977. The

US Copyright Act, Sec. 106 provides a copyright owner with

the exclusive rights, for life, of reproduction, preparation of

derivative works, distribution, and display. 17 U.S.C. , Sec.

106. See id. at 977. Petitioner became the owner, by

assignment, of the copyright to the TM in 1995.

3 The defendants in the present Copyright Infringement action,

in addition to Imperial Center V, LP. , a California limited partnership

are: Triple J. Development, a California limited partnership, a general

partner of Imperial Center V, L_P. ; J.P. Brennan Enterprises, Inc., a

California corporation, a general partner of Triple J. Development:

Holland Construction, Inc., a California corporation; Robert J. Holland,

Trustee U/D/T dated November 24, 1982, (as amended); Joseph M.

Burkhardt, as Trustee of the Burkhardt Inter Vivos Trust, dated August

27, 1982; Hale Surveyors, Inc., a California corporation; James L. Hale,

an individual; James P. Brennan, an individual; Robert J. Holland, an

individual; Jon Jentz, an individual; Robert J. Holland, as Trustee: Joseph

H. Burkhardt, as Trustee.

The courts have established four criteria for the

application of the doctrine of “collateral estoppel” (issue

preclusion) in a given case, which are: (1) the prior judgment

must be rendered by a court of competent jurisdiction and in

accordance with due process requirements; (2) the judgment

must be final and on the merits; (3) there must be an identity

of both parties or their privies; and (4) the later proceeding

must involve the same cause of action,

With regard to the first requirement, this court has

held that a grant of exclusive jurisdiction to federal courts

does not automatically preclude the application of the

doctrine of “collateral estoppel.” Becher v. Contoure

Laboratories 279 U.S. 388, 49 S.Ct. 356, 73 L.Ed. 752

(1928); cf. Clark v. Watchie, 513 F.2d 994 (9th Cir. 1975)

cert. den. 423 U.S. 841, 96 S.Ct. 72, 46 L.Ed.2d 60 (1975).

However, collateral estoppel is inappropriate when “a

new determination is warranted . . . by factors relating to the

allocation of jurisdiction between [the two courts].”

Restatement 2d of Judgments, Sec. 68.1(c) [Tent. Draft No.

4, 1977], Sec. 28 (d) (e) cf. Lyons v. Westinghouse Electric

Corp. 222 F.2d 184 (2d Cir. 1955), cert. den. 350 U.S. 825,

76 S.Ct. 52, 100 L.Ed. 737 (1955) (refusal to give collateral

estoppel effect to state court finding of no antitrust violation

because of need for “an untrammeled jurisdiction of the

federal courts.” Jd, at 189.

In the instant case, the Ninth Circuit, citing to

California law on the requirements for collateral estoppel to

apply, states: OP. , p.2.

“Subsequent litigation of an issue in federal court

may be barred under the doctrine of collateral estoppel, if the

issue was actually litigated in state court. (citation). In

California, collateral estoppel precludes relitigation of an

issue if the issue is identical to the one previously decided,

the final judgment was final and on the merits, and the party

being estopped was a party, or in privy with a party, to the

prior action.”

(Underlining added)

These criteria for the application of collateral estoppel

as a defense are enunciated in a case previously decided by

the Ninth Circuit in L.A. Unified School Dist. v. L.A. Branch

NAACP, 714 F.2d 935, 945 (9th Cir. 1983) , citing to the

California case of Bernhard v. Bank of America, 19 Cal.2d

807, 813, 122 P.2d 892, 895 (1942).

It is the element of identity of issues that were

litigated and determined in Anderson’s state court action

against the Defendants there, all of whom and others are

involved as Defendants in her Copyright Infringement

lawsuit, that prevents the application of the defense of

collateral estoppel to cause her prior state court judgment,

which adjudicated merely her common law causes of action

FOR BREACH OF CONTRACT, CONVERSION and

TRESPASS TO PERSONAL PROPERTY against these

Defendants, to act as a bar to her federal Copyright

Infringement claim, in the context of the admonition by the

US Supreme Court in Allen v. McCurry (1980) 449 U.S. 90,

95, that “the concept of collateral estoppel cannot apply

when the party against whom the earlier decision is asserted

did not have a ‘full and fair’ opportunity to litigate that issue

in the earlier case.”; See Restatement 2d Judgments, 1982

Sec. 28 (d) (e); Sec. 29.

The Supreme Court’s caveat was acknowledged by

the Ninth Circuit in Trujillo v. County of Santa Clara, 775

F.2d 1359, 1366 (9th Cir. 1985) which case was cited as the

court’s principal authority to apply collateral estoppel to bar

Anderson’s Copyright Infringement claim, where the court

stated, at p. 1369:

“Of course, collateral estoppel may be invoked only

if the party against whom it is being asserted received a full

and fair opportunity to litigate his claim in the first

proceeding.”, citing to McCurry, supra.

Suffice it to say, Anderson did not have a “full and

fair” opportunity to litigate a claim deemed to be within the

scope of the rights protected by the US Copyright Law,

because her lawsuit in state court was focused exclusively on

litigation of her claims for BREACH OF CONTRACT,

CONVERSION and TRESPASS TO PERSONAL

PROPERTY as alleged in her Complaint filed in that action.

A determination of the identity of the issue litigated

in the prior action with the issue in a subsequent action to

invoke the rule of collateral estoppel as a defense to the later

action, requires a careful analysis and comparison of the

allegations of the pleadings in each action. A case which

best illustrates this principle is the decision by the Fourth

Circuit in Trandes Corp. v. Guy F. Atkinson Co., 996 F.2d

655, 659-in, 4th Cir. 1993). That case involved a lawsuit

for trade secret misappropriation filed in the US District

Court. Trandes also asserted a claim for copyright

infringement. The Defendant argued, inter alia, that the

Plaintiff's claim for trade secret misappropriation was

preempted by the Copyright Act. Both the District Court and

the Fourth Circuit concluded that the Copyright Act did not

preempt Trandes’ trade secret claims.

The significance of the Trandes case in seeking an

answer to the question presented in the case under review, as

to the applicability of the defense of collateral estoppel on a

claim that the issues adjudicated in Anderson’s state court

action for BREACH OF CONTRACT, CONVERSION and

TRESPASS TO PERSONAL PROPERTY are identical to

the issues to be decided in her Copyright Infringement claim,

is the appellate court’s approach in comparing the constituent

elements of a claim for trade secret misappropriation with a

claim for Copyright Infringement.

The significant language of that decision by the

Fourth Circuit in Trandes, supra, as it relates to the

resolution of the problem of whether or not, in the instant

case, it is proper to invoke the defense of collateral estoppel

to bar Anderson’s Copyright Infringement federal lawsuit by

her prior state court judgment based solely on litigation of

the issues involved in proving her claims for BREACH OF

CONTRACT, CONVERSION and TRESPASS TO

PERSONAL PROPERTY brought against most of the

Defendants now named in her Copyright Infringement

action, appears at p. 660:

“We agree with the Second Circuit that the breach of

a duty of trust or confidentiality comprises the core of actions

for trade secret misappropriation and ‘supplies the extra

element’ that qualitatively distinguishes such trade secret

causes of action from claims for copyright infringement that

are based solely upon copying.” (citations)

The Third Amended Complaint filed in Anderson’s

state court lawsuit upon the basis of which the case

proceeded to trial alleged causes of action for BREACH OF

CONTRACT, CONVERSION, TRESPASS TO

PERSONAL PROPERTY, and various other related Breach

of Contract claims, as well as some Tort claims resulting

from the actions of the Defendants against which

she complained. The FIRST CAUSE OF ACTION FOR

CONVERSION OF PROPERTY was pleaded in terms of the

traditional elements which constitute a common iaw cause of

action for Conversion, i.e. physical possession and dominion

and control over development materials and work products

which she had created that were necessary to achieve

tentative approval from the appropriate authorities of the City

of San Diego for development of her “Kings Row”

subdivision project.

The SECOND CAUSE OF ACTION FOR

TRESPASS TO PERSONAL PROPERTY was couched in

essentially the same allegations as those in her Conversion

claim, i.e. physical interference with her development

materials and work products which she had made available to

her project surveyor and engineer for the purpose of

obtaining from the City a Final Approval of the subdivision

to permit the ultimate construction of one-family homes in

the tract until the project was completely built out.

There was not the remotest Suggestion in any of the

various allegations of Anderson’s complaint in the earlier

State court lawsuit that she was seeking relief or protection of

rights protected by the US Copyright Act. Causes of action

for common law Conversion and Trespass to Personal

Property are qualitatively different from a Copyright

Infringement claim. Thus, the element of j i i

for the application of the principle of collateral estoppel to

operate as a defense to her present copyright infringement

claim is absent.

Clear and cogent support for this contention by the

Petitioner, in the case under review, is provided by a

previous decision by the Ninth Circuit in the case of Oddo v.

Ries, 743 F.2d 630, 635 (9th Cir. 1984). The following

pertinent language appears in the opinion, at p. 635:

“Conversion of tangible property involves actions

different from those proscribed by the copyright laws, and

thus is not preempted, citing to Harper & Row, 723 F.2d at

201.

“Oddo also claimed that Ries breached the fiduciary

duty that Ries owed Oddo as a partner. Because a partner’s

duty to his co-partner is quite different from the interests

protected by copyright, this cause of action is also not

preempted.”

Likewise, the Breach of Contract claims filed by

Anderson against her project engineer, d/b/a Hale Surveyors,

Inc., were all about the breach of his professional duty to her

by misappropriating her development materials and work

products in gaining Final City Approval of the subdivision in

complicity with other third-party developers who took

advantage of the development materials, work products and

tentative subdivision map approval by the City for their own

use and financial benefit.

With regard to the qualitative difference between a

state common law cause of action for CONVERSION and

the lesser tort of TRESPASS TO PERSONAL PROPERTY

an early draft of the Copyright Act included a list of state

claims which would not be preempted by federal law, as not

being the equivalent to any of the exclusive nights within the

general scope of copyright protection.

On that list were causes of action for

trespass and conversion. S. 22, 94th Cong. 2d Sess. ;

September 22, 1976. However, the list of such causes of

action was excluded from the bill as finally enacted in favor

of a general provision in Section 301 (b) (3) which states:

“Nothing in this title annuls or limits any rights or

remedies under the common law or statutes of any State with

respect to—

“(3) activities violating legal or equitable rights that

are not equivalent to any of the exclusive nights within the

general scope of copyright as specified by section 106"

It thus remains for the courts to sort out which state

law causes of action are or are not equivalent to rights

covered by the Copyright Act. Motown Record Corp. vy.

George A. Hormel & Co., 657 F.Supp. 1236, 1239 (C._D.Cal.

1987). As stated above, the Ninth Circuit in Oddo y. Ries,

supra, has previously declared that “Conversion of tangible

Property involves actions different from those proscribed by

the copyright laws”, and, by implication, this rule would also

apply to the lesser tort of Trespass to Personal Property.

claim requires an “extra element” that renders the claim

qualitatively different from a claim for copyright

infringement: a promise by the defendant. Breach of contract

Claims are not preempted under the copyright act.

Architectronics, Inc. y. Comtroc Systems, Inc., 935 F.Supp.

425, (S.D.N.Y. 1996) and cases cited at 439, See 1 Nimmer

on Copyright, Sec 1.0] [B] (1) (a).

Clearly then, the answer to the legal propriety of

applying the principle of collateral estoppel in the case at

hand to bar the Petitioner’s Copyright Infrinj ment claim is

found in the decisional law dealing with the issue of

preemption of a state common law or statutory claim because

it seeks to redress a wrong that falls within the general scope

of copyright protection.

A case in point is the decision by the District Court in

Dielsi v. Falk (DC C.D.Cal. 1996) 916 F.Supp. 985, 992,

where the plaintiff's claims for conversion and negligence

were preempted by the federal Copyright Law because he

alleged that the defendants wrongfully “copied” ideas

expressed in a television script and then converted them to

their own use. The tangible television script was not taken

from the plaintiff.

Copying and distribution of literary intangible

property does not state a claim for conversion. The torts of

conversion and trespass relate to interference with tangible

rather than intangible property. The court cites to Witkin,

Summary of California Law, Torts, Sec. 613; Nimmer on

Falk is clearly distinguishable from the Anderson

case, when due and proper consideration is given to the

allegations of her Complaint which precisely plead the

elements for common law causes of action for Conversion

and Trespass in terms of physical dominion and control and

interference with her development materials and work

products created in connection with development of her

Kings Row subdivision project. As the Ninth Circuit held in

Oddo v. Ries, Supra, “Conversion of tangible personal

property, involves actions that are not preempted by the

case under review is thus in conflict with its prior decision in

that case.

CONCLUSION

The petition for a writ of certiorari should be granted.

Respectfully submitted,

Sau, Chum

Leona R. Anderson

Petitioner, Pro Se

Dated: November 27, 1998.

APPENDIX

[Rule 14.1 (k) (1) ]

Documents in the following order:

1. Opinion sought to be reviewed

2. Order on Petition For Rehearing

UNITED STATES COURT OF APPEALS

FOR THE NINTH clRcUrE ED

JAN 16 1998

LEONA ANDERSON, a single woman, vy 2 ca Bore ih -

U.S. COPRT OF AP

Plaintiff-Appellant, ) D.C.No. CV-95-

01881- IRS

)

v. )

IMPERIAL CENTER V., L-P., a )

California limited partnership; )

TRIPLE J DEVELOPMENT, a California _—+)

limited partnership, a general )

partner of Imperial Center V, )

L.P.; J.P. BRENNAN ENTERPRISES, )

INC., a California corporation, a )

general partner of Triple J )

Development; HOLLAND CONSTRUCTION, )

INC., a California corporation; ) | MEMORANDUM*

ROBERT J. HOLLAND, Trustee U/D/T )

dated November 24, 1982 )

(as amended); JOSEPH M. BURKHARDT, _)

as Trustee of the Burkhardt )

Intervivos Trust, dated August 27, )

1982; HALE SURVEYORS, INC., a )

California corporation; JAMES L. )

HALE, an individual; JAMES P. )

BRENNAN, an individual; ROBERT J. )

HOLLAND, an individual, JON JENTZ, )

an individual; ROBERT J. HOLLAND, )

as Trustee; JOSEPH H. BURKHARDT, )

as Trustee, )

Defendants-Appellees. )

)

Appeal from the United States District Court for the Southern

District of California

John S. Rhoades, District Judge, Presiding

* This disposition is not appropriate for ication and may not be cited to or

by the courts of this circuit except as provided by the 9th Cir. R. 36-3.

Submitted January 12, 1998**

Before: BROWNING, KLEINFELD, and THOMAS, Circuit

Judges.

Leona Anderson appeals pro se the district court’s

dismissal of her copyright action on res judicata grounds. This

courts has jurisdiction pursuant to 28 U.S.C. § 1291, and we

affirm.

We review de novo a district court’s dismissal based on

res judicata. See i v

Marcos, 989 F.2d 362, 363 (9th Cir. 1993). We may affirm on

any ground supported by the record. See Welch v. Fritz, 909 F.2d

1330, 1331 (9th Cir. 1990).

Federal courts must give the same preclusive effect to

State court judgments that courts of that state would. See 28

U.S.C. § 1738 (1994); Allen v. McCurry, 449 U.S. 90, 96 (1980).

Under the doctrine of res judicata, a state court judgment cannot

preclude litigation of a claim within the federal courts’ exclusive

jurisdiction. See jillo _v 775 F.2d

1359, 1366 (9th Cir. 1985). Subsequent litigation of an issue in

federal court may be barred, however, under the doctrine of

collateral estoppel, if the issue was actually litigated in state court.

See id. at 1369. In California, collateral estoppel precludes

relitigation of an issue if the issue is identical to one decided

previously, the prior judgment was final and on the merits, and the

party being estopped was a party, or in privity with a party, to the

prior action. See id.

** The panel unanimously finds this case Suitable for decision wihtout

oral argument. Fed. R. App. P. 34a); 9th Cir. R. 34-4.

2 3a

Here, the issue raised in the district court, whether the

defendants possessed, copied, and used Anderson’s subdivision

maps without permission, is identical to that decided previously in

state court.'/ Accordingly, Anderson’s copyright claim is barred

by collateral estoppel. See Trujillo at 1369.7/

AFFIRMED.?/

1/ Anderson does not challenge the district court’s conclusion

that the other two elements for collateral estoppel were met.

2/ The district court did not abuse it’s discretion by declining to

exercise jurisdiction over Anderson’s remaining state law claims. See

Sinaloa Lake Owners Ass’n v, City of Semi Valley, 70 F.3d 1095, 1102

(9th Cir. 1995).

3/ Appellant and appelices’ requests for judicial notice are

hereby granted.

”

UNITED STATES COURT OF APPEALS

FILED

FOR THE NINTH CIRCUIT

SEP - 3 1998

LEONA ANDERSON, 8 single woman g yyy), | CLERK

U.S COWRT OF

Plaintiff-Appellant, ) D.C.No CV-95-

) 01881-JSR

v. ) Southern- California

) (San Diego)

IMPERIAL CENTER V., L-P., a

California limited partnership;

TRIPLE J DEVELOPMENT, a California

limited partnership, a general

partner of Imperial Center V,

L.P.; J.P. BRENNAN ENTERPRISES,

INC., a California corporation; a

general partner of Triple J

Development; HOLLAND CONSTRUCTION,

INC., a California corporation;

ROBERT J. HOLLAND, Trustee U/D/T

dated November 24, 1982

(as amended); JOSEPH M. BURKHARDT,

as Trustee of the Burkhardt

Intervivos Trust, dated August 27,

1982, HALE SURVEYORS, INC., a

California corporation; JAMES L.

HALE, an individual; JAMES P.

BRENNAN, an individual; ROBERT J.

HOLLAND, an individual; JON JENTZ,

an idividual; ROBERT J. HOLLAND,

as Trustee; JOSEPH H. BURKHARDT,

as Trustee,

ORDER

Defendants-Appelles.

Nem Nee Nae See Se Nae ee ae Nee Se eee Neer See Nee See Stee? See 5, y wet! Smell mal! agate mage! maga “eget “cet!

Before: BROWNING, KLEINFELD, and THOMAS, Circuit Judges.

The panel has voted to deny appellant’s petition for

l 5a

rehearing and to reject the suggestion for rehearing en banc.

The full court has been advised of the suggestion for

rehearing en banc and no active judge has requested a vote on

whether to rehear the matter en banc. Fed. R. App. P. 35.

The petition for rehearing is denied and the suggestion for

rehearing en banc is rejected.

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