author: SHADUR, District Judge.

text:
    UNITED STATES of America, Plaintiff, v. Katie STANLEY, Defendant.
    No. 83 CR 661.
    United States District Court, N.D. Illinois, E.D.
    Sept. 17, 1985.

      Robert B. Breisblatt, Asst. U.S. Atty., Chicago, Ill., for plaintiff.
    Gary R. Lorenz, Lorenz & Rankin, Louisville, Ky., for defendant.
   MEMORANDUM OPINION AND ORDER

SHADUR, District Judge.

Katie Stanley (“Stanley”) some months ago submitted a “Motion for a Modification of Sentence Pursuant to 28 USC 2255” (filed through her counsel) and has late last month filed a pro se supplement to that motion. Because this Court has long been concerned that Stanley was strongly entitled to consideration in human terms but finds herself trapped by procedural rules, it has gone beyond counsel’s and Stanley’s submissions in an effort to search out a source of possible relief. That effort has been unsuccessful, and the motion is denied.

Section 2255 is essentially the statutory embodiment of the ancient writ of error coram nobis. Like the Great Writ of habeas corpus, it provides a broad spectrum of grounds for possible relief—in specific terms:

A prisoner in custody under sentence of a court established by Act of Congress claiming the right to be released upon the ground that the sentence was imposed in violation of the Constitution or laws of the United States, or that the court was without jurisdiction to impose such sentence, or that the sentence was in excess of the maximum authorized by law, or is otherwise subject to collateral attack, may move the court which imposed the sentence to vacate, set aside or correct the sentence.

But judges are duty-bound to act in a responsible manner, and part of that duty is to be bound by the legal limitations on issuance of the writ.

This opinion will explore each potential avenue for relief that has come to mind, whether or not advanced by Stanley or her counsel. ^Unfortunately extended discussion is not necessary.

Duress

Two kinds of duress could be implicated in Stanley’s situation. Neither works.

First is the most familiar type of duress: a defense to criminal charges under the common law. On that score (emphasized in Stanley’s lawyer’s original petition) the Section 2255 argument must be that Stanley had such a duress defense, so that her conviction was rendered invalid and hence “the sentence was imposed in violation of the ... laws of the United States.”

But Stanley was sentenced on a plea of guilty. Unbroken authority teaches a guilty plea waives all nonjurisdictional defects, so Stanley cannot challenge the legality of the sentence in those terms. United States v. Rook, 424 F.2d 403, 405 (7th Cir.), cert. denied, 398 U.S. 966, 90 S.Ct. 2180, 26 L.Ed.2d 550 (1970); Smith v. United States, 677 F.2d 39, 40 (8th Cir. 1982) (per curiam).

Second of the possible duress arguments is one challenging the guilty plea itself, for an essential condition of its validity is “that [defendant’s] plea be the voluntary expression of [her] own choice.” Brady v. United States, 397 U.S. 742, 748, 90 S.Ct. 1463, 1468, 25 L.Ed.2d 747 (1970). But that kind of duress challenge must go to the taking of the plea itself (see McMann v. Richardson, 397 U.S. 759, 766-68, 90 S.Ct. 1441, 1446-48, 25 L.Ed.2d 763 (1970)), not to the circumstances causing the underlying crime. And here Stanley clearly cannot surmount McMann, which held a guilty plea could not be attacked on grounds a coerced confession had induced the plea. In terms of the constitutional validity of a plea, duress that has allegedly triggered the plea can stand on no different footing from a coerced confession that has had the same result.

New Evidence

Familiar law provides potential Section 2255 relief for newly-discovered evidence that could have averted the conviction. United States v. Hedman, 655 F.2d 813, 814-15 (7th Cir.1981). But in addition to other requirements the petitioner “must show that due diligence on [her] part could not have revealed the evidence prior to trial” (id. at 815). By definition Stanley knew the facts constituting the claimed duress before trial—her whole thesis is that the duress occasioned her criminal conduct, and the most recent manifestation of that duress is what she says caused her to change her plea on the eve of submission of the case to the jury.

Ambiguity or Illegality of Sentence

Stanley’s pro se supplement claims her sentence is ambiguous. That argument simply reflects the effect of legal language on a person unaccustomed to dealing with it. In fact the sentence was clear indeed:

1. Each of counts One, Ten and Eleven has a concurrent term of three years in the custody of the Attorney General. That is the term of imprisonment Stanley is now serving.
2. Each of the other counts (Counts Two, Three, Four, Five, Twelve and Thirteen) involves a probationary term of five years, to begin when Stanley completes her actual period of imprisonment under Counts One, Ten and Eleven.

Stanley is (perhaps understandably) simply unaware of what is meant by “the imposition of sentence is hereby suspended” (part of the language of the probationary sentence). At the time Stanley was sentenced 18 U.S.C. § 3651, which controlled the granting of probation, was entitled “Suspension of Sentence and Probation,” and it directed any court placing a defendant on probation to “suspend the imposition or execution of sentence.” All “suspension of imposition” meant was that no sentence of commitment would be set by the court when the defendant was originally before it, but a period of probation would be specified. If the probationary period then elapsed without a problem, the criminal charge involved in the probationary sentence would become discharged by service of probation, but if probation were revoked during its term, the court could set a sentence of commitment on the charge at that time.

Belatedly Stanley argues:

Instead of the five (5) years the petitioner in essence is serving an eight (8) year sentence, three (3) years longer than allowable under the law.

What Stanley has done is to add the commitment period to the probationary term and claim that constitutes an illegal consecutive sentence. Two short answers reject that argument:

1. Stanley’s reference to 18 U.S.C. § 3584(a) (part of the Comprehensive Crime Control Act of 1984) is inapt, for her sentence was imposed under prior law. No provision comparable to Section 3584(a) existed in the old law (and in fact the new provision will not take effect until 1986).
2. Even if Section 3584(a) were applicable (as it is not), it would not help Stanley. That section deals only with multiple terms of imprisonment, and that does not affect a situation such as Stanley’s, in which there is one term of imprisonment and one term of probation (not two terms of imprisonment). Besides that, Section 3584(a) leaves it entirely up to the judge to impose either concurrent or consecutive terms, with the single exception that consecutive terms are prohibited where one of the crimes was an “attempt.” None of the charges to which Stanley pleaded guilty was an attempt charge, so this Court would have been free to impose consecutive sentences anyway.

Conclusion

Stanley’s situation evokes sympathy, and this Court has done whatever it could to ask consideration from the Bureau of Prisons (which is now the only possible source of relief available to Stanley). Sympathy, however, is not a legitimate motivation for this Court to bend or break the legal rules it must follow. Stanley’s Section 2255 motion is denied.

APPENDIX 1

October 10, 1984

Warden Robert Elsea

Federal Correctional Institution

P.O. Box 2000

Lexington, Kentucky 40511

Re: Katie Stanley

9-2332-024

Dear Warden Elsea:

Katie Stanley has asked that I write in her behalf requesting that the Bureau of Prisons exercise its discretion in favor of an early release to a halfway house, so that she can resume working to support her family (I understand a job is available to her). At this point her husband’s unemployment insurance coverage is about to terminate and, given his age and limited skills, prospects of further employment are remote.

Mrs. Stanley’s crime was that of defrauding a CETA program for black children of something in excess of $150,000. That program was run by the Chicago Catholic Archdiocese, and she had substantial supervisory responsibility over the project in which she was involved. Although the crime was a serious one and merited the substantial, sentence I imposed, I found the reasons she advanced post-trial were plausible. Unfortunately the Chicago Police did not really conduct an extensive investigation of the claimed extortion to which Mrs. Stanley said she was subjected, and the federal authorities did not interest themselves in the matter despite my urging that they do so.

Because my own jurisdiction to reduce Mrs. Stanley’s sentence under Rule 35 ended after 120 days, and because the factual matters had not then been substantiated, I did not grant a Rule 35 motion for reduction. At the same time I can say that the crime was totally out of character with Mrs. Stanley’s past conduct, that there is no indication of any of the fraudulently

obtained funds having been retained by her or her family and that her story sounded both sincere and plausible.

In my judgment Mrs. Stanley would pose no threat to society upon her return to it. If the Bureau can exercise its discretion in her favor, I should recommend that it do so.

Thank you for your attention to this matter.

Sincerely,

/s/ Milton I. Shadur

Milton I. Shadur

MIS:wb

cc: Mrs. Katie Stanley

      . Appendix 1 to the memorandum opinion and order is the letter this Court wrote to the Warden at Lexington (where Stanley is serving her sentence) after judicial relief in the form of a sentence reduction was no longer available to Stanley because of this Court’s loss of jurisdiction under Fed.R.Crim.P. 35. Note 1 to that letter explains the circumstances of Stanley’s conviction in skeletal form.

      . Special thanks are due this Court’s law clerk, Ann Marchaterre, for her work in that respect.

      . Mrs. Stanley was one of four defendants, all of whom stood trial for something more than a week. On the day before the case went to the jury, Mrs. Stanley unexpectedly changed her plea from not guilty to guilty. According to her explanation given later at the time of sentencing, she was indeed guilty of the fraud but had engaged in the scheme under serious threats to her and members of her family from the El Rukn street gang, to whom she turned over all the proceeds of the fraud. Her sudden guilty plea was occasioned by anonymous threats that had just been made on the life of the Catholic priest who was going to be a witness for her at the trial.

      . See the attached Fed.R.Crim.P. ("Rule") 35 motion filed on her behalf.

      . Of course I understand the decision is not yours, but I send this letter to you for transmittal to the appropriate authorities.


source: Caselaw Access Project

author: ROSENBAUM, District Judge.

license: Public Domain

text:
    WEST PUBLISHING CO. v. MEAD DATA CENTRAL, INC.
    Civ. No. 4-85-931.
    United States District Court, D. Minnesota, Fourth Division.
    Oct. 3, 1985.

      Vance K. Opperman, Diane M. Helland, Joseph R. Kernan, Jr., Opperman & Pa-quin, Minneapolis, Minn., for plaintiff.
    John D. French, Duane W. Krohnke, John F. Beukema, Faegre & Benson, Minneapolis, Minn., for defendant.
   MEMORANDUM ORDER

ROSENBAUM, District Judge.

In this action, plaintiff West Publishing Company (West) alleges copyright infringement by defendant Mead Data Central, Inc. (MDC) on the basis of MDC's proposed introduction of “star pagination” keyed to West’s reports in its LEXIS legal research system. West is before the Court seeking a preliminary injunction enjoining this introduction pursuant to Rule 65 of the Federal Rules of Civil Procedure (F.R.Civ.P.). MDC has answered, and moves for dismissal of all counts, alleging plaintiff’s failure to state a claim upon which relief may be granted, pursuant to Rule 12(b)(6), F.R. Civ.P. The Court heard oral argument on September 17, 1985. Based upon the files, briefs, affidavits, arguments of counsel, and all other matter submitted, the Court grants plaintiff’s motion for preliminary injunction and denies defendant’s motion for dismissal.

Background

For all purposes relevant to these motions, West is engaged in the business of collecting, selecting, compiling and reporting the judicial opinions of state and federal courts. West arranges these opinions into a series of books collectively known as the “National Reporter System” publications. Each case report West publishes (West report) is assigned to one of the individual series within the overall National Reporter System. This is done on the basis of court and/or subject matter of the opinion. West reports are further categorized, arranged and assigned to a volume within the series. The volumes and pages are then sequentially numbered to allow detailed reference to West’s reports. The exact location of each West report in the overall arrangement of case reports, can be found (“cited”) by stating the volume number, series designation, and page number of the report. West represents that upon completion of each volume it registers a copyright claim with the Register of Copyrights and receives a separate Certificate of Registration. {See, Affidavit of Arnold 0. Ginnow; Affidavit of Darrin Pepper.) Copies of the Certificates of Registration were provided during argument of the present motion. For purposes of this decision, the validity of the documents are not in question.

The Court takes notice of West's success in its field. Judicial decisions are routinely identified by the names of the parties and the West citation, i.e. volume numbers, series designation, and first page of the opinion.

MDC owns and operates LEXIS, a computer-assisted legal research tool containing decisions of state and federal courts (LEXIS reports) in its database. The judicial opinions stored in the LEXIS database note the citations to the first page of the judicial opinions as reported in West’s National Reporter System. This is done by displaying at the top of the LEXIS computer screen a West series designation, volume number, and page number on which the opinion begins.

In June of 1985, MDC announced its plan to include “star pagination” within the text of LEXIS reports by October of 1985. MDC’s announcement and subsequent advertisements of this new feature indicate that star pagination will consist of “the addition of the official page cites to the full text of online case law material.” (See defendant’s Exhibit E.) Star pagination was acknowledged at oral argument to be the insertion of numbers from West’s National Reporter System publications within the body of LEXIS reports. This will permit the LEXIS user to determine the West page number coinciding with the text of a LEXIS report taken from the LEXIS screen or computer printout, without the physical necessity of referring to the volume of the National Reporter System publication in which the report appears.

West claims that MDC’s intended star pagination constitutes an appropriation of West’s comprehensive arrangement of case reports in violation of the Copyright Revision Act of 1976, 17 U.S.C. § 101 et seq. On this basis, West seeks this preliminary injunction to enjoin MDC’s alleged infringement.

Discussion

The factors to be considered in the decision to grant or deny a preliminary injunction are set forth by the Eighth Circuit in Dataphase Systems Inc. v. C.L. Systems, Inc., 640 F.2d 109 (8th Cir.1981). Dataphase mandated an analysis of the probability of the movant’s success on the merits; the threat of irreparable harm to the movant if the preliminary injunction is denied; the balance between this harm and the harm the preliminary injunction, if granted, would cause to the other party; and the public interest in granting or denying the preliminary injunction. No one of the above factors determines whether a preliminary injunction should issue. Rather, the equities must be balanced to achieve a just determination. Id. at 113, 114.

I. West’s probability of success on the merits.

West’s probability of success on the merits at trial depends on the validity of its copyright infringement claim. West claims that its National Reporter System publications are protected by copyright. At the hearing of its motion West presented certificates of copyright registration for each of its reporter volumes. A copyright registration generally constitutes prima facie evidence of a valid copyright. 17 U.S.C. § 410(c); Eckes v. Card Prices Update, 736 F.2d 859, 861 (2nd Cir.1984). Defendant has the burden of overcoming this presumption. Southwestern Bell T. Co. v. Nationwide Ind. Dir. Serv., Inc., 371 F.Supp. 900, 905 (W.D.Ark.1974).

Neither party questions that some parts of West’s National Reporter System publications are appropriate subjects for copyright protection. The focus is on which portions of those publications are under the protection of the copyright laws. West claims that its arrangement of cases in its volumes and the page numbers it sets forth can be copyrighted. MDC denies West’s claim. The Court finds two eases of particular interest and importance in providing an analytic framework in which to consider the claims of the parties. They are Callaghan v. Myers, 128 U.S. 617, 9 S.Ct. 177, 32 L.Ed. 547 (1888) and Banks Law Pub. Co. v. Lawyers Co-operative Pub. Co., 169 F. 386 (2nd Cir.1909). It is to these two cases that the Court must first turn.

In Callaghan, the plaintiff, Meyers, became the owner of several volumes of the reports of the Supreme Court of the State of Illinois. These volumes were prepared by and acquired from the official reporter of the Supreme Court of the State of Illinois. The volumes contained not only the opinions of the Court, but also considerable matter original to the reporter including the title page, table of cases, headnotes, statements of facts, arguments of counsel, indices, etc. The Court held that all the matter in the law reports, excluding the opinions of the Court, were the appropriate subject matter of copyright protection. Callaghan, 128 U.S. at 647, 9 S.Ct. at 184.

The Court in Callaghan specifically delineated the copyrightable portions of the law reports, saying:

Such work of the reporter, which may be the lawful subject of copyright, comprehends ... the order of arrangement of the cases, the division of the reports into volumes, the numbering and paging of the volumes, the table of cases cited in the opinions, (where such table is made,) and the subdivision of the index into appropriate, condensed titles, involving the distribution of the subjects of the various headnotes, and cross-references, where such exist. (Emphasis added).

Callaghan, 128 U.S. at 649, 9 S.Ct. at 185.

It is clear the Supreme Court found that under appropriate circumstances pagination and arrangement ascend to a level appropriate for copyright protection. If the arrangement of cases and the paging of the book depend simply on the will of the printer, or the order in which the cases have been decided, or upon other accidental circumstances, they of course are not subject to copyright protection because they then involve no labor, talent, or judgment. Callaghan, 128 U.S. at 661, 662, 9 S.Ct. at 189, 190.

West’s comprehensive arrangement of cases satisfies the Supreme Court’s Callaghan test of labor, talent, and judgment. West collects cases from every state and federal court in this country. West does not then simply take any cases it has on hand, put them together in any order, and bind in a hardback volume. They first separate state court decisions from federal court decisions. The state court decisions are further subdivided into regions and placed in a regional reporter appropriate for the case in question. The federal decisions are divided at the district court and appellate court level. District court decisions are further subdivided according to the subject matter of the decision be they bankruptcy, federal rules or other miscellaneous matter. This comprehensive process involves considerable planning, labor, talent, and judgment on West’s part.

For its proposition that the arrangement and pagination of West’s National Reporter System publications are not appropriate subject matter for copyright protection, MDC relies primarily on Banks Law Pub. Co. v. Lawyers Co-Operative Pub. Co., 169 F. 386 (2nd Cir.1909). In Banks, the plaintiff was the successor-in-interest to the official reporter of the United States Supreme Court. He engaged in the business of printing, publishing, and selling the Court’s decisions as compiled, edited and arranged by the official reporter. The defendant was in the business of printing, publishing and selling a competing edition of the Supreme Court’s decisions. Plaintiff claimed that defendant’s edition infringed its copyright since the arrangement of cases in defendant’s edition, as well as the division of the decisions into volumes were the same as in plaintiff’s books. Plaintiff also claimed that defendant’s edition star paginated to plaintiff’s official reports. The Court held that the official reporter’s arrangement of cases within his volumes and the subsequent pagination of those volumes were not appropriate subjects of copyright protection. Banks, 169 F. at 390.

This Court finds that MDC, in relying upon Banks, has chosen a fragile bark upon which to sail the rocky shoals of copyright law. While Banks is offered for the proposition that “mere” pagination and arrangement do not rise to a dignity sufficient to justify the grant and protection of a copyright, this assertion bears further scrutiny. In Banks, the Court dealt with the rights of the assignee of the official reporter, whose statutory duty it was to report the decisions of the Supreme Court. He was required, by law, to organize them into volumes, and have them printed and published. According to the Court, it was the reporter’s statutory duty to supply paging for the volumes together with an orderly arrangement of the cases. Banks, 169 F. at 389.

MDC claims that any distinction between the official or unofficial status of the Court’s reporter is trivial. This Court disagrees. The Banks Court emphasized the official nature of the reporter’s duties and declined to flatly deny copyright protection to pagination and arrangement. “In my estimation, no valid copyright for these elements or details alone can be secured to the official reporter. * * * [A]n action for infringement does not lie if the defendant’s asserted wrongdoing simply consisted of reprinting the decisions of the court with the paging. (Emphasis supplied).” Banks, 169 F. at 390, 391. The Court could easily have said, “We hold that copyright protection may not be had for printed arrangement and pagination.” Why did it not do so?

The answer lies in the inherent nature of printing when one is mandated to officially record a court’s decision. The raw (slip) opinions must be collated and arranged. They then must be placed with a printer whose selection of typeface and page size dictate a certain number of words or lines for each page. Each page must be numbered sequentially. When one is mandated (as an official reporter) to perform these functions, the result is not an exercise of independent judgment or discretion. The arrangement and pagination inhere in the official process and become part of the public domain. For a person who stands in this official position, no copyright protection can be granted for arrangement or pagination.

The holding in Banks, then, does not stand for the proposition that arrangement and pagination are not copyrightable per se. Rather, it indicates that when required to do so by law, those labors do not reflect any independent judgment or discretion and as such become part of the public domain. Banks does not prohibit West Publishing Company from obtaining a copyright in the pagination or arrangement of its publications. West is not the official reporter for any court in this country nor is it required by statute to arrange or page its volumes. It does these things of its own initiative expending considerable labor, talent, and judgment in the process. West’s page numbers and its arrangement of cases are necessarily within the scope of copyright protection.

If this were not so, one could not collect Shakespeare’s plays—themselves not subject to copyright—into a copyrighted work. See, 17 U.S.C. § 103. Someone’s version of the bible would be able to be duplicated by another. See, 17 U.S.C. § 103. One could photoduplicate them in whole without protection. Why are these works subject to copyright? Because while the base data lies in the public sphere, the arrangement and pagination of this public material reflects the skill, discretion and effort of the person crafting the arrangement.

Lastly, the Court feels it appropriate to indicate its belief that neither the Callaghan Court in 1888, nor the Banks court in 1909, could possibly have considered the effect of the computer with its nearly infinite information-gathering capability. There now exists a cybernetic technology which will random access the entire body of decisional law in a unified database. While matching arrangement and pagination once may have made one work parallel to another, it now enables one work to be totally ingested into another. These facts beggar a simple one-to-one analogy between one printed format and another. The courts in Callaghan and Banks could not have realized that the taking of an arrangement or page numbers from a collection of cases would absolutely do away with the underlying work.

Based on the foregoing, this Court finds that Callaghan supports and Banks does not bar copyright protection for West’s laboriously prepared, voluntary arrangement of cases.

Beyond analysis of caselaw, this Court finds further reason to extend copyright protection to West’s arrangement and pagination of its law reports: There is an additional contribution by West Publishing Company which goes beyond the simple copyright which exists for their editorial work. The genius of this work is that it is self-indexing. By assembling cases as they have been arranged in sequenced volumes, a case can be indexed by following its name with a volume number, series designation, and page number. In fact, this is the most common method of referencing cases in the field of legal research. By this device, the case of United States ex rel. Miller v. Twomey, consisting of several printed pages, and issued on May 16, 1973, by the Seventh Circuit Court of Appeals, is transformed.

The statement of the mere existence of the case of United States ex rel. Miller v. Twomey, standing alone is useless. It is useless because that decision, as issued, cannot be accessed. Its voice is silent, and its teachings are unheeded. This is so, as long as no person, beyond the Seventh Circuit Court as author, arranges it in accessible form and indexes the case. Interestingly, both parties to the present cause have done so. It is mutually as accessible in both LEXIS and the West publications. For neither party is the decision itself susceptible to copyright, since it is the Law as expounded by the Seventh Circuit Court of Appeals. In LEXIS, the case, in full text, is available by keying in appropriate signals to a computer in the memory of which the decision is held.

Or, you can refer to it as 479 F.2d 701.

What does 479 F.2d 701 mean? It means that the decision is found on the seven-hundred-and-first page of the four-hundred-seventy-ninth volume of the second series of the Federal Reporter, according to West Publishing Company’s arrangement of cases.

The West Publishing Company’s arrangement is a significant work of skill and enterprise which is itself entitled to copyright protection. 17 U.S.C. § 103. That protection has been properly perfected and is of a nature cognizable in this Court.

This set arrangement is either a virtue or a defect depending on how it is viewed. LEXIS holds as one of its strengths in the marketplace, that unlike the West Company’s static arrangement, in LEXIS a case’s location is variable. Where the case is forever locked in Volume 479 of West’s Federal second volumes, in the LEXIS system it is computer accessible at any time. It may be random accessed in any order, preceded and followed by whatever eases the mind and skills of the legal researcher compels. Defendant’s Memorandum in Opposition to Plaintiff’s Preliminary Injunction Motion, at 13.

LEXIS has long noted at the beginning of each of its cases the “cite” according to the West Publishing Company’s arrangement. This West acknowledges as a fair use of its copyrighted material. Plaintiff’s Reply Memorandum of Law in Support of Motion for Preliminary Injunction, at 17; 17 U.S.C. § 107. It should be noted, parenthetically, that this is not necessarily altruism on West’s part. That cite calls a researcher to West’s books—which they are in business to sell as well as create.

But this case turns on whether or not the succeeding page numbers themselves are protected by copyright, even if the overall arrangement is a copyrightable entity. This Court holds that they are so protected.

In the present case, the text of the decisions is held in both the bound volumes of the West arrangement and the computer memory of the MDC access devices. As such the body of the decisional law in our courts is equally accessible to both parties. But the Court finds that the use of the second and succeeding numbers following the initial citation to West’s arrangement, the so-called “jump cite” (i.e. 479 F.2d 701, 702), infringes on West’s copyright. It does so because it goes beyond fair use. Once one has access to the MDC data base, using the LEXIS keyboard, one has the full text of the opinion. Once one has the jump cite, one has access to the copyright-protected overall arrangement as delineated by West Publishing Company.

With immediate access to the jump cite, there is instant access to West’s whole arrangement; you never again need to purchase West’s books in the marketplace to get each and every aspect of West’s copyrighted arrangement of cases. This is the instance when “ ‘... a use that supplants any part of the normal market for a copyrighted work would ordinarily be considered an infringement.’ Senate Report [No. 94-473],” cited in Harper & Row Publishers v. Nation Enterprises, — U.S. —, 105 S.Ct. 2218, 2235, 85 L.Ed.2d 588 (1985). The computer “owns” West’s copyrighted arrangement.

MDC argues that West’s effort to claim copyright protection for page numbers is an attempt to copyright a numbering system. This argument is a sophistry. MDC urges that the pagination of West’s volumes is simply a succession of arabic numbers, in serial order commencing with “1” and continuing through a book. Of course this is so, but the statement is trivial. It is beyond cavil that one cannot copyright the arabic numbering system. 17 U.S.C. § 102. But as is seen above, this is not just a series of numbers each rising by one over its predecessor, it is the basis of the West arrangement—the key to the self-index by which West’s arrangement is accessed. This is, the Court finds, what is meant by the words “taken as a whole” in the copyright definition of “compilations”. 17 U.S.C. § 101. The sophistry is apparent when one considers that just as one cannot copyright the arabic number, so one cannot copyright the Latin alphabet or the English language. If MDC’s argument were to be taken seriously, West’s headnotes and case synopses would be susceptible to MDC’s computers, too. They are all composed of Latin letters and words in the English language.

West has made an adequate showing, for Dataphase purposes, that its National Reporter System publications constitute a copyrightable arrangement of which the numbering and pagination of its volumes are a part. Since West’s claim that it has copyrighted these publications is not currently disputed, West has the exclusive right to reproduce and distribute this arrangement. 17 U.S.C. § 106.

MDC claims that its star pagination will not infringe West’s arrangement because its random generated arrangement is entirely different from West’s arrangement. It argues that star pagination will not bring the arrangements closer together. But for infringement purposes, MDC need not physically arrange it’s opinions within its computer bank in order to reproduce West’s protected arrangements. “[Databases are simply automated compilations—collections of information capable of being retrieved in various forms by an appropriate search program ... [I]t is often senseless to seek in them a specific fixed arrangement of data.” Rand McNally & Co. v. Fleet Management Systems, 600 F.Supp. 933, 941 (N.D. Ill.1984). This Court finds that MDC will reproduce West’s copyrighted arrangements by systematically inserting the pagination of West’s reporters into the LEXIS database. LEXIS users will have full computer access to West’s copyrighted arrangement.

MDC claims that even if its star pagination would otherwise constitute infringement, it is legal fair use under 17 U.S.C. § 107. This provision provides as follows:

[T]he fair use of a copyrighted work for purposes such as criticism, comment, news reporting, teaching, ... scholarship, or research is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
2) the nature of the copyrighted work;
3) the amount and substantiality of the portion used;
4) the effect of the use upon the potential market for or value of the copyrighted work.

Upon consideration of the statutory factors, this Court concludes that MDC’s intended star pagination does not constitute fair use.

1. Purpose and character of the use.

MDC acknowledges that it hopes to introduce star pagination to enhance its position in the marketplace. In other words, MDC’s star pagination is a commercial use intended for profit. The Supreme Court in Harper & Row Publishers v. Nation Enterprises, — U.S. —, 105 S.Ct. 2218, 2231, 85 L.Ed.2d 588 (1985) indicated that such a use tends to weigh against a finding of fair use. “[E]very commercial use of copyrighted material is presumptively an unfair exploitation of the monopoly privilege that belongs to the owner of the copyright.” Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417, 451, 104 S.Ct. 774, 793, 78 L.Ed.2d 574 (1984). Therefore, considering MDC’s stated purpose of star pagination, it is difficult to find a fair use.

2. Nature of the copyrighted work.

Original works are generally accorded a higher degree of fair use protection than that granted to compilations. Harper & Row Publishers v. Nation Enterprises, — U.S. —, 105 S.Ct. 2218, 2232, 85 L.Ed.2d 588 (1985). While the fact that the protected work is an arrangement might otherwise mitigate in MDC’s favor, fair use claims involving compilations have been rejected. See, e.g. Schroeder v. William Morrow & Co., 566 F.2d 3 (7th Cir. 1977). This is especially true when the purported fair use is commercial. Financial Information, Inc. v. Moody’s Investors, 751 F.2d 501, 509 (2nd Cir.1984). As acknowledged at argument, star pagination is being introduced to increase MDC’s revenues, and enhance its market position. Under this factor, it cannot prevail on its fair use claim.

3. Amount and substantiality of the portion uséd.

MDC claims that West’s page numbers constitute a miniscule portion of the total material contained in a given volume of a West reporter. While this may be true, it is not necessarily enlightening. When viewed in the light of MDC’s intent and ability to expropriate each and every page number from each and every volume of West’s reporters, the appropriation takes on a greater magnitude. This Court holds, above, that this “small amount” is the key to the West arrangement.

This Court is convinced that MDC’s star pagination of West’s arrangements is both quantitatively and qualitatively substantial. Isolated instances of minor infringements, when multiplied many times, become in the aggregate a major intrusion upon the copyrighted material and must be prevented. Harper & Row Publishers v. Nation Enterprises, — U.S. —, 105 S.Ct. 2218, 2235, 85 L.Ed.2d 588 (1985). By taking West’s page numbers, MDC is taking West’s arrangement justifying the grant of a preliminary injunction.

4. Effect of the infringing use on the market.

The final factor to examine in determining the validity of MDC’s fair use claim is the effect that star pagination will have on the market for West Reporters. The fair use doctrine has always precluded a use that supersedes the use of the original. Harper & Row Publishers v. Nation Enterprises, — U.S. —, 105 S.Ct. 2218, 2225, 2226, 85 L.Ed.2d 588 (1985). If both plaintiff’s and defendant’s works are used for the same purpose and they fulfill the same function in terms of actual or potential customer demand, then a fair use cannot be found. Metro-Goldwyn-Mayer v. Showcase Atlanta Co-op Prod., 479 F.Supp. 351, 361 (N.D.Ga.1979).

There can be little doubt that MDC’s incorporation of West’s page numbers into the LEXIS reports database will supersede a substantial use of West’s hard bound volumes of reporters. Although each is a different medium, both MDC’s computers and West’s books, serve the function of providing the text of judicial opinions to the public. MDC’s star pagination will supplant the need for West’s National Reporter System publications; this is not a fair use.

MDC has thus far failed to show that its proposed star pagination is not a taking of West’s copyrightable arrangements, and MDC has not established that its star pagination constitutes a fair use. For Dataphase purposes, West has met the test of probable success on the merits in its claim of copyright infringement.

II. The threat of irreparable harm to West if the preliminary injunction is denied.

In order for a preliminary injunction to issue in this case, West must show that it will be threatened with irreparable harm if the preliminary injunction is denied. This Court finds that West has made the required showing of harm, for Dataphase purposes.

The general rule in alleged copyright infringement cases is that, for a preliminary injunction motion, irreparable injury is presumed once the movant has established a prima facie case of copyright infringement. Video Views, Inc. v. Alexander, No. 4-84-623, slip op. (D.Minn. Feb. 19, 1985); Northwestern Bell Tel. Co. v. Bedco of Minn., Inc., 501 F.Supp. 299, 303 (D.Minn.1980). Although this Court has noted that the general rule is more commonly applied to copyrighted materials other than compilations, it nonetheless recognizes the presumption when the movant has a strong claim for copyright infringement. Northwestern Bell, 501 F.Supp. at 303. This Court sets forth its holding that West has made a strong claim for copyright infringement. Therefore, the presumption of irreparable harm can be applied.

Even if the Court did not apply the presumption of irreparable harm, it is apparent that West has still made the necessary-showing of harm for Dataphase purposes. If the defendant’s use of plaintiff’s copyrighted product may materially reduce the demand for West’s product, a sufficient showing of irreparable injury for preliminary injunction purposes has been made. Wainwright Sec. v. Wall Street Transcript Corp., 558 F.2d 91, 94 (2nd Cir.1977). West has asserted by affidavit that star pagination may reduce the need for its services and, in fact, claims that cancellation of a subscription to West’s law reports has already occurred as a result of MDC’s impending star pagination. See, Affidavit of Thomas A. Woxland. Therefore, West has made the requisite showing of irreparable injury.

III. The harm to West if the injunction is denied compared to the harm to MDC if the injunction is granted.

Dataphase requires balancing the harm inflicted by the grant of a preliminary injunction against any harm that will result from its denial. At oral argument on this subject, the principal harm suggested by MDC is loss of market supremacy for its having achieved this claimed advance in legal research. There was also a possibility that West might use the delay caused by an injunction to develop its own star pagination technique. This Court finds that neither position is substantial enough to seriously weigh in the Dataphase balance.

The market supremacy claim is easily dealt with: this Court finds that any market supremacy which MDC has generated is a function of its ability to infringe a copyright. This the Court will not protect.

As to MDC’s second claim, it is true that West has a computer assisted legal research system similar to LEXIS known as WESTLAW. MDC states that WESTLAW does not have a star pagination feature and indicates that if a preliminary injunction is issued, West will have time to develop such a feature, thus destroying any market lead time MDC may have had in introducing star pagination. This claim is speculative at best. MDC cannot possibly know what features West intends to introduce in its WESTLAW system. Even if West were to introduce a star pagination feature, it should be noted that West would be referring to its own page numbers, from its own volumes of law reports, from its own National Reporter System publications. MDC has failed to show that any speculative harm to it will outweigh the probable harm to West.

IV. Public Interest.

The final factor to consider in determining whether a preliminary injunction should issue under Dataphase is the public interest in granting or denying the proposed injunction. The Court finds that the public interest favors preliminary injunctive relief.

The Constitution grants to Congress the power “[t]o promote the progress of ... useful arts, by securing for limited times to authors ... the exclusive right to their respective writings”. U.S. CONST, art. I, sec. 8, cl. 8. This is a means by which an important public purpose may be achieved. .It is intended to motivate creative activity by the provision of a special reward, and eventually allows the public total access to the products of their genius after the limited period of exclusive control has expired. The monopoly created by copyright thus rewards the individual author in order to benefit the public. Harper & Row Publishers v. Nation Enterprises, — U.S. —, 105 S.Ct. 2218, 2223 (1985). Without the economic incentive to create which copyright protection provides, this incentive and the advantages it creates for the society may well be lost.

MDC in its briefs and memoranda finds it both “ludicrous” and “absurd” to believe that West would abandon its currently lucrative business if copyright protection was not extended to its page numbers. Considering, however, that MDC’s star pagination may do away with the need for West’s reporters, this conclusion is not so hard to believe.

MDC claims that the public interest favors denying a preliminary injunction because its intended star pagination would give judges, lawyers and citizens freer access to the entire body of law. That is, the public need for access to the law, which is currently embodied in West’s publications, should reduce or eliminate West’s exclusive rights in its material. This Court is not pursuaded. In dealing with a similar assertion, the Supreme Court in Harper & Row Publishers v. Nation Enterprises, — U.S. —, 105 S.Ct. 2218, 2230, 85 L.Ed.2d 588 (1985) stated that:

It is fundamentally at odds with the scheme of copyright to accord lesser rights in those works that are of greatest importance to the publie. Such a notion ignores the major premise of copyright and injures author and public alike. “[T]o propose that fair use be imposed whenever the ‘social value [of dissemination] ... outweighs any detriment to the artist,’ would be to propose depriving copyright owners of their right in the property precisely when they encounter those users who could afford to pay for it.” ... “If every volume that was in the public interest could be pirated away by a competing publisher, ... the public [soon] would have nothing worth reading.”

As the Supreme Court makes clear, reducing copyright protection to works of publie import would create an economic disinsentive to create the work which would ultimately jeopardize the creation of these very works. Therefore, the public interest mandates that MDC’s star pagination be restrained.

Conclusion

Based upon the above analysis of the factors necessary for a preliminary injunction under Dataphase Systems, Inc. v. C.L. Systems, Inc., 640 F.2d 109 (8th Cir. 1981) and for the reasons set forth herein,

IT IS ORDERED that:

1. Plaintiff’s motion for a preliminary injunction pursuant to Rule 65, F.R.Civ.P. is granted.

2. This preliminary injunction shall be effective upon the plaintiff’s filing with the Clerk of this Court a bond pursuant to Rule 65(c), F.R.Civ.P., in the amount of $100,000.

3. Defendant’s motion to dismiss plaintiff’s complaint pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure is denied.

      . The significance of this indexing function is seen by the fact that another whole enterprise, Shepard’s Citations, has been established which indexes West’s internal index. This is not unlike the system dealt with in New York Times Co. v. Roxbury Data Interface, Inc., 434 F.Supp. 217 (D.N.J.1977). This has proven to be an invaluable tool for promoting legal research.

      . While the parties may, at this early stage of the litigation dispute whether or not the precise words of each decision are exactly the same or vary significantly from West to MDC, for the purposes of this opinion, the texts of the decision are regarded as substantially identical.

      . In a sense, the whole concept of serial order in a computer memory is meaningless. In LEXIS, the "opinions” are actually only recorded, accessible, electronic impulses.


text:
    Marilyn ANDERSON and Walter Berk, Plaintiffs, v. PARAMOUNT PICTURES CORPORATION, et al., Defendants.
    No. CV-83-7051 CBM.
    United States District Court, C.D. California.
    Feb. 13, 1985.
    John F. Denove, Cheong & Denove, Los Angeles, Cal., for plaintiffs.
    William Billick, Rosenfeld, Meyer & Susman, Beverly Hills, Cal., for defendant Paramount Pictures, T. Harris and H. Weingrod.
    Kenneth E. Kulzick, William E. Stoner, Lillick McHose & Charles, Los Angeles, Cal., for defendants Aaron Russo Productions, Aaron Russo and Irwin Russo,
   FINDINGS OF FACT AND CONCLUSIONS OF LAW

CONSUELO BLAND MARSHALL, District Judge.

FINDINGS OF FACT

1. This is a civil action, filed on November 1, 1983 for copyright infringement, breach of implied contract, breach of confidence and unjust enrichment. Plaintiffs are Marilyn Anderson and Walter Berk (Plaintiffs). Defendants are Paramount Pictures Corporation (Paramount), Aaron Russo Productions, Aaron Russo, Irwin Russo, Timothy Harris (Harris), and Herschel Weingrod (Weingrod).

2. Plaintiffs are individuals who reside in California. Ms. Anderson is a professional writer.

3. Defendants Harris and Weingrod are individuals who reside in California. Harris and Weingrod are professional writers. Aaron Russo and Irwin Russo are producers of motion pictures.

4. Defendant Paramount is a Delaware corporation with a place of business in California. Paramount is a well-known producer and distributor of motion pictures.

5. Plaintiffs are the authors of a screenplay entitled “High Stakes” which was conceived and written after 1975 and before 1981. For purposes of their motion, the defendants concede that the screenplay was properly registered with the U.S. Copyright Office on February 11, 1981.

6. “High Stakes” is a romantic melodrama set in New York City about a lonely woman executive, Hannah Hartley, who makes a wager with her best friend, Carole Taylor, that she can train an uneducated white man in six months to appear sufficiently genuine as a entrepreneur to fool her company’s board of directors. Eddie Debellis is the scruffy-looking young man with a heavy Brooklyn accent who is the subject of Hannah’s attempts to create a “new” person and with whom Hannah falls in love.

7. The motion picture “Trading Places” was conceived, produced and publicly exhibited by the defendants after September 1981. “Trading Places” is a social comedy set in Philadelphia. The plot concerns a double bet between two elderly, wealthy brothers, Randolph and Mortimer Duke, to resolve the “eternal” heredity versus environment debate, and the revenge sought by the two subjects of their bet. Specifically, the Duke brothers bet that, if given the opportunity, Billy Ray Valentine, a black derelict, would manage successfully their commodities investment company. They also bet that Louis Winthorpe, a successful white investment broker at their company, would take to crime if faced with sudden misfortune and poverty. After Billy Ray and Louis discover that they have been the subjects of this bet, they become allies and together find revenge against the Duke brothers through a commodity market manipulation scheme.

8. The basic theme/premise of “High Stakes” is two-fold. First, it is about a wager between two female friends that one of them can train an uneducated man to appear to be an entrepreneur in six months. Second, it is about the development of a love affair between a lonely woman and the subject of her wager.

9. The basic theme/premise of “Trading Places” is three-fold and very different from “High Stakes”. First, “Trading Places” is about a double bet between two brothers that a successful executive would become a criminal and that a derelict could become a successful executive, if they simply “traded places”. (The entire story in “Trading Places” occurs within several weeks.) Second, after the subjects discover the bet, they form an alliance and together seek revenge through a successful commodity market manipulation scheme. Finally, “Trading Places” has a strong social commentary or satirical theme/premise resulting from Billy Ray being black and Louis being white — specifically, an uneducated black can succeed if given an opportunity and an educated white will turn to crime if subjected to misfortune. (“Trading Places” was initially entitled “Black & White” during development.)

10. There is no meaningful similarity between the dialogue and settings in the two works, except for some common and stereotypical phrases and terms and except that both are set in cities. (“High Stakes” is set in New York City and “Trading Places” is set in Philadelphia.)

11. The mood and pace of the two works are dissimilar. “Trading Places” is a fast-paced social comedy that takes place within a few weeks. “High Stakes” is a slow-paced romantic melodrama with no comedy, that takes place over six months.

12. The plot and sequence of the works are dissimilar, except that they both contain the general “transformation” sequence (finding the subject of the bet, “transforming” him and his ultimate success in his new life).

13. Some of the similarities that do exist between “High Stakes” and “Trading Places” are unprotectible because they are Scenes a faire — incidents, characters or settings that naturally flow from or are standard to the treatment of certain ideas and themes. Common elements which constitute scenes a faire include the following: the two wealthy characters who make the bet drive around in a limousine and have a butler and chauffeur; people toast with champagne at celebrations.

14. With respect to the few random scenes or elements which are similar in both “High Stakes” and “Trading Places” which are not described above, they are random, insignificant, have no pertinence to the “total concept and feel” of the works and would not lead an ordinary lay observer to believe one work is the “dramatization or picturization” of the other. By way of illustration, both works have a character who pretends to be blind with dark glasses and a cup, who is later revealed as not blind; in both works the wealthy bettors bribe the subject of the bet to enter their limousine and the subjects then initially think that the bettors may be interested in sex; finally, in both works wallets contain credit cards, people chew gum, houses have fireplaces, men shave and passing references are made to Harvard, the Russians and unemployment.

CONCLUSIONS OF LAW

1. The Court has jurisdiction over the subject matter of this civil action pursuant to §§ 1331 and 1338 of Title 28 of the United States Code.

2. The “ideas” of “High Stakes” and “Trading Places” are not substantially similar as a matter of law. A comparison of the plots, themes, dialogue, mood, setting, pace and sequence of the works reveals no similarities which are of significance as a matter of copyright law.

3. The “expression” of the ideas in “High Stakes” and “Trading Places” is not substantially similar as a matter of law. No reasonable jury or ordinary lay observer could consider the motion picture “Trading Places” a “dramatization or picturization” of the screenplay “High Stakes”. Neither could a reasonable jury find the “total concept and feel” of the works to be substantially similar. The concrete patterns of the works as a whole are quite different. The interplay between the characters and sequence of incidents also are not similar.

4. No ordinary reasonable observer would find either that “Trading Places” reflects the total concept and feel of “High Stakes” or that “Trading Places” is a picturization or dramatization of “High Stakes”.

5. There is no genuine issue that defendants infringed plaintiffs’ copyright. Defendants are entitled to a partial summary judgment with respect to plaintiffs’ copyright claim. Plaintiffs’ claim for copyright infringement shall be dismissed with prejudice.

6. Plaintiffs shall take nothing and be afforded no relief herein. Plaintiffs’ pendent state claims shall be dismissed without prejudice.

7. Defendants are entitled to attorneys’ fees and costs they have incurred and expended in defending against the complaint herein.


author: ELFYIN, District Judge.

text:
    Mario M. VIOLANTE, Plaintiff, v. William F. BOLGER, Postmaster General, United States Postal Service, Defendants.
    No. Civ-78-191E.
    United States District Court, W.D. New York.
    Feb. 28, 1985.

      Randy H. Gugino, Amherst, N.Y., for plaintiff.
    C. Donald O’Connor, Asst. U.S. Atty., Buffalo, N.Y., for defendants.
   MEMORANDUM and ORDER

ELFYIN, District Judge.

Plaintiff, an Italian-American male, instituted this action against the United States Postal Service alleging that he had been unlawfully terminated from his position as a mail handler on the basis of his national origin in violation of the Civil Rights Act of 1964, 42 U.S.C. § 2000e-2. In an Order of November 24, 1982 I referred this case to the Magistrate to hold a hearing and thereafter report his findings pursuant to 28 U.S.C. § 636(b)(2) and Fed.R.Civ.P. rule 53. The Magistrate held an evidentiary hearing and recommended that the Complaint herein be dismissed.

Plaintiff was ordered to show cause in this Court why the Magistrate’s report and recommendation should not be adopted and attorneys for both parties appeared before me on the adjourned date. The Magistrate had determined that “[tjhere is no evidence of any nature in this record which indicates that the defendant or any of the other employees of the United States Postal Service was motivated to terminate the plaintiff because of his national origin” and that plaintiff had “offered no evidence to counter the overwhelming testimony that his job performance during his 90 day probationary period was unsatisfactory.” Report of Magistrate Edmund F. Maxwell at page 10. Pursuant to Fed.R.Civ.P. rule 53(e)(2), plaintiff was given a period of ten days after receipt of notice of the filing of such report to serve any written objections thereto upon defendants and he failed to avail himself of this opportunity. Similarly, on the return of said order to show cause, he fell short of showing why the Magistrate’s Report and Recommendation should not be adopted by this Court and, after a review of the entire proceeding, it is now found that such should be adopted.

Defendants subsequently moved for an award of costs in this case due to the clear determination of the case. Fed.R.Civ.P. rule 54(d) provides that “[ejxcept when express provision therefor is made either in a statute of the United States or in these rules, costs shall be allowed as of course to the prevailing party unless the court otherwise directs * * Title VII does not specifically address a provision for an award of costs to a prevailing defendant, but some courts have determined that an award of costs is governed by the criteria set forth by the United States Supreme Court in considering an award of attorney’s fees to a prevailing defendant in Christianburg Garment Co. v. E.E.O.C., 434 U.S. 412, 421, 98 S.Ct. 694, 700, 54 L.Ed.2d 648 (1978). See, e.g., Dual v. Cleland, 79 F.R.D. 696 (D.D.C.1978). Other courts, however, have rejected the notion that Title VII disturbs the usual rule concerning costs. See e.g., Delta Air Lines, Inc. v. Colbert, 692 F.2d 489, 490 (7th Cir.1982); Hill v. J.C. Penney Co., Inc., 688 F.2d 370, 375 (5th Cir.1982); Croker v. Boeing Co., 662 F.2d 975, 998 (3d Cir.1981) (en banc); Jones v. City of San Antonio, 568 F.2d 1224 (5th Cir.1978); E.E.O.C. v. Eagle Iron Works, 424 F.Supp. 240, 250 (S.D.Iowa 1976).

By its terms rule 54(d) applies and the prevailing party is prima facie entitled to costs. Thus plaintiff must overcome the presumption. Delta Air Lines, Inc. v. Colbert, supra, at 490. “The losing party’s good faith and proper conduct is not enough * * * and in the decisions upholding refusal of costs there has been some fault, misconduct, default, or action worthy of a penalty on the part of the prevailing side.” Ibid. As “believed” by the United States Court of Appeals for the Third Circuit in Croker v. Boeing Co., supra, at 998, Title VII has not carved out an exception to rule 54(d).

Plaintiff has presented no evidence why costs should not be assessed against him or in support of any deviation from the normal operation of rule 54(d). As the Magistrate noted, plaintiff provided no evidence which indicated a discriminatory motivation on the part of his supervisors and plaintiff again offered no evidence to rebut the evidence of his poor job performance. Moreover, plaintiff has offered no evidence in opposition to defendant’s request for an award of costs. Plaintiff merely relies on considerations of “equity” and the fact that he expended resources in the prosecution of the lawsuit. Plaintiff does not, moreover, even contend that he is unable to meet an imposition of such costs.

Defendant has submitted in support of this motion an affidavit and a bill of costs. Plaintiff has not challenged any of the items listed therein and has, as noted, provided no tenable rationale for not imposing costs. Accordingly, defendant's motion for an award of costs in the amount of $1,842.10 is hereby ORDERED granted.

      . In that case the Court recognized that Title VII permits a district court in its discretion to award attorney’s fees to a prevailing defendant upon a finding that the plaintiff's action was frivolous, unreasonable or without foundation, or that the plaintiff continued to litigate after it became so, even though not brought in subjective bad faith.


author: MILES, Chief Judge.

text:
    UNITED STATES of America, Plaintiff, v. Cornelius OVERTON, Defendant.
    No. G85-25 CR.
    United States District Court, W.D. Michigan.
    May 14, 1985.
    David W. Brown and Dana Boente, Dept, of Justice, Washington, D.C., for plaintiff.
    Cornelius Overton, in pro per.
   OPINION ON MOTIONS TO DISMISS

MILES, Chief Judge.

Defendant, Cornelius Overton, is charged in an eight count indictment with violations of 26 U.S.C. §§ 7201 and 7203. In motions filed on April 2, 1985 defendant moves to dismiss the indictment or parts of it on various grounds. In his first motion defendant moves to dismiss all counts of the indictment because he has incurred no gain from his labor which may properly be accounted as income. In a second motion defendant moves to dismiss Counts I, II, V and VII for failure to state a felony offense under section 7201. In the third motion defendant moves to dismiss either the charged violations of section 7201 or the charged violations of section 7203 because the indictment violates the rule against multiplicity, or, alternatively, because the alleged violations of section 7203 constitute lesser included offenses of the alleged violations of section 7201.

The arguments will be addressed under the following headings: Taxable Income, Felony Counts, and Multiplicity.

Taxable Income

In his motion to dismiss all counts of indictment — and memorandum defendant argues that he has not incurred any gain which may properly be accounted as income. Defendant argues that he has merely exchanged one form of property (labor) for another (money). In Eisner v. Macomber, 252 U.S. 189, 207, 40 S.Ct. 189, 193, 64 L.Ed. 521 (1920), the Supreme Court held that “income” as used in the sixteenth amendment includes “gain derived from capital, from labor, or from both combined.” It is defendant’s position that reasonable compensation for services rendered is not income because it represents an equal exchange without gain.

Defendant’s position has been routinely rejected. Innumerable cases have held that wages constitute taxable income within the meaning of the Internal Revenue Code. See e.g., United States v. Burton, 737 F.2d 439, 441 (5th Cir.1984); United States v. Richards, 723 F.2d 646, 648 (8th Cir.1983); United States v. Stillhammer, 706 F.2d 1072, 1077-78 (10th Cir.1983).

The assertion that wages are not income has been described as “absolutely, undisputably, frivolous” by one District Court. Lovell v. United States, 579 F.Supp. 1047, 1048 (W.D.Wisc.1984). “It is well settled, and beyond dispute, that compensation for labor or service is taxable income, and no deduction is allowed for the value of labor expended.” Id.

The Seventh Circuit has also expressed its view that defendant’s contention is no longer worthy of consideration:

Although not raised in his brief on appeal, the defendant’s entire case at trial rested on his claim that he in good faith believed that wages are not income for taxation purposes. Whatever his mental state, he, of course, was wrong, as all of us already are aware. Nonetheless, the defendant still insists that no case holds that wages are income. Let us now put that to rest: WAGES ARE INCOME. Any reading of tax cases by would-be tax protesters now should preclude a claim of good-faith belief that wages — or salaries — are not taxable.

United States v. Koliboski, 732 F.2d 1328, 1329 n. 1 (7th Cir.1984). Wages clearly come within the Supreme Court’s definition of income as “undeniable accessions to wealth, clearly realized, and over which the taxpayers have complete dominion.” Commissioner v. Glenshaw Glass, 348 U.S. 426, 431, 75 S.Ct. 473, 477, 99 L.Ed. 483 (1955).

Defendant’s position that wages are not income is untenable, and defendant’s motion to dismiss all counts of the indictment is accordingly DENIED.

Felony Counts

In his motion to dismiss section 7201 charges for failure to state an offense defendant argues that the government has improperly attempted to make a felony case out of a misdemeanor. As correctly noted by the defendant, in order for section 7201 to apply, there must be alleged and proved more than a mere failure on the part of the defendant to act. Some affirmative act calculated to evade and defeat the payment of the tax must be shown. Spies v. United States, 317 U.S. 492, 499, 63 S.Ct. 364, 368, 87 L.Ed. 418 (1943).

The felony statute, section 7201, provides:

Any person who willfully attempts in any manner to evade or defeat any tax imposed by this title or the payment thereof shall, in addition to other penalties provided by law, be guilty of a felony and, upon conviction thereof, shall be fined not more than $10,000, or imprisoned not more than 5 years, or both, together with the costs of prosecution.

26 U.S.C. § 7201 (emphasis added).

The government has alleged that defendant attempted to evade and defeat the payment of the tax by 1) submitting a false form W-4 to his employer, 2) by failing to make a tax return, and 3) by failing to pay the tax. (Counts I, III, V and VII). Defendant admits that submitting a false W-4 form is an affirmative act, but nevertheless contends that filing a false W-4 form is a misdemeanor under section 7205 and that the government cannot lay several misdemeanors end to end in an effort to reach a felony.

The nature of the affirmative act required under section 7201 was defined very broadly by the Supreme Court in Spies:

Congress did not define or limit the methods by which a willful attempt to defeat and evade might be accomplished and perhaps did not define lest its effort to do so result in some unexpected limitation. Nor would we by definition constrict the scope of the Congressional provision that it may be accomplished ‘in any manner.’ By way of illustration, and not by way of limitation, we would think affirmative willful attempt may be inferred from such conduct such as keeping a double set of books, making false entries or alterations, or false invoices or documents, destruction of books or records, concealment of assets or covering up sources of income, handling of one’s affairs to avoid making the records usual in transactions of the kind, and any conduct, the likely effect of which would be to mislead or to conceal. If the tax-evasion motive plays any part in such conduct the offense may be made out even though the conduct may also serve other purposes such as concealment of other crime.

317 U.S. at 499, 63 S.Ct. at 368 (emphasis added).

Conduct held sufficient to constitute the requisite affirmative act under section 7201 include making false statements to IRS agents, United States v. Goodyear, 649 F.2d 226, 228 (4th Cir.1981); using false documents, United States v. Walsh, 627 F.2d 88, 92 (7th Cir.1980); and filing false tax returns, United States v. Schafer, 580 F.2d 774, 782 (5th Cir.1978). Certainly, the filing of false W-4 forms which may mislead the IRS into believing that defendant had no taxable income and which prevent the withholding of sufficient tax from paychecks similarly constitutes an act of attempted evasion the likely effect of which would be to mislead or to conceal.

The use of false and fraudulent forms W-4 to establish the affirmative acts of evasion was recently approved in United States v. Parkinson, 602 F.Supp. 121 (Roszkowski, J.) (N.D.Ill.1984). The Court rejected the contention that two misdemeanors cannot be used to create a felony. When defendant submitted false and fraudulent forms W-4 and failed to file tax returns, “the combined effect of both violations goes far beyond the effect of either individually.” Id. at 123.

Defendant has been charged with a passive neglect of his statutory duty to file tax returns with a willful attempt to evade tax by submitting false forms W-4. The charges are sufficient to make out a case of attempted tax evasion in violation of 26 U.S.C. § 7201. Defendant’s motion to dismiss section 7201 charges for failure to state an offense are accordingly DENIED.

Multiplicity

Defendant argues in his motion to dismiss counts of indictment that the indictment violates the rule against multiplicity. In the alternative, defendant argues that the alleged violations of section 7203 constitute lesser-included offenses of the alleged violations of section 7201 and that the government should not be allowed to charge as to both.

The charges under sections 7201 and 7203 are not multiplicitous. This case differs from United States v. Chrane, 529 F.2d 1236 (5th Cir.1976), cited by defendant, where Crane was convicted for the same years of failing to file tax returns and failing to supply information, both offenses under section 7203. In that case the Court found that the two offenses were coterminous, “in effect one offense with two labels.” Id. at 1238.

The charges under 7201 and 7203 are not identical. Section 7203 is, however, as defendant suggests, a lesser included offense of section 7201. See, Sansone v. United States, 380 U.S. 343, 349, 85 S.Ct. 1004, 1009, 13 L.Ed.2d 882 (1965); Spies v. United States, 317 U.S. 492, 499, 63 S.Ct. 364, 368, 87 L.Ed. 418 (1942); United States v. Buckley, 586 F.2d 498, 504 (5th Cir.1978). Nevertheless, this fact does not mandate the dismissal of either the section 7201 charges or the section 7203 charges. The government is entitled to charge both the lesser included offense as well as the major offense as separate counts of the same indictment. United States v. Universal Corp., 344 U.S. 218, 228, 73 S.Ct. 227, 231, 97 L.Ed. 260 (1952); United States v. Forsberg, 351 F.2d 242, 245 (9th Cir.1965); 8 Moore’s Federal Practice, ¶ 31.03[3][c] at 31-24.

Whether or not the jury will be instructed on both the lesser included offense as well as the greater offense depends on whether the charged greater offense requires the jury to find a disputed factual element which is not required for conviction of the lesser-included offense. Sansone, 380 U.S. at 349-50, 85 S.Ct. at 1009. This determination cannot be made at this juncture.

For the foregoing reasons defendant’s motion to dismiss either the felony charges under section 7201 or the misdemeanor charges under section 7203 is DENIED.

' Conclusion

Defendant’s pretrial motions to dismiss all or part of the indictment are DENIED.


author: NESBITT, District Judge.

text:
    WINDMERE CORPORATION, a Florida corporation, Plaintiff, v. REMINGTON PRODUCTS, INC., a foreign corporation, North American Philips Corporation, a foreign corporation, and Victor K. Kiam, Defendants.
    No. 84-2757 Civ.
    United States District Court, S.D. Florida, S.D.
    May 31, 1985.

      Ronald P. Weil, Hornsby & Whisenand, Miami, Fla., for plaintiff.
    H. Dane Mottlau, P.A., Miami, Fla., Surrey & Morse, P.A., Washington, D.C., for defendants.
   ORDER

NESBITT, District Judge.

THIS CAUSE has come on before the Court on the Defendants, REMINGTON PRODUCTS, INC.’s (Remington) and VICTOR K. KIAM’s (Kiam), Motion to Dismiss or, in the Alternative, to Change Venue from the Southern District of Florida to the District of Connecticut. By its complaint, WINDMERE CORPORATION (Windmere) is alleged to be a Florida corporation, with its principal place of business located in Hialeah, Florida. The moving Defendant, Remington, is a Delaware corporation with its principal place of business in Connecticut. Kiam is a Connecticut resident. NORTH AMERICAN PHILIPS CORPORATION (NAPC) was voluntarily dismissed by Windmere on March 14, 1984. The amended complaint alleges that Wind-mere proposed a television advertising campaign for its Ronson electric shavers and that Remington, Kiam and NAPC wrote to three major television networks (NBC, CBS and ABC) and falsely alleged that the Ron-son advertisement was deceptive thereby falsely disparaged Remington’s product. It is alleged that because of the letter complaints, the three national television networks and certain local television stations refused to show or continue to show the Windmere advertising. The amended complaint seeks damages as well as injunctive relief against Remington and Kiam and purports to allege causes of action based on interference with business and contractual relationships and trade libel.

Without considering the merits of the motion to dismiss, it appears to the Court that this case is appropriate for a transfer to the District of Connecticut for the convenience of parties and witnesses and in the interests of justice under 28 U.S.C. § 1404(a).

Under 28 U.S.C. § 1404(a) it is provided that:

For the convenience of parties and witnesses, in the interest of justice, a district court may transfer any civil action to any other district or division where it might have been brought.

Under this section the threshold consideration is whether the action “might have been brought” in the proposed transferee district court. See Continental Grain v. THE Barge FBL-585, 364 U.S. 19, 80 S.Ct. 1470, 4 L.Ed.2d 1540 (1960). An action “might have been brought” in a proposed transferee court if: (1) the court had jurisdiction over the subject matter of the action; (2) venue is proper there; and (3) the defendant is amenable to process issuing out of the transferee court. 15 C. Wright, A. Miller and E. Cooper, Federal Practice and Procedure § 3845 (1976).

It is clear that the action could have originally been brought in the District of Connecticut under 28 U.S.C. § 1391(a), (c) as all the Defendants reside or do business in the District of Connecticut. Further, as the Defendant Remington does business and maintains offices in Connecticut and Kiam resides there, the Defendants would be amenable to process issuing out of the transferee court.

The Court must weigh various factors in order to determine if a transfer to a more convenient forum is justified. Garner v. Wolfinbarger, 433 F.2d 117, 119 (5th Cir.1970). The courts have traditionally considered several factors in determining whether the doctrine of forum non conveniens should apply to a particular case. Those factors are: (1) convenience of the parties; (2) convenience of the witnesses; (3) relative ease of access to sources of proof; (4) availability of process to compel presence of unwilling witnesses; (5) cost of obtaining presence of witnesses; (6) the public interest. See Gulf Oil Corp. v. Gilbert, 330 U.S. 501, 67 S.Ct. 839, 91 L.Ed. 1055 (1947); Abramson v. INA Capital Management Corp., 459 F.Supp. 917 (E.D. N.Y.1978); Poncy v. Johnson and Johnson, 414 F.Supp. 551 (S.D.Fla.1976).

At the outset, Windmere’s choice of forum is not controlling but is merely one of the factors to be considered by the court in determining the most convenient forum for the case. Garner v. Wolfinbarger, 433 F.2d at 119. Furthermore, where the operative facts underlying the cause of action did not occur within the forum chosen by the Plaintiff, the choice of forum is entitled to less consideration. Curtin v. Litton Systems, 365 F.Supp. 489, 490 (E.D. Pa.1973); see also Popkin v. Eastern Air Lines, Inc., 204 F.Supp. 426, 430 n. 3 (E.D. Pa.1962).

FACTORS SUPPORTING TRANSFER

(A) Convenience of the parties. Of the four parties to the action only the Plaintiff is located in or near the Southern District of Florida. The three other parties are located in Connecticut. The convenience of the parties would be best served by transferring the action. Most of the Defendants’ employees who have knowledge of the facts and circumstances of the action are employed at the Defendants' principal offices.

(B) Convenience of witnesses. Wind-mere alleges that it had a contract with certain national network television stations to advertise its product. Evidence concerning this allegation would have to be obtained from the television networks which are located in New York. The local television stations referred to in the complaint are spread throughout the United States so no particular district would be more or less convenient to the witnesses representing those networks. If documents and files of the networks have to be subpoenaed and reviewed they would be located primarily in Connecticut or New York.

(C) Relative access to other sources of proof The books and records of all three defendants are either in New York or Connecticut. Windmere’s testing service is located within the District of Connecticut.

(D) Availability of process to compel presence of witnesses and cost of obtaining witnesses. The witnesses that would be called by Windmere as well as by the corporate and individual defendants would be located closer to the District of Connecticut as they are either residents of New York or Connecticut.

(E) Public interest factors. In comparing the relative congestion of this Court’s dockets with those of the District of Connecticut, the latest statistics from the Administrative Office of the United States Courts ending June 30, 1984 reflect that in the Southern District of Florida there were 4445 civil cases and 1046 felony criminal cases filed. Administrative Office of the United States Courts, Federal Court Management Statistics (1984). For the same period of time in the District of Connecticut there were 2859 civil cases and 189 felony criminal cases filed. Id. Because of the notorious criminal filings in the Southern District of Florida and the Speedy Trial Rule, 28 U.S.C. § 3161 et seq., it has become, regretfully, almost a “local rule” that plaintiffs and defendants in a civil action endure a long wait to have their day in court. So, a transfer to the District of Connecticut would reasonably expedite disposition of the trial with the attendant reduction of costs and inconvenience to the litigants.

The granting of Defendants’ Motion for Change of Venue would result in simply more than shifting the inconvenience of one party to another. This Court has carefully examined the pleadings and motions in this cause and finds that all relevant factors under 28 U.S.C. § 1404(a) are present and that those factors when considered together warrant a transfer to the District of Connecticut. Accordingly, it is

ORDERED AND ADJUDGED that the Defendants Remington’s and Kiam’s Motion for Change of Venue be and the same is hereby GRANTED. The Clerk of the Court for the Southern District of Florida is hereby directed to take all necessary steps and procedures to effect the expeditious transfer of the above-styled action to the United States District Court for the District of Connecticut.


author: BELL, District Judge.

text:
    Paula KUENZ, et al., Plaintiffs, v. GOODYEAR TIRE & RUBBER COMPANY, Defendant.
    No. C85-900-A.
    United States District Court, N.D. Ohio, E.D.
    June 12, 1985.

      William E. Albrecht, Clayton, Mo., Virginia M. O’Leary, Kimberly E. O’Leary, Jane G. Rocamora, Oakland City, Ind., Beverly M. Rose, Hershey & Browne, Akron, Ohio, Jack J. Cavanaugh, St. Louis, Mo., for individual plaintiffs.
    Equal Employ. Advisory Council, Kathryn Scully, McGuiness & Williams, Washington, D.C., and George W. Rooney, Jr., Roetzel & Andress, Akron, Ohio, Robert G. Johnson, Feme P. Wolf, E.E.O.C., St. Louis, Mo., for E.E.O.C.
    James M. Conlin, The Goodyear Tire & Rubber Co., and John T. Billick, James D. Kurek, Buckingham, Doolittle & Burroughs, Akron, Ohio, and John J. Gazzoli, Jr., Lewis & Rice, St. Louis, Mo., for defendant.
   ORDER

BELL, District Judge.

Before the court are alternative motions for reconsideration of the granting of a motion for class certification or for allowing an interlocutory appeal on that issue filed by defendant in this cause. Inasmuch as the circumstances leading to the court’s consideration of this matter are not only somewhat unusual but have a bearing on the decision which follows, those circumstances are briefly recited at this point in the opinion.

The cases in issue, namely Kuenz, et al. v. Goodyear Tire & Rubber Company and Eichenseer v. Goodyear Tire & Rubber Company, were originally consolidated in the United States District Court for the Eastern District of Missouri. While in that venue, each cause bore a separate case number. After removal to this court, the cases were consolidated under a single caption number, C85-900-A. The trial court in Missouri undertook hearings on plaintiffs’ motions to certify class representation after considerable discovery had been conducted on that issue; class certification was subsequently granted on January 30, 1985, 104 F.R.D. 474. Defendant Goodyear thereafter requested removal of the causes of action under discussion and that motion was granted which resulted in the case files referred to above being transferred to this jurisdiction.

On April 15, 1985, defendant filed a “Motion to Reconsider Class Certification and/or Amend Order.” Two weeks later, plaintiffs responded and the court accepted a third amicus curiae brief of the Equal Employment Advisory Council. The issues having been drawn in such fashion, oral hearing was conducted on June 3, 1985. The court’s opinion follows.

As might be assumed from the very brief history of plaintiffs’ causes in the Missouri venue, the trial judge there gave careful attention to the management of those causes as they progressed to the point of the requested certification. Because of this, Judge Hungate had not only the arguments of counsel to assist him in making his decision but had in addition certain depositions, briefs and affidavits. It is obvious that he considered each in reaching his decision. It is Goodyear’s position, however, that he ignored the Supreme Court decision in General Telephone Co. of Southwest v. Falcon, 457 U.S. 147, 102 S.Ct. 2364, 72 L.Ed.2d 740 (1982), and thus erred in certifying, as he did, a nationwide class.

Before proceeding further, certain threshold matters should be discussed.One gleans from the statements of Goodyear’s counsel during oral argument that courts possess, in his view, the inherent power to reconsider and, if necessary or desirable, amend or modify their previous rulings. Plaintiffs’ view does not necessarily differ in this particular respect but they do urge here that the previously assigned trial judge established what is termed the ‘law of the case,’ and that the prior ruling is not subject to defendant’s motion. It goes without saying that the present situation tends to be more complicated than normal by virtue of the fact that this court is asked to reconsider the ruling made by a fellow jurist of equal status in another district. Thus, what is termed a motion for reconsideration by defendant tends to be viewed by plaintiffs as something resembling an appellate review of the law already enunciated as governing this proceeding.

It would appear to be beyond argument that a court may review and thereafter modify or amend its own orders. To apply the context of this statement to the immediate cause, one reasons that Judge Hungate could, within the perimeters of his judicial powers, alter or amend his order dated January 30, 1985 relating to class certification. However, the application of the principle of the ‘law of the case’ is a salutary one. It reflects the sound policy of courts generally that once an issue is decided by application of precedential law to the facts presented, that decision governs the case thereafter. But, while the application of the principle may be salutary, it is not to be rigidly applied, particularly in a setting such as that before us now where constant monitoring of the certified class is advisable under the provisions of Rule 23 of the Federal Rules of Civil Procedure. The order of certification made here is obviously subject to a motion for reconsideration if such motion had been submitted to the original trial judge. In the opinion of this court, Judge Hungate would not have been precluded from such a review by any ‘law of the case’ principle.

Assuming the reasoning above to apply to a request for reconsideration made of the original judge, may such a review be validly made by a successor or transferee judge? Again we must reason that this review, just as would be the case in relation to the original or transferor judge, is not necessarily barred by the principles of the ‘law of the case.’ We are instructed that a transferee court is not without power to modify or even vacate a protective order made by the transferror. See In re United States, 733 F.2d 10, 13-14 (2d Cir.1984); In re Upjohn Co. v. Antibiotic Clescin Products Inc., 664 F.2d 114, 118-19 (6th Cir. 1981). Judge Hand, in his dicta in Dictograph Products Company v. Sonotone Corporation, 230 F.2d 131, (2d Cir.1956), quotes Mr. Justice Holmes:

In the absence of statute the phrase, “law of the case,” as applied to the effect of previous orders on the later action of the court rendering them in the same case, merely expresses the practice of courts generally to refuse to reopen what has been decided, not a limit on their power.

Id. at 135 (quoting Messinger v. Anderson, 225 U.S. 436, 444, 32 S.Ct. 739, 740, 56 L.Ed. 1152 (1912)).

In sum, there is no reason to believe that this court may not honor defendant’s motion for reconsideration and, in addition, there is no reason to suggest that Judge Hungate’s decision establishes the ‘law of the case’ to such a degree as to preclude the review requested by defendant.

While the court has the power to modify or vacate an order previously entered in the same case by any judge to whom it was assigned and is not precluded from such action by ‘law of the case’ principies, exercise of this power must of necessity be used sparingly. When issues have been carefully considered and decisions rendered, the only reason which should commend reconsideration of that decision is a change in the factual or legal underpinnings upon which the decision was based. For reasons of policy, courts and litigants cannot be repeatedly called upon to backtrack through the paths of litigation which are often laced with close questions.

Decisions, once made in full consideration of complete records during the course of litigation, deserve the badge of dependability necessary to advance the case to the next stage. During the course of its progress, the court maintains the ability to modify previous orders when a new fact or legal premise is brought to light. This is especially true on the issue of class certification as provided by Federal Rule of Civil Procedure 23(c)(1).

As previously indicated, the primary motion before the court is one for reconsideration of the class certification order. This court is of the opinion that it should decline the review requested at this point in the proceedings. All of the evidence to be reviewed now to ‘test’ Judge Hungate’s decision was before him at the time of his opinion. No new showing of fact or law is presented to this court. Thus, the only question is whether the certification order conforms to the legal standard enunciated in General Telephone Co. of the Southwest v. Falcon, 457 U.S. 147, 102 S.Ct. 2364, 72 L.Ed.2d 740 (1982). That standard, defined in briefest form, requires that:

[A] Title VII class action, like any other class action, may be certified if the trial court is satisfied after a rigorous analysis, that the prerequisites of Rule 23(a) have been satisfied.

Id. at 161, 102 S.Ct. at 2372.

The opinion of the Missouri trial court clearly recognizes the specific prerequisites to the maintenance of class representation set forth in Rule 23(a). The trial judge considered each of these in his memorandum order. This court is of the view that there is little judicial value in matching the words of the opinion to some substantiation in the record; although Falcon is neither quoted nor mentioned, there is no evidence that its teachings were disregarded.

It is the position of this court that:

1. The motion for reconsideration is denied as is the motion for interlocutory appeal.

2. Limited discovery will now take place according to schedule arrived at by the court and counsel.

3. The court will meet with counsel at a date set within the next 45 days and at that time set the discovery schedule.

It should be noted that this court will subject this cause to continuing monitoring during the discovery period. While the court will not consider further motions for reconsideration of the original opinion and order issued by Judge Hungate, it does not wish to imply that proper motions for decertification or alteration of the certification order will not be fairly and carefully reviewed if filed.

IT IS SO ORDERED.


author: NAUMAN S. SCOTT, District Judge.

text:
    Robert B. EUBANK, Individually and on behalf of all other shareholders of Lee Lumber Co., Ltd. v. LEE LUMBER COMPANY LTD., et al.
    Civ. A. No. 83-2809.
    United States District Court, W.D. Louisiana, Alexandria Division.
    June 21, 1985.

      Robert B. Eubank, Birmingham, Ala., pro se.
    Crowell & Owens, (Richard B. Crowell), Alexandria, La., for Lee Lumber Co., Ltd.
   RULING

NAUMAN S. SCOTT, District Judge.

This matter is now before us on a Motion for Summary Judgment filed by the defendant, International Paper Company (IPC). In support of its motion, IPC argues that res judicata bars the instant suit.

We agree.

There have been several actions filed regarding the property in question in this lawsuit and the lease which Eubank now seeks to have declared null and removed from the public records.

The first action, captioned Lee Lumber Company v. International Paper Company, Civil Action No. 88-339, hereinafter referred to as “Lee I”, was filed on September 18, 1973 in the Ninth Judicial District Court, Rapides Parish, Louisiana. In that suit the plaintiff sought to have the lease declared null and void and to be placed in possession of the property. Lee I was dismissed on the grounds of prescription. The trial court’s ruling was affirmed in Lee Lumber Company v. International Paper Company, 345 So.2d 212 (La.App. 3rd Cir.1977), writ denied, 347 So.2d 503 (La.1977).

The second action was filed in this court on September 30, 1977 captioned Lee Lumber Company v. International Paper Company, Civil Action No. 77-1097-A, and hereinafter referred to as “Lee II”. A declaratory judgment was sought in that matter based on four underlying causes of action, to-wit: (1) a possessory action; (2) an action to quiet title; (3) an action for recovery of a thing not due; and (4) an action for eviction. Summary judgment was granted in that action because the underlying cause of action, that of nullity and rescission of the lease, had prescribed. That ruling was affirmed by the Fifth Circuit. Lee Lumber Company v. International Paper Company, Civil Action No. 79-1309.

The third action was filed in this court on June 9, 1982, captioned Robert B. Eubank, Individually and on behalf of all other shareholders of Lee Lumber Company, Ltd. v. International Paper Company, Civil Action No. 82-1446-A, and hereinafter referred to as “Lee III”. That matter was styled as a possessory action. Summary judgment was also granted in Lee III for basically the same reasons as Lee II.

La.C.C. art. 2286 sets forth the requirements of res judicata:

“... the thing demanded must be the same; the demand must be founded on the same cause of action; the demand must be between the same parties, and formed by them against each other in the same quality.”

The term “the same cause of action” in Article 2286 is a mistranslation. The article should read “the same cause”. R.G. Claitor’s Realty v. Juban, 391 So.2d 394, 397 (La.1980).

In the complaint, the plaintiff, Robert B. Eubank (Eubank), has asserted that this is an action to quiet title and that no other cause of action is being asserted.

We find that there is no genuine issue of material fact that the thing demanded in this suit is the same as that which was demanded in Lee I, Lee II, and Lee III. The plaintiff is seeking to have the lease, the 1950 amendment, and the timber sale declared invalid and to have those documents removed from the public records of Rapides, Grant and Avoyelles Parishes.

The plaintiffs assertion that the present suit is a different cause of action does not make his cause in this suit different from Lee I, Lee II or Lee III. “The proper interpretation of Article 2286 requires a consideration of the broader concept of cause at civil law rather than the common law cause of action.” R.G. Claitor’s Realty v. Juban, supra at p. 397; Mitchell v. Bertolla, 340 So.2d 287 (La. 1976); Sliman v. McBee, 311 So.2d 248 (La.1975). We find that there is no genuine issue of material fact that the plaintiff’s cause or ground on which the demand is founded in this lawsuit is the same as the plaintiff’s cause in Lee I, Lee II, and Lee III.

We also find that there is no genuine issue of material fact that the parties in the instant suit are essentially the same as in Lee I and Lee II; and exactly the same as in Lee III.

For the reasons stated above, we find that the judgments in Lee I, Lee II, and Lee III are res judicata and that the mover is entitled to summary judgment as a matter of law. We need not discuss the prescription issue as res judicata is dispositive of this matter.

We now turn to the matter of sanctions. The defendant, IPC, has counterclaimed for an award of attorney’s fees and damages for what IPC has characterized as Eubank’s initiation of vexatious and harassing litigation with no reasonable expectation of success when viewed from the standpoint of a prudent legal approach and designed merely to cause IPC further effort and expense in presenting a defense. IPC has reurged its request for sanctions in this Motion for Summary Judgment.

The request for sanctions is DENIED; however, this matter, having been litigated several times, should not appear in this court again. Valuable time and money has been wasted and an unnecessary burden has been placed upon this court by the plaintiff’s persistence in relitigating the same dispute. Any future attempt by plaintiff to relitigate these matters will be filed at the risk of whatever sanctions (including but not limited to dismissal, and an award of attorney’s fees and other damages), deemed appropriate by this court.

It is hereby ORDERED that the Motion for Summary Judgment be GRANTED and that the defendant, IPC, shall submit a judgment in accordance with this ruling within ten (10) days of the signed date.

         We find this assertion untrue. In Lee II the plaintiff stated that his action for a declaratory judgment was supported by four underlying causes of action, one of which was an action to quiet title.