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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 1999
- **Citation:** 525 U.S. 1143

## Text

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,
v.

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
copyright infringement which is within the exclusive
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
Copyright Infringement Which is Within The
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
Copyright Infringement by the Application of the
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

12
12

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)

26

18

20

25

13

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
copyright under this title has the exclusive rights to do and to
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
2

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
Copyright Infringement action, on the ground of res judicata
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
10

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].

1]

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

12

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;

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law copyright” for unpublished works and statutory
copyright for published works, which had been the system in
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
copyright law by being much more effective in Carrying out
the basic constitutional aims of uniformity and the promotion
of writing and scholarship.

One of the fundamental purposes behind the
copyright clause of the federal Constitution, as shown in
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

13

undermine the avowed purpose and spirit of the federal
Copyright Act to protect intellectual works of art from the
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.

15

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.

17

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.

18

“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:

20

“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

21

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

22

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.

23

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.

24

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).
25

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
Copyright, Sec. 1.01[B](1) (i) for these principles of law.

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

26

Oddo v. Ries, Supra, “Conversion of tangible personal
property, involves actions that are not preempted by the
Copyright Law.” The decision by the Ninth Circuit in 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.

28

APPENDIX

[Rule 14.1 (k) (1) ]

Documents in the following order:

1. Opinion sought to be reviewed
2. Order on Petition For Rehearing

la

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.
2a

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.

---

Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386018_0986%3A1. Public record. Not legal advice.