author: LEISURE, District Judge:

text:
    Sandra MAYER, Plaintiff, v. JOSIAH WEDGWOOD & SONS, LTD., Defendant.
    No. 84 Civ. 1222 (PKL).
    United States District Court, S.D. New York.
    Feb. 7, 1985.

      Lisa Kolb Liebert, New York City, for plaintiff.
    Leonard S. Sandweiss, New York City, for defendant.
   OPINION AND ORDER

LEISURE, District Judge:

This case concerns a dispute over a Christmas tree ornament. Rather than fostering peace and harmony in the holiday spirit, the ornament has instead led to litigation.

The ornament consists of a small round cameo made of blue jasperware (dull gloss china), embossed with a white snowflake in bas relief, and mounted in gold. It is surrounded by three alternating perpendicular concentric gold bands, with a small eye hook at the top, presumably for hanging. This ornament was offered for sale in the United States during the 1982 Christmas season by Josiah Wedgwood & Sons, Inc.

This suit centers on plaintiff Sandra Mayer’s charge that the snowflake design found on the ornament is a substantial copy of a design she had submitted to the Wedgwood organization some years earlier with a view to marketing a Christmas plate featuring the design. Her plan was ultimately rejected. In the instant suit she claims she is entitled to be paid for her design, which she asserts was the model for Wedgwood’s snowflake.

Mayer’s complaint was filed in February 1984. The defendant, Josiah Wedgwood & Sons, Ltd. (“JWS Ltd.”), is a British corporation with its principal place of business in England. It manufactures the famous Wedgwood brand china. It is a wholly owned subsidiary of Wedgwood pic (“pic”), which likewise is a British corporation headquartered in England. Josiah Wedgwood & Sons, Inc. (“JWS Inc.”), is a New York corporation with its principal place of business in either New York or New Jersey. It, too, is a wholly owned subsidiary of pic. It purchases JWS Ltd.’s product and imports it into the United States, where it resells the china out of its own inventory. It is on JWS Inc. that Mayer originally had process served, on the theory that it is JWS Ltd.’s agent or alter ego in New York. She later effected service of process by mail upon JWS Ltd. in England.

This case is now before me on defendant’s motion for summary judgment. For the reasons set forth below, that motion should be granted.

I. FACTS.

The plaintiff, Sandra Mayer, is an artist. Her work, including snowflake designs, has been sold to museums and art houses. Her snowflake designs are a product of her own “interpretation” of what is found in nature. According to Mayer, her work on snowflakes began with a trip to the library —“probably” the Great Neck library— where she looked at books about snow, photocopied certain pages of designs, and “worked from there.” She does not remember which books she used, and she destroyed the photocopies when she was done with them. No federally registered copyright was obtained for any of her work, though she did place a copyright notice on at least some of her creations. The design at issue here, however, had no such copyright notice.

In late 1978 or early 1979, Mayer met with Roy Moyer, a representative of the United Nations Children’s Fund (UNICEF), and offered to contribute this design to UNICEF for use in a Christmas card to be issued by UNICEF. UNICEF accepted her offer and for the 1979 holiday season marketed a greeting card featuring Mayer’s snowflake, which was embossed on the cover. The back of the card acknowledged Mayer’s contribution, but contained no copyright notice.

At about the same time, Mayer began exploring possibilities for commercial exploitation of her snowflake. She engaged the services of one Emil (“Sam”) Polk, president of a company called Latama, Inc. It was proposed that a Christmas plate be manufactured, featuring Mayer’s design. In an effort to bring the plan to fruition, Polk approached James Fulks, Vice President-Marketing of JWS Inc., to explore possibilities for a deal. Negotiations began, and in December 1978, Mayer submitted to JWS Inc. through Polk an embossed print of the snowflake design.

The Wedgwood organization ordinarily designs, produces and distributes its own products. Occasionally, though, it is approached by outsiders with specific ideas for china products. These are “custom orders.” When JWS Inc. receives a proposal for a custom order, it contacts JWS Ltd., which manufactures all of Wedgwood’s china, to inform it of the proposal. JWS Ltd. then determines whether production would be feasible, what the necessary costs are, what the minimum quantity should be, and other such matters. JWS Inc. informs the customer of JWS Ltd.’s decision. If the custom order goes ahead, JWS Ltd. manufactures the items and sells them to JWS Inc., which then resells them to the customer.

The Polk proposal was one such custom order. Polk’s dealings were wholly with JWS Inc., and the negotiations were evidenced by correspondence between JWS Inc. and Polk and between JWS Ltd. and JWS Inc. Polk never dealt directly with JWS Ltd. The documents indicate that a limited run of 10,000 plates was contemplated, which would be marketed through a new company organized by Polk called Art International. Much of the correspondence concerned the contents of the backstamp on the proposed plates and the design and size of the plate’s border. It is clear from the correspondence between the two Wedgwood companies that by October 25, 1979, the Polk project was considered unfeasible and thus would not be going forward.

At this point the evidence presented to me becomes unclear. Mayer testified at deposition that she does not remember requesting return of her print (deposition p. 87). However, in a letter dated July 27, 1983, Catherine Adamczyk, Corporate Secretary of JWS Inc., wrote to Mayer’s attorney, Ms. Liebert, that the print had been returned to Polk in 1979. I have no evidence from Polk or anyone else as to where the print is now.

According to the complaint, Mayer discovered “her” snowflake on Wedgwood’s ornament on or about November 1, 1982. In 1983, Mayer through Liebert contacted Adamczyk at JWS Inc. to discuss her claim that her design had been used without payment. Adamczyk promised to do some research to determine the source of the design on the Christmas ornament and to get back to Liebert. On November 23, 1983, Adamczyk wrote to Liebert to inform her that the snowflake on the ornament had been created in Wedgwood’s Design Studio, adding that Wedgwood had no need to copy snowflake designs from others and had not in fact done so.

On February 22, 1984, Mayer filed suit against JWS Ltd. Her complaint states two causes of action. The first alleges that JWS Ltd. converted her design to its own use, and the second alleges unfair competition. She seeks damages for the alleged conversion and an accounting and payment to her of all profits earned by JWS Ltd. on sales of the allegedly infringing Christmas ornament. Subject matter jurisdiction is founded on diversity of citizenship under 28 U.S.C. § 1332. Process was served on JWS Inc.

On July 13, 1984, after conducting some discovery of plaintiff, defendant filed this motion for summary judgment. JWS Ltd.’s motion raises four objections to Mayer’s suit: lack of personal jurisdiction; insufficient service of process; preemption of Mayer’s claim by federal copyright law; and failure to join Polk and UNICEF as indispensable parties.

Mayer conducted some discovery, and at about the same time she filed her response to JWS Ltd.’s motion, she effected service by mail upon JWS Ltd. in order to obviate any possible insufficiency of service attributable to the fact that process had been served not on JWS Ltd. but on JWS Inc.

I have received briefs and heard oral argument of defendant’s motion. I conclude that defendant’s motion should be granted and this case dismissed.

II. IN PERSONAM JURISDICTION.

Since subject matter jurisdiction in this case is founded on diversity of citizenship under 28 U.S.C. § 1332, the issue of this Court’s personal jurisdiction over JWS Ltd. is determined by the law of the state in which this Court sits, in this case New York. See Arrowsmith v. United Press Int’l, 320 F.2d 219 (2d Cir.1963) (Friendly, J.). The burden of establishing the court’s jurisdiction “rests upon the party asserting it.” Trafalgar Capital Corp. v. Oil Producers Equip. Corp., 555 F.Supp. 305, 308 (S.D.N.Y.1983) (citation omitted). Accord Lehigh Valley Indus., Inc. v. Birenbaum, 527 F.2d 87, 92 (2d Cir.1975); Bialek v. Racal-Milgo, Inc., 545 F.Supp. 25, 31 (S.D.N.Y.1982). Thus, Mayer “must show by the complaint and supporting affidavits the essential requirements of the jurisdictional statute.” Le-high Valley, supra at 92 (citations omitted).

Additional facts relevant to the jurisdictional question are as follows. Wedgwood’s operations in England are divided among a number of apparently autonomous wholly owned subsidiaries of pic, and its American operation involves a number of different locations. JWS Ltd. manufactures the china products. Products meant for export from England are then sold to Josiah Wedgwood & Sons (Exports) Ltd. (“Exports”), which then resells the America-bound china to JWS Inc. on terms F.O.B. factory. Exports does the shipping. The products sold to JWS Inc. are off-loaded in New Jersey and brought to JWS Inc.’s warehouse, which is also in New Jersey. Occasionally there is an emergency order which must be brought into the U.S. quickly. In such cases, JWS Inc. has the order flown in to Kennedy Airport in New York.

JWS Inc.’s warehouse and the bulk of its employees and offices are located in New Jersey. In its New York facility are its top executive officers, marketing and public relations executives, and a showroom.

JWS Ltd.’s activities in New York are extremely limited. JWS Ltd. does not itself advertise its products in the United States. All American promotion of Wedgwood products is done by JWS Inc. JWS Ltd. does, however, supply certain brochures to JWS Inc. for “public relations and informational purposes.” (Interrog. ans. 40). These brochures deal with such topics as the history of Wedgwood and how Wedgwood products are made.

Several JWS Ltd. employees travel to New York during the year for various purposes. (Interrog. ans. 38). Most of these visits appear to be related to market research; the employees “sound the market,” discuss new products and designs, and familiarize themselves with the American market’s requirements. Occasionally, a craft potter will come for demonstration purposes or a sales director will come for a public relations presentation. Other JWS Ltd. executives travel to New York to discuss “special projects” handled by JWS Inc.; others come as liaison to the “New York Office” or to discuss inventory control.

Several hundred containers of Wedgwood products are shipped into the United States each year. The cameos used in the ornament at issue followed the usual shipment route from England to New Jersey. They were mounted in the gold setting and packaged as ornaments in Connecticut. The finished ornaments were then distributed from JWS Inc.’s New Jersey warehouse. At least some of the ornaments appeared in JWS Inc.’s New York showroom.

Pic’s predecessor corporation, Josiah Wedgwood & Sons, Ltd., qualified to do business in New York in 1915, but it stopped doing business in New York in 1919, when JWS Inc. was organized. The parent became Wedgwood Ltd. in 1966 and pic in 1981. JWS Ltd. was formed in England in 1966.

In 1980, pic’s New York counsel found through a routine search that pic’s predecessor had never been removed from the list of companies licensed to do business in New York. He immediately contacted the appropriate state agencies to file a certificate of withdrawal. After numerous inquiries and letters, he was informed by the New York State Department of Taxation and Finance on September 4, 1981 that no withdrawal need be filed since neither pic nor its predecessor was registered to do business in New York.

Mayer has advanced three theories in support of her contention that JWS Ltd. is subject to this Court’s jurisdiction. She argues that JWS Ltd. is doing business in New York within the meaning of CPLR § 301; that JWS Ltd. has transacted business in New York under CPLR § 302(a)(1); and that it has committed a tort outside the state causing injury within the state under CPLR § 302(a)(3). Section 302(a)(1) alone suffices to establish JWS Ltd.’s amenability to suit in New York in this case.

Section 302(a)(1) permits a New York court to assert jurisdiction over a nondomiciliary who transacts business in New York personally or through an agent. Such jurisdiction is limited to causes of action arising from the jurisdictional predicate. I find that JWS Ltd. transacted business in New York by negotiating with Polk through its agent, JWS Inc., and that this lawsuit arises out of those negotiations.

The agency provision of § 302 has not been strictly construed. A formal agency relationship is not necessary for jurisdiction. Instead, a more flexible concept of agency is used. “ ‘[A]gent’ ... include[s] any person who, with the consent of the nondomiciliary and under some measure of his control, acts in New York for the benefit of the nondomiciliary.” Mayes v. Leipziger, 674 F.2d 178, 181 (2d Cir.1982). See also McLaughlin, Practice Commentaries on § 302, C302:3, N.Y.Civ. Prac.L. at 52 (McKinney Supp.1984-85).

In this case, JWS Inc. acted as an intermediary between JWS Ltd. and Polk in the negotiations over the proposed Christmas plate. JWS Ltd. determined what was feasible and JWS Inc. informed Polk on JWS Ltd.’s behalf of JWS Ltd.’s position. A potentially profitable proposition had been presented to JWS Ltd. in New York, and JWS Ltd. explored its possibilities, using JWS Inc. as its mouthpiece and relay station in New York. Thus, the negotiations between Polk and JWS Ltd. took place in New York, with JWS Inc. acting as JWS Ltd.’s agent.

Moreover, significant contract negotiations in New York constitute transaction of business here for jurisdictional purposes, and it makes no difference “whether the negotiations are preliminary, or whether the contract is executed in New York, or whether performance is contemplated for New York.” Bastille Properties, Inc. v. Hometels of Am., Inc., 476 F.Supp. 175, 177 (S.D.N.Y.1979). Preliminary negotiations in New York that are “essential to the existence of the contract” provide sufficient contact to establish New York’s personal jurisdiction over the non-domiciliary defendant. M.L. Byers, Inc. v. HRG Productions, Inc., 492 F.Supp. 827, 831 (S.D.N.Y.1980). There is no logical reason for holding finalization of the New York-negotiated contract crucial to jurisdiction under § 302(a)(1). Where, as here, defendant’s agent acted in New York to “further ... the contract that was being negotiated,” id., defendant has “purposefully availed himself” of the “privilege of conducting activities” in this state and accordingly is subject to suit in its courts. Id. (citing George Reiner & Co. v. Schwartz, 41 N.Y.2d 648, 653, 394 N.Y.S.2d 844, 847, 363 N.E.2d 551, 554 (1977)). The fact that the negotiations bore no fruit does not alter the nature and quality of JWS Ltd.’s actions here through JWS Inc. Therefore, I find that JWS Ltd. did transact business in New York, through its agent, JWS Inc.

Finally, I find that this dispute does arise from that transaction of business. It was pursuant to the Polk-JWS Inc. negotiations that Mayer’s print was given to JWS Inc. and transmitted to JWS Ltd. Thus, it was the negotiations in New York that put Mayer’s print into JWS Ltd.’s hands, providing the opportunity for JWS Ltd. to perform the alleged act which is the subject of this suit. Hence, the “articulable nexus between the business transacted and the cause of action sued upon” (McGowan, supra, 52 N.Y.2d at 272, 437 N.Y.S.2d at 645, 419 N.E.2d at 323) necessary to the maintenance of an action in New York under § 302(a)(1) is present in this case.

JWS Ltd. is subject to this suit in New York.

III. PREEMPTION.

When Congress revised the copyright laws in 1976, it specifically provided for preemption of all state rights equivalent to those within the scope of federal copyright law. 17 U.S.C. § 301. Under § 301, federal preemption takes hold once three conditions are met: the work is the type of work protected by the copyright laws; the right asserted is equivalent to a right protected by federal copyright law; and the January 1, 1978 cutoff date is met. When these three conditions converge, the state law right of action is preempted.

A. The time element.

The preemption provision of § 301 by its terms does not apply to state law rights and remedies as to “any cause of action arising from undertakings commenced before January 1, 1978.” It is quite clear from the language and background of § 301(a) that Congress meant to exclude from preemption only those cases in which the cause of action arose before January 1, 1978. Section 301(a) provides that federal law governs all rights in covered works, “whether created before or after [January 1, 1978].” Thus, the deadline applies to the cause of action, not to the work of authorship. The legislative history of the copyright law revision of 1976 reinforces this conclusion. Thus, although the statute is susceptible to a reading which would exclude from preemption causes of action in which the work in issue was created before 1976, by reading “undertaking” to refer to the works of authorship, such a reading is clearly erroneous in light of the congressional intent.

In this case, the work from which the dispute arose was created before January 1, 1978. The causes of action, though, arose later. Plaintiffs papers place the time in December 1978 when Mayer gave her print to Polk for submission to Wedgwood. Hence, any infringement of her rights necessarily occurred later, and in any event after January 1, 1978. Thus, Mayer’s cause of action is within the temporal scope of § 301 preemption.

B. Subject matter of copyright.

A state law action covering “subject matter that does not come within the subject matter of copyright as defined by sections 102 and 103 ...” is not preempted by § 301. 17 U.S.C. § 301(b)(1). In general terms, that subject matter is “original works of authorship fixed in any tangible medium of expression,” 17 U.S.C. § 102(a), including “compilations and derivative works,” 17 U.S.C. § 103(a). Section 102(a) lists several examples of protectible works, among which is “pictorial, graphic and sculptural works.” 17 U.S.C. § 102(a)(5).

Mayer’s snowflake design clearly is within the subject matter of the copyright laws. Indeed, Mayer’s attorney had at one time considered adding to the complaint a copyright claim (Mayer Dep. at 94-95), but later abandoned the idea, apparently because no such claim could be stated due to the design’s entry into the public domain with its publication in the UNICEF card. Thus, the second condition of preemption under § 301 is met in this case.

C. Nature of the right.

Section 301, while preempting state law as to rights equivalent to copyright, specifically preserved nonequivalent state law rights. 17 U.S.C. § 301(b)(3). Thus, the issue to be determined here is whether actions for conversion and the misappropriation branch of unfair competition protect rights that are “equivalent” to those protected by federal copyright law. Because Congress did not define equivalence in the statute, I turn now to the legislative history and case law development of § 301.

1. Legislative History. Section 301 as enacted describes the preempted rights generically, that is, as those rights “equivalent” to copyright. Earlier drafts of § 301, however, contained examples of the types of actions that § 301 did not aim to preempt. At the time it was submitted to the House, § 301(b)(3) preserved state law actions pertaining to

activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106, including rights against misappropriation not equivalent to any of such exclusive rights, breaches of contract, breaches of trust, trespass, conversion, invasion of privacy, defamation, and deceptive trade practices such as passing off and false representation.

House Report at 24 (emphasis added). Thus, both causes of action Mayer is suing upon were mentioned among those excluded from § 301 preemption. Moreover, it seems that no inference as to Congress’s intent may be drawn from the fact that the illustrative list was dropped from the statute as it finally was enacted. In a detailed discussion of this point, Nimmer points out that “[i]t seems clear that the amendment which caused such deletion was not intended substantively to alter Section 301(b)(3) as regards those examples.” 1 M. Nimmer, The Law of Copyright § 1.01[B][3] at 1-14.3 (1984) (footnote omitted). Thus, it may appear that conversion and misappropriation claims have not been preempted.

In this case, however, the prior draft is of no aid to plaintiff. It is quite clear from the House Report that “conversion” in the draft refers to a cause of action to vindicate possessory rights in chattels. Plaintiff here obviously means something else. Her conversion claim alleges that JWS Ltd. converted her snowflake design by reproducing it on the Christmas ornament, causing her damage of at least $100,000. It is not reasonable to think that the print itself was worth such a large amount of money. Indeed, Mayer testified that besides her investment of perhaps 15 hours of her time, she incurred a total of approximately $125 in out-of-pocket expenses to create the design at issue in this case. (Mayer Dep. pp. 81-83). Thus, Mayer is not suing to vindicate her right to the physical print which was given to defendant. It is plain that what Mayer is suing for is the deprivation of the rights flowing from the labor and expertise which she embodied in the snowflake.

The misappropriation claims preserved by the statute are only those “not equivalent to any such exclusive rights.” The draft language thus is circular. It is apparent, though, that Congress recognized that, in at least some instances, misappropriation claims would be preempted. Noting that “ ‘misappropriation’ is not necessarily synonymous with copyright infringement,” House Report at 132, U.S.Code Cong. & Admin.News 1976, p. 5748 (emphasis added), the House Report used as an example of an unpreempted misappropriation action — International News Serv. v. Associated Press, 248 U.S. 215, 39 S.Ct. 68, 63 L.Ed. 211 (1918) (“INS”). In INS, defendant was found to have taken the facts reported in plaintiff’s transmissions of “hot news” and used them in its own competing news service. The other example advanced was of sanctions imposed on one who improperly invades another’s computerized data base and gains access to the data. Both these examples involve subject matter other than copyright, specifically the facts and data as opposed to their expression. Thus, the House Report states that “a cause of action labelled as ‘misappropriation’ is not preempted if it is in fact based neither on a right within the general scope of copyright ... nor on a right equivalent thereto.” House Report at 132, U.S.Code Cong. & Admin.News 1976, p. 5748. It is thus not surprising that the House Report considered misappropriation to survive preemption. The tort it had in mind was not equivalent to copyright infringement.

The misappropriation branch of unfair competition under New York law, however, is arguably a somewhat different tort, one that the House Report did not directly consider. Although it traces its roots to INS, the New York misappropriation tort has grown much broader. It is now a fact-oriented action, providing relief from all types of “commercial immorality,” Metropolitan Opera Ass’n v. Wagner-Nichols Recorder Corp., 199 Misc. 786, 101 N.Y.S.2d 483 (Sup.Ct.1950), aff'd, 279 A.D. 632, 107 N.Y.S.2d 795 (1951). Generally, it protects against a defendant’s competing use of a valuable product or idea created by the plaintiff through investment of time, effort, money and expertise. See, e.g., Standard & Poor’s Corp. v. Commodity Exch., Inc., 683 F.2d 704, 710-11 (2d Cir. 1982).

Thus, the legislative history of § 301 gives no direct guidance as to the contours of preemption in this case. Accordingly, I turn now to the cases dealing with the scope of § 301’s preemptive effect in this case.

2. Case law. Section 301 has been applied by various courts to preempt a wide range of actions. See, e.g., Harper & Row, Publishers, Inc. v. Nation Enters., 501 F.Supp. 848 (S.D.N.Y.1980) (conversion and tortious interference with contractual relations), aff'd, 723 F.2d 195 (2d Cir.1983), cert. granted, — U.S.-, 104 S.Ct. 2655, 81 L.Ed.2d 362 (1984); Warner Bros. v. American Bdcstg. Cos., Inc., 720 F.2d 231 (2d Cir.1983) (unfair competition/misappropriation); Crow v. Wainwright, 720 F.2d 1224 (11th Cir.1983) (crime of dealing in stolen property); Mention v. Gessell, 714 F.2d 87 (9th Cir.1983) (common law copyright and misappropriation); Smith v. Weinstein, 578 F.Supp. 1297, 1307 (S.D.N.Y.1984) (“plaintiff cannot merely rephrase the same claim citing contract law____”) aff'd mem. 738 F.2d 419 (2d Cir.1984); Editorial Photocolor Archives, Inc. v. Granger Collection, 61 N.Y.2d 517, 474 N.Y.S.2d 964, 463 N.E.2d 365 (1984) (misappropriation). It is important, however, to focus on the facts of each case and the particular rights the plaintiff seeks to protect. Courts have found that state law torts similar to those found in the cases above to be preempted, often even sharing the same names, in fact survive § 301. See, e.g., Oddo v. Ries, 743 F.2d 630, 636 (9th Cir. 1984) (conversion and breach of fiduciary duty); United States Trotting Ass’n v. Chicago Downs Ass’n, 665 F.2d 781, 785 n. 6 (7th Cir.1981) (conversion); Factors Etc., Inc. v. Pro-Arts, Inc., 496 F.Supp. 1090 (S.D.N.Y.1980) (treating § 301 as codification of Sears-Compco doctrine which governed pre-1978 actions, court held right of publicity not preempted under prior law) rev’d on other grounds, 652 F.2d 278 (2d Cir.1981), cert. denied, 456 U.S. 927, 102 S.Ct. 1973, 72 L.Ed.2d 442 (1982); DC Comics, Inc. v. Filmation Assocs., 486 F.Supp. 1273 (S.D.N.Y.1980) (unfair competition/misappropriation). The test for preemption was well-stated by Nimmer in his classic treatise.

[A] right which is “equivalent to copyright” is one which is infringed by the mere act of reproduction, performance, distribution or display____ If under state law the act of reproduction, performance, distribution or display, ... will in itself infringe the state created right, then such right is preempted. But if other elements are required, in addition to or instead of, the acts of reproduction, performance, distribution or display, in order to constitute a state created cause of action, then the right does not lie “within the general scope of copyright,” and there is no preemption.

Nimmer, supra at 1-11-12. Accord Oddo v. Ries, 743 F.2d at 635; Harper & Row, 723 F.2d at 200. The prevailing test may be referred to as the “extra element” test. That extra element, however, must be one which changes the nature of the action so that it is qualitatively different from a copyright infringement claim. Elements such as awareness or intent, which alter the action’s scope but not its nature, will not save it from preemption under § 301. See Harper & Row, 501 F.Supp. at 853; Crow, 720 F.2d at 1226. Thus, the issue here is whether Mayer’s conversion and misappropriation claims contain an “extra element” which qualitatively distinguishes the actions and their underlying rights from those addressed by copyright law.

The conversion claim fails on its own terms. Count I of the complaint alleges that Mayer “possessed the right to use, sell, assign or reproduce [the] design” (Complaint ¶ 12) and that JWS Ltd. “wrongfully converted plaintiff’s snowflake design to its own use and benefit by reproducing said design on a 1982 Wedgwood Christmas ornament” (Complaint U 13). Thus, the rights asserted are clearly the same as those protected by § 106 of the copyright law, and the act constituting the alleged violation of plaintiff’s rights corresponds exactly to the act necessary for a copyright infringement. I have not been shown, nor am I aware of any, extra element of the conversion claim that would save it. Thus, even assuming that plaintiff may assert a claim for conversion of an intangible property right under New York law, see supra note 18, that claim is preempted here.

As for misappropriation, Mayer asserts that there is in fact an extra element that will save the action from preemption— commercial immorality. But it is hard to see how this is an extra element. In this case, the alleged misappropriation of Mayer’s time, talent and effort is by the reproduction of the product of her time, talent and effort, i.e. the snowflake design (Complaint ¶¶ 16-18). That is precisely the type of misconduct the copyright laws are designed to guard against. To call such conduct immoral adds nothing. “Commercial immorality” appears to be merely a judgmental label attached to odious business conduct, not an extra element.

If, however, it is an extra element, it is not the type that would save the action from preemption. It is an extra element in the same sense that awareness and intent are: it alters the scope of the action but not its nature. That is, it would permit the action to go forward when the infringing conduct is immoral, but not when it is not immoral. The basic act which constitutes the infringement of plaintiff’s rights, however, is the same as that of copyright. The claimed use rights are identical as well. Thus, the cause of action asserted here is not qualitatively different from one for copyright infringement, and accordingly it is preempted.

Plaintiff relies on Roy Export Co. v. Columbia Bdcstg. Sys., Inc., 672 F.2d 1095 (2d Cir.), cert. denied, 459 U.S. 826, 103 S.Ct. 60, 74 L.Ed.2d 63 (1982) to support her contention that § 301 does not preempt misappropriation actions. That reliance is misplaced, since Roy Export was decided under pre-1978 law. In Roy Export, the allegedly misappropriated work was unpublished. This meant that under pre-1978 law the work received state law protection. Section 2 of the old copyright act specifically provided that state laws protecting unpublished works were preserved from preemption. It was because of this section of the former law that the Second Circuit held the misappropriation action not preempted. Roy Export, 672 F.2d at 1096. That has no bearing, however, on the instant case, which is governed by the new copyright laws.

IV. REMAINING CONTENTIONS.

Mayer’s memorandum of law suggested that besides the conversion and misappropriation claims, the facts of this case would support a breach of confidentiality claim as well as a claim for unjust enrichment. This is significant because these claims are possibly not equivalent to a copyright claim, would thus not be preempted, and would lead to possible denial of this summary judgment motion.

In this case, the fact that Mayer permitted her design to enter the public domain is fatal to any claim she can assert. Any theory of liability she could advance would necessarily assume she holds some property interest in the snowflake design. Yet it is elementary that once copyrightable material is published without the author’s first securing federal copyright protection, the author loses his property interest in the material. The material becomes public property. See Decorative Aides Corp. v. Staple Sewing Aides Corp., 497 F.Supp. 154, 161 (S.D.N.Y.1980), aff'd mem., 657 F.2d 262 (2d Cir.1981). See also Shaw v. Williamsville Manor, Inc., 38 A.D.2d 442, 330 N.Y.S.2d 623 (1972). In this case, Mayer no longer owned her design. The public did. So if JWS Ltd. was unjustly enriched, it was not at her expense. Thus, although plaintiff’s donation of her design to UNICEF certainly is laudatory, her failure to first take the necessary precautions has proved to be her undoing.

Furthermore, the breach of confidentiality claim necessarily would fail as well. The design had been published in the UNICEF card. Even if the design had been copyrighted, the publication removed from the design the secrecy that a breach of confidentiality action requires. See Lemelson v. Kellogg Co., 440 F.2d 986, 987 (2d Cir.1971); Ferber v. Sterndent Corp., 73 A.D.2d 590, 422 N.Y.S.2d 131 (1979), aff'd 51 N.Y.2d 782, 433 N.Y.S.2d 85, 412 N.E.2d 1311 (1980). The publication of the design removed it from the realm of the secret and confidential. There can be no action for breach of a confidentiality that does not exist.

V. CONCLUSION.

Defendant JWS Ltd. is subject to the jurisdiction of this court in this case under CPLR § 302. Its motion for summary judgment is granted, however, since the claims against it are preempted by the copyright laws, 17 U.S.C. § 301.

SO ORDERED.

      . The legend on the back of the card reads: "Snow Crystals. By Sondra [sic] Mayer, United States of America. Design contributed to benefit the United Nations Children’s Fund (UNICEF).” The legend also appears in French, Spanish, Russian and Chinese.

      . Adamczyk's letter reads in relevant part as follows.
      Surely, the snowflake motif is most common on Christmas items done in any medium and since it is a scientific fact that no two snowflakes are exactly alike, it is extremely unlikely that our own artists would need to duplicate someone else’s idea to create a snowflake design.
      Also, Ms. Meyer [sic] never designed for us directly, but for Sam Polk in regard to this particular project. Since the sketches were returned to Sam Polk in 1979, it is completely erroneous to suggest that they were used for a project that wasn’t even in the idea stage until 1982.

      . Mayer is a New York citizen and JWS Ltd. is a foreign corporation.

      . Of course, for purposes of this summary judgment motion I must construe all papers in a light favorable to the plaintiff, the nonmoving party.

      . While it is not necessary in light of this holding to decide whether JWS Ltd. is subject to suit in New York under §§ 301 and 302(a)(3), a brief discussion of those sections is warranted, since counsel has addressed in depth the issues they raise.
      Two possible theories could be advanced by Mayer in favor of holding JWS Ltd. amenable to suit in New York under § 301. One is that JWS Inc. is a mere department of pic, as is JWS Ltd., so that JWS Inc. would be JWS Ltd.’s alter-ego. Mayer does not seriously contend that this theory applies here. A subsidiary will be considered a "mere department” for § 301 purposes only if the foreign parent’s control of the subsidiary is pervasive enough that the corporate separation is more formal than real, see Taca Int’l Airlines, S.A. v. Rolls-Royce of England, Ltd., 15 N.Y.2d 97, 256 N.Y.S.2d 129, 204 N.E.2d 329 (1965). In making that evaluation courts look to factors beyond mere stock ownership, such as the subsidiary’s financial dependency on the parent, the parent’s interference in assignment of top executive personnel of the subsidiary, failure to observe corporate formalities, and control by the parent of the subsidiary's day-to-day operations. See Volkswagenwerk A.G. v. Beech Aircraft Corp., 751 F.2d 117 at 120-122 (2d Cir. 1984). No evidence of such control has been presented to me; JWS Inc. appears to be autonomous.
      The other possibility is an agency theory. JWS Ltd. would be subject to suit in New York under § 301 if JWS Inc. was doing business here in its behalf. While an entity other than a corporate affiliate may be considered an agent for § 301 purposes, see, e.g., Gelfand v. Tanner Motor Tours, Ltd., 385 F.2d 116 (2d Cir.1967), cert. denied, 390 U.S. 996, 88 S.Ct. 1198, 20 L.Ed.2d 95 (1968), corporate affiliation may, in light of the facts of a given case, give rise to a "valid inference” of agency. See Delagi v. Volkswagenwerk A.G., 29 N.Y.2d 426, 431, 328 N.Y.S.2d 653, 656, 278 N.E.2d 895, 896 (1972). No such inference arises here. JWS Inc.’s relationship to JWS Ltd. seems no different from that of any major distributor to its manufacturer. Its advertising, promotion and servicing are done on its own behalf to further its own corporate purposes. Once it purchases the china from England, all responsibility for it is JWS Inc.’s alone. It bears all risks and burdens of inventory, credit and customer complaints. It has no power to bind JWS Ltd. to anything. Thus, the common ownership of JWS Inc. and JWS Ltd. is a mere fortuity, at least as far as § 301 is concerned. It does not, in view of the structure of the relationship between the two companies, give rise to a valid inference of agency. See Baird v. Day & Zimmerman, 390 F.Supp. 883 (S.D.N.Y.1974), aff'd mem. sub nom. Baird v. Harvey Aluminum Co., Inc., 510 F.2d 968 (2d Cir.1975).
      Under § 302(a)(3), a defendant is subject to jurisdiction if it has committed "a tortious act outside the state causing injury to person or property within the state," and certain other conditions are met. In this case, Mayer has not shown injury in New York. Under § 302(a)(3), the claimed injury must be assigned a situs for jurisdictional purposes. The injury is not deemed to have occurred in New York merely because plaintiff is domiciled here. Dogan v. Harbert Constr. Corp., 507 F.Supp. 254, 262 (S.D.N.Y.1980); McGowan v. Smith, 52 N.Y.2d 268, 274-75, 437 N.Y.S.2d 643, 646, 419 N.E.2d 321, 324 (1981) (injury not deemed to occur in New York merely because plaintiff resides here and some suffering occurred here); Fantis Foods, Inc. v. Standard Importing Co., 49 N.Y.2d 317, 326, 425 N.Y.S.2d 783, 787, 402 N.E.2d 122, 126 (1980). Rather, the place of injury is where "the critical events associated with the dispute took place.” Chemical Bank v. World Hockey Ass’n, 403 F.Supp. 1374, 1380 (S.D.N.Y.1975). This usually means that the acts causing the injury must have occurred in New York, Chemical Bank, supra at 1380 (conversion), or that there was a significant loss of New York business, see American Eutectic Welding Alloys Sales Co., Inc. v. Dytron Alloys Corp., 439 F.2d 428, 432-35 (2d Cir.1971); Sybron Corp. v. Wetzel, 46 N.Y.2d 197, 205, 413 N.Y.S.2d 127, 131, 385 N.E.2d 1055, 1058 (1978).
      Whether the "critical events" in this case occurred in England or in New York is a question that has been wholly unaddressed. Accordingly, jurisdiction in this case could not be bottomed on § 302(a)(3).

      . The second clause of § 302(a)(1), regarding nondomiciliaries who contract to ship goods into New York, is inapplicable here. The cameos at issue in this case were shipped to New Jersey, according to the companies’ standard practice.

      . See Louis Marx & Co. v. Fuji Seiko Co., Ltd., 453 F.Supp. 385, 390 (S.D.N.Y.1978); Merkel Assocs., Inc. v. Bellofram Corp., 437 F.Supp. 612, 617 n. 2 (W.D.N.Y.1977).

      . JWS Inc.’s role as a “relay station” for JWS Ltd. calls to mind Parke-Bernet Galleries, Inc. v. Franklyn, 26 N.Y.2d 13, 308 N.Y.S.2d 337, 256 N.E.2d 506 (1970). There the New York Court of Appeals held that a person in New York who informed a person in California by telephone of the progress of an auction in New York and relayed his bids to the auctioneer was the Californian's agent for purposes of § 302. Similarly, here JWS Ltd. wished to avail itself of a business opportunity presented in New York, and to that end negotiated with Polk through JWS Inc., its jurisdictional agent.

      . It is beyond cavil that jurisdiction may be based on § 302(a)(1) in tort actions as well as contract actions, so long as the cause of action arises out of the defendant's transaction of business in New York. Longines-Wittnauer Watch Co., Inc. v. Barnes & Reinecke, Inc., 15 N.Y.2d 443, 466, 261 N.Y.S.2d 8, 26, 209 N.E.2d 68, 81 (1965), cert. denied sub nom. Estwing Mfg. Co. v. Singer, 382 U.S. 905, 86 S.Ct. 241, 15 L.Ed.2d 158 (1965), and sources cited therein.

      . 17 U.S.C. § 301 provides in relevant part as follows.
      (a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any state.
      (b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to—
      (1) subject matter that does not come within the subject matter of copyright as specified by sections 102 and 103, including works of authorship not fixed in any tangible medium of expression; or
      (2) any cause of action arising from undertakings commenced before January 1, 1978; or
      (3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.

      . 17 U.S.C. § 301(b)(2).

      . According to the House Report, "subsection (b) list[s] three general areas left unaffected by the preemption ... [one of these is] causes of action arising under State law before the effective date of the statute ____" Copyright Law Revision, H.R.Rep. No. 1476, 94th Cong., 2d Sess. 132 (1976) [hereinafter "House Report"], reprinted at 1976 U.S.Code Cong. & Ad.News 5659, 5747.

      . See, e.g., Orth-O-Vision, Inc. v. Home Box Office, 474 F.Supp. 672 (S.D.N.Y.1979).

      . See also 1 M. Nimmer, The Law of Copyright § 1.01[B][3] at 1-27 n. 116 (1984).

      . The fact that a work has entered the public domain does not itself remove causes of action respecting that work from the scope of § 301’s preemptive provisions. As the House Report states, if
      a work fits within one of the general subject matter categories of sections 102 and 103, the bill prevents the States from protecting it even if it fails to qualify for federal statutory copyright because ... it has fallen into the public domain.
      House Report at 131, U.S.Code Cong. & Admin. News 1976, p. 5747.

      . Federal copyright law does not protect ideas, 17 U.S.C. § 102(b). Rather, it protects only the author's particular expression of those ideas. See Mazer v. Stein, 347 U.S. 201, 217, 74 S.Ct. 460, 470, 98 L.Ed. 630 (1954); Reyher v. Children's Television Workshop, 533 F.2d 87, 90 (2d Cir.), cert. denied, 429 U.S. 980, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976). Thus, state laws that protect ideas, as distinct from their expression, are without the subject matter of copyright and therefore not preempted under § 301.
      In this case, Mayer is seeking to protect her right to use her snowflake design from appropriation by JWS Ltd. She does not — indeed, realistically no one can — claim rights in the idea of using snowflake designs on Christmas items. Thus, her reliance on Werlin v. Reader’s Digest Ass'n, Inc., 528 F.Supp. 451 (S.D.N.Y.1981) for the proposition that § 301 does not preempt misappropriation and quasi-contract claims is misplaced. In Werlin, Judge Ward held simply that Reader's Digest was liable for using plaintiff's story idea, though it did not use plaintiffs story, and that the actions for Reader's Digest’s use of plaintiff's idea were not preempted. Here, by contrast, Mayer is complaining of use by JWS Ltd. of her design itself, not the idea of using a snowflake design for Christmas items.

      . Nothing contained in section 301 precludes the owner of a material embodiment of a copy ... from enforcing a claim of conversion against one who takes possession of the copy ... without consent.
      House Report at 133.

      . It is at least open to question whether New York law permits an action for conversion where the property assertedly converted is not a specific tangible item of personal property. There is no dearth of New York authority limiting the tort to interferences with possessory rights in chattels. See Harper & Row, Publishers, Inc. v. Nation Enters., 501 F.Supp. 848, 852 n. 10 (S.D.N.Y.1980), aff’d, 723 F.2d 195 (2d Cir.1983), cert. granted, -U.S.-, 104 S.Ct. 2655, 81 L.Ed.2d 362 (1984), and sources cited therein. On the other hand, there is authority that permits maintenance of a conversion suit where the property right taken "includes the incorporeal right to the exclusive use of its contents.” Taft v. Smith, Gray & Co., 76 Misc. 283, 286, 134 N.Y.S. 1011 (Sup.Ct.1912). I am assuming for purposes of this motion that Mayer is relying on the latter concept of conversion and, without so deciding, that it represents the law of New York.

      . See Nimmer, supra note 14 at 1-20-21.

      . On the New York law of misappropriation, see, e.g., Roy Export Co. v. Columbia Bdcstg. Sys., Inc., 672 F.2d 1095, 1105 (2d Cir.), cert. denied, 459 U.S. 826, 103 S.Ct. 60, 74 L.Ed.2d 63 (1982); Flexitized, Inc. v. National Flexitized Corp., 335 F.2d 774 (2d Cir.1964) cert. denied, 380 U.S. 913, 85 S.Ct. 899, 13 L.Ed.2d 799 (1965); Electrolux Corp. v. Val-Worth, Inc., 6 N.Y.2d 556, 567-68, 190 N.Y.S.2d 977, 986-87, 161 N.E.2d 197, 203-04 (1959); Ronson Art Metal Works, Inc. v. Gibson Lighter Mfg. Co., 3 A.D.2d 227, 230-31, 159 N.Y.S.2d 606, 609-10 (1957); Metropolitan Opera Ass’n v. Wagner-Nichols Recorder Corp., 199 Misc. 786, 101 N.Y.S.2d 483 (Sup.Ct.1950), aff'd 279 A.D. 632, 107 N.Y.S.2d 795 (1951).

      . See Nimmer, supra at 1-20-21.
      Mayer’s claim would have been preempted even under the pre-1978 law, since the snowflake design had been published in the UNICEF card, and had thereby entered the public domain. Cf. H.W. Wilson Co. v. National Library Serv. Co., 402 F.Supp. 456 (S.D.N.Y.1975). Publication removed it from the ambit of state law protection. See infra note 22 and accompanying text.

      . Former 17 U.S.C. § 2 provided as follows:
      Nothing in this title shall be construed to annul or limit the right of the author or proprietor of an unpublished work, at common law or in equity, to prevent the copying, publication, or use of such unpublished work without his consent, and to obtain damages therefor.

      . Mayer has argued that the design’s entry into the public domain does not extinguish her rights in it, citing Samuel Winston, Inc. v. Charles James Servs., Inc., 159 N.Y.S.2d 716 (Sup.Ct. 1956). Winston, however, was a conceded departure from settled law, and has not been followed in any other case. I decline to treat it as authoritative.


source: Caselaw Access Project

author: WARREN, District Judge.

license: Public Domain

text:
    UNITED STATES of America, Plaintiff, v. Susan A. BACHMAN, Defendant.
    No. 84-C-0125.
    United States District Court, E.D. Wisconsin.
    Feb. 11, 1985.

      Ann M. Kisting, Asst. U.S. Atty., Milwaukee, Wis., for plaintiff.
    Harold Harris, Harold Harris, S.C., Milwaukee, Wis., for defendant.
   DECISION AND ORDER

WARREN, District Judge.

Presently before the Court in this matter is the motion of the plaintiff, United States of America, for summary judgment, pursuant to Rule 56(a) of the Federal Rules of Civil Procedure. Invoking the Court’s jurisdiction as established by 28 U.S.C. § 1345, the Government sues for the recovery of a debt incurred by the defendant, Susan A. Bachman. Specifically, the plaintiff, acting by and through the Small Business Administration (“SBA”), alleges default upon a loan made to Filters Unlimited, Inc. (“Filters”). Although demand for payment was made upon Filters, it failed to make those payments due and owing under a promissory note executed as evidence of the loan. The Government thus further claims that the present defendant, as guarantor of said loan, is liable for payment of the outstanding principal and accrued interest now owing.

By its present motion for summary judgment, the Government argues simply that under the unconditional terms of the guaranty, the defendant is clearly liable for the unpaid amounts on the SBA loan, that there are no material issues of fact disputed, and that it is thus entitled to judgment as a matter of law. In response to the plaintiff's motion, defendant Bachman asserts the affirmative defenses of novation, modification, waiver, and equitable estoppel. The defendant further argues that, as guarantor, she should be released from her obligations under the note because the plaintiff’s conduct has allegedly harmed her interests. The Court, having carefully considered the opposing positions articulated by the parties, concludes, for the reasons stated below, that the present motion must be granted.

BACKGROUND

On January 26, 1981, according to the terms of a written agreement between the parties, the SBA loaned Filters the sum of $60,000 at 974% interest per annum, repayable in monthly installments. It appears that the SBA accepted as collateral for the loan Filters’ inventory, accounts receivable, contract rights, and certain types of its equipment. On that same date, defendant Bachman signed an unconditional guaranty which obligated her as guarantor of the $60,000 note.

The promissory note itself provides for installment payments as follows:

Interest payable monthly on disbursed principal balance, commencing one (1) month(s) from the date of this note. Installment payments of principal and interest in the amount of $1,026.00 each, payable monthly commencing seven (7) month(s) from date of the note.
Balance of principal and accrued interest to be paid on or before seven (7) years from date of this note.
Each said installment shall be applied first to payment of interest accrued to date of receipt of said installment, and the balance, if any, to payment of principal.

Significantly, the note also includes a provision for immediate payment, as follows:

Holder is authorized to declare all or any part of indebtedness immediately due and payable upon the happening of any of the following events: (1) Failure to pay any part of the indebtedness when due; (2) nonperformance by the undersigned of any agreement with, or any condition imposed by, Holder or Small Business Administration ... or either of them, with respect to the indebtedness ____ Holder’s failure to exercise its rights under this paragraph shall not constitute a waiver thereof.

Additional terms provide that upon nonpayment of the indebtedness when due, the holder may sell the collateral at a public or private sale without notice of the time or place. Under these circumstances, the debtor is deemed to have waived all right of redemption or appraisement before or after the sale.

The guaranty executed by the defendant provides for the unconditional payment of the principal and interest, when due by acceleration or otherwise, in accordance with the terms of the note. Under the provisions of that guaranty, the lender has the power to modify the terms of all or part of the so-called “liabilities” or the rate of interest upon them, to enter into any agreement of forbearance, and to grant extensions, renewals, and other indulgences. The guarantor is neither released nor afforded any rights or recourse against the lender as a result of any act or omission pursuant to these powers. Similarly, the obligations of the guarantor are not discharged or affected by reason of the fact that the value of the collateral may not have been correctly estimated.

From the outset, Filters, the debtor, made interest payments on an irregular basis. As a result, in the summer of 1981, the SBA apparently extended the period of interest-only payments, contingent upon the interest being brought current. See Affidavit of David J. Cernak at 1-2 (July 25, 1984) (with exhibits).

By April 6, 1982, the loan was in default in the amount of $5,592.50. See Affidavit of Peter Pezewski at 1 (July 25, 1984) (with exhibits). The SBA then requested, as a means of obviating the need for legal action, that Filters make double payments of interest until the default was cured. Apparently, this condition was not met, and, on May 17, 1982, the SBA notified Filters by acceleration letter that the note was immediately due and payable. See Affidavit of Anne T. Knauf at 3 (July 24, 1984) (with exhibits).

During the summer of 1982, defendant Bachman met with Peter Pezuski, an SBA loan officer, and agreed to make monthly payments in exchange for the SBA’s agreement to set aside its decision regarding acceleration of the note. On October 20, 1982, in the wake of continued payment irregularities, the SBA advised Filters that a deferral of past due principal amounts was possible as a means of returning the loan, at a minimum, to regular status. Defendant Bachman again met with Peter Pezuski during that month. The parties apparently agreed at that time that the past payments would be deferred and that regular monthly payments of principal and interest would continue. However, the terms of this agreement were never met, since Filters made its last payment on September 30, 1982. See Deposition Transcript of Susan A. Bachman at 15-16, 18-20 (June 21, 1984).

Throughout this period, defendant Bach-man was apparently meeting with members of SCORE, a financial advisory organization sponsored by the SBA. According to the affidavits and deposition transcripts filed in support of and in opposition to the present motion, neither of the parties was ever under the impression that the principal payments on the note were excused, that collection of the full amount would not be pursued, or that defendant Bachman was released from her obligations as guarantor. In fact, in May of 1983, the SBA contacted defendant Bachman in an attempt to bring the loan current. At the time, however, Filters was moving to a new location and no agreement — other than that the parties would discuss the matter again — was reached. See Deposition of Susan A. Bachman at 23-25 (June 21, 1984).

On May 12, 1983, the SBA seized Filters’ secured assets, pursuant to Wis.Stat. § 409.503. Subsequently, defendant Bachmah met with SBA representatives Anne T. Knauf, David J. Cernak, and Jack A. Davis in an attempt to arrive at an agreement regarding redemption; however, no agreement was reached. Pursuant to the promissory note, the SBA then sold the seized collateral for $500.00. On November 8, 1983, a Certified Statement of Account was issued by the SBA, establishing the total indebtedness at $67,687.00.

THE PLAINTIFF’S MOTION FOR SUMMARY JUDGMENT

The function of a motion for summary judgment pursuant to Rule 56 of the Federal Rules of Civil Procedure is to permit the trier of fact to pierce the formal allegations in the pleadings and grant relief when it appears from uncontroverted facts set forth in affidavits, depositions, or admissions on file that there are as a matter of fact no genuine issues for trial. Smith v. Gross, 604 F.2d 639, 641 (9th Cir.1979); Mintz v. Mathers Fund, Inc., 463 F.2d 495, 498 (7th Cir.1972). In effect, summary-judgment is a method of testing in advance of trial, not just bare contentions found in the legal verbiage of the pleadings, but whether there is in actuality any real basis for relief or defense. Henderson v. Counts, 544 F.Supp. 149, 153 (E.D.Va. 1982); Swettlen v. Wagoner Gas & Oil, Inc., 369 F.Supp. 893, 894 (W.D.Pa.1974).

Under the appropriate circumstances, summary judgment is a useful procedure for unmasking frivolous claims and for putting a swift end to meritless litigation by preventing useless, expensive, and time-consuming trials. Quinn v. Syracuse Model Neighborhood Corporation, 613 F.2d 438, 455 (2d Cir.1980); Anderson v. Viking Pump Division, Houdaille Industries, Inc., 545 F.2d 1127, 1129 (8th Cir. 1976). In this respect, it can be a valuable device for securing a just and expeditious adjudication of the merits of a ease, when used judiciously. Goodman v. Mead Johnson & Company, 534 F.2d 566, 573 (3d Cir.1976), cert. denied, 429 U.S. 1083, 97 S.Ct. 732, 50 L.Ed.2d 748 (1977); Becker v. Safelite Glass Corporation, 244 F.Supp. 625, 631 (D.Kan.1965).

At the same time, since the impact of summary judgment is rather drastic, Rule 56 should be invoked cautiously so that no litigant is improperly denied a trial on disputed factual issues. Watson v. Southern Railroad Company, 420 F.Supp. 483, 486 (D.S.C.1975); aff'd, 542 F.2d 1170 (4th Cir. 1976); Johnson Foils, Inc. v. Huyck Corporation, 61 F.R.D. 405, 407 (N.D.N.Y. 1973). Indeed, summary judgment should not be granted unless the entire record shows a right to judgment with such clarity as to leave no room for controversy and establishes affirmatively that the adverse party cannot prevail under any circumstances. Prince v. Pittston Company, 63 F.R.D. 28, 32 (S.D.W.Va.1974); In re Midwest Milk Monopolization Litigation, 380 F.Supp. 880, 883 (W.D.Mo.1974). It is sometimes said that a Rule 56 motion in a case where a jury trial has been demanded is properly granted only when it is quite clear what the truth is. Quadra v. Superior Court of City and County of San Francisco, 378 F.Supp. 605, 624 (N.D.Cal. 1974); Port of Palm Beach District v. Goethals, 104 F.2d 706, 709 (5th Cir.1939).

In making its determination as to whether a genuine issue as to any material fact exists for purposes of disposing of a Rule 56 motion, the Court should be mindful, first, that the movant has the burden of showing both the absence of such a genuine issue and its entitlement to judgment as a matter of law and, second, that the evidence must be viewed in the light most favorable to the opposing party. Carroll v. Getty Oil Company, 498 F.Supp. 409, 411-412 (D.Del.1980); Berns v. Civil Service Commission, 417 F.Supp. 17, 20 (S.D.N.Y.1975), aff'd in part and rev’d in part on other grounds, 537 F.2d 714 (2d Cir.1976), cert. denied, 430 U.S. 930, 97 S.Ct. 1549, 51 L.Ed.2d 774 (1977). Finally, the disposition of a Rule 56 motion is reversed to the sound discretion of the trial judge, who may reasonably deny such a motion where inquiry into the facts to clarify the application of the law is deemed appropriate. Toyoshima Corporation of California v. General Footwear, Inc., 88 F.R.D. 559, 560 (S.D.N.Y.1980); Rypkema v. Bowers, 66 F.R.D. 564, 566 (N.D.W.Va. 1974).

In the entire record of the present case, the Court identifies no material issues of fact suitable for trial. As plaintiff accurately notes, both parties have acknowledged the execution of the subject promissory note and guaranty; the defendant has also conceded that Filters failed to make timely payments under the terms of the note and that she herself has not met the payment obligations imposed upon her as guarantor.

Moreover, as the Court has described above, the language of the guaranty is unequivocal in its statements of affirmative obligation and waiver of rights. According to its express terms, the defendant is liable for the payment of the note’s interest and principal by acceleration if the debt- or fails to perform. Other provisions expressly provide that the SBA may modify terms and effect forbearances. The defendant-guarantor is not released if the SBA chooses to so act or fails to act; neither is she released if the value of the collateral is incorrectly estimated. Furthermore, the language of the SBA guaranty includes an explicit waiver of the guarantor’s right to preservation of the collateral.

The unequivocal nature of the obligations set forth in the guaranty, coupled with the defendant’s own concessions as to the execution and substance of that agreement, lead the Court to conclude that there are no material issues of fact for trial and that the plaintiff is entitled to judgment on the note and guaranty as a matter of law. See United States v. O’Brien, Case No. 77-C-559 (E.D.Wis.) (unpublished opinkn of Judge Myron L. Gordon, February 28, 1979).

THE DEFENDANT’S AFFIRMATIVE DEFENSES

Despite the undisputed nature of the obligations imposed by the guaranty executed on January 26,1981, the defendant, as indicated above, argues what she characterizes as equitable and legal defenses based on “such conduct over a period of two years or so to mislead the original obligor to its detriment, that plaintiff should not now be able to assert such breach that would permit it to invoke the warranty.” Defendant’s Memorandum In Opposition To Motion For Summary Judgment at 1 (August 8, 1984).

The Court, for the reasons set forth below, concludes that none of these defenses is sufficiently meritorious to overcome the clear force of the guaranty, upon which the plaintiff is entitled to judgment.

NOVATION

The defendant correctly describes a novation as the substitution of a new agreement for an old one which is thereby extinguished; typically, the extinguishment of the original obligation is viewed as consideration for the new, and the new promise consideration for the release of the old, each being consideration for the other. Commissioner of Internal Revenue v. Oates, 207 F.2d 711, 712-713 (7th Cir.1953). Yet the defendant in this case fails to provide evidence of what such a new agreement might have entailed. As noted above, the record does indicate that the parties agreed to a temporary deferral of past principal amounts due in order to afford the defendant an opportunity to maintain, at a minimum, a regular, monthly interest payment. However, according to both parties’ affidavits and transcripts, neither understood that these amounts were not to be ultimately paid; nor did either believe that the total indebtedness or the clear terms of the guaranty were substantially amended by these interim payment arrangements. Thus, the Court finds no reasonable basis for the defendant’s claim that a completely new agreement between the parties was reached, thus vitiating the unequivocal obligations of the old.

MODIFICATION

The defendant next contends that if no new agreement between the parties was reached, the terms of the guaranty were modified by the parties’ conduct and oral representations. To be sure, both state and federal courts have recognized and given effect to modifications of the written terms of contracts under appropriate circumstances. See generally Kohlenberg v. American Plumbing Supply Company, 82 Wis.2d 384, 263 N.W.2d 496 (1978); S & M Rotogravure Service v. Baer, 77 Wis.2d 454, 252 N.W.2d 913 (1977); Commissioner of Internal Revenue v. Oates, 207 F.2d 711 (7th Cir.1953). Although the defendant does not describe clearly the precise modifications she claims were made, the record does indicate that the parties agreed to three sets of arrangements regarding payment — namely, that the interest only period was to be extended beyond the initial seven months for an additional two months, contingent upon regular payments; that the loan, already in default, would not be accelerated if timely payments were forthcoming; and that past principal amounts owed would be deferred if regular monthly interest payments were made.

While these conditional arrangements clearly reflect the SBA’s interest in attempting to meet the defendant’s particular financial difficulties, nothing about them modifies, in any sense, the fundamental terms of the subject guaranty. As the Court has already observed, the defendant was never told that the original debt or some portion thereof would be excused, that acceleration would not occur while she was in default, or that the plain terms of the guaranty would not be enforced. Under these circumstances, the Court must reject as wholly unfounded the defendant’s claim of modification.

WAIVER AND ESTOPPEL

In Saverslak v. Davis Cleaver-Produce Company, 606 F.2d 208, 213 (7th Cir.1979), the Court of Appeals for the Seventh Circuit distinguished the concepts of waiver and estoppel this way:

Analysis of the applicability of waiver focuses on the intent of the non-breaching party. If he has intentionally relinquished a known right, either expressly or by conduct inconsistent with an intent to enforce that right, he has waived it and may not therefore seek judicial enforcement [citations omitted]____
Estoppel, on the other hand, focuses not on the obligor’s intent, but rather on the effects of his conduct on the obligee____ An estoppel ... arises only when a party’s conduct misleads another to believe that a right will not be enforced and causes him to act to his detriment or reliance upon this belief [citations omitted].

The plaintiff in Saverslak had alleged the breach of a licensing contract providing that a particular sized trademark would appear in the defendant’s product label. During the first few years of the agreement, the plaintiff protested the diminished size of the trademark. However, when the defendant dropped the trademark altogether, thus openly breaching the trademark contract, the plaintiff failed to object until seven years later, when it initiated the civil action. On appeal, the Seventh Circuit held that the plaintiff’s “silent acquiescence ripened into an intentional relinquishment of his right to enforce the trademark use.” Saverslak, supra, at 214.

In the present case, it is clear that the SBA never signaled any intention to relinquish its right to enforce the subject note or the guaranty. Furthermore, the interim payment arrangements made by the parties do not indicate that the plaintiff intended to relinquish any enforcement rights incorporated in the contract; they were, instead, forbearances contingent upon the defendant’s compliance — something she apparently did not do. Likewise, the Court simply cannot construe the SBA’s so-called silence during the period from October of 1982, until the date of its seizure of the collateral as an intentional relinquishment of its rights under the guaranty. Plainly, the facts of the case do not support the defendant’s waiver argument.

With respect to the companion assertion of estoppel, the Court finds that the defendant has neither pointed to specific acts or omissions of the plaintiff upon which she relied nor established the nature of the detriment she has suffered. The Court assumes that her argument in this context is premised on the SBA’s cooperative attitude in facilitating modifications in the payment schedule and providing her with the resources of SCORE — actions which may have prompted her to believe that seizure would not occur. Yet the defendant was never told that enforcement would not occur, and she plainly knew that all modifications and forbearances were contingent upon her making regular, monthly payments. In short, nothing in the record of this case convinces the Court that the defendant was reasonably es-topped from performing under the clear terms of the guaranty.

Finally, to the extent that the defendant invokes general equitable principles in support of her claim that she should not be held to the plain obligations in the guaranty she executed, the Court finds itself wholly unpersuaded. As it concludes with respect to all of her defenses, the Court views the defendant’s position, when considered in the context of the documentary and historical record of this case, totally insufficient to justify denial of the present petition for summary judgment.

CONCLUSION

For the several reasons articulated above, the Court hereby GRANTS the motion of the plaintiff, United States of America, for summary judgment, pursuant to Rule 56(a) of the Federal Rules of Civil Procedure. Since the Court finds none of the defendant’s affirmative defenses to the Government’s claim meritorious, it hereby DIRECTS the Clerk of Court to enter judgment in the plaintiff’s favor for the principal amount of $60,483.00 plus interest at nine and one-quarter percent (9V4%) to date, for legal interest on the judgment at twelve percent (12%) per annum until paid, and for costs, fees, and disbursements.


text:
    James LAMMERS, Plaintiff, v. Larry CONRAD, Larry Welnicke, Art Tulachka, and William Morris, Defendants.
    No. 83-C-1999.
    United States District Court, E.D. Wisconsin.
    Feb. 11, 1985.

      Douglas P. Pachucki, Milwaukee, Wis., for plaintiff.
    Wayne M. Yankala, Simarski & Stack, Milwaukee, Wis., for defendants.
   DECISION AND ORDER

WARREN, District Judge.

Presently before the Court in this matter is the motion of the defendants for dismissal for want of proper service, for partial summary judgment as to the claim in the fourth paragraph of the amended complaint, for an order precluding the plaintiff from prosecuting any claim of permanent injury, and for an order compelling the production of certain signed medical authorizations or, in the alternative, precluding the plaintiff from prosecuting any claims for personal injuries or medical expenses.

The Court has carefully considered the movant’s companion requests and concludes, for the reasons stated below, that the petitions for partial summary judgment and for an order precluding pursuit of any claims to personal and permanent injuries and medical expenses must be granted. It further concludes that disposition of the motion to dismiss for lack of service should be held in abeyance until the meeting of Court and counsel at the final pretrial conference.

RULE 4(j) OF THE FEDERAL RULES OF CIVIL PROCEDURE AND THE MOTION TO DISMISS FOR WANT OF PROPER SERVICE

By its Decision and Order of October 12, 1984, the Court granted the plaintiff’s motion to join as additional party-defendants three other persons allegedly involved in the subject arrest — namely, Lieutenant Larry Welnicke, Deputy Sheriff Art Tulachka, and Deputy Sheriff William Morris, all of the Manitowoc County Sheriff's Department. Three days later, on October 15, 1984, the plaintiff filed his amended complaint, incorporating allegations against these three additional defendants.

At the pretrial conference of October 19, 1984, the plaintiff, upon stipulation of the parties, was granted leave to file a supplemental amended complaint, naming Manitowoc County as an additional party-defendant. Pursuant to the Court’s order at the time of that hearing, filing and service of the supplemental amended complaint was to have been accomplished by November 16,1984; moreover, the defendants were to be afforded an opportunity to implead the county if the plaintiff chose not to do so.

As the defendants observe in their brief in support of the present motion, the plaintiff neither filed nor served his supplemental amended complaint by the November 16, 1984, deadline. Indeed, no such complaint has been interposed to date. Moreover, the uncontroverted affidavits of defendants Larry Welnicke, Art Tulachka, and William Morris, filed in support of the petition to dismiss, establish that none of these parties has ever been served with a copy of the plaintiff’s amended complaint of October 15, 1984, nor with any other pleadings in this action. See Affidavits of Larry Welnicke, Art Tulachka, and William Morris at 1 (December 28, 1984). Invoking Rule 4(j) of the Federal Rules of Civil Procedure, these named but unserved defendants argue that the amended complaint should be dismissed as to them for want of proper service.

Rule 4(j) of the Federal Rules of Civil Procedure establishes a clear time limit by which service upon named defendants is to be accomplished, as follows:

If a service of the summons and complaint is not made upon a defendant within 120 days after the filing of the complaint and the party on whose behalf such service was required cannot show good cause why such service was not made within that period, the action shall be dismissed as to that defendant without prejudice upon the court’s own initiative with notice to such party or upon motion____

Pursuant to this rule, the plaintiff must accomplish service on the three newly-named defendants no later than February 12, 1985, exactly 120 days after the amended complaint was filed. Since that deadline date falls just two days prior to the scheduled pretrial conference of February 14, 1985, in this matter, the Court will hold the present motion to dismiss in abeyance until that hearing, at which time the plaintiff, if he has not completed service by February 12, 1985, shall be required to show good cause why such service was not made.

If the Court concludes that the plaintiff’s showing does not rise to the level of good cause, it will grant the motion of the defendants Welnicke, Tulachka, and Morris for dismissal, pursuant to Rule 4(j) of the Federal Rules of Civil Procedure. Until that time, however, the motion shall be held in abeyance.

THE DUE PROCESS IMPLICATIONS OF THE PLAINTIFF’S ARREST AND THE MOTION TO DISMISS FOR FAILURE TO STATE A CLAIM UPON WHICH RELIEF CAN BE GRANTED

As the Court recounted in its Decision and Order of October 12, 1984, one of the plaintiff’s principal claims is that the defendants violated his right to due process under the Fifth and Fourteenth Amendments to the United States Constitution by arresting him in the Manitowoc County Courthouse prior to a hearing arising out of his state criminal conviction for theft by fraud. Specifically, the plaintiff charges that on May 8, 1983, while he was awaiting a hearing before State Circuit Judge Allan Deehr, the defendants, “under color, custom, and usage of the laws of the State of Wisconsin, in willful and reckless disregard of the rights of the plaintiff ..., arrested the plaintiff and removed him from said courtroom area, thereby depriving the plaintiff of his rights to a hearing in said matter.” Plaintiff's Amended Complaint at 1-2 (October 15, 1984).

The deposition transcripts of plaintiff James Lammers and defendant Larry Conrad, supplied to the Court by the defendants in support of their present motion, establish in greater detail the facts upon which the plaintiff’s due process arrest claim is premised. From its review of these deposition transcripts, the Court is able to determine that on the morning of March 7, 1983, the plaintiff was present at the Manitowoc County Courthouse for a hearing before Judge Deehr on his state probation revocation and a warrant for his arrest arising out of a state criminal conviction. Deposition of James Lammers at 8-9 (September 26, 1984). The plaintiff’s appearance at the courthouse was voluntary since the scheduled hearing was to be conducted pursuant to his request. Deposition of James Lammers at 9 (September 26, 1984).

Upon his arrival at Judge Deehr’s courtroom, the plaintiff apparently discovered that the courtroom door was locked and thus decided to wait on a bench located in the outside hallway. Deposition of James Lammers at 11-12 (September 26, 1984). Significantly, the plaintiff knew, on the morning of March 7, 1983, both that his probation had been revoked and that a warrant had been issued for his arrest. Deposition of James Lammers at 12-13 (September 26, 1984).

On the same morning, a Captain Belz of the Manitowoc County Sheriff’s Department assigned to defendant Larry Conrad the task of arresting the plaintiff, as follows:

He [Captain Belz] said that there was a possibility that [plaintiff] Lammers was in the Courthouse, he had been observed by our assistant D.A., and in checking with the Sheboygan Sheriff’s Department, there was an active warrant on file, and the two officers that had been assigned to apprehend Mr. Lammers did not know him, he knew that I knew Mr. Lammers, and that I should go along and assist in the arrest.
... There was word that Mr. Lammers was in the Courthouse, and that he knew that I had been involved with an investigation, I could identify him, and I should assist the other two officers in making the identification.

Deposition of Larry Conrad at 9-10 (October 3, 1984).

Defendant Conrad was accompanied by co-defendants Welnicke, Tulachka, and Morris, as he walked to the second floor of the Manitowoc County Courthouse where the plaintiff was reportedly seen. Deposition of Larry Conrad at 10-11 (October 3, 1984). Thereafter, defendant Conrad identified the plaintiff, approached him, and placed him “under arrest for a felony warrant which has been filed by the Sheboygan Sheriff’s Department on behalf of the Probation and Parole Act.” Deposition of Larry Conrad at 14 (October 3, 1984).

At that time, plaintiff Lammers advised defendant Conrad that although he was aware of the warrant, he was scheduled to appear before Judge Deehr for a hearing at 11:00 a.m. “to discuss that matter with him.” Deposition of Larry Conrad at 15 (October 3, 1984). Defendant Conrad then entered Judge Deehr’s chambers to consult with the Judge and District Attorney Denis Vogel, who directed him to escort plaintiff Lammers to the Manitowoc County Jail until such time as the matter could be heard. Deposition of Larry Conrad at 15 (October 3, 1984). Defendant Conrad then left Judge Deehr’s chambers, returned to plaintiff Lammers and the other officers in the hallway, and directed defendant Welnicke to take the plaintiff into custody.

After defendant Welnicke handcuffed the plaintiff, all four defendants accompanied him down the hallway and to the stairs where the plaintiff fell, allegedly after being pushed by defendant Conrad. Deposition of James Lammers at 26 (September 26, 1984). By the fifth paragraph of his amended complaint, the plaintiff charges that the defendants used excessive and unreasonable force in transporting him to the Manitowoc County Jail, by pushing and shoving him down a flight of stairs in the county courthouse, thus injuring him and requiring his hospitalization, all in violation of his due process rights under the United States Constitution.

By their present motion, the defendants contend that the plaintiff has failed to state an actionable claim in paragraph four of the amended complaint — that is, that the conditions and circumstances of his arrest were violative of his due process rights under the Fifth and Fourteenth Amendments. As the defendants state in their supporting memorandum, the plaintiff implicitly assumes by this cause of action that his presence in the Manitowoc County Courthouse in anticipation of a lawfully scheduled judicial hearing somehow provided him with a cloak of immunity from arrest in connection with the subject probation revocation and warrant.

Unfortunately, while the plaintiff’s arrest on the morning of March 7, 1983, may have dashed his hopes of petitioning the state court judge for some sort of remedial relief, the Court finds absolutely nothing in the record of this case to suggest that the named defendants in any sense violated the plaintiff’s constitutional due process rights by arresting him on that morning. In United States v. Conley, 80 F.Supp. 700, 701, 703 (D.Mass.1948), Judge Charles Wyzanski, Jr. addressed this very issue, as follows:

Except in situations covered by statutes and treaties — to which I shall refer later — the general rule is that a party or witness does not have either before or during or after his attendance at any judicial proceeding a personal privilege to avoid service or arrest in connection with any other judicial proceeding. Such privilege as exists belongs not to the individual but to the court [citations omitted] ____
Regardless of the appropriate rule for the protection of criminal defendants against civil process, I am clear that a defendant in a criminal case is not ordinarily entitled to protection against the service of process in another criminal case. (Except in extradition cases, to which I shall refer later,) no authority according such protection has been cited to or found by me. Whether a person comes into the state voluntarily, or on bail, or in custody to answer one criminal charge, he ought to be subject to service of process on charges of other crimes committed before or after his entry. The overriding public policy is to require him to answer and stand trial for every duly presented accusation of violation of law [citation omitted]. Compared with that policy, the dignity of attendance upon the first court, the desire to stimulate obedience to its process and the desire to encourage defendants to clear themselves of the charge first brought against them are of secondary importance.

See also Morse v. United States, 267 U.S. 80, 81-82, 45 S.Ct. 209, 209-210, 69 L.Ed. 522 (1925) (arrest, under authority of federal court, of person passing through state to attend trial of indictment against him in another state found not violative of due process clause of Fifth Amendment to federal Constitution); Mahon v. Justice, 127 U.S. 700, 706, 8 S.Ct. 1204, 1207, 32 L.Ed. 283 (1888) (finding “no comity between the States by which a person held upon an indictment for a criminal offense in one State can be turned over to the authorities of another, though abducted from the latter”).

As discussed above, there is no material dispute between the parties as to the peculiar circumstances of the plaintiffs arrest on the morning of March 7, 1983. Indeed, even if the Court has mischaracterized or improperly understood the factual basis for the due process claim in the fourth paragraph of the amended complaint, the plaintiff, by his decision not to respond to the present motion, has failed to correct any misstatements of fact and, accordingly, to show that there is some genuine issue for trial. Since the law is clear that the plaintiff has failed to state an actionable claim by the fourth paragraph of his amended complaint, thus entitling the defendants to judgment on this cause of action as a matter of law, the Court will grant the pending motion for partial summary judgment, pursuant to Rule 56(b) of the Federal Rules of Civil Procedure. See Janowiak v. The Corporate City of South Bend, 750 F.2d 557 (7th Cir.1984) (summary judgment appropriately granted “when there is no genuine issue as to any material fact and ... the moving party is entitled to judgment as a matter of law”).

RULE 37(b) OF THE FEDERAL RULES OF CIVIL PROCEDURE AND THE MOTION TO PRECLUDE PROSECUTION OF CLAIMS

As the defendants accurately note in support of their request that the plaintiff be precluded from pursuing claims at trial for injuries and medical expenses, Rule 37(b) of the Federal Rules of Civil Procedure authorizes the trial court to impose such a sanction when a party fails to comply with discovery orders, as follows:

If a party or an officer, director, or managing agent of a party or a person designated under Rule 30(b)(6) or 31(a) to testify on behalf of a party fails to obey an order to provide or permit discovery, including an order made under subdivision (a) of this rule or Rule 35, or if a party fails to obey an order entered under Rule 26(f), the court in which the action is pending may make such orders in regard to the failure as are just, and among others the following: ...
(B) An order refusing to allow the disobedient party to support or oppose designated claims or defenses, or prohibiting him from introducing designated matters in evidence; ...

At the pretrial conference of October 22, 1984, counsel for the plaintiff was ordered to submit a position letter regarding his client’s claim for permanent injuries by December 3, 1984; thereafter, defense counsel was to be afforded a period of time up to and including January 1, 1985, in which to pursue an independent medical examination. As the record in this case indicates and the defendants confirm by their present motion, the plaintiff has submitted no letter with respect to his claim for permanent injuries. It is on this basis that the defendants now seek an order of the Court precluding plaintiff from pursuing any claim for permanent injury at trial.

The clear purpose of the Court’s discovery order of October 19, 1984, directing the plaintiff to submit a position letter on his claim for permanent injuries and affording the defendants the opportunity to pursue an independent medical examination, was to insure that both parties to this action would have complete notice of the central issues to be litigated at trial. The plaintiff’s failure to provide the opposing parties with any indication of his prosecutorial intentions with respect to a claim for permanent injuries has almost assuredly prevented the defendants from preparing any sort of credible defense to such a claim. Indeed, if the plaintiff were now permitted to pursue such a claim at trial, scheduled to begin just two weeks from the date of today’s order, the defendants would be severely prejudiced in a thorough and responsive presentation of their case.

The Court imposes discovery deadlines in the pretrial stage with the clear expectation that the parties will abide by them, absent some compelling reason for an appropriate amendment or enlargement. The plaintiff in this action has provided the Court with no explanation for his failure to abide by the December 3, 1984, deadline and thus, in the Court’s view, is not entitled to prosecute those claims at trial which were the subject of the Court’s discovery schedule. Accordingly, the Court will grant the defendants’ motion insofar as it requests that the plaintiff be precluded from pursuing any claim for permanent injuries at the trial in this matter.

Likewise, the plaintiff has failed to explain to the Court his apparent refusal to sign requested medical authorizations, permitting defense counsel to obtain medical records from the plaintiff’s health care providers with respect to the personal injuries and subsequent hospitalization following his fall on the steps at the Manitowoc County Jail on the morning of March 7, 1983. As defense counsel states in his affidavit of December 28, 1984, plaintiff’s counsel was twice requested, on March 23, 1984 and on October 19, 1984 to provide copies of any medical reports he may have compiled with respect to claimed special damages in this case.' Thereafter, on September 26, 1984, defense counsel asked the plaintiff to execute medical authorizations permitting release of the subject medical records: Then, pursuant to plaintiff’s counsel’s alternative proposal, defendants’ attorney forwarded to opposing counsel some five medical authorizations, none of which has been returned in executed form to date. Moreover, the plaintiff has wholly failed to provide the defendants with any medical reports or summaries of claimed special damages. See Affidavit of Wayne M. Yankala at 2-3 (December 28, 1984).

The Court’s remarks with respect to the plaintiff’s failure to submit a position letter on claimed permanent injuries are equally applicable here: The plaintiff’s refusal to sign medical authorizations or, at a minimum, provide summaries of claimed special damages effectively prevents defense counsel from preparing and presenting at trial an adequate defense to the claims that may be presented by the plaintiff. Since the plaintiff has declined the opportunity to explain his lack of cooperation in this all-important discovery matter, the Court will grant the present motion insofar as it seeks to prevent him from pursuing any claims for personal injuries or medical expenses at trial in this case.

CONCLUSION

The Court recognizes that today’s order, particularly with respect to the sanctions imposed for the plaintiff’s apparent failure to comply with discovery requests and deadlines, may significantly alter the landscape of this litigation; certainly, the dismissal of the claim contained in the fourth paragraph of the plaintiff’s amended complaint will have such an effect. At the same time, the Court opines that the plaintiff's utter failure to oppose the motion for partial summary judgment and, perhaps more significantly, to explain his noncompliance with discovery in this matter justify the decisions explained above. In fact, as the Court has already explained, only the 120-day requirement of Rule 4(j) of the Federal Rules of Civil Procedure precludes the Court from granting the defendants’ present motion in toto.

Accordingly, for the reasons articulated herein, the Court hereby:

1. HOLDS IN ABEYANCE the motion of defendants Larry Welnicke, Art Tulaehka, and William Morris for dismissal of the amended complaint as to them, pursuant to Rule 4(j) of the Federal Rules of Civil Procedure, subject to plaintiff’s showing at the final pretrial conference of February 14, 1985, why service was not accomplished in a timely fashion;

2. GRANTS the defendants’ motion for partial summary judgment as to the claim contained in paragraph four of the plaintiff’s amended complaint, pursuant to Rule 56(b) of the Federal Rules of Civil Procedure;

3. GRANTS the motion of the defendants for an order precluding the plaintiff from pursuing any claim at trial with respect to permanent injuries, pursuant to Rule 37(b) of the Federal Rules of Civil Procedure; and

4. GRANTS the defendants’ motion for an order precluding the plaintiff from pursuing any claim for personal injuries or medical expenses at trial also pursuant to Rule 37(b) of the Federal Rules of Civil Procedure.

The final pretrial conference in this matter, scheduled for 9:00 a.m., on February 14, 1985, remains on the Court’s calendar. Pursuant to the Court’s standard pretrial instructions, counsel for the parties are to prepare their joint final pretrial report in anticipation of that hearing.

Finally, the three-day jury trial in this matter remains on the Court’s calendar in a first civil setting to begin at 10:00 a.m., on February 25, 1985. The Court will provide counsel with additional instructions with respect to preparation for trial at the final pretrial conference.