State ex rel. Mix v. Newland

• Decision Date: 17 February 1977
• Parties: STATE of Oregon ex rel. Marvin D. MIX, Respondent, v. R. N. NEWLAND, Appellant.
• Court: Oregon Supreme Court

Page 255

560 P.2d 255

277 Or. 191

STATE of Oregon ex rel. Marvin D. MIX, Respondent, v. R. N. NEWLAND, Appellant.

Supreme Court of Oregon.

Argued and Submitted Oct. 26, 1976, at Pendleton.

Decided Feb. 17, 1977.

R. L. Marceau, of Panner, Johnson, Marceau, Karnopp & Kennedy, Bend, argued the cause and filed a brief for appellant.

William M. Holmes, of Gray, Fancher, Holmes & Hurley, Bend, argued the cause and filed a brief for respondent.

Before DENECKE, C.J., and O'CONNELL, ^* HOLMAN, TONGUE, HOWELL and BRYSON, JJ.

HOWELL, Justice.

This is the second time that a dispute over a chrysanthemum sport, 'Copper Anne,' has come before this court. The first was a declaratory judgment proceeding wherein the plaintiff, Marvin Mix, and the defendant, Ron Newland, Mix's employee, both claimed to be the owner and discoverer of the new plant. Newland also contended that exclusive jurisdiction of the dispute was vested in the United States Patent Office because he had applied for a patent, and plaintiff Mix had instituted an interference proceeding before the Interference Board of the U.S. Patent Office. ¹ The trial court found that plaintiff Max was both the owner and discoverer of the plant. The court entered a decree which provided:

'1. Plaintiff, Marvin D. Mix, is declared to be the owner of the sport, Copper Anne, and all indices of ownership resulting therefrom including but not limited to, the right to proceed as the law requires in the processing of is rights to patent, develope (sic) and sale, and that defendant, R. N. Newland, has no claim or right of ownership in said sport.

'2. Defendant, R. N. Newland, is hereby permanently restrained and enjoined from asserting or claiming any rights inconsistent with plaintiff Marvin D. Mix's ownership of Copper Anne.'

At the time the trial court entered the decree declaring Mix to be the owner of the chrysanthemum sport, as well as all rights appurtenant to ownership, and restraining Newland from asserting any claims inconsistent with Mix's ownership, the patent dispute was pending in the U.S. Patent Office. The effect of the decree was to restrain Newland from further contesting Mix's claim before the patent board.

On appeal, we affirmed the findings of the trial court and upheld its decree. We concluded that Mix's ownership of the plant also determined the ownership 'of any product of that plant, including the commercial value attributable to its uniqueness as a separate specie of chrysanthemum.' Mix v. Newland, 273 Or. 362, 541 P.2d 136 (1976). We also considered the jurisdictional issue and we stated:

'We cannot conceive of any rational system of law which would condone the conversion of an owner's goods to advance the interests of those claiming a monopoly through first discovery. Since this is primarily a question of the extent to which protection should be extended to existing property ownership and only secondarily a question of the rights acquired by first discovery, we are of the opinion that the matter is within the jurisdiction of the state courts and is not pre-empted by federal law for adjudication by the Patent Office.' 273 Or. at 365, 541 P.2d at 137.

Subsequently, we a result of the opinion of this court upholding the trial court's decree, plaintiff Mix filed a motion for summary judgment in the matter pending before the Board of Patent Interference in the U.S. Patent Office. Newland filed a brief opposing this motion, contending, inter alia, that exclusive jurisdiction was in the Patent Office and that, in any event, any patent issued to Mix would be invalid for various technical reasons.

On plaintiff-relator's motion, the trial court then cited Newland to show cause why he should not be held in contempt for failure to comply with its decree. After a hearing, the trial court found Newland to be in contempt:

'Recognizing for the moment the dual characteristics of interest in Copper Anne--inventor vis a vis owner--it is difficult for this court to conceive of many actions more inconsistent with ownership than the defendant's action in the patent office proceeding. The evidence before this court is that Copper Anne has no commercial value unless it can be patented. The plaintiff seeks to realize this finacial potential, as an indice of ownership, but is being deprived of a summary determination of the proceeding in the patent office, to which he would otherwise be entitled, by the direct action of the defendant. The conduct of the defendant, is no less contemptuous because done on the advice of his patent lawyers. The decree of this court is in plain, unequivocal English language presumably understandable by those involved in the mystiques of patent office procedures.' ²

There are three issues presented in this appeal from the trial court's order finding defendant Newland in contempt. First, did the trial court have the power to enter its original decree restraining Newland from any further proceedings before the federal patent board? Second, if the trial court did not have that power, could it, nevertheless hold Newland in contempt for his subsequent refusal to obey its decree? Third, could the trial court order Newland to indemnify Mix for the costs and attorney fees which resulted from his defiance of the trial court's decree?

We conclude that the trial court was without authority to preclude Newland from any further action in the U.S. Patent Office. A similar issue was before the United States Supreme Court in Donovan v. City of Dallas, 377 U.S. 408, 84 S.Ct. 1579, 12 L.Ed.2d 409 (1964). There, a class suit was brought in a Texas state court to enjoin a sale of bonds by the City of Dallas for the construction of improvements at the municipal airport. The Texas courts, including the appellate courts, held in favor of the City of Dallas, and the United States Supreme Court denied certiorari. Later, the same citizens filed suit in a federal district court seeking essentially the same relief, including an injunction against the sale of the bonds. The City filed a motion to dismiss and an answer in the federal court. At approximately the same time, the City also applied to the Texas state court for a writ of prohibition restraining the plaintiffs from proceeding further in the federal district court. The state court denied the writ, but the Texas Supreme Court reversed and ordered the issuance of a writ restraining any action in the federal court. The writ was not obeyed, and the plaintiffs continued their actions in the federal courts. The Texas state court found plaintiffs in contempt and imposed a jail sentence and fines.

The United States Supreme Court granted certiorari and held the Texas court had no power to prevent plaintiff's actions in the federal court. The Court stated:

'* * * While Congress has seen fit to authorize courts of the United States to restrain state-court proceedings in some special circumstances, it has in no way relaxed the old and well-established judicially declared rule that state courts are completely without power to restrain federal-court proceedings in In personam actions like the one here. * * *

'* * *

'Petitioners being properly in the federal court had a right granted by Congress to have the court decide the issues they presented, and to appeal to the Court of Appeals from the District Court's dismissal. They have been punished both for prosecuting their federal-court case and for appealing it. They dismissed their appeal because of threats to punish them more if they did not do so. The legal effect of such a coerced dismissal on their appeal is not now before us, but the propriety of a state court's punishment of a federal-court litigant for pursuing his right to federal-court remedies is. That right was granted by Congress and cannot be taken away by the State. The Texas courts were without power to take away this federal right by contempt proceedings or otherwise.' 377 U.S. at 412--14, 84 S.Ct. at 1582--1583 (Footnotes omitted). ³

However, the Donovan Court remanded the proceeding to the Texas court for a determination of whether the contempt judgment should stand even though the restraining order was invalid.

In remanding for a determination of the contempt judgment, the Court was apparently relying on its decision in United States v. Mine Workers, 330 U.S. 258, 67 S.Ct. 677, 91 L.Ed. 884 (1947). ⁴ There, the mine workers were found in contempt for disobeying a temporary restraining order and engaging in a nationwide coal strike. On appeal, the defendants contended the trial court had no authority to issue the injunction and sought to set aside the contempt conviction. The Court, quoting from Howat v. Kansas, 258 U.S. 181, 42 S.Ct. 277, 66 L.Ed. 550 (1922), stated:

"An injunction duly issuing out of a court of general jurisdiction with equity powers upon pleadings properly invoking its action, and served upon persons made parties therein and within the jurisdiction, must be obeyed by them however erroneous the action of the court may be, even if the error be in the assumption of the validity of a seeming but void law going to the merits of the case. It is for the court of first instance to determine the question of the validity of the law, and until its decision is reversed for error by orderly review, either by itself or by a higher court, its orders based on its decision are to be respected, and disobedience of them is contempt of its lawful authority, to be punished." (Footnotes omitted) 330 U.S. at 293--94, 67 S.Ct. at 696.

Similarly, in a case arising after Donovan, Walker v. City of Birmingham, 388 U.S. 307, 87 S.Ct 1824, 18 L.Ed.2d 1210 (1967), the court held that several civil rights protesters who had been cited for contempt could not collaterally attack the validity of the injunction which they had knowingly violated in an appeal from their contempt convictions. In affirming their convictions, the court stated:

'The rule of law that Alabama followed in this case reflects a belief...