author: CURTIN, Chief Judge.

text:
    Lara ANTKOWIAK, by her parent and natural guardian, John M. ANTKOWIAK, Plaintiff, v. Gordon M. AMBACH, as Commissioner of the New York State Education Department, Defendant.
    No. Civ.-85-532C.
    United States District Court, W.D. New York.
    Nov. 4, 1985.
    Neighborhood Legal Services, P.C. (James R. Sheldon, Jr., of counsel), Bouvier, O’Connor, Cegielski & Levine (Bruce A. Goldstein, of counsel), State University of New York at Buffalo Legal Assistance Program (Ronald M. Hager, of counsel), Buffalo, New York, for plaintiff.
    Robert Abrams, Atty. Gen. of the State of N.Y. (Peter B. Sullivan, Asst. N.Y. State Atty. Gen., of counsel), Buffalo, New York, for defendant.
   CURTIN, Chief Judge.

Pending before the court is defendant’s motion to dismiss pursuant to Rule 12(b) of the Federal Rules of Civil Procedure and plaintiff’s motion for a preliminary injunction. Plaintiff asserts claims under the Education of the Handicapped Act, 20 U.S.C. § 1400 et seq.; the Rehabilitation Act of 1973, 29 U.S.C. § 794; and 42 U.S.C. § 1983 for violations of the due process and equal protection guarantees of the Fourteenth Amendment. The court has considered the briefs and affidavits and, on October 31, 1985, heard oral arguments from counsel.

The essential facts in this matter are not in serious dispute and may be summarized briefly.

Plaintiff John M. Antkowiak is the father of Lara Antkowiak. He alleges that she has been deprived of an appropriate public education under the Education of the Handicapped Act. Plaintiff seeks an order directing that she be placed at the Hedges Treatment Center of the Devereux Foundation in Malvern, Pennsylvania [Hedges], and directing defendant to reimburse him for expenses incurred in making this placement at his own expense. Defendant urges that the complaint should be dismissed because plaintiff has failed to exhaust administrative remedies.

Lara Antkowiak is now 12 years of age and is diagnosed as having anorexia nervosa and various emotional problems. In June of 1983, Lara’s parents noticed that she seemed to withdraw from her friends and spent much of her time in her room. She did not seem to be growing. A pediatrician determined that her weight had remained constant for one year, from the end of the third grade until the end of the fourth grade. Throughout the summer of 1983, Lara lost weight. She was diagnosed as suffering from anorexia nervosa and was put on a special diet to gain one pound per week. When the diet failed and Lara continued to lose weight, her parents resorted to force-feeding her.

During 1983 and 1984, Lara was admitted three times to Strong Memorial Hospital in Rochester, New York [Strong], for treatment. Her latest stay in the hospital lasted from May 2, 1984, until May 15, 1985. After being in the psychiatric unit for a few months, she was placed in the adolescent unit in the hospital. During her hospital stay, attempts were made to have her receive individual tutoring. Finally, the hospital notified Lara’s parents that since she no longer needed acute medical care which was provided at Strong Memorial Hospital, she had to leave the hospital no later than April 24, 1985.

In the meantime, application had been made to the Buffalo City School District Committee on the Handicapped [COH] for assistance in obtaining a residential educational placement for Lara upon her discharge from Strong. On February 27, 1985, the COH determined that Lara suffered from an educational handicap and prepared a Phase 1 Individualized Educational Program [IEP], Applications were made to six residential programs in New York State, and all stated that they could not accept her.

On March 21, 1985, the COH submitted to the State Educational Department [SED] an application for approval by the Commissioner to contract with Hedges. This facility had been used before by the SED for out-of-state placement, but on April 17, 1985, the SED notified the COH that there was a hold on new admissions, so Lara’s admission could not be approved.

In the April 17, 1985, letter from the SED to the COH, the SED recommended that COH contact three additional in-state programs as potential placements for Lara. The applications were made, and rejections were received from each. The application to the Anderson School was rejected on April 29, 1985, the application to the Convalescent Hospital for Children on May 15, 1985, and the application to the Rhinebeck Country School on April 30, 1985.

Because of the notice from Strong that Lara had to leave the hospital by April 24, 1985, this suit was instituted and, as originally filed, included Strong Memorial Hospital as a defendant. After the suit was filed, Lara’s father, at the suggestion of the SED, visited two other facilities, but both determined that they could not meet her needs and could not accept her placement. Because she was not placed at any public or private facility and the hospital insisted that it could not care for her anymore, John Antkowiak made his own arrangement to have his daughter placed at Hedges on May 16, 1985.

Apparently, the SED is allowing the other New York State handicapped students who are currently residents at Hedges to remain there throughout the remainder of the 1984-85 school year and for the 1985-86 school year if alternative educational placements cannot be secured. This continuance of current placements was approved in spite of the fact that on May 9, 1985, Hedges was informed that it was removed from the list of approved schools. Lara’s educational program at the Devereux Day School is unapproved and has never sought approval.

Since the institution of this action, there has been communication and correspondence between plaintiff, plaintiff’s counsel, and the SED, but there have been no further recommendations made by the COH as to the placement of Lara. Plaintiff alleges that procedures provided by New York State education laws are inadequate and he had no alternative but to come to court. Exhaustion of State Remedies

Under the administrative process established by the State of New York, parents have the right to appeal a recommendation by the local COH to the Board of Education, which then appoints an impartial hearing officer. The determination of the Board of Education after a hearing may be appealed to the Commissioner of Education. New York State Education Law § 4404(1). If dissatisfied by the decision of the Commissioner, the parents may then seek judicial review.

Pursuant to the Education of the Handicapped Act, the state administrative remedies must be exhausted before a plaintiff turns to federal or state court. 20 U.S.C. § 1415(e)(2). The exhaustion requirement has been strictly enforced by the courts of this circuit. See Riley v. Ambach, 668 F.2d 635 (2d Cir.1981). Plaintiff claims that exhaustion is not required in this case. He urges that, since he agreed with the recommendation of the COH that Hedges was the only appropriate facility found for Lara, there was no dispute to take to a hearing. According to plaintiff, he was without any administrative remedy under New York law.

Pursuant to New York State Education Law § 4404(1):

If the recommendation of the committee on the handicapped is not acceptable to the parents or guardians of a child, or if the committee fails to make a recommendation within such period as may be required by regulations of the commissioner, such parents shall notify the board of education of this situation and the board shall appoint an impartial hearing officer to hear the appeal and make a recommendation to the board of education within such period of time as the commissioner by regulation shall determine. A record of proceedings before the hearing officer shall be maintained and made available to the parties. An appeal to the commissioner of education will lie from any determination of the board of education.

Honorable John T. Elfvin of this court addressed a similar claim in Smith v. Ambach, CIV-80-1086E (August 21, 1981). There, plaintiffs urged that the administrative process established by the State education laws is not applicable when parents and the COH agree on a placement. In the Smith case, the recommendation of the COH that the child be placed in a particular program was rejected by the local school board because the Commissioner had prohibited new enrollment in that program during the academic year. The court noted that a hearing is available when parents are dissatisfied with the COH recommendation, adding: “A fair reading of § 4404(1) suggests that a hearing is also available if parents are aggrieved by a decision of the Board of Education to reject a recommendation made by the COH.” Id. at 7-8.

The facts of this case are virtually indistinguishable from those in Shannon v. Ambach, CIV-81-0460, decided September 17, 1981, by Honorable George C. Pratt. The court found:

On the papers before the court it appears that when the Bay Shore school district reported to plaintiffs that the State Education Department had denied the request of Bay Shore’s committee on the handicapped to approve placement of Karilee at the New Interdisciplinary School for the 1979-80 school year, plaintiffs dropped the matter at that point and placed Karilee at the New Interdisciplinary School at their own expense. Plaintiffs did not request the committee on the handicapped to make a formal placement of Karilee from which they could have appealed through the statutory review process. In effect, plaintiffs are complaining that the commissioner has denied a request made by the committee on the handicapped; but plaintiffs did not pursue the matter to a decision even by the committee on the handicapped, let alone by the impartial hearing officer or the Commissioner of Education himself.

Plaintiffs in that case were found not to have exhausted their administrative remedies.

Plaintiff attempts to distinguish Shannon, apparently based on the number of alternatives explored by the COH before Mr. Antowiak enrolled Lara at Hedges on May 16, 1985. But, as in Shannon, plaintiff failed to pursue the matter to decision by the COH before turning to the courts. The SED notified the local COH that Hedges was not approved for new admissions on April 17, 1985. Six days later, plaintiff filed suit in this court.

At the time this suit was filed, plaintiff did not yet know that the three alternative schools explored by the COH at the suggestion of the State Education Department had rejected Lara. Even if he had this knowledge, however, plaintiff should have returned to the COH and requested an alternative recommendation. If the COH had said that it had no other recommendation, plaintiff could have sought a hearing pursuant to New York State Education Law § 4404(1). Under the Education of the Handicapped Act, it is the duty of the State to find appropriate placement for Lara. The court is aware that plaintiff believed he was forced to file suit in late April because Strong Memorial Hospital of Rochester, originally a defendant in this action, was threatening to release Lara. However, that issue could have been addressed in court while plaintiff simultaneously pursued his administrative remedies. Plaintiff has failed to exhaust his administrative remedies as required by the Act.

Plaintiff urges that he is not required to exhaust, because in this case, exhaustion would be futile. Riley, 668 F.2d at 640-41. Plaintiff claims the Commissioner has essentially predetermined Lara’s case. A similar argument was advanced by the plaintiffs in Riley. In that case, 18 children with learning disabilities challenged the Commissioner’s determination that such children needed to be diagnosed at a certain level of impairment before they could be deemed handicapped. They also challenged his decision barring residential placement to children who suffered solely from learning disabilities. The court noted that, while exhaustion might appear futile because the Commissioner had already decided against residential placement for a certain class of students, he might reverse himself in a “compelling case.” Riley, 668 F.2d at 642.

Plaintiff seeks to distinguish this case from Riley by pointing out that here, the State Education Department was aware of the facts of Lara’s case and declined to approve placement at Hedges with her individual situation in mind. However, the Buffalo COH was instructed to explore the possibility of placing Lara at other schools based on the currently unapproved status of Hedges. Hannah Flegenheimer, Director of Program Monitoring for the Office of Education of Children with Handicapping Conditions, stated that Hedges is, among other things, not sufficiently supervised. Many New York students who have attended Hedges have been returned to New York under emergency conditions (Flegenheimer affidavit).

No formal decision on Lara’s case has been made. It appears that the SED was provided with information concerning Lara’s condition, but there is no evidence that this information was considered or relied upon by the SED in rejecting the COH’s initial recommendation. In light of the fact that nine State schools were unable to take Lara, this may well be the compelling case in which the Commissioner reverses himself and permits Lara to enroll in an unapproved school. The issue has not been predetermined.

After the case has been reviewed by the Commissioner, he may find an acceptable school, either in state or out of state, to suit both Lara’s needs and the guidelines of the State of New York. The administrative process could also shed light on whether Lara’s problem is educational, medical, emotional, or a combination of all three. These issues must be addressed by the State Education Department.

Injunctive Relief

On the papers before the court, it appears that Lara Antkowiak suffers from a severe, life-threatening illness. Gunther Abraham, a clinical psychologist at Hedges, submitted an affidavit stating that Lara needs continued placement in an intensive 24-hour program if she is to make any progress (Abraham affidavit, U 15). He believes that Lara has, after several months, begun to establish a trusting relationship with her therapist and is now working diligently in therapy. Dr. Abraham stated that any disruption would cause irreversible harm (Abraham affidavit, ¶ 16).

Dr. Elizabeth McAnarney, who was one of Lara’s physicians at Strong Memorial Hospital, noted that any further loss of weight and physical deterioration could cause long-term damage. Lara is pre-pubescent and has not yet developed her full bone, metabolic, and organ growth (McAnarney affidavit, tí 26). Dr. McAnarney believed that returning to her home would put Lara in risk of weight loss (J. Antkowiak affidavit, ¶ 16). These are serious questions which must be faced in the context of this case.

In Vander Malle v. Ambach, 673 F.2d 49 (2d Cir.1982), the court held that exhaustion was not required, based on the limited relief sought. There, the parents sought a preliminary injunction requiring the State to pay for the interim maintenance of their son at an unapproved school pending the discovery of another placement which would satisfy the requirements of the Act. The injunction that issued in that case was of limited scope. It did not require continued placement at a particular institution pending litigation. The child was to be placed there only until an appropriate long-term placement was found. Id. at 51-52.

It is true, as defendant points out, that the relief sought by plaintiff in his amended complaint is much broader than the relief sought by plaintiffs in Vander Malle. However, during argument in open court, plaintiff revised his request for injunctive relief to be more in line with the relief approved by the Vander Malle court. He now indicates a willingness to proceed through the administrative process in search of alternative placement, but asks the court to issue a preliminary injunction ordering the State to assume Lara’s maintenance costs until an appropriate alternative placement is found.

There is one other significant difference between this case and Vander Malle. In Vander Malle, the boy had been placed in his school by the State at a time when the school was approved. The court looked to 20 U.S.C. 1415(e)(3) to find support for the proposition that the State must maintain the child in his then current placement. The court went on to note, however, that: “We can agree with the State defendants that § 1415(e)(3) does not require a State to undertake payments for continuation of a child’s placement that had been selected unilaterally by the parents.” Id. at 52. In this case, Lara was not placed at Hedges by the State.

Even if section 1415(e)(3) does not apply here, a preliminary injunction may still be appropriate. Under well known principles of law, a preliminary injunction shall issue if a plaintiff can show irreparable harm and either a likelihood of success on the merits or sufficiently serious questions going to the merits to make them a fair ground for litigation, with a balance of hardships tipping decidedly toward the party seeking preliminary relief. Jackson Dairy Inc. v. H.P. Hood and Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979).

In this case, there must be an even greater burden on plaintiff, since he seeks more than mere maintenance of the status quo. If afforded the relief he now seeks under Vender Malle, he will, to some degree, have been granted affirmative relief.

The record before me is insufficient to demonstrate irreparable harm. Plaintiff is to submit a detailed affidavit from Mr. Antkowiak describing the current financial status of himself and his wife. He shall describe what steps, if any, he has taken to attempt to secure additional money to fund Lara’s continued stay at Hedges. Plaintiff shall also submit affidavits from responsible personnel at Hedges explaining its general policy regarding patients without funds, its past practice, and what would happen to Lara if her parents stopped payments.

Additionally, plaintiff must show a probability of success on the issue as to whether the State has an interim obligation to fund Lara’s stay at Hedges until alternate placement is made. Since plaintiff placed his daughter at Hedges, it appears that he cannot rely on 20 U.S.C. § 1415(e)(3) to demonstrate a duty on the part of the State to fund Lara's interim stay.

The SED claims that there is no obligation on the part of the State to fund Lara’s stay, because the services sought by Lara are not educational, but medical and psychiatric, and so the State is not required to provide them. Under the Act, certain medical services are excluded from coverage. However, “related services” may be required to assist a handicapped child to benefit from special education. 20 U.S.C. § 1401[17], Irving Independent School District v. Tatro, — U.S. -, 104 S.Ct. 3371, 82 L.Ed.2d 664 (1984). Defendant urges that monitoring Lara’s food intake need not be performed during school hours and so is not covered by the Act. There is a serious question as to whether Lara’s problems are also educational in nature. If Lara’s needs are not educational, the SED would have no obligation, even interim, to fund Lara’s stay at the Hedges Treatment Center. Plaintiff must be prepared to demonstrate his likelihood of success on this issue.

The affidavits shall be filed on or before November 18, 1985. Any briefs or other information from both parties shall be filed on or before November 22, 1985. The parties shall meet with the court on November 25, 1985, at 2 p.m. to argue the merits of the application for preliminary injunction and to determine whether a hearing is necessary.

The decision on defendant’s motion to dismiss for failure to exhaust is deferred pending further proceedings in accordance with this order. Plaintiffs shall immediately resume the State administrative process. The court urges that the Buffalo COH, the Board of Education, and the Commissioner to act expeditiously on plaintiff’s application.

So ordered.


source: Caselaw Access Project

author: MacMAHON, District Judge.

license: Public Domain

text:
    RONALD LITOFF, LTD., Columbia Originals, Inc., Columbia Jewelry Contractors, Inc. and Obadiah Fisher, Plaintiffs, v. AMERICAN EXPRESS COMPANY, American Express Travel Related Services Co., Inc., A. Kush & Associates Limited and Weingeroff Enterprises, Inc., Defendants. AMERICAN EXPRESS COMPANY and American Express Travel Related Services Company, Inc., Third-Party Plaintiffs, Cross-Claimants and Counter-claimants, v. A. KUSH & ASSOCIATES LIMITED, Cross-Claim Defendants, and Columbia Originals, Inc., Columbia Jewelry Contractors, Inc. and Susan Klein and Obie Fisher (d/b/a Susan Obie), Counterclaim Defendants, and James Benedetto (a/k/a Jim Bennett), Raymond Litoff (a/k/a Ronald Litoff), Ronald Litoff, Ltd., Richard Klein and Weingeroff Enterprises, Inc., Third-Party Defendants.
    No. 83 Civ. 9432 (LFM).
    United States District Court, S.D. New York.
    Nov. 5, 1985.

      Christy & Viener by Wayne C. Matus and James G. White, New York City, for American Express Co. and American Express Travel Related Services Co., Inc.
    Brainerd & Bridges by Andrew W. Brainerd and Scott A. Brainerd, Chicago, Ill., and Ostrolenk, Faber, Gerb & Soffen by Edward Meilman, New York City, for A. Kush & Associates, Ltd. and Susan Klein.
    Joel S. Kaplan, Garden City, N.Y., and Scully, Scott, Murphy & Presser, P.C. by Anthony C. Scott, Garden City, N.Y., for Ronald Litoff, Ltd., Columbia Originals, Inc., Columbia Jewelry Contractors, Inc., James Benedetto, Raymond Litoff and Richard Klein.
    Cheryl Flax-Davidson, Brooklyn, N.Y., for Obadiah Fisher.
   MacMAHON, District Judge.

Defendants American Express Company, American Express Travel Related Services Company, Inc. (collectively referred to as “American Express”), and A. Kush & Associates, Ltd. (“Kush”) move to dismiss this action pursuant to Fed.R.Civ.P. 12(b)(6), or, alternatively, for summary judgment pursuant to Fed.R.Civ.P. 56(b). Defendant Kush also moves for disqualification of the attorneys for plaintiffs Ronald Litoff, Ltd. (“Litoff”), Columbia Originals, Inc. (“Columbia Originals”), and Columbia Jewelry Contractors, Inc. (“Columbia Jewelry”).

Background

Plaintiffs, jewelry manufacturers and designers, brought this suit pursuant to the Copyright Act of 1976, 17 U.S.C. §§ 101 et seq., and the Lanham Act, 15 U.S.C. §§ 1051 et seq. (1946), alleging copyright infringement, false representation and description, and related claims. Plaintiffs also allege numerous pendant state claims. The following facts are not in dispute.

In .1981, plaintiffs Litoff and Columbia Jewelry formed a joint venture, Columbia Originals. Columbia Originals proposed to American Express that it sell Columbia Originals’ jewelry through the mail to American Express cardholders. American Express directed Columbia Originals to defendant Kush, a company which organizes mail-order sales and with which American Express had previously done business.

Kush bought two kinds of jewelry from Columbia Originals for a test mailing to American Express cardholders: pendants representing the signs of the zodiac (“zodiac pendants”); and pendants in the form of letters of the alphabet (“initial pendants”). A test mailing of the zodiac pendants was conducted, and, on the basis of that mailing, American Express and Kush commenced a full-scale mailing of the zodiac pendants in October 1982.

The zodiac pendants had been designed by plaintiff Obadiah Fisher (“Fisher”) and counterclaim defendant Susan Klein (“Klein”) under a partnership doing business as Susan Obie. The Copyright Office issued a Certificate of Registration for the zodiac pendants in August 1980. Columbia Originals sold the zodiac pendants to Kush pursuant to a license agreement with Susan Obie.

A test mailing for the initial pendants was also conducted, and, on the basis of that test, American Express and Kush concluded that the initial pendants made by Columbia Originals were too expensive.

In January 1983, Kush made an agreement with defendant Weingeroff Enterprises, Inc. (“Weingeroff”), a jewelry manufacturer, to produce a less expensive set of initial pendants. Those pendants were sold to American Express cardholders through a mailing beginning in May 1983. The brochure used to advertise the pendants made by Weingeroff was the same one used for the Columbia pendants.

In September 1983, Litoff obtained copyrights for its initial pendants. In October 1983, the Copyright Office wrote to Litoff’s attorney stating that it had “considerable doubt that there is any copyrightable authorship in the three-dimensional rendering [of the letters of the alphabet, but] ... we have made the registration under the rule of doubt, for whatever the registrations may be worth.” In October 1984, the Copyright Office wrote to inform plaintiffs that an error had been made on the original copyright registrations. Those registrations had incorrectly indicated the nature of authorship as two-dimensional renderings; the basis of the registration was the three-dimensional renderings of the letters.

Columbia Originals and Weingeroff have each submitted a set of their initial pendants to the court.

American Express’ Motion for Summary Judgment on the Claims Involving the Zodiac Pendants

American Express argues that it is entitled to summary judgment on the claims pertaining to the zodiac pendants because there are no factual issues in dispute; most important, there is no dispute that all of the zodiac pendants sold by American Express had been bought from Columbia Originals by Kush.

Plaintiffs Litoff, Columbia Jewelry and Columbia Originals concede that all the zodiac pendants had been bought from them but claim that Kush attempted to have the pendants copied and that American Express, after returning the unsold zodiac pendants, advertised the pendants and planned to fill orders for the pendants with less expensive copies.

Plaintiff Fisher denies that all of the zodiac pendants had been bought from Columbia Originals. Fisher also argues that there was an unauthorized promotion of the zodiac pendants.

Plaintiffs have offered only an affidavit of James Benedetto (“Benedetto”), third-party defendant and president of Columbia Jewelry and Columbia Originals, in support of these allegations. Benedetto asserts that in June 1983 Klein told him that her mother had just received an advertisement from American Express for the zodiac pendants. Benedetto states that the advertisement was forwarded to him. He further states that he believes that Kush attempted to have the zodiac pendants copied but was unable to do so.

Such eonclusory allegations are insufficient to raise a genuine issue of fact. A litigant opposing summary judgment must give some affirmative indication that his version of the facts is not fanciful. A party may not rely on hearsay. The only evidence submitted here is hearsay and speculation. Plaintiffs have presented no admissible evidence of any infringement or even attempted infringement with respect to the zodiac pendants.

Defendants’ Motions to Dismiss and for Summary Judgment on the Claims Involving the Initial Pendants

Defendants move for summary judgment on the claims pertaining to the initial pendants on the ground that the notices of copyright on plaintiffs’ pendants were defective for the following reasons: (1) the sample pendants submitted to American Express for testing did not contain any copyright notice; (2) the notice on the pendants submitted for the test mailing consisted of a “c” that was not encircled; (3) the notice on the pendants, if any, was too small; and (4) plaintiff Litoff is not generally known by the initials “RL.”

Both sides have submitted some evidence to support their claims, and we find that defendants have failed to show that there are no genuine issues of fact in dispute. Further, we hold that, at least on the samples submitted to the court, the copyright notice, although small and somewhat difficult to read, is sufficient to satisfy the statutory requirements.

As an additional ground for summary judgment, defendant Kush claims that the initial pendants are not copyrightable. Alternatively, it argues that defendants did not infringe the copyrights because the pendants sold by defendants are different from those made by plaintiffs, and laches prevents plaintiffs from enforcing their copyrights against defendants.

There is no doubt that artistic jewelry is copyrightable. Certificates of copyright registration are “prima facie evidence of the validity of the copyright and the facts stated in the certificate.” Certificates do not create an irrebuttable presumption of validity, however, and a party may present evidence that the items are not copyrightable.

Here, plaintiffs have presented prima facie evidence of copyrightability, and we hold that defendants are not entitled to summary judgment on that ground. To the extent that the pendants may not be copyrightable because they are not original, as defendants argue, genuine issues of fact exist.

Further, there is certainly substantial similarity between the pendants of the parties, and there is no doubt that defendants had access to plaintiffs’ jewelry. Thus, defendants are not entitled to summary judgment on the grounds that the copyrights have not been infringed. Likewise, numerous issues of fact exist as to the applicability of the defense of laches.

American Express also claims that the third count of the amended complaint, for copyright infringement, should be dismissed because the Copyright Office withdrew its registrations for two-dimensional renderings of the letters, and the claim is based on the alleged use of photographs of the initial pendants. Plaintiffs argue that, in spite of the absence of a copyright for two-dimensional renderings, the three-dimensional copyright precludes American Express from using photographs of plaintiffs’ pendants. Because the parties have submitted and the court has considered matters outside the pleadings, the court will treat this motion as a motion for summary judgment.

American Express’ claim is without merit. Use of a photograph of a copyrighted item can constitute copyright infringement even though a photograph is undoubtedly two dimensional and the copyrighted item has three dimensions.

American Express argues that the fifth count of the amended complaint should be dismissed because plaintiffs cannot show that the pendants have acquired secondary meaning, an essential fact of a claim for false designation of origin under Section 43(a) of the Lanham Act. Plaintiffs respond that they are not alleging false designation of origin, but rather asserting claims that do not require a showing of secondary meaning, namely, claims for false representation and description. Here, too, the parties have submitted and the court has considered matters outside the pleadings, and, thus, the court will treat this motion as one for summary judgment. As to these claims, material issues of fact exist. For example, there is a dispute whether the diamond on the pendants sold by defendants was the same size as advertised.

Defendant Kush also contends that numerous counts of the amended complaint fail to state causes of action and, therefore, should be dismissed pursuant to Fed.R. Civ.P. 12(b)(6). Under the liberal notice pleading requirements of the Federal Rules of Civil Procedure, the pleadings here are sufficient, though hopefully will never serve as models.

Defendant's’ Motions to Dismiss the Pendant State Claims Pursuant to Section 301 of the Copyright Act

Defendants argue that all of plaintiffs’ pendant state claims, counts six through sixteen of the amended complaint, should be dismissed because those claims are preempted by the Copyright Act.

Section 301 sets forth a two-pronged test to determine whether a state claim is preempted under the Copyright Act. First, the work at issue must be within the subject matter of copyright. Second, the rights granted by the state law must be equivalent to the rights protected by the Copyright Act. When the rights defined by the state law would be infringed by an act which, in and of itself, would infringe one of the rights protected by the Copyright Act, the state law is preempted. There is no preemption when violation of the state law requires acts other than those protected by copyright. Defendants do not dispute that the first prong is satisfied in this case. Rather, defendants contend that all of the pendant state claims are equivalent to copyright infringement claims.

Count six of the amended complaint is entitled “Unfair Competition/Passing Off.” Although some claims for unfair competition are preempted, the “passing off” variety asserts claims qualitatively different from those protected by copyright.

Counts eight and ten of the amended complaint allege unfair competition and unjust enrichment, respectively. As noted, most claims for unfair competition are preempted. Although, as part of count eight, plaintiffs allege a wrong not protected by copyright, namely, a breach of a confidential relationship, that claim is cognizable and alleged in plaintiffs’ claim for misappropriation, count fourteen. Absent that element, plaintiffs’ claim is equivalent to a copyright claim and thus preempted. Likewise, plaintiffs’ claim for unjust enrichment seeks redress for the alleged use of photographs of and imitation of plaintiffs’ pendants. Those claims are the same rights of reproduction, distribution and display which plaintiffs seek to protect in their copyright claim.

Count eleven of the amended complaint is for breach of contract. That claim is qualitatively different from a copyright claim and therefore not preempted by Section 301.

Count twelve of the amended complaint alleges that defendants’ retention and use of the pendants constituted a tortious conversion of plaintiffs’ intellectual and personal property. Insofar as plaintiffs allege a tort involving personal, tangible property, their claim is not preempted. Insofar as plaintiffs allege a claim involving intellectual property, assuming such a claim for conversion exists, their claim is equivalent to a copyright claim and is preempted.

As noted plaintiffs also assert a claim for misappropriation, count fourteen of the amended complaint. That New York tort has been held to include a breach of fiduciary duty, an element plaintiffs have alleged. That element is different from and additional to those protected by copyright, and, thus, Section 301 does not preempt this claim. So, too, plaintiffs’ claim for false advertising under the General Business Law of New York, count fifteen of the amended complaint, is qualitatively different from copyright claims.

Plaintiffs’ final claim alleges a violation of Article 12E of N.Y. General Business Law (McKinney 1983). That statute has been repealed and replaced by Article 14 of N.Y. Arts and Cultural Affairs Law (McKinney 1984). That article provides, as did Article 12E, that the right of reproduction of a work of art which is sold or transferred remains with the grantor unless it passes into the public domain, or it is expressly transferred in writing. Arts and Cultural Affairs Law § 14.03. Plaintiffs’ claims under this statute, that defendants made unauthorized and unlawful copies of plaintiffs’ pendants, are the same as those under the Copyright Act. Thus, notwithstanding the last subsection of § 14.03, which provides that Article 14 shall not be construed to conflict with federal copyright law, plaintiffs’ final count is preempted by the Copyright Act.

Motion to Disqualify Attorneys for Plaintiffs Litoff, Columbia Jewelry and Columbia Originals

Defendant Kush moves to disqualify Joel Kaplan, Esq. and Scully, Scott, Murphy & Presser, P.C. from representing plaintiffs Litoff, Columbia Jewelry and Columbia Originals on the grounds that those attorneys represented Klein, formerly a plaintiff and now a third-party defendant, and that they learned confidential information from her. Plaintiffs cross-move to strike defendant Kush’s motion or sever and continue the motion for further discovery. Plaintiffs argue that Judge Griesa, to whom this case was previously assigned, twice denied this same motion, and that Kush’s attorney has unclean hands since he presently represents Klein and met with her, without her attorney, at a time when she was represented by counsel.

We see no reason to depart from Judge Griesa’s rulings. Kush’s voluminous arguments notwithstanding, no new evidence has been presented warranting disqualification of plaintiffs’ attorneys.

Accordingly:

1. We grant the motion of defendants American Express Company and American Express Travel Related Services Company, Inc. for partial summary judgment in their favor on the claims of plaintiffs Ronald Litoff, Ltd., Columbia Originals, Inc. and Columbia Jewelry Contractors, Inc. involving the zodiac pendants (Claims 1, 4, 7, 9 and 13 of the amended complaint), and we award costs to these defendants for this motion.

2. We grant partial summary judgment, sua sponte, in favor of defendants A. Kush & Associates, Ltd. and Weingeroff Enterprises, Inc. on the claims of plaintiffs Ronald Litoff, Ltd., Columbia Originals, Inc. and Columbia Jewelry Contractors, Inc. involving the zodiac pendants.

3. We grant summary judgment, sua sponte, in favor of all defendants against plaintiff Obadiah Fisher, whose only claims involve the zodiac pendants.

4. We grant defendants’ motions to dismiss pendant state claims 8, 10 and 16 of the amended complaint of plaintiffs Ronald Litoff, Ltd., Columbia Originals, Inc. and Columbia Jewelry Contractors, Inc. because those claims are preempted by Section 301 of the Copyright Act.

5. We deny defendants’ motions and plaintiffs’ cross-motion in all other respects.

Settle judgment on notice within ten (10) days not inconsistent with this opinion.

      . Quinn v. Syracuse Model Neighborhood Corp., 613 F.2d 438, 445 (2d Cir.1980).

      . Fed.R.Civ.P. 56(e); Union Ins. Soc. v. William Gluckin & Co., 353 F.2d 946, 952 (2d Cir.1965).

      . See Ted Arnold Ltd. v. Silvercraft Co., 259 F.Supp. 733, 734 (S.D.N.Y.1966).

      . 37 C.F.R. § 202.10(a); Cynthia Designs, Inc. v. Robert Zentall Inc., 416 F.Supp. 510 (S.D.N.Y. 1976).

      . 17 U.S.C. § 410(c).

      . Durham Industries Inc. v. Tomy Corp., 630 F.2d 905, 908 (2d Cir.1980).

      . See Durham Industries Inc. v. Tomy Corp., supra, 630 F.2d at 911.

      . Fed.R.Civ.P. 12(b)(6).

      . See Tennessee Fabricating Co. v. Moultrie Mfg. Co., 421 F.2d 279 (5th Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1819, 26 L.Ed.2d 91 (1970); 2 Nimmer § 8.01(b).

      . Fed.R.Civ.P. 12(b)(6).

      . 17 U.S.C. § 301. Counts seven, nine and thirteen pertain to the zodiac pendants. In view of our ruling on the summary judgment motion, they are not discussed here.

      . 17 U.S.C. § 301.

      . Harper & Row Publishers, Inc. v. Nation Enterprises, 723 F.2d 195, 200 (2d Cir.1983), rev’d on other grounds, — U.S. -, 105 S.Ct. 2218, 85 L.Ed.2d 588 (1985).

      . Oboler v. Goldin, 714 F.2d 211, 213 (2d Cir. 1983).

      . Warner Bros. v. American Broadcasting Cos., 720 F.2d 231, 247 (2d Cir.1983); 1 Nimmer § 1.01(B)(1) n. 47.

      . Oboler v. Goldin, supra, 714 F.2d at 213.

      . See 1 Nimmer § 1.01(B)(1) pp. 1-20, 1-21.

      . 1 Nimmer § 1.01(B)(1) pp. 1-13.

      . Harper & Row Publishers, Inc. v. Nation Enterprises, supra, 723 F.2d at 201.

      . 1 Nimmer § 1.01(B)(1) n. 75.1; Werlin v. Reader’s Digest Ass’n, Inc., 528 F.Supp. 451, 464 (S.D.N.Y.1981).

      . See IB J. Moore, Federal Practice ¶ 0.404[4-2] (2d ed. 1984).


author: JAMES R. MILLER, Jr., District Judge.

text:
    UNITED STATES of America v. Chyrea “Tippy” CAMPBELL.
    Civ. A. No. M-85-0480.
    United States District Court, D. Maryland.
    Nov. 5, 1985.

      Catherine C. Blake, U.S. Atty., for the District of Maryland, Charles P. Scheeler, Asst. U.S. Atty., Baltimore, Md., for plaintiff.
    Michael J. Morrissey, Vienna, Va., for defendant Campbell.
   MEMORANDUM

JAMES R. MILLER, Jr., District Judge.

Defendant Campbell has argued, in support of his Motion for Review of the Magistrate’s detention order, the unconstitutionality of the Bail Reform Act of 1984. Briefs were filed by both sides and argument held in open court on November 1, 1985 on this issue. As announced after argument in open court at that time, the Court disagrees with the defendant’s position. The following is a brief additional explanation of the Court’s rationale.

The defendant argues that the rebuttable presumption in 18 U.S.C. § 3142(e), against release of an individual charged with an offense for which a maximum imprisonment of 10 years or more is prescribed in the Controlled Substances Act, is unconstitutional because it:

(1) violates the Eighth Amendment’s proscription against excessive bail;

(2) violates the defendant’s due process rights; and

(3) violates the Equal Protection Clause.

As the government points out, these same arguments have been previously rejected by other federal courts. United States v. Jessup, 757 F.2d 378 (1st Cir. 1985); United States v. Freitas, 602 F.Supp. 1283 (N.D.Cal.1985); United States v. Acevedo-Ramos, 600 F.Supp. 501 (D.P.R.1984), aff'd, 755 F.2d 203 (1st Cir. 1985); United States v. Hazzard, 598 F.Supp. 1442 (N.D.Ill.1984); United States v. Aiello, 598 F.Supp. 740 (S.D.N.Y.1984).

As to his Eighth Amendment claim, defendant apparently relies upon the language in Stack v. Boyle, 342 U.S. 1, 72 S.Ct. 1, 96 L.Ed. 1 (1951), to argue that defendant has a constitutional right to bail. The Court stated:

“From the passage of the Judiciary Act of 1789, 1 Stat. 73, 91, to the present Federal Rules of Criminal Procedure, Rule 46(a)(1), federal law has unequivocally provided that a person arrested for a non-capital offense shall be admitted to bail. This traditional right to freedom before conviction permits the unhampered preparation of a defense, and serves to prevent the infliction of punishment prior to conviction. See Hudson v. Parker, 156 U.S. 277, 285 [15 S.Ct. 450, 453, 39 L.Ed. 424] (1895). Unless this right to bail before trial is preserved, the presumption of innocence, secured only after centuries of struggle, would lose its meaning.”

342 U.S. at 4, 72 S.Ct. at 3 (emphasis in original). While this language tends to support an argument that there is a right to bail before trial, the defendants in Stack were afforded bail, but they argued that the bail fixed was excessive. As the government points out, in Carlson v. Landon, 342 U.S. 524, 72 S.Ct. 525, 96 L.Ed. 547 (1952), decided by the Supreme Court later in the same term, the Court rejected a claim by detained alien Communists that they had a right to bail under the Eighth Amendment while awaiting hearings on deportation. The Court found:

“The bail clause [of the Eighth Amendment] was lifted with slight changes from the English Bill of Rights Act. In England that clause has never been thought to accord a right to bail in all cases, but merely to provide that bail shall not be excessive in those cases where it is proper to grant bail. When this clause was carried over into our Bill of Rights, nothing was said that indicated any different concept. The Eighth Amendment has not prevented Congress from defining the classes of cases in which bail shall be allowed in this country. Thus in criminal cases bail is not compulsory where the punishment may be death. Indeed, the very language of the Amendment fails to say all arrests must be bailable. We think, clearly, here that the Eighth Amendment does not require that bail be allowed under the circumstances of these cases.”

342 U.S. at 545-46, 72 S.Ct. at 536-37 (emphasis added) (footnotes omitted).

Other cases, such as United States v. Edwards, 430 A.2d 1321 (D.C.Ct.App.1981) (en banc), cert. denied, 455 U.S. 1022, 102 S.Ct. 1721, 72 L.Ed.2d 141 (1982), and United States ex. rel. Covington v. Coparo, 297 F.Supp. 203 (S.D.N.Y.1969), cases cited by the government, have analyzed the issue in light of these two cases and held that there is no absolute right to bail under the Eighth Amendment. The courts rejecting the constitutional attacks on the Bail Reform Act of 1984 have relied on these cases in rejecting such attacks. See United States v. Freitas, 602 F.Supp. at 1287; United States v. Acevedo-Ramos, 600 F.Supp. at 506-07; United States v. Hazzard, 598 F.Supp. at 1448-49.

Additionally, these cases have compared the provision in the Bail Reform Act of 1984 to that in Schall v. Martin, 467 U.S. 253, 104 S.Ct. 2403, 81 L.Ed.2d 207 (1984), in which the Supreme Court upheld a New York statute which authorized pretrial detention of an accused juvenile if the judge found a serious risk that the juvenile might commit another crime before his return date. To the extent that defendant asserts that dangerousness to the community is not a proper consideration for pretrial determination, such an argument must fail under Schall. As the court in Freitas stated:

“Although the concept of permitting an assessment of the defendant’s dangerousness represents a significant change in federal bail law, this Court is satisfied that Congress’ determination of the need to protect the community represents a sufficient compelling reason to detain an accused prior to trial. The Supreme Court has not confronted this precise issue, but a recent due process case upholding the pretrial detention of juveniles on the basis of dangerousness strongly suggests that the Eighth Amendment does not foreclose a court from considering this factor in denying bail to adults.
Schall v. Martin, [467] U.S. [253], 104 S.Ct. 2403, 81 L.Ed.2d 207 (1984). See also United States v. Hazzard, 598 F.Supp. 1442 (N.D.Ill.1984). In Schall, the Supreme Court emphasized ‘the legitimate and compelling state interest in protecting the community from crime’ and it specifically rejected the argument that future criminal conduct cannot be predicted with sufficient accuracy to meet the objectives of a preventive detention statute. 104 S.Ct. at 2410, 2417-18. Accordingly, this Court concludes that the Eighth Amendment does not forbid pretrial detention based on dangerousness.”

602 F.Supp. at 1287-88.

The argument that the presumption violates the Due Process Clause is also without merit. Plaintiff’s citation of Leary v. United States, 395 U.S. 6, 89 S.Ct. 1532, 23 L.Ed.2d 57 (1969), is misplaced. That case concerned a presumption, that a possessor of marihuana knew that it was imported illegally, which was used to convict the defendant of the substantive offense.

As the First Circuit stated in Jessup: “the Leary Court applied this standard to a presumption in the context of a full blown criminal trial, where the presumption was used to establish an important element of the crime that was charged. Here, on the other hand, we deal with a presumption that is applied to a preliminary hearing, where decisions must be made quickly and where the purpose is not to punish but to increase the likelihood that the trial will go forward. It is well established that the constitutional guarantees at such hearings are less protective of defendants than at trial. Cf. Gerstein v. Pugh, 420 U.S. 103, 111-14, 95 S.Ct. 854, 861-63, 43 L.Ed.2d 54 (1975); United States v. Edwards, 430 A.2d 1321, 1333-37 (D.C.App.1981), cert. denied, 455 U.S. 1022, 102 S.Ct. 1721, 72 L.Ed.2d 141 (1982). And, what is more to the point, the evidentiary burdens imposed upon the government are also less severe. Cf. Gerstein v. Pugh, 420 U.S. at 121, 95 S.Ct. at 866 (approving ‘informal modes of proof in probable cause hearings). The Constitution does not require as great a degree of certainty for charging or for securing the presence at trial of one charged as for convicting that person at a criminal trial. In this context then, the substantial basis of information underlying ‘drug offender/flight’ conclusions is sufficient to meet the Constitution’s requirement of adequate support for a presumption. We reject Jessup’s claim that more support is necessary.”

757 F.2d at 386-87.

Defendant also asserts that his detention violates his due process rights, citing Bell v. Wolfish, 441 U.S. 520, 99 S.Ct. 1861, 60 L.Ed.2d 447 (1979). To the extent that such argument is intended to assert that pretrial detention infringes upon defendant’s presumption of innocence, such an argument lacks merit.

“The Supreme Court has specifically held that the presumption of innocence, which describes the burden of proof in criminal trials, has ‘no application to a determination of the rights of a pretrial detainee during confinement before his trial has even begun.’ Bell v. Wolfish, 441 U.S. at 533, 99 S.Ct. at 1870.”

Freitas, 602 F.Supp. at 1292.

Defendant may also be asserting, as have others before, that pretrial detention is punishment which is being imposed “pri- or to an adjudication of guilt in accordance with due process of law.” Bell v. Wolfish, 441 U.S. at 535, 99 S.Ct. at 1872. To the extent that this is defendant’s argument, it also lacks merit. As the court in Hazzard found, “[p]retrial detention does not punish past conduct but rather protects the community from reasonably predictable future conduct____ As in Schall there is no justification for the conclusion that the statute is a punitive rather than a regulatory measure.” 598 F.Supp. at 1451. See also Acevedo-Ramos, 600 F.Supp. at 505; Edwards, 430 A.2d at 1331-32; Blunt v. United States, 322 A.2d 579, 584 (D.C.Ct. App.1974).

Finally, defendant asserts that the statute violates the Equal Protection Clause. Initially, he asserts, apparently, that no rational basis in fact exists for the law. The Jessup court, however, found that “the drug offender/flight presumption seems a reasonable response to this general problem [of drug offenders posing a special risk of flight], requiring that a charged drug offender produce some evidence that he does not present a special risk.” 757 F.2d at 385-86.

As the legislative history of the Bail Reform Act of 1984 makes clear, the commission of crimes by defendants while on pretrial release, thereby creating a risk of danger to the community, was of particular concern to Congress.

“This broad base of support for giving judges the authority to weigh risks to community safety in pretrial release decisions is a reflection of the deep public concern, which the Committee shares, aboút the growing problem of crimes committed by persons on release. In a recent study of release practices in eight jurisdictions, approximately one out of every six defendants in the sample studied were rearrested more than once, and some were rearrested as many as four times____ The disturbing rate of recidivism among released defendants requires the law to recognize that the danger a defendant may pose to others should receive at least as much consideration in the pretrial release determination as the likelihood that he will not appear for trial.”

S.Rep. No. 225, 98th Cong., 2d Session 6 (1984), reprinted in 1984 U.S.Code Cong. & Admin.News, pp. 3182, 3188-89 (footnotes omitted). In defining “dangerousness,” the Senate Report noted that “[t]he Committee intends that the concern about safety be given a broader construction than merely danger of harm involving physical violence,” and emphasized that “the risk that a defendant will continue to engage in drug trafficking constitutes a danger to the ‘safety of any other person or the community.’ ” S.Rep. No. 225, 98th Cong., 2d Session 12-13, 1984 U.S.Code Cong. & Admin.News, pp. 3195-96.

In explaining its rationale for the rebut-table presumption arising under § 3142(e), the report stated:

“The drug offenses [under which the presumption arises] involve either trafficking in opiates or narcotic drugs, or trafficking in large amounts of other types of controlled substances. It is well known that drug trafficking is carried on to an unusual degree by persons engaged in continuing patterns of criminal activity. Persons charged with major drug felonies are often in the business of importing or distributing dangerous drugs, and thus, because of the nature of the criminal activity with which they are charged, they pose a significant risk of pretrial recidivism. Furthermore, the Committee received testimony that flight to avoid prosecution is particularly high among persons charged with major drug offenses. Because of the extremely lucrative nature of drug trafficking, and the fact that drug traffickers often have established substantial ties outside the United States from whence most dangerous drugs are imported into the country, these persons have both the resources and foreign contacts to escape to other countries with relative ease in order to avoid prosecution for offenses punishable by lengthy prison sentences. Even the prospect of forfeiture of bond in the hundreds of thousands of dollars has proven to be ineffective in assuring the appearance of major drug traffickers. In view of these factors, the Committee has provided in section 3142(e) that in a case in which there is probable cause to believe that the person has committed a grave drug offense, a rebutable presumption arises that no condition or combination of conditions will reasonably assure the appearance of the person and the safety of the community.”

S.Rep. No. 225, 98th Cong., 2d Session 20, 1984 U.S.Code Cong. & Admin.News, p. 3203 (footnotes omitted). The report specifically rejected the possibility that a defendant should be released simply because substantial community ties exist, stating:

“The Committee also notes, with respect to the factor of community ties, that it is aware of the growing evidence that the presence of this factor does not» necessarily reflect a likelihood of appearance, and has no correlation with the question of the safety of the community. While the Committee considered deleting the factor altogether, it has decided to retain it at this time. However, the Committee wishes to make it clear that it does not intend that a court conclude there is no risk of flight on the basis of community ties alone; instead, a court is expected to weigh all the factors in the case before making its decision as to risk of flight and danger to the community.”

S.Rep. No. 225, 98th Cong., 2d Session 24-25, 1984 U.S.Code Cong. & Admin.News, pp. 3207-08 (footnote omitted).

Considering the legislative history of the Act, in view of Congress’ legitimate interest in protecting society, the Court concurs with the finding of the Jessup court that Congress’ conclusions regarding certain drug offenders’ posing a danger to the community and a risk of flight are not without substantial basis in fact, and that Congress’ solution, in the form of the rebuttable presumption set forth in § 3142(e), is reasonable. See United States v. Jessup, 757 F.2d at 386.

Similarly, defendant asserts that pretrial detention “is not the least intrusive method available to Congress to assure the presence of a defendant at trial.” Following Schall, however, it appears clear that pretrial detention may be based on the defendant’s being a danger to the community.

Defendant also cites Hunt v. Roth, 648 F.2d 1148 (8th Cir.1981), vacated as moot sub. nom., Murphy v. Hunt, 455 U.S. 478, 102 S.Ct. 1181, 71 L.Ed.2d 353 (1982), for the proposition that it is unconstitutional to carve out certain offenses for different treatment in determining whether to grant or deny bail. In Hunt, however, the Eighth Circuit held unconstitutional a Nebraska statute which denied bail to all persons charged with certain sex offenses. The statute was held unconstitutional because it created an irrebuttable presumption, and the court expressly refused to decide that there was a right in every case to release on bail.

“We do not hold and need not decide that there is a constitutional right in every ease to release on bail. As we have discussed, there exists a strong argument that bail may be properly denied without encroaching on constitutional concerns where a judicial officer weighs all the appropriate factors and makes a reasoned judgment that the defendant’s past record demonstrates that bail will not reasonably assure his or her appearance or, arguendo, that he or she, because of the overall record and circumstances, poses a threat to the community. The fatal flaw in the Nebraska constitutional amendment is that the state has created an irrebuttable presumption that every individual charged with this particular offense is incapable of assuring his appearance by conditioning it upon reasonable bail or is too dangerous to be granted release.”

648 F.2d at 1164 (footnote omitted).

The reasoning used by the Hunt court is not applicable to this case, since the statute here in issue sets up a presumption which can be rebutted by the defendant.

For these and other reasons stated in open court, the Court has concluded that defendant’s challenge to the provision of the Bail Reform Act of 1984, creating a rebuttable presumption for defendants indicted for crimes such as that in the present case, is without merit. The Magistrate’s determination that the defendant should be detained is affirmed.

It has been SO ORDERED.

The Clerk shall mail a copy of this Memorandum to counsel for the parties.


author: DALY, Chief Judge.

text:
    Michael ALSTON, Petitioner, v. Raymond LOPES, Respondent. James HASKINS, Petitioner, v. Raymond LOPES, Respondent.
    Civ. Nos. B-83-464(TFGD), B-82-1006(TFGD).
    United States District Court, D. Connecticut.
    Nov. 5, 1985.

      David N. Rosen, New Haven, Conn., for petitioner Alston.
    John R. Williams, New Haven, Conn., for petitioner Haskins.
    Arnold Markle, State’s Atty., Julia Dewey, Ass’t State’s Atty., New Haven, Conn., for respondent.
   RULING ON PETITIONS FOR WRITS OF HABEAS CORPUS

DALY, Chief Judge.

Petitioners Michael Alston and James Haskins were arrested in New Haven on May 3, 1974 in connection with the armed robbery of a New Haven Savings Bank branch. Petitioners were later tried and convicted of armed robbery in United States District Court and each received twenty-five year sentences. Petitioners then were brought to trial in Connecticut Superior Court on state assault charges for the shooting of two New Haven police officers which occurred as petitioners attempted to evade police custody following the robbery. Both petitioners were convicted and, on appeal to the Connecticut Supreme Court, the convictions were affirmed. State v. Haskins, 188 Conn. 432, 450 A.2d 828 (1982).

After having exhausted their state remedies, petitioners applied to this Court for writs of habeas corpus. Petitioners challenge the jury selection system in New Haven County on grounds that the exclusion or underrepresentation of various groups violated their constitutional rights under the Sixth and Fourteenth Amendments. Petitioners claim that Blacks, women, students, indigents, certain age groups, persons with low levels of education, felons, those who expressed a dissatisfaction with the United States government, and those engaged in certain occupations were either unconstitutionally excluded or substantially underrepresented on the jury arrays. In addition to their jury selection claims, the petitioners allege a denial of constitutional rights resulting from the exclusion of certain identification testimony, limitations placed on cross-examination, and the trial court’s refusal to allow the questioning of jurors concerning the possible influences of pre-trial publicity. The Connecticut Supreme Court dismissed all of the petitioners’ claims and affirmed the convictions. State v. Haskins, 188 Conn. 432, 450 A.2d 828 (1982). Since the Court finds the underrepresentation of Blacks caused by the jury selection system violated the equal protection clause of the Fourteenth Amendment, only the petitioners’ jury selection claims will be addressed.

Jury Selection Claims

Petitioners claim that the Connecticut jury selection procedure, as prescribed by former Connecticut General Statutes Section 51-220, caused a substantial underrepresentation of Blacks on the New Haven County jury array, thereby depriving them of equal protection of the laws in violation of the Fourteenth Amendment. In support of their claim, the petitioners have introduced evidence at a hearing before the Court consisting of a statistical analysis of the claimed underrepresentation caused by section 51-220.

The Connecticut statute in question assigns towns falling within a specified population range a fixed quota of jurors that each town must fill in supplying jurors to the county jury array. The town quota system, however, does not fix the quota of jurors in proportion to the size of the town’s population. Petitioner’s exhibit 2 demonstrates the results of the failure to make the town’s quota proportionate to the size of its population. Beacon Falls is the smallest town in New Haven County with a population of 3,546. According to section 51-220, Beacon Falls is required to meet a quota of ninety jurors. New Haven is the largest city in New Haven County with a population of 137,707. New Haven has a quota of 1,012 jurors. Yet, 90 jurors represents 2.5% of Beacon Fall’s population, while 1012 jurors represents only 0.7% of New Haven’s population. Petitioners thus allege that the town quota system creates a bias in favor of overrepresenting small towns on the jury arrays in New Haven County, while underrepresenting large towns.

Using census figures taken from the 1970 census of New Haven County, the petitioners demonstrated a correlation between the size of an individual town’s population and the proportionate size of its Black community. These figures indicate that in smaller towns, the Black population makes up a smaller percentage of the town’s population than in larger towns where the percentage of the Black population is proportionately higher. The petitioners argue that Blacks are therefore underrepresented on jury arrays since the statute causes an overrepresentation of smaller towns on the jury array with proportionately smaller Black populations than those of larger towns and cities.

In their petitions, Alston and Haskins have quantified the claimed exclusion of Blacks from the jury array by comparing the estimated number of Black jurors appearing in an array representative of the Black population with the expected number of Blacks appearing in an array formed by the town quota system. More specifically, in a representative array of 8,405 prospective jurors, 501 Black jurors ought to appear, since the population of New Haven County is 5.96% Black. Under the town quota system, however, the expected number of Black jurors falls to 368. According to petitioners, the town quota system creates an exclusion of 133 Black jurors from the number one would expect to find had the jury array been representative of the entire community.

To demonstrate the significance of the claimed exclusion, the petitioners employ a statistical probability analysis which calculates the probability of such an exclusion occurring by chance at less than three in one billion. The state does not challenge the accuracy or propriety of these statistics, but rather contends that any underrepresentation of Blacks on the New Haven County jury array was due to the voter registration lists used to select jurors within each town.

Discussion

The United States Supreme Court in Castaneda v. Partida, 430 U.S. 482, 97 S.Ct. 1272, 51 L.Ed.2d 498 (1977), established the elements of a prima facie case challenging jury selection procedures which violate the Fourteenth Amendment. First, a defendant must show that the excluded group is distinctive and cognizable within the community. Id. at 494, 97 S.Ct. at 1280. Second, the underrepresentation must be substantial. Id. This showing of substantiality is also known as the “rule of exclusion”. As a third consideration, the Court noted that a selection procedure which is susceptible of abuse or not racially neutral, lends further support to a statistical showing of purposeful discrimination. Id. Once a defendant has established a prima facie case under Castaneda, the burden of proof shifts to the state to rebut a presumption of intentional discrimination by showing that the manner of jury selection serves a legitimate state purpose. Id. at 497-98, 97 S.Ct. at 1281-82.

The petitioners have met the first element of an equal protection challenge under Castaneda. The Supreme Court has expressly recognized that Blacks are a cognizable group for purposes of challenging jury selection procedures in Carter v. Jury Commission, 396 U.S. 320, 90 S.Ct. 518, 24 L.Ed.2d 549 (1970). Petitioners have also satisfied Castaneda’s third criterion in making out a prima facie challenge to the jury selection statute. Even assuming that the town quota system was mechanically applied and devoid of any subjective determinations made by jury selection officials, the statute operates directly to exclude Blacks from the jury array. Since the statute itself mandates the exclusion of Blacks, evidence of abuse in its application is irrelevant to the issue of discriminatory intent on the part of the legislature. The very structure of the statute provides support for the presumption of discriminatory purpose raised by the statistical showing.

The remaining issue then is whether petitioners have satisfied the rule of exclusion as Castaneda’s second element of an equal protection claim. As noted above, the petitioners rely heavily on a probability analysis in demonstrating that the claimed exclusion is substantial. This method of determining substantial underrepresentation is known as Statistical Decision Theory (SDT). Proponents of SDT stress that it is a more precise indicator of intentional underrepresentation than that measured by the absolute disparity method. See Finklestein, The Application of Statistical Decision Theory to the Jury Discrimination Cases, 80 Harv.L.Rev. 338 (1966). The absolute disparity test compares the percentage of the excluded group appearing on jury arrays with the percentage of the group appearing in the general population. Statistical Decision Theory, however, measures the probability that a given exclusion would occur by chance rather than by design. Under this analysis, a low probability that an exclusion would occur merely by chance has been considered sufficient to raise a presumption of discriminatory intent. See, e.g., Castaneda v. Partida, 430 U.S. at 496 n. 17, 97 S.Ct. at 1281 n. 17; Villafane v. Manson, 504 F.Supp. 78 (D.Conn.1980); Hillery v. Pulley, 563 F.Supp. 1228 (E.D.Cal.1983).

Unlike the absolute disparity method, SDT takes into account the size of the group being evalutated. See Moultrie v. Martin, 690 F.2d 1078, 1083 (4th Cir.1982). This analysis is particularly useful when the population being considered is relatively small. Id. at 1083. Where the excluded group represents only a small percentage of the entire community, the difference between the percentage of the group appearing on the jury array and the percentage of the group appearing in the general population is correspondingly small. As measured by the absolute disparity method, small disparities are not considered sufficient to satisfy the substantiality requirement. See, e.g., Swain v. Alabama, 380 U.S. 202, 85 S.Ct. 824, 13 L.Ed.2d 759 (1965) (11-16% disparity insufficient under Fourteenth Amendment). Statistical Decision Theory, however, can accurately measure the probability of intentional discrimination even where small samples are involved. See Moultrie, 690 F.2d at 1083; Villafane, 504 F.Supp. at 86. Accordingly, application of SDT is particularly appropriate where, as here, the excluded group comprises only a small percentage of the total population.

In United States v. Zimmerli, Crim. No. B-83-57 (D.Conn.1984), this Court refused to apply SDT to a challenge to grand and petit jury selection procedures utilized in this district. These challenges were based on the Sixth Amendment to the United States Constitution and the Jury Selection and Service Act of 1968. 28 U.S.C. § 1861 et seq. (1982). Instead, reliance was placed on United States v. Jenkins, 496 F.2d 57 (2d Cir.1974). Jenkins held that disparities which do not result in a significant numerical difference in the composition of actual jury arrays are insufficient to establish a violation of the Constitution or the Jury Selection and Service Act. Id. at 65. Significantly, intent was not a required element of either challenge to the jury selection procedures made in Zimmerli. This added element of intent in equal protection cases distinguishes Zimmerli from the case at bar when selecting the appropriate gauge to be used in determining substantial underrepresentation.

In Duren v. Missouri, 439 U.S. 357, 363, 368 n. 26, 99 S.Ct. 664, 668, 670 n. 26; 58 L.Ed.2d 579 (1979), the Supreme Court noted that evidence of a significant discrepancy must represent not only discriminatory effect in an equal protection claim, but also discriminatory purpose. The Court distinguished this showing of intent from that required under a Sixth Amendment challenge where “systematic disproportion itself” is sufficient to establish a prima facie claim. Id. Thus, in equal protection cases where intent must be shown in addition to disparate treatment, courts have appropriately resorted to the more precise analysis employed by Statistical Decision Theory. See., e.g., Castaneda, 430 U.S. at 496 n. 17, 97 S.Ct. at 1281 n. 17; Hazelwood School District v. United States, 433 U.S. 299, 311 n. 17, 97 S.Ct. 2736, 2743 n. 17, 53 L.Ed.2d 768 (1976) (employment discrimination); Board of Education of City School Disk of New York v. Califano, 584 F.2d 576, 584 n. 29 (2d Cir.1978) (employment discrimination); Moultrie v. Martin, 690 F.2d 1078 (9th Cir.1982) (jury selection); Villafane v. Manson, 504 F.Supp. 78 (D.Conn.1980) (same); Hillery v. Pulley, 563 F.Supp. 1228 (E.D.Cal.1983) (same); State v. Castonguay, 194 Conn. 416, 427-28, 481 A.2d 56, 63 (1984) (same).

Applying SDT to the case at bar, the petitioners clearly have satisfied the rule of exclusion set out in Castaneda. As noted above, the probability of an exclusion of 133 Black jurors out of an array of 8405 occurring by chance is less than three in one billion. This highly remote probability is sufficient to create a presumption of purposeful discrimination regarding the exclusion of Black jurors caused by § 51-220.

Having satisfied the three requirements under Castaneda, the Court concludes that petitioners have met their burden in establishing a prima facie case of discrimination in the jury selection process. The state argues, however, that any disparate treatment of Blacks on the New Haven County jury array is due solely to the use of voter registration lists in selecting jurors. According to the state, since Blacks register to vote in smaller proportions than do whites, the underrepresentation can be explained on grounds apart from the statute. This argument fails to recognize the fact that the statute operates directly to ex-elude Blacks. Even if no voter registration lists were used, an underrepresentation of Blacks on the jury array would still result. Therefore, the use of voter registration lists is irrelevant to the determination of the disparate treatment caused by section 51-220 itself. The state offers no other explanation for the exclusion of Blacks. No attempt has been made to demonstrate that the town quota system serves a legitimate state purpose. Thus, the presumption of purposeful discrimination raised by the petitioners has gone unrebutted. Accordingly, Alston’s and Haskins’ petitions for writs of habeas corpus are hereby GRANTED. The petitioners shall be released from state custody unless the state moves for retrials within 30 days of today’s date.

      . While neither party has raised the exhaustion issue, the Court notes that both Alston and Has-kins have exhausted their available state remedies in challenging the jury selection process on equal protection grounds. The exhaustion doctrine, codified in 28 U.S.C. § 2254(b), “is rooted in a policy of federal-state comity by giving the state the initial opportunity to pass upon and correct alleged violations of its prisoners’ federal constitutional rights.” Klein v. Harris, 667 F.2d 274, 282 (2d Cir.1981) (citing Picard v. Connor, 404 U.S. 270, 275, 92 S.Ct. 509, 512, 30 L.Ed.2d 438 (1971)). The Supreme Court of Connecticut, however, refused to address petitioner Haskins’ equal protection claim, because it had not been fully briefed and therefore was considered abandoned. State v. Haskins, 188 Conn. 432, 469, 450 A.2d 828, 848-849 (1982). This Court nevertheless finds that the Connecticut Supreme Court had ample opportunity and sufficient facts before it to address both petitioners’ equal protection claims.
      The exhaustion doctrine requires that a state defendant “fairly present” his federal constitutional claim to the state courts before seeking habeas relief. Picard v. Connor, 404 U.S. 270, 275, 92 S.Ct. 509, 512, 30 L.Ed.2d 438 (1971). The defendant need not cite chapter and verse of the Constitution to satisfy this requirement, but rather can do so by:
      (a) relying on pertinent federal cases employing constitutional analysis,
      (b) relying on state cases employing constitutional analysis in like fact situations,
      (c) asserting his claim in terms so particular as to call to mind a specific right protected by the Constitution, or
      (d) alleging a pattern of facts that is well within the mainstream of constitutional litigation. Daye v. Attorney General of State of New York, 696 F.2d 186, 194 (2d Cir.1982), followed in Cousart v. Hammock, 745 F.2d 776 (2d Cir. 1984). Indeed, "explicit labeling is not a sine qua non of exhaustion.” Id. at 195. Rather, the requirement may be satisfied if the defendant’s state brief contains both a factual basis for his claim and such words as "under the due process clause” or "under the Constitution.” Klein v. Harris, 667 F.2d at 282. Under these circumstances, the state court would surely have notice of the constitutional claim the defendant raises and is free to request further briefing from the parties if it feels briefing is appropriate or if it is otherwise dissatisfied with the legal arguments presented to date.
      In the present case, both Alston’s and Haskins’ briefs provided ample language so as to alert the Connecticut Supreme Court to the equal protection challenge to the jury selection process. As the Connecticut Supreme Court noted, petitioner Alston’s state court brief includes a point heading challenging the composition and selection of the jury array under the due process clause and the equal protection clause. State v. Haskins, 188 Conn, at 469, 450 A.2d at 848, 849 (referring to Brief for Defendant Alston at 18). Additionally, Alston relies on pertinent federal precedent by citing to Castaneda v. Partida, 430 U.S. 482, 494, 495, 97 S.Ct. 1272, 1280, 51 L.Ed.2d 498 (1977), which sets forth the elements of a prima facie equal protection challenge to a jury selection process. Brief for Defendant Alston at 20.
      Petitioner Haskins, as well, cites to Castaneda, Reply Brief for Defendant Haskins at 2, and goes a step further to adopt the arguments and claims of his co-defendants. Brief for Defendant Haskins at 233. So doing, Haskins also provided sufficient notice to the Connecticut Supreme Court of an equal protection claim. Finally, petitioners’ state court briefs are replete with facts sufficient to support an equal protection claim. This Court therefore finds that in light of the Second Circuit’s standard for exhaustion the petitioners’ briefs provide ample evidence of exhaustion in this case.

      . The Connecticut General Assembly has since repealed that portion of § 51-220 under which petitioners’ jury array was selected and which the Court today finds to be unconstitutional. See 1982 Conn.Legis.Serv. 82-307 (West).