text:
    James L. AADLAND, Petitioner, v. Alexander P. BUTTERFIELD, Administrator, Federal Aviation Administration, and National Transportation Safety Board, Respondents.
    No. 73-1907.
    United States Court of Appeals, Eighth Circuit.
    Submitted May 13, 1974.
    Decided Sept. 3, 1974.
    J. P. Dosland, Moorhead, Minn., for petitioner.
    Judith S. Feigin, Atty., Dept, of Justice, Washington, D. C., for respondents.
    Before JOHNSEN and VAN OOS-TERHOUT, Senior Circuit Judges, and TALBOT SMITH, Senior District Judge.

       TALBOT SMITH, Senior District Judge, Eastern District of Michigan, sitting by designation.

   PER CURIAM.

This case is before us on a petition under 49 U.S.C. § 1486(a) for review of an order of the National Transportation Safety Board suspending the license of James L. Aadland, a commercial pilot, for a period of four months.

Aadland had been charged in a complaint by the Administrator of the Federal Aviation Administration (FAA) with a violation of the Federal Aviation Regulations, 14 C.F.R., in having consumed alcoholic beverages within three hours prior to operating a Cessna 172 L aircraft, as pilot in command, on a passenger-carrying flight from Fargo, North Dakota, to Wahpeton, North Dakota.

The Regulations forbid any person to act as a crewmember of a civil aircraft within eight hours after the consump.tion of any alcoholic beverage. 14 C.F. R. § 91.11(a)(1). “Pilot in command” is defined in the Regulations as meaning “the pilot responsible for the operation and safety of the aircraft during flight time.” Id. § 1.1.

An evidentiary hearing was accorded Aadland upon the complaint before an administrative law judge. The Administrator introduced evidence, by testimony and exhibits, to substantiate the charges of Aadland’s having consumed alcoholic beverages and of his having acted as pilot in command on the flight. Aadland did not take the witness stand, nor did he offer any other testimony. The decision of the administrative law judge made findings that each of the charges had been duly established and constituted the facts of the situation, and it imposed a suspension of Aadland’s license for a period of six months as a sanction for the violation. On the appeal taken by Aadland to the Board, the Board approved and adopted the findings so made, but it modified the sanction provision by reducing the suspension period from six to four months. As thus modified, the Board affirmed the decision of the administrative law judge.

On the review sought here, Aadland's brief makes no challenge to the finding of his having consumed alcoholic beverages within three hours prior to the flight. The sole issue presented, as stated in his brief, is whether the finding that Aadland had been “pilot in command of the aircraft of the flight in question is based on substantial evidence.” Under 49 U.S.C. § 1486(e), “The findings of facts by the Board or Administrator, if supported by substantial evidence, shall be conclusive.” Our examination of the record shows that the findings of the Board clearly are so supported.

The facts which follow are undisputed in the record. Aadland and a friend of his named Leland were the sole occupants of the Cessna aircraft on the flight involved. The plane took off from the Fargo Airport for Wahpeton shortly after 11:00 o’clock p. m., with Aadland occupying the lefthand or regular pilot seat; with him conducting the necessary radio communication with the control tower for runway positioning and takeoff authorization; and with him engaging in the takeoff operations. On the day following the flight, when he was interviewed by two FAA investigators who had been directed to check the situation, he admitted that he had been the pilot in command of the flight. Leland, who was separately interviewed by the FAA investigators, similarly stated that Aadland had been the pilot in command, and he confirmed on the witness stand that he had so stated to the investigators.

Aadland’s contention here that the evidence is not sufficient to support the Board’s finding as to his having been the pilot in command of the flight is predicated primarily on what he regards as the ambiguity and weakness shown by matters brought out in Leland’s cross-examination. The cross-examination showed that the Cessna was an aircraft utilized by Flight Development, Inc., in the fixed-base operations which it carried on at the Wahpeton Airport, of flight instruction, charter flights and plane rental; that Aadland was an employee of Flight Development, Inc., and constituted its chief pilot instructor; that on the day involved, Aadland and Leland had flown in the Cessna from Wahpeton to Fargo in the early evening to attend a “smelt fry”; that Leland, who had taken flying lessons from Aad-land sufficient to qualify for and be issued a private pilot’s license, had flown the plane from Wahpeton and acted “as pilot in command during the trip to Fargo” ; that Leland had paid the rental fee of Flight Development, Inc., for the plane being used to make the trip to Fargo; and that on this basis he regarded himself as having a responsibility to Flight Development, Inc., for the return of it to Wahpeton.

He further testified that he had also flown the plane a part of the way to Wahpeton by using the dual control with which the plane was equipped on its righthand side (apparently for purposes of its instructional use), but he did not state at what point during the flight this had occurred or for how long or short a period it had lasted. Nor did he claim that it had extended to his making the nighttime approach and landing at the Wahpeton airport.

Whatever ambiguity this may have been intended by Leland to create as to his unequivocal statement to the FAA investigators that Aadland had been the pilot in command of the flight to Wahpeton, this did not as a matter of law deprive that positive statement of all probative force. It left the Board legally entitled to determine the effect of Leland’s testimony in the light of his previous statement and of his final answer to the administrative law judge, when the latter sought to ascertain from him just what his position was intended to be on the question of pilot in command:

q * * * Let me ask you at this time: Who, in your opinion, was the pilot in command of that aircraft on the flight that evening into Wahpeton?
A. I would say Mr. Aadland was, mostly.

But beyond this, it also left the Board with the right to accord full credit and belief to Aadland’s unrepudiated acknowledgment to the FAA investigators that he had been the pilot in command of the flight. Cf. Lihn v. Civil Aeronautics Board, 272 F.2d 674, 675 (3 Cir. 1959).

It is not necessary, however, to resolve the question of substantial evidence here upon Aadland’s acknowledgment alone. Aadland’s initial and continued occupancy of the regular pilot seat throughout the flight, his putting the plane into the air at Fargo and bringing it down at Wahpeton, and his apparent controlling of the aircraft except for the interval in which Leland was allowed to use the dual control (with even this being without indication of a relinquishment on Aadland’s part of his power of primary control if it became necessary to exercise it) would itself have entitled the Board to hold that he had in such measure been “responsible for the operation and safety of the aircraft during flight time” as to constitute him a “pilot in command” under the Regulations. Or to go beyond this, Aadland’s acknowledgment, together with the nature of the operation and control engaged in by him, and the responsibility for safety inherent in these acts, would in any event aggregately leave the situation without room for any contention here that the Board’s determination was not based upon or supported by substantial evidence.

Affirmed.


source: Caselaw Access Project

author: GORDON THOMPSON, Jr., District Judge:

license: Public Domain

text:
    PACHMAYR GUN WORKS, INC., a corporation, and Firearm Accessories, Inc., a corporation d/b/a the Mershon Co., Inc., Plaintiffs-Appellants, v. OLIN MATHIESON CHEMICAL CORP. WINCHESTER WESTERN DIVISION, a corporation, Defendant-Appellee. PACHMAYR GUN WORKS, INC., a corporation, and Firearm Accessories, Inc., a corporation d/b/a the Mershon Co., Inc., Plaintiffs-Appellees, v. OLIN MATHIESON CHEMICAL CORP., WINCHESTER WESTERN DIVISION, a corporation, Defendant-Appellant.
    Nos. 71-2075, 71-2812.
    United States Court of Appeals, Ninth Circuit.
    July 12, 1974.

      Robert E. Lyon (argued), Lyon & Lyon, Los Angeles, Cal., for plaintiffs-appellants.
    W. Brown Morton, Jr. (argued), Washington, D. C., Harlan P. Huebner, Hueb-ner & Worrel, Los Angeles, Cal., N. Dale Sayre, McLean, Morton & Boustead, New York City, for defendant-appellee.
    Before BROWNING and ELY, Circuit Judges, and GORDON THOMPSON, Jr., District Judge.

       The Honorable Gordon Thompson, Jr., United States District Judge, San Diego, California, sitting by designation.

   OPINION

GORDON THOMPSON, Jr., District Judge:

These appeals arise from an action for injunctive relief and damages based on trademark infringement and unfair competition. Jurisdiction was properly laid in the District Court by virtue of the Lanham Act (15 U.S.C. § 1051 et seq.) and 28 U.S.C. § 1338(a), (b). Jurisdiction here is under 28 U.S.C. § 1291 and 15 U.S.C. § 1121.

Plaintiffs appeal from the judgment below holding their two trademarks invalid and request an accounting with respect to the damages awarded on their claim, for unfair competition based on misappropriation of confidential information. They also appeal the decisions of the trial court rejecting their claim of palming off and their request for attorneys’ fees. The defendant cross appeals the judgment below awarding compensatory and exemplary damages for unfair competition, and likewise requests an accounting of plaintiffs’ actual damages connected therewith. We affirm in part, reverse in part, and remand.

The plaintiffs Pachmayr Gun Works, Inc. (Pachmayr) and Firearm Accessories, Inc. (Firearm), doing business as The Mershon Co., Inc. (Mershon), are related companies engaged in the manufacture, distribution and sale of various firearm accessories. They are probably best known, however, for their firearm recoil pads. These pads are made primarily of rubber and, when fitted to the butt end of a rifle or shotgun, are designed to absorb or redistribute some of the shock that would othewise be transferred directy to the shoulder of the person firing the weapon. The defendant Olin Mathieson Chemical Corporation (Olin), through its Winchester-Western Division (Winchester) is a large and well known manufacturer of firearms and a former customer for plaintiffs’ recoil pads.

Plaintiff Firearm and its predecessors in interest claim use from February 1937 of United States Registered Trademark No. 665,587, for “Gun Recoil Pads and Gun Butt Plates in Class IX.” The mark evidenced by this registration is comprised of the words “White Line” and a white line extending around the periphery of the recoil pad. Registration No.'665,587 was originally issued to Mershon Co., Inc., a predecessor to plaintiffs, on August 12, 1958 and later reissued to plaintiff Firearm on June 16, 1959. Plaintiff Pachmayr is licensed to use the trademark “White Line” by virtue of an agreement between it and Firearm, dated November 17, 1958.

The “White Line” trademark was previously the subject of United States Trademark Registration No. 438,519, issued to Mershon Co., Inc., on April 27, 1948. Frank A. Pachmayr, founder of plaintiff Pachmayr Gun Works, and Mershon Co., Inc., locked horns over the validity of Trademark No. 438,519 in the case of Mershon Co., Inc. v. Pach-mayr, 220 F.2d 879 (9th Cir. 1955), and upon suffering an adverse decision upholding the trademark’s validity, Mr. Pachmayr subsequently purchased the Mershon Company, including all of its assets, good will and trademarks. When the “White Line” trademark was canceled by the Patent Office in September 1955, due to a failure to file an affidavit of continuous use as required by 15 U. S.C. § 1508, Mershon Co., Inc. secured a new registration of the trademark, this time under Registration No. 665,587, the trademark under litigation here.

Plaintiff Pachmayr was issued United States Trademark Registration No. 817,631 on November 1, 1966, claiming use thereof from 1932. This mark consists of a particular “multiple-X” pattern on the lateral edges of the plaintiffs’ recoil pad. Trademark No. 817,631 is currently unrevoked and uncanceled, although its history of continuous use by plaintiff Pachmayr since 1932 is far from clear.

For several years prior to August 1959 the plaintiffs conducted what can fairly be characterized as a successful business, based mainly on the marketing and sale of their recoil pads. They used the “White Line” and multiple-X trademarks in manufacturing and advertising these products and from time to time notified unauthorized users to desist from using these marks under threat of suit. The trial court found that:

“23. A substantial segment of the gun-oriented public recognized in 1963 that a recoil pad having a white spacer or lamina is a pad made by the plaintiffs.” [Clerk’s Record 1972].

A similar finding of secondary meaning was made by the court with respect to the multiple-X mark found on Pach-mayr’s Deluxe Model 325 recoil pad.

Sometime in August 1959 plaintiff Pachmayr proposed to defendant Winchester the idea of selling the defendant’s firearms with plaintiffs’ recoil pad attached, and after some deliberation, Winchester placed its first order for plaintiffs’ Deluxe Model 325 recoil pads in October 1960. Subsequently Winchester continued its orders of plaintiffs’ pads so that between 1960 and 1964 it had purchased over 70,000 units.

As early as August of 1962, defendant Winchester began to actively seek an alternate source for recoil pads. After receiving price quotations from other companies, officials at Winchester determined that a considerable cost savings could be realized and by October 2, 1962, they had made the decision to drop Pachmayr as a supplier at the earliest practicable opportunity. First, however, in an effort to save countless man hours of research, it was decided to obtain a breakdown of the physical properties and characteristics as well as the exact rubber composition of the Paehmayr pad. Mr. Rigby, the defendant’s Chief Buyer, was assigned to the task of acquiring this information from Pach-mayr. The district court made the following findings relative to this transaction:

“48. When Winchester began purchasing pads from the plaintiffs, it submitted no specifications in connection with such purchase as it knew what the Paehmayr pad was as far as quality was concerned, and it knew that this was what it wanted. When Winchester requested the statistical information from Paehmayr, it did not do so for the purpose of determining whether the plaintiffs could comply with Winchester’s requirements, since it already knew that the plaintiffs’ pads were entirely satisfactory and had been used by Winchester without customer complaint for several years.
49. Winchester wanted to know what the Paehmayr pads consisted of insofar as the qualities of rubber were concerned so that Winchester could copy the pad and set up Winchester’s purchase specifications so as to acquire such pads elsewhere.
50. Pursuant to Mr. Kuenzel’s request, Mr. Rigby requested the information from Paehmayr on October 4, 1962. Mr. Rigby knew at that time that the purpose of the requested information was to make it possible for Winchester to secure its pads elsewhere and thus discontinue purchasing from the plaintiffs.
51. In making the request for information, Mr. Rigby did not divulge to Mr. Paehmayr that the reason for seeking such information was to permit Winchester to copy the plaintiffs’ pads.” [C.R. 1678-1679].

With this confidential information, Winchester was able to finalize its tena-tive purchase specifications for recoil pads to replace those supplied by plaintiffs. And in late 1963 the defendant submitted such purchase specifications to the B. F. Goodrich and Firestone rubber companies for the purpose of obtaining production quantities of such pads.

Still later in 1963, defendant Winchester began purchasing recoil pads from manufacturers other than plaintiffs for attachment to its firearms, and in 1964 marketed such weapons with the pads installed. The trial court found that these pads were “of the same overall appearance as the Deluxe Model pads sold by Paehmayr to Winchester including the white lamina and the multiple ‘X’ pattern.” (Finding No. 18, C.R.1671). This suit for infringement and unfair competition was instituted December 24, 1964.

1. Validity of the White Line Trademark.

The trial court precluded a finding of infringement of the “White Line” trademark Registration No. 665,587 by holding that the mark was decorative and functional and, therefore, not a proper subject of trademark protection. See Pagliero v. Wallace China Company, Ltd., 198 F.2d 339 (9th Cir. 1952); In re Application of Deister Concentrator Co., 289 F.2d 496, 48 CCPA 952 (1961). In doing so, the Court necessarily disregarded the earlier ruling of this Court in Mershon Co., Inc. v. Pachmayr, supra, which had held the same “White Line” trademark valid.

It is conceded that the earlier Mershon case is not res ad judicata relative to this litigation, since the defendant was not a party to that suit. IB Moore’s Federal Practice, 0.405[1]. Nonetheless, where faced with a prior ruling of this Court holding a substantially identical trademark valid, it was error to disregard the stare decisis effect of that ruling absent a strong showing that it was “palpably erroneous” in fact or law. Cold Metal Process Co. v. Republic Steel, 233 F.2d 828, 837 (6th Cir. 1956), cert. denied, 352 U.S. 891, 77 S.Ct. 323, 1 L.Ed.2d 245; Cold Metal Process Co. v. E. W. Bliss Co., 285 F.2d 231, 236 (6th Cir. 1960), cert. denied, 366 U.S. 911, 81 S.Ct. 1085, 6 L.Ed.2d 235 (1961). The principle of stare decisis, though not absolute, cf. IB Moore’s Fed.Practice, f[ 0.402 [3.-1], nn. 7-12, should ordinarily be adhered to in order to give stability and predictability to the law. Moragne v. States Marine Line, 398 U.S. 375, 403, 90 S.Ct. 1772, 26 L.Ed.2d 339 (1970). It is especially appropriate to follow our prior ruling here where the plaintiffs have expended considerable funds promoting the “White Line” trademark in reliance on that decision. Id.; Aero Spark Plug Co. v. B. G. Corporation, 130 F.2d 290, 297 (2d Cir. 1939) (Frank, J., concurring).

The district judge expressed “considerable doubt” that the earlier Circuit panel would have held the “White Line” trademark valid had it been apprised of certain of his findings relative to the segmented construction of plaintiffs’ recoil pads, the disclosure of the intermediate white layer in a prior patent, and the widespread use of white spacers on the butt end of firearms for decorative and functional purposes. (Findings No. 24, 25 and 29). However, the record before this Court is devoid of a clear indication of what the prior appellate panel had before it in the way of factual findings. It is conceded by the parties that the trial court here was likewise deprived of the record on appeal in the Mershon case. With the evidence before him in this posture, the trial court could do little more than speculate as to what the Circuit Court might have done had it had the benefit of his considered findings of fact. In our view, this does not amount to a finding of palpable or manifest error that would justify a district court in rejecting the clear holding of a Court of Appeals of the same Circuit. Cf. IB Moore’s Federal Practice, j[ 0.402[1], n. 29 and cases cited; Cold Metal Process Co. v. E. W. Bliss Co., supra, 285 F.2d at 236.

It may also be argued that the trial court merely distinguished away the Mershon case on its facts. But on what facts? Again, we are confronted with the lack of the Mershon record on appeal. Without it, neither the district court nor this court is able to state with certainty that the appellate panel in Mershon did not consider the factors which the trial court considered to be distinguishing in the instant case. A fair reading of the Mershon opinion does reveal the Circuit Court’s understanding of the segmented method of construction of plaintiffs’ recoil pads. 220 F.2d at 880. This method has apparently not changed since 1955. The reported opinion also discloses the Court’s careful consideration of the functional - versus nonfunctional issue relative to the “White Line” trademark. 220 F.2d at 882 and 883. The mark was clearly found to be nonfunctional. At the same time, a review of the trial transcript in the earlier case shows that evidence was received concerning the alleged necessity of using an intermediate layer in the manufacture of plaintiffs’ pads, and also concerning the use of decorative white spacers in the firearms industry.

With the issue thus raised on such an uncertain record, we are unable to hold that the cases, as presented here, are clearly so different on their facts as to require different results. We, therefore, conclude that Mershon Co., Inc. v. Pachmayr, supra, is controlling on the issue of validity of the “White Line” trademark. We express no opinion, however, as to whether infringement was proved, since the defendant was not afforded the opportunity to present evidence in support of its various defenses thereto at time of trial. (Finding No. 37).

We add in passing, that the cases of Sears Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964) and Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964) were amply discussed and put in proper perspective by Judge Smith of the Court of Customs and Patent Appeals in his concurring opinion in Application of Mogen David Wine Corporation, 372 F. 2d 539, 542-545, 54 CCPA 1086 (1967), and that those cases have no application here that might affect the validity of the “White Line” trademark.

2. Validity of the Multiple-X Trademark.

The lower Court’s ruling that the multiple-X trademark (Registration No. 187,631) is invalid stands on a different footing than its ruling on the “White Line” trademark above. For there was no prior holding by this Court that the multiple-X design was a valid trademark as a matter of law. Therefore, the trial court was not bound by precedent but was free to make original findings of fact that cannot be overturned on appeal unless “clearly erroneous.” Rule 52(a), Federal Rules of Civil Procedure. The burden is on the party appealing a given issue to point out specifically where the findings are clearly erroneous. Glens Falls Indemnity Co. v. United States ex rel. Westinghouse Electric Supply Co., 229 F.2d 370 (9th Cir. 1956).

The crucial factual finding here was that the multiple-X design performed an important function of distributing the volume of rubber in the plaintiffs’ recoil pad in relation to the air space necessary to give the pad the desired shock absorbing capacity. This was fatal to the plaintiffs’ claim, since the law is settled that an essentially functional feature of a product cannot be the subject of a valid trademark. In re Application of Deister Concentrator Co., supra; In re Application of Mogen David Wine Corp., 328 F.2d 925, 51 CCPA 1260 (1964).

Although the evidence on this issue was highly controverted, we are unable to conclude that the district court’s. finding of functionality was without evidentiary support. It is not our function, of course, to consider and weigh the evidence de novo. Bloom v. United States, 272 F.2d 215, 223 (9th Cir. 1959), cert. denied, 365 U.S. 803, 80 S.Ct. 1236, 4 L.Ed.2d 1146; Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 123, 89 S.Ct. 1562, 23 L.Ed.2d 129 (1969). We therefore uphold the determination of the trial court that the multiple-X design was essentially functional and, as such, was not a proper subject of trademark protection.

3. Unfair Competition — Misappropriation of Trade Secret.

We are likewise constrained to affirm the trial court’s judgment that the defendant Winchester engaged in unfair competition when it acquired and used the plaintiffs’ secret rubber composition formula to the plaintiffs’ detriment. The evidence on this question was admittedly conflicting and the sequence of events complex. Nevertheless, the trial judge very ably detailed the circumstances surrounding the acquisition and disclosure of the secret information and concluded that an implied relationship of trust and confidence arose between Mr. Pachmayr and the defendant’s agents with respect to the handling of this specific information. He further concluded that this trust was broken by the defendant’s deliberate failure to tell Mr. Pachmayr that the confidential information sought would be used to allow the defendant to copy the plantiffs’ recoil pad, as well as by the subsequent transfer of that information to other potential suppliers. It appears settled that the law of trade secrets is essentially concerned with protecting “against breach of faith and reprehensible means of learning another’s secret.” Restatement of Torts, § 757, Comment b, p. 7; Clark v. Bunker, 453 F.2d 1006 (9th Cir. 1972). The trial court found that such a protectable interest existed here.

We disagree with the defendant’s contention that a specific and judicially recognized relationship had to have been established before plaintiffs were entitled to rely on Winchester’s agents to maintain the secrecy of Pachmayr’s confidential information. If the various cases cited by the defendant teach us anything, it is that the courts will consider the factual circumstances of each case on an individual basis, to determine whether a confidential relationship may reasonably be implied. For example, in Cloud v. Standard Packaging Corporation, 376 F.2d 384 (7th Cir. 1967), cited by. defendant, Judge Fairchild wrote:

“Where the facts show that a disclosure is made in order to further a particular relationship, a relationship of confidence may be implied, e. g., disclosure to a prospective purchaser to enable him to appraise the value of the secret, disclosure to a prospective lender to assure him of the prospects of a borrower’s business, disclosure to agent, partner, or joint adventurer.” 376 F.2d at 388-389 (emphasis supplied).

In the instant case, the District Judge, who heard the testimony and observed the demeanor of the several witnesses, was satisfied that as a matter of fact a breach of faith and confidence had been perpetrated amounting to unfair competition. We cannot say that this finding of fact was clearly erroneous. Bloom v. United States, supra; Rule 52(a), F.R.Civ.P.

4. Damages.

In assessing damages for the tort of unfair competition, the trial court rejected the offer of proof by both sides relative to the actual amount of plaintiffs’ loss. He chose instead to estimate the damages in terms of (1) man hours saved by the defendant in researching the plaintiffs’ rubber composition formula, (2) plaintiffs’ lost sales and (3) publication of plaintiffs trade secret. In this manner $5,000.00 was determined to be an appropriate amount for each of the above elements of damage. In addition, $50,000.00 was assessed as exemplary damages upon the court’s finding that the defendant was guilty of oppression and fraud within the meaning of California Civil Code, Section 3294. In justifying this action, the district judge expressed his opinion that the man-hours of research saved by the defendant “cannot be ascertained with precision” and that the plaintiffs’ lost profits resulting from the unfair competition did not warrant further litigation on the damage issue. No basis was given for the fixing of damages for publication of plaintiffs’ trade secret.

We are sympathetic with the trial court’s desire to put an early end to what was obviously a very lengthy and complex lawsuit. He may well be correct in his estimates of plaintiffs’ actual damages. Further, the additional time and attorneys’ fees ultimately required to resolve the precise amount of loss may well result in additional burdens and diminished returns to the respective parties. Nonetheless, we are of the opinion that the parties should have had their day in court on the issue of actual damages and upon remand evidence should be taken either before the court or before a master appointed for that purpose.

5. Unfair Competition — Palming Off.

Although the Court made some factual findings relative to the issue of palming off (Findings No. 43-45), it did not specifically reject this claim of unfair competition. By necessary implication, however, it can be determined that the district court did not find merit in this cause of action, since it declined to grant any relief based thereon.

Both sides have briefed this issue on appeal. But without the benefit of the views of the trial court, we decline to pass on the question at this time. On remand, the district court will have an opportunity to specify its reasons for rejecting plaintiffs’ claim.

6. Attorneys’ Fees.

The trial court’s rejection of plaintiffs’ claim for attorneys’ fees presents to this Court the necessity of reviewing its earlier holdings in National Van Lines v. Dean, 237 F.2d 688 (9 Cir. 1956) and Friend v. H. A. Friend & Co., 416 F.2d 526 (9 Cir. 1969).

The Dean case concerned charges of service mark infringement, unfair competition and breach of contract. The plaintiff appealed an adverse judgment below and won a reversal here on the unfair competition claim. In addition to injunctive relief, the Circuit Court held that the plaintiff was entitled to actual and reasonable attorneys’ fees incurred in the litigation, finding that the defendant’s acts had been “willful and calculated to trade upon appellant’s good will.” 237 F.2d at 694. Dean was later examined by this Court in Maier Brewing Co. v. Fleischmann Distilling Corp., 359 F.2d 156 (en banc 9 Cir., 1966), affirmed, 386 U.S. 714, 87 S.Ct. 1404, 18 L.Ed.2d 475 (1967), where Judge Duni-way, speaking for a unanimous court, thoroughly discredited the case law upon which Dean had relied to award attorneys’ fees, 359 F.2d at 160-162, and clearly held that attorneys’ fees were not a proper remedy in a suit for trademark infringement brought under the Lanham Act, overruling Wolfe v. National Lead Co., 272 F.2d 867 (9th Cir. 1959). Id., 359 F.2d at 165. However, since he was concerned only with the propriety of an award of attorneys’ fees in a Lanham Act trademark infringement action, Judge Duniway merely limited Dean to its actual holding and declined to pass on whether the granting of attorneys’ fees in a state unfair competition action was correct. Id.

The Friend case involved claims of trademark infringement, unfair competition and false description of merchandise. This Court affirmed awards of damages for unfair competition and false description of merchandise, as well as an award of attorneys’ fees, upholding the District Court’s reliance on the case of National Van Lines v. Dean, supra. More specifically, the Court found:

“The cause of action [in the Dean case] was predicated on a state statute. The Court in Dean, as here, determined the infringer’s conduct to have been willful. The narrow holding of the Dean case, then, is that to the extent a plaintiff has a state given cause of action and providing state law does not prohibit attorneys’ fees, the awarding of attorneys’ fees is permissible. California does provide ap-pellee with such a remedy. Cal.Bus. & Prof.Code, § 17082. See High Fidelity Recordings, Inc. v. Audio Fidelity, Inc., 305 F.2d 86 (1962).” 416 F.2d at 534 (emphasis supplied).

Assuming the above quotation contains the correct rule with respect to the applicability of California law on this question, cf. Sunbeam Furniture Corp. v. Sunbeam Corp., 191 F.2d 141 (9th Cir. 1941), we are not convinced that California law does in fact provide an award of attorneys’ fees to the successful plaintiff in an unfair competition action. In Hornaday v. Hornaday, 95 Cal.App.2d 384, 213 P.2d 91 (1949), Presiding Justice Moore confidently stated that:

“The policy of the law of this state that an unsuccessful party to a legal controversy cannot be assessed damages to the extent of the value of the attorney’s services employed by his adversary is established by a long line of decisions. [Citations omitted]. These and other authorities disclose a uniform policy of the courts that the unsuccessful litigant shall not in the ordinary contest be required to pay counsel fees incurred by his opponent. The practice of awarding costs and attorney fees for services rendered by a plaintiff who in equity protects, preserves or increases a fund in which many are interested does not alter or depreciate the general rule.” 95 Cal.App.2d at 394, 213 P.2d at 98.

This general California rule has been codified in § 1021 of the Code of Civil Procedure, which provides, in pertinent part:

“Except as attorney’s fees are specifically provided for by statute, the measure and mode of compensation of attorneys and counselors at law is left to the agreement, express or implied, of the parties.”

More recent California cases which have applied § 1021 in a manner consistent with the policy stated in Hornaday, include: City of Industry v. Gordon, 29 Cal.App.3d 90, 93, 105 Cal.Rptr. 206 (1972); Isthmian Lines, Inc. v. Schirmer Stevedoring Co., 255 Cal.App.2d 607, 610, 63 Cal.Rptr. 458 (1967); Griggs v. Board of Trustees, 61 Cal.2d 93, 37 Cal.Rptr. 194, 389 P.2d 722 (1964); Freeman v. Goldberg, 55 Cal.2d 622, 12 Cal.Rptr. 668, 361 P.2d 244 (1961); and LeFave v. Dimond, 46 Cal.2d 868, 299 P.2d 858, 60 A.L.R.2d 939 (1956).

Admittedly, there are judicially created exceptions to this general rule, namely the “common fund” equity cases alluded to in Hornaday, supra, and those eases where the negligence of one party requires a second party “to act in the protection of his interests by bringing or defending an action against a third person.” Prentice v. North American Title Guaranty Corp., 59 Cal.2d 618, 620, 30 Cal.Rptr. 821, 823, 381 P.2d 645, 647 (1963); Vanguard Recording Soc., Inc. v. Fantasy Records, 24 Cal.App.3d 410, 100 Cal.Rptr. 826 (1972). However, plaintiffs do not argue that either of these judicial exceptions is applicable here.

Rather, § 17082 of the Business and Professions Code is invoked, as in Friend, supra, as a statutory exception to the general rule against awarding attorneys’ fees. Section 17082 provides, in pertinent part, as follows:

“In any action under this chapter in which judgment is entered against the defendant the plaintiff shall be awarded a reasonable attorney’s fee together with the cost of the suit.” (emphasis supplied).

However, a careful analysis of the Business and Professions Code and the various and separate legislative acts it contains, makes clear that the quoted language “this chapter” refers to Chapter 4 of that Code entitled the Unfair Practices Act, -which is a piece of legislation which deals almost exclusively with cases of price discrimination, secret rebates and “loss selling.” See Business and Professions Code §§ 17040-17051; Cf. Harris v. Capitol Records Corp., 64 Cal.2d 454, 50 Cal.Rptr. 539, 413 P.2d 139 (1966). None of the statutory violations set forth in §§ 17040-17051 have been alleged here. From the face of the statute, then, it appears that the attorneys’ fee remedy of § 17082 is not applicable to the case before us.

Further, diligent research by both counsel and the Court has yielded no California case authority that would warrant an expanded application of § 17082 to unfair competition actions brought outside the Unfair Practices Act. To the contrary, it appears that the California Supreme Court is generally reluctant to extend any statute beyond its precise terms, where the result would be an additional exception to the general rule against the award of attorneys’ fees. See Freeman v. Goldberg, supra, 55 Cal.2d at 625-626, 12 Cal.Rptr. 668, 361 P.2d 244 (construing § 834 of the Corporations Code); Griggs v. Board of Trustees, supra, 61 Cal.2d at 99, 37 Cal.Rptr. 194, 389 P.2d 722 (construing § 13444 of the Education Code); Anger v. Borden, 38 Cal.2d 136, 145-146, 238 Pac.2d 976 (1951) (construing § 796 of the Code of Civil Procedure). Finally, we note that in one case brought clearly under the Unfair Practices Act the Fifth District Court of Appeal demonstrated its reluctance to grant attorneys’ fees even where § 17082 admittedly applied. Instead it readily upheld the trial court’s finding that the parties were equally in violation of the Act and therefore affirmed the rough justice of denying attorneys’ fees to either side. Page v. Bakersfield Uniform Co., 239 Cal.App.2d 762, 49 Cal.Rptr. 46 (1966).

Nor does National Van Lines v. Dean, supra, provide us with an adequate statutory exception to the well settled rule discussed above. Section 3369 of the California Civil Code, cited therein, merely provides injunctive relief for victims of unfair competition. Nowhere, however, does it specifically provide for the recovery of attorneys’ fees.

We are not unmindful that this Court has recently cited the Friend case as authority for an award of attorneys’ fees in H & J Foods v. Reeder, 477 F.2d 1053 (9th Cir. 1973). However, we also note that in none of this Court’s several opinions on this issue, including H & J Foods, Friend, Maier Bremng and the genesis of all, Dean, can there be found any meaningful discussion of § 1021 of the Code of Civil Procedure and the substantial body of California case law that has arisen. therefrom. Dean itself, of course, did not rely on any California authority at all to award attorneys’ fees, but rather turned to the Second and Seventh Circuits for support. 237 F.2d at 694, n. 8. Maier Brewing expressly declined to discuss the merits of the state law issue. Meanwhile, Friend, H & J Foods, and High Fidelity Recordings, Inc. v. Audio Fidelity, Inc., 305 F.2d 86, 89-90 (9th Cir. 1962), all stem from Dean, directly or indirectly.

Since we are now satisfied that the courts of California would not make an award of attorneys’ fees in an action for unfair competition brought outside the Unfair Practices Act, Business and Professions Code, §§ 17000-17101, and since the aforementioned cases are based, directly or indirectly, upon the opposite premise, we hold that on this question these cases do not reflect the law of this Circuit.

Undaunted by the adverse California law on the subject, plaintiffs urge us to adopt an alternate theory in support of an award of attorneys’ fees. They contend that under its traditional equity jurisdiction the federal judiciary has the power to fashion such a remedy, despite existing law to the contrary in the forum state.

The propriety of invoking the historic equity power of the federal courts has been discussed previously by this Court in Maier Brewing Co. v. Fleischmann Distilling Corp., supra, 359 F.2d 156. There also, the plaintiffs argued, as an alternative, that an award of attorneys’ fees could be based upon the traditional equity jurisdiction of the federal courts, citing Sprague v. Ticonic National Bank, 307 U.S. 161, 161-166, 59 S.Ct. 777, 83 L.Ed. 1184 (1939). In discussing this argument, Judge Duniway conceded that the language of Sprague indicated that power existed to grant such an award, 359 F.2d at 164, n. 13, but at the same time limited the application of that power to those “exceptional” cases of which Justice Frankfurter spoke in the Sprague ease. This holding was reexamined by the Supreme Court on grant of certiorari. 386 U.S. 714, 87 S.Ct. 1404, 18 L.Ed.2d 475 (1967). Chief Justice Warren, writing for the majority, approved the Ninth Circuit’s limitation of the Sprague case and agreed that “none of the considerations which supported the exception recognized in Sprague are present here.” 386 U.S. at 720, 86 S.Ct. at 1408.

Maier Brewing was an action for deliberate and willful trademark infringement. And although injunctive relief had been prayed for in the complaint, in addition to damages, Judge Duniway concluded that in substance the case presented a tort action (at law), and further that it was not “so peculiarly heinous” a tort “as to justify the use of the ‘historic equity jurisdiction’ to award attorney’s fees to the plaintiff.” 359 F.2d at 164.

Our case is different from Maier Brewing only with respect to the additional common law counts of unfair competition. As to these, only the trade secrets count has been upheld here. We find nothing about such a cause of action which would place it among those exceptional cases mentioned in Sprague. Nor do we find any overriding federal rule or policy that would be served by ignoring California’s general rulé against the award of attorneys’ fees in this case. See Forest Laboratories, Inc. v. Pillsbury Co., 452 F.2d 621, 628 (7th Cir. 1971); Monolith Portland Midwest Co. v. Kaiser Aluminum, 407 F.2d 288, 298 (9th Cir. 1968); cf. Textron v. Spi-Dell Watch & Jewelry Co., 406 F.2d 544, 545-546 (2d Cir. 1968); Electronics Corp. of Amer. v. Honeywell, Inc., 358 F.Supp. 1230 (D.Mass.1973). The denial of attorneys’ fees will be affirmed.

The judgment of the trial court is affirmed in part, reversed in part and remanded for further proceedings not inconsistent with this opinion.

      . Although the Gold Metal Process cases involved the validity of a patent, we feel their rationale is equally applicable here. See also, Fox Fur Co. v. Fox Fur Co., 59 F.Supp. 701, 703 (D.Del.1945), a trademark infringement case.

      . Winston Research Corp. v. 3M Co., 350 F.2d 134 (9th Cir. 1965); Sarkes Tarzian, Inc. v. Audio Devices, Inc., 166 F.Supp. 250 (S.D.Cal., C.D.1958); Architectural Models, Inc. v. Necklason, 264 F.Supp. 312 (N.D. Cal.1967); Cloud v. Standard Packaging Corp., 376 F.2d 384 (7th Cir. 1967); Besly-Welles Corp. v. Balax, Inc., 291 F.Supp. 328 (E.D.Wis.1968); Key West Hand Print Fabrics, Inc. v. Servin, Inc., 269 F.Supp. 605 (S.D.Fla.1966).

      . California Civil Code, § 3294 provides as follows:
      “In an action for a breach of obligation not arising from contract, where the defendant has been guilty of oppression, fraud, or malice, express or implied, the plaintiff, in addition to the actual damages, may recover damages for the sake of example and by way of punishing the defendant.”

      . See generally, McCarthy, Whatever Happened to the Small Business Man?- — The California Unfair Practices Act, 2 U.S.F. Law Rev. 165 (1968).

      . The reference in the Friend case to High Fidelity Recordings, Inc. v. Audio Fidelity, Inc., 305 F.2d 86 (9th Cir. 1962), does not, standing alone, provide a satisfactory explanation for tlie invocation of § 17082. It is noted, however, that both Friend and Sigh Fidelity were cases involving claims of false or misleading advertising, potentially actionable under §§ 17500-17508 of the Business and Professions Code. Of. the prior opinion in the Sigh Fidelity case, found at 283 F.2d 551, at p. 554 (1960). The apparently close numerical relationship between the code sections suggests a possible source of confusion as to the scope of applicability of § 17082.

      . One reason may be the relatively small number of actions brought under the Act itself. One commentator bemoans this paucity of litigation under the California Unfair Practices Act. In his opinion, court-imposed limitations have made the Act less attractive as a vehicle for fighting the anti-competition practices of the retail giants in California. See also, Wilke & Holzheiser, Inc. v. Department of Alcoholic Beverage Control, 65 Cal.2d 349, 363, 55 Cal.Rptr. 23, 33, 420 P.2d 735 (1966).

      . One study of the legislative limitations imposed on damage recovery in commercial litigation observed that with respect to the statutory award of attorneys’ fees, such as in California Business and Professions Code §§ 16750 and 17082, “it is apparent that the Legislature has been very selective in allowing such compensation.” Baum, Statutory Controls of Damages in Commercial Transactions, 12 Hastings L.J. 191, 209 (1960).

      . § 3369. Unavailability to enforce penalty, forfeiture, or penal law; exceptions; nuisance ; unfair competition; definitions; injunctions, who may prosecute:
      1) Neither specific nor preventive relief can be granted to enforce a penalty or forfeiture in any case, nor to enforce a penal law, except in a ease of nuisance or unfair competition.
      2) Any person performing or proposing to perform an act of unfair competition within this state may be enjoined in any court of competent jurisdiction.
      3) As used in this section, “unfair competition” shall mean and include unlawful, unfair or fraudulent business practice and unfair, deceptive, untrue or misleading advertising and any act denounced by Business and Professions Code Sections 17500 to 17535, inclusive.
      4) As used in this section, the term person shall mean and include natural persons, corporations, firms, partnerships, joint stock companies, associations and other organizations of persons.
      5) Actions for injunction undej this section may be prosecuted by the Attorney General or any district attorney in this state in the name of the people of the State of California upon their own complaint or upon the complaint of any board, officer, person, corporation or association or by any person acting for the interests of itself, its members or the general public.

      . Although High Fidelity Recordings, Inc. v. Audio Fidelity, Inc., supra at n. 5, 305 F.2d 86, suggests that the attorneys’ fee issue was briefed there as to applicable California law, the court chose to rely solely on National Van Lines, Inc. v. Dean to affirm the award.

      . This portion of'the opinion was considered and approved by the court sitting in banc.

      . These included primarily the “common-fund” type of case, and variations thereof where the plaintiff’s claim engenders a fund or a legal right through the consequences of stare decisis. See Chief Justice Warren’s discussion in Fleischmann Distilling Corp. v. Maier Brewing Co., 386 U.S. 714 at 718-719, 87 S.Ct. 1404, 18 L.Ed.2d 475 (1967), of the limited exceptions to the general rule precluding recovery of attorneys’ fees absent a statute or contract providing therefor.


author: CUMMINGS, Circuit Judge. FAIRCHILD, Circuit Judge

text:
    In the Matter of David T. DELLINGER et al., Defendants-Appellants.
    No. 73-2107.
    United States Court of Appeals, Seventh Circuit.
    Heard April 22, 1974.
    Decided Sept. 6, 1974.
    Rehearing En Banc Denied Oct. 16, 1974.
    Fairchild, Circuit Judge, filed a concurring opinion.

      Morton Stavis, Doris Peterson, William M. Kunstler, Center for Constitutional Rights, New York City, N. Y., for def endants-appellants.
    Henry F. Field, Chicago, 111., for ami-cus curiae.
    James R. Thompson, U. S. Atty., Gary L. Starkman, Asst. U. S. Atty., Chicago, 111., for United States.
    Before FAIRCHILD, CUMMINGS and PELL, Circuit Judges.
   CUMMINGS, Circuit Judge.

This appeal is from the second criminal contempt adjudication resulting from incidents occurring during the celebrated “Chicago 7” Anti-Riot Act conspiracy trial. The substantive convictions were reversed. United States v. Dellinger, 472 F.2d 340 (7th Cir. 1972), certiorari denied, 410 U.S. 970, 93 S.Ct. 1443, 35 L.Ed.2d 706. We also reversed the original contempt convictions. In re Dellinger, 461 F.2d 389 (7th Cir. 1972).

Pursuant to 28 U.S.C. § 292, the Chief Justice of the United States thereafter designated District Judge Gignoux to try the contempt case. On the remand various pre-trial motions were denied. In re Dellinger, 357 F.Supp. 949 (N.D. Ill.1973). At the trial, the Government’s case-in-chief consisted of the introduction of the transcript of the Anti-Riot Act trial. After the Government rested, the district court acquitted John Froines and Lee Weiner and dismissed a number of contempt specifications against the remaining defendants in an unreported memorandum opinion dated November 6, 1973. The defendants’ renewed motion to dismiss was denied in the same opinion. Thereafter, the remaining defendants testified in their own behalf. In rebuttal the Government offered evidence to refute testimony of a defense witness that the “defense camp” had been subjected to surveillance by military intelligence officers during the Anti-Riot Act trial. At the close of all the evidence, defendants Leonard Weinglass, Rennard Davis and Thomas Hayden were acquitted. Judgments of acquittal were also entered as to several of the contempt specifications against the remaining defendants. The district court found David Dellinger, Abbott Hoffman, Jerry Rubin and William Kunstler guilty of various other con-tempts but did not impose any fines or sentences. In re Dellinger, 370 F.Supp. 1304 (N.D.Ill.1973). Whether Lawyer Kunstler Was Contemptuous

The first argument on appeal is that Kunstler’s conduct described in Kunstler specification VI does not constitute contempt of court. This specification is set out at 370 F.Supp. 1337-1338 and need not be quoted herein. The matter complained of in specification VI consisted of an extended outburst from Mr. Kunstler, one of the attorneys for the defendants, after Judge Hoffman, the trial judge in the conspiracy case, refused to relieve Kunstler of his commitment to conclude his case with the testimony of an authenticating cameraman, plus certain documents. Thus Mr. Kunstler was prevented from presenting the Reverend Ralph Abernathy as a witness for the defendants.

We agree with Judge Gignoux that the extent and violence of Kunstler’s diatribe and the bitterness and anger displayed “constituted a vicious personal attack on the judge which could only have served to vent his spleen.” 370 F.Supp. at 1319. In no way can Kunstler’s remarks be considered as merely heated legal argument and therefore non-contemptuous. Because of the extreme nature of the attack on the trial judge, the remarks of counsel created an imminent prejudice to a fair and dispassionate proceeding, thus constituting an actual and material obstruction of the judicial process. See 461 F.2d at 400. Moreover, as the trial judge found, Kunstler’s conduct “resulted in an entirely unnecessary and not insignificant delay and disruption of the proceedings” (370 F.Supp. at 1320), reinforcing his holding that there was an actual and material obstruction of the administration of justice. Before concluding with respect to this specification, it should be noted that at their close, Kunstler’s remarks predictably precipitated shouts of “right on” and applause, again satisfying obstruction standards. 461 F.2d at 399-400.

Kunstlers specification VII (reproduced at 370 F.Supp. 1338-1341) is also said not to constitute contempt of court. After Judge Hoffman had ruled that Reverend Abernathy not be permitted to take the stand, he ordered defense counsel not to make any reference before the jury to the fact that defendants wanted Abernathy to testify. Kunstler replied he would not abide by such a ruling and therefore would have to be sent to jail. Despite the trial judge’s order, when Dr. Abernathy arrived Kunstler said he would like to put him on the stand. Kunstler' continued to mention Dr. Abernathy’s name arid hugged him before the jury. The facts under this specification are clearly contempt because Kunstler violated a court order. Further, he obstructed justice by putting before the jury information that had been ruled inadmissible, making it more difficult for the jurors to decide the case according to the law as interpreted by the district judge. As we previously held, lawyers are required to obey even incorrect orders; the remedy is on appeal. 461 F.2d at 398.

Kunstler argues that because he got away with violating it once, there was no longer an operative order prohibiting his mentioning Dr. Abernathy to the jury. In our judgment, this is frivolous. Kunstler’s renewal of his motion to call Dr. Abernathy as a defense witness in the presence of the jury and his persistent arguments after being directed to stop clearly violated Judge Hoffman’s orders to make no reference before the jury to the fact that he and his colleagues wanted Dr. Abernathy to testify and not to renew his motion. Since the specification quotes Judge Hoffman’s orders verbatim, there could be no doubt what Kunstler was charged with violating. Therefore, we are not “sustaining the trial court by treating the. conviction as a conviction upon a charge not made.” Eaton v. City of Tulsa, 415 U.S. 697, 699, 94 S.Ct. 1228, 1230, 39 L.Ed.2d 693; see also Taylor v. Hayes, 418 U.S. 488, 94 S.Ct. 2697, 41 L.Ed.2d 897.

Whether Messrs. Dellinger, Hoffman and Rubin Were Contemptuous

The non-lawyer defendants contend that the nine specifications involving statements made by them at the Anti-Riot Act trial and the two specifications involving wearing judicial robes by Abbott Hoffman and Jerry Rubin do not constitute contempt.

The statements in question delayed the trial, thereby satisfying the obstruction requirement. Although in some of the specifications, one or two sentences may have been justified, each specification contained an extended colloquy not required by the circumstances. As Judge Gignoux stated with respect to Dellinger IV (reproduced at 370 F.Supp. 1327), in light of the extent of these Dellinger comments at the Anti-Riot Act trial and their offensive character, he knew or should have known that his conduct was wrongful, and his interruptions “so disrupted the course of the proceedings that an unnecessary and not insubstantial delay ensued.” 370 F.Supp. at 1312. Similar permissible findings were made with respect to Dellinger V, VI, VII, VIII, IX and X (reproduced at 370 F.Supp. 1328-1335, 1341-1342).

As to Abbott Hoffman’s specification VI and Jerry Rubin’s specification V (reproduced at 370 F.Supp. 1344-1347), the district court was justified in concluding that these defendants’ persistent interjections occasioned a substantial delay in the progress of the proceedings and constituted misbehavior in the presence of the court. 370 F.Supp. at 1314-1315.

Hoffman specification VII and Rubin specification VI (set out at 370 F.Supp. 1347-1348) involved the wearing of judicial robes by those defendants at the February 6th morning session of the Anti-Riot Act trial. As the district court found, the Anti-Riot Act trial transcript disclosed that this conduct occasioned an entirely unnecessary and not insignificant delay in the proceedings. 370 F.Supp. at 1315. The seriousness of this misbehavior supported the district court’s conclusion that the conduct constituted an actual and material obstruction of the administration of justice. See United States v. Seale, 461 F.2d 345, 369 (7th Cir. 1972).

Imposition of Sentence on Mr. Kunstler Was Unrequired,

Defendant Kunstler asserts that Judge Gignoux could only acquit or dismiss the charges and not convict him without imposing a sentence. This is a misapprehension of the law. A judge trying a criminal contempt case may find violations and nevertheless impose no sanctions. See United States v. Dickinson, 465 F.2d 496, 513 (5th Cir. 1972). We see no reason why the judge must dismiss to achieve this result, though that option is open at least to the court which initiated the contempt proceedings. See United States v. Barnett, 346 F.2d 99 (5th Cir. 1965) (en banc). Whether or not we disagree with the non-sentence is immaterial, for the trial judge was within his rights in convicting but refraining from imposing punishment.

Kunstler attaches significance to the fact that the trier of contempt adverted to “the potentially grave consequences of a criminal contempt conviction to a member of the bar” (370 F. Supp. at 1322). This remark simply recognized a factual possibility over which the judge had no control; it certainly does not amount to an exercise of disciplinary powers nor an invitation for disciplinary proceedings to be commenced in the New York courts. There fore, the district court did not exceed its criminal contempt power in this respect.

Conduct of Conspiracy Judge and Prosecutors Does Not Necessitate Reversal

Defendants contend that the conduct of the judge and prosecutors at the Anti-Riot Act trial requires dismissal for their contempt. We have twice rejected this contention in the Seale and Dellinger contempt cases. See 461 F.2d at 361-363, 401. Nothing in this contempt trial persuades us to alter our prior conclusion, for provocation, however shocking, is no defense to contempt.

Adequacy of YsJk-type Hearing

Defendants urge that their motion to dismiss should have been granted under United States v. Falk, 479 F.2d 616 (7th Cir. 1973) (en banc) because the Anti-Riot Act prosecutors were not also charged with contempt. In its unreported memorandum opinion overruling defendants’ motion to dismiss, the district court refused to apply Falk because defendants failed “to support their allegation that the prosecution of the present charges amounts to a discriminatory and unconstitutional prosecution.” The court then concluded that defendants had not made a satisfactory showing that the “United States, on behalf of the [Anti-Riot Act] court, has pursued the present prosecution for discriminatory and unconstitutional purposes.” Judge Gignoux reaffirmed these findings at the close of the evidence (Tr. 4150).

Defendants’ reliance on Falk is misplaced. That case was remanded so that the defendant could have a hearing on his claim of selective prosecution. Here such a hearing took place when United States Attorney Thompson gave more than fifty pages of testimony on this subject. His account satisfied the district court and now us that the Government had a rational basis for prosecuting the case. No further hearing is needed.

Electronic Surveillance

Defendants assert that the Government’s electronic surveillance of defendants and their counsel should have been disclosed to them before trial, and that there should have been an evidentiary hearing with respect to the impact of the surveillance. In the district court, the Government agreed to turn over to defendants any such material which might infringe defendants’ Sixth Amendment right to counsel, any such material that might be exculpatory under Brady v. Maryland, 373 U.S. 83, 83 S.Ct. 1194, 10 L.Ed.2d 215, and any material disclosure of which was required by Alderman v. United States, 394 U.S. 165, 89 S.Ct. 961, 22 L.Ed.2d 176. 357 F.Supp. at 957, 960, n. 14. Our order of May 1, 1973, in denying defendants’ April 18, 1973, petition for writ of mandamus with respect to electronic surveillance, was fashioned to enforce the first two parts of this governmental undertaking. However, no such material was discovered. As the United States Attorney for the Northern District of Illinois advised Judge Gignoux and defendants on May 23, 1973:

“As in the past, we recognize our obligation to turn over any surveillance that can be classified as exculpatory or capable of infringing upon the sixth amendment rights of these defendants to defend against the pending contempt charges. However, we are presently unaware of any surveillance material that can be so classified.”

Brady v. Maryland does not entitle defendants to an adversary hearing with respect to such materials.

In accord with acceptable procedure, government counsel furnished the district court with an affidavit that there was no surveillance of defendants or their counsel during the period of their 1969 Anti-Riot Act trial. The district court and we in turn have found that the overhearings submitted in camera show no communications between defendants and their counsel during, before and since that trial. See 357 F. Supp. at 960, n. 15.

The Government turned over to Judge Gignoux for his in camera inspection logs of all overhearings requested by defendants’ disclosure motion. See 357 F.Supp. 957, n. 12 and 960, n. 15. Subsequently, the Government turned over to the district judge additional logs in which defendants Froines’ and Davis’ voices were identified, after which the surveillances were cut off in accordance with the July 14, 1969 instructions of the Attorney General. After the oral argument before us, in accordance with our order of May 7, 1974, the Government supplied still additional logs to us for in camera inspection. These included Anti-Riot Act trial period communications of Messrs. Davis and Dellinger that had not been discovered until after the district court’s judgment. Although some of the defendants were overheard in those logs, the logs have nothing to do with the Anti-Riot Act or contempt cases.

The district court held that Alderman v. United States, 394 U.S. 165, 89 S.Ct. 961, 22 L.Ed.2d 176, did not require an evidentiary hearing to determine the relevancy'- of the logs because the Government was relying on the transcript before Judge Hoffman to show defendants’ contempts. Therefore, the Government’s evidence could not have been derived from the overhearings. 357 F.Supp. at 958-960.

To rebut this reasoning, defendants assert that the logs might have helped in their defense of lack of intent. We have examined all the logs; none of them relates to defendants’ intent. This case is therefore distinguishable from the Seale ease where one of the logs “was a link in a communication from a lawyer to Seale advising him with respect to his conduct in court.” 461 F.2d at 364. Seale could use the log on remand to show his state of mind and motivation at the time of the conduct, so that a taint hearing was necessary. 461 F.2d at 365-366. Here, on the other hand, no such overhearings occurred. Furthermore, if a log with respect to defendants’ lack of intent had been uncovered, the Government was obliged to tender it to defendants in accordance with its express undertaking (357 F.Supp. at 960, n. 14), which this Court further obligated the Government to follow in our order of May 1, 1973.

Defendants rely on United States v. Huss, 482 F.2d 38 (2d Cir. 1973). There government informer Siegel had been overheard illegally by the United States on six different occasions. When the Government attempted to use Siegel as a witness at the criminal trial of two others, he refused to testify despite an immunity grant. He successfully relied on the Second Circuit rule that the Government cannot rely on testimony of a witness discovered through illegal taps. The civil contempt order entered against him was vacated because the Government’s destruction of the tapes of his overheard conversation prevented disclosure and an Alderman hearing. No comparable situation is presented here where these defendants were tried for their misconduct in open court rather than for any refusal to testify. Here the Government is not relying on possibly tainted evidence, so that Huss is inapt.

Defendants have relied on Dellinger v. Mitchell, Civil Action No. 1768-69 (D. D.C.) and their in camera disclosures to us growing out of that pending case to buttress their electronic surveillance arguments. Our review of that material and of Mr. Kunstler’s affidavit concerning United States v. Means, 374 F.Supp. 321 (D.S.D.) and Judge Nichol’s opinion denying defendants’ motion to dismiss therein do not persuade us that the Government has misrepresented the status of the wiretaps here. Nothing in any of the wiretaps supports defendants’ assertion that the Government thereby molded its approaches to create a picture of disruption by defendants at the Anti-Riot Act trial. In no sense can the transcript of that trial be considered the fruit of any illegal surveillance.

As the district court held, the limited nature of the evidence offered by the Government “precludes the possibility that it could be inadmissible because the product of any illegal interception.” 357 F.Supp. at 961. Since the evidence offered did not and could not have come from any electronic surveillance, disclosure of the electronic surveillance records to defendants and an Alderman hearing were unncessary.

Quashing the Subpoenas to the Army and the Federal Bureau of Investigation

In an attempt to show that the Government had harassed the defense during the Anti-Riot Act trial, defendants introduced the testimony of John O’Brien, a former military intelligence agent. We have reviewed that testimony and are satisfied that Judge Gignoux could reasonably conclude, as he did, that Mr. O’Brien’s testimony should be rejected as “utterly incredible.”

In order to attempt to corroborate O’Brien, the defendants served subpoenas on Brigadier General Patton, Deputy Chief of Military Intelligence of the Army, and on Richard G. Held, the Agent in Charge of the FBI’s Chicago office. In general, these subpoenas called for all of O’Brien’s reports from March 1969 to March 1970 as well as reports of others possibly engaged in surveillance of defendants and their counsel. The FBI filed an affidavit that none of the subpoenaed reports could be found in its search. A similar certificate was filed by the Army. However, both agencies submitted documents in camera to Judge Gignoux. After examining the documents, the district court concluded that “the submissions both submitted by the Federal Bureau of Investigation and by the Pentagon contained no reports, records or other material which in any way related to any surveillance of the defendants or their counsel during the period March, 1969, to March, 1970, or which in any way are material or relevant to any of the issues before the Court in the present proceeding” (Tr. 4156). The Government’s motions to quash the subpoenas were therefore granted.

In view of the court’s finding that none of the submitted material was relevant or material, it was permissible to quash the subpoenas. See United States v. Escobedo, 430 F.2d. 603, 610, n. 7 (7th Cir. 1970); 2 Orfield, Criminal Procedure under the Federal Rules § 17:82 at 666 (1966). The district court also refused to grant the defendants’ motion for an order compelling General Patton and Mr. Held to testify. Because of the affidavits of the records custodians that the desired search had been made, there was no necessity to receive testimony from them. In fact, Rule 27 of the Federal Rules of Criminal Procedure was designed to obviate such testimony. United States v. Rogers, 454 F.2d 601, 605 (7th Cir. 1971). Furthermore, the refusal to compel testimony from General Patton and Mr. Held was supported by the court’s finding that defendants had not made the requisite “showing of illegal surveillance or infiltration of the defense camp.”

■ Since the district court found on the basis of the entire record beyond a reasonable doubt, that “there was no surveillance, infiltration or intrusions into the councils * * * of the defense during the period of these [Anti-Riot Act] proceedings; that is between March of 1969 and March of 1970” (Tr. 4153), we conclude that its rulings as to the subpoenas and the custodians of the documents were correct.

Right to a Jury Trial

Defendants have renewed their contention that they were entitled to a jury trial. At a pretrial conference the district judge granted the Government’s motion to limit the maximum sentence imposable against each defendant to 177 days’ imprisonment. See 357 F.Supp. at 955. Since this meant that no defendant would serve more than six months' imprisonment, a jury trial was unnecessary in accordance with our holding on the prior contempt appeal. 461 F.2d at 397: see also Taylor v. Hayes, 418 U.S. 488, 94 S.Ct. 2697, 41 L.Ed.2d 897; Codispoti v. Pennsylvania, 418 U.S. 506, 94 S.Ct. 2687, 41 L.Ed.2d 912; United States v. Seale, 461 F.2d 345, 356 (7th Cir. 1972).

Defendants insist that they were entitled to a jury trial as a matter of discretion even if not as a matter of right. For the reasons articulated by Judge Gignoux (357 F.Supp. at 956), there was no abuse of discretion in declining to order a jury trial.

The Convictions Need Not Be Set Aside to Insure the Appearance of Justice

The defendants’ final point is that the entire record of this case indicates that the judgment below must be reversed to preserve the appearance of justice. We cannot agree.

Upon remand, the appearance of justice was fully satisfied. First of all, the Chief Justice appointed a fair-minded judge from another jurisdiction who had nothing to do with the original contempt adjudications or the conspiracy trial. When we reversed the original contempt convictions, we deemed eighteen of the original contempt specifications and part of another to be legally insufficient. 461 F.2d at 400-401. This left 141 of the specifications for possible trial. However, the Government dismissed 89 of those unilaterally, leaving only 52 of the remanded contempt charges for trial. 370 F.Supp. at 1307. At the conclusion of the Government’s case, the court dismissed two of the specifications and acquitted the defendants of 24, so that only 26 specifications remained. Idem. At the completion of the trial, defendants were found not guilty of thirteen specifications. 370 F.Supp. at 1323. Thereafter the present defendants were found guilty of the charges in only thirteen specifications. 370 F.Supp. at 1323-1324. This drastic winnowing process surely demonstrates the dispassionate nature of the trial.

Having reviewed the record herein, we conclude that defendants received sufficient procedural fairness to satisfy the appearance of justice. To insure continuing respect for the judicial system, it was necessary to try the defendants for the overwhelming misconduct they demonstrated at the conspiracy trial. In not imposing fines or sentences, the district judge gave weight to the various factors that defendants have urged in favor of dismissal.

The contempt convictions are affirmed.

FAIRCHILD, Circuit Judge

(concurring) .

I concur in the opinion, including af-firmance of the finding on Kunstler specification VI. I do find it necessary, however, to recognize the difficulty in determining objectively that the conduct involved in this specification amounted to an actual obstruction of justice. It seems to me that in applying and preserving the federal rule that disrespect is not punishable contempt unless the conduct amounts to an actual obstruction of justice (cases cited, United States v. Seale, 461 F.2d 345, 369 (7th Cir. 1972)) we are willing to presume or infer the existence of obstruction where the conduct appears to us extremely inappropriate, indeed outrageous, and shocking.

      . The original contempt convictions were summary adjudications. Those now under review were imposed after a full trial.

      . In reproducing specification VI in the opinion below, the words “The Courtwere inadvertently omitted from the first line of the first quotation in the specification (line 9 of the specification as published in 370 F. Supp. at 1337).

      . Kunstler’s remarks were also larded with interruptions of “Voices: Right On,” but we do not rely on these interruptions in view of defendants’ representation that the trial tapes show that they were in a single soft voice emanating from a defendant or someone present at defense counsel’s table. No such representation has been made with respect to the applause and shouts at the conclusion of Kunstler’s comments.

      . Because of Judge Gignoux’ decision in its favor, the Government abandoned its initial undertaking to turn over Alderman material to defendants.

      . See Korman v. United States, 486 F.2d 926, 931 (7th Cir. 1973).

      . From our examination of the logs, it is apparent that, consistently with the Attorney General’s instructions, the wiretapping ceased when defendants or their counsel were identified.

      . The opinion was filed with us by defendants on April 22,1974.

      . Rule 27 incorporates by reference Rule 44 of the Federal Rules of Civil Procedure. Rule 44(b) authorizes the receipt of appropriate written statements as evidence that the records do not contain requested materials.


author: BREITENSTEIN,' Circuit Judge.

text:
    UNITED STATES of America, Plaintiff-Appellant, v. CITY OF PAWHUSKA, Oklahoma, Defendant-Appellee.
    No. 73-1940.
    United States Court of Appeals, Tenth Circuit.
    Sept. 3, 1974.

      Carl Strass, Atty., Dept, of Justice (Wallace H. Johnson, Asst. Atty. Gen., Nathan G. Graham, U. S. Atty., Jack M. Short, Asst. U. S. Atty., and Edmund B. Clark, Atty., Dept, of Justice, on the brief), for plaintiff-appellant.
    Robert S. Rizley, Tulsa, Okl. (Rizley, Prichard, Ford, Norman & Reed, Tulsa, Okl., W. Robert Wilson, and Files, Mahan, Wilson & Young, Pawhuska, Okl., on the brief), for defendant-appel-lee.
    Before BREITENSTEIN, McWIL-LIAMS and BARRETT, Circuit Judges.
   BREITENSTEIN,' Circuit Judge.

This action by the United States as the trustee for the Osage Tribe of Indians seeks damages for loss of tribal mineral deposits by inundation of about 291 acres of land by a city reservoir. The trial court held for the City. The appeal concerns the sufficiency of the evidence to sustain the trial court’s findings and availability of certain legal defenses pertinent to litigation over oil and gas leases. We reverse.

The situation is unique because the government created separate interests in the surface of Osage lands and in the underlying minerals, reserving the latter in trust for the Tribe. Beginning in 1953 the Tribe executed a number of departmental oil mining leases, all of which were for five years or as long thereafter as oil was produced in paying quantities. The Tribe received a 16%% royalty interest in extracted oil and gas.

In 1956 defendant-appellee City of Pawhuska brought condemnation proceedings against the surface owners to acquire land for a municipal reservoir. City recognized that it could not acquire the mineral estate because it was held in trust for the Tribe by the United States. One tribal lessee had started drilling operations on the land but was stopped by city police. The government sued City to enjoin it from interfering with its lessees. City then amended its condemnation complaint to include the lessees. The court dismissed the injunction action without prejudice. City settled with the lessees, but no compensation was ever paid to the Tribe. The complaint in the instant action alleges that the Tribe has been deprived of useful access to, and all benefits of, the oil and gas underlying the reservoir to its damage in the amount of over $200,000.

The controversy centers around the trial court’s Finding No. 11, which covers two subjects. The court finds that (1) the subject lands “are being adequately drained of the oil and gas underlying said quarter sections by the wells producing oil on portions thereof,” and (2) it would not be economically feasible for a prudent operator to drill additional wells “because of the cost and expense of drilling the same even if no lake were present.”

The record in this case is unsatisfactory. At the start of the trial the judge stated his antagonism to the position of the government and it continued throughout. Whatever the reason may be, the facts were not well developed. The record ig devoid of any evidence that the oil and gas underlying the reservoir are being adequately drained by on-shore wells. Government witness Lynn testified that considerable space under the reservoir could not be adequately drained from on-shore locations. He estimated that 470,200 barrels of oil could be recovered from under the reservoir which would provide the Tribe with $219,584 in royalties at a projected price of $2.96 a barrel for the oil. Government witness Daly fixed the Tribe’s loss of royalty because of the reservoir at $220,846. This testimony of inadequate drainage by on-shore wells is challenged only by tenuous inferences from unsatisfactory evidence.

The second part of Finding No. 11 is that the underlying oil could not be profitably extracted “even if no lake were present.” We do not equate adequate drainage with profitable extraction. Hence, the second part of the finding is not available to bolster the first part. Nor can the second part stand alone. City’s witness Kepplinger admitted that 900,000 barrels of oil had been produced from seven quarter sections surrounding the reservoir. At the same time he said that the 291 acres under the reservoir would not be worth drilling. The reasons which he gave for this conclusion are not well developed and do not convince us. Kepplinger was a member of the commission appointed by the court to appraise the value of the interests of the lessees in the condemnation against them. A stipulation of the parties shows that amounts varying from $1,100 to $6,250 were fixed for seven tracts. We cannot reconcile that appraisal with either Kepplinger’s testimony or the finding of infeasibility of drilling “even if no lake were present.” The trial court rejected the offer of the government to prove by an oil operator that he would drill if the reservoir were not there. The record does not sustain Finding No. 11 whether it is taken as a whole or as two separate findings.

City seeks to avoid the questions of adequate drainage and infeasibility by reliance on (1) the Tribe’s failure to demand development, and (2) the prudent operator rule. Oklahoma has held that an action for lease forfeiture for failure to develop cannot be maintained in the absence of notice that forfeiture will result from failure to develop. Indian Territory Illuminating Oil Co. v. Haynes Drilling Co., 180 Okl. 419, 69 P.2d 624, 630. The opinion also says that: “There are, however, circumstances under which the giving of notice would be a vain and useless thing and such notice is not necessary.” Ibid.

The prudent operator rule imposes an implied duty on a lessee “to do whatever in the circumstances would be reasonably expected- of a prudent operator of a particular lease, having a rightful regard for the interest of both the lessor and lessee.” Trust Co. of Chicago v. Samedan Oil Corp., 10 Cir., 192 F.2d 282, 284, a case construing and applying Oklahoma law. In Magnolia Petroleum Co. v. Wilson, 10 Cir., 215 F.2d 317, 318, we recognized that in Oklahoma the prudent operator rule, like other rules of equity, “is not-inflexible.”

The record before us does not permit any rational conclusion that City is either a bona fide or prudent operator. City wanted the land for a reservoir site and forcibly ejected one of the Tribe’s lessees. By condemnation City obtained the interests of the Tribe’s lessees but did not compensate the Tribe for any subsurface mineral interest. Any demand to drill would have been futile because drilling was incompatible with City’s use of the land.

No need exists to determine whether the burden is on the government or City to establish whether a prudent operator would drill. Cf. Magnolia Petroleum Co. v. Wilson, 215 F.2d at 319. Any claim of economic infeasibility based on the cost of platform or directional drilling is immaterial. Those types of drilling are needed only because of the reservoir. Without it, direct drilling would be possible. The potential of direct drilling is shown by the fact that one of the Tribe’s lessees had moved equipment on the land to drill and was prevented from drilling by City’s use of force. The prudent operator rule has no application to the facts presented.

The complaint seeks monetary damages for the loss of the Tribe’s mineral interest. If that interest has any value, the Tribe has not been compensated for its loss. Property which the United States holds in trust for the Tribe cannot be taken without just compensation. The decision ought to be based on the equities of the situation. The interests of City and the Tribe must be accommodated in the best way possible.

We reject the legal defenses of City. Finding of Fact No. 11 is without record support and is clearly erroneous. We have a “definite and firm conviction that a mistake has been committed.” Zenith Radio Corp. v. Hazeltine Research, Inc., 395 U.S. 100, 123, 89 S.Ct. 1562, 1576, 23 L.Ed.2d 129, citing United States v. United States Gypsum Co., 333 U.S. 364, 395, 68 S.Ct. 525, 92 L.Ed. 746.

Reversed and remanded for a new trial.


author: MANSFIELD, Circuit Judge:

text:
    UNITED STATES ex rel. William CADOGAN, Relator-Appellant, v. J. Edwin LaVALLEE, Superintendent of Clinton Correctional Facility, Dannemora, New York, Respondent-Appellee.
    No. 1113, Docket 74-1428.
    United States Court of Appeals, Second Circuit.
    Argued June 17, 1974.
    Decided Aug. 16, 1974.

      W. A. Newcomb, New York City, for relator-appellant.
    Arlene R. Silverman, Asst. Atty. Gen. (Louis J. Lefkowitz, Atty. Gen., Samuel A. Hirshowitz, First Asst. Atty. Gen., New York City, of counsel), for respondent-appellee.
    Before SMITH and MANSFIELD, Circuit Judges, and BARTELS, District Judge.

       Of the United States District Court for the Eastern District of New York, sitting by designation.

   MANSFIELD, Circuit Judge:

In 1963 appellant was sentenced as a multiple narcotics offender by the Queens County Supreme Court, State of New York, to concurrent terms of from 15 to 30 years and from 6 to 20 years, which he is presently serving in Clinton Correctional Facility, Dannemora, N. Y. He appeals from a decision of the Northern District of New York, Edmund Port, Judge, denying his pro se petition for a writ of habeas corpus, which was sought principally on the ground that his 1963 sentence as a multiple offender was excessive because his earlier 1956 predicate conviction in the Queens County Supreme Court had been obtained in violation of his constitutional rights. For the reasons stated below, we affirm.

On June 7, 1956, following appellant’s conviction, after a jury trial, in the state court for felonious possession of a narcotic drug, he was sentenced to a term of from 9 to 10 years, which was on November 18, 1957, revised nunc pro tunc to a term of from 5 to 10 years. The conviction was affirmed by the Appellate Division, People v. Cadogan, 12 A.D.2d 647, 210 N.Y.S.2d 780 (2d Dept. 1960). Subsequently appellant was convicted of three narcotics felony offenses which resulted in his being sentenced on November 19, 1963, as a multiple offender.

In the district court appellant’s attack on his 1956 predicate conviction was based on the grounds that (1) unconstitutionally seized evidence that should have been suppressed was introduced at his trial, (2) a Bruton violation occurred during the 1956 trial, and (3) he was denied his right to appeal from the 1956 conviction. To these he has added on this appeal the argument that it was error for the district court not to have appointed counsel to represent him upon the petition before it, just as counsel was later appointed to represent him upon this appeal.

Discussion

Turning first to the question of whether counsel should have been appointed in the district, we find no error in the district court’s decision not to do so. Where, as here, an evidentiary hearing is unnecessary, the appointment of counsel to represent a pro se habeas petitioner rests in the court’s discretion. Cole v. Mancusi, 429 F.2d 61 (2d Cir. 1970), cert. denied, 401 U.S. 957, 91 S.Ct. 982, 28 L.Ed.2d 240 (1971). Although the petition, as Judge Port observed, was “less than a model of clarity,” it raised issues clearly enough to enable the experienced district judge to give it thorough and careful consideration, which he did. Indeed, while not obligated to do so, he obtained and studied not only the transcripts of appellant’s 1956 and 1963 trials but also various other papers documenting appellant’s collateral proceedings in the Queens County Supreme Court.

The district court properly held that, even assuming that the 1956 conviction resulted from seizure of evidence that would have been unconstitutional after Mapp v. Ohio, 367 U.S. 643, 81 S.Ct. 1684, 6 L.Ed.2d 1081 (1961), the Supreme Court’s ruling in Mapp was not retroactive. See Linkletter v. Walker, 381 U.S. 618, 85 S.Ct. 1731, 14 L.Ed.2d 601 (1965). We agree. The ruling in Mapp, furthermore, did not cast any doubt on the credibility or integrity of unlawfully seized evidence. Its purpose, which was to deter future police lawlessness, would hardly be served by denying predicate effect to a conviction obtained prior to its pronouncement. The 1956 conviction, therefore, stands unaffected by Mapp. Since it was not unconstitutional at the time when obtained, it was not barred from use as a predicate conviction by N.Y. Penal Law, § 1943.

The Bruton violation, as Judge Port concluded on the basis of his detailed analysis of the transcript of the 1956 trial, was technical in nature and harmless beyond a reasonable doubt, see Chapman v. California, 386 U.S. 18, 87 S.Ct. 824, 17 L.Ed.2d 705 (1967); Harrington v. California, 395 U.S. 250, 89 S.Ct. 1726, 23 L.Ed.2d 284 (1969). A similar finding had been made by the Appellate Division, Second Department, People v. Cadogan, 34 A.D.2d at 959, 313 N.Y.S.2d 651. The proof, which was overwhelming, included testimony of two witnesses that they had apprehended appellant in the act of mixing a batch of heroin.

Since appellant, who was represented by counsel, unsuccessfully appealed his 1956 conviction to the Appellate Division, Second Department, which handed down an affirmance, see People v. Cadogan, 12 A.D.2d 647, 210 N.Y.S. 2d 780 (2d Dept. 1960), his claim that he was denied his right of appeal is reduced to the contention that he was not advised by the Appellate Division or by his counsel of his right to seek permissive review by petitioning the New York Court of Appeals for leave to appeal from the Appellate Division’s affirmance of the 1956 conviction. Appellant, however, does not state that he was unaware of the right to seek review by the state’s highest court and, in view of his earlier experience with state court criminal procedure — he had three narcotics-related convictions prior to 1956, two of which resulted in jail terms — it is possible that he was well aware of his appeal rights and that his belated claim, made for the first time some 16 years after his 1956 conviction, is an afterthought. But, even assuming he was in fact unaware of his right to seek permissive review, his counsel’s failure to advise him of that right would not, in our view, amount to a deprivation of constitutional magnitude. See Ross v. Moffitt, 417 U.S. 600, 94 S.Ct. 2437, 41 L.Ed.2d 341 (June 17, 1974), where the Supreme Court recently held that an indigent defendant is not entitled under the Constitution to appointment of counsel for the purpose of pursuing discretionary review of his state court conviction by the state’s highest court after he had obtained review as a matter of right by the state’s intermediate appellate court, which had affirmed his conviction. See also United States ex rel. Pennington v. Pate, 409 F.2d 757, 759 (7th Cir. 1969).

The decision of the district court denying appellant’s petition and ordering that it be dismissed is affirmed.

We voice our appreciation to Wellington A. Newcomb, Esq., appellant’s assigned counsel, for his able and conscientious representation of appellant.

      . N.Y. Penal Law, § 1943, provided in pertinent part:
      “An objection that a previous conviction was unconstitutionally obtained may be raised at this time and the court shall so inform the person accused. ..." The failure of the person accused to challenge the previous conviction in the manner provided herein shall constitute a waiver on his part of any allegation of unconstitutionality unless good cause be shown for his failure to make timely challenge.”