author: LEISURE, District Judge.

text:
    P.F. COSMETIQUE, S.A. and Clairol Incorporated, Plaintiffs, v. MINNETONKA INC. and Excelsior Bay Company, Defendants.
    No. 84 Civ. 5602 (PKL).
    United States District Court, S.D. New York.
    Jan. 29, 1985.

      Rogers, Hoge & Hills, New York City (William F. Weigel, Lile H. Deinard, New York City, of counsel), for plaintiffs P.F. Cosmetique, S.A. and Clairol, Inc.
    Merchant, Gould, Smith, Edell, Welter & Schmidt, Minneapolis, Minn. (Alan G. Carlson, Minneapolis, Minn., of counsel) and Nims, Howes, Collison & Isner, New York City (Thomas Kain, New York City, of counsel), for defendants Minnetonka, Inc. and Excelsior Bay Co.
   LEISURE, District Judge.

This is an action for trade dress infringement. The plaintiffs, P.F. Cosmetique, S.A. (“Cosmetique”) and Clairol, Inc. (“Clairol”), allege that the packaging of a line of beauty aids manufactured and sold by the defendants, Minnetonka, Inc., and its subsidiary, Excelsior Bay Co. (together “Minnetonka”), is confusingly similar to the packaging of one of plaintiffs' lines of beauty aids. Plaintiffs have sued under § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), common law unfair competition and trademark infringement, the New York “anti-dilution” statute, N.Y.Gen. Bus.L. § 368-d and the recently enacted New York Arts and Cultural Affairs Law, 7A 1983 Session L. News of N.Y. Ch. 876, Title K, Art. 33 (McKinney’s 1983). This case is now before me on plaintiff’s motion for an order preliminarily enjoining defendants from further use of the allegedly infringing packaging and directing that they recall all such packages currently in the marketplace. For the reasons set forth in this opinion, that motion must be denied.

I. FACTS.

Sometime between the end of World War II and 1965 a line of shampoos and hair conditioners was created and marketed in France under the name “KLORANE.” The Klorane products were made from plant and natural extracts and sold through pharmacies. Cosmetique acquired rights to the Klorane line in 1965, and commencing in 1970 began marketing Klorane in other European countries. By 1980, the Klorane hair care products were being sold in Switzerland, Spain, Belgium, Italy, Great Britain, Portugal and Greece. It was sold in Canada as well.

Cosmetique introduced Klorane into the American market in 1980. It hoped to carve out a distinct niche in the hair care market consisting of sophisticated consumers who seek high quality European-style natural hair care products. In this initial penetration of the American market, Klorane was sold to a limited number of upscale drug stores and department stores.

Clairol obtained the right to distribute Klorane in the United States in March 1982. The packaging of Klorane was allegedly a major reason for Clairol’s interest in Klorane. Indeed, except for slight alteration—Clairol added the Klorane name in bold capital letters at the top of the packages—the package is the same now as it was when Cosmetique was marketing it.

Clairol began test marketing Klorane in the spring of 1982 in eleven western states. The results were sufficiently positive that Clairol decided to begin nationwide distribution. Although it no longer limited distribution of Klorane to upscale drug and department stores, Clairol in its nationwide sales effort still limited distribution of Klorane to approximately one-third of its usual number of outlets, in order to maintain a prestigious, exclusive image for the product. Clairol has proclaimed Klorane a success; sales of Klorane last year exceeded six million dollars at wholesale.

Clairol attributes much of Klorane’s success to its packaging, which apparently conveys a scientific, clinical, upscale, prestigious European look. Those Klorane products which derive from plants feature a picture of the source plant on the package. Those with nonbotanical bases have no picture. Although the packages for botanically-based products look different from those with a nonbotanical base, both attempt to convey the same clinical image. Promotions for Klorane have been entirely visual, concentrated in fashion magazines, department store mailings and in-store displays. Radio is not used.

In the summer of 1984 the New York Bath and Linen show was held. Among the exhibitors was Minnetonka, which was displaying mock-ups of its new “INSTITUTE SWISS” line, which was to be introduced that fall. The Institute Swiss line comprises a number of hair and beauty treatments including shampoos, conditioners, soaps and bath additives. A Clairol representative who attended the show noticed the Institute Swiss display and informed the Minnetonka personnel at the show that the Institute Swiss package featured in Minnetonka’s displays and brochures was visually very similar to Klorane’s package.

Plaintiffs brought suit in August 1984. At that time, distribution of Institute Swiss had not yet begun. In early November, however, plaintiffs discovered that Institute Swiss had in fact reached the market and in at least one store was being sold side-by-side with Klorane. This motion for a preliminary injunction followed.

II. DISCUSSION.

A. Preliminary Injunction Standards.

It is well-settled in this Circuit that a plaintiff who seeks a preliminary injunction must meet certain defined requirements. A preliminary injunction may be granted only upon a showing by the movant of

(a) irreparable harm and (b) either (1) likelihood of success on the merits or (2) sufficiently serious questions going to the merits to make them a fair ground for litigation and a balance of hardships tipping decidedly toward the party requesting the preliminary relief.

Jackson Dairy, Inc. v. H.P. Hood & Sons, Inc., 596 F.2d 70, 72 (2d Cir.1979) (citations omitted); accord Coca-Cola Co. v. Tropicana Prods., Inc., 690 F.2d 312, 314-15 (2d Cir.1982); Standard & Poor’s Corp. v. Commodity Exch., Inc., 683 F.2d 704, 707 (2d Cir.1982). A preliminary injunction is an extraordinary remedy and should not be granted routinely. It is reserved for cases in which need for it is manifest.

The Second Circuit recently stated that in § 43(a) and related unfair competition cases, the irreparable harm element may be proved by a showing of “likelihood of confusion as to source or sponsorship.” Standard & Poor’s, supra, at 708. Plaintiffs herein have taken that approach. The irreparable harms they claim they will suffer are those which would arise from the likelihood that consumers will confuse Institute Swiss for Klorane. Indeed, the Second Circuit has held that when there is probability of confusion, irreparable harm is well-nigh inevitable. Omega Importing Corp. v. Petri-Kine Camera Co., 451 F.2d 1190, 1195 (2d Cir.1971). Confusion by purchasers would cause Cosmetique and Clairol to lose control of their business reputation and goodwill. Because the products look similar, consumers might attribute any defects in Institute Swiss to Klorane. This loss of control of business reputation due to confusingly similar trade dress would, if proven, constitute irreparable harm for preliminary injunction purposes. See Standard & Poor’s, supra, at 708; Paco Rabanne Parfums, S.A. v. Norco Enters., Inc., 680 F.2d 891, 893-894 (2d Cir.1982). The loss to plaintiffs of sales of Klorane which would occur because consumers would confuse one product for the other would also constitute irreparable harm if proven, because such loss would be difficult if not impossible to calculate. See Selchow & Righter Co. v. McGraw-Hill Book Co., 580 F.2d 25, 28 & n. 2 (2d Cir.1978); Omega, supra, at 1195; Ideal Toy Corp. v. Chinese Arts & Crafts, Inc., 530 F.Supp. 375, 380-81 (S.D.N.Y.1981).

Thus, whether plaintiffs have shown irreparable harm hinges on whether they have shown a likelihood of confusion. Likelihood of confusion, moreover, is the substantive “touchstone” of equitable actions under both § 43(a) of the Lanham Act and New York common law, Commerce Foods, Inc. v. PLC Commerce Corp., 504 F.Supp. 190, 193 (S.D.N.Y.1980), so its existence vel non bears heavily on both the irreparable harm and likelihood of success on the merits prongs of the test for granting a preliminary injunction.

B. Likelihood of Confusion.

In Playboy Enters., Inc. v. Chuckleberry Publishing, Inc., 486 F.Supp. 414, 419, 428 (S.D.N.Y.1980), approved, 687 F.2d 563 (2d Cir.1982), Judge Sofaer identified three possible types of confusion that could occur in trademark-type cases. The first is simple product confusion: consumers might purchase a defendant’s infringing product thinking it was the plaintiff’s. The second is confusion of source or sponsorship. Consumers might believe that the originator had either produced the infringing product or sponsored or approved it. The last is what Judge Sofaer called “subliminal trademark association,” defined as “defendant’s ability to gain a foothold in plaintiff’s market by exploiting subliminal or conscious association with plaintiff’s” protected name, mark or trade dress. Id.

In trade dress cases, likelihood of confusion is assessed by looking at the visual similarity of the packages viewed as a whole, and not by attention to differences of detail. Harlequin Enters. Ltd. v. Gulf & Western Corp., 644 F.2d 946, 949 (2d Cir.1980); Perfect Fit Indus., Inc. v. Acme Quilting Co., 618 F.2d 950, 954-955 (2d Cir.1980); RJR Foods, Inc. v. White Rock Corp., 603 F.2d 1058, 1060 (2d Cir.1979). Proof of side-by-side sales is not necessary to show likelihood of confusion, Paco Rabanne, supra, at 893; rather, the test is whether a consumer who has seen Klorane would distinguish Institute Swiss from it if he saw Institute Swiss alone. See Ameri can Home Prods. Corp. v. Johnson Chemical Co., Inc., 589 F.2d 103, 107 (2d Cir.1978).

Several factors are relevant in applying this test. As Chief Judge Motley wrote:

In determining whether the second comer’s trademark or trade dress has created sufficient likelihood of confusion to warrant a preliminary injunction, courts have considered: 1) the strength of the senior manufacturer’s mark; 2) any showing of actual confusion; 3) the competitive proximity of the products; 4) the newcomer’s purpose in adopting its mark; 5) the degree of similarity between the two marks; 6) the degree of similarity between the products; and 7) the degree of care likely to be exercised by consumers.

Commerce Foods, supra, at 193 (citations omitted). See Thompson Medical Co., Inc. v. Pfizer, Inc., 753 F.2d 208 at 213-14 (2d Cir.1985); Standard & Poor’s, supra, at 708; Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492, 495 (2d Cir.), cert. denied, 368 U.S. 820, 82 S.Ct. 36, 7 L.Ed.2d 25 (1961). This test is more or less fact-specific, and is applied by evaluating each of the factors, no one of which is determinative. Thompson Medical, supra, at 214; Plus Prods, v. Plus Discount Foods, Inc., 722 F.2d 999, 1004 (2d Cir.1983). An examination of the facts of this case in light of the above factors negates plaintiffs’ contention that there is a high likelihood that consumers will confuse Institute Swiss with Klorane.

1. Strength of Klorane’s trade dress. As the Second Circuit has indicated, “the strength of a mark depends ultimately on its distinctiveness, or its ‘origin-indicating’ quality, in the eyes of the purchasing public.” McGregor-Doniger Inc. v. Drizzle Inc., 599 F.2d 1126, 1131 (2d Cir.1979). “Strength” in this context refers to conceptual, as distinct from market, strength. See Mushroom Makers, Inc. v. R. G. Barry Corp., 580 F.2d 44, 48 (2d Cir.1978), cert. denied, 439 U.S. 1116, 99 S.Ct. 1022, 59 L.Ed.2d 75 (1979). The conceptual strength of a trade mark, trade dress or other indicator of origin is analyzed using the four categories described by the Second Circuit.

Arrayed in an ascending order which roughly reflects their eligibility to trademark status and the degree of protection accorded, these classes are (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary or fanciful. The lines of demarcation ... are not always bright.

Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 9 (2d Cir.1976). See also McGregor-Doniger, supra, at 1131; Playboy Enters., 486 F.Supp. at 420.

The features of the Klorane package, while they may individually be arbitrary, together are suggestive. Plaintiff’s own proof indicates that they considered the Klorane image “clinical ..., distinguished, serious[,] no-nonsense and very sophisticated,” (Marty afft. ¶ 4), with the package being “quiet, upscale, prestigious]” (Doran afft. 113). The Klorane trade dress is not fanciful or arbitrary, particularly in light of the numerous other products using simple clean graphics to convey a “clinical” look. In fact, describing the look as “clinical” denotes that the package’s appearance calls to mind a clinic or pharmacy where beneficial scientific products are dispensed. This type of image conjuration is precisely the essence of a suggestive mark. The packaging does no more than hint at its contents,

The trade dress must be considered a weak one for a number of reasons. Its main features are used by a not inconsiderable number of other companies for other products. Clean pale colors, strong horizontal bands, and enclosed depictions of plants are commonly utilized in varying combinations (e.g., DX 15, DX 19, DX 20, DX 21, DX 24, DX 27). The trade dress is not arbitrary or fanciful; the “look” of it conveys a clinical image, and the plant pictures are descriptive of the base of the product and indicative of its natural origin.

In sum, then, the combination of a merely suggestive trade dress and wide use of its elements lead me to find that the Klorane trade dress is a weak mark. See Plus Prods., supra, at 1005. The weakness of the mark, however, does not end the inquiry here, since weak marks are entitled to protection, albeit of a narrower scope than strong marks. While strong marks are protected even against wholly unrelated and noncompeting infringing products, see, e.g., Dallas Cowboys Cheerleaders, supra; Playboy Enters., supra, a weak mark will be protected against infringement only by competing products, see Plus Prods., supra, at 1006. Since Klorane and Institute Swiss are, or certainly have the potential to be, direct competitors, weakness of the Klorane trade dress is not an absolute bar to protectibility in this case.

2. Actual confusion. There has been no showing of actual confusion. However, Institute Swiss has been on the market an extremely short time, and although there is some overlap, the distribution outlets used to date by Minnetonka for Institute Swiss have been different from those used by Clairol for Klorane. Thus, opportunities for actual confusion have been few and far between. In any event, since actual confusion is useful evidence of, but not crucial to, a finding of likelihood of confusion, see Perfect Fit, supra (lack of proof of actual confusion is a bar to damages; injunction, however, was granted), its absence in this case is not dispositive in defendant’s favor.

3. Similarity of the marks. It is clear that Minnetonka utilized a marketing concept for Institute Swiss similar to the one plaintiffs used for Klorane. Defendants admit this in their memorandum of law. The issue, however, is whether Institute Swiss creates an overall visual impression similar enough to Klorane that a consumer familiar with a Klorane package might mistake Institute Swiss for it if he were presented singly with an Institute Swiss package. See American Home Prods. v. Johnson Chemical Co., 589 F.2d 103, 107 (2d Cir.1978). Thus, I must determine whether the “look” of Institute Swiss is too much like the “look” of Klorane.

The Institute Swiss packages are alleged to infringe some of the Klorane packages, specifically those of the Klorane shampoos and conditioners made from botanical extracts. The plant-based Klorane and all of the Institute Swiss boxes feature pictorial representations of the plants from which the products are derived together with separate pictures of the plant’s flower or fruit, with the two pictures enclosed in a rectangle with a pale pastel background. Each has a horizontal band, though Klorane’s is solid and near the top of the box and Institute Swiss’s is made up of a series of thinner bands of alternating colors and is in the lower portion of its box. The typeface used on the upper portion of each box is similar. Each package is bilingually la-belled, in English and French.

There are, then, substantial similarities. It has not been proved to me, however, that it is likely that consumers would confuse the two, because there are several obvious differences.

Minnetonka has submitted a list of differences almost three pages long, much of which is irrelevant, since the key to this case is overall impression rather than minute detail. The two products do convey distinct impressions, though, because of certain salient differences. Klorane uses a solid off-white background, while Institute Swiss uses a pale pastel colored background with a graph paper overlay. The Klorane package has the brand name at the top of the box, above the horizontal stripe, while on the Institute Swiss package, the name is enclosed within the alternating horizontal bands in the box’s lower section. The Klorane box appears to have a more crowded top and bottom than the Institute Swiss box, on which the boldest features are centered. Further, the Institute Swiss box is considerably larger and conveys a more massive appearance than Klorane, which has a more delicate look.

Plaintiffs have offered no proof of similarity other than pictures of the respective boxes. Minnetonka, on the other hand, has submitted expert testimony by affidavit to the effect that a consumer would neither believe that the two lines of product came from a common source (Gillies afft. 1114), nor associate an Institute Swiss package with Klorane (Gillies afft. 1115). Thus, Minnetonka has provided evidence tending to negate each principal type of confusion—confusion of product, confusion of source or sponsorship, and subliminal product association. In light of the substantial differences between the trade dresses of the two lines, I conclude that plaintiffs have not proven their right to a preliminary injunction.

4. Minnetonka’s purpose and intent. Virtually every case in which intentional copying was found has been decided in plaintiffs favor. See, e.g. Warner Bros., Inc. v. Gay Toys, Inc., 658 F.2d 76, 78 (2d Cir.1981); Harlequin Enters., supra; Perfect Fit, supra; RJR Foods, supra. Intentional imitation is probative of both likelihood of confusion and secondary meaning. See Harlequin Enters., supra, at 950. Thus, a finding of deliberate copying effectively decides the case in favor of the plaintiff. Cosmetique and Clairol contend that Minnetonka deliberately copied the Klorane package in designing Institute Swiss’s trade dress. It has offered no evidence of this, however, other than the asserted similarity of the packages, which I found above to be not as striking as plaintiffs would have it. Quite apart from that, though, Minnetonka has negated any inference of bad faith by providing a detailed history of the Institute Swiss trade dress.

According to Minnetonka’s proof (Taylor afft. ¶ 28, Hatlestad afft. H 3), the Institute Swiss trade dress traces its roots to a 1982 “mock-up” designed for Minnetonka for a proposed product called “Dr. Gaymont’s Kurhaus Herbal Elixir.” The Kurhaus line was never marketed, but its package design was reworked and adapted when preparatory work was being done on the Institute Swiss line. The Klorane trade dress was not used as a model or looked to at all in creating the Institute Swiss packaging. In its first form, the Institute Swiss box featured a heavy horizontal stripe at the top, and the background was a solid pale color. This is the trade dress that was featured at the New York Bath and Linen Show in summer 1984 at which a Clairol representative informed the Minnetonka personnel that the package looked a lot like Klorane’s.

Between that time and the introduction of Institute Swiss to the market, Minnetonka made several changes in the Institute Swiss boxes. A graph paper background was added and the horizontal stripe at the top was narrowed almost to the vanishing point. The purpose of the changes was to insure an appearance for Institute Swiss different from that of Klorane, because Minnetonka felt it wanted to be unique and desired no confusion of its products with others (Taylor afft. ¶¶ 27, 28). Additionally, Minnetonka has offered expert evidence that from a design point of view, there is no reason to think that the Institute Swiss look was copied from Klorane’s (Jones afft. U10).

Thus, Minnetonka has adequately explained the source of its package and has demonstrated its good faith in adopting it. There does not appear to have been any intent by Minnetonka to “cash in” on Klorane’s trade dress.

5. Consumer care and sophistication. Plaintiffs urge on me the conclusion that purchasers of the goods in question would not pay much attention in choosing the product they take off the shelf, since the products are offered in self-service markets where aisles are crowded, shelves are well-stocked and customers are often harried and preoccupied. They argue that since under such conditions trade dress makes or breaks the product, and since the products are relatively inexpensive, consumers are likely to make hasty purchase decisions based on trade dress recognition alone. It follows from this that consumers might take Institute Swiss off the shelf, intending to take Klorane.

The defects in this argument should be apparent. For one thing, the packages are not as similar as plaintiffs suppose, as set forth above. Particularly in light of other competitive products using the same marketing concept and roughly similar packaging (e.g. DX 21), the proof before me tends to show that those who purchase top-of-the-line premium priced prestige beauty aid products can and do differentiate among packages with a number of common elements.

6. The remaining factors. The other factors I must consider are the similarity and competitive proximity of the products. Clearly, the Institute Swiss and Klorane lines provide similar products— shampoos, conditioners and soaps—though certain of the items do not overlap. Just as clearly, the lines are competitively close. Both aim at the premium price beauty care market. Although each company is currently using different groups of retail outlets, there is some overlap. There is also a good possibility that Minnetonka will “bridge the gap” and begin selling Institute Swiss through the same outlets Clairol uses for Klorane. The upscale stores now used by Minnetonka to distribute Institute Swiss appear to be akin to the outlets Cosmetique used when it was distributing Klorane, before Clairol came on the scene. Thus it is possible that Minnetonka will follow the same expansion strategy for Institute Swiss that plaintiffs used for Klorane.

The similarity and competitive proximity of the two products do militate in plaintiffs’ favor, but in light of my other findings above I can not preliminarily enjoin Minnetonka’s marketing of Institute Swiss in its present package. A likelihood of confusion has not been adequately proved.

C. The New York Anti-dilution Statute.

Plaintiffs have asserted a claim under New York’s “anti-dilution” statute, N.Y.Gen.Bus.L. § 368-d. They argue that their Klorane trade dress is protected by that section, entitling them to a preliminary injunction. For the reasons set forth below, I disagree.

The leading case on § 368-d is Allied Maint. Corp. v. Allied Mechanical Trades, Inc., 42 N.Y.2d 538, 399 N.Y.S.2d 628, 369 N.E.2d 1162 (1977), in which the New York Court of Appeals described the purpose and scope of § 368-d’s protection against dilution.

The evil which the legislature sought to remedy was not public confusion caused by similar products or services sold by competitors, but a cancer-like growth of dissimilar products or services which feeds upon the business reputation of an established distinctive trade-mark or name.... The harm that section 368-d is designed to prevent is the gradual whittling away of a firm’s distinctive trade-mark or name....
Although section 368-d does not require a showing of confusion or competition to obtain an injunction, it does require a “likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name.” (Emphasis added). The statute prohibits any use of a name or mark likely to dilute the distinctive quality of a name in use. To merit protection, the plaintiff must possess a strong mark—one which has a distinctive quality or has acquired a secondary meaning which is capable of dilution.

42 N.Y.2d at 544-45, 399 N.Y.S.2d 628, 369 N.E.2d 1162 (first, second and fifth emphases added).

The Second Circuit parsed the elements of a § 368-d action in Sally Gee, Inc. v. Myra Hogan, Inc., 699 F.2d 621, 625-26 (2d Cir.1983). To obtain an injunction, a § 368-d plaintiff must demonstrate (1) that his mark either (a) is distinctive or (b) has acquired a secondary meaning; (2) that there is a likelihood of dilution, which may be proved using either a “tarnishing” or a “blurring” theory; and (3) predatory intent of the defendant. See Toys “R” Us, Inc. v. Canarsie Kiddie Shop, Inc., 559 F.Supp. 1189, 1206-09 (E.D.N.Y.1983).

1. The first element. Plaintiffs have failed to prove that the Klorane trade dress is either distinctive or endowed with secondary meaning such that the protections of § 368-d would attach.

a. Distinctiveness. To call a mark distinctive is to imply that it is the product of arbitrariness or fancy. “Distinctive” means “unique”; it is the opposite of “descriptive” or “generic.” See Allied Maint., supra, 42 N.Y.2d at 545, 399 N.Y.S.2d 628, 369 N.E.2d 1162; Loctite Corp. v. National Starch & Chemical Corp., 516 F.Supp. 190, 218 (S.D.N.Y.1981). In essence, distinctiveness in the antidilution realm may be evaluated in much the same way as strength of the mark is evaluated in the area of likelihood of confusion. I concluded above that Klorane’s trade dress is a weak mark for confusion purposes. That must therefore be at least as true for anti-dilution purposes, since there are numerous suggestions that only the strongest, most well-established marks are protected by § 368-d against dilution. See Sally Gee, supra, at 625 and sources cited therein (“Dupont shoes, Buick aspirin, Schlitz varnish, Kodak pianos [and] Bulova gowns.”). Klorane can hardly be considered well-established in light of its relatively recent debut on the American scene.

b. Secondary Meaning. Plaintiffs have not proven secondary meaning sufficiently to warrant equitable relief. They have cited the advertising expenses and sales for the Klorane line in support of their contention that the Klorane trade dress has secondary meaning. They have also cited authorities to prove that evidence of sales and advertising suffices to establish secondary meaning. Yet in each of those cases—Harlequin Enters., supra; RJR Foods, supra, and Ideal Toy Corp. v. Plawner Toy Mfg., 685 F.2d 78 (3d Cir.1982)—there was proof beyond mere sales and advertising figures. That proof consisted of a consumer survey, extensive media coverage, evidence of long-standing market position, and/or perceptions within the industry. See also Ideal Toy, 530 F.Supp. at 379. Here, I have been presented with no proof beyond a cumulative total of $5 million spent by Clairol on advertising since it introduced Klorane and a wholesale sales figure for the most recent year of $6 million for the entire Klorane line. Something more is required. Advertising and sales figures for a tell me little about the degree to which the public associates its trade dress with a certain source. Of course, plaintiffs inform me that they consider the Klorane packaging a large factor in Klorane’s success, but that is not informative of the public’s perceptions.

Furthermore, even if secondary meaning could be established on the basis of sales and advertising alone, the figures plaintiffs have given me do not prove what plaintiffs contend they do. The advertising figure covers amounts spent by Clairol since it introduced Klorane. That means $5 million in at most two and a half years (Clairol began test marketing Klorane in spring of 1982). The sales figure of $6 million is for one year. Assuming sales of Klorane were growing since the product was introduced, the ratio of advertising costs to sales is very substantial. This could indicate an intensive effort to create a secondary meaning which as yet has not borne fruit, or difficulty in establishing recognition. Thus, the evidence provided me does not necessarily prove consumer acceptance and recognition; it is susceptible of other interpretations as well.

2. 'The other elements. Having found that the Klorane trade dress has neither distinctiveness nor secondary meaning, I need go no further. The Klorane trade dress is not subject to the protections of § 368-d. I must add, though, that plaintiffs have failed to demonstrate the existence of the third element, predatory intent by Minnetonka. See supra, Part II.B.4.

D. New York Arts and Cultural Affairs Law.

Article 33 of this recently enacted statute is entitled “Offenses Against Trade-Marks.” Section 33.09 makes it a misdemeanor to, inter alia, possess or use false trademarks or labels. Plaintiffs contend that a preliminary injunction should issue in this case because of defendants’ alleged violation of § 33.09. They have not, however, pointed me to any authority indicating that the State Legislature intended that section 33.09 may be enforced by private parties in civil actions. Quite apart from considerations of the merits of the case at this preliminary stage, it is impossible for me to enjoin conduct at plaintiffs’ behest if they have not proved to me the existence of a private right of action authorizing them to request such an injunction.

III. CONCLUSION

Plaintiffs’ motion for a preliminary injunction is hereby denied. Their failure to prove likelihood of confusion at this stage precludes me from finding irreparable harm or likelihood of success on the merits under either federal trademark or New York unfair competition law. Plaintiffs likewise have failed to prove their case under the New York anti-dilution statute. They have failed as well to show that N.Y. Arts & C.A. L. Art. 33 has any bearing on this case. Accordingly, a preliminary injunction will not issue.

SO ORDERED.

      . § 43(a) provides in pertinent part as follows.
      Any person who shall affix, apply, or annex, or use in connection with any goods or services, or any container or containers for goods, a false designation of origin, or any false description or representation, including words or other symbols tending falsely to describe or represent the same, and shall cause such goods or services to enter into commerce, ... shall be liable to a civil action by any person doing business in the locality falsely indicated as that of origin or in the region in which said locality is situated, or by any person who believes that he is or is likely to be damaged by the use of any such false description or representation.

      . § 368-d provides that:
      Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services.

      . The relevant portions of the statute read as follows.
      § 33.09. Offenses against trade-marks. A person who:
      5. Makes or sells, or offers to sell or dispose of, or has in his possession with intent to sell or dispose of, an article of merchandise with such a trade-mark or label as to appear to indicate the quantity, quality, character, place of manufacture or production, or persons manufacturing, packing, bottling, boxing or producing the article, but not indicating it truly; ...
      8. ... is guilty of a misdemeanor.
      7A 1983 Session L. News of N.Y. Ch. 876, Title K, Art. 33, § 33.09 (McKinney’s 1983).

      . Clairol asserts (Doran afft. ¶ 3) that the licensing agreement required Clairol to maintain the Klorane trade dress and package quality. No copy of the agreement has been produced. For purposes of this motion I will assume that this uncontradicted allegation is true. It tends to prove that Clairol believed that the packaging of Klorane was valuable enough to give its seller a competitive advantage.

      . When a plaintiff sues for trade dress infringement under § 43(a) of the Lanham Act, he must first establish the protectibility of his product's trade dress by proving that it is nonfunctional and has acquired secondary meaning. Dallas Cowboys Cheerleaders, Inc. v. Pussycat Cinema, Ltd., 604 F.2d 200, 203 (2d Cir.1979). Under New York law, however, no secondary meaning needs to be shown. Once plaintiff shows that its trade dress is distinctive, an injunction may issue upon a showing of likelihood of confusion alone. See Perfect Fit Indus., Inc. v. Acme Quilting Co., Inc., 618 F.2d 950, 953-54 (2d Cir.1980); Ideal Toy Corp. v. Chinese Arts & Crafts, Inc., 530 F.Supp. 375, 379 (S.D.N.Y.1981). Indeed, New York law places upon a second comer the obligation to differentiate his product from that of the senior competitor in order to avoid public confusion. See Commerce Foods, Inc. v. PLC Commerce Corp., 504 F.Supp. 190, 193 (S.D.N.Y.1980) and cases cited therein.

      . Similarity of details is immaterial here, since it is the product’s overall visual appearance as consumers see it that is being evaluated, not the particular details of the packages. See Harlequin Enters., supra, at 949 (quoting Perfect Fit, supra, at 955). The details are simply not relevant to the issue of similarity of the respective trade dresses. They might be relevant, however, in determining whether there was deliberate copying. Correspondence of detail could imply conscious imitation. As discussed below in Part II.B.4., however, Minnetonka has amply rebutted any such inference.

      . Some of the pictures of Institute Swiss boxes used by plaintiffs as exhibits actually are not representative of the Institute Swiss package as it appeared on the market. Plaintiffs used Minnetonka's trade show brochure as an exhibit. Between the trade show and Institute Swiss’s market debut, Minnetonka made certain changes in the Institute Swiss package in order to insure that it was different from Klorane’s. Plaintiffs apparently did not differentiate between the trade show displays (Weigel afft. Ex. 2) and the actual Institute Swiss boxes sold in the marketplace (Weigel afft. Ex. 3).

      . [I]t is generally true that, as soon as we see that a second comer in a market has, for no reason that he can assign, plagiarized the “make-up” of an earlier comer, we need no more; for he at any rate thinks that any differentia he adds will not, or at least may not, prevent the diversion and we are content to accept his forecast that he is “likely" to succeed. Then we feel bound to compel him to exercise his engenuity in quarters farther afield.

        American Chicle Co. v. Topps Chewing Gum, Inc., 208 F.2d 560, 563 (2d Cir.1953) (L. Hand, J.).

      . Contrast this with Commerce Foods, Inc. v. PLC Commerce Corp., 504 F.Supp. 190 (S.D.N.Y.1980), in which each design change made by defendant made its product increasingly similar in appearance to plaintiffs. In that case the court held that "cumulative absence of differentiation in the ... dress of the parties” may be evidenqe of deliberate copying. Id. at 196. Here, however, a similar design was innocently arrived at and then changed in order to avoid confusion.

      . Text cited supra, note 2.

      . Sales of only the allegedly infringed products would presumably be less.

      . For a list of possible types of proof besides sales and advertising, see Thompson Medical, supra, at 217.

      . The text of this statute is quoted supra, note 3.


source: Caselaw Access Project

author: JENKINS, Chief Judge.

license: Public Domain

text:
    The SUPERIOR OIL COMPANY, a Nevada Corporation; and Arapaho Petroleum Inc., a Colorado Corporation, Plaintiffs, v. The UNITED STATES of America; the Department of the Interior of the United States; William P. Clark, Acting Secretary Designate of the Interior; Kenneth Smith, Assistant Secretary of the Interior for Indian Affairs; John Fritz, Deputy Assistant Secretary of the Interior for Indian Affairs for operations; Robert F. Buford, Director of Bureau of Land Management; Gene Sheldon, District Manager, Bureau of Land Management; Mat N. Millenbach, Area Manager, Bureau of Land Management; Bureau of Indian Affairs, an agency of the United States; Donald Dodge, Navajo Area Director, Bureau of Indian Affairs; the Navajo Tribe of Indians; the Navajo Tribal Council; Navajo Office of Mineral Development or its successor; Peterson Zah, individually, and as Chairman of the Navajo Tribal Council; Edward T. Begay, individually, and as Vice Chairman of the Navajo Tribal Council; Aktar Zamon, individually, and as director of the Navajo Mineral Department; and Alfred Dehiya, individually, and as Director of the Navajo Land Development Office, Defendants.
    No. C-82-0751J.
    United States District Court, D. Utah, C.D.
    Jan. 29, 1985.

      Arthur H. Nielsen, Thomas Jepperson, Robert L. McIntyre, Salt Lake City, Utah, for plaintiffs.
    Joseph Anderson, Asst. U.S. Atty., William R. McConkie, Salt Lake City, Utah, Louis Denetsosie, Navajo Nation Dept. of Justice, Window Rock, Ariz., Kevin N. Anderson, Salt Lake City, Utah, for defendants.
   JENKINS, Chief Judge.

The defendants’ Motions to Dismiss the Amended Complaint and the defendants’ Motion for Summary Judgment were argued orally on March 16, 1984. Arthur H. Nielsen, Thomas Jepperson, and Robert L. McIntyre represented the plaintiffs; Joseph Anderson and William W. McConkie represented the United States defendants; and Louis Denetsosie and Kevin N. Anderson represented the Navajo defendants. After due consideration of the oral arguments and the memoranda submitted by the parties, the court enters this Memorandum Opinion.

The defendants’ motions raise a series of questions to the sovereign immunity of the Navajo Tribe and the jurisdiction of this court. Certain oil and gas leases between the plaintiffs or their predecessors and the Tribe on land within the Navajo reservation form the subject matter of the action.

The plaintiffs allege in Count I of the Amended Complaint that the Tribe, as lessor, executed an oil and gas lease with the plaintiff Arapaho Petroleum, Inc. (Lease No. 5184). The Secretary of the Interior then approved that lease according to the terms of the Omnibus Indian Mineral Leasing Act of 1938, 25 U.S.C. §§ 396a-396g (1976). Arapaho designated The Superior Oil Company as its “operator and local agent” to act on Arapaho’s behalf. Amended Complaint, at 1139 (filed November 15, 1983).

Thereafter, Superior performed seismic and other geophysical studies on the lands covered by the lease. Superior then obtained approval to drill a well from the Tribe and the Department of the Interior. However, before drilling the well, Superior requested the Tribe and the Bureau of Indian Affairs to reissue a seismic permit to allow Superior to determine more accurately the best location for the proposed well. Neither the Tribe nor the Bureau of Indian affairs has acted on the requests. The plaintiffs allege that the Navajo defendants have expressed a desire to have lease No. 5184 expire so that the Tribe could negotiate a new lease with a higher royalty and bonus. In addition, the plaintiffs claim that the Navajo defendants have informed Superior that they would take every action possible to see that the lease would expire. Amended Complaint, at 10-18.

In Count II of the Amended Complaint, the plaintiffs allege similar facts regarding lease No. 5299, which was executed by Gulf Oil Corporation as the lessee. Gulf also designated Superior as its operator and local agent. Superior then requested a seismic permit from the Tribe and from the Bureau of Indian Affairs. Not long thereafter, Gulf assigned the lease to Superior, and Superior requested that the Tribe and the Bureau of Indian Affairs approve that assignment. Neither the federal government nor the Navajo defendants have acted on either the request for a seismic permit or the request for approval of the assignment. The plaintiffs allege that the Navajo defendants have refused to act on the requests so that lease No. 5299 would expire and the Tribe could negotiate a new lease with a higher royalty and bonus. Amended Complaint, Count II, at 19-20.

In Count III of the Amended Complaint, the plaintiffs allege that Superior has received various other assignments of oil and gas leases as well as assignments of operating rights that pertain to oil and gas leases. Superior requested both the Bureau of Indian Affairs and the Tribe to approve the various assignments. However, Superior alleges, the Navajo defendants have refused to act on the requests; and, as a result of that refusal, the Plaintiffs have been deprived of property rights without due process of law or equal protection under the law in violation of the Indian Civil Rights Act, 25 U.S.C. § 1302 (1976).

The Tribe asserts that it is immune from suit and thus this court lacks jurisdiction over the Tribe. The Tribe further asserts that its immunity extends to the Navajo Tribal Council (the Tribe’s governing body) and to the Navajo Office of Mineral Development (an agency of the Tribe responsible for the development of the Tribe’s mineral resources). The Tribe also claims that its immunity prevents this court from exercising jurisdiction over a case involving the following individual Navajo defendants, in either their official or personal capacities: Peterson Zah, Chairman of the Tribal Council; Edward T. Begay, Vice Chairman of the Tribal Council; Alfred DeHiya, Director of the Navajo Land Development Office; and Aktar Zamon, Director of the Navajo Mineral Department.

After considering the oral arguments, and after reviewing the extensive memoranda filed in this case, the court has determined that it has no jurisdiction, that the defendants’ motion for summary judgment should be granted, and that the plaintiffs’ complaint should be dismissed.

I. SOVEREIGN IMMUNITY OF THE NAVAJO TRIBE

That the Navajo Tribe is immune from certain suits is beyond dispute. “Indian Tribes have long been recognized as possessing the common-law immunity from suit traditionally enjoyed by sovereign powers.” Santa Clara Pueblo v. Martinez, 436 U.S. 49, 58, 98 S.Ct. 1670, 1677, 56 L.Ed.2d 106 (1978). See also, Puyallup Tribe, Inc. v. Department of Game of Washington, 433 U.S. 165, 172-73, 97 S.Ct. 2616, 2621, 53 L.Ed.2d 667 (1977); United States v. United States Fidelity and Guaranty Co., 309 U.S. 506, 512-13, 60 S.Ct. 653, 656-57, 84 L.Ed. 894 (1940). See generally, F. Cohen, Handbook of Federal Indian Law 324-28 (1982 ed.). However, immunity from suit is not absolute. It is subject to complete defeasance by an act of Congress. Santa Clara, 436 U.S. at 58, 98 S.Ct. at 1677. The tribe itself can also waive its immunity. Merrion v. Jicarilla Apache Tribe, 617 F.2d 537, 540 (10th Cir.1980), aff'd, 455 U.S. 130, 102 S.Ct. 894, 71 L.Ed.2d 21 (1982).

The plaintiffs assert three separate bases for congressional extinguishment. First, they argue that Congress’ exercise of plenary control over oil and gas operations through the passage of the Omnibus Indian Mineral Leasing Act, 25 U.S.C. §§ 396a-396g (1976), extinguished the Tribe’s immunity from suit. Second, they claim that Congress extinguished the Tribe’s immunity by passing the Indian Civil Rights Act, 25 U.S.C. §§ 1301-03 (1976). Finally, the plaintiffs assert that the immunity insulates the Tribe only from an action for money damages, and does not insulate the Tribe from an action for injunctive and declaratory relief. Each of these claims is without merit.

First, the Omnibus Indian Mineral Leasing Act did not dimmish the Tribe’s sovereign immunity. The Supreme Court stated in Santa Clara that “a waiver of sovereign immunity ‘cannot be implied but must be unequivocally expressed.’ ” 436 U.S. at 58, 98 S.Ct. at 1677, quoting United States v. Testan, 424 U.S. 392, 399, 96 S.Ct. 948, 953, 47 L.Ed.2d 114 (1976). Because nothing on the face of the Act indicates a congressional extinguishment of the Tribe’s immunity, the Act does not affect the Tribe’s sovereign immunity.

Second, the Indian Civil Rights Act did not diminish the Tribe’s sovereign immunity. The Supreme Court’s opinion in Santa Clara is dispositive of this issue as well. The Court in Santa Clara specifically concluded that the Indian Civil Rights Act did not extinguish the Tribe’s sovereign immunity. 436 U.S. at 59, 98 S.Ct. at 1677.

The plaintiffs rely on an exception to Santa Clara that the Tenth Circuit created in Dry Creek Lodge, Inc. v. Arapahoe and Shoshone Tribes, 623 F.2d 682 (10th Cir.1980), cert. denied, 449 U.S. 1118, 101 S.Ct. 931, 66 L.Ed.2d 847 (1981) (Dry Creek II). In Dry Creek, the plaintiffs alleged violations of their rights of due process and equal protection as guaranteed by the Indian Civil Rights Act. See Dry Creek Lodge, Inc. v. United States, 515 F.2d 926, 932-36 (10th Cir.1975) (Dry Creek I). The district court dismissed the original complaint for lack of jurisdiction because of sovereign immunity. On appeal, after concluding that the Indian Civil Rights Act waived the Tribe’s sovereign immunity, the Tenth Circuit remanded the case for trial. Id.

While the case was in the district court on remand, the Supreme Court handed down its decision in Santa Clara. The district court then dismissed the case in reliance on Santa Clara. See, Dry Creek II, 623 F.2d at 683. Again the Tenth Circuit reversed. In Dry Creek, the plaintiffs had been denied access to the tribal courts. The Tenth Circuit distinguished the Supreme Court’s opinion in Santa Clara on that basis. Id. at 685. The court concluded that when the Tribe denies access to its courts, the limitations and restrictions of Santa Clara should not be applied.

In the present case, the plaintiffs assert that they have no tribal court remedy. However, they have not alleged any attempt to pursue a tribal court remedy; they allege only that it would be futile to do so. They suggest that their earlier dealings with Indian officials regarding the leases indicate that any attempt to use the tribal courts would lead only to frustration and delay.

The Tenth Circuit addressed a similar argument in White v. Pueblo of San Juan, 728 F.2d 1307 (10th Cir.1984). The plaintiffs in White argued that it was sufficient to allege that tribal court remedies would be insufficient. The Tenth Circuit disagreed:

The rationale behind the holding of the Tenth Circuit in Dry Creek was based upon what the court regarded as absolute necessity.... Necessarily the Dry Creek opinion must be regarded as requiring narrow interpretation in order not to come into conflict with the decision of the Supreme Court in Santa Clara. Accordingly, the Dry Creek decision ought to be interpreted to provide a narrow exception to the traditional sovereign immunity bar from suits against Indian tribes in federal courts. In addition, to adhere to the principles of Santa Clara, the aggrieved party must have actually sought a tribal remedy, not merely alleged its futility. This is not merely a requirement that the exhaustion of tribal remedies is a prerequisite to federal jurisdiction, but instead, that tribal remedies, if existent, are exclusive.

Id. at 1312. See also, Jicarilla Apache Tribe v. Andrus, 687 F.2d 1324, 1345-46 (10th Cir.1982).

The plaintiffs have made no actual attempt to obtain a tribal court remedy. They chose instead to pursue this action in federal court, alleging that such an attempt would be futile. “But this is not the law of the Tenth Circuit; speculative futility is not enough to justify federal jurisdiction. The tribal remedy must be shown to be nonexistent by an actual attempt before a federal court will have jurisdiction.” Id. at 1313. The Tribe argues strenuously that a tribal forum is available to the plaintiffs. Because the plaintiffs have not shown through an actual attempt that tribal court remedies are not available, Dry Creek provides no support for their position.

The plaintiffs’ final argument with respect to the Tribe is that even if the Tribe possesses common law immunity from suit for monetary damages, that immunity does not extend to an action for injunctive or declaratory relief. This court disagrees. The Supreme Court in Santa Clara held unequivocally that “suits against the tribe under the ICRA are barred by its sovereign immunity from suit.” 436 U.S. at 59, 98 S.Ct. at 1677. Although the Court did consider whether it possessed jurisdiction to grant specific relief, the Court considered that issue only as it related to the officers of the Tribe. The Tribe itself was dismissed because of sovereign immunity.

The court concludes from Santa Clara that sovereign immunity means immunity from injunctive as well as monetary relief. Although Congress could extinguish or the Tribe could waive the Tribe’s immunity, neither has done so. Accordingly, the complaint against the Navajo Tribe of Indians must be dismissed.

Similarly, the complaint against the Navajo Tribal Council and the Navajo Office of Mineral Development must be dismissed. Those two entities are merely parts of the Tribal government. Relief against them would be, in effect, relief against the Tribe. See Larson v. Domestic and Foreign Commerce Corp., 337 U.S. 682, at 688, 69 S.Ct. 1457, at 1460, 93 L.Ed. 1628 (1949).

II. SOVEREIGN IMMUNITY OF THE TRIBAL OFFICIALS

The plaintiffs assert that even if the Tribe has sovereign immunity, that immunity does not extend to the Tribal officials. See Santa Clara, 436 U.S. at 59, 98 S.Ct. at 1677. However, any action that seeks to enjoin Tribal officials acting in representative capacities raises the possibility that relief granted against the officials would, in effect, be relief granted against the Tribe. Larson, 337 U.S. at 688, 69 S.Ct. at 1460; see also, Tenneco Oil Co. v. Sac & Fox Tribe of Indians of Oklahoma, 725 F.2d 572, 576 (10th Cir.1984) (McKay, concurring). If that is the purpose of the action, the suit is barred by the Tribe’s sovereign immunity. On the other hand, if the officer acts beyond his authority, the suit is against the officer in his individual capacity and the Tribe’s immunity does not protect him. Larson, 337 U.S. at 688, 69 S.Ct. at 1460; Tenneco Oil, 725 F.2d at 574; cf, Ex party Young, 209 U.S. 123, 155-56, 28 S.Ct. 441, 452, 52 L.Ed. 714 (1908).

The plaintiffs urge at this point that the individual defendants have each acted outside his authority. Their argument is two-pronged. First, they argue that the Tribe does not have the sovereign power to authorize someone to approve or disapprove permits or assignments, and, consequently, any Tribal power granted to the individual defendants to do so is void. Second, they argue that even if the Tribe had the sovereign power to grant such authority, the Tribe did not bestow that authority on the individual defendants.

A. The Scope of Tribal Sovereignty.

The powers of Indian tribes are derived from the tribes’ sovereign existence before the coming of the Europeans. Those powers are “inherent powers of a limited sovereignty which has never been extinguished.” United States v. Wheeler, 435 U.S. 313, 322, 98 S.Ct. 1079, 1086, 55 L.Ed.2d 303 (1978), quoting F. Cohen, Handbook of Federal Indian Law 122 (1945) (emphasis deleted). However, the tribes’

incorporation within the territory of the United States, and their acceptance of its protection, necessarily divested them of some aspects of the sovereignty which they had previously exercised. By specific treaty provision they yielded up other sovereign powers; by statute, in exercise of its plenary control, Congress has removed still others.
But our cases recognize that' Indian tribes have not given up their full sovereignty. ... The sovereignty that the Indian tribes retain is of a unique and limited character. It exists only at the sufferance of Congress and is subject to complete defeasance. But until Congress acts, the tribes retain their existing sovereign powers. In sum, Indian tribes still possess those aspects of sovereignty not withdrawn by treaty or statute, or by implication as a necessary result of their dependent status.

Id. at 323, 98 S.Ct. at 1086. See also Oliphant v. Suquamish Indian Tribe, 435 U.S. 191, 209-10, 98 S.Ct. 1011, 1021-22, 55 L.Ed.2d 209 (1978) (tribal courts do not have criminal jurisdiction over non-Indians because such an exercise of tribal sovereignty would be inconsistent with the tribe’s dependent status). See generally, F. Cohen, Handbook of Federal Indian Law 229-57 (1982 ed.).

1. Tribal Sovereignty Has Not Been Diminished By Statute or Treaty. The plaintiffs argue that Congress, in enacting the Omnibus Indian Mineral Leasing Act, 25 U.S.C. §§ 396a-396g, withdrew the Tribe’s sovereignty to grant seismic permits and to approve assignments of leases and operating rights. The plaintiffs make what is essentially a preemption argument. They assert that the Act and the regulations promulgated by the Secretary of the Interior pursuant to section 396d of the Act are so comprehensive that they preempt tribal attempts to regulate oil and gas leases.

The Supreme Court addressed this argument in Merrion v. Jicarilla Apache Tribe, 455 U.S. 130, 102 S.Ct. 894, 71 L.Ed.2d 21 (1982). The petitioners in Merrion opposed a severance tax imposed by the Tribe on certain oil and gas leases. The petitioners argued that the Omnibus Indian Mineral Leasing Act preempted regulation of the leases by the tribe, and, therefore, the tribe did not have the authority to impose a severance tax. The Supreme Court disagreed. The Court held that the Act did not preempt tribal regulation and it did not prevent the Tribe from imposing the tax. Id. at 150, 102 S.Ct. at 908. Although the Supreme Court’s holding seems to rest on the premise that the tribe be organized and incorporated pursuant to 25 U.S.C. §§ 476 and 477, the Tenth Circuit has ruled to the contrary. Southland Royalty Co. v. Navajo Tribe of Indians, 715 F.2d 486 (10th Cir.1983). The inescapable result of Merrion and Southland is that the Omnibus Indian Mineral Leasing Act did not preempt all tribal attempts to regulate mineral leases. See also, Poafpybitty v. Skelly Oil Co., 390 U.S. 365, 372-76, 88 S.Ct. 982, 985-87, 19 L.Ed.2d 1238 (1968) (Regulations promulgated by the Secretary of the Interior do not deprive Indians of standing to sue under a lease).

The plaintiffs argue that even if the Act did not preempt all Tribal regulation of oil and gas leases, the Tribe’s regulations directly conflict with specific regulations promulgated by the Secretary of the Interior. Congress provided in the Omnibus Indian Mineral Leasing Act that “All operations under any oil, gas, or other mineral lease issued pursuant to the terms of section 396a to 396g of this title or any other Act affecting restricted Indian lands shall be subject to the rules and regulations promulgated by the Secretary of the Interior.” 25 U.S.C. § 396d (1983). Pursuant to that authority, the Secretary of the Interior has promulgated regulations that apply to mineral leases on tribal property. See, 43 C.F.R. Parts 3160 and 3180 (1983); 25 C.F.R. Parts 211 and 212 (1984).

In particular, the plaintiffs point to 25 C.F.R. § 211.20 (1984), which provides in pertinent part as follows:

(a) No operations will be permitted on any lease before it is approved by the Secretary of the Interior.
(b) Written permission must be secured from the supervisor before any operations are started on the leased premises. After such permission is secured the operations must be in accordance with the operating regulations promulgated by the Secretary of the Interi- or.

The plaintiffs argue that this regulation directly conflicts with any attempt by the Tribe to require a lessee to obtain a seismic permit from the Tribe. The plaintiffs further argue that this regulation directly conflicts with the Tribe’s position that no assignment of operating rights and no assignment of a lease is effective unless approved by the Tribe.

These arguments are without merit. Section 211.20 requires only that the lessee comply with federal regulations. It does not purport to prohibit a tribe from requiring a lessee to obtain a permit issued by the tribe before the lessee can enter the reservation to perform seismic tests. It does not purport to prohibit a tribe from requiring tribal approval of assignments of leases or operating rights. In short, nothing in the regulation prohibits something Navajo Tribal regulations require; nothing in the regulation requires something Navajo Tribal regulations prohibit. Absent such a direct conflict, this court is reluctant to find that Congress, by authorizing the Department of the Interior to promulgate rules, has limited an Indian Tribe’s sovereignty.

Accordingly, neither Congress, by passing the Omnibus Indian Mineral Leasing Act, nor the Department of the Interior, by promulgating rules pursuant to that Act, has limited the Navajo Tribe’s sovereignty to approve assignments of leases and operating rights and to require a lessee to obtain a seismic permit issued by the Tribe. Congress has not impaired the Tribe’s sovereignty to regulate who can enter the reservation and for what purpose.

2. Tribal Sovereignty Has Not Been Diminished By Its Dependent Status. It is next necessary to determine whether the Tribe’s sovereignty is limited “by implication as a necessary result of [its] dependent status.” Wheeler, 435 U.S. at 323, 98 S.Ct. at 1086. The Supreme Court has found tribal sovereignty to be so limited in cases “where the exercise of tribal sovereignty would be inconsistent with the overriding interests of the National Government.” Washington v. Confederated Tribes of the Colville Indian Reservation, 447 U.S. 134, 153, 100 S.Ct. 2069, 2081, 65 L.Ed.2d 10 (1980). For example, the Court has found a divestiture of tribal sovereignty when the tribes seek to engage in foreign relations, when they alienate their lands to non-Indians without federal approval, or when they prosecute non-Indians in tribal criminal courts. Wheeler, 435 U.S. at 326, 98 S.Ct. at 1087. See also, Oliphant, 435 U.S. at 212, 98 S.Ct. at 1022 (1978).

In this case,'the Navajo Tribe’s sovereignty to regulate oil and gas leases on Tribal lands is not inconsistent with its status as a dependent nation. Even though the tribes are in a dependent position, they continue to possess attributes of sovereignty over both their members and their territory. Wheeler, 435 U.S. at 323, 98 S.Ct. at 1086. This includes the power to “regulate, through taxation, licensing, or other means, the activities of nonmembers who enter consensual relationship with the tribe or its members, through commercial dealing, contracts, leases, or other arrangements.” Montana v. United States, 450 U.S. 544, 565, 101 S.Ct. 1245, 1258, 67 L.Ed.2d 493. See also, Knight v. Shoshone and Arapahoe Indian Tribes, 670 F.2d 900, 903 (10th Cir.1982) (“The power to control the use of non-Indian owned land located within the reservation flows from the inherent sovereign rights of self-government and territorial management.”).

In the case now under consideration, the plaintiff Arapaho entered into a consensual relationship with the Tribe when it became a party to an oil and gas lease. It voluntarily subjected itself to the inherent sovereignty of the Tribe to regulate that lease. The plaintiff Superior seeks to assert rights it claims to have acquired by assignment from others who have entered consensual agreements with the Tribe. With those rights came the obligation of being subject to the inherent sovereignty of the Tribe over its territory. This sovereignty includes the power to regulate oil and gas leases on Tribal lands.

The power to regulate oil and gas leases is also derived from the tribes’ inherent “power to exclude” nonmembers from tribal land. Merrion, 455 U.S. at 144, 102 S.Ct. at 905. The treaty entered into between the United States and the Navajo Tribe in 1868 specifically provided that “no one, except United States Government personnel, was to enter the reserved area.” Williams v. Lee, 358 U.S. 217, 221, 79 S.Ct. 269, 271, 3 L.Ed.2d 251 (1959). Cf., Worcester v. Georgia, 31 U.S. 350, 8 L.Ed. 483 (1832). This power to exclude necessarily includes within it the power to decide whom to exclude, as well as the power to regulate the activities of those the tribe chooses not to exclude. See Merrion, 455 U.S. at 144-45, 102 S.Ct. at 905-06.

The Tribe did not waive its' sovereignty to regulate leases by failing to include in the lease a provision expressly reserving that sovereign power. The Tribe wears two hats: It is both a sovereign power and a landlord. In Merrion, the Supreme Court held that the Indian tribe had the power to impose a severance tax on minerals removed from tribal property under lease. The court reasoned that the petitioner’s and the dissent’s argument that the tribe had waived its sovereignty by failing to expressly reserve those powers in the lease

confuse the Tribe’s role as commercial partner with its role as sovereign. This confusion relegates the powers of sovereignty to the bargaining process undertaken in each of the sovereign’s commercial-agreements. It is one thing to find that the Tribe has agreed to sell the right to use the land and take from it valuable minerals; it is quite another thing to find that the Tribe has abandoned its sovereign powers simply because it has not expressly reserved them through a contract.

Id. at 145-46, 102 S.Ct. at 906.

The Tribe derives its authority to regulate oil and gas leases not only from its powers to control its territory and to exclude nonmembers from that territory, but also from its powers to protect its political integrity, to protect its economic security, and to preserve the health and welfare of the members of the Tribe. “A tribe may also retain inherent power to exercise civil authority over the conduct of non-Indians on fee lands within its reservation when that conduct threatens or has some direct effect on the political integrity, the economic security, or the health or welfare of the tribe.” Montana, 450 U.S. at 566, 101 S.Ct. at 1258. See also, Babbitt Ford, Inc. v. Navajo Indian Tribe, 710 F.2d 587, 592-93 (9th Cir.1983), cert. denied, — U.S. - 104 S.Ct. 1707, 80 L.Ed.2d 180 (1984); Knight, 670 F.2d at 903-04.

In Montana, the Supreme Court held that the Crow Tribe could exclude nonmembers from hunting and fishing on Tribal land, and that the Tribe could condition permission to hunt or fish by charging a fee and enforcing other regulations. However, the Court also ruled that the Tribe could not regulate hunting and fishing by non-Indians on non-Indian land, even though that land was within the reservation. The Court reasoned that hunting and fishing by non-Indians on land owned by non-Indians did not threaten “the Tribe’s political or economic security as to justify tribal regulation.” 450 U.S. at 566, 101 S.Ct. at 1259. The Court also reasoned that the non-Indians’ hunting and fishing for sport did not “imperil the subsistence or welfare of the Tribe.” Id.,

The conduct that the plaintiffs here assert is beyond the Tribe’s sovereignty is directly related to the Tribe’s economic security. The Tribe derives enormous economic benefits from the sale of its natural resources. The Tribe would lose some of its economic security if it were unable to regulate the sale of those resources. Simply losing track of who the lessee is could cause economic harm to the Tribe. The Tribe’s health and welfare is also at stake. If the Tribe is unable to require a bond from those who propose to perform seismic tests or drill for oil or gas on Tribal lands, and if the Tribe is unable to exclude negligent operators from the reservation, the Tribe’s health and welfare would be imperiled. The plaintiffs’ position that once the oil companies obtain a lease from the Tribe, they can proceed to extract minerals from the land without being subject to Tribal regulation simply poses too many risks to the members of the Tribe.

Accordingly, the Navajo Tribe retains the inherent sovereignty to determine whether to issue a seismic permit to lessees. The Tribe also retains the inherent sovereignty to approve and disapprove assignments of leases and operating rights. That sovereignty has not been limited by statute or treaty; it has not been diminished as a necessary consequence of the Tribe’s dependent status.

B. The Tribal Officials Authority.

The plaintiffs next argue that even if the Tribe has the sovereign power to authorize the Tribal officials to approve assignments and requests for seismic permits, the Tribe has not done so. This argument is also without merit. In a resolution passed on December 16, 1983, the Navajo Tribal Council defined the procedure for transferring mineral interests in Navajo lands. Paragraph (5) of the resolution provides in pertinent part that an assignment of any mineral interest “shall not be effective until approved by the Chairman, Navajo Tribal Council, on behalf of the Navajo Tribe.” This resolution delegated authority to the individual defendant Peterson Zah, Chairman of the Navajo Tribal Council, to approve the assignments at issue in this case.

The plaintiffs argue that if the Chairman has authority from the Tribe to approve any assignments, he must approve all assignments. The December 16, 1983, resolution does not support the plaintiffs’ position. Paragraph (9) of the December 16, 1983, resolution indicates that approving such assignments involves the exercise of discretion:

No assignment or transfer of any interest in any ... operating [agreement], ... lease or other agreement ... shall be approved by the Navajo Tribe prior to an evaluation and determination by the Minerals Department of the Navajo Nation that such assignment is in the economic interests of the Navajo Tribe.

In light of this provision, the court rejects the plaintiffs’ contention that the Chairman must approve all assignments. Even if that were true, the plaintiffs have not alleged that they have followed the procedures set forth in the resolution. Absent such compliance, the Chairman is not empowered to approve any assignments.

The Tribe has also empowered the Chairman to approve requests for seismic permits. Title 16 N.T.C., § 652 provides as follows:

Oil and gas prospecting permits without preference to lease may be issued for areas requested, but in no case for a larger area than a land management district. These permits may be granted by the Chairman of the Tribal Council with the consent of a majority of the district councilmen from the district concerned and the approval of the General Superintendent.

The plaintiffs assert that the language “without preference to lease” must be interpreted to mean that § 652 does not apply to lands under lease. If the plaintiff is correct, then § 654 grants authority to the Chairman to approve seismic permits:

The Advisory Committee shall consider all other requests for permits and the Chairman of the Tribal Council, with approval of the Advisory Committee, shall have authority to grant permits for exploration, prospecting, and other activities not otherwise provided for by Council action, with the approval of the General Superintendent.

The Preamble to the resolution that enacted these sections indicates that the Tribe was receiving requests for permits of various types and was concerned about the orderly development of all Tribal resources, not merely the ones not under lease. The plaintiffs’ assertion that a permit is necessary only to explore on lands not under lease is incompatible with the concern voiced by the Tribal Council.

The court also rejects the plaintiffs’ alternative argument that the Chairman must approve all requests for permits. Both sections 652 and 654 provide that permits may be issued. That language does not contemplate that the approval of requests for permits be mandatory. However, even if the approval is mandatory, the plaintiffs have not alleged that they have complied with the requirements of § 656.

The court concludes that the Tribe has empowered the Chairman to do the acts complained of in the complaint. Because the Tribe has the inherent sovereignty to authorize him to do those acts, his acts are considered acts of the sovereign. The Tribe’s sovereign immunity prevents this court from asserting jurisdiction, and the complaint against Peterson Zah, Chairman of the Tribal Council, must be dismissed.

The complaint against the remaining individual defendants should be dismissed as well. These individual defendants point to no specific resolution or provision of Tribal law that entitles them to act on behalf of the sovereign. However, even if the court assumes that they have acted beyond their authority, there is no relief available that would satisfy the plaintiffs. The plaintiffs seek only injunctive relief. The court cannot order the remaining individual defendants to approve a seismic permit because such an order would, in effect, be relief against the sovereign. Any other injunctive relief would be no relief at all.

III. THE UNITED STATES DEFENDANTS

Finally, the complaint against the United States defendants must also be dismissed. The United States takes the position that it is without authority to grant seismic permits. The government contends that the plaintiffs may enter the Tribal lands to perform seismic testing without any permission whatsoever from the United States, so long as their leases are valid. Given this position of the United States, there is no case or controversy involving the United States defendants.

IV. CONCLUSION.

Reduced to its essentials, the plaintiffs are complaining that the Tribe, as sovereign, is abusing its status as sovereign to obtain an unfair advantage for its status as landlord. The question then is whether the tribal court or a United States district court initially has power to hear such a claim. Under the statutes and cases as this court reads them, Congress has placed that initial determination with the tribal court. The appropriateness of that fact and that sequence results from congressional choice. This court’s recognition of that fact and sequence controls the outcome of this ease.

Accordingly, the defendants’ Motion for Summary Judgment and the defendants’ Motions to Dismiss should be granted. The complaint against all of the defendants should therefore be dismissed.

      . The request was made on or about March 26, 1982. The lease provided for a termination on February 23, 1983. However, the term of the lease would be extended so long as minerals were produced in paying quantities.

      . The plaintiffs also claim that the Tribe’s sovereign immunity does not protect it when it is engaged in a commercial, rather than a governmental, enterprise. The Supreme Court has not hesitated to apply the immunity in cases involving mineral leases. See Fidelity and Guarantee, 309 U.S. 506, 60 S.Ct. 653, 84 L.Ed. 894.

      . At least two courts have indicated that when officials act beyond the scope of tribal powers, the tribe’s immunity does not bar suit against the tribe. Snow v. Quinault Indian Nation, 709 F.2d 1319, 1321 (9th Cir.1983); Swift Transportation, Inc. v. John, 546 F.Supp. 1185, 1188 (D.Ariz.1982). Because the court finds that the Tribe had sovereign power to authorize the officials to do the acts complained of, the court does not need to reach this issue.

      . In Rainbow Resources, Inc. v. Calf Looking, 521 F.Supp. 682 (D.Mont.1981), the district court held that “In the exercise of its superior and plenary control, Congress has chosen to grant exclusive authority for the regulation, administration and supervision of oil and gas leases on lands alloted to individual Indians to the Secretary of the Interior.” Id. at 684 (relying on 25 U.S.C. §§ 396 and 396d). Rainbow Resources is inapposite here. That case involved a tribal judge's attempt to enjoin an action that a federal regulation required. In this case, there is no such direct conflict between tribal sovereignty and federal regulation. Moreover, that case involved individual allotees, not tribal lands.

      . The plaintiffs’ argument assumes that by delegating to the Secretary of the Interior the authority to promulgate rules concerning mineral leases, Congress also delegated to the Secretary the authority to waive tribal sovereignty to the extent that tribal sovereignty might conflict with the Secretary’s regulations. The Supreme Court has admonished that “a proper respect both for tribal sovereignty itself and for the plenary authority of Congress in this area cautions that we tread lightly in the absence of clear indications of legislative intent." Santa Clara, 436 U.S. at 60, 98 S.Ct. at 1678. However, because the court finds that there is no actual conflict between tribal regulation and the regulations promulgated by the Secretary of the Interior, the court need not reach this issue.

      . The plaintiffs do not claim that the Tribe's sovereignty to regulate leases has been diminished by treaty.

      . The parties vigorously dispute the issue of whether the leases included a provision that allowed the Tribe to approve or disapprove assignments. Because the resolution of this issue is not necessary to the disposition of this case, the court will not address it.

      . Allowing the Tribe to regulate its oil and gas leases is consistent with the “general federal policy of encouraging tribes to ‘revitalize their self-government’ and to assume control over their 'business and economic affairs.’” White Mountain Apache Tribe v. Bracker, 448 U.S. 136, 149, 100 S.Ct. 2578, 2586, 65 L.Ed.2d 665 (1980), quoting Mescalero Apache Tribe v. Jones, 411 U.S. 145, 151, 93 S.Ct. 1267, 1272, 36 L.Ed.2d 114 (1973).
      More recently, the Supreme Court has stated that
      both the tribes and the federal government are firmly committed to the goal of promoting tribal self-government, a goal embodied in numerous federal statutes. We have stressed that Congress’ objective of furthering tribal self-government encompasses far more than encouraging tribal management of disputes between members, but includes Congress' overriding goal of encouraging "tribal self-sufficiency and economic development.” In part as a necessary implication of this broad federal commitment, we have held that the tribes have the power to manage the use of its territory and resources by both members and non-members.

        New Mexico v. Mescalero Apache Tribe, 462 U.S. 324, 103 S.Ct. 2378, 2386-87, 76 L.Ed.2d 611 (1983), quoting Bracker, 448 U.S. at 143, 100 S.Ct. at 2583 (citations omitted).

      . For example, the resolution provides for full and complete disclosure of the terms of the assignment and for payment of a filing fee. The resolution also gives the Tribe a right of first refusal on all assignments.

      . The Preamble provides in pertinent part as follows:
      Whereas: ...
      (3) Due to the great interest in oil and gas, uranium, and other mineral resources on Tribal lands, the requests for permits of various types are numerous and frequent, and
      es It is of great importance to proper and orderly development of Tribal resources that a proper procedure be set out for processing and handling these permit requests.

      . Section 656 provides for the posting of a $5,000 bond and the payment of a small fee.


author: MELTON, District Judge.

text:
    Carl Ray SONGER, Petitioner, v. Louie L. WAINWRIGHT, Secretary, Department of Corrections, State of Florida, and Richard L. Dugger, Superintendent, Florida State Prison, Starke, Florida, Respondents.
    No. 85-14-Civ-Oc-12.
    United States District Court, M.D. Florida, Ocala Division.
    Feb. 2, 1985.

      Deval L. Patrick, New York City, and Dorean Koenig, Cooley Law School, Lansing, Mich., for petitioner.
    Peggy A. Quince, Asst. Atty. Gen. of Fla., Tampa, Fla., for respondents.
   OPINION AND ORDER DENYING SECOND PETITION FOR WRIT OF HABEAS CORPUS

MELTON, District Judge.

This cause came before the Court on Second Petition for Writ of Habeas Corpus, filed on January 31, 1985, by CARL RAY SONGER, a death-row inmate at Florida State Prison. On the same date, respondents filed their response to the petition. On February 1, 1985, the Court heard argument on all the grounds raised in the petition. After extensively reviewing the entire record herein, and after carefully considering argument of counsel for the respective parties, the Court is of the opinion that the second petition should be dismissed pursuant to Rule 9(b), Rules Governing Section 2254 Cases in the United States District Courts.

PROCEDURAL HISTORY

On December 23, 1973, petitioner was charged with the first-degree murder of Florida Highway Patrolman Ronald Smith on a rural road in Citrus County, Florida. The trial was transferred to Osceola County, Florida. The petitioner was convicted of first-degree murder, and judgment of conviction was entered on February 27, 1974. On the same date, the jury returned an advisory sentence recommending the death penalty, and the trial judge imposed the sentence of death. The Supreme Court of Florida affirmed petitioner’s judgment and sentence in Songer v. State, 322 So.2d 481 (Fla.1975). The Supreme Court of the United States, however, in Songer v. Florida, 430 U.S. 952, 97 S.Ct. 1594, 51 L.Ed.2d 81 (1977), vacated the sentence and remanded for reconsideration in light of the ruling in Gardner v. Florida, 430 U.S. 349, 97 S.Ct. 1197, 51 L.Ed.2d 393 (1977). On remand for resentencing, the trial judge reimposed the death sentence on August 17, 1977. The Supreme Court of Florida again affirmed the sentence of death in Songer v. State, 365 So.2d 696 (Fla.1978), and the United States Supreme Court denied certiorari in Songer v. Florida, 441 U.S. 956, 99 S.Ct. 2185, 60 L.Ed.2d 1060 (1979).

In September 1980, the Governor of Florida signed a death warrant ordering petitioner’s execution during the week commencing October 3, 1980. Pursuant to Rule 3.850, Fla.R.Crim.P., petitioner filed a Motion to Vacate Judgment and Death Sentence on September 24, 1980 [hereinafter first 3.850 motion]. After a hearing [hereinafter first 3.850 hearing], the trial judge denied petitioner’s first 3.850 motion in an order entered September 30, 1980 [hereinafter first 3.850 order]. Petitioner’s execution, however, was stayed by the Supreme Court of Florida on September 26, 1980, upon the filing by petitioner and 122 other death-row inmates of an application for extraordinary relief and petition for writ of habeas corpus, which was subsequently denied in Brown v. Wainwright, 392 So.2d 1327 (Fla.), cert. denied, 454 U.S. 1000, 102 S.Ct. 542, 70 L.Ed.2d 407 (1981).

The trial court’s denial of petitioner’s first 3.850 motion was affirmed by the Supreme Court of Florida on September 9, 1982. Songer v. State, 419 So.2d 1044 (Fla.1982). On November 5, 1982, the Governor of Florida signed a second death warrant and petitioner’s execution was scheduled for December 7, 1982. On November 22, 1982, petitioner filed in the Supreme Court of Florida a petition for writ of habeas corpus, which was denied in Songer v. Wainwright, 423 So.2d 355 (Fla.1982).

On December 1, 1982, petitioner filed in this Court his first petition for writ of habeas corpus [hereinafter first petition] and an application for stay of execution. On December 3, 1982, this Court granted a stay of execution pursuant to the mandate of the United States Court of Appeals for the Eleventh Circuit [hereinafter Eleventh Circuit] in Goode v. Wainwright, 670 F.2d 941 (11th Cir.1982). Subsequent to the resolution of the issue underlying the order of stay, see Ford v. Strickland, 696 F.2d 804 (11th Cir.1983) (en banc), this Court dissolved its stay entered on December 3, 1982, and denied relief following a hearing. Songer v. Wainwright, 571 F.Supp. 1384 (M.D.Fla.1983). On May 18, 1984, the Eleventh Circuit affirmed this Court’s denial of the first petition. Songer v. Wainwright, 733 F.2d 788 (11th Cir.1984). On January 7, 1985, the United States Supreme Court denied certiorari. Songer v. Wainwright, — U.S. -, 105 S.Ct. 817, 83 L.Ed.2d 809 (1985). On January 24, 1985, petitioner filed with the Eleventh Circuit a motion to recall the mandate and application for stay of execution, which motion and application were denied on January 29, 1985. Songer v. Wainwright, 755 F.2d 1394 (11th Cir.1985) (as amended by order of Feb. 1, 1985). 755 F.2d 1395.

On January 10, 1985, the Governor of Florida signed the third death warrant ordering petitioner’s execution during the week commencing at noon on January 30, 1985, and ending on February 6, 1985. On January 24, 1985, petitioner filed in the Circuit Court of the Fifth Judicial Circuit, in and for Citrus County, Florida, the following three motions: Motion Pursuant to Fla.R.Crim.P. 3.850 for Post-Conviction Relief and to Vacate Sentence [hereinafter second 3.850 motion]; Motion for Evidentiary Hearing; and Application for Stay of Execution. An evidentiary hearing was held before Florida Circuit Court Judge John W. Booth on petitioner’s second 3.850 motion and application for stay of execution on January 25, 1985 [hereinafter second 3.850 hearing]. Both motions were denied in an order entered on January 27, 1985 [hereinafter second 3.850 order].

On January 28, 1985, petitioner filed a notice of appeal of the second 3.850 order with the Supreme Court of Florida. On January 30, 1985, the Supreme Court of Florida heard argument of counsel on the appeal from the second 3.850 order. On January 31, 1985, the Supreme Court of Florida affirmed the second 3.850 order. Songer v. Wainwright, 463 So.2d 229 (Fla.1985).

Petitioner filed the instant petition [hereinafter second petition] with this Court at 10:30 a.m. on January 31, 1985, together with a motion for leave to proceed in for-ma pauperis, and an emergency application for stay of execution. Petitioner filed a supporting memorandum on February 1, 1985. The Court heard argument of counsel and received the transcript of the second 3.850 hearing into evidence on February 1, 1985.

GROUNDS FOR RELIEF

In this second petition for federal habeas corpus, petitioner alleges four interrelated grounds for relief:

1. That petitioner was precluded from introducing evidence of nonstatutory mitigating factors in violation of the sixth, eighth, and fourteenth amendments to the United States Constitution;
2. That petitioner was denied effective assistance of counsel at both the sentencing and resentencing proceedings in violation of the sixth, eighth, and fourteenth amendments to the United States Constitution;
3. That petitioner’s advisory jury was instructed to limit its deliberations on mitigating circumstances to those enumerated in the statute in violation of the eighth and fourteenth amendments to the United States Constitution; and
4. That the trial court failed to explain mitigating and aggravating circumstances and the option to recommend against the death penalty in violation of the eighth and fourteenth amendments to the United States Constitution.

The four claims are different facets of the same alleged problem, namely that no evidence of nonstatutory mitigating factors was introduced at petitioner's sentencing or resentencing proceedings. Petitioner contends that the absence of nonstatutory mitigating evidence deprived petitioner of a constitutional penalty proceeding in violation of Lockett v. Ohio, 438 U.S. 586, 98 S.Ct. 2954, 57 L.Ed.2d 973 (1978), and Eddings v. Oklahoma, 455 U.S. 104, 102 S.Ct. 869, 71 L.Ed.2d 1 (1982).

Respondents contend that this petition is a “successive petition” and should therefore be dismissed pursuant to Rule 9(b), Rules Governing Section 2254 Cases in the United States District Courts [hereinafter Rule 9(b)]. Rule 9(b) provides as follows:

(b) Successive petitions. A second or successive petition may be dismissed if the judge finds that it fails to allege new or different grounds for relief and the prior determination was on the merits or, if new and different grounds are alleged, the judge finds that the failure of the petitioner to assert those grounds in a prior petition constituted an abuse of the writ.

Rule 9(b) codified Sanders v. United States, 373 U.S. 1, 83 S.Ct. 1068, 10 L.Ed.2d 148 (1963), in which the Supreme Court recognized that while res judicata is inapplicable to habeas corpus proceedings, federal courts are not powerless to protect themselves from harassing and repetitive petitions. Id. at 7, 83 S.Ct. at 1072. Sanders set forth two requirements that must be satisfied before a court may dismiss issues in a successive federal habeas corpus petition pursuant to Rule 9(b): (1) the issues have been adjudicated on the merits in a prior petition and (2) the ends of justice would not be served by a redetermination of the issues. Id. at 16-17, 83 S.Ct. at 1077-78.

Petitioner and respondents in the instant petition have agreed that all four issues raised in the second petition were raised in the first petition. Transcript of Second Petition Hearing at 14, 42-43. Having been raised in the first petition, all four issues have been adjudicated on the merits after hearings both in this Court on the first petition and before the trial court on petitioner’s first 3.850 motion. Accordingly, this Court’s determination as to whether the four issues in the second petition should be dismissed is limited to a determination of whether the ends of justice would be served by a redetermination of the issues.

The Court in Sanders and the Eleventh Circuit have provided at least three examples of situations in which the ends of justice would be served by redetermining issues presented in a prior petition. In the first instance, a petitioner may gain a redetermination where factual issues are involved by “showing that the evidentiary hearing on the prior application was not full and fair.” Sanders, 373 U.S. at 16-17, 83 S.Ct. at 1077-78. Second, where questions of law are involved, petitioner “may be entitled to a new hearing upon showing an intervening change in the law or some other justification for having failed to raise a crucial point or argument in the prior application.” Id. at 17, 83 S.Ct. at 1078. Third, petitioner may be entitled to a redetermination “when the denial of the first rested on a court’s plain errors of law.” Bass v. Wainwright, 675 F.2d 1204, 1207 (11th Cir.1982) (quoting Cancino v. Craven, 467 F.2d 1243, 1246 (9th Cir.1972)).

Petitioner advances an argument as to each of the three situations in which the ends of justice would require a redetermination of the issues. Petitioner first argues that he should be accorded a redetermination of the issues because the following alleged facts were not before the Court in the first petition and hearing: (1) the affidavit and testimony of juror Lisa Crews [hereinafter Crews] stating that the judge had told the jurors that they could not consider anything other than the statutory aggravating and mitigating circumstances listed on the form; (2) the affidavit and testimony of petitioner’s trial attorney, C. John Coniglio [hereinafter Coniglio] as to his belief that the Florida sentencing statute precluded the introduction of nonstatutory mitigating evidence; and (3) the second 3.850 hearing and order in which the trial judge expressed his understanding of whether nonstatutory mitigating evidence could have been introduced at the time of petitioner’s penalty phase proceeding. Petitioner is not entitled, however, to a redetermination of the issues on the basis of this newly-proffered testimony because petitioner has not shown that the evidentiary hearing on the prior petition was not full and fair.

As to the first factual allegation, the testimony of juror Crews could not have been considered during the first petition proceeding and cannot be considered in the instant petition. Under both federal and state law, a juror cannot testify as to matters which were inherent in the deliberative process and which led to a verdict. Fed.R.Evid. 606(b); Fla.Stat. § 90.607(2)(b) (1983). Thus petitioner was not and is not now entitled to introduce this testimony at a hearing on the allegation.

As to Coniglio’s newly-proffered testimony, Coniglio testified at length at the first 3.850 hearing on his and petitioner’s approach to the presentation of mitigating evidence at the sentencing hearing. Transcript of First 3.850 Hearing at 68-70, 72-76. In adjudicating this issue in the first petition, this Court also had before it and considered the transcript of the sentencing proceedings. At the sentencing hearing, the trial court received all the mitigating evidence which Coniglio offered. Furthermore, Coniglio was subpoenaed for the first petition hearing, but was released by counsel prior to testifying. Transcript of First Petition Hearing at 72-73. In the same way that a court should be constrained from using hindsight to evaluate a counsel’s performance, counsel himself should not be given repeated opportunities to rethink his performance in light of what he would do more than a decade later. Accordingly, the Court is of the opinion that Coniglio’s newly-proffered testimony does not justify a redetermination of issues adjudicated in the first petition, which adjudication was based on testimony and evidence proffered in full and fair hearings on the first 3.850 motion and the first petition.

Finally, the fairness of the first petition hearing is not undercut by the trial court’s statement that at the time of the sentencing hearing he interpreted the Florida statute to prohibit introduction of non-statutory mitigating evidence. The trial court’s interpretation does not add significantly to the evidence before this Court at the hearing on the first petition. Regardless of the trial court’s interpretation, the issue of whether the jury was properly instructed at the sentencing hearing was raised and adjudicated in the first petition. Songer, 571 F.Supp. at 1398-99. Furthermore, the trial court did not in fact exclude any proffered evidence at the sentencing hearing; the trial court’s interpretation of the Florida statute did not therefore taint the sentencing proceedings. Consequently, the absence of information as to the trial court’s interpretation of the Florida statute did not deprive petitioner of a full and fair hearing on the first petition.

Petitioner secondly asserts that he should be granted a new hearing and a redetermination of the issues because of intervening change in the law, citing to the Eleventh Circuit’s pending en banc consideration of Hitchcock v. Wainwright, 745 F.2d 1332 (11th Cir.1984), reh’g granted en banc, No. 83-3578 (11th Cir. Jan. 8, 1985). This Court is of the opinion that it is precluded from considering Hitchcock as an intervening change in the law because of the Eleventh Circuit’s order of January 29, 1985, which order denied Petitioner-Appellant’s Motion to Recall the Mandate and Application for Stay of Execution. The order, as amended by order of February 1, 1985, reads in pertinent part as follows:

To the extent that Hitchcock v. Wainwright, supra, may focus on the effect of Cooper v. State, 336 So.2d 1133 (Fla.1976), on sentencing in Florida prior to the decision in Songer v. State, 365 So.2d 696 (Fla.1978), that issue is not present in this case because Songer was sentenced two years before the Cooper decision, in 1974. The resentencing in 1977 was solely for the purpose of dealing with the Gardner issue by the trial judge, and was not a jury resentencing.

This Court does not find a basis to apply Hitchcock to the instant case, outside the limitations of the Eleventh Circuit’s order, thereby precluding petitioner from succeeding on his argument that the issues should be redetermined because of intervening law.

Finally, petitioner contended during oral argument that this Court should determine that petitioner is entitled to a redetermination because no court has squarely addressed this issue. Petitioner contends that no court to date, except for the trial court in the second 3.850 order, has ruled on the applicability of Lockett to this confluence of facts. Transcript of Second Petition Hearing at 52. Petitioner argues that the courts have instead ruled only on the “facial constitutionality or validity of the Florida statutes.” Id. at 57. Petitioner’s contention is without merit. The issue of a Lockett violation was raised and adjudicated in the first petition after a full and fair hearing. Songer, 571 F.Supp. at 1393-97, 1398-1400; see also Songer v. Wainwright, — U.S. -, 105 S.Ct. 817, 83 L.Ed.2d 809 (1985) (Brennan, Marshall, JJ., dissenting).

Having concluded that the ends of justice would not be served by a redetermination of the issues raised in this petition, the Court must next determine whether to issue a certificate of probable cause to appeal, pursuant to 28 U.S.C. § 2253 (1982). The United States Supreme Court recently set forth the standard for granting a certificate of probable cause in Barefoot v. Estelle, 463 U.S. 880, 103 S.Ct. 3383, 77 L.Ed.2d 1090 (1983):

In requiring a “question of some substance,” or a “substantial showing of the denial of [a] federal right,” obviously the petitioner need not show that he should prevail on the merits. He has already failed in that endeavor. Rather, he must demonstrate that the issues are debatable among jurists of reason; that a court could resolve the issues [in a different manner]; or that the questions are “adequate to deserve encouragement to proceed further.”

Id. at 3394 n. 4 (quoting Gordon v. Willis, 516 F.Supp. 911, 913 (N.D.Ga.1980)).

As previously mentioned, this Court must follow the Eleventh Circuit’s order of January 29, 1985, as amended on February 1, 1985, which denied petitioner’s motion to recall the mandate and grant a stay of execution pending the disposition of Hitchcock. Although this Court has not found a basis to apply Hitchcock to the instant case, outside the limitations of the Eleventh Circuit’s order, the undersigned concludes that this Court’s determination of the applicability of Hitchcock may be debatable among jurists. Since this is a capital case, petitioner should not be foreclosed from urging such contention on appeal from this opinion and order. The Court is of the opinion, therefore, that a certificate of probable cause should be granted. Accordingly, it is

ORDERED AND ADJUDGED:

1. That the Petition for Writ of Habeas Corpus, filed herein on January 31, 1985, is hereby denied;

2. That the Application for Stay of Execution, filed herein on January 31, 1985, is hereby denied;

3. That petitioner is hereby granted leave to appeal in forma pauperis pursuant to 28 U.S.C. § 1915 (1982);

4. That a certificate of probable cause to appeal shall be issued, pursuant to 28 U.S.C. § 2253 (1982); and

5. That the Clerk of the Court shall enter Judgment dismissing this action.