Berry v. Berry

***FOR PUBLICATION IN WEST’S HAWAI#I REPORTS AND PACIFIC REPORTER***

Electronically Filed
Supreme Court
SCWC-10-0000044
11-MAY-2012
10:21 AM

IN THE SUPREME COURT OF THE STATE OF HAWAI#I
---o0o---

JULIANNE NGUYEN BERRY, Respondent/Plaintiff-Appellee,

vs.

WAYNE FOSTER BERRY, Petitioner/Defendant-Appellant.

NO. SCWC-10-0000044

CERTIORARI TO THE INTERMEDIATE COURT OF APPEALS
(ICA NO. CAAP-10-0000044; FC-D NO. 06-1-0211)

May 11, 2012

RECKTENWALD, C.J., NAKAYAMA, ACOBA,
DUFFY, AND MCKENNA, JJ.

OPINION OF THE COURT BY ACOBA, J.

We hold that (1) the Family Court of the First Circuit

(the court)1 did not abuse its discretion in denying Petitioner’s

October 9, 2009 Motion to Set Aside Divorce Decree (Motion to Set

Aside) seeking to set aside the November 21, 2008 Decree Granting

Absolute Divorce and Awarding Child Custody (Divorce Decree)

because Petitioner/Defendant-Appellant Wayne Foster Berry

1
The Honorable Linda K.C. Luke presided.
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(Petitioner) had notice that his failure to appear at a scheduled

settlement conference would result in default, and the court

acknowledged that Petitioner’s motion was for Hawai#i Family

Court Rules (HFCR) Rule 60(b) relief, although Petitioner had

failed to cite HFCR Rule 60(b) in support of the motion; (2)

whether the Divorce Decree exceeded the relief previously

requested by Respondent/Plaintiff-Appellee Julianne Nguyen Berry
(Respondent) in her Complaint and Proposed Decree with respect to

the award of copyrights held in Petitioner’s name (hereinafter,

“the copyrights”) need not be decided; inasmuch as (3) the court

abused its discretion in declining to set aside that part of the

Divorce Decree that transferred Petitioner’s entire ownership

interest in the copyrights to Respondent in violation of federal

law. We thus vacate the August 17, 2011 judgment of the ICA

filed pursuant to its July 28, 2011 Summary Disposition Order

(SDO),2 affirming the September 22, 2010 Order Denying Motion to

Set Aside and the Findings of Fact and Conclusions of Law filed
by the court, in part, insofar as it held the court properly

awarded Respondent the copyrights. We vacate that portion of the

Divorce Decree that awarded Respondent all ownership interest in

the copyrights, and remand to the court for a determination of

the economic interest in the copyrights to which Respondent is

entitled. We affirm the Divorce Decree in all other respects.

2
The SDO was filed by Presiding Judge Daniel R. Foley and Associate
Judges Alexa D.M. Fujise and Lisa M. Ginoza.

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I.

The following essential matters, some verbatim, are

from the record and the submissions of the parties.

A.

Petitioner and Respondent were married on December 24,

1992. On January 20, 2006, Respondent filed a complaint for

divorce (Complaint). On September 25, 2006, the court filed an
Order of Dismissal pursuant to HFCR Rule 41(e)(1) for want of

service.3

On October 5, 2006, Respondent filed an Ex Parte Motion

to Reinstate for Good Cause Complaint for Divorce and Summons

Filed on 1/20/2006 and to Extend Time to Serve Complaint for

Divorce and Summons Filed on 1/20/2006 (Motion to Reinstate

Complaint and Extend Time to Serve). Attached was the affidavit

of Respondent’s counsel, Cheryl Brawley (Brawley),4 in which she

declared (1) that the last known address of Petitioner was an

address on Muolea Place in Honolulu, Hawai#i (Muolea address),

3
HFCR Rule 41(e)(1) (2006) provides as follows:

A diligent effort to effect service shall be made in all
actions, and if no service be made within 6 months after an
action or post-decree motion has been filed then after
notice of not less than 10 days to the filing party at the
last known address, the same may be dismissed. Such a
dismissal may be set aside and the action reinstated by
order of court for good cause shown on motion duly filed in
said action within 30 days after mailing of the order of
dismissal and notice to the last known address of the
parties or parties’ counsel.

(Emphasis added.)

4
Respondent’s appellate counsel, who also argued on Respondent’s
behalf at oral argument in this case, is Carl H. Osaki.

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(2) a certified copy of the Complaint was sent to Process Service

Exclusive, LLC (PSE) to be personally served on Petitioner at

that address, (3) on April 7, 2006, PSE notified Brawley it had

been unable to serve Petitioner, it made nine attempts to serve

Petitioner at the Muolea address, Petitioner no longer lived at

that address, and it attempted to serve Petitioner at the United

States District Court, District of Hawai#i on May 5, 2006, but
was unable to do so, and (4) although PSE was told that

Petitioner no longer resided at the Muolea address, Respondent

reasonably believed that Petitioner continued to reside there.

Respondent sought reinstatement of her Complaint and additional

time to serve Petitioner. The court granted Respondent’s motion

in an order filed on October 5, 2006, which reinstated

Respondent’s Complaint and provided Respondent until January 20,

20075 to serve Petitioner with the Complaint.

On March 6, 2007, Respondent filed a Motion for

Personal Service Without the State and Affidavit (Motion for
Personal Service), seeking an order pursuant to HRS § 580-3(b)6

5
The order actually read “January 20, 2006[.]” It is apparent that
the court meant January 20, 2007, and Petitioner conceded in his Non-Hearing
Motion to Dismiss Expired Complaint for Divorce (Motion to Dismiss) that
January 20, 2006 date was “obviously a typographical error[.]”

6
HRS § 580-3(b) (2006 Repl.) provides with respect to service of
the complaint:

If service by an authorized process server is not feasible
or is inconvenient or if the defendant is without the State,
the court may authorize the service to be made by any other
responsible person, or the court may authorize notice of the
pendency of the action and of a time and place of hearing,
which shall be not less than twenty days after the giving of
personal notice, to be given to the defendant personally by
(continued...)

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and HFCR Rule 4(e)7 authorizing personal service by an officer or

person authorized to effect service of legal process under the

laws of Petitioner’s state of residence, Florida. The motion was

granted on March 14, 2007.8 An Affidavit of Service was filed

with the court on August 31, 2007, indicating that Petitioner had

been personally served with the complaint.

B.
On September 12, 2007, Petitioner filed, pro se, a Non-

Hearing Motion to Dismiss Expired Complaint for Divorce (Motion

6
(...continued)
such person and in such manner as the court shall designate
and the case may be heard and determined at or after the
time specified in the notice.

(Emphasis added.)

7
HFCR Rule 4(e) 2007 provides:

(e) Summons: Other Service. Whenever a statute or an order
of court provides for service upon a party not an inhabitant
of or found within the State of a summons, or of a notice,
or of an order in lieu of summons, service shall be made
under the circumstances and in the manner prescribed by the
statute or order. Whenever a statute or an order of court
requires or permits service by publication of a summons, or
of a notice, or of an order in lieu of summons, any
publication pursuant thereto shall be made under the
circumstances and in the manner prescribed by the statute or
order.

(Emphases added.)

8
In his Application, Petitioner complains that Petitioner’s Motion
for Personal Service was granted by the court nearly three months after the
time for service had expired under the order granting Respondent’s Motion to
Reinstate Complaint and Extend Time for Service without further extension by
the court. Petitioner did not expressly raise any challenge to this in his
Motion to Dismiss. Arguably, Petitioner waived any challenge to service of
process. However, Petitioner did note that Respondent was granted an order to
serve him out of the state after the extension of the time for service had
lapsed. Consequently, the court implicitly rejected any argument challenging
the sufficiency of service by denying Petitioner’s Motion. Moreover, it does
not appear that Petitioner’s due process rights were materially affected
inasmuch as Petitioner was not residing in Hawai#i when Respondent was
attempting to serve him with the Complaint, there is evidence that Respondent
had been attempting to serve Petitioner for months, and Petitioner was
eventually personally served with the Complaint.

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to Dismiss). Petitioner argued (1) lack of subject matter

jurisdiction, (2) lack of personal jurisdiction, (3) improper

venue, (4) insufficiency of process, (5) insufficiency of service

of process, (6) failure to state a claim upon which relief may be

granted, and (7) failure to join a party under Hawai#i Rules of

Civil Procedure (HRCP) Rule 19.

C.
On February 4, 2008, Respondent filed with the court a

Motion to Set and Notice of Motion (Motion to Set), her Position

Statement, by way of a proposed decree, (Proposed Decree), Income

and Expense Statement, and Asset and Debt Statement. In the

Proposed Decree, Petitioner indicated she was seeking, inter

alia, sole legal and physical custody of the minor children of

the parties, child support, expenses for tutoring for the

children, medical and dental insurance coverage for the minor

children, and alimony. With respect to the copyrights,

Respondent indicated that “[Petitioner] shall be awarded his
interest in any copyrights/patents obtained during the marriage

and [Respondent] waives any interest therein, provided that

within 15 days of the effective date of [the] Divorce Decree,

[Petitioner] pays [Respondent] a sum representing her interest in

[the] said property[.]”

The court set the matter for a hearing on March 27,

2008. On March 10, 2008, Petitioner filed, pro se, a Motion to

Strike [Respondent’s] Motion to Set and Notice of Motion for a

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Dismissed and Expired Complaint for Divorce (Motion to Strike).9

In his Motion to Set, Petitioner listed 5500 Military Trail in

Jupiter, Florida (Military address) as his address.

Petitioner did not appear at the March 27, 2008

hearing. The court minutes indicate that the court attempted to

contact Petitioner by telephone, the bailiff left a message for

Petitioner on his answering machine informing him that his case
had been set for 9:00 a.m. that day, it was 10:15 a.m.,

Petitioner’s case was being heard at the moment, and Respondent

should call the court back at the given number. That same day,

the court filed Pretrial Order No. 1 setting forth various

deadlines and court dates for the case, including a settlement

conference date of June 19, 2008 and trial date of July 7, 2008.

The court also filed orders dismissing Petitioner’s Motion to

Dismiss and Motion to Strike for “lack of prosecution.” On April

1, 2008, copies of the foregoing orders were mailed to Petitioner

at his last known address, the Military address.
Petitioner was not present at the June 19, 2008,

settlement conference. On June 23, 2008, the court filed

9
In his motion, Petitioner asserted that he filed a Motion to
Dismiss, neither the court nor Respondent responded to his motion, several
clerks of the court confirmed Respondent’s Complaint was dismissed, Petitioner
received a letter from the court indicating that “no further action will be
taken,” in the case, he received Respondent’s Motion to Set and Notice of
Motion at his home in Florida by mail, several clerks of the court confirmed
again that the Complaint had expired and was still “dismissed,” the clerks
cautioned him that they could not give legal advice but suggested he contact
Respondent’s attorney and ask her to withdraw the Motion to Set, Petitioner
did so by letter, and Respondent’s attorney did not respond. As discussed
herein, the court properly dismissed Petitioner’s Motion to Dismiss for lack
of prosecution for Petitioner’s failure to attend the hearing on the motion.

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Pretrial Order No. 2, continuing trial to the week of October 27,

2008 and settlement conference to September 18, 2008. The order

stated in part, “If [Petitioner] fails to appear at settlement

conference, he shall be defaulted.” (Emphasis added.) A

Statement of Mailing was filed by Brawley on June 25, 2008,

indicating that a copy of Pretrial Order No. 2 was mailed to

Petitioner’s Military address.10
The court minutes indicate that Petitioner was “not

present” at the September 18, 2008 settlement conference. On

November 21, 2008, the court filed the Divorce Decree. The

Divorce Decree does not reflect that the court entered default

against Petitioner. However, the September 18, 2008 court

minutes noted that three calls were made for Petitioner “with no

response[,]” the “court minutes reflect that at last hearing the

court stated that if [Petitioner] fails to appear at the next

court hearing court will enter default against him and the

divorce will be granted[, the] court defaulted [Petitioner],” and
the “divorce is granted[.]”

The Divorce Decree granted a divorce to Respondent and

Respondent was awarded, inter alia, sole custody of the parties’

minor children, child support, alimony, and “any and all interest

in all of [Petitioner’s] rights, title and interest to any

copyrights, patents, or any other intellectual property that he

10
HFCR Rule 5 provides that motions may be served “by mailing it to
the attorney or party at the attorney’s or party’s last known address[.]”

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authored or acquired during the period of the parties’ marriage,

including but not limited to” the “copyrights covered by the 37

copyright registrations filed in the United States Copyright

Office” and “all rights, title, and interest of [Petitioner], in,

to or related to any software covered by or related to the End

User License Agreement.” (Emphases added.)

D.
1.

On October 9, 2009, Petitioner filed, pro se, a Motion

to Set Aside. In his motion, he argued that the Divorce Decree

should be set aside because (1) Brawley committed fraud on the

court by “claim[ing] to have noticed [Petitioner] with her

filings and communications” when “she has not[,]” (2) he was not

served with a copy of the Divorce Decree, (3) the children for

whom he owed child support were not his biological children nor

did he adopt them, and (4) federal law, namely, 17 U.S.C. §

201(e),11 prohibits a state court from involuntarily transferring
his copyrights with the sole exception of transfers made pursuant

11
17 U.S.C. § 201(e) provides:

(e) Involuntary Transfer.-- When an individual author's
ownership of a copyright, or of any of the exclusive rights
under a copyright, has not previously been transferred
voluntarily by that individual author, no action by any
governmental body or other official or organization
purporting to seize, expropriate, transfer, or exercise
rights of ownership with respect to the copyright, or any of
the exclusive rights under a copyright, shall be given
effect under this title, except as provided under title 11.

(Emphases added.)

9
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to Title 11 of the United States Bankruptcy Code. In addition,

he incorporated by reference his Motion to Dismiss, in which he

re-alleged the defenses previously noted.

2.

A hearing on Petitioner’s Motion to Set Aside was

originally set for January 13, 2010.12 An order was filed on

January 13, 2010, continuing the hearing to February 10, 2010.
The order indicates that Timothy Hogan (Hogan) appeared at the

hearing as counsel for Petitioner. This is the first time

Petitioner appears to have been represented by counsel inasmuch

as all prior filings, including his Motion to Set Aside, were

filed pro se. The order further indicated that Petitioner would

be permitted to appear by telephone and must make arrangements

for such appearance.

On January 27, 2010, Respondent filed a Responsive

Memorandum in Opposition to Petitioner’s Motion to Set Aside,

arguing (1) Brawley did attempt to serve Petitioner with
pertinent documents;13 (2) service was not defective because HRS

12
The court minutes indicate that counsel for both Respondent and
Petitioner were present at the hearing, the hearing was continued to February
10, 2010, and Petitioner was permitted to attend the February hearing by
telephone.

13
As to Petitioner’s first argument, Respondent contended that (a)
several attempts were made to serve Petitioner to no avail, (b) Petitioner was
personally served with the Complaint on August 14, 2007, (c) in Petitioner’s
March 10, 2008 Motion to Strike, he provided the Military address and a copy
of Pretrial Order No. 1 was sent to that address, (d) on April 11, 2008,
Petitioner acknowledged by letter that he received copies of the Motion to Set
and the orders dismissing his Motion to Strike and Motion to Dismiss, (e)
Petitioner stated in that letter that he checks his mail daily, but “‘in
addition to regular mail . . . please email anything you file[;]’” he did not
mention his landlord facing foreclosure or his failure to receive mail at his
(continued...)

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§ 580-3 allows for service of process outside Hawai#i; (3) the

court had jurisdiction over the Complaint pursuant to HRS § 580-

3.514 since both parties were residents of Hawai#i at the time the

Complaint was filed;15 and (4) the court properly entered default

judgment against Petitioner and Petitioner’s attempts to contest

the court’s judgment were “‘[t]oo little, too late.’”

13
(...continued)
home address, (f) on June 5, 2009, Brawley sent a copy of her Settlement
Conference Statement to the facsimile number provided by Petitioner and the
transmission sheet shows that the facsimile was in fact sent, (g) on June 25,
2008, a copy of Pretrial Order No. 2 was mailed to the Military address, which
set forth new dates for the settlement conference and trial, and further
indicated that default judgment would be entered against him if he failed to
appear at the settlement conference.

14
HRS § 580-3.5 (2006 Repl.) provides:

In any proceeding in the family court, the court shall have
the power to render a personal judgment against a party who
is outside of this State and over whom jurisdiction is
acquired by service of process in the manner set forth in
section 580-3(b) or (c), if the party was personally served
with a copy of the summons or order to show cause and
complaint or other pleading upon which the judgment is based
and if the party was a domiciliary of this State (1) at the
time that the cause of action which is the subject of the
proceeding arose, or (2) at the time of the commencement of
the proceeding, or (3) at the time of service.

(Emphases added.) See note 8, supra, for the text of HRS § 580-3(b). HRS §
580-3(c) provides with respect to service of the complaint:

If the defendant is without the circuit, the court may
authorize service by registered or certified mail, with
request for a return receipt and direction to deliver to
addressee only. The return receipt signed by the defendant
shall be prima facie evidence that the defendant accepted
delivery of the complaint and summons on the date set forth
on the receipt. Actual receipt by the defendant of the
complaint and summons sent by registered or certified mail
shall be equivalent to personal service on the defendant by
an authorized process server as of the date of the receipt.

15
Respondent noted that Petitioner “continued to profess his
residency status even until March 29, 2007, when he filed his Complaint and
Demand for Jury Trial in Honolulu District Court” in a non-family court-
related case.

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Respondent failed to respond to Petitioner’s third

argument regarding not having been served with the Divorce Decree

or his fifth argument regarding not being the biological or

adoptive father of the children for whom he owed child support

under the Divorce Decree.

3.

The hearing on Petitioner’s Motion to Set Aside took
place as scheduled on February 10, 2010. Petitioner appeared at

the hearing by telephone. Petitioner argued that the Divorce

Decree should be set aside because Petitioner was never served

with the Divorce Decree, there was “[n]o attempt at all at an

equitable division,” Petitioner had meritorious defenses

regarding child support and alimony, the Divorce Decree exceeded

the relief sought in the Complaint and Proposed Decree, and the

transfer of Petitioner’s copyrights to Respondent violated

federal law.

The court told Petitioner, now represented by counsel,
that it did “not see any reference in [the] October 9, 2009

[Motion to Set Aside] to any specific rule.” The court then

stated that it found “good cause to deny the motion to set aside

the decree[,]” stating, “On the face of the motion I do not

believe [Petitioner] has cited sufficiently to any Family Court

rule or statutory cite that would obligate this court to set

aside the divorce decree.” After pointing out that Petitioner

had failed to cite a court rule, the court noted, “substantively,

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[Petitioner,] you’re arguing for [HFCR Rule] 60B relief.” The

court then ruled, “The court nonetheless is denying the relief

sought[.] . . .”16

4.

The court filed the following Findings of Fact

(findings) and Conclusion of Law (conclusions) regarding

Petitioner’s Motion to Set Aside on September 22, 2010.
FINDINGS OF FACT
1. The parties were married on December 24, 1992, in
Las Vegas, Nevada.
2. [Respondent] became a resident of the State of
Hawai#i in 1975, and [Petitioner] became a resident of the
State of Hawai#i in 1989.
3. On January 20, 2006, [Respondent] filed the
Complaint for Divorce.
4. Numerous attempts were made in an effort to serve
[Petitioner].
5. [Respondent] hired a process server to effectuate
service of process. Nine (9) attempts were made to
effectuate service of process on [Petitioner] at his

16
HFCR Rule 60(b) provides:

(b) Mistakes; Inadvertence; Excusable Neglect; Newly
Discovered Evidence; Fraud. On motion and upon such terms as
are just, the court may relieve a party or a party's legal
representative from any or all of the provisions of a final
judgment, order, or proceeding for the following reasons:
(1) mistake, inadvertence, surprise, or excusable neglect;
(2) newly discovered evidence which by due diligence could
not have been discovered in time to move for a new trial
under Rule 59(b); (3) fraud (whether heretofore denominated
intrinsic or extrinsic), misrepresentation, or other
misconduct of an adverse party; (4) the judgment is void;
(5) the judgment has been satisfied, released, or
discharged, or a prior judgment upon which it is based has
been reversed or otherwise vacated, or it is no longer
equitable that the judgment should have prospective
application; or (6) any other reason justifying relief from
the operation of the judgment. The motion shall be made
within a reasonable time, and for reasons (1), (2), and (3)
not more than one year after the judgment, order, or
proceedings was entered or taken. For reasons (1) and (3)
the averments in the motion shall be made in compliance with
Rule 9(b) of these rules. A motion under this subdivision
(b) does not affect the finality of a judgment or suspend
its operation. This rule does not limit the power of a court
to entertain an independent action to relieve a party from a
judgment, order, or proceeding, or to set aside a judgment
for fraud upon the court.

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residence, located at [the Muolea address].
6. When [Respondent] learned that [Petitioner] was
required to appear at Federal District Court in Honolulu,
she sent a process server to the federal district court.
7. The process server waited for three (3) hours. But
again his efforts failed.
8. On October 5, 2006, [Respondent] filed her first
request to reinstate the matter, and to extend time to serve
[the C]omplaint . . . and summons upon [Petitioner].
9. [Respondent] learned that [Petitioner] relocated
to Florida.
10. On March 14, 2007, [Respondent] filed her Motion
for Personal Service without the State.
11. On August 14, 2007, [Petitioner] was served in
Florida.
12. [Petitioner] filed his Motion to Dismiss . . .(No
hearing was held).
13. On February 6, 2008, [Respondent] filed her
Motion to Set.
14. On March 10, 2008, [Respondent] filed his Motion
to Strike[.]
15. [Petitioner] provided his contact information as:
[Military address], Telephone number [xx], facsimile
transmission number [xx 17].
16. [Petitioner’s Motion to Strike] was set for
hearing on March 27, 2008, before the Honorable R. Mark
Browning.
17. [Petitioner] failed to appear at the hearing,
however, Judge Browning attempted to telephone [Respondent]
at the telephone number he provided.
18. No one answered the telephone, and the court
terminated the call.
19. [Petitioner’s] motion was denied for failure to
prosecute the matter.
20. Pre-trial Order No.1 was issue [sic], which
established all deadlines and set this matter for trial.
21. On April 11, 2008, [Petitioner] communicated with
[Brawley], acknowledging that he received, via mail, copies
of a transmittal, “copy of an Order to Set, copy of an Order
denying [Petitioner]'s motion to dismiss.
22. On June 5, 2009, [Respondent], through her
attorney, faxed an unfilled [sic] copy of her Settlement
Conference Statement to the telephone number provided by
[Petitioner].
23. On June 25, 2008, a copy of Pre-Trial Order No. 2
was mailed to [Petitioner] at his [Military] address he
previously provided.
24. On September 5, 2008, [Petitioner] communicated
with [Brawley], referring to his [Military] address.
25. The parties were divorced on November 21, 2008.
26. Copies of the [Divorce Decree] were mailed, via
certified mail, parcel number 7003050000029036, to
[Petitioner], at his [Military] address.
27. On December 1, 2008, parcel number
7003050000029036 was delivered to [Petitioner’ Military]
address.

17
Petitioner’s contact information is deleted for purposes of
privacy.

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28. [Petitioner] was served with [Respondent]’s
Motion and Affidavit for Post Decree Relief.
29. The hearing on Respondent’s Motion [to Enforce]
was scheduled for February 10, 2010.
30. [Petitioner] filed his Motion to Set Aside on
October 7, 2009.

CONCLUSIONS OF LAW

Based upon the foregoing [findings], the preponderance
of the evidence, notice of the records and files, and
arguments of counsel, the Court hereby enters the following
[conclusions]:
1. The Court had jurisdiction over the parties and
the subject matter herein.
2. The Court had personal jurisdiction over
[Petitioner] when the Complaint for Divorce was filed on
January 20, 2006, because [Petitioner] by his own admission,
continued to reside in Hawai#i until March 29, 2007, when he
filed his Complaint and Demand for Jury Trial in Honolulu
Federal Court [in an unrelated matter].
3. [Petitioner]'s Motion to Set Aside . . . was
denied on March 27, 2008, and [Petitioner] did not file a
motion for reconsideration. Therefore, Judge Browning's
decision denying [Petitioner]’s motion stands[.]
4. [Petitioner] failed to cite to any legal authority
which would have provided a basis for relief.
5. Therefore, [Petitioner]’s Motion [to Set Aside] is
denied.

(Emphases added.)
II.

Petitioner filed a notice of appeal on September 28,

2010.

A.

Petitioner argued in his opening brief that (1) the

Divorce Decree was void because it went beyond the relief

requested in the Complaint and Proposed Decree with respect to

the copyrights, (citing In re Genesys Data Technologies, Inc., 95

Hawai#i 33, 40, 18 P.3d 895, 902 (2001), Bank of Hawai#i v. Shinn,

120 Hawai#i 1, 10, 200 P.3d 370, 379 (2008) and Long v. Long, 101

Hawai#i 400, 69 P.3d 528 (App. 2003)); (2) even if the Divorce

Decree was not void as violative of Petitioner due process

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rights, Petitioner was entitled to relief pursuant to HFCR Rule

60(b), in light of his meritorious defenses;18 (3) the court

abused its discretion in entering default against him for failing

to travel from Florida to Hawai#i, instead of allowing him to

appear by telephone, and (4) the court abused its discretion in

denying his Motion to Set Aside because its sole rationale for

denying his Motion to Set Aside was his failure to cite “the rule
[up]on which his motion was based.”

B.

In its SDO, the ICA noted that both Petitioner’s and

Respondent’s briefs did not conform with the requirements of

Hawai#i Rules of Appellate Procedure (HRAP) Rules 28(b) and

32(a). The ICA noted that under HRAP Rule 28(b)(4), “‘[p]oints

not presented in accordance with this section will be

disregarded, except that the appellate court, at its option, may

notice a plain error not presented.’” Berry, 2011 WL 3250422, at

*1 (quoting HRAP Rule 28(b)(4)). The ICA stated that it
“notice[d] no plain error.” Id.

The ICA nevertheless proceeded to consider the merits

of Petitioner’s arguments, characterizing the arguments raised in

18
Petitioner claimed defenses included that (a) Respondent admitted
in her Complaint that Petitioner was not the father of the children, (b)
Respondent met with attorneys representing the “adjudicated copyright
infringer” of his copyrights possibly resulting in a decrease to the marital
estate, (c) federal law prohibited the court from involuntarily transferring
his copyrights to Respondent, and (d) there is no evidence in the record
establishing a basis for child support, alimony, or property division in light
of the Asset and Debt Statement filed by Petitioner.

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Petitioner’s opening brief as follows: the Divorce Decree (1) is

void under HFCR Rule 60(b)(4); (2) violated due process because

the Complaint and Respondent’s Proposed Decree failed to give him

adequate notice that he would lose his copyrights, be responsible

for all debts, and have no assets;19 and (3) is void because

service of the Divorce Decree and Pretrial Order No. 2 was

inadequate. Although the ICA’s characterization of Petitioner’s
arguments differs from the specific arguments raised in his

opening brief, the ICA appears to have addressed the majority of

the arguments raised by Petitioner.

As to the first argument, the ICA noted that HFCR Rule

60(b)20 permits the court to “‘relieve a party . . . from any or

all of the provisions of a final judgment, order, or proceeding”

if “the judgment is void[.]” Id. n.3. According to the ICA, a

judgment is void only “‘if the court that rendered it lacked

jurisdiction over the subject matter or the parties “‘or

otherwise acted in a manner inconsistent with due process of
law.’” Id. (quoting Citicorp Mortg., Inc. v. Bartolome, 94

Hawai#i 422, 428, 16 P.3d 827, 833 (App.2000) (quoting In re Hana

Ranch Co., 3 Haw. App. 141, 146, 642 P.2d 938, 941 (1982)). The

19
Notwithstanding the ICA’s characterization of Petitioner’s
argument, Petitioner argued only that the Divorce Decree exceeded the relief
sought in the Complaint and Proposed Decree with respect to the copyrights.

20
It should be noted that Petitioner did not expressly argue that
the Divorce Decree was void under HFCR Rule 60(b)(4) to the court or to the
ICA. Instead, as set forth supra, Petitioner contended that the Divorce
Decree was void because the relief went beyond what was asked for in the
Complaint.

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ICA determined that nothing in the record suggested that the

court lacked jurisdiction.21 Id.

With respect to due process, the ICA determined that

although the award of Petitioner’s copyrights to Respondent “was

greater than what was originally proposed,” (1) “‘the family

court has broad discretion to divide and distribute the estate of

the parties in a just and equitable manner[,]” id. at *4 (quoting
Baker v. Bielski, 124 Hawai#i 455, 463, 248 P.3d 221, 229 (App.

2011)), including the power to divide Petitioner’s intellectual

property for purposes of equitable division, id. (citing Teller

v. Teller, 99 Hawai#i 101, 108, 53 P.3d 240, 247 (2002)), and (2)

Petitioner “was notified via multiple documents served on him

that his copyrights, debts, and assets would be considered in the

divorce proceedings” and thus, “received adequate notice

regarding the impact of the proposed divorce on his copyrights,

assets, and debts[.]” Id. Particularly, the ICA noted that the

record indicates that Petitioner was personally served with the
Complaint and served with Respondent’s Proposed Decree by mail

and facsimile.

As to the second argument, the ICA concluded the court

“did not abuse its discretion when it denied [Petitioner]’s

Motion to Set Aside.” Id. The ICA noted that “[i]n his Motion

21
The ICA did not indicate whether it was referring to jurisdiction
over the subject matter or over the parties but the ICA must have been
referring to both inasmuch as it resolved the appeal in Respondent’s favor.

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to Set Aside, [Petitioner] presented arguments regarding custody,

alimony, copyright, etc., the very issues that were part of the

proceedings in which he failed to participate.” Id. at *4.

Finally, as to Petitioner’s third argument, the ICA

determined that “[o]n November 24, 2008, a copy of the Divorce

Decree was mailed to [Petitioner] at the Military address via

certified mail” and “[a] United States Postal Service Track and
Confirm document verified that the document was delivered to the

Military address on December 1, 2008.” Id. at *3.

III.

Petitioner lists the following questions in his

Application:
1. Whether the ICA gravely erred in its conclusion that
the Points of Error were not property [sic] preserved
or alternatively whether it erred when it concluded
that no Plain Error existed to reverse the [court]’s
entry a [sic] default decree of divorce that exceeded
any relief previously requested by the plaintiff that
was, in fact, materially contrary to the requested
relief contrary to established precedent.

2. Whether the ICA gravely erred in its conclusion that
the Points of Error were not property [sic] preserved
or alternatively that the Plain Error existed to
reverse the [court] because a state court lacks the
power to cause the involuntary transfer of a copyright
when federal law preempting state law specifically
prohibits any court from such an act.

3. Whether the ICA gravely erred in its conclusion that
the Points of Error were not property [sic] preserved
or alternatively that the Plain Error existed in
concluding that the [court] had discretion to enter
default as a sanction for a pro se defendant not
traveling from Florida to Hawai#i to attend a
settlement conference when the record showed he had
not received actual notice of the continued conference
let alone the threat to default him if he failed to
come to Hawai#i and refused to set it aside because
the pro se defendant didn’t cite a court rule.

(Emphases added.)

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Respondent filed an Opposition to Petitioner’s

Application on November 25, 2011 (Opposition). As to

Petitioner’s first question, Respondent responds that (1) “the

pleadings served on [Petitioner] put him on notice that the

[court] would make an equitable award of [his] intellectual

property rights that had accrued during the marriage[,]” (2) the

Proposed Decree provided that the ownership of intellectual
property would go to Respondent if Petitioner “did not pay

[Petitioner] her interest in such intellectual property within a

specified time period[,]” and (3) ownership of such intellectual

property was awarded to Respondent since Petitioner failed to

participate in the court proceedings.22

IV.

Initially, Petitioner argues that the ICA erred in

concluding that his brief did not comport with HRAP Rule 28.

Petitioner asserts that in his opening brief, he cited to the

court minutes, which indicated that he was challenging the
court’s denial of his Motion to Set Aside. The portion of the

minutes cited to by Petitioner read: “In reviewing

[Petitioner’s] motion, there is no reference to any rules. . . .

On the face of the motion[,] [Petitioner] has not cited any [rule

22
In the Petitioner’s Response to Respondent’s Opposition (Response)
filed by Petitioner on November 30, 2011, Petitioner contends that although
the court’s denial of his Motion to Set Aside is reviewed for an abuse of
discretion, a court has no discretion to uphold a void judgment. (Citing
Bartolome, 94 Hawai#i at 428, 16 P.3d at 833.) Petitioner reiterates his
belief that the Divorce Decree was void as violative of his due process rights
since it exceeded the relief sought in the Complaint with respect to
copyrights.

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of the HFCR] that would obligate this court to set aside the

Divorce Decree.”23 [RA at 11] Contrary to Petitioner’s

assertion, citation to the court’s minutes is not a citation to a

finding or conclusion, which HRAP Rule 28(b)(4)(C) requires. Id.

(mandating that a point of error include “either a quotation of

the finding or conclusion urged as error or reference to appended

findings and conclusions” where the point of error “involves a
finding or conclusion of the court or agency”) Petitioner’s

citation to the court’s minutes was not included in his “points

of error” but in his “statement of the case.”

The ICA was correct that Petitioner’s brief did not

comply with the requirements of HRAP Rule 28.24 However, this

court may nonetheless consider Petitioner's arguments on the

23
Respondent asserts in her Opposition that (1) this court reviews
the court’s denial of Petitioner’s Motion to Set Aside for an abuse of
discretion, (2) Petitioner delayed the instant proceedings for nearly a year
with “clear knowledge of the [] court proceedings[,]” and (3) thus, there was
sufficient reason for the court to deny the Motion to Set Aside.

24
It appears that Petitioner’s opening brief does cite to the record
in support of the majority of facts and references to the court, but did not
do so for every single fact or reference to the court. Also, Petitioner
concedes that he failed to append relevant documents. The ICA was correct
that Petitioner’s points of error did not expressly allege the error committed
by the court and contained no reference to where in the record the alleged
error occurred or where in the record the alleged error was objected to or
brought to the attention of the court. Finally, while several of his
challenges arguably implicate findings and conclusions of the court,
Petitioner did not cite to specific findings or conclusions in raising his
challenges. Petitioner contends that his citation to the court minutes
indicated that he was challenging the court’s refusal to set aside the Divorce
Decree.
However, HRAP Rule 28(b)(4)(C) requires “a quotation of the
finding or conclusion urged as error or reference to appended findings and
conclusions” in support of each point of error involving a finding or
conclusion. Petitioner’s points of error do not cite to a single finding or
conclusion. The reference to the court’s minutes was in his “statement of
facts,” not his “points of error.”

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merits. See HRAP Rule 28 (“[T]he appellate court, at its option,

may notice a plain error not presented.”)

V.

A.

With respect to the questions raised in Petitioner’s

Application, we first address Petitioner’s third question.

Petitioner asks whether it was an abuse of discretion for the
court to enter default against him “as a sanction” for failing

“to travel from Florida to Hawai#i to attend a settlement

conference when the record showed he had not received actual

notice of the continued conference let alone the threat to

default him if he failed to come to Hawai#i” and in denying his

Motion to Set Aside on the ground that Petitioner failed to “cite

a court rule.” The sole argument presented in connection with

the foregoing question is as follows:
The Opening Brief pointed to the error in the findings
citing to both the record and the text of the minute order
that made it clear that the error was based on the [court’s]
erroneous finding that the Petitioner-Defendant should be
denied relief because as a pro se litigant he failed to cite
to a family court rule.

While the foregoing argument is indiscernible and could

be disregarded, State v. Bui, 104 Hawai#i 462, 464 n.2, 92 P.3d

471, 473 n.2 (2004) (stating that “[i]nasmuch as Defendant

“presents no discernable argument in support of this

contention[,] . . . it is [this court’s] prerogative to disregard

this claim”), Petitioner’s argument is somewhat apparent from the

question itself. The first part of the third question asks

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whether the court abused its discretion when it defaulted

Petitioner for not attending a settlement conference when

Petitioner had not received actual notice of the settlement

conference or the threat to default.

In Rearden Family Trust v. Wisenbaker, 101 Hawai#i 237,

250-51, 65 P.3d 1029, 1042-43 (2003), the trial court entered

default against the defendant, a non-resident, after he failed to
personally appear at a settlement conference, although his

attorney appeared on his behalf. This court viewed “the sanction

of a default judgment [as] a harsh one,]” and concluded that the

court’s denial of the defendant’s motion to set aside as error.

Id. at 254, 65 P.3d at 1046. However, unlike the instant case,

in Rearden, the defendant had made “settlement proposals and did

engage in [settlement conferences] at the behest of the court.”

Id. This court also noted that the plaintiffs settlement

conference statement was untimely and plaintiffs had also failed

to attend two settlement conferences. Id. at 255, 65 P.3d at
1047.

In contrast, Petitioner did not appear at the scheduled

hearings, the first scheduled settlement conference, or the

rescheduled settlement conference on September 18, 2008.

Petitioner did not engage in settlement discussions or file his

own settlement conference statement. Aside from the Motion to

Dismiss and Motion to Strike that were dismissed after Petitioner

failed to appear at the hearings on those motions, Petitioner did

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not defend against Respondent’s filings. Petitioner’s Motion to

Dismiss did not specifically challenge alimony, child support,

and equitable division of the parties’ property. Under these

circumstances, and where Petitioner had notice that the court

would default him in the event he failed to appear at the

rescheduled settlement conference on September 18, 2008, the

court did not abuse its discretion in finding Petitioner in
default. See Bettencourt v. Bettencourt, 80 Hawai#i 225, 232,

909 P.2d 553, 560 (1995) (concluding that “it was not an abuse of

discretion . . . to find appellant in default” where the record

indicated that the appellant’s counsel had been notified of the

rescheduled hearing, although the appellant maintained he had not

received notice).25

Furthermore, this is not a case in which Petitioner did

not have notice that he would be defaulted in the event he failed

to appear at the settlement conference. See Long, 101 Hawai#i at

408, 69 P.3d at 536 (concluding that the trial court abused its
discretion by summarily entering default against the defendant

because “there was no notice to [the defendant] or his attorney

prior to the conference that default was being considered”).

Petitioner may be charged with having notice of the settlement

conference and the threat of default. Pretrial Order No. 2

25
Although Petitioner argues that the court should not have entered
default under the facts of this case, none of the parties question the court’s
authority after prior notice, to enter default for a party’s failure to attend
a scheduled settlement conference. Cf. HFCR Rule 94(c) (vesting the court
with the authority to sanction a pro se party for his or her failure to appear
at any conference set by the court pursuant to HFCR Rule 37(b), which includes
the authority to render a judgment by default as a sanction).

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indicated that “Settlement Conference is scheduled for 9/18/08 at

2:30.” It also stated that, “[i]f [Petitioner] fail[ed] to

appear at [the] settlement conference, he shall be defaulted.”

HFCR Rule 5 provides that as to “orders required by its terms to

be served,” “service upon a party[26] shall be made by delivering

a copy to the . . . party or by mailing it to the . . . party at

the . . . party's last known address or, if no address is known,
by leaving it with the clerk of the court.” (Emphases added.)

The rule additionally provides that “[s]ervice is complete upon

mailing.”

It is apparent from the record, as set forth above,

that Petitioner’s last known address was his Military address. A

Statement of Mailing filed by Brawley indicates that a copy of

Pretrial Order No. 2 was mailed to Petitioner at his Military

Address on June 25, 2008. See finding 23. Petitioner continued

to file documents bearing the Military address even after

Pretrial Order No. 2 was sent to him at that address. On August
6, 2008, Petitioner filed a “First Request for Answers to

Interrogatories” dated June 28, 2008, and listed his address as

the Military address. In addition, Petitioner attached to his

Motion to Set Aside an unfiled letter that he sent to Brawley on

September 5, 2008 regarding the various documents he had received

in the case, and that letter once again referred to the Military

address as his address. Thus, Petitioner may be deemed to have

26
As indicated supra, service was being made on Petitioner because
he was proceeding pro se.

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been served with Pretrial Order No. 2 and provided notice that he

would be defaulted in the event he failed to appear at the

settlement conference. See finding 23.27

B.

The second part of Petitioner’s third question asks

whether the court abused its discretion when it refused to set

aside the Divorce Decree on the ground that Petitioner failed to
cite a court rule. “A court abuses its discretion whenever it

exceeds the bounds of reason or disregards rules or principles of

law or practice to the substantial detriment of a party.” Id. at

253, 65 P.3d at 1045 (ellipsis, internal quotation marks, and

citation omitted).

At the hearing, the court did note that it did “not see

any reference in [the] October 9, 2009 [Motion to Set Aside] to

any specific rule.” In finding “good cause to deny the motion to

set aside the decree[,]” the court stated, “On the face of the

motion I do not believe [Petitioner] has cited sufficiently to
any Family Court rule or statutory cite that would obligate this

court to set aside the divorce decree.” Conclusion 4 also states

“[Petitioner] failed to cite to any legal authority which would

have provided a basis for relief.”

However, the court did not deny his Motion to Set Aside

solely on the ground that he failed to cite a court rule. The

court noted that “substantively,” Petitioner was “arguing for

27
Petitioner did not expressly challenge this finding on appeal.

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[HFCR Rule] 60B relief.” However, the court said, “The court

nonetheless is denying the relief sought[,]” indicating its

ruling on the merits of Petitioner’s HFCR Rule 60(b) claims.

C.

Although not expressly raised in his Application, it

appears the court properly denied Petitioner’s Motion to Set

Aside with respect to alimony, child support, and equitable
division. The court filed the Divorce Decree on November 21,

2008. Petitioner did not file his Motion to Set Aside until

October 9, 2009, which Petitioner maintained at the hearing was

grounded in HFCR Rule 60(b), although he had not cited the rule

in his motion.28 HFCR Rule 60(b) permits the court to relieve a

party from any or all of the provisions of a final judgment,

order, or proceeding for the following reasons:
(1) mistake, inadvertence, surprise, or excusable neglect;
(2) newly discovered evidence which by due diligence could
not have been discovered in time to move for a new trial
under Rule 59(b); (3) fraud (whether heretofore denominated
intrinsic or extrinsic), misrepresentation, or other
misconduct of an adverse party; (4) the judgment is void;
(5) the judgment has been satisfied, released, or
discharged, or a prior judgment upon which it is based has
been reversed or otherwise vacated, or it is no longer

28
It is noted that Petitioner maintained at the hearing on his
Motion to Set Aside that he did not obtain a copy of the Divorce Decree.
However, the record indicates that a copy of the Divorce Decree was sent to
Petitioner at his last known address on November 24, 2008. Petitioner noted
at the hearing that the proof of mailing was not filed with the court until a
year after the Divorce Decree was filed. Respondent contended in response
that she was “not required to send a copy of th[e] decree certified mail to
[Petitioner],” but did so in light of Petitioner’s “history[,]” of apparently
failing to participate in the proceedings. Although the proof of mailing was
not filed at the time of service, it does indicate that Petitioner was served
at his last known address only days after the Divorce Decree was filed. In
addition, as indicated in the findings, see finding 27, a “Track & Confirm”
receipt indicates that the Divorce Decree was delivered to Petitioner on
December 1, 2008. Petitioner did not specifically challenge this finding on
appeal. Moreover, Petitioner apparently obtained the Divorce Decree as
evidenced by this response thereto by way of his Motion to Set Aside.

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equitable that the judgment should have prospective
application; or (6) any other reason justifying relief from
the operation of the judgment.

While Petitioner maintained at the February 10, 2010

hearing on his Motion to Set Aside that he had “meritorious

defenses[,]” Petitioner did not indicate what those defenses

were, except that with respect to child support, he argued that

the children were not his biological children.29 Petitioner did

not indicate at the hearing why he had failed to raise these

defenses previously, or identify which provision of HFCR Rule

60(b) would entitle him to relief.

Additionally, Petitioner did not present any argument

pertaining to these issues in his Application. Thus, Petitioner

may be said to have waived his arguments on these issues with

respect to the court’s denial of his Motion to Set Aside in the

instant writ. See E & J Lounge Operating Co., Inc. v. Liquor

Comm’n of City and County of Honolulu, 118 Hawai#i 320, 347, 189

P.3d 432, 459 (2008) (“[I]nasmuch as the parties did not raise

these issues in their appeal to the ICA and Petitioner did not

raise these issues in its Application, the issues are deemed

waived and need not be considered.”) In any event, as the ICA

noted, the court defaulted Petitioner on these issues after his

repeated failure to appear in this case and these issues were

29
It is noted that notwithstanding Petitioner’s argument regarding
child support, HRS § 584-4(a)(1) states that “[a] man is presumed to be the
natural father of a child” if “[h]e and the child's natural mother are or have
been married to each other and the child is born during the marriage[.]”
Petitioner does not challenge Respondent’s statement in her complaint that she
was pregnant with the minor children (twins) at the time of the parties
marriage, or that the children were born during the parties’ marriage.

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“the very issues that were part of the proceedings in which

[Petitioner] failed to participate.” Berry, 2011 WL 3250422, at

*3. Based on the specific arguments raised in Petitioner’s

Application, the court cannot be said to have abused its

discretion in not setting aside the Divorce Decree inasmuch as

the court found that Petitioner had prior notice of the

settlement conference30 and the possibility of default, and
appears to have considered Petitioner’s arguments in the context

of HFCR Rule 60(b). However, as discussed infra, the court did

abuse its discretion in refusing to set aside that portion of the

Divorce Decree transferring Petitioner’s entire ownership

interest in the copyrights to Respondent.

VI.

In connection with Petitioner’s first question

Petitioner maintains the Divorce Decree violated his due process

rights insofar as he had no notice that the copyrights themselves

would be awarded to Respondent in the final Divorce Decree as
opposed to only an equitable split of proceeds derived from the

copyrights, as reflected in the Proposed Decree. Shinn, 120

Hawai#i at 10, 200 P.3d at 379 (stating that “the purpose of HRCP

Rule 54(c) is to provide a defending party with adequate notice

upon which to make an informed judgment on whether to default or

actively defend the action”) (brackets, internal quotation marks,

and citation omitted)); Genesys Data Technologies, 95 Hawai#i at

30
See finding 23 indicating that Petitioner received Pretrial Order
No. 2 on June 25, 2008.

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40, 18 P.3d at 902 (stating that “a default judgment is not void

for violating HRCP Rule 54(c) unless the violation deprived the

defaulting party of due process by failing to provide notice of

the scope of the claim and a meaningful opportunity to defend

against it”); Long, 101 Hawai#i at 400, 69 P.3d at 528 (stating

that Rule 54(c) requires that “‘[a] judgment by default shall not

be different in kind from or exceed in amount from that which was
prayed for in the demand for judgment’”) (brackets in original)).

He argues that the ICA gravely erred in failing to notice as

plain error that the relief awarded Respondent in Divorce Decree

as to the copyrights “went far beyond the prayer in the

complaint.” Because we conclude in the subsequent section that

the court abused its discretion in refusing to set aside the

award of all of Petitioner’s ownership interest in the copyrights

to Respondent in violation of federal law, we do not discuss this

question.

VII.
In connection with his second question, Petitioner

argues that the Divorce Decree violates federal law.31 In his

31
Article VI, section 2 of the United States Constitution states as
follows:

This Constitution, and the Laws of the United States which
shall be made in Pursuance thereof; and all Treaties made,
or which shall be made, under the Authority of the United
States, shall be the supreme Law of the Land; and the Judges
in every State shall be bound thereby, any Thing in the
Constitution or Laws of any State to the Contrary
notwithstanding.

The Supreme Court has explained that state law is pre-empted where, inter
alia, “that law actually conflicts with federal law[.]” Cipollone v. Liggett
(continued...)

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Motion to Set Aside, Petitioner argued that 17 U.S.C. § 201(e)

prohibited the involuntary transfer under the Divorce Decree of

his entire ownership interest in his copyrights.32 The court did

not specifically address Petitioner’s argument in this regard.

On appeal to the ICA, Petitioner again argued that the court

abused its discretion in failing to set aside the Divorce Decree

because 17 U.S.C. §§ 201(e) and 301(a)33 prohibited the transfer
of his ownership interest in his copyrights. Respondent did not

respond to this argument in her Answering Brief. The ICA,

relying on Teller, 99 Hawai#i at 108, 53 P.3d at 247, concluded

that the court had the power to equitably divide the copyrights,

but did not address whether such transfer was permissible under

federal copyright law.

31
(...continued)
Group, Inc., 505 U.S. 504, 516 (1992). The Divorce Decree purported to
transfer all of Petitioner’s ownership interest in the copyrights, apparently
including those “exclusive rights within the general scope of copyright as
specified by [17 U.S.C. § 106]” that “are governed exclusively by [the
Copyright Act,]” 17 U.S.C. § 301. Under the circumstances presented here,
where federal law directly preempts the application of state law, we conclude
that there are extraordinary circumstances justifying relief under HFCR Rule
60(b)(6). Thus, we address Petitioner’s preemption claim in this case.

32
See page 9 n.13 for text of 17 U.S.C. § 201(e).

33
17 U.S.C. § 301(a) states as follows:

(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.

(Emphases added.)

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In his Application, Petitioner argued that the ICA

erred in relying on Teller inasmuch as the transfer of copyrights

is preempted by federal law. In her Opposition, Respondent did

not make any arguments regarding federal copyright law and

instead, urged that the transfer of the copyrights to her was

permitted by Teller, 99 Haw. at 108, 53 P.3d at 247. On January

24, 2012, this court ordered supplemental briefing on the
applicability of federal copyright law.

In their supplemental briefs, the parties rely

primarily on two cases: Rodrigue, 218 F.3d at 432 and In re

Marriage of Worth, 195 Cal. App. 3d 768 (Cal. Ct. App 1987).

Petitioner reads Rodrigue as holding that “the rights to money

derived from a copyright [are] subject to equitable division but

the exclusive rights of ownership remain the unassailable

province of the author.” According to Petitioner, Worth “held in

line with Rodrigue . . . that the wealth generated from an

infringement action, not the copyright ownership and rights of
ownership bound up in Section 106 [is] community property.”34

34
17 U.S.C. § 106 states as follows:

Subject to sections 107 through 122, 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
(continued...)

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Respondent, on the other hand, maintains that

“copyrights acquired during marriage are community property

subject to California’s marital property laws.” In addition,

Respondent asserts Worth held the Copyright Act does not preempt

state marital property law because a copyright vests initially in

the authoring spouse, but does not preclude acquisition of a

community property interest by a spouse. Moreover, Respondent
points to Worth’s conclusion that 17 U.S.C. § 301 “‘reveals an

intent by Congress to supercede only state copyright laws.’”

(Quoting Worth, 195 Cal. App. 3d at 777-778.) (Emphasis in

original.) According to Respondent, consistent with Worth,

Rodrigue held state marital laws apply to the copyrights.

B.

Teller, relied upon the ICA, does not address the issue

presented in this case. In Teller, this court did “hold that

intellectual property is capable of division for purposes of

equitable distribution.” 99 Hawai#i at 108, 53 P.3d at 247. But

34
(...continued)
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;

(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; and

(6) in the case of sound recordings, to perform the
copyrighted work publicly by means of a digital audio
transmission.

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Teller involved patents and not copyrights. This court stated

that “[b]ecause the United States Supreme Court has determined

that Federal case law does not preempt the states’ right to

impose regulation on patents, we do not address federal

preemption.” 99 Hawai#i at 111, 53 P.3d at 250 (citing Kewanee

Oil Co. v. Bicron Corp., 416 U.S. 470 (1974)). Teller observed

that the Supreme Court had declared that “‘[t]he only limitation
on the States is that in regulating the area of patents and

copyrights they do not conflict with the operation of the laws in

this area passed by Congress.’” Id. (quoting Kewanee Oil, 416

U.S. at 479). Teller cited Rodrigue as recognizing that federal

copyright law does not preempt state law in its entirety. See

id. (citing Rodrigue, 218 F.3d at 439). But, Teller did not

address the extent to which federal copyright law preempts state

law regarding equitable division.

C.

In Worth, the California Court of Appeal considered the
“issue [of] whether the marital community has an interest in a

copyright.” Id. at 771. The California Court of Appeal rejected

the husband’s argument that because a copyright “vests initially”

in the author or authors of the work under 17 U.S.C. § 201(a),35

the copyright belonged solely to him as the author of the work.

Worth began its analysis with the general proposition that “all

35
17 U.S.C. § 201(a) states that “[c]opyright 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.”

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property acquired during marriage is community property.” Id. at

773. According to Worth, then, there is “little doubt that any

artistic work created during the marriage constitutes community

property.” Id. Because the books at issue were written and

published during the parties’ marriage, Worth held the “literary

works constituted community property.” Id.

It was noted by Worth, that the husband agreed that the
wife was entitled to one-half interest in the royalties derived

from the copyrighted works. Id. at 774. Worth construed such

concession as reflecting the husband’s acknowledgment that the

books were considered community property. Id. Hence, Worth

concluded that if the artistic work is community property, “it

must follow that the copyright itself obtains the same status.”

Id.

Addressing the various provisions of the Copyright Act,

Worth noted that 17 U.S.C. § 201 “provides for the transfer of a

copyright by contract, will ‘or by operation of law.’”36 Id.
According to Worth, however, although a copyright “‘vests

initially’ in the authoring spouse[,]’” 17 U.S.C. § 201, “the

copyright is automatically transferred to both spouses by

operation of the California law of community property.” Id.

Next, Worth considered whether California’s community

property laws were preempted by the Copyright Act. Id. at 776.

36
17 U.S.C. § 201(d)(1) states that “[t]he ownership of a copyright
may be transferred in whole or in part by any means of conveyance or by
operation of law, and may be bequeathed by will or pass as personal property
by the applicable laws of intestate succession.”

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In Worth, the husband relied on Hisquierdo v. Hisquierdo, 439

U.S. 572 (1979), in support of his preemption argument. In

Hisquierdo, the Supreme Court considered whether retirement

benefits under the Railroad Retirement Act that had not yet

vested could be awarded to the wife upon dissolution of the

marriage. Id. at 573. The Supreme Court held that California

community property law was preempted by the Railroad Retirement
Act which vested ownership in the retired worker alone. Id. at

590; see also McCarty v. McCarty, 453 U.S. 210, 224 (1981)

(determining that military retirement pay not subject to state

community property laws); Free v. Bland, 369 U.S. 663, 668-669

(1962) (determining that U.S. Savings Bonds standing in the name

of husband “or” wife not subject to state community property

laws); Wissner v. Wissner, 338 U.S. 655, 658 (1950) (determining

that a National Service Life Insurance policy was not subject to

state community property laws, and that proceeds belong to the

named beneficiary).37
Worth distinguished the foregoing cases from the case

before it, reasoning that in those cases, the benefit at issue

“was expressly defined by Congress to be the separate property of

the designated recipient.” 195 Cal. App. 3d at 777. In contrast

to those cases, Worth asserted, “the Copyright Act expressly

provides for co-ownership as well as transfer of all or part of a

copyright.” Id. In addition, Worth declared that although under

37
These cases were cited in Hisquierdo. See 439 U.S. 572.

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17 U.S.C. 201(a), a copyright “‘vests initially in the

author[,]’” “nothing in the Copyright Act precludes the

acquisition of a community property interest by a spouse[.]” Id.

(emphasis in original).

The husband’s argument that California’s community

property laws were preempted by 17 U.S.C. § 301, was also

rejected by Worth. Worth explained that state law is preempted
“only if the rights granted under state law are ‘equivalent to

any of the exclusive rights within the general scope of copyright

as specified by [17 U.S.C. §] 106[,]’” and because the rights of

ownership and division of marital property are in no way

equivalent to the rights within the scope of the Copyright Act,

California community property law is not preempted. Id. at 777-

78.

In accordance with the foregoing, Worth concluded that

the husband’s copyrights in the books “constituted divisible

community assets.” Id. at 778. Consequently, “husband and wife
remain[ed] as co-owners of an undivided interest in the

copyrights[,]” and “both parties [were] entitled to share equally

in any of the proceeds directly or indirectly related to the

pending federal lawsuit for copyright infringement.” Id.

In Rodrigue, decided thirteen years after Worth, the

Fifth Circuit Court of Appeals similarly addressed whether the

copyrighted works of the husband were community property. The

couple in that case, George and Veronica, were married and

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divorced in Louisiana. 218 F.3d at 433. During the marriage,

George obtained certificates of copyright for several of his

paintings. Id. Under Louisiana law, the parties’ marriage

effected a “legal regime” of matrimonial property, establishing

between them a community of acquets38 and gains, referred to as

the “community” and upon divorce, each spouse owned an undivided

one-half interest in the community property and its fruits and
products until partition. Id. at 433-34.

Upon dissolution of George and Veronica’s marriage,

George’s former business associate filed an action in federal

court seeking a declaration that George was the sole owner of

intellectual property rights in the paintings. Id. at 434.

George contended that the Copyright Act preempted state community

property law, preventing his copyrighted works from becoming

community property, thereby exempting his copyrights from

division and partition in divorce. Id. at 435.

Preliminarily, the Rodrigue court noted that 17 U.S.C.
201(a) specifies that “[c]opyright in a work protected under this

title vests initially in the author or authors of the work.” Id.

The Fifth Circuit stated that in contrast, Louisiana community

property law declares that all “‘property acquired during the

existence of the legal regime through the effort, skill, or

38
“Acquet” is defined as “[p]roperty acquired by purchase, gift, or
any means other than inheritance. The term is most commonly used to denote a
marital acquisition that is presumed to be community property.” Black’s Law
Dictionary 26 (9th ed. 2009).

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industry of either spouse’ is community property.” Id. George

maintained that state law was preempted.

Rodrigue stated, “We do not disagree with George's

general premise; we do disagree, though, with his expansive view

of the scope of the conflict between copyright law and community

property law, and thus with the extent of the preemptive effect

of such conflict.” Id. at 435. Rodrigue held “that an
author-spouse in whom a copyright vests maintains exclusive

managerial control of the copyright but that the economic

benefits of the copyrighted work belong to the community while it

exists and to the former spouses in indivision[39] thereafter[,]”

noting that such position “is consistent with both federal

copyright law and Louisiana community property law and is

reconcilable under both.” Id.

The Fifth Circuit began by analyzing the scope of 17

U.S.C. § 201(a), which, to reiterate, provides that a

“[c]opyright in a work protected under this title vests initially
in the author or authors of the work.” See id. (emphasis added).

Rodrigue construed § 201(a) as pertaining only to a “copyright,”

the owner of which has “the exclusive rights of reproduction,

adaptation, publication, performance, and display.” Id. (citing

17 U.S.C. 106). According to Rodrigue, “none of these rights

either expressly or implicitly include the exclusive right to

enjoy income or any of the other economic benefits produced by or

39
“Indivision” is defined as “undivided ownership in property.”
Black’s Law Dictionary 1594 (8 th ed. 2004)

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derived from copyrights.” Id. Rodrigue further observed that

the copyright “vests” in the author under § 201(a), but “never

uses the words ‘own’ or ‘ownership,’ and the Act does not speak

of ownership per se or globally, but only in the sense of the

five exclusive attributes listed in [17 U.S.C.] § 106.” Id. at

435-36.

Rodrigue determined that the Copyright Act’s “inclusion
of only five express attributes of ownership while omitting,

inter alia, the attribute of enjoyment of economic benefits, and

Congress’s reference to immediate vesting of the copyright, and

not to vesting of ownership,” suggested that the “‘vesting’ of

the copyright and its five (and five only) statutorily delineated

attributes in one spouse does not preclude classification of

other attributes of ownership of a copyright as community

property.” Id. at 436. Further, Rodrigue noted that although

the copyright vests “initially” in the author, the statute does

not speak of a “permanent-vesting[.]” Id. (emphasis omitted).
Thus, according to Rodrigue, the Copyright Act “explicitly allows

for subsequent vesting in non-authors, either jointly with the

author or subsequent to him by virtue of transfer of all or

lesser portions of the copyright.” Id. The Fifth Circuit

ultimately concluded that 17 U.S.C. 201(a), which provides that

five specific rights “vests initially” in the author, did not

“ineluctably conflict” with any provision of Louisiana

matrimonial law that would recognize that Veronica does have an

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economic interest in the George’s copyrights. Id. Rodrigue

likened that economic benefits flowing from copyrights to

“paychecks [and] partnership interests[.]” Id. at 439.40

Directly addressing preemption, the Rodrigue court held

that the Copyright Act does not mandate “monolithic preemption of

Louisiana property law in toto” inasmuch as 17 U.S.C. § 301(a)

“states that ‘all legal or equitable rights that are equivalent
to any of the exclusive rights within the general scope of

copyright . . . are governed exclusively by this title.’” Id. at

439 (ellipsis in original). According to Rodrigue, 17 U.S.C. §

301(b) expresses that “nothing in § 301(a) ‘annuls or limits any

rights or remedies under the common law or statutes of any State

with respect to . . . 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.’” Id. (ellipsis in original). In sum, Rodrigue held that

the “only ownership rights . . . grant[ed] exclusively to the
author [under 17 U.S.C. § 106] are the rights to (1) reproduce,

40
Rodrigue acknowledged that Louisiana law governing marital
property provides for “‘equal management’ of property belonging to the
community” such that, generally, “[e]ach spouse, acting alone, has the right
to manage, control, or dispose of community property.” Id. at 438. Rodrigue
stated that “[i]f this general principle were to be applied across the board
to copyrights created by one spouse in community, however, an irreconcilable
conflict with the author-spouse's five exclusive § 106 rights of reproduction,
adaptation, publication, performance, and display would result.” Id.
Rodrigue determined that copyrights came within the exception to the general
rule provided for in the Louisiana code under which the spouse in whose name
“‘moveables [have been] issued or registered’” “has exclusive management
rights (the combination of usus and abusus) but preserves for the spouses
jointly the right to enjoy the benefits (the fructus) of such property.” 218
F.3d at 438-39.

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(2) prepare derivative works, (3) distribute copies, (4) perform,

and (5) display the work[,]” “[a]mong the entire ‘bundle’ of

rights comprising full ownership of property generally, the

preemptive effect of federal copyright law extends only to this

explicitly-enumerated, lesser-included quintet.” Id. Because

nothing in the Copyright Act governs “the right to enjoy the

earnings and profits of the copyright[,]” Rodrigue concluded that
the Copyright Act does not “prevent non-preempted rights from

being enjoyed by the community[.]” Id.

VIII.

Worth’s analysis is somewhat problematic. Worth

acknowledged that under 17 U.S.C. § 201 a copyright “‘vests

initially’ in the author[.]’” 195 Cal. App.3d at 777 (emphasis

omitted). But, according to Worth, “the copyright is

automatically transferred to both spouses by operation of the

California law of community property.” Id. at 774. Worth’s

analysis in terms of “initial vesting” and immediate divestment
would seem contradictory. The term “vests” connotes something

more than momentary ownership. See Black’s Law Dictionary at

1594 (defining “vest” as “confer[ring] ownership of (property)

upon a person[;]” “invest[ing] (a person) with the full title to

property[;]” “giv[ing] (a person) an immediate, fixed right of

present or future enjoyment.” (Emphasis added.)

Moreover, Worth did not address 17 U.S.C. § 201(e),

which to reiterate, invalidates any “action by any governmental

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body or other official or organization purporting to seize,

expropriate, transfer, or exercise rights of ownership with

respect to the copyright, or any of the exclusive rights under a

copyright,” “except as provided under title 11” (regarding

bankruptcy proceedings), “[w]hen an individual author’s ownership

of a copyright, or of any of the exclusive rights under a

copyright, has not previously been transferred voluntarily by
that individual author[.]” (Emphasis added.) As pointed out in

1 Nimmer on Copyrights § 6A.03[C][2][b], “[a]t first blush, [17

U.S.C. § 201(e)] would seem to bar any transfers by operation of

law, thus rendering [17 U.S.C. § 201(d), allowing for such

transfers] meaningless.” However, Nimmer on Copyrights states

that “the two subsections can be reconciled” by reading 17 U.S.C.

§ 201(e) as precluding transfers by operation of law only if the

author’s ownership of a copyright has not previously been

voluntarily transferred. Because § 201(d) governing transfers of

copyrights by operation of law “underpins Worth’s analysis,” 1
Nimmer on Copyrights § 6A.03[C][2][b], and § 201(e) would

preclude such transfers unless ownership of the copyright has

previously been voluntarily transferred, Worth’s holding can only

be reconciled with the Copyright Act by concluding that the

authoring spouse implicitly consented to transfer of his or her

copyright to his or her spouse, see id. at § 6A.03[C][3] (noting

that “[a]bsent such consent, Worth’s holding cannot comply with

the Copyright Act, and hence would clearly be pre-empted”).

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Even if this court were to adopt Worth’s rationale,

Worth did not set forth with precision, the scope of each

spouse’s ownership interest upon divorce. See id. (noting that

“Worth raised none of the vexing issues of how transfers of

copyrighted works should be treated in the context of a marital

community”). For example, Worth did not address whether the non-

authoring spouse, by virtue of his or her ownership interest in
the copyright, has the rights set forth in 17 U.S.C. § 106

(reproduction, adaptation, publication, performance, and

display). But, dividing those rights equally between spouses

upon divorce would impinge on the author’s ability to exploit his

or her copyright and undermine the purpose of the Copyright Act

of encouraging authorship. Id. at § 6A.04; see also Rodrigue,

218 F.3d at 442 (noting “the federal interest in encouraging

authorship and exploitation of copyright”).

Nimmer states that, for example, treating spouses as

“traditional co-owners . . . transmuting every transfer and
exclusive license granted by a married [author] into a mere

partial grant, subject to rival grants of title emanating from

the erstwhile spouse” would be a “a prescription for the worst

disorder.” 1 Nimmer on Copyrights § 6A.04. Thus, to preserve

Worth’s rationale, Nimmer on Copyright suggests

“[c]onstitutionally, . . . the courts must invoke a presumption,

at least sub silentio, that the author-spouse consents to”

“sharing author status.” Id. To avoid problems raised by

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“traditional co-ownership,” Nimmer advocates “adding to that

presumption a complementary presumption” that the “nonauthor-

spouse[] consent[s] to ceding full authority over disposition of

the copyright to the author-spouse.” Id.

It would seem apparent that preservation of Worth’s

rationale requires legal gymnastics. In light of 17 U.S.C. §

301(e), which prohibits involuntary transfers of copyrights, to
hold that part “ownership of a copyright . . . transfer[s]” to

the nonauthoring-spouse by “operation of [Hawai#i marital

property] law” under 17 U.S.C. § 201(d) requires this court to

create a legal presumption that the authoring-spouse consented to

sharing his or her ownership by virtue of marriage. 1 Nimmer on

Copyrights § 6A.04. But, then, a second legal presumption that

the nonauthoring-spouse consents to the authoring-spouse

maintaining exclusive control over all of the exclusive rights

delineated in 17 U.S.C. § 106 would also need to be created to

avoid the risk of circumventing the very purpose of the Copyright
Act. We decline to adopt this approach.

On the other hand, Rodrigue offers a means of

reconciling marital property law with the Copyright Act. See id.

at § 6A.05 (noting that instead of “finding state laws here

threatening to federal uniformity, [Rodrigue] found a way to

harmonize the two”). As Rodrigue observes, only “legal or

equitable rights that are equivalent to any of the exclusive

rights within the general scope of copyright as specified by

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section 106 . . . are governed exclusively by the [Copyright

Act].” 17 U.S.C. § 301(a). Thus, state law would be preempted

only to the extent it provides for legal or equitable rights

within the scope of the exclusive rights under 17 U.S.C. § 106

(rights to reproduce, adapt, distribute, perform, and display

copyrighted works). See Rodrigue, 218 F.3d at 439 (“Among the

entire ‘bundle’ of rights comprising full ownership of property
generally, the preemptive effect of federal copyright law extends

only to this explicitly-enumerated, lesser-included quintet.”)

Pursuant to HRS § 580-47, the court has the discretion

to divide and distribute “the estate of the parties, real,

personal, or mixed, whether community, joint, or separate[.]”

This court has held that intellectual property is a martial asset

that is subject to equitable division upon divorce. See Teller,

99 Hawai#i at 107-108, 53 P.3d at 246-47. With respect to the

equitable division of ownership interests in a copyright, instead

of creating the legal presumptions required to uphold Worth’s
approach, we adopt the approach taken by Rodrigue that any

distribution by the court must result in the authoring-spouse

retaining the exclusive rights set forth under 17 U.S.C. § 106,

but that the non-authoring spouse is entitled to an economic

interest in the copyrights.

Although 17 U.S.C. § 301(e) prohibits the involuntary

transfer of an author’s ownership of a copyright, the Copyright

Act preempts state law only to the extent state law governs

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“legal or equitable rights that are equivalent to any of the

exclusive rights within the general scope of copyright as

specified by section 106.” 17 U.S.C. § 301; see also Rodrigue,

218 F.3d at 440 (noting that 17 U.S.C. § 301 specifies a “limited

preemption which trumps only those common law or state law rights

that are equivalent to federal copyright”) (emphasis in

original). Because such a holding would not touch upon those
exclusive rights under § 106, state law would not be preempted.

Rodrigue, 218 F.3d at 338 (“[W]e conclude that federal copyright

law does not conflict with, and therefore does not preempt,

Louisiana community property law to the extent of denying the

entitlement of the non-author spouse (Veronica) to an undivided

one-half interest in the economic benefits of the copyrighted

works created by the author (George)[.]”)

Moreover, the Rodrigue approach comports with the

partnership model for dividing assets in divorce proceedings,

under which “‘partners share equally in the profits of their
partnership, even though they may have contributed unequally to

capital or services.’” Cox v. Cox, 250 P.3d 775, 782 (2011)

(quoting Tougas v. Tougas, 76 Hawai#i 19, 27, 868 P.2d 437, 445

(1994)). As pointed out by Rodrigue, allowing the nonauthoring-

spouse to share in the proceeds derived from the authoring-

spouse’s copyright is similar to other examples where one spouse

retains exclusive management over a particular assert, but

spouses share in the benefits derived therefrom. Rodrigue

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explained:
A paycheck issued by the employer in the name of the
employee-spouse alone can be cashed, deposited, or otherwise
negotiated only by that spouse; yet, the proceeds of the
paycheck, representing earnings of one spouse in community,
belong to the community. Likewise, a motor vehicle purchased
with community funds but titled in the name of one spouse
alone can be sold, leased, or encumbered only by the named
spouse; yet the proceeds of any such disposition belong to
the community. And when, during the existence of the
community, one spouse joins an existing partnership or joins
in the formation of a new one, the partner-spouse has the
exclusive right to participate in the partnership and to
manage, alienate, or encumber that interest; yet the
economic benefits-and liabilities-flowing from the
partnership belong to the community.

218 F.3d at 438 (footnotes omitted). Some courts, including in

In re Matter of Marriage of Monslow, 912 P.2d 735 (Kan. 1996),

relied upon by this court in Teller, have endorsed the award of

the entire ownership interest to the spouse with the right to

control and manage the intellectual property, while subjecting

“future income generated by the interest to a . . . lien in favor

of [the other spouse].”

In sum, the court abused its discretion in refusing to

set aside that portion of the Divorce Decree that transferred

enitrely Petitioner’s copyrights to Respondent, in violation of

federal law. The Divorce Decree purported to transfer all of

Petitioner’s interest in his copyrights, including those five

attributes of ownership exclusively governed by the Copyright

Act. Hence, to uphold the Divorce Decree would be to ignore a

violation of federal law. The ICA thus gravely erred in failing

to notice this error as plain error.

IX.

In conclusion, the court abused its discretion in

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failing to set aside that portion of the Divorce Decree awarding

Respondent the entire ownership interest in the copyrights. The

ICA gravely erred in failing to notice the court’s error for

plain error. We thus vacate the August 17, 2011 judgment of the

ICA filed pursuant to its July 28, 2011 SDO, affirming the

September 22, 2010 Order Denying Motion to Set Aside and the

Findings of Fact and Conclusions of Law filed by the court, and
remand to the court for a determination of the economic interest

in the copyrights to which Respondent is entitled. The Divorce

Decree is affirmed in all other respects.

Timothy J. Hogan, /s/ Mark E. Recktenwald
for petitioner
/s/ Paula A. Nakayama
Carl H. Osaki,
for respondent /s/ Simeon R. Acoba, Jr.

/s/ James E. Duffy, Jr.

/s/ Sabrina S. McKenna

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