author: McLAUGHLIN, District Judge.

text:
    LESPORTSAC, INC., Plaintiff, v. K MART CORPORATION, Defendant.
    No. 84 CV 2720.
    United States District Court, E.D. New York.
    July 11, 1984.
    On Motion to Modify Injunction, Sept. 18, 1984.

      Kuhn, Muller & Bazerman, New York City, for plaintiff; Steven H. Bazerman, Julius Rabinowitz, New York City, of counsel.
    Kirchstein, Kirchstein, Ottinger & Israel, New York City, Alexander & Zalewa, Ltd., Chicago, Ill., for defendant; Alan Israel, Martin W. Schiffmiller, New York City, James D. Zalewa, Mark W. Croll, Chicago, Ill., of counsel.
   McLAUGHLIN, District Judge.

Plaintiff seeks a preliminary injunction prohibiting defendant from infringing plaintiffs .trademark, and trade dress for lightweight luggage and handbags. The parties submitted affidavits and memoran-da in support of their positions, and the Court heard testimony on July 6, 1984. For the reasons developed below, the preliminary injunction shall issue.

Facts

Plaintiff sells a line of lightweight luggage made of parachute nylon and trimmed in cotton carpet tape. The bags are carried by means of cotton webbing of the same color as the carpet tape trim.

The zippers used to close the bags are color-coordinated with the bags themselves, and pulled by means of hollow rectangular metal sliders. Many of the bags also have separate zippered compartments employing the same hollow metal sliders. The most distinctive feature of plaintiffs bags is the repetitive printing of the elliptical logo on the cotton trim of each bag. The logo is a brightly colored circle followed by letters with the name, “LeSportsac,” enclosed within an elongated ellipse of contrasting color. The letters are the same color as the bag.

Defendant’s bags are remarkably similar to those manufactured by plaintiff. They, too, are made of parachute nylon, trimmed in cotton tape, and characterized by color coordinated zippers with hollow rectangular zipper pulls. Defendants sell their bags under the name “di parís sac.” The name appears in an elongated ellipse in which the French word is set against a background of contrasting color. On the ellipse appears a miniature Eiffel Tower. Additionally, the letters themselves are, in most instances, the same color as the bag. Most significantly, defendant’s logo is printed repetitively across the trim in the same style as plaintiff’s.

Plaintiff has been marketing its lightweight nylon luggage since July, 1976, and has sold approximately 5,000,000 bags — for over 50 million dollars — both in the United States and abroad. At the hearing, K Mart adduced testimony that its line of bags was purchased in the Far East sometime around November 1983. The bags were offered for sale early in 1984.

Plaintiff’s bags generally sell for significantly more than defendant’s; nevertheless plaintiff does have several “factory outlet” stores at which the prices of plaintiff’s goods are reduced so they sell at approximately the same price as defendant’s.

Plaintiff asserts that defendant has infringed plaintiff’s rights in. the trademark and trade dress of its goods. Specifically, plaintiff alleges that certain bags sold by defendant have “the same configuration, size and fabric pattern as plaintiff’s, [and] the same trim, zipper placement, zipper design, and the like. The webbing has a repeating elliptical design, similar to and similarly positioned as plaintiffs eliptical [sic] design.” Complaint ¶ 15, Ex. C.

The allegedly offending bags are a handbag, a totebag, a backpack and a small travel bag with shoulder straps. Plaintiff contends that they are unlawful imitations, respectively, of plaintiffs models no. 7124, 7150, 7192 and 7183. Both plaintiffs and defendant’s bags were submitted to the Court as plaintiffs exhibits 1 and 14-20.

Discussion

To obtain an injunction, plaintiff is required to demonstrate the likelihood of irreparable injury and either: 1) likelihood of success on the merits or 2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly in plaintiffs favor. Dallas Cowboys Cheerleaders v. Pussycat Cinema, 604 F.2d 200, 206-07 (2d Cir.1979). In an action for trademark infringement, satisfying that test involves showing that there is a likelihood of confusion between plaintiffs and defendant’s marks. P. Daussa Corp. v. Sutton Cosmetics (P.R.), Inc., 462 F.2d 134, 136 (2d Cir.1972).

Defendant contends plaintiff’s bags contain numerous functional features which are unprotectible. Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964). As the Supreme Court stated recently, “[i]n general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Laboratories v. Ives Laboratories, Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 2186 n. 10, 72 L.Ed.2d 606 (1982).

While the shape of the product is in the public domain and is not protectible, its packaging, or trade dress, is protectible if it is nonfunctional and has acquired a secondary meaning. See Ives Laboratories v. Darby Drug Co., Inc., 601 F.2d 631 (2d Cir.1979); LeSportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602, 606 (S.D.N.Y.1979).

Plaintiff adduced evidence at the hearing that its unique features are nonfunctional, i.e., that there are numerous ways to manufacture lightweight nylon luggage other than that employed by plaintiff. There is no need, for example, to have cotton webbing on the outside seam of the bag, or to have outer zippered pockets. Similarly—and more significantly—there is no need to have hollow rectangular zipper pulls.

Defendant introduced a plethora of exhibits whose various designs undermine its own functionality argument. All are nylon bags, yet none bears the combination of design features used by plaintiff and imitated by defendant. As the Court stated in LeSportsac, Inc. v. Dockside Research Inc., supra, 478 F.Supp. at 608: “[T]he entire composition of [plaintiff’s] bags tend [sic] to lend it a particular ‘look’ which apparently was intended to serve a trademark purpose, to wit: identification.”

Plaintiff has also established that the design elements of its bags have acquired a secondary meaning, which “connotes the association in the mind of the public of the trademark with the source of the goods.” Id. Plaintiff submitted evidence of the extensive advertising it has undertaken, as well as numerous unsolicited magazine and newspaper articles written about its products. See Declaration of Sandra Stetson 111113-19. In addition, plaintiff has received numerous requests to license the use of its mark and design to persons interested in exploiting the “LeSportsac” name. Id. 1120.

The most persuasive evidence, however, that plaintiff’s design has achieved secondary meaning is the inference arising by virtue of defendant’s having copied almost every detail of plaintiff’s product. Plaintiff’s bags have enjoyed tremendous success and are in great demand. The public wants “LeSportsac;” and a copy is what defendants gave it. Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946, 950 (2d Cir.1981) (“the most significant evidence of secondary meaning”); see LeSportsac, Inc. v. Dockside Research, Inc., supra, 478 F.Supp. at 608-09.

Having reviewed the testimony, memo-randa and exhibits in this case, I am satisfied that plaintiff has established not only a likelihood of confusion, but a virtual certainty of it. Cursory examination of comparable models of each party’s bag discloses that they are almost indistinguishable, except for the differences in the wording of the marks.

For example, plaintiffs exhibits 14 (plaintiff’s bag) and 15 (defendant’s bag) are both white, oversized handbags. Each has on one side a large outer pocket with no closure, and on the other side two smaller outer pockets, each with a zippered closure and hollow rectangular zipper pull. Each bag has a large flap that folds over one side of the bag, and each is carried by a color coordinated cotton shoulder strap. On each bag, of course, the elongated elliptical logo appears repeatedly across the trim and around the outer edge of the fold-over flap. Also nearly identical in appearance are totebags (PX 1, 16), backpacks (PX 17, 18) and travel bags (PX 19, 20).

The striking similarities between plaintiff’s and defendant’s bags are accentuated by the significant dissimilarities between plaintiff’s bags and the third-party bags introduced as exhibits by defendant. Comparison of all the bags creates a clear impression that defendant deliberately copied the distinctive features of plaintiff’s bag. As the Court stated in Perfect Fit Industries v. Acme Quilting Co., 618 F.2d 950 (2d Cir.1980):

In assessing the likelihood of confusion to the public, an important factor is whether or not the second comer created the similar trade dress intentionally. If there was intentional copying, the second comer will be presumed to have intended to create a confusing similarity of appearance and will be presumed to have succeeded.

Id. at 954.

Defendant contends that because so many similar nylon bags are on the market, plaintiff is somehow not entitled to this injunction. To the extent defendant is attempting to show the weakness of plaintiffs mark, its argument is meritless. The factors discussed above as demonstrating that plaintiff’s product has achieved a secondary meaning are also indicia of the strength of plaintiff’s mark and the protection to which it is entitled. See McGregor-Doniger, Inc. v. Drizzle, Inc., 599 F.2d 1126, 1181-32 (2 Cir.1979): Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., 486 F.Supp. 414, 420 (S.D.N.Y.1980).

Irreparable Injury

The likelihood of confusion shown by plaintiff provides the Court with substantial evidence of irreparable injury. The average consumer, seeing defendant’s products in discount stores and believing them to have originated from plaintiff, may well believe plaintiff has lowered the quality of its product line. This may result in future lost sales' for plaintiff and a loss of consumer good will. See Omega Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190, 1195 (2d Cir.1971). The likelihood of irreparable harm is particularly acute in cases such as this, where plaintiff’s mark is its most valuable corporate asset. See Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., supra, 486 F.Supp. at 429. Accordingly, I find that plaintiff has established a strong likelihood of irreparable harm.

Serious Questions Going To The Merits

Whether and to what extent plaintiff ultimately prevails on its claims depends upon its ability to prove that defendant’s products would be likely to cause public confusion within the meaning of sections 32(1) and 43(a) of the Lanham Act. Having demonstrated at this stage a likelihood of confusion, plaintiff has clearly shown there are sufficiently serious questions going to the merits of this case to make them a fair ground for litigation.

Balance of Hardships

Defendant introduced extensive evidence of the hardship it would allegedly suffer if forced to recall its bags and place them in storage pending the resolution of this litigation. Defendant also introduced evidence of the number of outstanding orders for similar bags which it would be forced to cancel if an injunction were issued.

Defendant has brought these hardships on itself. It is the duty of the newcomer to identify its product in a manner that will avoid a likelihood of confusion with the product of the first comer. See Harold F. Ritchie, Inc. v. Chesebrough-Ponds, Inc., 281 F.2d 755, 758 (2d Cir.1960). Having adopted its course, defendant cannot now complain that it will be overly expensive to mend its ways. Ideal Industries, Inc. v. Gardner Bender, Inc., 612 F.2d 1018, 1026 (7th Cir.1979), cert. denied, 447 U.S. 924, 100 S.Ct. 3016, 65 L.Ed.2d 1116 (1980).

Moreover, the true hardships in this case tip heavily in favor of plaintiff, who risks losses of goodwill, sales and possibly licensing arrangements if defendant is allowed to continue selling its confusingly similar bags pending resolution of this action. The damage to plaintiffs mark that may occur if an injunction is not issued far outweigh the economic hardship that may be suffered by defendant if an injunction is entered. See Playboy Enterprises, Inc. v. Chuckleberry Publishing, Inc., supra, 486 F.Supp. at 434.

For the foregoing reasons, the motion for a preliminary injunction is granted. Defendant shall be enjoined from advertising or offering for sale the bags such as those produced at the hearing, which contain a combination of mark and trade dress confusingly similar to that used by plaintiff.

Plaintiff is directed to post a bond in the amount of two hundred fifty thousand dollars ($250,000) with the Clerk of the Court not later than 3:00 p.m., July 13, 1984. SO ORDERED.

ON MOTION TO MODIFY INJUNCTION

Following a hearing in this action, the Court issued a memorandum on July 11, 1984 finding that defendant was infringing plaintiff’s trademark and trade dress for lightweight nylon luggage; a preliminary injunction was entered on July 13, 1984. Defendant now moves for an order modifying the preliminary injunction to allow it to sell the luggage in question; and plaintiff cross-moves to broaden the injunction. For the reasons developed below, defendant’s motion is denied and plaintiff’s cross-motion is granted.

Defendant’s Motion to Modify the Injunction

Defendant requests that the preliminary injunction be modified to permit it to sell the enjoined bags if a hangtag is attached which states prominently:

di parís sac

SOLD EXCLUSIVELY AT AND MADE EXCLUSIVELY FOR K MART

Defendant contends that attaching this label would remove the likelihood of confusion that prompted the Court to issue the preliminary injunction.

The Court has reviewed the proceedings to date in this action, the memorandum of July 11, the facsimile of the tag defendant proposes to use and the memoranda submitted with respect to this motion. Based upon that review, the motion is denied. K Mart’s contention that adding a hangtag would eliminate the likelihood of confusion is not convincing, and the cases it relies upon for that argument are distinguishable.

In Sears, Roebuck & Co. v. Stiffel Company, 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964), the Supreme Court recognized, in dictum, that labeling or “other precautionary steps” may prevent consumer confusion as to the source of a product. Id. at 232, 84 S.Ct. at 789. Sears, Roebuck, however, was a patent case, and as the Court recognized in Truck Equipment Service Co. v. Fruehauf Corp., 536 F.2d 1210 (8th Cir.1976), “[t]he protection accorded by the law of trademark and unfair competition is greater than that accorded by the law of patents_” Id. at 1215.

LeSportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602 (S.D.N.Y.1979), is similarly distinguishable. The presence of a hangtag in that case was just one of the factors leading to denial of a preliminary injunction. Id. at 609. Defendant’s bags also had defendant’s mark sewn prominently into the bag. In the instant case, however, K Mart’s mark appears on the bag only in the repeating elliptical logo. I have previously indicated that K Mart’s use of the repeating logo was a factor supporting the granting of the preliminary injunction. Accordingly, defendant’s motion to modify the preliminary injunction is denied.

Plaintiffs Motion to Broaden the Injunction

Plaintiff cross-moves to broaden the injunction to prohibit defendant from selling its heavyweight nylon knapsack, Style No. 9995, which allegedly infringes plaintiff’s knapsack, model 7192. The Court has already enjoined defendant from selling a lightweight version of the same knapsack. While K Mart correctly points out that there are more dissimilarities between the two bags presently in question than between K Mart’s lightweight knapsack and that of plaintiff, the Court nevertheless believes there is still a likelihood of confusion between the two bags.

Defendant’s heavyweight knapsack contains the same repeating elliptical logo present on the previously-enjoined bags, as well as the non-functional hollow rectangular zipper pulls that the Court has held are part of plaintiff’s protectible trade dress. Additionally, the location of the repeating elliptical logo — on the nylon trim just above a zipper — is identical to that on plaintiff’s bag. As the Second Circuit has repeatedly stated, “it is the ‘combination of features as a whole rather than a difference in some of the details which must determine whether the competing product is likely to cause confusion in the mind of the public.’ ” Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946, 949 (2d Cir.1981) (quoting Perfect Fit Industries, Inc. v. Acme Quilting Co., 618 F.2d 950, 955 (2d Cir.1980).

Once again, comparison of the bags “creates a clear impression that defendant deliberately copied the distinctive features of plaintiff’s bag.” Memorandum and Order of July 11, 1984, at 7-8. The Second Circuit’s position on this practice is clear: “Evidence of conscious imitation is pertinent because the law presumes that an intended similarity is likely to cause confusion.” Id. (citing Perfect Fit Industries, Inc. v. Acme Quilting Co., supra, 618 F.2d at 954; RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1060 (2d Cir.1979); Harold Ritchie, Inc. v. Chesebrough-Pond’s, Inc., 281 F.2d 755, 758-60 (2d Cir.1960)).

Accordingly, plaintiffs motion to broaden the preliminary injunction is granted. It is hereby ORDERED that:

(1) the injunction issued July 13, 1984 is amended so that defendant is enjoined from selling its heavyweight knapsack, Style No. 9995; and

(2) the bond in this action, previously set at $250,000, shall be increased to $400,000, to be posted not later than 5:00 p.m., September 21, 1984.

SO ORDERED

      . “PX" is used to refer to Plaintiff’s Exhibits.

      . The argument that plaintiff has somehow abandoned its mark by allowing so many others to sell nylon luggage is also meritless. The existence of infringers other than defendant, against whom plaintiff has not instituted action, is not relevant to whether an injunction should issue against this defendant. Playboy Enterprises, Inc. v. Chuckleberry Publishers, Inc., 486 F.Supp. 414, 423 n. 9 (S.D.N.Y.1980) (citing cases).

      . The showing plaintiff made also entitles it to injunctive relief under New York law on its pendent unfair competition claims. Harlequin Enterprises, Ltd. v. Gulf & Western Corp., 644 F.2d 946, 950 (2d Cir.1981); Perfect Fit Industries v. Acme Quilting Co., 618 F.2d 950, 952 (2d Cir.1980).

      . Plaintiffs motion to broaden the injunction was originally brought as a motion by defendant for a "determination of noninfringement.” After discussion with the Court, however, the parties agreed that the issue, whether a knapsack not presently covered by the injunction should be so covered, was properly brought before the Court as a plaintiff’s motion.

      . The tag is approximately 3'A" square, made of heavy paper, and would be hung from each bag. A facsimile of the tag was submitted to the Court on September 7, 1984 as Defendant's Exhibit C.

      . The bags were submitted to the Court on September 7, 1984 as Defendant’s Exhibit A and B, respectively.


source: Caselaw Access Project

author: RAFEEDIE, District Judge.

license: Public Domain

text:
    Linda BLAKE, a minor, By and Through her Guardian ad Litem William BLAKE, William Blake, Plaintiffs, v. NATIONAL CASUALTY COMPANY, National Bonding and Accident Insurance Company; M.M. Brase; and William H. Koenig; and Does 1 Through 30, Inclusive, Defendants.
    No. CV 83-7026-ER(Px).
    United States District Court, C.D. California.
    July 26, 1984.

      Wylie A. Aitken, Santa Ana, Cal., for plaintiffs.
    Kornblum, Kelly & Herlihy, San Francisco, Cal., for defendants.
   MEMORANDUM DECISION

RAFEEDIE, District Judge.

Plaintiff Linda Blake, a minor, by and through her guardian ad litem William Blake, brought this action for breach of the duty of good faith and fair dealing and breach of statutory duties against defendants National Casualty Co. and National Bonding & Accident Ins. Co. The suit was filed in California state court and removed to the federal court Oct. 31, 1983, on the basis of diversity jurisdiction.

Plaintiff now moves to remand the case to state court as improvidently removed, based upon the interpretation of 28 U.S.C. 1332(c)’s definition of citizenship of insurance companies in “direct actions” that was given in a Western District of Michigan opinion. Defendants, contending that plaintiff’s argument is foreclosed by Ninth Circuit law and that plaintiff refused to withdraw the motion even after being so informed, moves for sanctions under Federal Rule of Civil Procedure 11. After consideration of the papers submitted, as well as the oral argument by the parties, this Court denies plaintiff’s motion for remand and grants defendants’ motion for sanctions under Rule 11.

DISCUSSION

Motion for Remand

Plaintiff relies upon 28 U.S.C. § 1332(c) which states, in part:

in any direct action against the insurer of a policy or contract of liability insurance, whether incorporated or unincorporated, to which action the insured is not joined as a party-defendant, such insurer shall be deemed a citizen of the State of which the insured is a citizen, as well as of any State by which the insurer has been incorporated and of the State where it has its principal place of business.

This portion of § 1332(c) was added in 1964 to eliminate from diversity jurisdiction those tort claims in which both the injured party and the tortfeasor were state residents, but which, under Wisconsin’s and Louisiana’s “direct action” statutes, were brought against the tortfeasor’s foreign insurance carrier without joining the tort-feasor as defendant.

Plaintiff cites Tyson v. Connecticut General Life Ins., 495 F.Supp. 240 (E.D.Mich.1980), in support of her argument that § 1332(c) can prevent diversity jurisdiction in this case, in which plaintiff’s employer, also a California citizen, provided her insurance. The current congestion in the federal courts prompted the Tyson court to construe direct action in this section broadly. It held that “when an insurer protects a third person against that person’s liability to another, the insurer assumes that third person’s citizenship for purposes of diversity of citizenship federal subject matter jurisdiction.” Id. at 242. Were this Court to adopt the Tyson court’s holding and to find the plaintiff’s employer rather than the plaintiff to be the insured, diversity jurisdiction would not exist and this action would be remanded to the state court.

But, while this Court respects the wisdom of its fellow district court in Michigan, it is bound to follow the law as set by the Ninth Circuit. The Ninth Circuit, in Beckham v. Safeco Ins. Co., 691 F.2d 898 (9th Cir.1982), stated that

Courts have uniformly defined the term “direct action” as used in this section as those cases in which a party suffering injuries or damage for which another is legally responsible is entitled to bring suit against the other’s liability insurer without joining the insured or first obtaining a judgment against him.... Thus, “unless the the cause of action urged against the insurance company is of such a nature that the liability sought to be imposed could be imposed against the insured, the action is not a direct action.”

Id. at 901-02 (citations omitted). Beckham renders it impossible to consider this action a “direct action,” because the plaintiff’s employer could not be sued for the defendants’ alleged breaches of the duty of good faith and statutorily imposed duties.

Sanctions under Rule 11

Federal Rule of Civil Procedure 11 requires attorneys to sign all motion papers. This signature

constitutes a certificate by [the attorney] that he has read the ... motion; ... that to the best of his knowledge, information, and belief formed after reasonable inquiry it is well grounded in fact and is warranted by existing law or a good faith argument for the extension, modification, or reversal of existing law, and that it is not interposed for any improper purpose, such as to harass or to cause unnecessary delay or needless increase in the cost of litigation.

See also Rule 7(b)(3), Fed.R.Civ.Pro.

The argument advanced by plaintiff’s attorney is not well grounded in the law, as it is directly opposed by controlling precedent. That might appear to require this Court to determine whether plaintiff's attorney made a “reasonable inquiry” into the law as required by Rule 11. Tyson itself informs a reader that two lines of cases defining “direct actions” exist and that the narrow definition had been supported by three circuits while the broader approach had been supported by one circuit. But this Court’s task is simplified because in the present case, defendants’ attorney, upon receipt of the motion to remand, wrote to plaintiff’s attorney, informed plaintiff’s attorney of the Beck-ham decision, quoted its relevant language, and concluded that the present case is not a direct action because plaintiff “is not seeking to impose liability upon National Casualty for the negligence of its insured, regardless of whom you designate as being the insured, Linda Blake or her employer.” Plaintiff’s attorney received this letter before the motion was filed with this Court. Thus, all this Court must decide is whether plaintiff’s attorney violated Rule 11 by making the motion to remand, given that he knew of the existing Ninth Circuit law.

. It is not credible to this Court that the plaintiff’s attorney did not know that his argument was not warranted by the existing law.' A Northern District of California opinion cited Tyson approvingly, see McLaughlin v. Connecticut General Life Ins., 565 F.Supp. 434, 440 (N.D.Cal.1983), but that does not affect the law in this Circuit at all. McLaughlin did not define § 1332(c)’s “direct action;” it merely raised the issue. Nor did it discuss Beckham.

Plaintiffs attorney did not attempt to distinguish Beckham in the motion. Indeed, this Court is unsure how Beckham could reasonably be distinguished, for in addition to the previously cited holding, the Ninth Circuit, in applying this holding, stated:

The present suit is clearly not a direct action since Beckham is not seeking to impose liability on Safeco [the defendant] for the negligence of Safeco’s insured, Mankin. Rather, she is seeking to impose liability on Safeco for its own tor-tious conduct, i.e., Safeco’s bad faith refusal to settle her claim against Man-kin. Such liability could not be imposed against Mankin, nor could Mankin be even be joined as a defendant in this suit.

691 F.2d at 902 (emphasis added). The only difference, factually, between Beck-ham and the present case is that Mankin, who supplied the insurance in Beckhapn, was not Beckham’s employer. While plaintiff’s attorney cited this difference at oral argument, he was unable to argue that this distinction had any significance.

Nor can the motion be viewed as a “good faith argument for the extension, modification, or reversal of existing law.” Rule 11 permits attorneys to challenge precedent and advance novel theories of law, but at some point on a spectrum, such legal arguments become frivolous. This motion is an example. It does not even mention Beck-ham, although the plaintiff’s attorney knew of the case before he filed the motion with this Court. If a motion does not mention controlling precedent, it is impossible for this Court to regard the motion as arguing that the precedent should be modified. Plaintiff’s attorney might have made such an argument in his reply brief, but no reply brief was filed. Instead, plaintiff’s lawyer chose to rely upon Tyson and McLaughlin. Such conduct is simply inadequate to constitute a good faith attempt to change the law.

Other cases may present greater difficulty in determining whether Rule 11 has been violated. This rule creates this difficulty by referring to the attorney’s “knowledge, information, and belief” that the motion “is warranted by existing law or a good faith argument for the extension, modification, or reversal of existing law.” A completely subjective standard — did the attorney sincerely believe that his argument was warranted, no matter how unreasonable the belief — would rob the rule of much of its utility. But too strict a standard might unduly chill an attorney’s advocacy, especially for those advancing unpopular arguments. This determination requires sensitivity on the part of the court. Relevant factors to consider include the amount of time the attorney had to prepare the motion, the expertise of the attorney, the complexity of the law involved, and the extent to which the attorney supports the motion.

Once the Court determines that a'paper has been signed in violation of Rule 11, the Rule requires that a Court “shall impose upon the person who signed it ... an appropriate sanction.” (Emphasis added.) As the Advisory Committee Notes to Rule 11 explain, “[t]he text of the amended rule seeks to dispel apprehensions that the efforts to obtain enforcement will be fruitless by insuring that the rule will be applied when properly invoked.” 97 F.R.D. 165, 199 (1983). At oral argument, the defendants’ attorney stated that the costs and fees incurred by his researching the issue, sending the letter to plaintiff’s attorney, preparing the opposition, and preparing for and attending the oral argument were $600.

This sanction will be imposed against the attorney rather than the plaintiff because the motion is unsupported by existing law, rather than unsupported by facts. While an attorney may have to rely upon his client for facts, knowledge and interpretation of the appropriate law is his specialty, and for which he has been specially trained. As a consequence, the attorney and not the client should bear the sanction for filing papers which violate Rule 11 by being unsupported by existing law, or as an attempt to modify the law.

This Court therefore Orders that the plaintiffs motion to remand is denied and that the defendants’ motion for sanctions under Rule 11 is granted. This Court further Orders plaintiff’s counsel to pay defendants’ attorney $500 in costs and attorney’s fees for opposing this motion.

      . This Court already granted a motion which dismissed an additional plaintiff, two additional ■ defendants, and another cause of action.

      . National Casualty is a Michigan corporation having its principal place of business in Michigan. National Bonding is a New York corporation with its principal place of business in Missouri. Plaintiff is a California resident.

      . The new Rule 11 now explicitly includes motions. Rule 7(b)(3) just iterates this.

      . Further, if plaintiff's attorney had shepardized the three cases Tyson cites in support of the narrow definition, he would have found Beck-ham. Beckham could also be found easily by using an annotated United States Code, a digest, or a computer search. All of these, with the possible exception of the computer search, are basic methods of researching a point of law. To have done none of them is not "reasonable inquiry,” especially when the attorney must know that his position is the minority position.

      . The defendants’ attorney had to fly from San Francisco to Los Angeles for the hearing. While the hearing could have been dispensed with if only the remand motion had been under consideration, see Local Rule 7.11, a hearing was necessary as the Court was prepared to grant sanctions against plaintiff’s attorney.


author: EISELE, Chief Judge.

text:
    Barry BRAZIL, et al., v. ARKANSAS BOARD OF DENTAL EXAMINERS, et al.
    No. LR-C-81-675.
    United States District Court, E.D. Arkansas, W.D.
    Aug. 8, 1984.
    Ron Bruno, Little Rock, Ark., for plaintiffs.
    Wm. Dean Overstreet, House, Wallace & Jewell, P.A., Little Rock, Ark., for defendants.
   SUMMARY JUDGMENT

EISELE, Chief Judge.

Pending before the Court is the motion for summary judgment filed by defendant Arkansas State Dental Association. For the reasons set forth below, the motion is granted.

Plaintiffs have raised numerous claims based on the United States Constitution and the federal antitrust laws against the Arkansas State Dental Association (“Association”) and the Arkansas Board of Dental Examiners. In the Court’s April 6, 1984, Memorandum Opinion, 593 F.Supp. 1354, the Court dismissed four of the five possible antitrust claims raised against the Association. The fifth claim — that the Association had engaged in a combination and conspiracy to restrain trade and monopolize the field — survived the defendant’s motions to dismiss, although the Court observed:

The dearth of any detailed fact-pleading makes it difficult to understand fully the basis of the plaintiff’s allegation. Nevertheless, the Court notes that irrespective of the Association’s immunity for certain actions under state action and Noerr-Pen-nington doctrines, there could be other activities that might support an antitrust cause of action. From the current state of the pleadings, the chances of such an antitrust claim surviving a motion for summary judgment (after the factual basis of the allegation has been established) appear slim. The Court is not, however, prepared to say at this stage that, based on its last broadly-stated allegation, the plaintiffs failed to state a claim upon which relief could be granted.

Mem. at 1370-1371.

On May 30, 1984, the Association filed the pending motion for summary judgment, contending that the remaining antitrust claim and the constitutional claims should be dismissed. As to the antitrust claim, the Association argues that

the plaintiff’s Complaint fails to allege any facts, much less specific facts, which would support its allegations that an unlawful combination and conspiracy existed for the purpose of restraining trade.

Def. brief at 4. The defendant also appended the affidavit of its Executive Director, Mr. Rex T. Butler, which states that the only direct connection the Association has with the Arkansas Board of Dental Examiners lies in its duty to recommend candidates to the Governor of Arkansas for selection to the Dental Board. Mr. Butler expressly denies that the Association has any input to the Dental Board on matters relating to licensing or disciplining of those engaged in dental activities. He also states that the Association is not engaged in the promotion of products or services and “has had no contacts, meetings, contracts or communications with any member of the Arkansas Board of Dental Examiners or any of the other defendants or the plaintiffs about any matter which might be the subject of the allegations contained in the plaintiff’s Complaint.” He further states that the only activities the Association engages in outside its own membership are related to its efforts to procure insurance benefits for its members.

As the defendant points out in its motion for summary judgment, Rule 56(e) of the Federal Rules of Civil Procedure requires the non-moving party to come forward with specific factual allegations when the moving party files a motion that is supported by affidavits. The rule states:

When a motion for summary judgment is made and supported [by affidavit], an adverse party may not rest upon the mere allegations or denials of his pleading, but his response, by affidavits or as otherwise provided in this rule, must set forth specific facts showing that there is a genuine issue for trial. If he does not so respond, summary judgment, if appropriate, shall be entered against him.

In their response to the Association’s motion, the plaintiffs assert that the Association and its membership have used their connections with the Dental Board to promote their own pecuniary interests and to harass those who do not adhere to their policies. The plaintiffs also assert that the Association and the Dental Board have illegally conspired to restrain trade. The plaintiffs cite the affidavit of co-plaintiff Barry Brazil, which states:

That I personally have first-hand knowledge that there have been meetings held by the Arkansas State Dental Association with the Arkansas Board of Dental Examiners wherein said organizations frequently conspired to insure that I, as owner/operator of the American Denture Center, could no longer do business in the State of Arkansas by depriving me of access to members of the dental profession.

In an Order dated July 24, 1984, this Court noted that the plaintiffs’ allegations in their complaint and in their response to the Association’s motion for summary judgment are vague and conclusory. It also observed that the affidavit of Mr. Brazil is conclusory and “lacks any meaningful listing of specific facts.” Nevertheless, since the affidavit stated that the Board and Association conspired against Mr. Brazil in several meetings, the Court agreed to temporarily reserve judgment on the motion for summary judgment and directed the plaintiffs

to file a statement setting forth in detail any and all evidence (i.e., dates, names of persons, statements made and conversations entered into, etc.) relating to the alleged conspiracy. In so doing, the plaintiffs must indicate each action on the part of each individual defendant that would constitute a-conspiratorial act and describe in detail how these acts have operated to the detriment of each individual plaintiff.

The Court also stated: “If the plaintiffs fail to file this submission on or before July 31, 1984, the Court will have no alternative but to grant the defendant’s motion for summary judgment.”

The plaintiffs did not file the above-referenced submission by July 31, 1984, and in a conversation with the Court on August 2, 1984, the plaintiffs indicated that they would not be submitting such a submission.

The Court is well aware of the “drastic nature” of the summary judgment remedy. See Snell v. United States, 680 F.2d 545, 547 (8th Cir.), cert. denied, 459 U.S. 989, 103 S.Ct. 344, 74 L.Ed.2d 384 (1982). Not only is the evidence viewed in the light most favorable to the non-moving party, but the Court is also required to give the non-moving party the benefit of all reasonable inferences to be drawn from the facts. Moreover, courts are frequently hesitant to grant summary judgment in an antitrust action where issues of intent are involved. Nevertheless, in numerous cases, courts have granted summary judgment on antitrust claims where the non-moving party has failed to come forward with specific facts in support of their claims. See, e.g., Sound Ship Building Corporation v. Bethlehem Steel Co., Inc., 533 F.2d 96, 99 (3d Cir.1975); Saenz v. University Interscholastic League, 487 F.2d 1026, 1028 (5th Cir.1973).

In this case, the plaintiffs have simply failed to marshall any material facts in support of their contention that the Association and its officers have in some way conspired with the Dental Board to restrain trade. Since the plaintiffs have failed to state specific facts in spite of the Court’s explicit solicitation of same, the Court must conclude that there is no genuine issue of material fact that would bear upon the plaintiffs’ remaining antitrust claim against the Association and its officers. The Association and its officers are therefore entitled to summary judgment pursuant to Rule 56(e) on this issue.

The same situation must arise with respect to the constitutional claims raised against the Association and its officers under 42 U.S.C. § 1983. As previously observed in this Court’s April 6, 1984, Memorandum and Order, and its April 10, 1984, Order, plaintiffs allege violations of their rights as guaranteed under the first, fifth, ninth and fourteenth amendments. The primary focus of the plaintiffs’ constitutional claims seems to be on the Arkansas Dental Practices Act and the regulations that the Dental Board has adopted pursuant to that Act. In addition, plaintiffs have alleged that the Dental Association has conspired with and encouraged the Dental Board in the latter’s alleged efforts to protect the- economic interests of dentists to the detriment of the plaintiffs.

As noted supra, Mr. Butler has asserted in his affidavit that the Association has no input with the Dental Board regarding licensing questions, disciplinary actions, or any other practices. Moreover, in its Statement of Uncontroverted Material acts filed pursuant to Local Rule 30, the Association states that it “does not encourage or otherwise advocate limitations on services or products.” The plaintiffs have filed no counter-statement, as is required by the local rule, and in spite of the Court’s Order of July 24, 1984, directing the plaintiffs to file a detailed statement of allegations, the plaintiffs have failed to do so.

As observed by this Court in Light v. Blackwell, 472 F.Supp. 333 (E.D.Ark.1979), aff'd without opinion, 620 F.2d 307 (8th Cir.1980),

In actions under 42 U.S.C. § 1983 the courts have found it necessary to impose special pleading limitations. The pleading limitations were found necessary in order to identify frivolous suits, and to prevent public officials from being subjected to vexatious actions. Personal involvement must be plead with factual specificity and bare allegations on this issue are not sufficient.

472 F.Supp. at 335. In granting the defendants’ motion to dismiss, the Court noted that the allegations of constitutional violations directed at the defendants had failed “to link causally the conduct of the defendants with the alleged constitutional deprivations.” Id. at 336.

The case at bar presents an analogous circumstance. The vaguely-worded affidavit of Mr. Brazil raises no specific facts that tie the Association and its officers to the alleged deprivations of the plaintiffs’ constitutional rights. Moreover, the plaintiffs’ response to the motion for summary judgment does not attempt to demonstrate how the Association and its officers play a direct role in the adoption of the challenged statutes and regulations nor does it articulate any specific facts that show how the Association and its officers have conspired with and encouraged the Dental Board in the disciplinary actions instituted against Mr. Brazil or any dentists associated with the American Denture Center. Finally, given the uncontested statement of Mr. Butler regarding the limited functions performed by the Association, there seems to be no substance to the plaintiffs’ allegation that the Association has sought to advance its members’ pecuniary interests.

Thus, the Court must infer from the plaintiffs’ failure to come forward with any specific facts bearing upon its constitutional claims that no such facts exist. The Association and its officers are consequently entitled to summary judgment under rule 56(e).

It is therefore Ordered that the motion for summary judgment filed by the Association and its officers be, arid it is hereby, granted.

      . Thus the Association is purportedly not a "trade association,” which might have the specific function of advancing the commercial interests of its members. Cf. Rosebrough Monument Co. v. Memorial Park Cemetery Association, 736 F.2d 441 (8th Cir.1984).