author: KISER, District Judge.

text:
    Lee Roy VESS, Jr., Administrator of the Estate of Ronald W. Lewis, Jr., and Joyce E. Lewis, Administratrix of the Estate of Ronald W. Lewis, Jr., Plaintiffs, v. DAVIS ELECTRICAL CONSTRUCTORS, INCORPORATED, Defendant.
    Civ. A. No. 84-1058-R.
    United States District Court, W.D. Virginia, Roanoke Division.
    July 18, 1985.

      Erwin S. Solomon, William A. Parks, Jr., Erwin S. Solomon & Associates, Hot Springs, Va., for Vess.
    William B. Poff, A. Carter Magee, Jr., Woods, Rogers & Hazelgrove, Roanoke, Va., for Davis Elec. Constructors.
   MEMORANDUM OPINION

KISER, District Judge.

This matter is before this Court on Defendant’s Motion for Summary Judgment pursuant to Fed.R.Civ.P. 56. Jurisdiction is proper in this Court pursuant to 28 U.S.C. § 1332(a). The issues have been fully briefed and argued, and this Motion is now ripe for disposition.

This action arises from the accidental electrocution of Ronald W. Lewis, Jr., at the construction site of Virginia Electric Power Company’s (“Vepco”) Bath County, Pump Storage Project (“Project”) in Bath County, Virginia. Plaintiffs’ decedent, Mr. Lewis, was employed as a carpenter with Daniel Construction Company (“Daniel”). Daniel’s role changed somewhat during the course of the project; however, they were generally responsible for supervising and performing much of the construction of the project. Davis Electrical Constructors, Incorporated (“Davis”) contracted to perform all the electrical work necessary for the construction of the project. Although Daniel participated in negotiating the agreement, the evidence before the Court indicated that Daniel acted solely as Vepco’s agent when entering into the contract with Davis.

On March 19, 1984, Mr. Lewis was transporting some building material along a service route when he received a fatal electrical shock from a high voltage cable which was buried along the route. The Complaint alleges that Davis was responsible for the installation of the cable and that they were negligent in the installation and maintenance of the cable. In defending this common law action for negligence, Davis filed this Motion for Summary Judgment on the grounds that the Plaintiffs’ exclusive remedy was under the Virginia Workmen’s Compensation Act, Va.Code § 65.1-1, et seq., 1950, as amended and that this common law action was barred. See Va.Code §§ 65.1-40 and 65.1-41, 1950, as amended. The record before this Court indicates that Mr. Lewis did not have any statutory dependents within Va. Code § 65.-1-66; however, the Code does provide for burial and transportation expenses under Va.Code § 65.1-70. These benefits were provided to his estate. The question then becomes whether the entitlement to these benefits provides the Plaintiffs’ exclusive remedy and thereby precludes the pursuit of this common law action.

The analysis of this question begins with the fundamental proposition that the rights and remedies granted under the Workmen’s Compensation Act for work-related injuries and death exclude all other rights and remedies of that employee or his/her estate. Va.Code § 65.1-40. Notwithstanding this fact, Va.Code §§ 65.1-41 and 65.1-43 have been “uniformly interpreted to allow a common law negligence action for injuries against an ‘other party.’ ” Farish v. Courion, 722 F.2d 74, 78 (4th Cir.1983). Thus, the focus of this inquiry must be whether Davis is an “other party” within the meaning of § 65.1-41.

The Fourth Circuit has noted that identifying who is an “other party” in a given situation has been “mildly complicated by the Virginia statutes and court decisions which link the determination of who is the ‘other party’ with the concept of ‘statutory employer.’ ” Farish, supra, at 78. While the two concepts find their genesis in separate Code provisions, in many instances they are indeed closely intertwined, and thorough consideration must be given to both before the question can be resolved.

The statutory employer concept originates from Va.Code § 65.1-29. The central purpose of the statute is:

To bring within the operation of the Compensation Act all persons engaged in any work that is a part of the trade, business or occupation of the original party who undertakes as owner, or contracts as contractor, to perform that work, and to make liable to every employee engaged in that work every such owner, contractor and subcontractor above the employee.

Bassett Furniture Industries v. McReynolds, 216 Va. 897, 224 S.E.2d 323, 326 (1976).

Basically the Code section was to prevent employers from escaping coverage of the Workmen’s Compensation Act by doing, through independent contractors and subcontractors, what they normally would have done through employees. The Fourth Circuit notes, however, that “the section has the ancillary effect of placing independent contractors subject to its terms under the protective umbrella of the owner’s workmen’s compensation coverage. An independent contractor performing services for a ‘statutory employer’ cannot be an ‘other party’ liable in a common law action.” Farish, supra, at 79. Thus, I believe that before I can determine whether Davis was an “other party” subject to suit, I must ascertain the nature of the trade, occupation and business in which Mr. Lewis was involved as well as every contractor and owner above him.

The test for “statutory employer” status was first set forth by Professor Arthur Larson in the Law of Workmen’s Compensation in Volume 1(c) wherein he stated:

The test is not one of whether the subcontractor’s activity is useful, necessary, or even absolutely indispensable to the statutory employer’s business since after all, this could be said of practically any repair, construction or transportation service. The test (except in cases where the work is obviously a subcontracted fraction of a main contract) is whether this indispensable activity is, in that business, normally carried on through employees rather than independent contractors.

Larson at § 49.12, p. 9-53.

This test has been followed by the Virginia Supreme Court in numerous cases.

See Shell Oil Company v. Leftwich, 212 Va. 715, 187 S.E.2d 162 (1972); Bassett Furniture Industries, Incorporated v. McReynolds, 216 Va. 896, 224 S.E.2d 323 (1976). Another case interpreting this section, which I find particularly helpful, is Walker v. United States Gypsum, 270 F.2d 857 (4th Cir.1959).

In Gypsum, the plaintiff was the employee of a plumbing subcontractor and was injured while making repairs at a Gypsum plant. The plaintiff brought this action against Gypsum who defended on the ground that plaintiffs exclusive remedy was under the Workmen’s Compensation Act and that, in essence, Gypsum was a statutory employer of the plaintiff, Walker. In support of its motion, Gypsum submitted an affidavit of its works manager, Mr. Thompson. The court then directed that Mr. Thompson appear before the court and counsel to offer sworn testimony in order that the plaintiff might have an opportunity to cross-examine him. From this proceeding, the evidence revealed that Gypsum had a Construction and Engineering Division (C & E) and that the number of employees varied at the different plants; however, there were approximately 32 individuals employed at Gypsum’s Norfolk plant in the C & E Department. These individuals were generally identified on the payroll as mechanics. When new construction was envisioned, the C & E Division of Gypsum would work with outside consultants. “The construction work, itself, [was] done by the construction division, though when an entirely new plant [was] being erected, some or all of the work [might be] subcontracted.” Walker v. Gypsum, supra, at 861.

In 1955, the Norfolk plant was being enlarged which required certain work in the old building including relocation of sprinkler system pipes and other pipelines. “For the new addition Gypsum acted as owner-contractor. There was no independent general contractor on the job, but the contract was entered into with several different companies.” Id. During this work, some of Gypsum’s approximately 32 mechanics were involved in removing and relocating the pipelines in the old building to accommodate the new construction. Gypsum could not complete all the work with its staff so they hired an independent plumbing contractor to assist them. The Plaintiff was employed by one of the independent plumbing contractors and was involved in the actual work of removing and relocating the pipes when he was injured. He contended that Gypsum was not in the business of doing plumbing construction for others. Id. at 862. He argued that a manufacturer doing construction work for itself exclusively could not be a statutory employer. The court held that:

Gypsum continuously maintains a construction division, and was actively engaged in the construction of this very project. It was acting as general contractor and, through its own mechanics was removing and relocating pipelines in "the old building, the work in which the plaintiff was engaged when he was injured. There is no room for an inference that Gypsum once was, but is no longer, engaged in that business.

Walker v. Gypsum, supra, at 862.

I believe Gypsum is dispositive of this preliminary question in our case. One of the issues which I must resolve is whether Vepco was the statutory employer of the Plaintiffs’ decedent, Mr. Lewis. On the basis of Gypsum, I find that it was.

On June 4, 1985, this Court conducted an evidentiary hearing similar to the one held in Gypsum for the precise purpose of allowing the Plaintiff an opportunity to cross-examine Vepco officials and more fully develop the evidence relevant to this question. The evidence produced at that proceeding indicated that Vepco, like Gypsum, had a Construction and Engineering Division that was actively involved in the design, construction, and maintenance of electrical generating facilities. In 1984, there were 1,000 employees in Vepco’s C & E Division. Approximately 500 of these were employed at the Bath County Project. While Vepco did not have workers involved in the hands-on construction, the evidence indicated that it could have taken on enough employees to do so; however, it determined that such was not the best course for the company. Vepco had the expertise and had, in fact, built dams and generating facilities for themselves in the past. In all other respects, Vepco was acting at the Project as its own general contractor. Vepco personnel supervised the actual construction with its own employees going down the chain of command as far as foreman. They were directly involved in the construction of both temporary and permanent electrical lines. In addition, they were responsible for the scheduling and coordinating the construction with the different independent contractors. They purchased the materials, executed response plans, made the cost and industrial engineering studies, hired and brought in specialists, and generally coordinated the entire project. In every respect, Vepco was acting as its own general contractor. The fact that Vepco is not in the business of constructing generating facilities for other industries is irrelevant. As the Fourth Circuit noted in Gypsum:

Few manufacturers do plant maintenance or construction work for others, but when one regularly and customarily does such work for himself it is part of his trade, business or occupation within the meaning of [§ 65.1-29] of the Code of Virginia, 1950.

Gypsum at 863.

I conclude that it is in Vepco’s trade, occupation or business to design, supervise, and construct generating facilities for its own use, and that Daniel, Davis, and Lewis were engaged in this work and that at the time of the accident in question were involved in Vepco’s business. Vepco would be considered the statutory employer of all those involved in the construction of the Project.

Vepco’s status as statutory employer would preclude a common law action against it; however, the question becomes what impact does Vepco’s status as statutory employer have on the present litigation against Davis, a subcontractor on the Project. The Fourth Circuit notes, § 65.1— 29 has the ancillary effect of “placing independent contractors subject to its terms under the protective umbrella of the owner’s workmen’s compensation coverage.” Farish at 79. I find that even though Davis and Daniel were independent contractors, their employees were statutory employees of Vepco since both contractors were engaged in the trade, occupation and business of Vepco. Thus, the employees of one cannot be allowed to pursue a common law negligence action against the other. The case of Anderson v. Thorington, 201 Va. 266, 110 S.E.2d 396 (1959), is controlling on this point.

Anderson involved an action for injuries incurred in the construction of the Richmond-Petersburg Turnpike. The General Assembly created the Richmond-Peterburg Turnpike Authority (“RPTA”) to construct, maintain, and operate the Turnpike project. RPTA, in fulfilling its responsibilities, contracted with Thorington Construction to provide the actual construction of the Turnpike and also contracted with an independent engineering firm to provide consultation services with regard to construction. The plaintiff, Anderson, was employed with the independent engineering firm. During the actual construction of the Turnpike, plaintiff was injured by an employee of Thorington Construction. The evidence indicated that both Thorington and the engineers were independent contractors with and under the RPTA. The court held that since both Thorington and the engineers were engaged in the trade, business and occupation of the Authority, neither was a stranger to the employment of the RPTA’s work and that both Thorington’s employees and the engineers’ employees were “statutory employees” of the RPTA. In essence, Thorington and Anderson were statutory fellow servants of the RPTA. This being the case, both were under the canopy of the Workmen’s Compensation Act, and were precluded from suing one another. Anderson, supra, at 400. Thus, Thorington was not an “other party” subject to a common law negligence action by the plaintiff.

This is precisely our case. By virtue of the Fourth Circuit’s ruling in Walker v. Gypsum, I find that Vepco was indeed the statutory employer of the employees of Daniel and Davis. As a result, all were statutory fellow servants and are precluded from suing one another in common law negligence for work-related injuries.

This is consistent with the overall purpose of the Compensation Act which the Fourth Circuit states is:

To bring within the operation of the Compensation Act all persons engaged in any work that is a part of the trade, business or occupation of the original party.

Farish at 79.

In this case, all parties were involved in the construction of the Bath County Project for the generation of electricity. This matter was within the trade, occupation and business of Vepco. As such, Vepco and this particular project should bear the costs of all work-related injuries associated with its construction.

The Plaintiffs cite the case of Kramer v. Kramer, 199 Va. 409, 100 S.E.2d 37 (1957), in support of their argument that both Daniel and Davis were co-independent contractors not engaged in the trade, occupation and business of the owner. Kramer involved a situation where the Arlington Church of Christ had contracted with separate independent contractors to perform certain work on the construction of a new church building. The plaintiff in that action, who was an employee of an independent contractor, was injured by the employee of another independent contractor in the construction. The court basically held that the two were co-independent contractors and that neither was involved in the trade, occupation and business of the owner of the project, the Arlington Church of Christ. The distinction between the Arlington Church of Christ and Vepco would seem clear. Not only had Vepco actually participated in the construction of generating facilities in the past, they did have approximately 500 employees on the job site at the Bath County Project supervising and coordinating the construction of this Project. I believe the cases are clearly distinguishable on this point.

In light of the foregoing, I believe that the Defendants’ Motion for Summary Judgment is well-founded.

      . When any person (in this section and §§ 65.1-32 referred to an 'owner') undertakes to perform or execute any work which is a part of his trade, business or occupation and contracts with any other person (in this section and §§ 65.1-31 to 65.1-34 referred to as ‘subcontractor’) for the execution or performance by or under such subcontractor of the whole or any part of the work undertaken by such owner, the owner shall be liable to pay to any workman employed in the work any compensation under this Act which he would have been liable to pay if the workman had been immediately employed by him.

        Va.Code § 65.1-29, 1950, as amended.


source: Caselaw Access Project

author: EDWARD WEINFELD, District Judge.

license: Public Domain

text:
    GEMVETO JEWELRY COMPANY, INC., Plaintiff, v. JEFF COOPER, INCORPORATED and Jeff Cooper, individually, Defendants.
    No. 81 Civ. 3347 (EW).
    United States District Court, S.D. New York.
    July 19, 1985.

      Jarblum & Solomon, P.C., New York City, for plaintiff; James D. Fornari, New York City, of counsel.
    Colvin Miskin Basseches & Mandelbaum, New York City, for defendants; Howard C. Miskin, Howard F. Mandelbaum, Abraham Friedman, New York City, of counsel.
   OPINION

EDWARD WEINFELD, District Judge.

The plaintiff, Gemveto Jewelry Company, Inc. (“Gemveto”), has a preeminent reputation as a designer and manufacturer of extra high quality jewelry, in terms of craftsmanship, style, and design. Its products are so distinctive that they are recognized in the trade as the “Gemveto look.” Jean Vitau, principal of Gemveto and the inventor of two patents at issue, has been described by his principal customers as a genius in designing, styling, and producing fine quality jewelry.

In 1981, Gemveto commenced this action against Jeff Cooper, Incorporated, another jewelry manufacturer, and Jeff Cooper, its principal (collectively “Cooper”), for selling a wide variety of Gemveto “knockoffs,” less expensive, lower quality copies of many items in Gemveto’s widely marketed product line. Plaintiff charged Cooper with infringement of two patents, the so-called 245 and 818 patents; copyright infringement of three items of jewelry; trademark infringement and unfair competition in violation of section 43 of the Lanham Act; and unfair competition in violation of New York’s statutory and common law.

After a bench trial, the Court, in an opinion dated July 15, 1983, familiarity with which is assumed, dismissed all of plaintiff’s federal claims. As to the patent infringement claims, the Court held that the 245 patent was valid but had not been infringed and that the 818 patent was invalid because of prior art references, as discussed hereafter. As to the copyright claims, the Court held that plaintiff had failed to comply with the notice requirement of the Copyright Act of 1976 or to make a reasonable effort to rectify the omission. Finally, as to the Lanham Act claims, it held that, while there was proof of intentional copying of several items of Gemveto jewelry by Cooper, plaintiff had failed to prove that the copied items had acquired a “secondary meaning” apart from that attributable to their settings— i.e., the method by which the stones are held in position — which were found to be functional and therefore unprotectable.

With respect to the state claims, the Court held that Cooper had engaged in unfair competition in violation of New York common law and that Gemveto was entitled to injunctive relief. The Court found that many items in Cooper’s line of jewelry are “mirror images” or “knockoffs” of Gemveto products and that Cooper intentionally copied plaintiff’s jewelry. Accordingly, judgment was entered permanently enjoining defendants from selling or offering for sale “any piece of jewelry which is confusingly similar in appearance to any piece of Gemveto jewelry, having nonfunctional attributes that are original with Gemveto.”

Soon after the entry of judgment, Cooper moved for modification of the order and judgment “to specifically denominate the attributes which defendants may not use in combination in their jewelry or, in the alternative, to itemize defendants’ styles, received in evidence, which may no longer be offered for sale.” Defendants also moved for reconsideration of the judgment upon the ground that the authorities cited by the Court in upholding plaintiff’s claim of unfair competition do not apply in a case of product design simulation. Plaintiff then cross-moved to punish Cooper for contempt for violating the terms of the injunction. This motion was referred to Magistrate Buchwald to hear and report; following a hearing, the Magistrate recommended that Cooper not be held in contempt. Thereafter, plaintiff further moved, upon the ground of newly discovered evidence, to vacate the judgment insofar as it. held the 818 patent invalid.

Thus, the Court now has before it the Magistrate’s report concerning plaintiff’s contempt motion, together with the parties’ objections and responses thereto; defendants’ motion for modification or reconsideration of the judgment concerning plaintiff’s claim of unfair competition, as well as their motion to stay the judgment pending disposition thereof; and plaintiff’s motion to vacate the judgment that the 818 patent is invalid upon the ground of newly discovered evidence and for a new trial on that issue.

THE CONTEMPT MOTION AND THE MAGISTRATE’S REPORT

Defendants assert that shortly after judgment was entered they and their attorney reviewed their entire product line and were unable to determine which pieces are “confusingly similar in appearance to any piece of Gemveto jewelry, having nonfunctional attributes that are original with Gemveto.” Specifically, they claim they are uncertain whether the jewelry settings — which dominate the overall appearance of the jewelry despite differences in the color arrangements, numbers, and sizes of the stones but which were found to be functional and therefore unprotectable— should be considered in determining whether Cooper’s jewelry is “confusingly similar in appearance” to Gemveto’s. They also assert they are uncertain about which nonfunctional attributes of Gemveto jewelry are “original with Gemveto,” since the Court found that the identifiable and distinctive feature of Gemveto’s jewelry is the settings, which are functional. Finally, defendants say they are uncertain whether they are prohibited from copying Gemveto’s original nonfunctional attributes singly or only as combined by Gemveto.

In sum, defendants claim they cannot be sure they have complied with the terms of the injunction and ask the Court to clarify its order by specifying those attributes of Gemveto jewelry that, in combination, defendants may not employ, or, if the Court declines to do so, by specifying those pieces of defendants’ jewelry that may no longer be offered for sale and as to which defendants must deliver up for destruction the molds, models, waxes, catalogues, and advertisements. In the meantime, defendants have eliminated four items from their product line that they believe are very similar in appearance to Gemveto jewelry and have ceased distributing the catalogue in which those items appear. However, they have not delivered up the molds for those items and have continued to sell the remainder of their product line and to distribute a brochure containing samples from their line.

Magistrate Buchwald essentially found that defendants’ uncertainty is justified for at least one of the reasons they assert. She recommends that Cooper not be held in contempt because the injunction is not sufficiently clear and specific as required by Fed.R.Civ.P. 65(d) and because Cooper promptly moved for clarification and modification of the decree. The Court accepts the Magistrate’s finding that the injunction requires clarification. The Court also accepts the statement of defense counsel that he made a good faith effort to advise his clients as to the scope of the injunction. By promptly reviewing their product line with counsel, eliminating four items therefrom, and moving for clarification of the decree, all within ten days after entry of the Court’s order, defendants were reasonably diligent and energetic in attempting to comply with the decree. Under the circumstances, an order of contempt is not justified. Accordingly, plaintiff’s contempt motion is denied.

THE MOTION TO VACATE AS TO THE 818 PATENT

Both the 245 and 818 patents concern methods developed by Gemveto for setting precious stones in jewelry. Although the 818 contains improvements over the 245, there are substantial similarities between the two patents and the Court found that the 818 teachings are obvious in light of the 245. By itself, however, this finding did not invalidate the 818 because plaintiff filed a terminal disclaimer, which rendered the then-pending 245 application not prior art as to the 818. The Court also found that plaintiff introduced the public to the 245 teachings by placing on sale in the market two items employing these teachings, a ruby ring and a sapphire ring, more than one year prior to the filing date of the 818 application — in fact, some thirteen to fourteen months previously. The Court held that despite the terminal disclaimer, these rings, on sale more than one year prior to the filing of the 818 application, were prior art references as against the 818. Because the 818 teachings were obvious in light of this prior art, the 818 patent was declared invalid under 35 U.S.C. § 103.

The finding that the ruby and sapphire rings employed the 245 teachings was the underpinning of the holding that the 818 was invalid. Gemveto now claims that this finding is erroneous in view of newly discovered evidence and moves pursuant to Fed.R.Civ.P. 60(b)(2) to vacate the judgment as to the 818 and for a new trial of its claim of infringement of the 818 patent. It claims it recently located the model used to make the ruby ring and that the model lacks several features included in the 245 teachings as set forth in the 245 patent application. It further claims that the sapphire ring, though shaped differently from the ruby ring, employs the same construction — that of the ruby ring model. Thus, it contends, the newfound model is concrete proof that neither ring employed the teachings of the 245 patent, so that the sale of these rings more than one year before the 818 application was filed did not render them prior art references as to the 818 and did not invalidate the 818 patent under section 103.

At the trial, Jean Vitau, Gemveto’s president and founder, testified that both rings employed the teachings of the 245 patent. He now asserts he was mistaken in his testimony because he had to rely upon his recollection of the rings, which he had designed four years earlier, and did not have the benefit of reviewing the ruby ring model at or prior to the trial. Vitau states that despite a diligent search of Gemveto’s premises during and after the trial, he was unable to locate the model until some nine months after judgment was entered, when “by pure accident” he found it and other models “secreted” in a “back area” once used by a former employee who, Vitau believes, had removed the models from Gemveto’s depository without Gemveto’s knowledge. In essence, plaintiff contends it was deprived of valuable patent rights in Vitau’s inventions because of Vitau’s faulty memory and the conduct of a disgruntled former employee. It urges the Court to reopen the record so that hard evidence in support of the validity of the 818 patent can be considered at a new trial.

Fed.R.Civ.P. 60(b)(2) provides that “[o]n motion and upon such terms as are just, the court may relieve a party ... from a final judgment ... for the following reasons: ... (2) newly discovered evidence which by due diligence could not have been discovered in time to move for a new trial under Rule 59(b).” In order to reopen the trial upon the ground of newly discovered evidence, the Court must be satisfied that the ruby ring model (1) is in fact newly discovered, i.e., discovered since the trial; (2) could not with due diligence have been discovered earlier; (3) is not merely cumulative or impeaching; (4) is material to the issues; and (5) is such that upon a retrial it would probably produce a different result. A motion under Rule 60(b) is addressed to the discretion of the Court.

Although the existence of the ruby ring model was known to plaintiff prior to trial, and despite efforts to locate it for use upon the trial, the whereabouts of the model was not discovered until well after the trial had ended and judgment had been entered. Thus, Cooper opposes the motion on two main grounds, first, that plaintiff has failed to show the evidence could not with due diligence have been located earlier and, second, that the evidence is offered solely to impeach Vitau’s trial testimony and would not change the outcome of the trial.

As to the due diligence requirement, Vi-tau asserts that, in response to Cooper’s subpoena for various models “[o]n the eve of trial,” he located several but could not find the ruby ring model; that during the entire trial he continued to search for the model, reviewing several thousand models during those weeks; that, after reviewing the Court’s decision invalidating the 818 patent and before the end of the ten day period in which a motion for a new trial pursuant to Rule 59 must be filed, he and his staff conducted a full-scale and intensive search of Gemveto’s vaults, storage rooms, and every other location within Gemveto’s facility where the model might have been stored, searching through dozens of bins containing thousands of ring models; and that after the ten day period ended he personally conducted a systematic review and search of almost every part of Gemveto’s manufacturing facilities whether or not it was a storage facility. None of these efforts was successful. Cooper questions the sufficiency of these allegations but offers no reason to doubt the sincerity or intensity of the effort made by Vitau and his staff in attempting to locate the model, and none is apparent on the papers before the Court. Although Vitau offers little factual support for his conclusion that the model was “secreted” in a “back area” by a former employee without Gemveto’s knowledge, other than the allegation that this “back area” was used by the employee, the fact remains that, according to Vitau, the model was not found in any area where plaintiff’s personnel would have expected to find it. Since Vitau and his staff clearly had a strong incentive to locate the model within the ten day period after judgment was entered, there is no reason to doubt Vitau’s statement that the model had been misplaced, and whether this was due to the deliberate act of a disgruntled employee or merely to inadvertence is beside the point. The Court accepts Vitau’s statement that immediately after the entry of judgment, as well as during the trial, plaintiff made a sustained and intensive but unsuccessful effort to locate the model, and it concludes that the model is evidence “which by due diligence could not have been discovered in time to move for a new trial under Rule 59(b).”

According to Vitau, the newfound model establishes that he was mistaken in his trial testimony that both the ruby and sapphire rings were based upon the 245 patent — an error that he attributes to faulty memory. Contrary to Cooper’s contention, however, the model is not offered merely to impeach Vitau, in the sense of lessening his credibility so as to weaken the force of his prior testimony; rather, it is offered as affirmative and concrete proof of a contrary assertion bearing directly upon a pivotal issue in the ease. Although the proffered evidence conflicts with testimony given by the movant’s own witness, it is highly relevant and material to a central issue at the trial and cannot be characterized as merely cumulative or impeaching. The proof, had it been offered upon the trial, may well have averted the finding of invalidity of the 818 patent based upon prior publication.

Upon a new trial of the 818 patent infringement claim, the trier of fact would be confronted with a direct conflict between Vitau’s prior testimony and his proffered testimony based upon the newfound ruby ring model, which surely would subject him to close cross-examination. Nevertheless, new testimony based upon physical evidence, if accepted by the fact finder, could prove more persuasive than prior testimony by the same witness based solely upon his memory, even though the prior testimony is against the witness’ interest and the new testimony is not. Such could be the case here, at least with respect to the ruby ring. As to the sapphire ring, the credibility issue would be much sharper, for the model for that ring was in evidence and was reviewed by Vitau when he testified that that ring was based upon the 245 patent. He did not have to rely upon his memory of the model for that ring. Vitau now claims the construction of the sapphire ring was identical to that of the ruby ring, which was not based upon the 245, despite marked differences in the shapes of the two rings. Nevertheless, the trier of fact could find that Vitau, after examining the ruby ring model, which was unavailable at trial, and refreshing his recollection about the constructions of the two rings, was honestly mistaken in his testimony about the sapphire ring model and justifiably changed his description of the construction of that ring as well as the ruby ring. A witness may be inconsistent or contradictory as to material matters in his own testimony and yet be found entirely credible in the essentials of his testimony. The ultimate question to be decided is whether the witness, despite the contradiction, is credible as to essential matters. This question must be answered by the trier of fact upon a new trial.

Whether or not the proffered evidence would produce a different result upon a new trial of the 818 patent claim is a close question. Nevertheless, after a painstaking review of the extensive trial record, the affidavits and briefs submitted on the motion, and upon lengthy and deep reflection, I have concluded that the requested relief should be granted in the interest of justice. In its prior opinion, the Court, while compelled by reason of the factual development to invalidate the 818 patent as well as plaintiffs other claims, observed that “defendants have appropriated much of what it has taken Vitau years to develop” and their “conduct is to be condemned” but noted that, as to the 818, the issue was “not whether it would be fair to uphold the validity of the patent as against the defendant, but whether it would be fair to do so as against all others.” Mindful that the orderly administration of justice requires that findings of the trier of fact, whether court or jury, should not be disturbed on a motion of this type except in the most extraordinary circumstances, the Court concludes that such circumstances are present in this case. Accordingly, the Court, in the interest of justice, grants plaintiffs motion for a new trial with respect to the 818 patent claim.

THE MOTION FOR MODIFICATION OR RECONSIDERATION

Defendants move to reconsider that part of the judgment holding them liable for violating New York’s law against unfair competition. The Court found that in several instances Cooper had copied not only Gemveto’s settings but its designs — the number, color, size, shape, and alignment of the stones and the jewelry configurations. The Court held that

[ujnder the common law of New York, deliberate use of a competitor’s nonfunctional marks or tradedress is actionable. There need be no showing of secondary meaning as with the Lanham Act. Rather, the issue is “whether or not the public is likely to be confused.”

Cooper argues that the Court erroneously relied upon authorities that “are not applicable to the jewelry pieces, the sale of which was enjoined.” In essence, Cooper claims that the authorities cited by the Court involve copying of tradedress or trademarks while Cooper copied Gemveto’s designs — “the aesthetic appearance of the jewelry pieces themselves, and not their packaging or containers” — and that this kind of copying, namely, product simulation, is not actionable under New York law without a showing of secondary meaning. Cooper also claims that the copied designs are aesthetically functional — and therefore unprotectable — in that they contribute to consumer appeal because they are aesthetically pleasing and not because they indicate Gemveto as the source of the jewelry. Finally, Cooper argues that the Copyright Act of 1976, 17 U.S.C. § 301, as well as the Supreme Court’s Sears-Compco doctrine addressing the interplay between federal patent and copyright law and state laws against unfair competition, preempts state law protection for Gemveto’s jewelry designs.

Plaintiff responds that New York law against unfair competition prohibits product simulation as well as tradedress infringement without a showing of secondary meaning, if the copying is deliberate, as the Court found it to be here. Plaintiff further asserts that the settings were found to be the only functional attributes and that the designs are nonfunctional even if they contribute to consumer appeal. As to preemption, plaintiff replies that the Sears-Comp-co doctrine, as developed by the lower courts, has not caused the demise of state law prohibiting unprivileged imitation and that New York’s law against unfair competition, which requires a showing of misappropriation of another’s economic value and a likelihood of consumer confusion as to the source of the goods, does not protect a right equivalent to any granted by the Copyright Act and thus is not preempted by section 301.

The first issue presented by defendants’ motion to reconsider is whether the Gemveto jewelry designs they copied are functional attributes of plaintiff's products. Under New York common law, the functional attributes of a competitor’s product may be freely copied; the copier need only take reasonable steps in packaging, advertising, and promoting the copy to set it apart from the original in the public mind. Our Court of Appeals has defined a functional feature in two different ways, as “one that ‘is essential to the use or purpose of the article or [that] affects the cost or quality of the article’ ” and as one that is “ ‘an important ingredient in the commercial success of the product.’ ” Recently, the Court observed that “an obvious tension” exists between the two definitions and found the “important ingredient” formulation to be problematic, though it noted that the formulation might be appropriate in cases involving a particular type of product, such as hotel china, “the essential feature of which [is] the aesthetic appeal of its design.” The Court explained that the determination of the functionality issue involves a factual inquiry, which, in a case involving alleged copying of designs of lightweight luggage and bags, it described as follows:

Are consumers likely to purchase a Le Sportsac bag rather than that of a competitor principally because they find LeSportsac’s particular combination of design features aesthetically pleasing, or will they buy principally because the product features serve to identify or distinguish the goods as genuine Le Sport-sac products? If the latter, the LeSportsac “look” primarily serves a legitimate trademark purpose — identifying the source of the product — and should be eligible for protection even though it is also an “important ingredient” in the product’s commercial success.

Thus, in the instant case, the central inquiry is whether consumers are likely to purchase Gemveto jewelry rather than that of a competitor principally because they find the overall designs aesthetically pleasing, in which case the designs are functional and unprotectable, or principally because the designs serve to identify or distinguish the jewelry as genuine Gemveto products, identifiable as the “Gemveto look,” in which case they are nonfunctional and protectable.

At trial, by far the majority of witnesses wholly equated the Gemveto look with the settings, and the Court so found. This does not mean, however, that the designs were proven to be commercially appealing principally for aesthetic reasons rather than as an indication of source. Indeed, several trial witnesses, though not the majority, explained the identifying characteristic of Gemveto jewelry to be the combination of the setting and the “overall look.” On the whole, however, the record simply does not establish the principal reason why Gemveto’s customers are attracted to the jewelry designs. Therefore, the determination of the functionality issue depends on which side has the burden of proof. Functionality is an affirmative defense to be proved by defendants. Since the evidence at trial was inconclusive as to whether the jewelry designs, aside from the settings, are functional or nonfunctional, Cooper failed to discharge its burden and the designs must be treated as functional attributes protectable under the common law of unfair competition. Accordingly, Gemveto’s claim of unfair competition is not foreclosed by Cooper’s asserted functionality defense.

The next issue presented by Cooper’s motion to reconsider is whether Gemveto’s designs, though treated as nonfunctional, are protectable without a showing of secondary meaning. As a general rule, copying of nonfunctional attributes is actionable only upon a showing that the attributes have acquired secondary meaning and that the copying is likely to confuse potential purchasers as to the source of the product. However, there are exceptions to the rule. Secondary meaning need not be shown, for instance, if the defendant has engaged in so-called predatory practices such as palming off, actual deception of purchasers, or appropriation of property rights.

In the instant case, the Court expressly found that “there was no proof that any Gemveto item had acquired a secondary meaning — aside from that attributed to the settings,” which are functional and unprotectable. Consequently, common law protection of Gemveto’s designs depends on whether this case falls within one of the exceptions to the rule. Here, there is clear and convincing evidence that Cooper engaged in a predatory practice of palming off its products as Gemveto’s. This Court found that “[sjome of defendants’ pieces, aside from their lower quality, are mirror images of Gemveto’s” and that “this results from more than simply the use of the Vitau setting method” — that it results from “the exact duplication of plaintiffs jewelry, from the number of stones, the stones’ color, their alignment, size and shape.” Though Gemveto’s designs have not achieved a secondary meaning, Cooper “was not entitled to duplicate plaintiff’s product to the point that there would be no obvious distinction between the two to the running eye.”

Moreover, there is substantial, evidence that Cooper employed deceptive marketing techniques and that customers were actually confused as to the source of Cooper’s jewelry. For example, defendants published an advertisement in a trade show directory featuring a line drawing of a Gemveto necklace, which drawing had been prepared for Gemveto but never used by it, thereby representing Gemveto’s jewelry as their own. There was also testimony by a Gemveto salesman that he entered two retail stores, asked to see Gem-Lok jewelry, and was shown pieces distributed by Cooper. Finally, Gemveto’s employee in charge of sales and public relations testified that Gemveto frequently received pieces of Cooper jewelry mistakenly sent to Gemveto for repair, which clearly indicates actual customer confusion as to the source of Cooper’s products. In light of this evidence, and of defendants’ use of the initials “JC” to identify their jewelry, despite the similarity to plaintiff’s trademark “JV,” defendants’ manufacture and distribution of Gemveto “knockoffs” can only be regarded as a deliberate attempt to deceive customers as to the source of their products, not as a legitimate attempt to compete with Gemveto. Insofar as Cooper has distributed Gemveto “knockoffs,” it has engaged in a predatory practice in violation of New York law, whether or not the copied jewelry has acquired a secondary meaning.

Cooper contends that even if Gemveto proved its claim of unfair competition under New York common law, Cooper may not be enjoined because that claim is expressly preempted by the Copyright Act of 1976, 17 U.S.C. § 301, as well as by the Sears-Compco doctrine. Section 301 provides:

(a) On and after January 1, 1978, all legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106 in works of authorship that are fixed in a tangible medium of expression and come within the subject matter of copyright as specified by sections 102 and 103, whether created before or after that date and whether published or unpublished, are governed exclusively by this title. Thereafter, no person is entitled to any such right or equivalent right in any such work under the common law or statutes of any State.
(b) Nothing in this title annuls or limits any rights or remedies under the common law or statutes of any State with respect to—
(3) activities violating legal or equitable rights that are not equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106.

For section 301 to apply, two requirements must be met. First, the work of authorship in which the rights are claimed — here, Gemveto’s jewelry designs — must fall within the subject matter of copyright as defined in section 102 of the Copyright Act. Jewelry designs are copyrightable matter and the first requirement is satisfied. Second, New York’s law against unfair competition as here construed must “create ‘legal or equitable rights that are equivalent to any of the exclusive rights within the general scope of copyright as specified by section 106,’ ” such as the right “ ‘to reproduce the copyrighted work in copies.’ ” Cooper contends that this requirement — which, of the two, presents the more substantial issue in this case — also has been met, that Gemveto’s claim of unfair competition is essentially an attempt to establish an exclusive right to reproduce its jewelry designs in copies. Having failed to secure this right under federal copyright law, Cooper argues, Gemveto cannot now do so under the guise of a state law claim.

Were Gemveto’s claim predicated solely upon Cooper's having copied plaintiff’s jewelry designs, the claim perhaps would be preempted by federal law. However, it is not merely product simulation but predatory practices that are the basis of the injunctive relief granted herein. As our Court of Appeals has emphasized, the essential distinction with respect to New York’s law against passing off is the difference between a deliberate attempt to compete and a deliberate attempt to deceive. In this instance, there was proof not only that Cooper copied Gemveto’s products but _ of a deliberate attempt by Cooper to deceive the consuming public as to the source of its “knockoffs” and thereby to appropriate the goodwill or reputation of Gemveto, a rival seller. Thus, it is Gemveto’s right to control and preserve its reputation as a seller of extra high quality jewelry, as well as the public’s right not to be misled about the source of the jewelry it may purchase from Cooper, that is protected in this instance. These protected rights are not equivalent to any of the exclusive rights granted under federal copyright law.

Cooper’s preemption argument fares no better under the Sears-Compco doctrine. In holding that federal patent law preempted a state claim of unfair competition based on product simulation, the Supreme Court emphasized that a state may continue “to impose liability upon those who, knowing that the public is relying upon an original manufacturer’s reputation for quality and integrity, deceive the public by palming off their copies as the original.” Here — and in contrast to the Sears and Compco cases — the evidence is abundant that Cooper’s conduct as a whole constitutes a fraud and a deception upon the consuming public. Accordingly, Cooper is enjoined from selling or offering for sale any item of jewelry that is confusingly similar in appearance to any item of Gem-veto jewelry such that the sale or offer for sale of such item, by any method or means, is calculated to deceive the public as to its source.

Submit order in accordance with the foregoing disposition within five days upon two days notice of settlement.

      . United States Patent Nos. 4,222,245 and 4,292,-818.

      . 15 U.S.C. § 1125(a).

      . Gemveto Jewelry Co. v. Jeff Cooper Inc., 568 F.Supp. 319 (S.D.N.Y.1983).

      . 17 U.S.C. § 401(a).

      . Gemveto Jewelry, 568 F.Supp. at 334-35.

      . A defendant may not be held in contempt for failing to comply with a court order if the order is not definite and specific, see International Longshoreman’s Ass’n, Local 1291 v. Philadelphia Marine Trade Ass’n, 389 U.S. 64, 76, 88 S.Ct. 201, 208, 19 L.Ed.2d 236 (1967); United States v. Charmer Indus., Inc., 722 F.2d 1073, 1079 (2d Cir.1983); UFI Razor Blades, Inc. v. District 65, Wholesale, Retail, Office & Processing Union, 610 F.2d 1018, 1024 (2d Cir.1979), or if the defendant has been reasonably diligent and energetic in attempting to accomplish what was ordered, see Perfect Fit Indus., Inc. v. Acme Quilting Co., 646 F.2d 800, 808-09 (2d Cir.1981); Powell v. Ward, 643 F.2d 924, 931-33 (2d Cir.), cert. denied, 454 U.S. 832, 102 S.Ct. 131, 70 L.Ed.2d 111 (1981); Aspira of New York, Inc. v. Board of Educ., 423 F.Supp. 647, 654 (S.D.N.Y.1976).

      . Gemveto Jewelry, 568 F.Supp. at 325-28; see 35 U.S.C. § 102(b).

      . United States v. On Lee, 201 F.2d 722, 723 n. 3 (2d Cir.), cert. denied, 345 U.S. 936, 73 S.Ct. 798, 97 L.Ed. 1364 (1953); Champion Spark Plug Co. v. Gyromat Corp., 88 F.R.D. 526, 527 (D.Conn.1980), aff'd on opinion below, 636 F.2d 907 (2d Cir.1981) (per curiam); United States v. Fassoulis, 203 F.Supp. 114, 117 (S.D.N.Y.1962); see Westerly Elecs. Corp. v. Walter Kidde & Co., 367 F.2d 269, 270 (2d Cir.1966) (per curiam); Ope Shipping, Ltd. v. Underwriters at Lloyds, 100 F.R.D. 428, 432 (S.D.N.Y.1983).

      . See United States v. Potamkin Cadillac Corp., 697 F.2d 491, 493 (2d Cir.), cert. denied, 462 U.S. 1144, 103 S.Ct. 3128, 77 L.Ed.2d 1379 (1983); Audiovisual Publishers, Inc. v. Cenco, Inc., 580 F.2d 50, 52 (2d Cir.1978); International Controls Corp. v. Vesco, 556 F.2d 665, 670 (2d Cir.1977), cert. denied, 434 U.S. 1014, 98 S.Ct. 730, 54 L.Ed.2d 758 (1978); see also United States v. Johnson, 327 U.S. 106, 66 S.Ct. 464, 90 L.Ed. 562 (1946).

      . See record at 238-39 (testimony of Jean Vi-tau).

      . Compare On Lee, 201 F.2d 722.

      . Record at 348-54 (testimony of Jean Vitau).

      . See United States v. Tropiano, 418 F.2d 1069, 1074-75 (2d Cir.1969), cert. denied, 391 U.S. 1021, 90 S.Ct. 1262, 25 L.Ed.2d 530 (1970).

      . Gemveto Jewelry, 568 F.Supp. at 328, 334.

      . See Fassoulis, 203 F.Supp. at 117; see also Johnson, 327 U.S. at 111, 66 S.Ct. at 466.

      . Gemveto Jewelry, 568 F.Supp. at 335 (quoting Perfect Fit Indus., Inc. v. Acme Quilting Co., 618 F.2d 950, 953 (2d Cir.1980)) (footnotes omitted).

      . Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 84 S.Ct. 784, 11 L.Ed.2d 661 (1964); Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234, 84 S.Ct. 779, 11 L.Ed.2d 669 (1964).

      . See American-Marietta Co. v. Krigsman, 275 F.2d 287, 289 (2d Cir.1960); Speedry Prods., Inc. v. Dri Mark Prods., Inc., 271 F.2d 646, 648 (2d Cir.1959); Damn I’m Good Inc. v. Sakowitz, Inc., 514 F.Supp. 1357, 1360 (S.D.N.Y.1981); Le Sportsac, Inc. v. Dockside Research, Inc., 478 F.Supp. 602, 606 (S.D.N.Y.1979); PPS, Inc. v. Jewelry Sales Reps., Inc., 392 F.Supp. 375, 384 (S.D.N.Y.1975); Zippo Mfg. Co. v. Rogers Imports, Inc., 216 F.Supp. 670, 679 (S.D.N.Y.1963); cf. Ives Laboratories, Inc. v. Darby Drug Co., 601 F.2d 631, 642-43 (2d Cir.1979) (quoting Pagliero v. Wallace China Co., 198 F.2d 339, 343 (9th Cir.1952)) (Lanham Act).

      . See Feathercombs, Inc. v. Solo Prods. Corp., 306 F.2d 251, 257 (2d Cir.), cert. denied, 371 U.S. 910, 83 S.Ct. 253, 9 L.Ed.2d 170 (1962); J.C. Penney Co. v. H.D. Lee Mercantile Co., 120 F.2d 949, 955-56 (8th Cir.1941); Zippo Mfg. Co., 216 F.Supp. at 679.

      . See Warner Bros. Inc. v. Gay Toys, Inc., 724 F.2d 327, 331 (2d Cir.1983) (quoting Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 2187 n. 10, 72 L.Ed.2d 606 (1982)); see also Le Sportsac, Inc. v. K Mart Corp., 754 F.2d 71, 77 (2d Cir.1985).

      . I.A. Fratelli Saporiti v. Charles Craig, Ltd., 725 F.2d 18, 19 (2d Cir.1984) (quoting Ives Laboratories, 601 F.2d at 643).

      . See LeSportsac, 754 F.2d at 77-78.

      . Id. at 78 (citation omitted).

      . Gemveto Jewelry, 568 F.Supp. at 332.

      . Id.

      . See LeSportsac, 754 F.2d at 75-76. Although the LeSportsac holding was based upon section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), there is no reason to apply a different rule in the instant case. Whether the functionality issue arises under federal or state law has not been a factor in its disposition in other respects. See, e.g., Kellog Co. v. National Biscuit Co., 305 U.S. 111, 122, 59 S.Ct. 109, 115, 83 L.Ed. 73 (1938) (state law claim of unfair competition), cited in Gay Toys, 724 F.2d at 331 (Lanham Act claim); J.C. Penney, 120 F.2d at 954 (state law claim), quoted in Truck Equip. Serv. Co. v. Fruehauf Corp., 536 F.2d 1210, 1217-18 (8th Cir.), cert. denied, 429 U.S. 861, 97 S.Ct. 164, 50 L.Ed.2d 139 (1976); Damn I'm Good, 514 F.Supp. at 1360 (federal and state claims treated alike); Dockside Research, 478 F.Supp. at 606-07 (state law claim, citing decisions under Lanham Act).

      . See Hygienic Specialties Co. v. H.G. Salzman, Inc., 302 F.2d 614, 619 (2d Cir.1962); Norwich Pharmacal Co. v. Sterling Drug Inc., 271 F.2d 569, 571 (2d Cir.1959), cert. denied, 362 U.S. 919, 80 S.Ct. 671, 4 L.Ed.2d 739 (1960); Speedry Prods., 271 F.2d at 649; Mastercrafters Clock & Radio Co. v. Vacheron & Constantin-Le Coultre Watches, Inc., 221 F.2d 464, 466 (2d Cir.), cert. denied, 350 U.S. 832, 76 S.Ct. 67, 100 L.Ed. 743 (1955); Chas. D. Briddell, Inc. v. Alglobe Trading Corp., 194 F.2d 416, 418 (2d Cir.1952); Crescent Tool Co. v. Kilborn & Bishop Co., 247 F. 299, 300 (2d Cir.1917); Sublime Prods., Inc. v. Gerber Prods., Inc., 579 F.Supp. 248, 251 n. 4 (S.D.N.Y.1984); Zippo Mfg. Co., 216 F.Supp. at 679-80.

      . Hygienic Specialties, 302 F.2d at 620; Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 698 (2d Cir.1961); Norwich Pharmacal, 271 F.2d at 571; see Upjohn Co. v. Schwartz, 246 F.2d 254 (2d Cir.1957); Flint v. Oleet Jewelry Mfg. Co., 133 F.Supp. 459 (S.D.N.Y.1955); Santa's Workshop, Inc. v. Sterling, 2 A.D.2d 262, 153 N.Y.S.2d 839 (3d Dep't 1956) (upholding injunction), aff’d, 3 N.Y.2d 757, 143 N.E.2d 529, 163 N.Y.S.2d 986 (1957) (mem.); Santa’s Workshop, Inc. v. Sterling, 282 A.D. 328, 122 N.Y.S.2d 488 (3d Dep't 1953) (per curiam) (affirming denial of motion to dismiss); Avon Periodicals, Inc. v. Ziff-Davis Pub. Co., 282 A.D. 200, 122 N.Y.S.2d 92 (1st Dep’t 1953); Oneida, Ltd. v. National Silver Co., 25 N.Y.S.2d 271 (Sup.Ct.1940). But cf. Speedry Prods., 271 F.2d at 648-50 (secondary meaning is required except in cases involving misappropriation of commercial goodwill, in which recovery does not depend upon confusion or deceit of public); American Optical Corp. v. North American Optical Corp., 489 F.Supp. 443, 448 (N.D.N.Y.1979) (same, citing Speedry Prods.).

      . Gemveto Jewelry, 568 F.Supp. at 334; see also id. at 332-33.

      . Id. at 334-35.

      . Avon Periodicals, 282 A.D. at 201, 122 N.Y.S.2d at 93.

      . Record at 488-90 (testimony of Irene Vitau); see Gemveto Jewelry, 568 F.Supp. at 335.

      . Record at 547-50 (testimony of Ivan Bass).

      . Id. at 483-84 (testimony of Irene Vitau).

      . See id. at 484 (testimony of Irene Vitau).

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

      . See Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 (2d Cir.1980); Boucher v. DuBoyes, Inc., 253 F.2d 948, 949 (2d Cir.) (per curiam), cert. denied, 357 U.S. 936, 78 S.Ct. 1384, 2 L.Ed.2d 1550 (1958); 17 U.S.C. §§ 101, 102(a)(5). Whether or not particular pieces of Gemveto jewelry are sufficiently original to qualify for copyright protection or have fallen into the public domain (as is the case with some pieces, see Gemveto Jewelry, 568 F.Supp. at 330-31) is of no consequence to the preemption issue. See Harper & Rowe, Publishers, Inc. v. Nation Enters., Inc., 501 F.Supp. 848, 851 (S.D.N.Y.1980) (quoting H.R.Rep. No. 1476, 94th Cong. 2d Sess. 131 (1976), reprinted in 1976 U.S.Code Cong. & Ad.News 5747), aff’d, 723 F.2d 195 (2d Cir.1983), rev’d on other grounds, --- U.S. ---, 105 S.Ct 2218, 85 L.Ed.2d 588 (1985).

      . Nation Enters., 723 F.2d at 200 (quoting 17 U.S.C. §§ 106, 301).

      . Compare Editorial Photocolor Archives, Inc. v. Granger Collection, 61 N.Y.2d 517, 463 N.E.2d 365, 474 N.Y.S.2d 964 (1984).

      . Norwich Pharmacal, 271 F.2d at 571-72.

      . Compco, 376 U.S. at 238, 84 S.Ct. at 782.


author: SPRIZZO, District Judge:

text:
    Herminio SANCHEZ, Petitioner, v. Charles SCULLY and Robert Abrams, Respondents.
    No. 83 Civ. 5334 (JES).
    United States District Court, S.D. New York.
    July 19, 1985.

      Herminio Sanchez, pro se.
    Robert Abrams, Atty. Gen., State of N.Y., New York City, for respondents; Melvyn R. Leventhal, Deputy First Asst. Atty. Gen., Gerald J. Ryan, Barbara L. Linzer, Tyrone Mark Powell, Asst. Attys. Gen., New York City, of counsel.
   OPINION AND ORDER

SPRIZZO, District Judge:

Petitioner Herminio Sanchez brought this petition for a writ of habeas corpus pursuant to 28 U.S.C. § 2254, claiming that he was denied his Sixth Amendment right of effective assistance of counsel at his state court trial, and that the state court imposed upon him a sentence which violated the United States Constitution. Sanchez previously filed a petition for habeas corpus relief on these same grounds in the United States District Court for the Northern District of New York. Judge James T. Foley denied the petition on the merits. See Memorandum Decision and Order, Sanchez v. Jones, 80 CV 490 (N.D.N.Y. Nov. 3, 1980).

The Court referred the instant petition to United States Magistrate Naomi Reice Buchwald for review and recommendation pursuant to 28 U.S.C. § 636(b)(1). Magistrate Buchwald recommended that petitioner’s first claim be denied on the merits, and that the second claim, relating to his sentence, be dismissed as a successive petition pursuant to Rule 9(b) of the Rules Governing Section 2254 Cases in the United States District Court. Petitioner filed objections only with respect to the recommendation regarding the ineffective assistance of counsel claim. Therefore, the Court adopts the Magistrate's recommendation with respect to the second claim regarding petitioner’s sentence and dismisses it as a successive petition.

The remainder of this Opinion and Order constitutes the Court’s de novo determinations pursuant to 28 U.S.C. § 636(b)(1) with respect to the ineffective assistance of counsel claim. The facts of the case are set forth in the Magistrate’s Report and Recommendation, and will be discussed herein only as necessary to resolve petitioner’s objections. The Court notes that the petition itself simply claims that, although counsel knew “far in advance” that petitioner’s defense would be based upon an alibi, counsel failed to adequately prepare that defense. Petitioner’s objections to the Magistrate’s Report and Recommendation are more specific. The Court will consider each objection in turn.

As a preliminary matter, while Sanchez did allege ineffective assistance of counsel in his petition before Judge Foley, subsequent to that court’s denial of the petition, and while the instant petition was already pending, the Second Circuit articulated a new legal standard applicable to ineffective assistance claims. The court replaced the old rule wherein the issue was whether counsel’s representation constituted a “farce and mockery of justice,” with the standard which all other circuits now apply, and which looks to whether counsel rendered “reasonably competent assistance”— whether counsel’s representation was within the range of competence reasonably expected of attorneys in criminal cases. See Trapnell v. United States, 725 F.2d 149, 153 (2d Cir.1983).

The Supreme Court subsequently approved the reasonable competence standard and held that to succeed on an ineffective assistance claim, petitioner must show that his counsel’s representation was not reasonably competent under prevailing professional norms, see Strickland v. Washington, 466 U.S. 668, 104 S.Ct. 2052, 2064-65, 80 L.Ed.2d 674 (1984), under all of the circumstances, see id. 466 U.S. at ---, 104 S.Ct. at 2066, and that he was thereby prejudiced in that there is a reasonable probability that, but for counsel’s unprofessional errors, the result of the trial would have been different. Id. 104 S.Ct. at 2067-68. The Court defined a reasonable probability as “a probability sufficient to undermine confidence in the outcome.” Id. at 2068.

Since the Court has concluded that the petition must be denied on the merits even assuming that the new standard is applicable, there is no need for the Court to decide whether it may properly apply that standard retroactively in a case where a previous petition raising the same claim was denied and where the standard applicable to the claim raised has changed since the filing of both the first and the second petitions. See Respondents’ Supplementary Memorandum of Law at 2-4. However, the Court notes that the Second Circuit has applied the rule of Trapnell and Strickland in cases on appeal where the “farce and mockery” standard had been applicable when the case was before the district court. See, e.g., Tsirizotakis v. Lefevre, 736 F.2d 57, 61-63 (2d Cir.), cert. denied, — U.S. ---, 105 S.Ct. 216, 83 L.Ed.2d 146 (1984); Wise v. Smith, 735 F.2d 735, 737 (2d Cir.1984).

As the Supreme Court noted in Strickland, “the benchmark for judging any claim of ineffectiveness must be whether counsel’s conduct so undermined the proper functioning of the adversarial process that the trial cannot be relied upon as having produced a just result.” See 104 S.Ct. at 2064. The starting point of this inquiry is a consideration of the strength of the prosecution’s case against petitioner. See, e.g., Wise, supra, 735 F.2d at 739; United States v. Helgesen, 669 F.2d 69, 71 (2d Cir.), cert. denied, 456 U.S. 929, 102 S.Ct. 1978, 72 L.Ed.2d 445 (1982); United States v. Aulet, 618 F.2d 182, 188 (2d Cir.1980). The stronger the evidence against him, the greater must be petitioner’s showing of unreasonableness in order to demonstrate prejudice. See Strickland, supra, 104 S.Ct. at 2069.

Petitioner was convicted on two counts of first degree robbery of the El Frente Social Club. The record indicates that the manager and the bartender of the Club, both of whom had known petitioner before the robbery and both of whom were eyewitnesses to the crime, testified that they recognized petitioner as one of the robbers. These identifications made the government’s case very strong. Therefore, petitioner’s showing herein must also be strong in order to establish that, absent any error by counsel, the factfinder would have had a reasonable doubt respecting his guilt. See Strickland, supra, 104 S.Ct. at 2069; cf. Wise, supra, 735 F.2d at 739; Stubbs v. Thomas, 590 F.Supp. 94, 101 (S.D.N.Y.1984).

1. Failure to investigate potential witnesses

Petitioner claims his trial counsel failed to properly investigate and interview potential witnesses to establish petitioner’s alibi defense. The record of the state court proceedings fails to support this claim. At petitioner’s Wade hearing, held approximately one week before trial, his counsel advised the court that he had unsuccessfully attempted to locate potential alibi witnesses for months, despite petitioner’s help, and had even used the services of an investigator. Moreover, he only succeeded in speaking with two witnesses the previous day at a meeting arranged by petitioner. These two witnesses, although they did not testify at trial, provided counsel with the name of a third potential witness, Rosalie Riley, who did testify and whom counsel spoke with on at least two occasions before she testified, and again on the day she appeared for trial.

In view of counsel’s efforts and eventual success with respect to finding and interviewing these witnesses, the Court rejects petitioner’s claim that his counsel’s performance in investigation and interviewing fell below the standard of reasonable competence. Petitioner’s contention that counsel permitted Ms. Riley to testify before interviewing her to see what her testimony would be is contradicted by the record. Moreover, while the last minute meetings with Ms. Riley may not have been the best method of interviewing and preparing her, the record indicates that counsel had no alternative due to the difficulties he encountered in locating and- speaking with Ms. Riley. Therefore, the Court sees no basis for finding that counsel did not render reasonably competent assistance in this regard. Cf. Strickland, supra, 104 S.Ct. at 2066-67.

Petitioner does not specify how he was prejudiced by these alleged errors on the part of counsel, or why a different course of conduct by counsel would with reasonable probability have resulted in his acquittal. The Court can find no basis for saying that, but for counsel’s conduct with respect to investigating and interviewing these witnesses, the result of the trial would have been different. It follows that this claim must be denied.

2. Failure to substantiate Ms. Riley’s anticipated testimony

At a sidebar conference requested by the trial court early in Ms. Riley’s testimony, defense counsel stated that he expected Ms. Riley to testify that on the same night and at approximately the same time that Sanchez was charged with committing the robbery at the El Frente Social Club, she saw him at a different location, where he spent the evening and was later arrested on an unrelated charge. Counsel stated that the district attorney had supplied him with criminal court records which indicated the date and time of that arrest, and which would therefore support Ms. Riley’s alibi testimony.

Petitioner argues that his counsel was ineffective in permitting Ms. Riley to testify before “checking out the records” to determine whether they were consistent with her anticipated testimony. These criminal court records are presumably the “records” to which petitioner refers. Counsel’s statements at the sidebar conference demonstrate, however, that he had checked these records before Ms. Riley testified, and expected her testimony to be in conformity with them. Petitioner has put forth no evidence to support his contention that counsel did not check the records before Ms. Riley testified. Therefore, the Court must reject petitioner’s claim as contradicted by the trial record.

3. Handling of Riley’s testimony and motion to strike

Petitioner argues that his counsel improperly handled Ms. Riley’s testimony, and acted unreasonably in moving to strike her testimony. This contention is clearly incorrect and distorts what actually happened at the trial.

At the side bar conference requested by the trial court counsel stated that Ms. Riley was not sure of the exact date or precise time she had seen petitioner arrested, but represented that he would confirm the date and time by introducing the criminal court records, and thereby establish petitioner’s alibi. Since the probative value of Ms. Riley’s testimony depended on counsel’s ability to establish that the time Ms. Riley saw petitioner was relevant to the alibi defense, the trial judge ruled that he would only admit Ms. Riley’s testimony subject to defense counsel later introducing the criminal court records to establish a connection between her testimony and the alibi defense.

The trial record indicates that after Ms. Riley testified, the court issued a subpoena to procure the criminal court records. However, defense counsel was unable to obtain the records because they were missing from the criminal court file. After consulting with petitioner, and in compliance with the court’s prior ruling requiring the introduction of the records, counsel moved to strike Ms. Riley’s testimony. The court granted the motion, and stated once again that without the records the testimony could not stand, because there was no connection established between Ms. Riley’s testimony and the relevant date. The prosecutor objected, and asked the court’s leave to attempt to find the records, but this was denied. The court instructed the jury to disregard Ms. Riley’s testimony because it had been taken subject to connection.

Defense counsel’s motion to strike this testimony was consistent with and necessitated by his obligations as an officer of the court, in view of the representation as to connection previously made. It would be most anamolous for this Court to hold that in order to render reasonably competent legal assistance, counsel should have disregarded his duties as an officer of the court, and should not have moved to strike testimony that was only admitted upon his representation that a connection would be established, when it became apparent that a connection could not, in fact, be made.

Moreover, petitioner has failed to demonstrate any prejudice caused by the striking of Ms. Riley’s testimony. The Court can see no reason why striking the testimony was any more likely to effect the outcome than if the testimony had never been introduced in the first place. Therefore, this claim must be rejected.

Conclusion

Petitioner’s claim regarding the sentence imposed on him in state court is denied as a successive petition.

With respect to the ineffective assistance of counsel claim, the Court can see no basis for ruling either that counsel’s performance fell below prevailing professional norms of reasonableness, or that petitioner was prejudiced by any of counsel’s alleged errors.

It follows that the petition for a writ of habeas corpus must be denied.

It is SO ORDERED.

      . Petitioner was convicted in Supreme Court, Bronx County of robbery in the first degree. The Appellate Division, First Department affirmed the conviction, see People v. Sanchez, 72 A.D.2d 975, 421 N.Y.S.2d 751 (1979), and leave to appeal to the Court of Appeals was denied. See People v. Sanchez, 48 N.Y.2d 985, 425 N.Y.S.2d 1042, 401 N.E.2d 429 (1979).

      . The Supreme Court made clear that this Court’s review of counsel’s performance must be "highly deferential," and provided that:
      A fair assessment of attorney performance requires that every effort be made to eliminate the distorting effects of hindsight, to reconstruct the circumstances of counsel’s challenged conduct, and to evaluate the conduct from counsel’s perspective at the time. Because of the difficulties inherent in making the evaluation, a court must indulge a strong presumption that counsel's conduct falls within a wide range of reasonable professional assistance; that is, the defendant must overcome the presumption that, under the circumstances, the challenged action might be considered sound trial strategy.
      104 S.Ct. at 2065-66 (citations omitted).

      . The Second Circuit observed in Trapnell that the difference between the two standards "may be in large part a matter of semantics," 725 F.2d at 154, as courts have often, in fact, treated the reasonable competence standard as a new way of determining whether representation constituted a farce and mockery of justice, and when both rules were considered in any given case, the Second Circuit had always found that both standards mandated the same result. See id. at 153-54. The Supreme Court in Strickland cited this discussion in Trapnell, and stated that to the extent a reasonableness standard had in fact been applied in prior cases, there was no reason for reconsideration of those cases. See 104 S.Ct. at 2069.
      It is unclear whether Judge Foley considered whether counsel’s performance was reasonably competent.

      . Despite the fact that the robbers wore masks, the witnesses testified that at the time of the robbery the lighting in the Club was good, and that they recognized petitioner, whose mask was torn and loose-fitting and who was standing only a few feet away from them, from his face, clothing, voice, walk, and mannerisms. In fact, one of the witnesses testified that she had spoken with petitioner earlier that day and that at that time he was wearing the same coat he wore during the robbery.

      . To the extent petitioner objects to counsel’s failure to call other alibi witnesses at trial, the Court rejects this as a matter of trial strategy which does not rise to the level of a constitutional violation. See, e.g., Strickland, supra, 104 S.Ct. at 2066; United States v. Dukes, 727 F.2d 34, 42 (2d Cir.1984); Trapnell, supra, 725 F.2d at 155; Helgesen, supra, 669 F.2d at 72; Aulet, supra, 618 F.2d at 189; United States ex rel. Cruz v. LaVallee, 448 F.2d 671, 679 (2d Cir.1971), cert. denied, 406 U.S. 958, 92 S.Ct. 2064, 32 L.Ed.2d 345 (1972).

      . Certainly defense counsel cannot be chargeable with professional incompetence merely because he had not anticipated this unusual circumstance.

      . Of course, if Trapnell and Strickland are not applicable herein, the ineffective assistance of counsel claim must be denied as constituting a successive petition.


author: SPRIZZO, District Judge.

text:
    Tommie L. TOLIVER, Plaintiff, v. COMMUNITY ACTION COMMISSION TO HELP THE ECONOMY, INC., CACHE, Defendant.
    No. 81 Civ. 4932 (JES).
    United States District Court, S.D. New York.
    July 19, 1985.

      Tommie L. Toliver, pro se.
    Oppenheim & Meltzer, Monticello, N.Y., for defendant; Stephen L. Oppenheim, Monticello, N.Y., of counsel.
   OPINION AND ORDER

SPRIZZO, District Judge.

Plaintiff Tommie L. Toliver brings an action against defendant Community Action Commission to Help the Economy (“CACHE”), a New York, not-for-profit corporation, alleging discrimination on the grounds of race and sex in violation of Title VII of the Civil Rights Act of 1964, 42 U.S.C. §§ 2000e to 2000e-17 (1982). In short, plaintiff contends that he was denied a promotion to Executive Director and terminated from his position as Deputy Director of CACHE because he is a black male.

BACKGROUND

In May of 1979, plaintiff was employed by CACHE as Deputy Director under a written contract for one year. In August of 1979, the post of Executive Director at CACHE became vacant. From August 23, 1979 until January 2, 1980, plaintiff functioned as Acting Executive Director of CACHE; during that time he applied for the position on a permanent basis. See Pre-Trial Order at H 5. However, on January 2, 1980 the Board of Directors of CACHE (“Board”) named Gladys Walker, a black female employee at CACHE, as Executive Director. See id. Plaintiff continued in his position as Deputy Director until May 15, 1980, when the Board decided not to renew his employment contract.

In August of 1980, plaintiff filed complaints with the New York State Human Rights Commission and the Equal Employment Opportunity Commission (“EEOC”) alleging discrimination on the basis of his sex and race in the denial of promotion and discharge by CACHE. On May 29, 1981, the EEOC found no reasonable cause to believe plaintiff’s claims of discrimination were true, and issued a Notice of Right to Sue letter. See Exhibit A to Answer. On August 10, 1981, plaintiff filed the instant action under Title VII in the United States District Court, Southern District of New York.

Since plaintiff was proceeding pro se in a Title VII case, and in forma pauperis pursuant to 28 U.S.C. § 1915(a) (1982), there was no clear statutory authority for the prepayment of discovery costs. See, e.g., Ebenhart v. Power, 309 F.Supp. 660, 661 (S.D.N.Y.1969) (mem.) (“Grave doubts exist as to whether Section 1915 authorizes this Court to order the appropriation of Government funds in civil suits to aid private litigants in conducting pre-trial discovery.”) Fortunately, defendant was cooperative in ' producing for plaintiffs questioning a large number of witnesses, most of whom were members of the defendant Board, and whose depositions were preserved by means of magnetic tape. In addition, plaintiff sought the production of various witnesses at trial at public expense.

Because of the lack of statutory authority for the payment of such witness costs by the United States, see, e.g., Haymes v. Smith, 73 F.R.D. 572, 574 (W.D.N.Y.1976) (“The generally recognized rule is that a court may not authorize the commitment of federal funds to underwrite the necessary expenditures of an indigent civil litigant’s action.”); Clark v. Hendrix, 397 F.Supp. 966, 975 (N.D.Ga.1975); see also 53 Comp. Gen. 638, 643-45 (1974), the Court reviewed testimony of all of the deposed witnesses, which was preserved on magnetic tape. Nevertheless, notwithstanding the questionable statutory authority to pay witness costs, a significant number of witnesses sought by plaintiff were produced and testified at trial.

The trial consumed three days. After an extensive record had been made, the Court permitted the filing of post-trial briefs. Plaintiff requested that a transcript of the trial be furnished at public expense, but the Court was constrained to deny that application, in an Order dated March 20, 1984, because of the absence of any statutory authority to provide a transcript to plaintiff prior to an appeal of the case. See, e.g., Romero Barcelo v. Brown, 655 F.2d 458, 462 (1st Cir.1981); McClure v. Salvation Army, 51 F.R.D. 215, 216 (N.D.Ga.1971); see also 28 U.S.C. § 753(f) (1982). The defendant did not avail itself of the opportunity to file a post-trial brief, but plaintiff did in fact file such a brief on November 30, 1984.

FINDINGS OF FACT AND CONCLUSIONS OF LAW

Following the bench trial conducted on January 31, February 2, and July 18 of 1984, the Court makes the following findings of fact and conclusions of law pursuant to Fed.R.Civ.P. 52.

Upon reviewing the brief filed by plaintiff, all of the evidence heard at trial, and the depositions which the Court examined prior to trial, the Court concludes that plaintiff has failed to establish a prima facie case of racial or gender discrimination in violation of Title VII. See, e.g., Texas Department of Community Affairs v. Burdine, 450 U.S. 248, 101 S.Ct. 1089, 67 L.Ed.2d 207 (1981); McDonnell Douglas Corp. v. Green, 411 U.S. 792, 93 S.Ct. 1817, 36 L.Ed.2d 668 (1973). However, even assuming arguendo that the plaintiff did establish a prima facie case, the totality of the evidence was more than sufficient to establish that plaintiff’s discharge and lack of promotion were not motivated by any discriminatory considerations with respect to his race or gender. See United States Postal Service Board of Governors v. Aikens, 460 U.S. 711, 103 S.Ct. 1478, 75 L.Ed.2d 403 (1983).

At the outset, it should be noted that the defendant Board was comprised of eleven members, six of whom were black and three of whom were black males. The record clearly supports the inference that there were numerous disputes between the plaintiff and the Board, most of which were, quite simply, personality clashes between plaintiff and members of the Board.

While it is possible that in some instances plaintiff’s position may have been arguably valid, it is not the function of the Court in a Title VII suit to resolve the merits of every dispute between a plaintiff and his employer. See Garrett v. Saluda Shirt Co., 526 F.Supp. 1, 4 (D.S.C.1979). Suffice it to say that on the evidence elicited at trial, the Court is persuaded that the defendant was justified in seeking Toliver’s termination for reasons quite unrelated to race or sex.

There may be circumstances where a disagreement as to matters of policy, in which the plaintiff is unquestionably correct, may permit an inference of illegal discrimination. Cf. Burdine, supra, 450 U.S. at 259, 101 S.Ct. at 1096. This, however, is not such a case. The members of the Board testified that they found Mr. Toliver to be hypertechnical and extremely difficult to work with. Title VII does not require that a board of directors, or any employer, be constrained to maintain in its employ a person who creates or promotes extreme difficulty in effecting the legitimate objectives of the employer. See Garrett v. Mobil Oil Corp., 531 F.2d 892, 896 (8th Cir.), cert. denied, 429 U.S. 848, 97 S.Ct. 135, 50 L.Ed.2d 121 (1976). An employer must be permitted some latitude in its ability to effect compliance with its directives by an employee.

The record in this case makes clear that the Board’s displeasure with Mr. Toliver had nothing whatsoever to do with his race and/or gender, but was motivated by a genuine, justifiable, and understandable displeasure, annoyance, and perhaps even frustration at his argumentative propensities, which frequently made it impossible for the Board to handle the matters before it efficiently and with dispatch.

It is indeed questionable whether plaintiff established that he had the requisite qualifications for the position he sought, and that after he was rejected for the position, “the position remained open and the employer continued to seek applicants from persons of complainant’s qualifications.” See McDonnell Douglas, supra, 411 U.S. at 802, 93 S.Ct. at 1824. From all the testimony that the Court heard, the black woman appointed to the position of Executive Director by the Board was an extremely qualified person who was, in all probability, more qualified than the plaintiff. Therefore, as noted above, the Court is not persuaded that plaintiff ever established a prima facie case. See id.

However, even assuming arguendo that plaintiffs termination as Deputy Director at CACHE met the bare requirements of a prima facie case, it is clear that the defendant has more than carried its burden of establishing that it had a good faith business justification for terminating him and that its conduct was not a pretext for discrimination. See id. at 804, 93 S.Ct. at 1825. Indeed, given the racial and sexual composition of the Board, the inference of discrimination which plaintiff seeks to have this Court draw from his termination is, to say the least, attenuated. Compare New York City Transit Authority v. Beazer, 440 U.S. 568, 584 n. 25, 99 S.Ct. 1355, 1365 n. 25, 59 L.Ed.2d 587 (1979).

It follows that the complaint in the above-captioned action must be dismissed with prejudice.

It is SO ORDERED.

      . The depositions of the following persons were preserved: Dr. Russell C. Davis, Leon Rock-more, David Kaufman, Ellie Patton, Brian Ingber, Dennis Greenwald (Members of CACHE Board); Gladys Walker (Executive Director of CACHE); Abraham Klineman (Member of CACHE Commission); J. Gorman (Director of Governing Board); Curtis Jackson (former Member of CACHE Board); Thomas Hubert (Chairman of CACHE Board); Elsa Greenwald (CACHE Board Alternate). Many of the CACHE personnel listed supra had limited knowledge of the events at issue in this case because they were either appointed to their respective positions after the events in question occurred, or because they were not involved in defendant’s decision-making process regarding plaintiff’s employment status at CACHE, his termination, or in evaluating plaintiff’s job performance.

      . The following witnesses testified at trial:' Gladys Walker (Executive Director of CACHE); Evelyn Haas (Personnel Committee Chairperson of CACHE); Lillian Kracke (CACHE Board Chairperson); George Billups (Finance Committee Chairperson of CACHE); Joan Howard (former Director of CETA); Paul Rouis (Sullivan County Administrator); Harold Trent (rejected applicant for position of Deputy Director of CACHE); Valentine Liu (former CACHE Board Member). The majority of the witnesses resided in Sullivan County, New York. Plaintiff had requested an even more extensive array of trial witnesses, but, despite repeated requests from the Court, Mr. Toliver was never able to make any specific showing of what these witnesses were expected to say. Nevertheless, the Court endeavored to obtain the testimony of all of those whose testimony might be even arguably relevant.

      . Section 753(f) provides for payment by the United States for transcripts for litigants permitted to appeal in forma pauperis, provided that the Court determines that such an appeal is not frivolous. See 28 U.S.C. § 753(f). Since plaintiff’s application was submitted prior to the completion of this action, his request was clearly premature.

      . In Aikens, the Supreme Court held that when a Title VII case has been fully tried on the merits, whether plaintiff ever made out a prima facie case is no longer relevant; rather the Court should focus on the "ultimate question of discrimination vel non.” Aikens, supra, 460 U.S. at 714-15, 103 S.Ct. at 1481-82. The Aikens Court stated:
      Where the defendant has done everything that would be required of him if the plaintiff had properly made out a prima facie case, whether the plaintiff really did so is no longer relevant. The district court has before it all the evidence it needs to decide whether "the defendant intentionally discriminated against the plaintiff."

        Id. at 715, 103 S.Ct. at 1482 (quoting Burdine, supra, 450 U.S. at 253, 101 S.Ct. at 1093).


author: BUA, District Judge.

text:
    Frankie L. MALONE, Plaintiff, v. KITCHENS OF SARA LEE, and the Bakery, Confectionary and Tobacco Workers Union Number 2, Defendants.
    No. 85 C 2227.
    United States District Court, N.D. Illinois, E.D.
    July 19, 1985.
    Leonard Litwin, Chicago, 111., for plaintiff.
    Gerald C. Peterson, Winston & Strawn, Chicago, 111., for defendant Kitchens of Sara Lee.
    Edwin H. Benn, Donald W. Cohen, Ash-er, Pavalon, Gittler & Greenfield, Ltd., Chicago, III, for defendant Bakery Confectionary and Tobacco Workers Union No. 2.
   FACTS

BUA, District Judge.

Before the Court is the plaintiffs motion, pursuant to Fed.R.Civ.P. 59, for reconsideration following this Court’s dismissal order of May 7, 1985. Plaintiff was discharged from his employment at defendant Kitchens of Sara Lee on February 29, 1984. Subsequently, plaintiff contacted his union, and on March 30, 1984 the union sent plaintiff a letter stating that his dismissal resulted from an accumulation of six points under the Attendance Rules of the Kitchens of Sara Lee. The union went on to say that their collective bargaining agreement carries no provision which allows it to implement the Grievance Procedure in situations which involve terminations under the Attendance Rules.

Almost one year later, on February 19, 1985, plaintiff filed his complaint in federal court alleging wrongful discharge against the employer and breach of the duty of fair representation against the union. In his complaint, the plaintiff alleges that the true reason for his discharge was that he became eligible for retirement benefits in October 1984.

DISCUSSION

A dismissal was ordered in this case on the basis of the six-month statute of limitations applicable to an employee suit brought under § 301 of the Labor Management Relations Act, 29 U.S.C. § 185, (LMRA), alleging the employer’s breach of its duty of fair representation. Del Costello v. I.B.T., 462 U.S. 151, 103 S.Ct. 2281, 76 L.Ed.2d 476 (1983). The plaintiff argues that the six-month rule should not bar his claim because he alleges wrongful discharge as a tort, but not as a breach of the labor contract. The threshold question is whether the alleged wrongful discharge is a tort or a breach of the collective bargaining agreement, which falls within § 301 of the LMRA. If the alleged wrongful discharge falls within § 301 of the LMRA, it is barred by the six-month statute of limitations determined in Del Costello, supra.

A recent Supreme Court case involved the question of whether the state law tort of wrongful discharge was preempted by § 301 of the LMRA. Allis-Chalmers Corp. v. Lueck, — U.S. ---, 105 S.Ct. 1904, 85 L.Ed.2d 206 (1985). In that case, the employee claimed that the employer and its insurance carrier exercised bad faith in the manner in which they handled a disability claim filed by Lueck under the collective bargaining agreement. The dispute arose in Wisconsin where the act of “bad faith handling of an insurance claim” is recognized as a tort. Lueck never attempted to grieve his dispute through the collective bargaining agreement procedures. Instead, he filed suit against the employer and insurance company in state court claiming the bad faith insurance tort. The Supreme Court held that, when resolution of a state law claim is substantially dependent upon analysis of the terms of an agreement made between the parties in a labor contract, the claim must either be treated as a § 301 claim or dismissed as preempted by federal labor contract law. Lueck, supra, — U.S. at ---, 105 S.Ct. at 1916. The Lueck court reasoned:

Since nearly any alleged willful breach of contract can be restated as a tort claim for breach of a good faith obligation under a contract, the arbitrator’s role in every case could be bypassed easily if § 301 is not understood to preempt such claims. Claims involving vacation or overtime pay, work assignment, unfair discharge — in short, the whole range of disputes traditionally resolved through arbitration could be brought in the first instance in state court by a complaint in tort rather than in contract. A rule that permitted an individual to sidestep available grievance procedures would cause arbitration to lose most of its effectiveness, (citation omitted) as well as eviscerate a central tenet of federal labor contract law under § 301 that it is the arbitrator, not the Court, who has the responsibility to interpret the labor contract in the first instance.

Id. at ---, 105 S.Ct. at 1915.

In this case, as in Lueck, the Court finds that the plaintiff’s claim for wrongful discharge is preempted by § 301 of LMRA. Under the analysis in Lueck, absenteeism is a provision of the collective bargaining agreement (§ 10.05) and is therefore subject to the grievance procedures contained therein. Although the plaintiff did contact the union regarding his dismissal, the union refused to implement the grievance procedure on his behalf. It is not clear to the Court why the union did not pursue this dispute. However, the six-month statute of limitations set out in Del Costello governs claims against both the employer and the union. Del Costello, supra, 462 U.S. at 152, 103 S.Ct. at 2284. Therefore, both of these claims must be dismissed as untimely filed.

CONCLUSION

For the reasons stated above, plaintiff’s motion for reconsideration is denied.