Free Declaration in Support - District Court of California - California

Case 4:07-cv-03010-CW Document 25-6 Filed 07/26/2007 Page 1 of 4

Case 4:07-cv-03010-CW Document 25-6 Filed 07/26/2007 Page 2 of 4
LEXSEE
Cited
As of: Jul 26, 2007
GLADWELL GOVERNMENTAL SERVICES, INC., a California corporation,
Plaintiff, vs. COUNTY OF MARIN, a legal subdivision of the State of California;
COUNTY OF TUOLUMNE, a legal subdivision of the State of California, and
DOES l through 50 inclusive, Defendants.
Case No.: C-04-3332 SBA
UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF
CALIFORNIA
2005 U.S. Dist. LEXIS 42276
October 15, 2005, Decided
October 17, 2005, Filed
CORE TERMS: counterclaim, moot, retention, declara-
tory judgments, legal interest, hypothetical, advisory OPINION BY: Sandra B. Amstrong
opinion, fair use, actual controversy, legally cognizable,
copyrightable, infringement, judicial efficiency, declara- OPINION
mr; rgjeft a§;é“zgiyjcr§f‘°';;fém;’;’py'igh"pr°t°°t°d’ oaoea DENYING coUNTERcLA1MANTs·
°“’ C pi m° ’ P Morrow Fora PARTIAL SUMMARY JUDGMENT
COUNSEL: [*1] For Gladwell Govemmemai services, AND D‘SM'SS‘NG COUNTERCLAIMS
Inc., a California corporation, Plaintiff: Kevin D. AND RELATED COUNTERCLAIM
HughcS’ Tlsdalc & N‘°h°'S°“’ LLP’ LOS Angalci CA` On October 18, 2005, Counterelaimants’ Motion for
. . · . Partial Summary Judgment came on regularly for hearing
Forcouiuy Of Mmm a legal Subdivision of th? Siam Of before the Honorable Saundra Brown Armstrong. After
California, County of Tuolumne, a legal subdivision of , , . , . . .
the smc Of Califomia Defendant Geoffrey A GOOd_ consideration ofthe parties written submissions, [*2] as
man, Cary M. Adams, Murphy Austin Adams well as the argument of counsel at hearing,
Schcenfeld LLP, Sacramento, CA. IS HEREBY ORDERED THAT COUNTER-
CLAIMANTS' MOTION FOR PARTIAL SUMMARY
For Diane Gladwell, Gladwell Governmental Services, JUDGMENT BE DENIED AND THE COUNTER-
Inc., a Califomia corporation, Counter-defendant: Kevin CLAIMS BE DISMISSEI)
D. Hughes, Tisdale & Nicholson, LLP, Los Angeles,
CA. I. BACKGROUND
For County Ornm, a uga subdivision ofthe stat of d Q¤MM%¤=h 7, 5905; *h;l California, County of Tuolumne, a legal subdivision of davis hotgm to llzmss hans; ,5 Comp MTM H, S?
the State of California, Counter-claimant: Defendant: Omg’ t C Olin me t att e Tn 0umy( aim")
Geoffrey A. Goodman Murphy Austin Adams records retention schedules were a work made for hire ,
Schocnfcld LLP Sacmmcrito CA owned by Marin. (Order, pl 8) The Court ruled that
’ ’ l Plaintiff Gladwell Govemmental Services, Inc. ("Glad-
JUDGES, Sandra B. Amsmmg United States Distric, well") had no ownership interest in the Marin schedules,
Court Judge.
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Case 4:07-cv-03010-CW Document 25-6 Filed 07/26/2007 Page 3 of 4
2005 U.S. Dist. LEXIS 42276, *
and therefore, no ownership interest in any copyright cognizable interest in the outcome of these counter-
therein. (Order, pp. 7-8) claims. Furthermore, the declaratory relief sought is as to
The County Of Marin and the County of Tuolumne the validity of defenses to an action that has been dlS-
. ,, . ,, missed. The fact that, theoretically speaking, [*5]
(collectively, the Counties ) now seek declaratory Gl . . .
. . . . adwell may in the future obtain a reversal of the dis-
judgments with respect to ownership of the Marin sched- . . ,, .
. . _ missal on appeal simply does not create a present live
ules and the scope of copyright protection the schedules ,, C. J I,} Y rl 522 S 40 74(
merit -- these are issues in which (as per the Court's wmmvcrsy `
. . . 747. 118 S. Ct. 1694, 140 L. Ed. 2d 970 ]l998)(there 1S
prior ruling) Gladwell has no legal interest. Because ,, ,, .
. ,, . ,, . no ease or controversy where an action seeks declara-
there 1S no present live controversy between the parties . . .
. . , . tory relief as to the validity of defenses that the defen-
as to either of the Counties three counterelarms, the . . . .
. . dant may or may not advance in future litigation that may
Court must dismiss them as moot.
or may not take place). For each of these reasons, the
ll. THERE IS NO ’PRESENT LIVE CONTRO- counterclaims are moot and must be dismissed.
VERSY" AS TO ANY OF THE THREE ISSUES [*3]
RAISED IN THE COUNTIES' MOTION AND SO THE A. The First Counterclaim Is Moot Because The Court
COURTMUSTDISMISS THEMAS MOOT Has Already Ruled that Marin Owns The Retention
. . . . . . S I ·
The exercise of judicial power under Article lll of Cwduleb
the Constitution depends on the existence of a case or The Counties' first counterclaim seeks a declaratory
controversy. Preiser v. Newkirk, 422 U.S. 395, 402. 95 S. judgment that under the contract between Marin County
Ct. 2330. 45 L. Ed. 2d 272 ]l975[. More particularly, a and Diane Gladwell, Marin County is the sole owner of
federal court has no authority to issue a declaratory the records retention schedules. The Counties concede
judgment apart from that authority granted it by the De- that the ruling sought is precisely the ruling received on
elaratory Judgment Act, which requires by its temis that March 7, 2005. Thus, it is a settled question, and not a
an "actual controversy" exist between the parties before live issue between the parties.
the Court. ZX U.S.C`. Q 2201; Aetna Life Ins. Co. v. Ha-
wortli, 300 U.S. 227. 240, 57 S. Ct. 461. 81 L. Ed. 617 B. The Fourth Counterclaim Is Moot Because Gladwell
[1937). "The controversy must be definite and concrete, Has No Legal Interest In Whether Marins Retention
touching the legal relations of parties having adverse Schedules Are Copyrightable
legal interests. Aetna supra. at 240-241. The rule in The Counties, fourth counterclaim Seeks 8 dcclamr
federal eases lS that an actual controversy must exist at K . . ,,,
. . ory judgment that the records retention schedules at [ 6]
all stages of review and not merely at the time the com- . I . h bl Th. . b . f d 1
mm is mad P'_€)iw_ Wm, HMO2 issue are not copyrig ta e. 1S 1s-sue was rre eb ast
p ' ' ` ' ` ‘ ' winter, but the Court expressly declined to resolve it be-
The "actual controversy" must be one which pres- cause the question of whether the retention schedules
ently exists and not simply one which may occur. were copyrightable was mooted by the Court's threshold
Farnum v. International .·l.<·.v’n of Machinistsi. 161 ruling that Gladwell had no legal interest in any such
r`.Supp. 391 ]S.D.N.Y. 1958]; Garcia v. Browne//. 236 copyright. (Order, at fn. 5) This remains true today.
l·`.2d 356 [*4] (9th Cir. (Cal.) 1956). Whenever an action Gladwell has no legal interest in the Marin schedules, or
loses its character as a "present live eontroversy" during any copyright that might protect them, and therefore, no
the course of litigation, federal courts are required to legal stake in the outcome of this counterclaim. As/zero]?
dismiss the action as moot. A/lard v. [)eLaraau. 884 1*.211 1* .1/attis. 431 U.S. 171. 173. 97 Ct. 1739, 52 lt. Ed. 2d
464. 466 ]9tl1 Cir. 1989]. An action ceases to be a "pre- 219 l1977[("Emotional involvement in a lawsuit is not
sent live controversy" and becomes moot once either enough to meet the case-or-controversy requirement;
party is shown to lack a "legally cognizable interest in were the rule otherwise, few cases could ever become
the outcome" of the adversary proceeding. C'Ol4}’I[l* o]`I,o.~· mootf').
ln As/zcrati supra, after the defendant successfully
L. l;.d. 2rl 642 Q1979), Dibiorgzo v. Lee, 134 l·.3d 9/1. . . . .
. _. . _ - defended a claim by virtue of a particular affirmative
9__7;4_ (9th Cir. (Cal.) 1998). See also Lusarclz 1=. )rero.1. 975 d . . .
O, _ . ( ,, ——-—··—···—'—· efensc, plaintiff sought a declaratory judgment as to
F...d 964 (ard Cir. 1)9.) (No agreement between the . .
. ~ . whether defendant would have been liable were 1t not for
parties to allow the federal court to hear the case will . .
` c mooted Claim) the affirmative defense. There was no live controversy
mbcu a ' on the point and so the court refused to issue what would
The Counties seek declaratory judgments with re- effectively be an advisory opinion. The Counties are
spect to ownership of Marin's schedules and the scope of attempting the same tactic here: The matter has been
copyright protection the schedules merit. As a result of resolved, but they want [*7] the Court to issue advisory
the Court's March 7, 2005 ruling, Gladwell has no legally
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Case 4:07-cv-03010-CW Document 25-6 Filed 07/26/2007 Page 4 of 4
2005 U.S. Dist. LEXIS 42276, *
opinions as to defenses that were not adjudicated. The did own "some portion" of the records retention sched-
Court has no jurisdiction to do so. ules and [*9] (b) what if the schedules were copyright-
Indeed, to the extent Gladwell has any stake in l"°‘°°‘€d.a“d (C) what if Mmm shaicd them with Tug-
. . . . . lumne without Gladwells authorization and (d) what if
whether the Marin schedule is copyright-protected, it IS Gl . . . . . .
. , . . adwell had a live infringement claim? This Court sim-
not adverse to the Counties but rather is in agreement. l has no Urisdiction to mvidc an adviso 0 inion On
Gladwell is in the business of creating records retention y p _ . p ,
. . . . a hypothetical set of facts. As/zero/r ta. Mmm. 4ql U.S.
schedules for California governmental entities. It would 17] 177 97 S Ct 1779 52 L Ed 7d 219
be hard-pressed to stay in business if Marin County ob-
tained a monopoly on the unique selection, coordination . . . . .
and arrangement of data that Gladwell has developed in Eénf%1;C;;C;;;?‘i,eA;;qG1?;;lj;;E?iii;2_]p3thmCal Ques
l0 years of serving Califomia local governments. Thus, a y
ruling that Marin owned a copyright in the retention In the Conclusion section of their brief, the Counties
schedules would be potentially devastating to Gladwell's make an appeal to the "interests of judicial efficiency".
business. The fact that the interests of the Counties and The interests of judicial efficiency are not served by the
Gladwell with respect to resolution of these issues is adjudication of moot claims, or the issuance of advance
aligned fortifies the conclusion that no justiciable con- rulings on collateral defenses to a litigation that may
troversy is present. Af]. Erlwrirels & Sons. inc. v. Public never be litigated.
Bldg. Confn 0fSt. Clair Courigi Illinois 92l F.2d llX
57th Cir. l990](If parties seek the "same result" on a III. CONCLUSION
f;;";ap;*;E‘;S“00V€ff,jfS§’;S§;"{};[°”°'SY °"‘“S b"‘W°°“ ad` 7 ree the above reasons, the ceea denies Counter-
claimants Motion for Partial Summary Judgment and
C. The Ffh Counterclaim [*8] is Not Only Moot, dismisses the Counterclaims, as follows:
£IA;l;;g;i;lg;?gft;a€;u€ An Advisory Opmwn On A On Counterclaimants‘ First Counterclaim: The Court
yp finds that the declaratory judgment sought is precisely
The Counties' fifth counterclaim seeks a declaratory the ruling received in the Court’s March 7, 2005 Order.
judgment that the County of Tuolumne's use ofthe Marin Thus, it is a settled question, and not a live issue between
County records retention schedules was a "fair use". For the parties. It is DISMISSED.
all ef aaa feaeeelaa a €¤S¤ Glaaleell laae ae. legally ei eemereieime- me eeumeletetm. [*10]
cogmzable interest in the outcome and so this is not a . .
_, . ,_ . The Court finds that the counterclaim rs moot because
present live controversy . Furthermore, the Counties ask , . . .
. . . . . Lounterdefendants have no legal interest in the Marin
the Court to issue an advisory opinion on a hypothetical . .
. . schedules, or any copyright that might protect them, and
set of facts, which it cannot do. . .
therefore, no legal stake in the outcome of this counter-
The "fair use" doctrine is a defense to a claim for claim. It is DISMISSED.
eaexallalaa lalareeeaaeaa llae Calla laae elleaaeeea Glae en eetmeeteimme me eameieiam. The em
well s complaint and ruled that Marin owned the reten— . .
. . . . Ends that the counterclaim is moot because Counterde-
tion schedules at issue. As a result, and since Marin con- . . . .
, . , tendants have no legal interest in the Marin schedules, or
sented to Tuolumne s use of the Marin schedules in the . .
- . . _ . _ any copyright that might protect them, and therefore, no
first place, there is (l) no unauthorized use at issue, (2) . . . .
. . . . _ . . legal stake in the outcome of this counterclaim. In addi-
no live claim of infringement, (3) no occasion for 'Iuo- . . . . .
· it - .. tion, the Counterclaim seeks an advisory opinion based
lumne to raise the fair use defense; and (4) no cause to h th t. 1 Set ff t It . DISMISSED
adjudicate a hypothetical "fair use" defense to a moot Ona WO e ma O ac S` ls `
claim. Date: October 15, 2005
The Counties are effectively asking the Court to re- United States District Court Judge
solve a multi-layered hypothetical; (a) What if Gladwell
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