Robi v. Five Platters, Inc.

• Court: United States Courts of Appeals. United States Court of Appeals (9th Circuit)
• Citation: 838 F.2d 318
• Docket Number: Nos. 85-6061,87-5514,85-6062,s. 85-6061
• Parties: Paul ROBI, Plaintiff-Appellee, v. FIVE PLATTERS, INC., Defendant-Appellant. FIVE PLATTERS, INC., Plaintiff-Appellant, v. Paul ROBI, Americana Hotel Corp., Gino Tonetti and Howard Wolfe, Defendants-Appellees. Tony WILLIAMS, Plaintiff-Appellee, v. The FIVE PLATTERS, INC., Defendant-Appellant.
• Decision Date: 27 January 1988

Page 318

838 F.2d 318

5 U.S.P.Q.2d 1709

Paul ROBI, Plaintiff-Appellee, v. FIVE PLATTERS, INC., Defendant-Appellant.

FIVE PLATTERS, INC., Plaintiff-Appellant, v. Paul ROBI, Americana Hotel Corp., Gino Tonetti and Howard

Wolfe, Defendants-Appellees.

Tony WILLIAMS, Plaintiff-Appellee, v. The FIVE PLATTERS, INC., Defendant-Appellant.

Nos. 85-6061, 85-6062, 87-5514.

United States Court of Appeals,

Ninth Circuit.

Argued and Submitted Sept. 8, 1987.

Decided Jan. 27, 1988.

Cheri S. O'Laverty, Law Offices of Cheri S. O'Laverty, Los Angeles, Cal., for defendant-appellant.

Allen Hyman, Law Offices of Sam Perlmutter, Los Angeles, Cal., for plaintiff-appellee Robi.

Richard E. Bennett, New York City, for plaintiff-appellee Williams.

Appeal from the United States District Court for the Central District of California.

Before HALL, NOONAN and THOMPSON, Circuit Judges.

DAVID R. THOMPSON, Circuit Judge:

These consolidated appeals present competing claims to the name THE PLATTERS based upon prior conflicting judgments which the parties, selectively, assert as res judicata. Appellant The Five Platters, Inc. (the "Corporation") contends that the district court should have given preclusive effect to a 1975 decision by the Court of Customs and Patent Appeals and to a 1982 New York judgment. The Corporation claims these judgments establish its exclusive right to the name THE PLATTERS for use in connection with a musical entertainment service.

Appellees Paul Robi and Tony Williams are two of the original musical entertainers who were known as THE PLATTERS. Appellee Robi contends the district court was correct when it decided to give preclusive effect, not to the judgments relied upon by the Corporation, but to a 1974 California Superior Court judgment in Robi's favor and against the Corporation. Appellee Williams presents this same argument. As to Williams, however, there is the added circumstance that the district court decided his case a few months after it decided the Robi cases. Thus, at the time Williams' case was decided there was yet another judgment to consider--the district court's own judgment in the recently decided Robi cases.

We affirm in the two Robi cases (No. 85-6061 and No. 85-6062), and reverse in the Williams case (No. 87-5514).

I FACTS AND PROCEEDINGS

In 1953, a singing group named The Platters was formed and struggled to gain recognition. By 1954, the group consisted of five performers we refer to as the "original" Platters. These performers appeared together on television and in concert from 1954 to 1960. They sold twelve "gold records," that is, records which sold over one million copies.

In January 1956, when the group began to achieve worldwide popularity, its manager and musical director, Buck Ram, suggested that a corporation be formed. He selected an attorney for this purpose, and the Corporation was incorporated under the name "The Five Platters, Inc." The original Platters, who included appellees Robi and Williams, executed employment contracts with the Corporation. They assigned to the Corporation their rights in the name THE PLATTERS in exchange for the issuance to them of shares of stock in the Corporation. Later, in the 1960s, all of the original Platters sold their shares of stock to Buck Ram or to a corporation he controlled.

By 1972, appellee Robi had left the original group, and was performing with other artists. That year, the Corporation sued Robi in a state court action in California. It sought to prevent him from presenting his group as THE PLATTERS. The Corporation claimed it owned the exclusive right to the name THE PLATTERS based upon the assignments it had received from Robi and the other original Platters. The California Superior Court (the "California Court") granted judgment in 1974 in favor of Robi. The California Court determined that the Corporation "was a sham used by Mr. Ram to obtain ownership of the name 'Platters' "; that Ram benefited from an unequal bargaining position between the parties and was guilty of laches and unclean hands; and that the Corporation's issuance of stock to the original Platters was "illegal and void" because the stock was issued in violation of California's corporate securities law. The Corporation appealed, but later dismissed the appeal.

While the California action was pending, and before that court entered its judgment, appellee Tony Williams also became involved in litigation with the Corporation. He petitioned the Trademark Trial and Appeal Board to cancel the Corporation's registration of the service mark, THE PLATTERS. The Board rejected Williams' petition when he failed to respond to the Corporation's

motion for summary judgment. He moved to vacate that decision on the ground that he had failed to respond due to "inadvertence, accident or mistake." The Board denied Williams' motion, and its denial was upheld on appeal. See Williams v. Five Platters, Inc., 181 U.S.P.Q. (BNA) 409, 409-10 (Feb. 26, 1974), aff'd, 510 F.2d 963 (C.C.P.A.1975)

Several years later, the Corporation filed an action against Williams in the Supreme Court of the State of New York for New York County (the "New York Court"). The New York Court determined that Williams had breached a 1967 contract, pursuant to which he had sold all of his stock in the Corporation and had received approximately $15,000. In this contract, Williams had covenanted to refrain from using the name THE PLATTERS. The contract also contained the following provision:

Having previously by employment contract dated July 5, 1956 acknowledged that the name "The Platters" is owned exclusively by the corporation Five Platters, Inc., it is hereby expressly acknowledged again by WILLIAMS that the name "The Platters" is now owned exclusively by a corporation known as The Five Platters, Inc.

The New York Court permanently enjoined Williams from using the name THE PLATTERS except to refer to his previous membership in the group. The court also concluded that Williams was "barred by res judicata from challenging [the Corporation's] Federal registration of THE PLATTERS mark ... by reason of" the decision of the Court of Customs and Patent Appeals in Williams v. Five Platters, Inc., 510 F.2d 963 (C.C.P.A.1975). ¹

These three judgments, the 1974 California Court judgment in which Robi prevailed against the Corporation; the 1975 decision by the Court of Customs and Patent Appeals in favor of the Corporation and against Williams; and the 1982 New York judgment in which the Corporation prevailed against Williams, were three of the judgments for which varying effects of res judicata were argued by the parties in the district court.

II APPLICABLE LEGAL PRINCIPLES

A. Standard of Review

We review de novo a district court's ruling on the availability of res judicata both as to claim preclusion and as to issue preclusion. Blasi v. Williams, 775 F.2d 1017, 1018 (9th Cir.1985) (claim preclusion); Davis & Cox v. Summa Corp., 751 F.2d 1507, 1519 (9th Cir.1985) (issue preclusion). The preclusive effect of a judgment in a prior case presents a mixed question of law and fact in which the legal issues predominate. Blasi, 775 F.2d at 1018. As to issue preclusion, "[o]nce we determine that [it] is available, the actual decision to apply it is left to the district court's discretion." Davis & Cox, 751 F.2d at 1519.

B. Res Judicata

Generally, the preclusive effect of a former adjudication is referred to as "res judicata." The doctrine of res judicata includes two distinct types of preclusion, claim preclusion and issue preclusion. ² Claim preclusion "treats a judgment, once rendered, as the full measure of relief to be accorded between the same parties on the same 'claim' or 'cause of action.' " Kaspar Wire Works, Inc. v. Leco Eng'g & Mach., Inc., 575 F.2d 530, 535 (5th Cir.1978); see also McClain v. Apodaca, 793 F.2d 1031,

1033 (9th Cir.1986). Claim preclusion "prevents litigation of all grounds for, or defenses to, recovery that were previously available to the parties, regardless of whether they were asserted or determined in the prior proceeding." Brown v. Felsen, 442 U.S. 127, 131, 99 S.Ct. 2205, 2209, 60 L.Ed.2d 767 (1979), quoted in Americana Fabrics, Inc. v. L & L Textiles, Inc., 754 F.2d 1524, 1529 (9th Cir.1985)

The doctrine of issue preclusion prevents relitigation of all "issues of fact or law that were actually litigated and necessarily decided" in a prior proceeding. Segal v. American Tel. & Tel. Co., 606 F.2d 842, 845 (9th Cir.1979), quoted in Americana, 754 F.2d at 1529. "In both the offensive and defensive use situations the party against whom estoppel [issue preclusion] is asserted has litigated and lost in an earlier action." Parklane Hosiery Co. v. Shore, 439 U.S. 322, 329, 99 S.Ct. 645, 650, 58 L.Ed.2d 552 (1979). The issue must have been "actually decided" after a "full and fair opportunity" for litigation. 18 C. Wright, A. Miller & E. Cooper, Federal Practice & Procedure: Jurisdiction Sec. 4416, at 138 (1981) [hereinafter 18 Wright].

Under the Full Faith and Credit Act, federal courts must give state judicial proceedings "the same full faith and credit ... as they have by law or usage in the courts of [the] State ... from which they are taken." 28 U.S.C. Sec. 1738; see Parsons Steel, Inc. v. First Alabama Bank, 474 U.S. 518, 519, 106 S.Ct. 768, 770, 88 L.Ed.2d 877 (1986). This Act requires federal courts to apply the res judicata rules of a particular state to judgments issued by courts of that state. Id. at 523, 106 S.Ct. at 771. Accordingly, we apply California law of res judicata to the California judgment, New York law to the New York judgment, and federal law to the federal judgments.

C. Inconsistent Judgments

Courts are not required to apply res judicata sua sponte. Thus, if a second court to face a claim or issue is not presented with res judicata arguments, or rejects these arguments, an inconsistent judgment may arise. If two or more courts render inconsistent judgments on the...