author: PEREZ-GIMENEZ, District Judge.

text:
    Dionisio MARTINEZ and Maria Julia Davila, Plaintiffs v. SEA LAND SERVICE, INC., Defendant.
    Civ. No. 83-2904(PG).
    United States District Court, D. Puerto Rico.
    Sept. 10, 1984.
   OPINION AND ORDER

PEREZ-GIMENEZ, District Judge.

Present before the Court is plaintiff’s motion to alter or amend our Opinion and Order of August 15, 1984, 589 F.Supp. 841, pursuant to Rule 59(e) of the Federal Rules of Civil Procedure, and an Addendum to said motion. Defendant filed a motion for an extension of time to file an opposition thereto, which will become moot after this Opinion and Order is issued.

Plaintiff states in his motion that to defeat the summary judgment filed by defendant he has to show that the soda cartons with the plastic sleeve are cargo containers to which the vessel’s warranty of seaworthiness extends. Because he failed to do so, we entered summary judgment in favor of defendant.

Plaintiff’s version of the accident is that he hurt himself when he was carrying two boxes of soft drinks from main deck to slop chest. The two boxes or cartons of soft drinks carried by plaintiff were not goods transported by a carrier for a price or compensation.

The warranty of seaworthiness is a warranty of fitness for duty. Smith v. American Mail Line, 525 F.2d 1148 (9th Cir.1975). This warranty extends to cargo containers. Gutierrez v. Waterman SS Corp., 373 U.S. 206, 83 S.Ct. 1185, 10 L.Ed.2d 297 (1963). However, the cartons in the case at bar were not loaded into containers designed to perform a function essential to the carriage of goods and which for that reason are considered appropriate subjects of a warranty of fitness for the function for which they are designed. Gutiérrez v. Waterman SS Corp., supra. See, e.g., Ohoud Establishment, etc. v. TriState Contracting, 523 F.Supp. 249 (D.N.J.1981) (soda cans packed on trays covered with “shrink wrap” sent to National Brands warehouse, where the trays were handpacked into twenty-foot containers and sealed for the ocean carriage to the Middle East); Croft & Scully Co. v. M/V Skulptor Vuchetich, 664 F.2d 1277 (5th Cir.1982) (cases of soft drinks loaded into steel containers provided by a shipping company for the ocean carriage to the middle eastern country of Kuwait).

WHEREFORE, in view of the above the Court ORDERS that plaintiffs motion to alter or amend the Opinion and Order filed on August 24, 1984, be and is hereby DENIED; and FURTHER ORDERS that defendant’s motion for extension of time to file an opposition is MOOT.

IT IS SO ORDERED.

      . A "slop chest” is a commissary each vessel is required to máintain to provide members of the crew with clothing, blankets, seamen's gear, tobacco and other incidentals. Streiffer v. Seafarers Sea Chest Corporation, 162 F.Supp. 602 (E.D.Louis.1958); Smith v. U.S., 66 F.Supp. 933 (D.C.Md.1946), aff'd, 159 F.2d 247, cert. denied, 331 U.S. 849, 67 S.Ct. 1735, 91 L.Ed. 1858; 46 U.S.C.A. § 11103; Martin J. Norris, 1 The Law of Seamen, § 168 (3d ed.).

      . No bill of lading appears from the evidence on record describing the contents of a container.


source: Caselaw Access Project

author: KRAM, District Judge.

license: Public Domain

text:
    SECURITIES AND EXCHANGE COMMISSION, Plaintiff, v. Christos NETELKOS, a/k/a Christopher J. Nickos, Arno Arndt a/k/a Ernst Arndt, Charles Haig Gamarekian a/k/a Charles Haig, Falcon Sciences, Inc., Paul F. Donnelly, Trust and Investment, A.G., Robert I. Goodman, Defendants.
    No. 84 Civ. 0335 (SWK).
    United States District Court, S.D. New York.
    Sept. 12, 1984.
    Anne C. Flannery, Associate Regional Administrator, New York City, for plaintiff S.E.C.; Margaret M. McQueeney, Seth T. Taube, Arthur G. Jakoby, New York City, of counsel.
    Frohling & Hanley, Newark, N.J., for defendant Falcon Sciences, Inc.; John B.M. Frohling, Newark, N.J., of counsel.
   ORDER

KRAM, District Judge.

Plaintiff, the Securities and Exchange Commission, (“SEC”) has moved for a preliminary injunction against the defendant, Falcon Sciences, Inc. (“Falcon”), for alleged violations of sections 5(a) and 5(c) of the Securities Act of 1933 (“’33 Act”), 15 U.S.C. §§ 77e(a) and (c); section 17 of the ’33 Act, 15 U.S.C. § 77q, and section 10(b) of the Securities Exchange Act of 1934 (“’34 Act”), 15 U.S.C. § 78j(b); section 12(g) of the ’34 Act, 15 U.S.C. § 78l (g); and sections 17A(c) and 17A(d) of the ’34 Act, 15 U.S.C. §§ 78q-1(c) and (d). Initially, Falcon consented to the entry of the injunctions sought but subsequently that consent was withdrawn. After the consent was withdrawn, the Court held a hearing (the “Falcon hearing”), at which time the prior proceedings in this case were made part of the record.

On August 3, 1984, 592 F.Supp. 906, this Court issued a preliminary injunction against two of the individual defendants in this case, Christos Netelkos and Charles Gamarekian. Those preliminary injunctions were accompanied by lengthy find-' ings of fact and conclusions of law, and a discussion of the activities which led to the granting of those injunctions. That Opinion and Order is hereby expressly adopted in full and is made part of this Order.

The preliminary injunctions granted as to Netelkos and Gamarekian were based largely on their activities as a controlling persons of Falcon. Consequently, the findings of fact made by this Court apply with equal force to Falcon except insofar as they relate to actions completely beyond Falcon’s control. Specifically on the basis of that earlier opinion, I find that the SEC has made out a prima facie case that Falcon failed to disclose the roles of Gamarekian and Netelkos in the operation and management of Falcon; failed to disclose their respective histories of criminal and civil violations of the federal securities laws; misstated the nature and origin of its income; failed to make periodic filings with the SEC, as required by the federal securities laws; failed to register as a stock transfer agent; failed to keep and maintain required stock transfer records; and failed to register Falcon securities issued or transferred by Falcon, all in violation of the aforementioned provisions of the ’33 and ’34 Acts.

Furthermore, the evidence of the violations listed above was supplemented at the Falcon hearing. At that hearing, the SEC further demonstrated at least a prima facie case that Falcon had: overstated the amount of its revenues by almost 100% [Hearing Transcript (“TR”) pp. 843, 847-8]; failed to disclose any information about the previous acquisition of an oil company from a Mrs. Patricia Kahan, the subsequent agreement to pay Mrs. Kahan with (non-existent) Falcon preferred stock, or the litigation which resulted from Falcon’s alleged breach of those agreements. [TR. pp. 793-800, 983]; failed to disclose the details of the ownership and leasing of the oil well stimulation trucks [TR. pp. 740-743]; and failed to disclose the sale (later rescinded) of certain oil leases in Texas [TR. pp. 866-68, 982]. All these failures to disclose constitute further breaches of section 10(b) of the ’34 Act, 15 U.S.C. § 78j(b), and Rule 10b-5 promulgated thereunder, 17 C.F.R. § 240.10b-5.

In light of these extensive violations of the federal securities laws, and the fact that Falcon has given only token cooperation to the ongoing SEC investigation, continues to do business with the enjoined individual defendants and made only feeble attempts at demonstrating that there was even a good faith basis for its previous behavior, I further find that there is a serious likelihood that Falcon will continue to violate the federal securities laws. Securities and Exchange Commission v. Commonwealth Chemical Securities, Inc., 574 F.2d 90, 98-100 (2d Cir.1978). Particularly serious in this regard is the fact that Falcon continues to deal with other defendants in this case, defendants whose culpability appears to exceed that of Falcon. In addition, the complete absence of any attempt at justification for the violations leads me to conclude that an affirmative safeguard is required to protect the investing public. Therefore, it is hereby

ORDERED that Falcon Sciences, Inc. is PRELIMINARY ENJOINED from violating the federal securities laws, specifically including, but not limited to, sections 5(a) and 5(c) of the Securities Act of 1933, 15 U.S.C. §§ 77e, 77e(c) and 77e(a), and sections 10(b), 17A(c) and 17A(d) of the Securities Exchange Act, 15 U.S.C. §§ 78j(b), 78q-1(c), and 78q-1(d).

SO ORDERED.


author: LAFFITTE, District Judge.

text:
    Hon. Jose J. Dapena THOMPSON, Mayor of Ponce, et al., Plaintiffs, v. Hon. Severo Colberg RAMIREZ, Speaker of the House of Representatives of Puerto Rico, et al., Defendants.
    Civ. No. 84-2329 HL.
    United States District Court, D. Puerto Rico.
    Sept. 20, 1984.
    See also, D.C., 597 F.Supp. 727; D.C., 597 F.Supp. 730.
    Antonio Cordova González, San Juan, P.R., for plaintiffs.
    Marcos A. Ramírez, Hato Rey, P.R., for defendants.
   OPINION AND ORDER

LAFFITTE, District Judge.

A verified complaint was filed in the above captioned case on September 18, 1984, and a form of order for a temporary restraining order was provided.

The Temporary Restraining Order is hereby DENIED, for failure to comply with Federal Rule of Civil Procedure 65.

There has been no certification to this Court in writing, of the efforts, if any, of notification to adverse parties. Without such certification, ex parte relief is improper. The requirements of Rule 65, quoted in part at footnote 1, are not mere technicalities, but establish minimum due process. These requirements must be strictly complied with to obtain ex parte relief. See, Baines v. City of Danville, VA., 337 F.2d 579 (4th Cir.1964), cert. denied, 381 U.S. 939, 85 S.Ct. 1772, 14 L.Ed.2d 702 (1965).

Furthermore, it does not appear from the specific facts alleged in the verified complaint that irreparable injury, loss, or damage will result. See, Austin v. Altman, 332 F.2d 273 (2d Cir.1964), failure to show irreparable harm is grounds to deny ex parte action.

WHEREFORE, the motion for temporary restraining order is hereby DENIED without prejudice.

      . Rule 65(b) reads:
      "Temporary Restraining Order; Notice; Hearing; Duration.
      "A temporary restraining order may be granted without written or oral notice to the adverse party or his attorney only if (1) it clearly appears from specific facts shown by affidavit or by verified complaint that immediate and irreparable injury, loss, or damage will result to the applicant before the adverse party or his attorney can be heard in opposition, and (2) the applicant’s attorney certifies to the court in writing the efforts, if any, which have been made to give the notice and the reasons supporting his claim that notice should not be required.”

      . The verified complaint does not even allege the dates of the subpoena in question, and therefore, does not place the Court in a position to ascertain the harm to plaintiffs.


text:
    Hon. Jose J. Dapena THOMPSON, Mayor of Ponce, et al., Plaintiffs, v. Hon. Severo Colberg RAMIREZ, Speaker of the House of Representatives of Puerto Rico, et al., Defendants.
    Civ. No. 84-2329 HL.
    United States District Court, D. Puerto Rico.
    Sept. 28, 1984.
   OPINION AND ORDER

LAFFITTE, District Judge.

FACTS.

Plaintiffs José Dapena Thompson, Mayor of the Municipality of Ponce, the Assembly of the Municipality of Ponce, and the Municipality’s employees and officials, under investigation by the defendants, have brought this action in federal court asking for both declaratory and injunctive relief against defendants, as alleged in their Verified Complaint filed September 18, 1984.

Defendants are Hon. Severo Colberg, Speaker of the House of Representatives, Hon. José E. Arrarás, Hon. Rony Jarabo, and other members of the Special Committee to Investigate all the Transactions carried out by the Shearson-American Express Co. with Governmental Instrumentalities, Public Corporations, Municipalities, and Private Entities in Puerto Rico. Through Attorney Ramírez Lavandero, defendants argued at the hearing held on September 27, 1984, that (1) this Court has no jurisdiction to hear this case, (2) that defendants enjoy absolute legislative immunity from this type of action.

The following facts were basically derived from plaintiffs’ verified complaint and exhibits attached thereto. On April 9, 1984, the Puerto Rico House of Representatives approved House Resolution Number 921, creating a Special Committee to Investigate all the Transactions Carried out by Shearson-American Express Co. with Governmental Instrumentalities, Public Corporations, Municipalities, and Private Entities in Puerto Rico (Exhibit A attached to Verified Complaint). This Resolution of March 9, 1984, published on April 9, 1984, was to last three months. (Resolution 921, paragraph 4.)

On June 25, 1984, codefendant Colberg, the Speaker of the House, unilaterally extended the mandate of House Resolution 921, to continue until the last day of this legislative session (Exhibit B, Verified Complaint).

The Special Committee, composed of defendants herein, served subpoenas ad testificandum and duces tecum upon plaintiffs during the month of August, 1984. The subpoenas compelled testimony and production of documents under penalty of civil and criminal contempt (Exhibit C, Verified Complaint).

BASIS FOR CLAIM

Based on the foregoing, plaintiffs assert two claims for relief. Plaintiffs request the Court to declare, inter alia, whether the Speaker of the House, in the absence of a House resolution, can unilaterally, extend the deadline of a previous House Resolution, and whether such unilateral extension may allow for subpoenas under power of contempt.

Plaintiffs also request the Court to issue a preliminary and permanent injunction pursuant to 42 U.S.C. § 1983, enjoining defendants from enforcing the subpoenas issued against plaintiffs. Plaintiffs assert such subpoenas violate their rights under the Fourth and Fourteenth Amendments of the United States Constitution.

FEDERAL QUESTION.

Defendants contend that the complaint does not raise a federal question and should be dismissed accordingly. Plaintiffs predicate their complaint on Fourth and Fourteenth Amendments to the Constitution of the United States, and on 42 U.S.C. § 1983, the Civil Rights Statute. It is plain that the federal law that gives rise to a federal question must be an element of plaintiffs’ complaint. The complaint raises the issue that a subpoena issued to plaintiff Dapena Thompson, under penalty of contempt, is null and void because it was issued by a legislative committee which functions had expired, and was not lawfully renewed by a House resolution; that the unilateral extension of the committee’s functions by the Speaker'of the House, is ultra vires and without legal significance. Plaintiff Dapena Thompson alleges that subjecting him to contempt proceedings, as admonished by the subpoena, violates his constitutional rights under the Fourth and Fourteenth Amendments to the United States Constitution.

It must be said that whether there is a claim presenting a federal question, and whether that claim is well founded when considered on its merits, are two separate and distinct questions. Junior Chamber of Commerce of Rochester, Inc. v. U.S. Jaycees, Tulsa, Oklahoma, 495 F.2d 883 (10th Cir.1974). That is, jurisdiction is not lost because the courtf,ultimately concludes that the federal claim is without merit.

“But if the plaintiff really makes a substantial claim under an act of Congress, there is jurisdiction whether the claim ultimately be held good or bad.” The Fair v. Kohler Die & Specialty Co., 228 U.S. 22, 33 S.Ct. 410, 57 L.Ed. 716 (1913).

Plaintiff Dapena Thompson must, however, overcome the threshold obstacle of legislative immunity raised by defendants. It is well settled law that state legislators, when acting “in the sphere of legitimate legislative activity” enjoy a federal common law absolute immunity from suit under 42 U.S.C. § 1983. Supreme Court of Virginia v. Consumers Union, 446 U.S. 719, 731-32, 100 S.Ct. 1967, 1974, 64 L.Ed.2d 641 (1980); Tenney v. Brand Nove, 341 U.S. 367, 71 S.Ct. 783, 95 L.Ed. 1019 (1951). What constitutes a “legitimate sphere of legislative activity” subject to immunity in a Section 1983 suit is a matter of federal law for federal courts to decide. Colon Berrios v. Hernandez Agosto, 716 F.2d 85 (1st Cir.1983); Agromayor v. Colberg, 738 F.2d 55 (1st Cir.1984).

In the instant case, the answer to the aforesaid question hinges upon an interpretation of Section 11, Rule III of the Regulations of the House of Representatives of the Commonwealth, as well as on the Constitution of the Commonwealth of Puerto Rico. The Puerto Rico Supreme Court has not authoritatively ruled on the powers and faculties of the Speaker of the House to extend the time period of the special House Committee without a House resolution. We note that in Hernandez Agosto v. Ortiz Montes, DPR, 84 JTS 64 (June 29, 1984), the Puerto Rico Supreme Court, ruled that legislative committees may continue exercising their functions beyond the close of the regular session on April 30, 1984, because the legislative assembly is a continuous body during the four-year term. However, in the ORTIZ MONTES case there was a valid resolution approved by the Senate, extending the time for investigation by the Committee. Likewise, in Colon Berrios v. Hernandez Agosto, supra, the Court of Appeals emphasized that:

“It seems clear that the holding of these hearings in public and the gathering of the evidence needed fell within the legitimate sphere of legislative activity. The hearings were properly authorized by Puerto Rico Senate Resolution 91 . . .”

The constitutional immunity for Congressmen is based chiefly upon the separation of powers. As said immunity applies to state and Commonwealth legislators, principles of comity and federalism must also be considered.

Accordingly, because the resolution of the constitutional question raised before this Court turns on issues of Puerto Rico law, this Court shall abstain. Abstention is appropriate when there are “unsettled questions of state law.” Harris County Commissioner Court v. Moore, 420 U.S. 77, 95 S.Ct. 870, 43 L.Ed.2d 32 (1975); Railroad Commission v. Pullman Co., 312 U.S. 496, 61 S.Ct. 643, 85 L.Ed. 971 (1941); Colon Gonzalez v. Diaz Gonzalez, 536 F.2d 453 (1st Cir.1976).

The declaratory action turns on a question of Puerto Rico law, as to which we have found no controlling precedent in the decisions of the Supreme Court of Puerto Rico, no authoritative decisions of other high courts dealing with similar provisions, nor any clear guidance in the relevant commentaries. Hence, on our own motion, we shall certify the question of law presented by the declaratory action before us, to the Supreme Court of Puerto Rico, Rule 27, 4 LPRA App. I-A, 422-24 (1978). See, In re Torruellas-Serralles, 684 F.2d 170 (1st Cir.1982).

The Court shall refrain from acting on the merits of plaintiffs’ Section 1983 action, pending the resolution of declaratory action certified to the Supreme Court as stated above. Therefore, the Court shall not issue a Preliminary Injunction under 42 U.S.C. § 1983. However, interim temporary relief to do justice to both parties, and to preserve the issues for adjudication, is appropriate and consistent with abstention. Romany v. Colegio De Abogados De P.R., 742 F.2d 32 (1st Cir.1984); Harrison v. NAACP, 360 U.S. 167, 179, 79 S.Ct. 1025, 1031, 3 L.Ed.2d 1152 (1959); Catrone v. Massachusetts State Racing Com’n., 535 F.2d 669, 672 (1st Cir.1976).

Therefore, the Court shall stay any action on the plaintiffs’ Section 1983 action, but shall issue a temporary injunction, enjoining the defendants from enforcing the subpoenas in issue herein. Such injunction shall be in force and effect pending the outcome of the Certification to the Supreme Court. Following the resolution by the Supreme Court, the parties shall move this Court for further action consistent therewith.

WHEREFORE, defendants are hereby ORDERED to refrain from enforcing any subpoena served upon the plaintiffs herein.

It is further ORDERED that this case be stayed, pending resolution of Certification to the Supreme Court of Puerto Rico.

The Clerk is instructed to Certify to the Supreme Court of Puerto Rico the Question of Law to be provided by this Court pursuant to 4 LPRA App. I-A, Rule 27.

IT IS SO ORDERED.

CERTIFICATION

This case hinges on a question of Puerto Rico law, as to which there is no controlling precedent in the decisions of the Supreme Court of Puerto Rico. Hence, sua sponte this Court certifies the question of law to the Supreme Court of Puerto Rico, pursuant to 32 LPRA App. III R. 53.1, and 4 App. I-A, 449-50 (1978).

The facts underlying the controversy appears in the Opinion and Order of this Court of even date. Accordingly, this Court submits for certification to the Supreme Court of Puerto Rico the following question of law:

The Puerto Rico House of Representatives, having approved Resolution 921 on April 9, 1984, creating a Special Committee to investigate and report within three months on the activities of ShearsonAmerican Express Co. with the Municipality of Ponce and others, may the Speaker of the House under the laws and Constitution of Puerto Rico, and pursuant to Section 11 of Rule III of the House Regulations, unilaterally extend that deadline to the end of the legislative session? San Juan, Puerto Rico, September 28, 1984.

      . See Hernández Agosto v. Ortiz Montes, DPR, 84 JTS 64 (June 29, 1984), in which the Supreme Court of Puerto Rico held that investigative committees could'extend past the 30 April Recess of the House, and continue until new members occupy seats in January 1985 after the following general election. P.R. Const. Art. 3 Section I and X.

      . During oral argument, counsel for defendants brought the abstention issue.


text:
    Hon. Jose J. Dapena THOMPSON, Mayor of Ponce, et al., Plaintiffs, v. Hon. Severo Colberg RAMIREZ, Speaker of the House of Representatives of Puerto Rico, et al., Defendants.
    Civil No. 84-2329 HL.
    United States District Court, D. Puerto Rico.
    Oct. 25, 1984.
    See also D.C., 597 F.Supp. 726.
   OPINION AND ORDER

LAFFITTE, District Judge.

Present before this Court is defendants’ Motion to Dismiss this action, and to Vacate Injunction. Plaintiffs have vigorously opposed this motion. The Court entered a temporary injunction after a hearing on September 27, 1984. The order refrained defendants from enforcing any subpoenas against plaintiffs, pending the question of state law, which this Court then certified to the Supreme Court of Puerto Rico on September 28, 1984. Certification was made through certified mail on October 1, 1984, by the Clerk of this Court. On October 8, 1984, the Supreme Court, without the benefit of a record and without hearing the parties, issued an opinion, per curiam, declining to exercise its discretion to answer the question certified.

On October 9, 1984, defendants filed their motion to dismiss and vacate temporary injunction, with briefs in support thereof. The facts underlying this matter are set forth in our Opinion and Order filed on September 29, 1984, 597 F.Supp. 727 (D.C.P.R.1984), and need not be reproduced again.

CERTIFICATION.

The Supreme Court, in its per curiam order of October 8, 1984, mentions the following three factors that it will consider before exercising its discretion to answer a certified question: (1) the probability of success on the merits of the federal claim; (2) whether the question of law certified is novel, and (3) whether certification would delay the matter to the detriment of both the public interest and interests of the parties to the lawsuit.

The Supreme Court, by its own rules, may decline to exercise its discretion to answer a question of Puerto Rico law certified to it from the District Court. However, in so doing, it should not purport to rule on the questions of federal law presented to the District Court. Whether federal jurisdiction exists in a complaint filed in a federal court, and whether the facts alleged in a complaint states a claim for relief, based on questions of federal law, is for the federal court to decide. Just two days ago, the First Circuit admonished both insular and federal courts to strictly adhere to their proper jurisdiction. Hernandez Agosto v. Romero Barcelo, 748 F.2d 1 (1st Cir.1984).

The Supreme Court relies on its opinion in Pan American Corp. v. Data General Corp., 112 DPR 780 (1982), in reaching its decision to decline to answer the question certified to it. In Data General, the Supreme Court enunciated more clearly its policy for refusal of certified questions from the District Court. See, Data General, supra, 112 DPR at 794. It is clear now that the Supreme Court has decided that, unless it has the last word on all matters presented by a lawsuit, it will not answer specific or limited questions of Commonwealth constitutional or statutory law presented to it for resolution.

Such parochial policy castrates the abstention/certification process, and undermines the attitudes of comity and federalism that should be fostered between the Puerto Rico Supreme Court and this Federal District Court. As Judge Breyer cogently stated in In re Justices of Supreme Court of Puerto Rico, 695 F.2d 17, 21 (1st.Cir.1982):

“Judges sit as arbiters without a personal or institutional stake on either side of the constitutionality of the statute. They are sworn to uphold the Constitution of the United States. They will consider and decide a claim that a state or Commonwealth statute violates the federal Constitution without any interest beyond the merits of the case.”

The United States Supreme Court has clearly enunciated the value of good faith interchange- between the federal and state courts. In England v. Louisiana State Bd. of Med. Exam., 375 U.S. 411, 424, 84 S.Ct. 461, 468, 11 L.Ed.2d 440 (1964), the United States Supreme Court held that when a federal District Court abstains from hearing a constitutional issue until the state courts have decided a question of state law necessary to its resolution, a litigant may expressly' reserve his/her right to return to the federal court for a final resolution of that constitutional issue. The Court recognized that in such cases, where the state courts are asked to construe a state statute against the backdrop of a federal constitutional challenge, a holding from the state court may imply that the constitutional challenge is without merit. England, supra, 84 S.Ct. at 467. However, the Court unequivocally held that with a clear reservation of rights, a litigant may still return to the federal court for a resolution of remaining constitutional issues. In other words, comity is a two-way street. Romany v. Colegio De Abogados De P.R., 742 F.2d 32 (1st Cir.1984).

This does not mean, as the Puerto Rico Supreme Court suggests in Data General, that its opinion is merely advisory, and will be reviewed by the District Court. It means only, that a litigant has the right to choose to have its federal constitutional claims heard in a federal forum. England, supra, 84 S.Ct. at 464-465. The Supreme Court’s apprehension of advisory opinions is unfounded. It has been unquestionably held that an opinion of a state Supreme Court issued in response to a question certified by a federal court, is final and binding on the parties as to the issue of state law, to be given full res judicata effect by the federal court. Tarr v. Manchester Ins. Corp., 544 F.2d 14 (1st Cir.1976); Nat’l. Ed. Ass’n., Inc. v. Lee Cty. Bd. of Public Inst., 467 F.2d 447 (5th Cir.1972). See also, 17 Wright & Miller, Federal Practice & Procedure, Section 4248 at p. 532.

The ENGLAND case involved abstention by the federal court rather than certification. Certification can achieve the same objectives as abstention, but at a much lower price. See, Kurland, Toward a Cooperative Judicial Federalism: The Federal Court Abstention Doctrine, 24 F.R.D. 481, 489-90 (1960). See also, Justice Frankfurter’s opinion in Clay v. Sun Insurance Office, Ltd., 363 U.S. 207, 212, 80 S.Ct. 1222, 1225, 4 L.Ed.2d 1170 (1960).

However, since the Supreme Court, for the reasons enunciated in its per curiam opinion, did not answer the question of whether the defendants in this case acted outside the scope of the authority given to them by Commonwealth of Puerto Rico House Resolution #921, this Court shall proceed to do so. This question is essential to decide the threshold defense of legislative immunity, even before any inquiry shall be made into the cause of action alleged.

The defendants have made three arguments to the Court in support of their motion to dismiss plaintiffs’ complaint: (1) that they enjoy absolute immunity from suit under the facts alleged by plaintiffs; (2) that this Court is without subject matter jurisdiction because the claims are frivolous; and (3) that plaintiffs fail to state a claim for relief.

The plaintiffs have vigorously opposed this motion, arguing that: (1) defendants acted beyond the scope of the authority granted by House Resolution No. 921, and are therefore not immune from suit, and (2) their complaint is not frivolous because it is supported by a conceivable set of facts upon which relief could be granted.

For the reasons stated below, the Court shall dismiss the plaintiffs’ complaint.

LEGISLATIVE IMMUNITY

It has been consistently held by the United States Supreme Court that legislators shall be immune from civil lawsuits, based on activities undertaken within the “sphere of legitimate legislative activity.” Eastland v. United States Servicemen’s Fund, 421 U.S. 491, 504, 95 S.Ct. 1813, 1821, 44 L.Ed.2d 324 (1975); Gravel v. United States, 408 U.S. 606, 626, 92 S.Ct. 2614, 2627, 33 L.Ed.2d 583 (1972); Tenney v. Brandhove, 341 U.S. 367, 71 S.Ct. 783, 95 L.Ed. 1019 (1951). While these rulings were based on the Speech and Debate Clause of the United States Constitution, and applied to U.S. Congressmen and Senators, the Supreme Court has held that a federal common law privilege exists to protect state legislators in a similar way from suits under 42 U.S.C. § 1983. Sup. Ct. of Virginia v. Consumers Union, 446 U.S. 719, 100 S.Ct. 1967, 64 L.Ed.2d 641 (1980); Wheeldin v. Wheeler, 373 U.S. 647, 649, 83 S.Ct. 1441, 1443, 10 L.Ed.2d 605 (1963). See also, Colon Berrios v. Hernandez Agosto, 716 F.2d 85 (1st Cir.1983).

Furthermore, it has been held that the power to investigate, and to do so through compulsory process plainly falls within legislative activity. Tenney, supra, 71 S.Ct. at 789; Eastland, supra, 95 S.Ct. at 1822; Colon Berrios, supra, 716 F.2d at 90. However, in each of these cases, the Supreme Court and the Court of Appeals specifically held that the challenged subpoenas had been issued under the proper authority of a House or Senate resolution. See, Eastland, supra, 95 S.Ct. at 1822-23; Tenney, supra, 71 S.Ct. at 785; Colon Berrios, supra, 716 F.2d at 90. This Court believes that without such authorization, when it is specifically required by House or Senate rules, actions taken by legislators may not be immune.

The allegations made here are that House Resolution No. 921 specifically granted authority to a Special Investigative Committee to investigate the relationship between Shearson-American Express and the Municipality of Ponce, for three months. It is further alleged that the Speaker of the House then extended that limitation, by his own action, without another resolution of the full House. Because the extent of the Speaker’s authority is essentially a question of state law, this Court asked the Supreme Court of Puerto Rico to decide whether he had such authority. The Supreme Court declined to do so, as is discussed above. Since this Court has retained jurisdiction to decide this matter, this Court shall endeavor to answer this question.

The defendants rely on the recent Supreme Court decision of Hernandez Agosto v. Ortiz Montes, 84 JTS 64 (1984), for the proposition that the Speaker could extend the existence of the Special Committee without a full House Resolution. See defendants’ brief p. 4. However, the ORTIZ MONTES case stands only for the proposition that the legislative assembly of Puerto Rico as a body is continuous in nature. It does not discuss the powers of the Speaker of the House. In Corujo Collazo v. Viera Martinez, 111 DPR 552 (1981), the Puerto Rico Supreme Court held that the powers of the Speaker of- the House are not co-extensive with the whole body. Therefore, the Court held that the Speaker could not unilaterally prevent an assemblyman from being seated in the House. See Corujo Collazo, supra, 111 DPR at 560-562.

Defendants also argue that House Rule III, sec. 11, authorizes the House Speaker to initiate investigations by special or general committees. This Court disagrees with defendants’ interpretation of this Section. This rule merely gives the Speaker the authority to nominate persons to sit on both permanent and special committees, not to initiate or determine the nature of such committees. This interpretation is born out by Rule XII, section 1, which lists the nature of the permanent committees, and section 2 of Rule XII, which again states that the president shall designate the members of those permanent committees. Finally, Rule XVIII, section 1(a), states that the House shall pass resolutions to initiate an investigation, and House Rule XXXIX, section 1, clearly states that an emergency session may be called, if necessary, to effectuate legislative, ends. Therefore, this Court finds that although a Speaker may name committees, he does not necessarily have the power to unilaterally extend the mandate of a special committee whose term was fixed by the full House by the promulgation and approval of a valid resolution.

The First Circuit Court of Appeals has held that a Commonwealth agency shall be held to comply strictly with its own rules, especially when taking action that may affect a citizen’s civil rights. Oppenheimer Mendez v. Acevedo, 512 F.2d 1373, 1374 (1st Cir.1975). While said case deals with an administrative agency’s authority, and not that of the legislature, the principle is the same. When dealing with individuals’ liberty, rulés should be strictly followed. The subpoena herein was issued against the plaintiffs under penalty of both civil and criminal contempt. This subpoena power of the legislature is great, and should only be exercised with strict compliance with all procedural safeguards.

By extending an investigation mandated by a full House resolution, the defendant acted beyond his authority. Therefore, the subpoenas were issued against plaintiffs without authority because the House Resolution No. 921 was not extended by another House Resolution. This Court finds the Speaker without authority to extend a full House resolution, under these circumstances. Corujo Collazo v. Viera Martinez, supra.

This questionable extension raises the question of seeming first impression. If the challenged subpoenas were not issued pursuant to an authorized legislative resolution, do the legislators enjoy immunity from suit under Section 1983? Language from two Supreme Court decisions indicate that they would not. In Gavel v. United States, supra, 92 S.Ct. at 2625, the Court said that:

“No prior case has held that Members of Congress would be immune if they executed an invalid resolution...”

In Wheeldin v. Wheeler, supra, 83 S.Ct. at 1444-1445, the Court held that the immunity doctrine did not apply to shield a legislative investigator who exceeded his authority by serving an unauthorized subpoena. Under the facts of WHEELDIN, a House Rule set the procedures to be followed by committees in issuing subpoenas. The House Rule was not strictly complied with, and therefore, there was no immunity. Id, 83 S.Ct. at 1445.

Therefore, we now find that the legislators do not enjoy absolute immunity when the Legislative Rules and Resolutions are not strictly followed in taking action.

CLAIM FOR RELIEF

Even though the Court finds that defendants do not enjoy immunity under the allegations of the complaint, we do find that plaintiffs have failed to state a claim for relief under the laws and Constitution of the United States.

Plaintiffs essentially allege violations of rights under the Fourth and Fourteenth Amendments of the United States Constitution to be free from unreasonable search and seizures, and to be guaranteed no deprivation of liberty or property without due process of law.

Defendants assert that no Due Process or Fourth Amendment violation has occurred, because none of the defendants have attempted to enforce any subpoena against plaintiffs. Furthermore, they argue, plaintiffs would have an opportunity to raise their objections to the validity of the subpoenas at judicial proceedings in the Superior Court of Puerto Rico, who would then determine whether the subpoenas are to be enforced.

In a similar way, defendants argue that until such timé as plaintiffs are forced to comply with the subpoenas, no search or seizure has taken place that could be viewed as reasonable or not. See, Wheel din, supra, 83 S.Ct. at 1444. The Court finds these arguments to be persuasive at this time.

Because the Court finds plaintiffs’ claims to be premature at this time, it shall dismiss the complaint. The Court finds that it is unnecessary, therefore, to discuss the issues raised by defendants as to whether a public officer, may have a cause of action if subpoenaed by the legislature without the proper authorization.

WHEREFORE, it is ORDERED that plaintiffs’ complaint be hereby DISMISSED.

IT IS SO ORDERED.

      . See, Pedreira, Antonio S., Insularismo: ensayo de interpretación puertorriqueña. Madrid: Tipografía Artística, 1934.

      . See Wackenhut Corp. v. Calero, 362 F.Supp. 715 (DPR 1973). In said case, several provisions of a Puerto Rico statute were invalidated as repugnant to the Constitution of the United States, after the Puerto Rico Supreme Court upheld the statute under the Puerto Rico Constitution. Wackenhut Corp. v. Rodríguez Aponte, 100 PRR 516 (1972).

      . The First Circuit Court of Appeals has certified questions to the Supreme Court of Puerto Rico, and based on its response, has ultimately decided the case pursuant thereto. See, In Re Torruella-Serrallés, 684 F.2d 170 (1st Cir.1982); Tor

        ruella-Serrallés v. Crédito e Inversiones de San Miguel, 113 DPR_, 82 JTS 83 (May 27, 1982).

      . This is so, even though early decisions of a few other states expressed the fear of advisory opinions. See United Services Life Ins. Co. v. Delaney, 396 S.W.2d 855 (Tex.1965); In Re Richards, 223 A.2d 827, 830 (Me.1966).

      . Had this Court merely abstained, the parties would have been forced to navigate the shoals of first instance litigation. Arrival at the Supreme Court harbor would have taken months, perhaps years, and truly delayed the .matter to the detriment of the parties. Precisely, by certifying the matter directly to the Puerto Rico Supreme Court, a long — possibly tempestuous— voyage is avoided.

      . The rule reads as follows:
      "11. Similarly, whenever the House is not in session, the Speaker may charge any permanent or special committee to study any matter he considers to be of an urgent nature or of public interest.” (Translation ours.)

      . The Puerto Rico Supreme Court holding in Ortiz Montes, supra, that the legislature of Puerto Rico is a continuous body that may continue to discharge its functions after the close of the regular session on April 30 of each year, facilitates the operation of both Rules XXXIX, Section (1), and XIII, Section (8). At pages 5-6 of the official translated opinion, the Supreme Court states:
      "Hence legislative bodies are empowered to order their respective Committees, as the Senate did in this case, to continue working until the last day of the legislature, that is, until the members of the new Legislature occupy their seat on the month of January following the last general election (Art. III Secs. 1 and 10 of the Constitution.)”
      It is obvious that it is the House or the Senate, as the case might be, that is empowered to take such action, and not the Speaker of the House or the President of the Senate, as defendants contend. The foregoing is consonant with House Rule XIII(8), authorizing the House, not the Speaker, to grant extensions of time to the committees. Accordingly, all it takes for the Speaker is to merely convene the House and approve a resolution enlarging the time for the special committee to conclude its unfinished business.


author: SKINNER, District Judge.

text:
    Colleen A. WILEY (d/b/a Wiley Creations), Plaintiff, v. AMERICAN GREETING CORP., et al., Defendants.
    Civ. A. No. 84-1344-S.
    United States District Court, D. Massachusetts.
    Sept. 24, 1984.
    Paul J. Hayes, Weingarten, Schurgin, Gagnebin & Hayes, Boston, Mass., for plaintiff.
    Cowan, Liebowitz & Latman, New York City, Fish & Richardson, John L. Welch, Wolf, Greenfield & Sacks, Boston, Mass., for defendants.
   MEMORANDUM AND ORDER

SKINNER, District Judge.

The plaintiff in this case, Colleen A. Wiley, is the founder and proprietor of a small business, Wiley Creations, which manufactures and sells stuffed teddy bears (known as “Wiley Bears”). Since its inception in 1979, Wiley Creations has sold about 6,000 bears, primarily in Massachusetts and the northeastern United States. Each of Wiley Creations’ bears features a large red heart sewn on its left breast. A similar red heart-shaped design also appears on plaintiff’s business cards and teddy bear merchandising tags. Apart from the cards and tags, however, plaintiff has not engaged in any advertising.

The defendants here are all national manufacturers, licensors and distributors of various children’s toys, including teddy bears sporting heart-shaped designs. Although some of the defendants’ bears bear only a slight resemblance to the “Wiley Bear”, for the purposes of this opinion, such dissimilarities are unimportant.

On April 27, 1984, Wiley Creations filed this action alleging trademark infringement, unfair competition and false designation of origin. In substance, Wiley Creations claims that in January, 1980, it adopted “as its trademark for its teddy bears, the design of a heart disposed on its bears and has to date continuously used its trademark in said business ... in interstate commerce”. (Complaint, ¶ 11). It further alleges that the defendants “have used said mark with the intent to appropriate the mark for their own use and benefit, all without permission of Plaintiff”. (Complaint, ¶ 14). Plaintiff demands a permanent injunction and damages. The defendants uniformly denied all of Wiley Creations’ substantive allegations.

Shortly after initiating discovery in June, 1984, all the parties moved for summary judgment. The motions were accompanied by the requisite affidavits, declarations and exhibits. For the reasons stated herein, the defendants’ motions for summary judgment and dismissal of plaintiff’s complaint are hereby ALLOWED.

Discussion

The standard to be applied in ruling upon a motion for summary judgment in a trademark infringement case was recently restated by the First Circuit Court of Appeals in Astra Pharmaceutical Prod. v. Beckman Instruments, 718 F.2d 1201 (1983). There, the court stated that

[sjummary judgment is proper only “if the pleadings, depositions, answers to interrogatories, and admissions on file, together with the affidavits, if any, show that there is no genuine issue as to any material fact and that the moving party is entitled to judgment as a matter of law.” ... In passing on a summary judgment motion, the court must view the record and draw inferences in the light most favorable to the opposing party-

Astra, 718 F.2d at 1204 (citations omitted).

All the parties to this case have moved for summary judgment. All parties are thus estopped to assert any material issues of fact. The only question is whether the facts stated in the record with all possible favorable inferences to be drawn therefrom would warrant a judgment for the plaintiff as a matter of law.

The starting point in any trademark infringement case is always whether the complainant can establish the existence of a legally, protectible trademark. J. McCarthy, Trademark and Unfair Competition, Second Edition, § 16.1 et seq. (“McCarthy”); see also Park ’N Fly, Inc. v. Park & Fly, Inc., 489 F.Supp. 422 (D.Mass.1979). Where, as here, the plaintiff has not attempted to register the disputed mark with either the United States Patent Office or any appropriate state office, the mark and its use must satisfy the strictures of the common law.

A common law trademark may be proved in one of two ways. Either the mark must be shown to be “inherently distinctive” or, if not, it must be shown to have become distinctive by acquiring a “secondary meaning” in the minds of consumers. President and Trustees of Colby College v. Colby College, 508 F.2d 804, 807 (1st Cir.1975); Brooks Shoe Mfg. Co. v. Suave Shoe Corp., 533 F.Supp. 75, 77 (S.D.Fla.1981), aff'd 716 F.2d 854 (11th Cir.1983).

Before applying these rules of law to the mark at issue, it is important to clearly define the nature of the trademark in which plaintiff claims it has acquired rights. Here, plaintiff has made no allegations that it has obtained a trademark consisting of either the heart design itself, or the application of the heart design to stuffed animals generally. Wiley Creations argues that “[t]his case does not concern stuffed dogs, tie clips of Valentine/Christmas ornaments. The goods which are the subject matter of this case ... are teddy bears.” (Plaintiffs Memorandum in Opposition to Defendant Dakin’s Motion for Summary Judgment, pp. 2-3). Accordingly, the issue before this court is simply whether Wiley Creations’ placement of an ordinary red heart on the left breast of an ordinary stuffed teddy bear is (or has become) sufficiently distinctive to constitute a common law trademark.

A review of the numerous photographic exhibits introduced by both parties clearly shows that the heart appearing on the Wiley Bear has exactly the same proportions and color as the countless hearts that appear on commonplace objects ranging from greeting cards and children’s stuffed toys to tie clips and type face. Moreover, the placement of such a design on the left breast of a stuffed toy (directly over its traditionally presumed anatomical position in a real creature) can hardly be said to have originated with the plaintiff. As defendants point out, “[o]ne of the most widely recognized uses of a heart on the chest of a stuffed toy ... is Johnny Gruelle’s famous Raggedy Ann and Andy dolls”. (Defendant Dakin’s Memorandum in Support of Its Motion for Summary Judgment, p. 3) (citing, Gruelle v. Molly-’es Doll Outfitters, 94 F.2d 172, 173 (3rd Cir.1937), a use that dates at least from 1915. Id. at 173. In light of the longstanding use of the heart motif as a decoration upon all manner of goods, I find the placement of a heart upon the left breast of the Wiley Bear is not inherently distinctive.

This conclusion finds ample support in the numerous prior cases holding that a simple geometric pattern affixed to an otherwise ordinary product is not inherently distinctive. Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 533 F.Supp. 75 (S.D.Fla.1981); aff'd 716 F.2d 854 (11th Cir.1983) (“V” shaped design on tennis shoes not inherently distinctive); Application of David Crystal, Inc., 296 F.2d 771 (1961) (Colored bands on men’s athletic socks held not inherently distinctive); Major Pool Equip. Corp. v. Ideal Pool Corp., 203 USPQ 577 (N.D.Ga.1979) (Geometric border design on pool liners held not inherently distinctive); The Federal Glass Co. v. Corning Glass Works, 162 USPQ 279 (TMTAB 1969) (Stylized cornflower design placed upon Corning cookware held not inherently distinctive); Re: Dassler, 134 USPQ 265 (TMTAB 1962) (Three colored stripes on Adidas tennis shoes deemed not inherently distinctive).

Even if a given geometric pattern is not inherently distinctive, however, a manufacturer may nevertheless acquire trademark rights in the symbol if the product and symbol together have achieved “secondary meaning” in the public eye. For example, in the Dassler case cited above, while the three parallel stripes placed upon Adidas tennis shoes were not considered inherently distinctive, the court found that “in view of (Adidas’) extensive promotion of its “3 stripe” mark over the years together with the trade recognition of this design as indicating origin in (Adidas) ... (Adidas) has made a sufficient prima facie showing that the design in issue does identify its goods and distinguish them from the goods of others”. Id. at 266.

In Colby College v. Colby College New Hampshire, 508 F.2d 804 (1st Cir.1975), the First Circuit Court of Appeals set out a standard for proving secondary meaning. At issue in that case was whether the name “Colby College” had gathered sufficient secondary meaning so as to constitute a trademark. There, the court stated that

Secondary meaning is established in a number of ways. .First, from ... long and exclusive use... Second ..; the size or prominence of the enterprise may warrant an inference that its [mark] has acquired secondary meaning____ Third, while secondary meaning is shown by success rather than by the mere fact of an enterprise’s promotional efforts, ... the normal consequence of substantial publicity may be inferred----

Id. at 807-808 (citations omitted).

Applying these factors to the facts of the Colby College case, the First Circuit found initially that the plaintiff had operated its institution “since 1899 under the name of Colby College”. Id. at 806. Second, the court noted that “plaintiff outdistances defendant in size, reputation and achievement”. Id. at 808. Lastly, the plaintiff introduced evidence that “the name ‘Colby College’ is exclusively understood ‘in the academic field as meaning the plaintiff’ ”. Id. at 808. Accordingly, the First Circuit found that plaintiff had established secondary meaning.

In Brooks Shoe Mfg. Co., Inc. v. Suave Shoe Corp., 533 F.Supp. 75 (S.D.Fla.1981), plaintiff Brooks Shoe attempted to establish that it had acquired a trademark in the ‘V’ design that appears on the sides of Brooks shoes. Despite the sale by Brooks of more than 2,500,000 pairs of shoes in fiscal 1978, the implementation of a $747,-000 advertising campaign that same year, and promotional activities and advertisements in prestigious magazines, such as “Runner’s World”, the court nonetheless concluded that “there is nothing inherently distinctive about the “V” and the efforts made by Brooks to promote a connection between the “V” and Brooks prior to January, 1979, were not so substantial that an inference of secondary meaning can be drawn therefrom”. Id. at 81.

Applying the teachings of both Colby College and Brooks Shoe to the facts of the present dispute, it seems clear that Wiley Creations cannot possibly prove the type of consumer recognition required to establish secondary meaning. Since the inception of her business in 1979, plaintiff has sold only 6,000 bears. Plaintiff’s affidavits further indicate that only a very small proportion of those bears were sold outside of Massachusetts. Moreover, plaintiff has not alleged or offered evidence that she has engaged in any advertising (other than the printing of business cards) of her product or that her bears have acquired even the slightest degree of distinctiveness in the eyes of consumers. By contrast, defendant R. Dakin & Co. has, since 1983, sold over 200,000 bears similar to the “Wiley Bear”. (Memorandum of Law by Dakin in Opposition to Plaintiff’s Motion for Summary Judgment, p. 3). Sales of defendant American Greetings “Care Bears” likewise totalled over $250,000,000 in 1983. In addition, American Greetings’ advertising budget for Care Bears related products was approximately $9.2 million. American Greetings Corp. v. Easter Unlimited, Inc., 579 F.Supp. 607, 221 U.S.P.Q. 875, 876 (S.D.N.Y.1983).

Pursuant to the analysis in the Colby College, I find that (1) Wiley Creations has been in business for only four and one-half years, (2) that Wiley Creations is a small enterprise with relatively modest sales, and (3) that plaintiff appears to have made no attempt to generate a secondary meaning for her heart design through advertising. Moreover, it seems clear that if sales of over two million pairs of shoes combined with a $747,000 advertising budget was deemed “not so substantial” as to justify an inference of secondary meaning in Brooks Shoe, 533 F.Supp. at 81, then Wiley Creations’ sale of 6,000 bears, without more, surely cannot have created the requisite consumer recognition. Accordingly, I find that plaintiff has not met her burden of proof on the basis of the undisputed facts in this record.

Because secondary meaning cannot be established for the Wiley Bears, plaintiff cannot be said to have acquired a common law trademark in the heart design. Absent the existence of a protectible trademark plaintiff has no valid claim against any of the defendants. Accordingly, the defendants’ motions for summary judgment are ALLOWED. The complaint is DISMISSED on the merits.

      . Defendant Dakin & Co. moved separately from its co-defendants. In light of the similarity of the issues raised in their respective memoranda, however, all the defendants’ motions will be treated together.