author: DAVID S. PORTER, Senior District Judge.

text:
    Tilford YOUNGBLOOD, et al., Plaintiffs, v. John DALZELL, et al., Defendants.
    Civ. A. No. 8774.
    United States District Court, S.D. Ohio, W.D.
    July 8, 1985.
    Paul Nemann, Ronnie Dixon, John Schrider, Legal Aid Society, Cincinnati, Ohio, for plaintiffs.
    Michael A. Esposito, Asst. Atty. Gen., Civil Rights Section, Columbus, Ohio, for intervenor Ohio Civil Rights Com’n.
    James W. Hengelbrok, Cincinnati, Ohio, for intervenor Firefighters Union.
    M. Kathleen Robbins, Asst. City Sol., Cincinnati, Ohio, for defendants.
    William S. Wyler, Cincinnati, Ohio, for proposed intervenors Gerald G. Hehn, Albert E. Cigolotti, Bennie Sheppard.
   DAVID S. PORTER, Senior District Judge.

This matter is before the Court on plaintiffs’ motion for enforcement of consent decree (doc. 170), defendant’s memorandum in response (doc. 172), defendant’s brief (doc. 178), plaintiffs’ reply to intervenor-union’s motion opposing enforcement (doc. 179), intervenor’s substituted brief in opposition (doc. 181), and plaintiffs’ post-hearing memorandum (doc. 183). A hearing on the motion to enforce the Consent Decree was held June 25, 1985. At the hearing, plaintiffs requested that some of intervenor’s exhibits be excluded from evidence on grounds of irrelevancy and hearsay. The Court now overrules all those motions. FACTS

This case originated in 1973 when plaintiffs filed a civil rights class action alleging that the City of Cincinnati was engaged in racially discriminatory recruiting, testing, selecting, and promoting of firefighters in violation of the fourteenth amendment to the United States Constitution and 42 U.S.C. §§ 1981, 1983. On May 7, 1984, without trial of the issues and with no admission of discrimination on the part of the City, the parties entered into a Consent Decree (doc. 39). The Decree set a goal of increasing the percentage of black firefighters from the less than one-half of one percent employed in 1973 to eighteen percent by 1980. When that goal was not met, the Decree was modified to give the City until the end of 1985 to meet the goal (doc. 121).

The Decree also called for efforts to increase the proportion of blacks in the promoted ranks. Paragraph 27 provides:

Defendants shall use a system for promoting qualified minority persons within the ranks of the Division of Fire to achieve a goal of workforce composition which negates any inference of an unlawfully discriminatory promotion policy based on race.

' Ohio law requires competitive promotional examinations to establish eligibility lists from which firefighters will be promoted in rank order when vacancies occur. O.R.C. §§ 124.45, 124.46, 124.48. Seniority affects promotions only indirectly. A small seniority credit of one point for each of the first four years of service and six-tenths of one point for each year thereafter is added to the scores on the competitive exam. O.R.C. § 124.45. In the event that two or more people achieve identical scores, seniority will also determine the order in which those people will be ranked. O.R.C. § 124.46. Otherwise persons are simply promoted in rank order during the life of the eligibility list whenever a vacancy occurs.

In September 1984, the City administered a promotional exam for the rank of fire lieutenant. At that time, only five of the 105 lieutenants were black. The eligibility list resulting from the 1984 exam ranked the highest blacks 23rd, 42nd, 43rd, and 67th. To date, nineteen vacancies have occurred in the lieutenant rank and all of those promoted to fill the vacancies have been white. It is likely that during the life of the current list, which expires in September 1986, only one black will be promoted, resulting in continued under-representation of blacks among the lieutenants.

Plaintiffs now request that this Court order that the 1974 Consent Decree requires the City to promote firefighters to the rank of lieutenant so as to result in blacks being promoted in sufficient numbers. Plaintiffs argue that the number of blacks promoted should be equal to the ratio of blacks to whites in the applicant pool. The ratio of blacks to whites in the applicant pool for the current lieutenant eligibility list is one to six (doc. 170, exhibit C). The plaintiffs contend that this result can be achieved by double-filling positions as was done in this case when promotions to the rank of lieutenant were last made (doc. 128). Basically, this procedure would require that every sixth position filled at the rank of lieutenant would be filled with two people — both the highest ranking white person and the highest ranking black person on the eligibility list. The City also supports this procedure for furthering the goals stated in the Consent Decree (doc. 178).

The Cincinnati Firefighters Union, Local 48 requested and was granted permission to intervene (docs. 171, 175). The union-intervenor opposes the double-filling plan for reasons that will be elaborated below. DISCUSSION

The issue before the Court is whether paragraph 27 of the Consent Decree requires affirmative action in promotions, and specifically, whether the plan of double-filling proposed by the plaintiffs and defendant is consistent both with the Consent Decree and federal law. For the reasons set forth below, we conclude that double-filling as described in the accompanying Order fulfills the affirmative action requirement of the Decree, and is a permissible method of increasing the number of minorities in the promoted ranks of the firefighters.

I.

This is not the first time that this Court has been faced with this issue and has determined that such relief is appropriate. In 1982, the Ohio Civil Rights Commission, plaintiff-intervenor, sought a similar order of enforcement with regard to the fire lieutenant eligibility list resulting from the City’s 1981 promotion examination (doc. 122). Although the firefighters union later unsuccessfully appealed this Court’s 1982 Order, at the time of the hearing on that Order the union did not object to the proposed motion (doc. 130 at 8, et seq.). In fact, when the Assistant Attorney General stated that he believed, “the proposed order ... effects ... a good balance between the interest of the city, the union, and the Ohio Civil Rights Commission,” the union did not object. Id. at 3. Moreover, at the 1982 hearing, the union recognized that the costs of complying with the proposed order were “very little” (doc. 130 at 9) and that further litigation of the matter would necessarily involve investigating the validity of the promotion test which would be much more expensive. Id. The union acknowledged that the 1982 Order struck a “very good balance between all of these interests [the city, the Civil Rights Commission and the union] which ... are genuine and sincere interests.” Id.

Now, however, the union-intervenor opposes enforcement of the Consent Decree as proposed by plaintiffs and defendants (docs. 176, 181). According to the union, paragraph 27 does not mandate affirmative action in the area of promotions, but instead merely sets out a goal of achieving improved minority representation at all ranks. We disagree. The plain meaning of paragraph 27 is that the City will use a procedure that will ensure that qualified minority persons are promoted. As will be discussed in greater detail below, the proposed double-filling plan is an acceptable mechanism for achieving greater minority representation in the promoted ranks, and should therefore be the mechanism used in promotions during the remaining life of the 1984 lieutenant eligibility list.

II.

Intervenor union also suggests that relevant federal case law has changed since 1982 so as to make affirmative action such as the double-filling impermissible. The union apparently relies on Firefighters Local Union No. 1784 v. Stotts, 467 U.S. 561, 104 S.Ct. 2576, 81 L.Ed.2d 2576 (1984), in which the Supreme Court held that a court cannot impose a consent decree to award competitive seniority to a minority employee who has not been shown to be an actual victim of discriminatory practices. After careful consideration of Stotts, however, we conclude that it is not controlling. Moreover, we have examined other relevant Supreme Court decisions as well as various Sixth Circuit decisions on affirmative action issued since Stotts, and we are convinced that the enforcement of the Consent Decree that we have ordered is permissible.

A.

In United Steelworkers v. Weber, 443 U.S. 193, 99 S.Ct. 2721, 61 L.Ed.2d 480 (1979) the Supreme Court held that Title VII of the Civil Rights Act of 1964 “does not condemn all private, voluntary, race-conscious affirmative action plans.” 443 U.S. at 208, 99 S.Ct. at 2730. Although the Court declined to specify what made an affirmative action plan impermissible, it did note some of the features of the challenged plan that apparently led to the conclusion that it was permissible. For example, the approved plan was a voluntary one, aimed at breaking down racial segregation, a purpose similar to that of the Civil Rights Act itself. The plan was also only a temporary measure intended to eliminate “manifest racial imbalance,” not to maintain racial balance. Id. Moreover, the plan did not “unnecessarily trammel the interests of the white employees” because it did not require that any white workers be replaced by blacks, nor did it create an “absolute bar” to white employees’ advancement. Id.

Although these factors are not irrelevant to the instant case, they alone are not dispositive because the present litigation involves constitutional claims under 42 U.S.C. §§ 1981, 1983. The Supreme Court’s guidance on such constitutional claims is more diffuse than that concerning Title VII claims, however, and it must be discerned from eases such as Regents of University of California v. Bakke, 438 U.S. 265, 98 S.Ct. 2733, 57 L.Ed.2d 750 (1978) and Fullilove v. Klutznick, 448 U.S. 448, 100 S.Ct. 2758, 65 L.Ed.2d 902 (1980). The United States Court of Appeals for the Sixth Circuit has observed that, “The only clear consensus to be garnered from these various statements is that in any affirmative action program (1) some governmental interest must be served, and (2) the program must somehow be directed toward the achievement of that objective.” Bratton v. City of Detroit, 704 F.2d 878, 885 (6th Cir.), modified on rehearing, 712 F.2d 222 (6th Cir.1983), cert. denied, 464 U.S. 1040, 104 S.Ct. 703, 79 L.Ed.2d 168 (1984).

The Sixth Circuit has concluded that the standard established in Detroit Police Officers Association v. Young, 608 F.2d 671 (6th Cir.1979), cert. denied, 452 U.S. 938, 101 S.Ct. 3079, 69 L.Ed.2d 951 (1981) continues to be applicable in constitutional cases. 704 F.2d at 885. Thus, the fourteenth amendment is not violated if (1) there is a need for remedial measures and a government interest in their implementation, and (2) the proposed remedy is reasonable in light of the circumstances. Id. at 886-87.

The need for remedial measures and the government’s interest in their implementation are satisfied in the present case. The government clearly has an interest in “ameliorating the disabling effects of identified discrimination.” Id. at 886, citing Fullilove v. Klutznick, 448 U.S. at 497, 100 S.Ct. at 2784 (Powell, J., concurring). Although it is not necessary to show past intentional discrimination, some competent governmental body must find that there is a need for remedial measures, and court review of those findings must reveal a sound basis for them. 704 F.2d at 886. The Sixth Circuit has held that a determination of past discrimination by the Detroit Board of Commissioners was sufficient to meet this requirement. Young, 608 F.2d at 694.

In the present case, the City of Cincinnati has never admitted past discrimination and its denial of discrimination is expressly embodied in paragraphs 5 and 6 of the Consent Decree (doc. 39). Nonetheless, the City has explicitly expressed its commitment to affirmative action such as that contemplated by paragraph 27 of the Decree (doc. 170, exhibit B). Moreover, the City Council passed a resolution on October 10, 1984 in which it stated that “blacks are under-represented in the promoted ranks within the Fire Division.” Id. The City’s conclusion is supported by statistics provided by the City, indicating that in October 1984 only five of 105 fire lieutenants were black, only three of 137 drivers were black, and all other promoted ranks were completely white (doc. 170, exhibit A). One of the five black lieutenants was recently promoted to captain, making him the only black among the 48 captains (doc. 170 at 3). Therefore, we conclude that there is a demonstrated need for the proposed remedial measures and a government interest in their implementation.

The second aspect of determining the propriety of the plan is to determine whether it is reasonably related to its objectives. The Sixth Circuit has stated that a plan meets this aspect of the test if the non-minority personnel affected are not “unduly stigmatized by the program” and if “the particular program applies the use of racial classifications reasonably.” Bratton, 704 F.2d at 890. A plan is not stigmatizing if those hired or promoted under it are qualified for the job. Id. at 891. The Bratton court also suggested that a plan will be found reasonable if (1) it is substantially related to the objective of remedying past discrimination, (2) use of racial classification reflects the only legitimate way of achieving that objective, (3) it is temporary, and (4) it does not unnecessarily trammel the interests of the non-minority group. Id. at 892.

Applying these criteria to the present case, we find that the proposed affirmative action plan is non-stigmatizing and reasonable. The plan is non-stigmatizing because all of the blacks who will be promoted under it are qualified for the job, having passed the lieutenant eligibility exam. Moreover, although the candidates are ranked by numerical score, the top ranking candidate’s score was only ten points above that of the 34th ranked candidate; less than four points separates the 20th and 40th candidates. Thus, it is hard to argue that the blacks ranked 23, 42 or 43 are not qualified for the job.

Furthermore, the plan uses racial classifications reasonably. The goal of the plan is to increase the representation of minorities in the promoted ranks of the firefighters. The dearth of blacks in those ranks, as outlined above, gives rise to an inference of adverse racial impact in the promotion system, and therefore of past discrimination. See EEOC Guidelines on Employee Selection Procedures, 29 C.F.R.- 1607.4(D) (1984). Without using racial classifications there would be no way to overcome the effects of this past discriminatory impact. Moreover, the plan is temporary. Contrary to the union’s claim that plaintiffs are seeking to’ make a “permanent institution” of double-filling, this plan will be in effect only for the life of the 1984 lieutenants’ eligibility list. Indeed, both plaintiffs and the Court anticipate the day when the Consent Decree itself is implemented fully and this case can be closed.

Finally, the proposed plan is reasonable because it does not unnecessarily trammel the interests of the non-minority groups. No white officers will be replaced by blacks. Nor will any whites be permanently barred from advancement. In fact, there does not appear to be any significant detriment to any non-minority as a result of the proposed double-filling. At most, there might be a brief delay in the promotion of two or three white firefighters, but even this brief delay would only occur at the termination of the 1984 eligibility list when the double-filled positions are being absorbed into the force. Such a modest detriment, should it in fact occur, falls far short of constituting good cause for not implementing the plan. The Sixth Circuit has held that reduction in a non-minority’s expectations of promotion is not sufficient to make a consent decree unfair or unreasonable. Williams v. Vukovich, 720 F.2d 909, 922 (6th Cir.1983). According to the Sixth Circuit, “Since non-minorities do not have a legally protected interest in promotions which could only be made pursuant to discriminatory employment practices, it follows that the legal rights of non-minorities will not be adversely affected by reasonable and lawful race conscious hiring or promotional remedies.” Vanguards of Cleveland v. City of Cleveland, 753 F.2d 479, 484-85 (6th Cir.1985), citing Kirkland v. New York State Department of Correctional Services, 711 F.2d 1117, 1126 (2d Cir.1983). Accordingly, the Sixth Circuit upheld a more intrusive affirmative action plan that had more extensive detriment to whites than the one we now approve. Vanguards, 753 F.2d at 484-85. For all of the foregoing reasons, the Court therefore concludes that the double-filling plan is permissible as a necessary remedy in which the government has an interest and which does not stigmatize or unreasonably affect the non-minorities involved.

B.

Nothing in the Supreme Court’s decision, Firefighters Local Union No. 1784 v. Stotts, 467 U.S. 561, 104 S.Ct. 2576, 81 L.Ed.2d 483 (1984), changes the above analysis because that decision is clearly inapplicable to the facts before us. Stotts involved a district court ordered modification of a consent decree over the objection of one of the parties to the decree. The consent decree had established an affirmative action program aimed at increasing the number of blacks in the Memphis fire department, but it was silent on the subject of layoffs. After the City of Memphis ordered layoffs, the district court ordered that the decree be modified to forbid the City from using its seniority system to the extent that it would result in a decrease in the percentage of black firefighters. Both the City and the union objected to the modification. Although the Sixth Circuit approved the district court action, the Supreme Court invalidated the change. Among the facts that contributed to the Court’s conclusion that the modification of the decree should be invalidated were (1) that the decree was silent on layoffs (104 S.Ct. at 2586), (2) that the City opposed the change (id. at 2590), (3) that there was no finding of actual discrimination (id. at 2588-90), and (4) that the change affected a bona fide seniority system (id. at 2587-90).

None of these factors is present in the case before us. The Consent Decree we seek to enforce contains at paragraph 27 an explicit commitment to some form of affirmative action in promotions. Moreover, the City agrees that this is the plain meaning of the paragraph and joins the plaintiffs in supporting the specific procedure of double-filling as the means to accomplish that end. Although there is no finding of actual discrimination, it is unnecessary in this case because this is only an effort to enforce a consent decree voluntarily entered into. Finally, the affirmative action procedure we now approve will have no impact on the seniority system of the firefighters. This is because promotions are not based upon seniority, but on scores achieved in competitive examinations.

Our conclusion that Stotts is inapplicable here is buttressed by the Sixth Circuit’s consistent conclusion that Stotts does not bar voluntary affirmative action plans. In Wygant v. Jackson Board of Education, 746 F.2d 1152 (6th Cir.1984), cert. granted, — U.S. -, 105 S.Ct. 2015, 85 L.Ed.2d 298 (Mar. 26, 1985), the Sixth Circuit upheld an affirmative action plan that resulted from “voluntary decisions in the collective bargaining process,” and which provided that layoffs of minority teachers would be limited in the event of a reduction in force. 746 F.2d at 1158. In Van Aken v. Young, 750 F.2d 43 (6th Cir.1984), the Sixth Circuit approved the City of Detroit’s voluntary affirmative action plan for hiring minorities, 750 F.2d at 44-45. Finally, in Vanguards of Cleveland v. City of Cleveland, 753 F.2d 479 (6th Cir.1985), the Sixth Circuit upheld a voluntary consent decree that required the establishment of two separate promotion lists for blacks and whites, with promotions to be made alternately from each list.

All three of these affirmative action plans differed from the situation in Stotts because none of them was imposed by the district court over the objection of any of the parties involved. Stotts had relied heavily on two provisions of Title VII, § 703(h) and § 706(d), both of which limit a court’s power to award particular relief in Title VII cases. Neither of these sections forbids an employer’s voluntary actions to provide such relief, however, an issue that the Stotts Court explicitly reserved. 104 S.Ct. at 2590. Thus, the law in the Sixth Circuit clearly is that when a public employer voluntarily agrees to an affirmative action plan involving hiring (Van Aken), promotions (Vanguards), or layoffs (Wygant), it is permissible. As long as the court does not impose a remedy over the objections of one of the parties, Stotts is inapplicable. Such voluntary affirmative action plans are constitutionally permissible in the Sixth Circuit.

In addition to limiting the application of Stotts, all of the Sixth Circuit opinions discussed above make it clear that the standards for determining the reasonableness of an affirmative action plan remain those applicable in the Sixth Circuit prior to Stotts. See Wygant, 746 F.2d at 1157-58; Van Aken, 750 F.2d at 45; Vanguards, 753 F.2d at 487-89. Thus, the standards established in Weber, Young, and Bratton that were discussed above continue to be the operative ones for determining the permissibility of the instant Consent Decree. As we demonstrated already, the plan here approved clearly meets those requirements. Thus, we conclude not only that the double-filling is permissible, but also that voluntary affirmative action is indeed alive and well in the Sixth Circuit.

SO ORDERED.

      . To that end, this Court will issue periodic show cause orders requiring the parties to demonstrate why the Decree should not end.


source: Caselaw Access Project

author: MacKENZIE, Chief Judge.

license: Public Domain

text:
    J.A. LaPORTE, INC., Plaintiff, v. NORFOLK DREDGING COMPANY, Defendant.
    Civ. A. No. 83-694-N.
    United States District Court, E.D. Virginia, Norfolk Division.
    July 11, 1985.
    John T. Roberts, Roberts & Floyd, Washington, D.C., and James C. Howell, Willcox & Savage, P.C., Norfolk, Va., for J.A. LaPorte, Inc.
    Robert A. Vanderhye, Cushman, Darby & Cushman, Washington, D.C., and Francis N. Crenshaw, Crenshaw, Ware & Johnson, Norfolk, Va., for Norfolk Dredging Co.
   MEMORANDUM OPINION

MacKENZIE, Chief Judge.

Background

This is an action for patent infringement under the patent laws of the United States, Title 35, United States Code. The patent in suit, No. 4,373,277, of a “Cutter Extension Cone”, was issued to Edward Cucheran, the named inventor, as patentee. Plaintiff dredging company, J.A. LaPorte, Inc., is the assignee of rights under the patent in several Southeastern States. LaPorte complains that defendant Norfolk Dredging Company has infringed upon the patent. The matter was tried by the Court on the liability issue only.

Findings of Fact

1. J.A. LaPorte, Inc., plaintiff (LaPorte), operates a commercial dredging business along the central East Coast of the United States. John J. MacDonald (MacDonald), is the president of LaPorte and has been the dominating operator thereof for many years.

2. Norfolk Dredging Company, defendant (Norfolk), also operates a commercial dredging business, primarily in Virginia, North Carolina, South Carolina, Georgia and Florida.

3. Robert Jantzen (Jantzen) is a consulting engineer to the dredging industry and is president and operator of Jantzen Engineering Company.

4. In 1977, Sceptre Dredging Company (Sceptre), a Canadian concern, was engaged in a channel maintenance contract in the St. Lawrence River System, at Lake St. Pierre in Canada. The engineer in charge and vice-president of Sceptre was Edward Cucheran (Cucheran). Cucheran there described a device which could be attached to the rear of the cutter blades of a hydraulic dredge whose purpose it was to move dredged material forward to the suction pipes of the dredge and thus to allow the dredge to move ahead faster. The Cucheran device was not for “original digging” but would aid in the removal of material that had either silted in or had been cut by the dredge cutter itself. The original Cucheran device had been sketched on scrap paper. Cucheran discussed it with his consulting engineer, Jantzen. A prototype was constructed in 1977 by Fabspec, a Canadian fabricating firm, and was used on a dredge operated by Sceptre in 1977. A similar device was also used by Sceptre in the Welland Canal in 1978 and in the Magdalen Islands in the St. Lawrence River.

5. Jantzen photographed this Cucheran cutter cone prototype in Canada, sometime in 1978, and in turn gave one of the pictures to MacDonald, President of LaPorte, in 1979.

6. About November 4, 1980 MacDonald, president of LaPorte, contacted Jantzen and ordered the cone for LaPorte’s use.

7. LaPorte sent a cutter from its South Carolina depot to Jantzen in Baltimore in order for him to fit the Cucheran cone on an actual cutter in use by LaPorte.

8. The cone was constructed by Ackerman and Baynes Inc., steel fabricators in Baltimore, from Jantzen’s photograph of the original cone designed by Cucheran. Construction began before November 25, 1980, the date Ackerman and Baynes opened their ledger sheet on the job.

9. The purchase arrangement between LaPorte and Jantzen for the construction of the Cucheran cone occurred in November, 1980, and was on a cost plus percentage basis.

10. In the spring of 1981 MacDonald of LaPorte raised the question with Jantzen of whether the Cucheran cone was patentable. At that time Jantzen took a negative attitude since the cone had been in use in Canada in 1977. Nevertheless, a patent was pursued. Costs for patent counsel and engineering drawings were paid by Jantzen and LaPorte.

11. In 1982 a patent examiner originally turned down the patent on the basis of prior art but later approved the patent and it was issued.

12. The photograph of the Cucheran cone taken in Canada in 1978 was taken in Cucheran’s presence, with his permission, and with no directions from him as to confidentiality. The same photograph, or a copy, in addition to being shown to MacDonald of LaPorte in 1979, was also given to Charles Baynes of Ackerman and Baynes Inc. of Baltimore, and no request for confidentiality was made to either MacDonald or Baynes. As a matter of fact, photographs (Exhibits 4 and 5) of the Cucheran Cone were made by Ackerman and Baynes in Baltimore and, again, no question of confidentiality in their exhibition was ever raised by anyone.

13. Cucheran was never asked about the patenting of the device he had built in 1977 until MacDonald and Jantzen made such a request to him in 1981.

14. In November, 1982, Russell Thorne, Executive Vice-President of Norfolk Dredging Company, hired Charles Gillikin, a consultant, to make suggestions to improve the production run, i.e., cubic yards of dredged material per hour, of the Norfolk dredge PULLEN.

15. Thorne had already heard in the trade of increases in production for a hydraulic dredge operated by LaPorte using a “big cone”. Gillikin, the consultant, recommended the construction of a cutter cone for the PULLEN. Such a cutter cone was immediately built for Norfolk Dredging at Georgetown, South Carolina under Gillikin’s direction and within two weeks of order the cone was installed and operating to vastly increase the PULLEN’S cubic yards per hour.

16. Within a period of sixty days, November 3, 1982 to January 3, 1983, Norfolk Dredging had four additional cutter cones constructed. All construction was supervised by Gillikin.

17. This was the same Charles Gillikin who, as dredging supervisor for J.A. LaPorte, Inc., had seen the photographs of the Cucheran cone and had received the Jantzen built cutter cone for LaPorte in Charleston Harbor in January, 1981. He had successfully used it on the LaPorte dredge, CLARENDON, where volume was dramatically increased. This cutter cone was admittedly the Cucheran invention.

18. Nowhere in the testimony of Thorne, Vice-President of Norfolk Dredging, is any effort made to suggest the cutter cones constructed and used by Norfolk Dredging were anything but the Cucheran invention.

19. Thorne, in March, 1983, wrote to a respected engineer in the dredging industry, John Huston, seeking his advice (Exhibit 59) that the cutter cone was “... not something new”. The actual inquiry was “... to see if [Huston] could provide any information that would help support my theory that this [the Cucheran invention] wasn’t anything new”. Vol. I, page 156. Unfortunately, Mr. Huston’s reply (Exhibit 71), was of no aid to Norfolk Dredging.

20. In stipulations in the Final Pretrial Order, Norfolk Dredging agreed that it obtained no opinion of outside counsel concerning their liability under the Cucheran Patent prior to its use of the cutter cone.

Conclusions

Were it not for the fact that we conclude that the Cucheran patent in this case was improperly granted and thus invalid, we would have no problem concluding that the cutter cones made and used by the defendant, Norfolk Dredging Company, did indeed infringe upon the Cucheran invention. The abbreviated findings in paragraphs 14 through 20 above, support infringement to the end that if, upon appellate review, it is determined that the patent is valid, then the appellate court may find infringement and remand this matter on damages, without requiring a new trial on liability.

We conclude that the Cucheran Patent No. 4,373,277 was invalid for two reasons which we comment upon.

I

The plaintiff J.A. LaPorte, Inc.’s order for the cutter cone in November 1980 shows that the invention was “on sale” more than one year prior to Cucheran’s application for a patent on December 7, 1981. Jantzen, an engineer in the dredging field, had exhibited his 1978 photograph of the Cucheran cutter cone invention to LaPorte’s President, John MacDonald, and had urged him to use it. It is stipulated that the patent in suit was applied for on December 7, 1981. A statutory critical date, therefore, is December 7, 1980. The evidence is unassailable that MacDonald, as President of LaPorte, ordered the Cucheran cone in November, 1980. He shipped a dredge cutter from South Carolina to Baltimore in November, 1980, to which the cone was to be attached. Jantzen, the engineer, was to oversee its proper construction. Ackerman and Baynes Inc., the machine shop in Baltimore which built the cutter cone, began work prior to November 25, 1980. The time and material ledger sheet at Ackerman and Baynes Inc. was opened with a November 25, 1980 entry. All of this was before the critical date of December 7, 1980. Under the patent law the invention was “on sale” under the terms of 35 U.S.C. § 102(b), more than one year prior to the patent application. The patent is therefore void under the express statutory language of 35 U.S.C. § 102(b) which provides that a person shall be entitled to a patent unless:

“The invention was ... on sale in this country more than one year prior to the date of the application for a patent in the United States.”

To refute what was obviously a sale, plaintiff argues that the purchase in November, 1980 was just “experimentation” and not a commercial sale of the invention. We disagree. Jantzen, the engineer, is a longtime personal and business friend of John MacDonald, president of plaintiff, J.A. LaPorte, Inc., a closely held family corporation. MacDonald dominated LaPorte’s operation. The two met at least four or five times per month. LaPorte was Jantzen’s first and most important client. Jantzen early on had given MacDonald a picture of the Cucheran invention which showed the cutter cone in every necessary detail. (See Appendix 1 and 2.) Jantzen knew of and had told MacDonald about two dredging operations on which the invention had been used and that it had been very successful. Cucheran had told Jantzen that the “walking distance” of the dredging action of the dredge GENERAL BROCK (an accepted measure of efficiency) had been doubled. Most importantly, MacDonald of LaPorte accepted Jantzen’s word that the invention had been successfully used.

This Court is absolutely at ease in concluding that the LaPorte order for the Cucheran cutter cone was in no way an “experimental” action for the purpose of perfecting the invention, but was indeed a commercial venture which it hurried to completion and immediately put to work to improve its Charleston dredging operation. An example of plaintiff’s strained use of the term “experimental” finds illustration in its own brief wherein plaintiff LaPorte characterizes its entire Charleston Harbor dredging operation, a multi-million dollar project, to be “... to some degree ‘experimental’.”

In Barmag Barmer Maschinenfabrik AG v. Murata Machinery, Ltd., 731 F.2d 831 (Fed.Cir.1984), the Federal Circuit Court of Appeals reiterated its adherence to the three-requirement standard for determining whether an invention was “on sale” under 35 U.S.C. § 102(b), as set forth in Timely Products Corporation v. Arron, 523 F.2d 288 (2d Cir.1975), which was:

(1) that the invention was embodied in the machine offered for sale;
(2) that the invention was reduced to practice and operable [before November, 1980]; and
(3) that the invention was on sale for profit and not for experimentation.

We find under the Timely Products tests above:

(1) that the Cucheran invention was fully embodied in the cutter cone constructed by Cucheran in 1977; that the sale in November 1980 was made from an actual photograph of that embodiment, in which all necessary details of this very simple device were fully disclosed. It is indicative of the weakness of the plaintiff’s position that it argues that its addition of small triangular braces to support the helical blades represented a substantive change. In the words of the inventor, Mr. Cucheran, the de minimus affect of the addition of small braces was illustrated by his statement that if one took away the helical blades and left only the small triangular supports on the cone, it would be totally ineffective and showed that the supports added nothing to the invention, performing only a stiffening action;
(2) that the Cucheran patent was fully operable before the sale in November, 1980. It had been in operation since 1977. It had been successfully utilized on two occasions before November, 1980. Thus, it had been tested sufficiently to verify that it was commercially marketable; and
(3) that the cutter cone was on sale for profit in the transaction with LaPorte in November, 1980, and in no wise was such sale experimental. It is agreed that Jantzen made at least fifteen percent profit over the cost of the components and assembly labor. Reference is made to the holding in General Electric Co. v. United States, 654 F.2d 55, 59 (Ct.Cl. 1981), wherein the CEC profit of 20-25 percent over costs of material and labor indicated to that court that the product was priced for sale and sold in a competitive market.

Through all of this trial the close relationship of Jantzen, the engineer and expert witness for the plaintiff, and John MacDonald, the operating force of plaintiff, J.A. LaPorte, was always very evident. The actions and exchanges between them before December 7, 1980, were, to a degree, unguai-ded because at that time Cucheran had made no move for a patent. This “unprotected” period tightened up considerably between November, 1980 and early 1981, when MacDonald began pushing Jantzen to get Cucheran to seek a patent (with LaPorte’s backing, financially and professionally). This push to a patent included LaPorte and Jantzen in the profit picture of the patent. Mr. Jantzen balked at trial at revealing his interest but at the Court’s insistence agreed that he owns one-third of the patent. LaPorte has a franchise for its use in the Southeastern States.

This Court therefore concludes that the supportive assertions made at trial, each in favor of the other, and their efforts to make the November, 1980 sale into something else (for instance, an experiment) is clouded with their obvious self-interest, and their credibility was seriously affected thereby.

II

While not as predominating or forceful as the patent invalidity based on the “on sale” picture discussed in Part I, the patent in question here is also invalid since it was described in a printed publication more than one year prior to December 7, 1981, the application date for the patent. Under the patent law the invention was “described in a printed publication” under the terms of 35 U.S.C. § 102(b), and is thus invalid. Section 102(b) provides that a person shall be entitled to a patent, presumed valid, unless “(b) ... the invention was ... described in a printed publication in this or a foreign country, ... more than one year prior to the date of the application for patent, ...”.

Inventor Cucheran had his cutter cone fabricated from a crude sketch that he made on the back of a cardboard cigarette box in 1977. A photograph of the cone was taken by Jantzen in 1978, in the presence of Cucheran and without any objection from him, several months after its successful operation by Sceptre in Canada. A print of this photograph was given to MacDonald, president of LaPorte, with no requirement of confidentiality. MacDonald, in turn, showed the photograph to at least three other people in the LaPorte organization, again with no requirement or admonishment that it be held in secret.

Jantzen was with Cucheran in Canada in 1977 and knew of the success of the cutter cone. Thereafter, Jantzen suggested to MacDonald that LaPorte attempt to utilize the cutter cone device, especially in light of its successful history in Canada.

Jantzen testified at trial that he took at least two photographs of the Cucheran cone and that at least two pictures thereof were circulating. One was given to MacDonald, as discussed above, and the other was given to Ackerman and Baynes Inc. which had used it to construct the cone for Jantzen. These photographs were freely distributed with no order of secrecy.

Utilizing the photograph almost totally, and with only a rough sketch on a scratch pad indicating dimensions, Ackerman and Baynes successfully constructed the cone for Jantzen with no difficulty and in a short period of time. It was not necessary to contact the inventor to complete this construction. The fabrication was done from the photograph.

Law on the subject of whether a photograph is a “printed publication” is scant. The prevailing case on point, Universal Athletic Sales v. American Gym, Etc., 546 F.2d 530 (3rd Cir.1976), offers credence to our decision that the photographs were “printed publications” under the statute. The Universal Court held that while “neither this Court nor apparently any other tribunal has yet determined whether a photograph itself constitutes a ‘printed publication’ we believe that a photograph may so qualify for purposes of section 102.” Id. at 543. Universal noted that other courts held that a drawing alone, unaccompanied by a verbal description, may constitute a printed publication. See, e.g. Des Rosiers v. Ford Motor Co., 143 F.2d 907, 911-912 (1st Cir.1944); In re Bager, 47 F.2d 951, 953 (C.C.P.A.1931). The Third Circuit concluded in Universal that a photograph may anticipate a patent and thus render it invalid when “with a photograph, one conversant in the pertinent art could make or construct a purported invention without resorting either to the patent or to his own inventive skills.” Universal, supra, at 543. In the case at bar, the photograph exhibits the invention in detail sufficient to allow the construction of the invention by one conversant in the art, in this case, Anderson and Baynes Inc., which proves the point.

In qualifying the Cucheran cone photographs as printed publication we also conclude that the publication was in the hands of the “public” prior to the critical date of December 7, 1980. The “public” has been defined as “that class of persons concerned with the art to which the document relates and thus most likely to avail themselves of its contents.” The Garrett Corporation v. United States, 422 F.2d 874, 878 (Ct.Cl. 1970). The unrestricted availability of the Cucheran photographs, to at least three different commercial entities prior to December 1980, satisfies the requirement that the publication be disseminated to the “public”. Id. at 878.

To qualify as a printed publication, the Cucheran photographs must contain enough information to .enable a person of ordinary skill in the art to practice the invention without undue experimentation. International Glass Company v. United States, 408 F.2d 395, 404 (Ct.Cl.1969). The evidence before us shows that the Cucheran cone was easily reduced to further practice from the photograph of a prototype.

Because the Cucheran patent was described in a printed publication, over a year prior to the application for the patent, it is invalid.

An Order will be entered, contemporaneously with this Memorandum Opinion, finding for the defendant Norfolk Dredging Company.

        Editor’s Note: The Appendices have been omitted for purposes of publication.


author: DITTER, District Judge.

text:
    UNITED STATES of America v. Marion FERRELL, Karen Green.
    Crim. A. No. 84-66.
    United States District Court, E.D. Pennsylvania.
    July 17, 1985.

      Edward S.G. Dennis, Jr., U.S. Atty., Glenn B. Bronson, Asst. U.S. Atty., Philadelphia, Pa., for Government.
    Barry H. Oxenburg, Neil I. Jokelson, Philadelphia, Pa., for defendant.
   MEMORANDUM AND ORDER

DITTER, District Judge.

Defendants Marion Ferrell and Karen Green were convicted of distributing and conspiring to distribute controlled substances in violation of 21 U.S.C. §§ 841(a)(1), 846 (1982). Presently before the court are the post-trial motions of each defendant.

Defendants complain that the court erroneously excluded extrinsic evidence about the drug activity of the government’s chief witness, Ricardo Shabazz. Shabazz approached federal officials in May, 1983, and offered to assist them in their drug investigations in his neighborhood. Shabazz testified that he had agreed to help the federal agents because drug problems were tearing his community apart, and that people who were not directly involved in the drug activity “were starting to be victims of the drug problem.” N.T. 62.

Shabazz stated that he and officer Alvin Williams of the Drug Enforcement Agency (DEA) planned to have Shabazz buy drugs from dealers known to him. N.T. 61-66. According to Shabazz, the following procedure was used on each of the four times, July 28, July 29, August 1, and August 30, 1983, that he obtained drugs from one or both of the defendants at Karen Green’s home. Shabazz would be given cash by the DEA. DEA agents would then search him to see that he was not carrying drugs or other sums of money and would drive him to a location a few blocks from Karen Green’s house. The agents would observe Shabazz as he proceeded on foot so they could corroborate that Shabazz did not procure the drugs from a source other than Green or Ferrell. After he had consummated a transaction, Shabazz would be searched again by the DEA agents.

Obviously, Shabazz’s testimony was a crucial element of the government’s case. Shabazz was subjected to lengthy and rigorous cross-examination, much of it about his personal life and background. He was asked about his nickname. N.T. 121, 129, 132, and 136. He was asked if he wore a fez. N.T. 121. He was asked if he used drugs. N.T. 120. He was asked if he had ever sold drugs. N.T. 120, 132, 136, and 188. He was asked if he had a reputation for selling drugs. N.T. 137, 201. He was asked if he had a beeper and the name of the company from which it was rented. N.T. 152,189. He was asked if he had ever used a beeper to aid in drug transactions. N.T. 154. He was asked about his failure to file tax returns. N.T. 126, 130, and 132. He was asked about his prior employment, his earnings, education, change of name, and marital history. N.T. 123-138. He was asked about his being in the witness protection program and money that he had received from the government for his services. N.T. 134, 182-83. He was asked extensively about the fact that his powers as a notary public had expired but he continued to do notary work nonetheless. N.T. 219-22. In addition, he was asked about the details of the various drug transactions. He revealed he had made 68 drug purchases from 20 persons for the DEA between May, 1983, and January, 1984. He was questioned as to his understanding about the officers who had him under surveillance, details concerning the conversations that were recorded, and his prior relationships with Green and Ferrell. Cross-examination was extensive and essentially unrestricted. Many of counsel’s questions were mini-speeches to the jury, laced with sarcasm and augmented with innuendo. See, e.g., N.T. 120, 124, 132, 155 & 188.

On cross-examination Shabazz explicitly stated that he had not used or sold drugs in the past. Having elicited this response, defense counsel then tried to destroy his credibility by offering evidence to the contrary. Specifically, defendants sought to introduce the testimony of three witnesses who would state that “prior to 1983 [Shabazz] was dealing drugs in the area in which the [defendants are] claimed to be active____” N.T. 4.145. When confronted with the limitations of Fed.R.Evid. 608 precluding such evidence, defense counsel resourcefully suggested other reasons why it should be received. My refusal to permit the evidence in question is assigned as error.

Of course, the evidence was not admissible if offered solely to contradict Shabazz and thus impeach his credibility. When information is elicited by cross-examination on collateral matters, the cross-examiner must accept the witness’ statements. This does not mean he cannot press for a different answer or be rigorous and searching. What it does mean is that he cannot offer testimony to the contrary. See United States v. Bocra, 623 F.2d 281, 288 (3d Cir.1980); Carter v. Hewitt, 617 F.2d 961, 969 (3d Cir.1980). Fed.R.Evid. 608(b) provides:

Specific instances of conduct of a witness, for the purpose of attacking or supporting his credibility, other than conviction of crime as provided in Rule 609, may not be proved by extrinsic evidence. They may, however, in the discretion of the Court, if probative of truthfulness or untruthfulness, be inquired into on cross-examination of the witness ... concerning his character for truthfulness or untruthfulness ____

Defendants correctly assert that Rule 608 does not bar all extrinsic evidence that serves to impeach a witness. Rule 608 precludes evidence that is offered solely to prove that a witness has been untruthful. It does not limit a party’s introducing extrinsic evidence that may have the effect of generally impugning a witness’ credibility, but is offered for some other relevant purpose. See United States v. James, 609 F.2d 36, 45-48 (2d Cir.1979), cert. denied, 445 U.S. 905, 100 S.Ct. 1082, 63 L.Ed.2d 321 (1980); United States v. Rios Ruiz, 579 F.2d 670 (1st Cir.1978); 3 J. Weinstein & M. Berger, Weinstein’s Evidence ¶ 608[01], at 9 (1982).

To establish error on my part, defendants; therefore, must have asserted some reason, other than attacking general credibility, for which the proffered evidence was relevant. Fed.R.Evid. 103(a)(2). They urge three such bases: (1) the evidence tends to show that Shabazz may have obtained the drugs which he turned over to the DEA agents from a source independent of the defendants; (2) the evidence shows Shabazz had an ulterior motive for participating in the investigation and testifying against the defendants; and (3) the evidence rebuts Shabazz’s statement on direct examination that he became involved in the investigation because of the adverse impact of drug trafficking in his neighborhood.

INDEPENDENT SOURCE

Defendant’s first argument, that Shabazz may have had a source of drugs other than Ferrell and Green, is unpersuasive. The speculation that counsel wanted the jury to engage in — unfounded on any evidence — was that after Shabazz had been searched by DEA agents, he eluded their surveillance without their knowing it (even though he did not know just where any of them might be at a particular moment), obtained drugs which he then attributed to innocent victims, among them Green and Ferrell, so he could remain on the government payroll. Just how he could have pulled off this feat of legerdemain was not even suggested, but it is the mainframe of the alternative source contention. The indictment charged, and the evidence showed, that Shabazz obtained drugs on four occasions between July 28 and August 30, 1983, from one or both of the defendants at Karen Green’s house. The evidence which defendants sought to introduce was that of three witnesses, each of whom would testify that they knew Shabazz and “prior to 1983 he was dealing drugs in the area where the defendant is claimed to have been active as well, that is, the Richard Allen Homes and the surrounding areas.” N.T. 4.145.

Relevant evidence means evidence having any tendency to make the existence of a fact that is of consequence more probable or less probable than it would be without the evidence. Fed.R.Evid. 401. Obviously, the proffered testimony addressed a time which was at best seven to eight months before July 28, 1983. It could have been much more. Counsel conceded that they had no evidence that Shabazz possessed any drugs in July or August, 1983. N.T. 4.147. Counsel contended, however, that the evidence would be relevant to show that the drugs Shabazz said he obtained from Ferrell and Green did not come from either of them. Specifically, it was asserted that the jury should be able to consider whether Shabazz had alternative sources of drugs because he had been a drug dealer on prior occasions. N.T. 4.151. To state this argument is to reveal its fallacies. If the jury had accepted the testimony that Shabazz had been a drug dealer “prior to 1983,” it would not increase the probabilities that he still had a source of drugs in July and August of 1983. It would not increase the probabilities that his source of drugs, wherever it may have been “prior to 1983,” was in July and August 1983, in the vicinity of Karen Green’s home. It would not increase the probabilities that if he had had a source of drugs in July and August of 1983 in the area where Karen Green lived that he would have obtained drugs there rather than from Green and Ferrell. In short, if Shabazz had been a drug dealer “prior to 1983” it does not lessen the probability that he bought drugs in July and August 1983 from Karen Green and Marion Ferrell.

Assuming for the sake of argument, however, that the evidence had a tendency, however slight, to establish that in July and August, 1983, Shabazz had an alternative source of drugs, the probative value would have been substantially outweighed by the danger of confusing the issues and misleading the jury. Fed.R.Evid. 403. The effect of receiving this evidence would have been to have a trial within the trial. Obviously, the credibility of the three witnesses would have been important and would have been subject to attack and counterattack. If the government had sought to introduce evidence to show that Shabazz did not have prior drug dealings, it would have been relevant. The focus would quickly have shifted from the guilt or innocence of the defendants to the collateral matters which Fed.R.Evid. 608(b) is intended to preclude.

There is no question about the fact that what counsel had planned to do right along was to impeach Shabazz’s credibility by showing he was a liar. N.T. 148, 151. It was not until after counsel had additional time to think about the matter that they came up with the theory that Shabazz had an alternative source of drugs because he had been a drug dealer on prior occasions. N.T. 4.151. On the grounds of Rules 401, 403, and Rule 608(b) the offer was properly rejected.

The same argument mounted by defendants here was considered and rejected by the Ninth Circuit in United States v. Norman, 402 F.2d 73 (9th Cir.1968), a case decided before the present rules of evidence were adopted. In Norman, defendant was convicted of violating the narcotics laws. The government’s case centered on the testimony of Porter White, a special employee of the government, who had made a purchase of heroin from the defendant. Procedures similar to the ones utilized by the DEA in this case were used in Norman. Defendant attempted to introduce the testimony of several individuals who would have stated that they had purchased narcotics from White, arguing that this evidence tended to show that White had an independent source of drugs. The district court excluded the evidence. The court of appeals affirmed, stressing that the probative value of the evidence was low and the risk of improperly shifting the jury’s focus was high. See id. at 77.

MOTIVE

Defendants next contend that the proffered evidence was probative of Shabazz’s “motive.” First, they contend that the motive of a witness is always relevant, especially in a criminal trial. Second, they contend that motive became relevant when the prosecutor put it in issue by eliciting Shabazz’s purpose in contacting the DEA.

Defendant’s contention that the motive of a witness may be explored through extrinsic evidence is correct. In fact, the Supreme Court has observed that the exposure of a witness’s motivation in testifying is so significant that, in a criminal case, curtailment of examination of motive may amount to a denial of due process or the right to confrontation. See Davis v. Alaska, 415 U.S. 308, 316-17, 94 S.Ct. 1105, 1110-11, 39 L.Ed.2d 347 (1974). However, “motive” as used in Davis and the cases cited by defendants, does not refer to the witness’ general reasons for becoming involved in the controversy. Rather, the motive which must be brought to the jury’s attention is the possible motive for a witness on the stand to lie or shade the truth. See, e.g., id. at 316-18, 94 S.Ct. at 1110-11 (confrontation clause required defense counsel to have the opportunity to cross-examine witness, who was on juvenile probation and may have had a motive to testify favorably to the prosecution); United States v. Harvey, 547 F.2d 720, 722-24 (2d Cir.1976) (error to exclude evidence that key government witness, who had once accused defendant of fathering her child, may have had a motive to testify falsely against the defendant); United States v. Robinson, 530 F.2d 1076, 1080 (D.C.Cir. 1976) (no error in admitting evidence that key defense witness may have had reason to testify favorably to defendant); J. Weinstein & M. Berger, Weinstein’s Evidence ¶ 607[03], at 23-24 (1982) (“[sjince bias of a witness is always significant in assessing credibility, the trier must be sufficiently informed of the underlying relationships, circumstances and influences operating on the witness so that, in light of his experience, he can determine whether a mutation in testimony could reasonably be expected as a probable human reaction).

Consequently, counsel must have offered some theory which would have shown that Shabazz had a reason to lie, for which the proffered evidence was relevant. Counsel’s theory is that Shabazz engaged in the DEA investigation in order to obtain money. Believing a steady flow of DEA funds would only be possible if he provided federal officials with numerous drug traffickers, Shabazz obtained drugs from a single source and then named numerous individuals, such as Ferrell and Green, as his suppliers.

Although counsel may have labeled this argument as one relating to motive, it is predicated on the same factual basis as their first argument — that Shabazz had a source of drugs independent of Green and Ferrell. For reasons already expressed, the offered evidence is insufficiently probative of that point. See Fed.R.Evid. 401, 403.

REBUTTAL

Counsel’s final argument, that the evidence is admissible to rebut Shabazz’s claimed reason for becoming involved in the DEA investigation, takes two forms. Their first argument is that Shabazz was not driven by a desire to eradicate a drug problem, but rather by a desire to obtain federal funds. This argument simply adds dressing to the motive argument that was previously rejected, and it must fail as well.

Counsel’s alternative argument, that the evidence should have been admissible simply to rebut Shabazz’s claimed reason for involvement, bears different analysis. Counsel argues that a person who has sold drugs in the past would not be likely to take part in a drug investigation in order to protect the community.

Involved here is a question concerning the scope of permissible rebuttal testimony. Under the Federal Rules of Evidence, the trial court is accorded broad discretion to control the admission of rebuttal evidence. See Geders v. United States, 425 U.S. 80, 96 S.Ct. 1330, 47 L.Ed.2d 592 (1976). In the Third Circuit, a two-step process has evolved to provide the district court with guidance in ruling on rebuttal questions. See United States v. Pantone, 609 F.2d 675, 681 (3d Cir.1979). See also American Home Assurance Co. v. Sunshine Supermarket, Inc., 753 F.2d 321, 325 (3d Cir.1985). First, the court must determine to what extent the offered evidence rebuts the witness’ prior assertion. See Pantone, 609 F.2d at 681. Next, under Rules 403 and 607, the court must balance the probative rebuttal value of the evidence against the danger of prejudice or confusion. Id.

In this case, the proffered evidence provides nothing of substance for rebuttal. The fact remains that the so-called rebuttal evidence speaks to some unknown time in the past. Numerous reasons could explain away any apparent discrepancy between Shabazz’s statement that he contacted DEA officials in order to alleviate a drug problem in his community and the proffered testimony that Shabazz had been seen in the past distributing drugs. Most apparent is the possibility that some event had caused Shabazz to reform in the interim.

Again, the potential for confusion that might result from the introduction of this evidence under a rebuttal theory is great. The door would have been open to a full-scale trial of Shabazz’s drug involvement and to any explanation for reform. The jury’s attention would have been shifted improperly from the main event to a side show. As with counsel’s other theories, the balance favors exclusion. See id.; Fed.R.Civ.P. 403, 607; J. Weinsten & M. Berger, Weinstein’s Evidence ¶ 607[05], at 67 (1982).

The need to give careful consideration to prejudice or confusion is magnified when the evidence offered in rebuttal would otherwise be barred by Rule 608(b). Cf. Pantone, 609 F.2d at 681 (prejudice must be carefully examined where offered rebuttal evidence would have been inadmissible under Rule 404(a) ).

In sum, after detailed review of the record and the contentions made by the defendants, I am convinced that it was entirely proper for me to exclude the offered testimony.

Defendants other contentions are rejected without discussion.

      . Because each defendant raises common issues, the motions will be considered together.

      . Also alleged to be error was my exclusion of evidence that at one time Shabazz was arrested and found with $5,000 and a telephone beeper device, evidence that, after 1979, Shabazz was not a registered notary public, and evidence that the company from which Shabazz claimed he rented his beeper never leased a device to an individual named Ricardo Shabazz. This evidence was offered for the same purposes as the eyewitness testimony that I excluded. See infra note 7.

      . Shabazz testified he had been told he would be under constant surveillance. N.T. 157. He would have no way to know when he was not under surveillance. N.T. 252. He always assumed he was under constant surveillance. N.T. 157, 251.

      . Apparently defense counsel had not actually interviewed these witnesses because he stated that this was his understanding of what they would say. He did not dispute the government's assertion that all they would say was that they had seen Shabazz standing on a street corner selling drugs at a time and place that is clearly remote from the issues here involved. N.T. 4.147.

      . In the brief submitted on behalf of the defendants it is contended that the prosecution introduced a question of bias into the trial by asking Shabazz if he had any "personal beef” against the defendants. N.T. 250. Actually the question of possible bias was initially raised by the defense when, on cross examination, counsel inquired whether Shabazz ever owed Ferrell money for whitewall tires, N.T. 185, and whether Ferrell had ever demanded money from him. N.T. 186. Counsel also strongly implied that a pawn ticket he showed to Shabazz had been delivered by Shabazz to Ferrell as security for a debt Shabazz owed Ferrell. N.T. 187-88. It was also brought out on cross-examination that Shabazz had known Karen Green and her family “for years.” N.T. 203-04. There was no objection to these questions, I was not asked to make a ruling, there was no offer of proof as required by Fed.R.Evid. 103, and there was no other evidence about bias or prejudice. Therefore, I do not know how anything about bias got into defendants' brief. I almost feel like Jack’s mother. One day I had a cow and the next a big beanstalk — and I do not know where it came from.
      Even if bias had been raised at trial, I fail to see how evidence of prior drug activity by Shabazz had any bearing on the issue of whether Shabazz had a “beef” with the defendants.

      . I reach this conclusion fully cognizant of the fact that concerns underlying the confrontation clause, which may be present in the instant case, were not implicated in Pantone.

      . As has been stated, defendants object to my exclusion of the following: evidence that after 1979 Shabazz was no longer a registered notary, evidence that at one time Shabazz had been arrested and found carrying a large cash sum and a telephone beeper device, and evidence that the company from which Shabazz claimed he rented his beeper had no records of ever leasing a device to a Ricardo Shabazz.
      Apparently, it is common practice among drug dealers to carry a beeper so that they can be contacted by prospective purchasers and suppliers. Shabazz testified that he rented the beeper so that he could be contacted to perform notarial services, tax work, and so that he could be available for his mother whom he claims had a heart condition.
      As with the excluded testimony that Shabazz had been seen in the past dealing drugs, counsel first offered the evidence to show that Shabazz was a liar and then argued other purposes for which the evidence was relevant. Defendants contend that the evidence was admissible to show that Shabazz had no legitimate use for the beeper and that he was involved in drug trafficking. Even assuming that this argument was raised at trial, it is readily apparent that the evidence has even less probative value than the offered testimony that Shabazz had been seen dealing drugs prior to 1983 and was properly excluded.


author: BRATTON, Chief Judge.

text:
    JORDACHE ENTERPRISES, INC., Plaintiff, v. HOGG WYLD, LTD., Susan Duran, Marsha Stafford, and Oink, Inc., Defendants.
    Civ. No. 84-1616 HB.
    United States District Court, D. New Mexico.
    Aug. 1, 1985.

      Earl R. Norris, Oldaker & Oldaker, Albuquerque, N.M., and Steven M. Gerber, New York City, for plaintiff.
    Jay Hertz, Sutin, Thayer & Browne and Stephen E. Woodbury, Albuquerque, N.M., for Hogg Wyld, Ltd., Susan Duran, Marsha Stafford and Oink, Inc.
   MEMORANDUM OPINION

BRATTON, Chief Judge.

This cause comes on for decision on the merits. The suit involves claims of trademark infringement under 15 U.S.C. §§ 1051, 1114 and 1125 (the Lanham Act), common law trademark infringement, and violation of the New Mexico Trademark Act, N.M.Stat.Ann. §§ 57-3-1 et seq. (1978), specifically § 57-3-10, the New Mexico “anti-dilution” statute. Defendants have counterclaimed requesting a declaratory judgment that their use of the “Lardashe pig pocket” mark in connection with the sale of jeans does not infringe upon any rights of the plaintiff. A non-jury trial was held June 20, 21, and 22, 1985. In addition, a hearing was held November 2, 1984 on plaintiff’s application for a preliminary injunction. The Court hhs considered evidence introduced at that hearing as well as at trial in reaching its decision on the merits. Having considered the evidence, the arguments and authorities advanced by the parties, and the record, the Court finds in favor of the defendants and against the plaintiff on plaintiff’s claims, and on defendants’ counterclaim. This Memorandum Opinion shall constitute the Court’s findings of fact and conclusions of law pursuant to Rule 52, Federal Rules of Civil Procedure.

The plaintiff, Jordache Enterprises, Inc. (Jordache), is a New York corporation which manufactures, markets, and licenses the manufacture and marketing of various items of apparel. Its principal line of apparel is designer blue jeans; that is, jeans intended to be stylish, fashionable, social and sport wear, rather than primarily work-wear. Jordache also markets or licenses the marketing of a number of other Jordache clothing items, accessories, and personal care items. Jordache is the owner of several trademarks used on, and in connection with the sale of, its jeans and other products. It has duly registered at least three of its marks with the U.S. Patent and Trademark Office. In 1979, it obtained a registration of the mark JORDACHE, in block letters, for use in connection with jeans and items of apparel. In 1983, it obtained registration of a mark consisting of JORDACHE printed in block letters superimposed over a drawing of a horse’s head. At the same time, it obtained registration of a mark consisting simply of the horse’s head drawing alone. In addition, an exhibit was introduced which indicates that plaintiff also employs a mark on some of its products consisting of the name Jordache in script lettering. There is no evidence that this mark has been registered.

Testimony at trial established that the plaintiff company was formed in 1978 with the intent of marketing stylish, fashionable jeans. It was formed by Joe Nakash and his two brothers, Israeli immigrants, who had arrived in the United States a few years earlier virtually penniless. The JORDACHE mark was used on and in connection with plaintiffs products from the beginning of the enterprise. The horse’s head mark was also used from the beginning or was adopted within a short time thereafter. One or more of its trademarks appears on all of the products manufactured or licensed by Jordache.

Through a massive initial advertising campaign Jordache created a very large customer awareness and demand for its products. It has continued to expend very large sums on advertising. Evidence was submitted which indicates that Jordache spent some * $30,000,000 to advertise its products in 1984. Its advertising is done on television, radio, newspapers, magazines, trade publications, in-store promotions, contests, give-aways, etc. Jordache products are sold in a wide range of retail outlets throughout the United States and internationally. Evidence indicates that Jordache has become the country’s fourth largest jeans manufacturer, selling over 20,000,000 pairs of jeans annually, with gross sales in the amount of some $500,000,000 in 1984.

The evidence establishes beyond any doubt that JORDACHE is a very strong trademark, and that it has acquired secondary meaning; that is, the mark is widely associated with the plaintiff company in the mind of consumers. See, Beer Nuts, Inc. v. Clover Club Foods Co., 711 F.2d 934 (10th Cir.1983). While there was little specific evidence as to the strength of the horse head mark, the Court finds from all the circumstances that it is also a strong mark.

One of Jordache’s licensees is Shaker Sport, which manufactures and markets Jordache large size jeans, clothing items, and accessories. These products are designed for large size women, and are marketed and advertised to appeal to that segment of the market. Evidence established that Shaker Sport has spent large sums of money annually advertising its line of Jordache large size jeans. Jordache large size jeans are sold in a wide range of retail outlets throughout the United States. The Jordache trademarks are used by Shaker Sport in advertising and marketing its line of Jordache large size jeans, and one or more of the marks appears on every Jordache item marketed by Shaker Sport. Apparently Jordache Enterprises itself does not produce a product designed especially for large size women. Evidence indicated that a primary emphasis of Shaker Sport’s advertising has been, “Now, you (large size women) can also achieve the Jordache ‘look’.”

The evidence indicates that Shaker Sport’s line of Jordache large size clothing has been a success. It has sold in the range of 33,000 to 60,000 pairs of Jordache large size jeans to date. Jordache has retained the right to approve and closely monitor all aspects of the manufacture, advertising, and marketing of Jordache products sold by its licensees, including Shaker Sport. For purposes of this law suit, the question whether defendants have infringed upon Jordache’s trademarks relates to the use of those marks by both Jordache and by its licensee, Shaker Sport. The same strong Jordache trademarks appear on, and are used in connection with, products sold by Shaker Sport under license from Jordache. It is the exclusive right to control the use of Jordache marks on items of apparel, primarily on large size designer jeans, that plaintiff seeks to protect from infringement in this suit.

Defendant Oink, Inc., formerly Hogg Wyld, Ltd., is a New Mexico corporation founded in 1984 by the defendants Marsha Stafford and Susan Duran. (The defendants may be referred to collectively as Lar.dashe.) Its primary business is marketing designer jeans for large size women under the trade name Lardashe, employing the “LARDASHE pig pocket” as a trademark. This mark consists of the name LARDASHE in script lettering stitched into the right rear pocket of the jeans; an inverted-heart-shaped embroidered design also on the pocket; and an embroidered applique of a pig’s head and pig’s feet, sewn onto the garment to appear as if the pig is peering over the top of the pocket.

Duran and Stafford began to market their Lardashe jeans in August or September of 1984. At that time they were operating as an informal partnership. They have been friends for a number of years, and at some point conceived the idea of designing and selling designer jeans for large size women. Both women testified that they themselves wear larger size clothing. They perceived that larger size women like themselves were unable to wear designer jeans, which apparently were available originally only in “standard” sizes for women. They felt that there existed a market for women’s large size designer jeans which, to their knowledge, no manufacturer was exploiting at that time. They set about to produce a garment to fill that void. They testified that their design includes a number of features not found in “standard” size designer jeans, which they included specifically to make the garment comfortable to and attractive on larger size women.

Duran and Stafford found a manufacturer for their product, had him make a prototype of the garment, and ultimately had him manufacture an initial order of some 500 pairs of jeans in various sizes, incorporating their design features. They had arranged for a separate company to produce the pig applique, which Stafford herself sewed onto each pair of jeans. The women have financed this enterprise using personal savings, loans from acquaintances, and after the initial order was received, from the sale of jeans. They have operated the business out of their homes.

While their record-keeping has been somewhat loose, it appears that approximately 1600 pairs of Lardashe jeans have been produced, and approximately 1300 pairs have been sold. To date, sales have been limited to several specialty shops and boutiques in New Mexico, Colorado, and Arizona in relatively small quantities. In addition, Duran and Stafford have sold a number of pairs of Lardashe jeans to individuals, either acquaintances or women who learned of the product and asked to buy a pair. They state that they have never formally advertised. Several newspaper ads have been placed by shops carrying Lardashe jeans.

Despite the great difference in size of the two companies, and the so far limited retail availability of Lardashe jeans, the two products are presently in actual competition. At least one of the shops that carries Lardashe jeans also carries, or has carried, Jordache jeans. In addition, Lardashe hopes to expand its market, ultimately to sell its jeans in a wide range of retail outlets nationwide, should customer awareness and demand justify such expansion. Shortly after Lardashe began to sell its jeans, in the fall of 1984, a New Mexico television station ran a brief news item about Lardashe jeans, featuring Duran and Stafford. This news spot subsequently was broadcast by a national television network. It was because of this national news item that officials at Jordache became aware of the existence of Lardashe. The ensuing publicity generated several inquiries to Duran and Stafford from garment marketers around the country concerning the possibility of carrying Lardashe jeans. One of the inquiries was from J.C. Penney Co., certainly one of the largest retailers in the country. Evidence indicated that J.C. Penney also carries Jordache products. There is a strong possibility that actual competition between Jordache and Lardashe will increase.

A question of fact exists as to defendants’ intent in selecting the name Lardashe for their product. Why and how were the name, and the Lardashe pig pocket mark, selected? Plaintiff points to the similarities in spelling and pronunciation of the two trade names, and defendants’ use of an animal’s head in conjunction with the name. It contends that these factors compel the conclusion that defendants intended to imitate the Jordache trademarks, to cause confusion between the two marks in the minds of consumers. Defendants claim that similarities to the Jordache name and marks were never considered in selecting the name Lardashe and the pig pocket mark.

At both the preliminary injunction hearing and at trial, Stafford and Duran testified that the name Lardashe was simply a more polite form of the word “lardass.” “Lardass” had been Stafford's nickname since childhood. She testified that she had considered the idea of making jeans with this more polite form of her nickname for a number of years. Both women testified that they were only vaguely familiar with the Jordache name and brand of jeans at the time they decided to start their business. They contend that the similarities between the two marks never occurred to them at that time, nor do they perceive that the marks are closely similar now. Stafford testified that the letter “e” at the end of Lardashe is intended to give the name more style, and also to represent a pig’s tail as it appears in script lettering. Stafford also testified that “ashe” is a play upon the names of ancient goddesses Asherah and Ashtoreth, who are mentioned in the Bible.

Duran testified at the preliminary injunction hearing, however, that the women had considered such names as “Calvin Swine,” “Sow-soon,” and “Horse’s ashe” as possible names for their jeans. At trial, it was explained that those names were merely discussed in fun, well after they had decided upon the name Lardashe. In essence, they maintain that Lardashe was selected solely as a play upon Stafford’s nickname, and it was never intended nor contemplated to be similar to or to play upon the name Jordache.

The Court finds that defendants’ explanation for the selection of the name Lardashe is not credible. Considering all the circumstances, the Court finds that the defendants intended the name Lardashe to be a humorous play upon the name Jordache. The Court finds further, however, that the defendants did not intend the name Lardashe to be confusingly similar to Jordache, so as to cause confusion between the two names in the public mind. Defendants’ intent was to employ a name that, to some extent, parodied or played upon the established trademark Jordache. Defendants did not intend to “palm off” their jeans as Jordache jeans; that is, to confuse the public into believing it was buying a Jordache product.

15 U.S.C. § 1051 provides for the registration of trademarks with the Patent and Trademark office. It is undisputed that Jordache has duly registered, pursuant to § 1051, several of the trademarks at issue in this suit. 15 U.S.C. § 1114 provides protection against infringement for a registered trademark. It provides, in pertinent part,

(1) Any person who shall, without the consent of the registrant (a) use in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale ... or advertising of any goods ... which such use is likely to cause confusion, or to cause mistake, or to deceive; ... shall be liable in a civil action by the registrant ...

15 U.S.C. § 1125 provides protection for any trademark, whether registered or not, against infringement by a junior user of the mark. It provides, in pertinent part,

Any person who shall affix ... or use in connection with any goods or services ... a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, ... shall be liable to a civil action ... by any person who believes that he is or is likely to be damaged by the use of such false description or representation.

Jordache has alleged that the use by defendants of the Lardashe trademark violates §§ 1114 and 1125, as well as the common law of unfair competition. It is well settled that the test is the same for determining whether infringement has occurred under either of these statutes or under the common law of unfair competition: the so-called “likelihood of confusion test.” Amoco Oil Co. v. Rainbow Snow, 748 F.2d 556 (10th Cir.1984). “A trademark is infringed if use of the allegedly infringing mark is likely to cause confusion or mistake, or to deceive purchasers ... as to the source, endorsement, affiliation or sponsorship of the product.” Id. at 559 (citing Control Components, Inc. v. Valtek, Inc., 609 F.2d 763, 771 (5th Cir.1980).

In this case, the dispositive issue as to each of plaintiff’s infringement counts is whether an average consumer is likely to be confused that Lardashe jeans are manufactured by or are affiliated with Jordache. In Beer Nuts, Inc. v. Clover Club Foods, Co., 711 F.2d 934 (10th Cir.1983), the Court of Appeals for the Tenth Circuit thoroughly discussed the factors to be considered in determining likelihood of confusion. “The resolution of this issue requires the court to consider numerous factors to determine whether, under all the circumstances, there is a likelihood of confusion” in the marketplace. 711 F.2d at 940 (citing Vitek, supra). The court set forth four general factors to be examined in making the determination:

(a) the degree of similarity between the designation and the trade-mark or trade name in
(i) appearance;
(ii) pronunciation of the words used;
(iii) verbal translation of the pictures or designs involved;
(iv) suggestion;
(b) the intent of the actor in adopting the designation;
(c) the relation in use and manner of marketing of the goods of the two parties;
(d) the degree of care likely to be exercised by purchasers.

Id. The court stated that this list is not exhaustive and that no one factor is determinative. Ultimately, the facts of each case must be examined carefully to determine whether, under all the circumstances, there will be a likelihood of confusion in the marketplace. Side by side comparison, in the context of a court proceeding, is not the test. Id. at 941.

The Court finds, considering all the factors set forth above and the somewhat unique circumstances presented by this case, that there is no likelihood that consumers in the marketplace will be confused that Lardashe jeans are made by, or are affiliated with, Jordache. There is an obvious similarity in appearance and pronunciation between the names Jordache and Lardashe. There is little similarity between the Jordache “horse-head” mark and the Lardashe “pig pocket design.” The “horse head” design is relatively subtle and refined. In contrast, the “pig pocket” is striking, brightly colored, and far from subtle. The pictures and designs of the two marks verbally translate quite dissimilarly. Obviously, one is a horse and the other a pig. Moreover, the two marks suggest dissimilar images or concepts. The Jordache mark can be characterized fairly as suggesting an image or concept of style or “class.” Without meaning to imply that Lardashe jeans are not stylish or fashionable, the image suggested by the Lardashe mark is humorous, or “cute,” or facetious.

It is true that the nature of the goods is the same; both are designer jeans. It is also true that they are likely to be marketed, advertised, and displayed in stores in a similar way. On the other hand, as to care exercised at time of purchase, the evidence established that both brands of jeans generally retail for at least $15.00 and in some cases for as much as $60.00 per pair. Moreover, it is likely that most customers will examine clothing items of this type rather carefully prior to purchasing them. A high degree of care is likely to be exercised by purchasers of these products.

Considering all these factors, the Court finds that there is not a likelihood that consumers will be confused between the two brands of jeans. There is simply no likelihood that consumers will purchase a pair of Lardashe jeans, believing that she is purchasing Jordache jeans. The two marks are so obviously distinct in their overall appearance, in the image they suggest, and in the concept each embodies, that the average consumer is unlikely to be confused between the two in the marketplace. The overall differences between the two marks greatly overcomes the similarity in spelling and pronunciation of the names Jordache and Lardashe. There is no likelihood that Lardashe jeans will be “palmed off” as Jordaehe jeans.

There was not sufficient credible evidence to convince the Court of a likelihood that consumers will believe Lardashe is somehow affiliated with, or sponsored by, Jordaehe. Paul Ornstein, Executive Vice President of Shaker Sport, testified that he was contacted by colleagues in the garment industry who evidenced actual confusion regarding an affiliation between Lardashe and Shaker Sport’s Jordaehe large size jeans. This testimony was hearsay. Even if it had constituted admissible evidence, it would not have constituted evidence of actual confusion by consumers in the marketplace, but rather confusion by industry professionals. Likelihood of confusion on the part of such industry professionals does not establish trademark infringement. Cf., Beer Nuts, supra.

Plaintiff also introduced evidence in the form of a consumer survey. The survey was devised by, and conducted under the direction of, Dr. Avraham Shama, a professor of marketing, who also testified. Seventy persons were surveyed. They were asked several questions concerning their ownership of jeans and general knowledge of brands of jeans. They were then asked to examine pairs of Jordaehe and Lardashe jeans, and were asked to give their impressions concerning manufacture, affiliation, and quality of the two brands. The survey was conducted in the Student Union building of the University of New Mexico. The respondents were primarily students. Approximately half were male and half were female. All said they were jeans wearers.

In pertinent part, the survey results were as follows. Thirteen of the respondents thought Lardashe and Jordaehe “jeans” were similar. This figure is essentially irrelevant, as it is the similarity of the marks, not of the products, that is at issue. In this case, whether a consumer may perceive the products themselves as similar is little help in determining whether there is a likelihood of confusion as to source of origin of the products. Ten respondents answered that they felt Jordaehe and Lardashe jeans were manufactured by the same manufacturer. Fifty-eight stated that they felt the jeans were manufactured by different manufacturers, and two had no opinion. This does not constitute compelling evidence of a likelihood of confusion in the marketplace. Indeed, this survey was not conducted in the marketplace among potential jeans purchasers. Most important, however, this figure is evidence merely of the possibility of confusion, not its likelihood. A showing of a possibility of confusion is not sufficient to prove infringement. E.g., Instrumentalist Co. v. Marine Corps League, 509 F.Supp. 323 (N.D.Ill.1981). Likelihood of confusion is the test.

The survey went on to ask' those who believed the jeans were made by different manufacturers whether the two names were confusing. A total of 63 respondents answered this question, ten in the affirmative and 53 in the negative. Yet, only 58 respondents properly should have answered this question, as' 58 had answered “different manufacturers” to the prior question. The results of the question are therefore inconclusive. Moreover, this figure does not constitute compelling evidence of likelihood of confusion.

In American Footwear Corp. v. General Footwear Co., 609 F.2d 655 (2d Cir.1979), the court found permissible the district court’s rejection of a far more extensive and compelling consumer survey. The survey was rejected in part because it was not conducted under actual marketing conditions. In the case at bar, the Court finds plaintiff’s survey evidence insufficient to prove likelihood of confusion among consumers in the marketplace. Its results are equivocal at best, and the setting, limited size of the sample, and methodological and computational weaknesses, render it uncompelling. Under all the circumstances, plaintiff has failed to prove by a preponderance of the evidence a likelihood of confusion as to manufacture, sponsorship or affiliation.

There is an additional aspect to the Lardashe name and mark which compels the conclusion that its use does not infringe upon the Jordache name and marks: the aspect of parody. Parody is not an affirmative defense in a trademark infringement case, as plaintiff contends. It is “merely a way of phrasing the traditional response that customers are not likely to be confused as to source, sponsorship or approval.” 2 J.T. McCarthy, Trademarks and Unfair Competition § 31.38 (2d ed. 1984).

[Ijnnocent and clean parodies of famous marks cause no loss of distinctiveness because success of the joke depends upon continued association of the mark with its owner: “[T]he joke itself reinforces the public’s association of the mark with the plaintiff.” [citation omitted] What must be kept in mind in such cases is that “confusion” means more than that the junior user’s mark merely “calls to mind” the senior user’s mark, [citations omitted] That the defendant’s joke mark calls the plaintiff’s mark to mind is necessary for there to be a humorous parody at all____ But the requirement of trademark law is that a likely confusion of source, sponsorship or affiliation must be proven, which is not the same thing as a “right” not to be made fun of.

Id. Universal City Studios, Inc. v. Nintendo Co., Ltd., 746 F.2d 112 (2d Cir.1984), was an infringement suit brought by the owner of the trademark rights to the movie character “King Kong,” against the manufacturer of the video game “Donkey Kong.” The trial court had found that Donkey Kong creates a different concept and feel from the drama of King Kong, and that Donkey Kong was a parody of King Kong. The court of appeals stated, “[T]he fact that Donkey Kong so obviously parodies the King Kong theme strongly contributes to dispelling confusion on the part of consumers.” Id. at 116.

In the case at bar, the Lardashe name and mark are to some degree an obvious parody of the Jordache name and marks. This fact, and the fact that the marks create a very different concept, image, and “feel,” contributes to dispelling confusion as to source, affiliation, or .sponsorship on the part of consumers.

A somewhat related issue concerns whether trademark infringement exists where a junior user of a mark intentionally undertakes to capitalize upon public awareness of a product or an idea created by the advertising of the senior user. The few cases that have discussed this specific issue have held that such action alone does not constitute infringement or unfair competition. In American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 662 (2d Cir.1979), the court stated, “[0]ne can capitalize on a market or fad created by another provided that it is not accomplished by confusing the public into mistakenly purchasing the product in the belief that the product is. the product of the competitor.” The court went on to state, “[J]ust as the expenditure of large sums of money does not in and of itself create legally protectable rights, so, too, the mere presence of extensive advertising does not assure the existence of a likelihood of confusion.” Id. at 663. The court held that while the defendant plainly intended to capitalize upon plaintiff’s popularization of the term “Bionic” when it used it as a mark for shoes, it did not so capitalize by confusing customers. Therefore, there was no infringement. In Warner Bros., Inc. v. Gay Toys, Inc., 513 F.Supp. 1066 (S.D.N.Y. 1981), defendant manufactured a toy car that was nearly an exact replica of a car featured prominently in a popular television series. The court found that defendant intentionally designed its product to capitalize on the popularity of plaintiff’s mark, the car. The court found no likelihood of confusion as to source or affiliation. It held that absent confusion it is not improper for a competitor to benefit from the incidental fallout of plaintiff’s advertising and promotion. See also, Haagen-Dazs, Inc., v. Frusen Gladje Ltd., 493 F.Supp. 73 (S.D.N.Y.1980) (Plaintiff does not have exclusive right to “unique marketing theme,” which it created and advertised heavily, absent likelihood of confusion as to source or affiliation).

Lardashe may intentionally have set out to capitalize upon, through parody, the fact that Jordache is a well recognized name and mark among consumers. There is no question that Jordache has advertised extensively in order to create that customer recognition. However, such an intent by Lardashe, without the existence of a likelihood of confusion between the marks, does not infringe any rights possessed by Jordache. It does not own in gross the penumbral customer awareness of its name, nor the fallout from its advertising.

Plaintiff has also brought a cause of action under the New Mexico Trademark Act, N.M.Stat.Ann. §§ 57-3-1, et seq. The Act includes a statute prohibiting trademark infringement, N.M.Stat.Ann. § 57-3-9 (1978). That section applies both to state-registered marks, which has not been shown to exist in this case, as well as to any other mark used upon goods in the state. The language of § 57-3-9 is similar to 15 U.S.C. § 1125. No New Mexico case has indicated that the test for infringement under § 57-3-9 should be any different from the “likelihood of confusion” test for infringement at federal and common law, and plaintiff has not argued that the standards are different. The tests being the same, plaintiff has not proved that defendants actions violate § 57-3-9.

N.M.StatAnn. § 57-3-10 states:

Likelihood of injury to business reputation or of dilution of the distinctive quality of a trademark or trade name ... valid at common law is ground for injunctive relief notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.

This is a so-called anti-dilution statute. No New Mexico court appears to have construed the statute. However, the statute is essentially identical to anti-dilution statutes in many other states. See, e.g., N.Y.Gen. Bus.Law § 368-d; Ill.S.H.A. ch. 140, § 22.

“The dilution theory grants protection to strong, well-recognized marks even in the absence of likelihood of confusion, if defendant’s use is such as to tarnish, degrade, or dilute the distinctive quality of the mark.” 2 J.T. McCarthy, Trademarks and Unfair Competition § 24:13 (2d ed. 1984). Some courts have held that a cause of action for dilution does not lie where there is direct competition, the products are similar, and the question is whether the marks are confusingly . similar. See id., (citing cases'). In such cases, it is felt that the traditional cause of action for infringement provides an adequate remedy and the proper test “for determining whether there has been unfair competition. The paradigmatic dilution case involves the situation where the same or very similar marks are being used on vastly different products. See id., p. 215, n. 12. Examples might include BEEFEATER used for a restaurant; DIOR used for a cleaning establishment; BACARDI used for jewelry; PLAYBOY used for auto repair. The case at bar is not a paradigmatic dilution case. Nevertheless, plaintiff’s cause of action for dilution has been considered. Plaintiff has not proved that use of the Lardashe name and mark violates the New Mexico anti-dilution statute.

Courts and commentators uniformly have stated that dilution essentially can take one of two forms. See, McCarthy, supra § 24:13; 1 J. Gilson, Trademark Protection and Practice § 5.05[9] (1985); Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621 (2d Cir.1983); Instrumentalist Co. v. Marine Corps League, 509 F.Supp. 323 (N.D.Ill.1981). The first is the “blurring” or “whittling down” of the distinctiveness of a mark. This can occur where the public sees the mark used widely on all kinds of products. The examples set forth above exemplify potential situations where this type of dilution could occur; i.e. DIOR cleaners, BACARDI jewelry, ROLLS ROYCE cat food. The injury consists of “the risk of an erosion of the public’s identification of this very strong mark with the plaintiff alone, thus diminishing its distinctiveness, uniqueness, effectiveness and prestigious connotations.” Tiffany & Co. v. Boston Club, Inc., 231 F.Supp. 836 (D.Mass.1964) (use of TIFFANY for a restaurant).

Plaintiff has not proved that use of the Lardashe name and mark by defendants will whittle away or blur the distinctiveness of its name and marks. Jordache is no doubt a very strong mark, and may be entitled to protection from this type of dilution. However, such dilution is not likely to occur here. The two names and the marks are not the same or very similar. Because of the parody aspect of Lardashe, it is not likely that public identification of JORDACHE with the plaintiff will be eroded; indeed, parody tends to increase public identification of a plaintiff’s mark with the plaintiff. Because of the relative lack of similarity, the uniqueness of Jordache is not likely to be eroded. Under all the circumstances, the continued existence of LARDASHE jeans simply will not cause JORDACHE to lose its distinctiveness as a strong trademark for jeans and other apparel.

The second type of dilution is tarnishment. Tarnishment of a trademark can occur, even absent confusion as to source or affiliation, where the defendant has used the same or a similar mark in a way that creates an undesirable, unwholesome, or unsavory mental association with the plaintiff’s mark. Tarnishment was found in such cases as Dallas Cowboy Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200 (2d Cir.1979) (use of the distinctive Dallas Cowboy Cheerleader uniform in a particularly obscene movie); Coca-Cola Co. v. Gemini Rising, Inc., 346 F.Supp. 1183 (E.D.N.Y.1972) (use of distinctive Coca-Cola logo to convey the message “Enjoy Cocaine” rather than “Enjoy Coca-Cola”); General Electric Co. v. Alumpa Coal, Co., 205 U.S.P.Q. 1036 (D.Mass.1979) (“Genital Electric” placed within distinctive General Electric logo).

For tarnishment to exist, there must be a “particularly unwholesome association.” Gilson, supra at § 5.05[2], Where the association is essentially a harmless, clean pun, which merely parodies or pokes fun at the plaintiff’s mark, tarnishment is not likely. See, Toho Co. v. Sears, Roebuck & Co., 645 F.2d 788 (9th Cir.1981). In Toho, Sears had used the mark BAGZILLA and the phrase “monstrously strong” on garbage bags. The court found that this parody of plaintiff’s mark GODZILLA, a movie monster character, did not constitute tarnishment. See also, e.g., Carson v. Here’s Johnny Portable Toilets, Inc., 698 F.2d 831 (6th Cir.1983) (no tarnishment where defendant used mark HERE’S JOHNNY and slogan “World’s Foremost Commodian” in connection with portable toilets); Girl Scouts v. Personality Posters Mfg. Co., 304 F.Supp. 1228 (S.D.N.Y.1969) (poster of pregnant Girl Scout with the motto “Be Prepared” not tarnishment but merely “lampooning use” of the Girl Scout name, motto, and insignia).

In the case at bar, defendants' parody of the JORDACHE mark, by the turn of phrase LARDASHE, might be considered to be in poor taste by some consumers. However, it is not likely to create in the mind of consumers a particularly unwholesome, unsavory, or degrading association with plaintiff’s name and marks. There is no likelihood that LARDASHE will tarnish plaintiff’s name or marks.

In summary, the Court finds that plaintiff has failed to prove that defendants have infringed upon its trademarks under 15 U.S.C. §§ 1051, 1114, or 1125; the common law of unfair competition; or the New Mexico Trademark Act. Plaintiff has also failed to prove that defendants have violated the New Mexico anti-dilution statute, N.M.StatAnn. § 57-3-10 (1978). A judgment shall be entered in favor of the defendants on plaintiff’s claims. In addition, defendants are entitled to a declaratory judgment in their favor on their counterclaim that the LARDASHE mark does not violate any of plaintiff’s rights in regard to the trademarks at issue in this cause. A judgment will be entered in conformity with this Memorandum Opinion.