author: PER CURIAM:

text:
    Roberto LAZA, Plaintiff-Appellant, v. R.M. REISH, Warden, Defendant-Appellee.
    No. 1143, Docket 95-2596.
    United States Court of Appeals, Second Circuit.
    Argued March 15, 1996.
    Decided May 22, 1996.
    Jennifer L. Colyer, New York City (Ira S. Sacks, Fried, Frank, Harris, Shriver & Jacobson, New York City, of counsel), for Plaintiff-Appellant.
    Glenn C. Colton, Assistant United States Attorney, New York City (Mary Jo White, United States Attorney, Southern District of New York, Steven M. Haber, Assistant United States Attorney, New York City, of counsel), for Defendant-Appellee.
    Before FEINBERG, WALKER and PARKER, Circuit Judges.
   PER CURIAM:

Plaintiff Robert Laza, currently incarcerated in a New Jersey state prison, appeals from a decision of the Southern District of New York (Miriam Goldman Cedarbaum, District Judge) dismissing his § 1983 complaint against Warden R.M. Reish on the grounds that it failed to state a claim upon which relief could be granted, and that Reish was entitled to qualified immunity. Plaintiff claims that Reish: (1) subjected Laza to punitive detention before an adjudication of guilt in violation of his clearly established rights under Bell v. Wolfish, 441 U.S. 520, 99 S.Ct. 1861, 60 L.Ed.2d 447 (1979); and (2) deprived Laza of due process by segregating him from the general population without a hearing. For the following reasons, we affirm the district court’s 12(b)(6) dismissal of Laza’s complaint on the Bell v. Wolfish issue, and decline to entertain the appeal on the second due process issue.

I.

BACKGROUND

After his conviction for aggravated sexual assault and terrorist threats in 1981, appellant Robert Laza was sentenced to serve twenty-five years in a New Jersey state prison. Laza remained in state custody until 1990, when he was transferred to federal custody pending the resolution of outstanding federal drug money laundering charges against him. On September 9, 1992, while being held in the New York Metropolitan Correctional Center (“MCC”), Laza assaulted a prison counsellor who was attempting to conduct a routine search of his cell. The counsellor suffered a broken jaw and broken teeth.

Two days later, Laza was transferred from the MCC to the Federal Correctional Institution at Otisville. (“Otisville”). Upon his arrival at Otisville, Laza was placed in administrative detention in the Special Housing Unit, a secure unit that houses inmates deemed inappropriate for housing within the general prison population. Defendant claims that Laza was placed in administrative detention because, in light of his attack on a staff member, he was a safety risk to the staff and the other inmates.

On September 24, 1992, Laza was indicted by a federal grand jury for assault resulting in serious bodily injury, and assault on a federal officer. On June 14, 1993, Laza was convicted of both of these charges, for which he was sentenced in February 1994. Laza remained in administrative detention at Otis-ville for seventeen months until sentencing. Nine of these months were served prior to trial, and eight were served after trial.

Laza argues that, prior to his conviction, he was held in administrative detention at Otisville without the requisite hearing or notice of the reasons for his confinement. He claims to have received only four of seventeen mandated monthly reviews. In addition, when Laza wrote to Reish requesting that the restrictions placed on him be eased, Reish declined, stating that Laza would “remain in administrative detention until [he was] acquitted or sentenced.”

Laza filed a pro se complaint on December 15,1993. The complaint charged, inter alia, that Reish had violated Laza’s due process rights under the Fifth Amendment by detaining him prior to an adjudication of guilt and without a hearing. Laza amended the complaint on January 20,1994. On April 20, 1995, defendant moved for an order dismissing the complaint pursuant to Rules 12(b)(1) or 12(b)(6), or for summary judgment on the ground of qualified immunity. Laza obtained counsel, who responded to this summary judgment motion.

By order read into the record on July 12, 1995, the district court granted defendant’s motion. Judge Cedarbaum found that the complaint failed to state a claim under Bell v. Wolfish. She also found that Reish was entitled to qualified immunity, because he could reasonably have believed that the prison had cause to segregate Laza from the rest of the population due to his assault on the prison guard. This appeal followed.

II.

DISCUSSION

Laza’s complaint raised two distinct arguments under the Due Process Clause of the Fifth Amendment, which are addressed in turn.

A. Punitive Segregation of a Pre-Trial Detainee

Laza claims that, for the first nine months of his segregation at Otisville, he was a pre-trial detainee subjected to unlawful punishment. In making this argument, Laza relies on Bell v. Wolfish, 441 U.S. 520, 99 S.Ct. 1861, 60 L.Ed.2d 447 (1979), in which the Supreme Court held that pre-trial detainees have a due process right to be free from punishment prior to an adjudication of guilt. Id. at 535, 99 S.Ct. at 1871-72. Laza must prove two things to prevail on this argument: (1) that he was a pre-trial detainee relative to the federal government prior to his conviction on federal assault charges, despite the fact that he was still serving a state sentence; and (2) that his detention was punitive rather than administrative. See id. at 536-37, 99 S.Ct. at 1872-83.

This circuit has previously rejected the argument that an inmate held under the same circumstances as Laza is a pre-trial detainee. In United States v. Willoughby, 860 F.2d 15 (2d Cir.1988), cert. denied, 488 U.S. 1033, 109 S.Ct. 846, 102 L.Ed.2d 978 (1989), two convicted state prisoners were transferred to federal prison to await trial on federal robbery charges. The prisoners argued that they were federal pre-trial detainees, and as such were entitled to greater Fourth Amendment privacy rights than convicted inmates. Id. at 20. The court concluded that as long as the inmates had not completed their state sentences while in federal custody, they were convicted prisoners for the purpose of their federal incarceration, in spite of the fact that the federal charges against them were still pending. Id. In Wil-loughby, however, the record did not exclude the possibility that the inmates had already completed their state sentences. Id. at 20-21. Thus, the court’s holding rested on another ground—that the plaintiffs’ Fourth Amendment arguments were meritless even if they were pre-trial detainees. Id. at 21.

In this case, it is clear that Laza had not completed his New Jersey state sentence at the time in question. Therefore, our reasoning in Willoughby squarely applies. Because he had not completed his state sentence when he was segregated at Otisville, Laza was not a pre-trial detainee entitled to the procedural protections outlined in Bell v. Wolfish. Accord Munz v. Michael, 28 F.3d 795, 798 (8th Cir.1994) (concluding that Munz, a state convict released from state prison into the custody of federal authorities to stand trial on federal charges, was a convicted prisoner rather than a pre-trial detainee and therefore was protected by the eighth amendment).

Because we have found that Laza was not a pre-trial detainee when he was segregated at Otisville, we need not consider whether the detention was administrative or punitive.

B. Procedural Due Process Under Hewitt and Sandin

Laza’s complaint also alleged that Reish violated his due process rights by depriving him of his liberty interest in remaining free from administrative segregation without the requisite notice and opportunity to be heard. See Sandin v. Conner, — U.S.-, 115 S.Ct. 2293, 132 L.Ed.2d 418 (1995); Hewitt v. Helms, 459 U.S. 460, 103 S.Ct. 864, 74 L.Ed.2d 675 (1983). The district court did not rule on this issue, because Laza’s attorney expressed her intention to withdraw the claim several times during oral argument on defendant’s summary judgment motion. Counsel agreed on the record that she was “asserting just this one claim that this was punitive detention,” and that she had “withdrawn all of the claims except the claim that this was punitive detention, which violated the plaintiff’s Fifth Amendment right.” She did not dispute the court’s decision to “treat[] the complaint as amended in that fashion,” or the court’s assertion that all other claims “ha[d] been withdrawn.”

Since Laza’s attorney agreed to treat the complaint as amended to state only the Bell v. Wolfish claim, we decline to consider the alternative procedural due process argument as part of this appeal. See 6 Charles A. Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure § 1476 (2d ed. 1990) (“A pleading that has been amended under Rule 15(a) [of the Federal Rules of Civil Procedure] supersedes the pleading it modifies.... Once an amended pleading is interposed, the original pleading no longer performs any function in the case....”); Terkildsen v. Waters, 481 F.2d 201, 205 (2d Cir.1973) (declining to consider issue not raised below in part because “considerations underlying [the] subtle legal issue [had not] been exposed and distilled by the able district judge so as to facilitate more informed consideration by this court”).

CONCLUSION

While Laza was held in a federal facility awaiting trial on assault charges, he was not a pre-trial detainee for the purposes of Bell v. Wolfish because he had yet to complete his New Jersey state sentence.

The order of the district court is hereby affirmed.

      . Following his 1981 conviction in New Jersey, Laza was sentenced to twenly-five years impris-eminent.


source: Caselaw Access Project

author: OAKES, Senior Circuit Judge:

license: Public Domain

text:
    Geoffrey T. WILLIAMS, Plaintiff-Appellant, v. Michael CRICHTON; Alfred A. Knopf, Inc.; Random House, Inc.; Universal City Studios, Inc.; MCA, Inc.; Amblin Entertainment, Inc.; Steven Spielberg; David Koepp, Defendants-Appellees.
    No. 1233, Docket 94-7951.
    United States Court of Appeals, Second Circuit.
    Argued April 2, 1996.
    Decided May 22, 1996.

      Jerome R. Halperin, New York City (Guy S. Halperin, Kyle Mallary Halperin, Halperin Klein & Halperin, of counsel), for Plaintiff-Appellant.
    Richard Dannay, New York City (David 0. Carson, Schwab Goldberg Price & Dannay, of counsel), for Defendants-Appellees.
    Before OAKES, WINTER and CALABRESI, Circuit Judges.
   OAKES, Senior Circuit Judge:

Geoffrey T. Williams (“Williams”) appeals a summary judgment of the United States District Court for the Southern District of New York, Lawrence M. McKenna, Judge, entered August 25, 1994, in favor of Appel-lees Michael Crichton, Alfred A. Knopf, Inc., Random House, Inc., Universal City Studios, Inc., MCA, Inc., Amblin Entertainment, Inc., Steven Spieiberg, and David Koepp, on Williams’s claim of copyright infringement. 860 F.Supp. 158 (S.D.N.Y.1994). Williams asserts that the district court erred in concluding that Williams’s works and the Appel-lees’ works were not substantially similar. For the reasons set forth below, we affirm the judgment of the district court.

BACKGROUND

This is an action for copyright infringement -under the Copyright Act of 1976, as amended, 17 U.S.C. §§ 101 et seq. (1994), and for an accounting of profits. Williams claims that the Appellees’ novel and movie Jurassic Park (together, the “Jurassic Park works”) infringe upon children’s stories that he authored and copyrighted. In reviewing the facts underlying this summary judgment motion, we construe the evidence in the light most favorable to Williams, the non-moving party. Delaware & Hudson Ry. Co. v. Consolidated Rail Corp., 902 F.2d 174, 177 (2d Cir.1990), cert. denied, 500 U.S. 928, 111 S.Ct. 2041, 114 L.Ed.2d 125 (1991).

Between 1985 and 1988, Williams created and published four original copyrighted works of fiction for children: (1) Dinosaur World, published in 1985 (“Book I”); (2) Lost in Dinosaur World, published in 1987 (“Book II”); (3) Explorers in Dinosaur World, published in 1988 (“Book III”); and (4) Saber Tooth: A Dinosaur World Adventure, published in 1988 (“Book IV”) (together, “Dinosaur World books”). Williams or his agent applied for and was issued a Certificate of Registration by the Register of Copyrights for Book I in December 1988 (registration number TX-1-966-153); Book II in August 1993 (TX-3-598-943); Book III in March 1988 (TX-2-294-611); and Book IV in November 1988 (TX-2-541-662).

Each of the four books is an adventure story for children that takes place in “Dinosaur World,” described in Williams’s brief as “an imaginary present day man-made animal park for dinosaurs and other pre-historic animals where ordinary people... can, in presumed safety, visit, tour and observe the creatures in a natural but hi-tech controlled habitat.” Books I and IV are simple stories of children visiting and touring Dinosaur World. Williams concedes that these two books, read alone or together, are not infringed upon by the Jurassic Park works, though there are a few similarities. We will focus, then, on the similarities between Books II and III and the Jurassic Park works. As a determination of substantial similarity requires a “detailed examination of the works themselves,” Walker v. Time Life Films, Inc., 784 F.2d 44, 49 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986), we will summarize each work at issue.

Lost in Dinosaur World

Lost in Dinosaur World is thirty pages long. The story opens with the MeDunn family preparing for a trip to Dinosaur World. Young Tim is “dressed for adventure,” though his mother reminds him, “[w]e’re just going to Dinosaur World, Tim. Not to the jungle or someplace dangerous.” Tim, his sister Mary, and Mr. and Mrs. MeDunn pile into the car and set off for Dinosaur World.

From this opening scene, a mood of adventure and perhaps even danger is created. Tim brings a survival kit along with him, and Mr. MeDunn comments upon Tim’s desire to see the “scariest animal in the park,” the allosaur. The setting of Dinosaur World enhances the mood. It is described as a place with

tall pines rising overhead, along with exotic ferns, ginkgo and monkey puzzle trees; giant pterosaurs and pteranodons circling in the blue sky, their eerie, high-pitched squeals carrying across the distance; roars, grunts and growls coming from deep in the forest, made by who-knows-what-kind of wild creatures; rumblings and puffs of grey smoke and steam curling from the top of a small volcano.

After the family arrives at Dinosaur World, they buy tickets and receive a map and a radio guide that can answer questions about the animals in the park. They discuss whether to visit the Nursery or proceed directly to the T-Rex Express, a train shaped like a tyrannosaurus rex that tours Dinosaur World. Tim is eager to board the T-Rex Express, but the other McDunns want to go to the Nursery. As Tim’s father says, “Tim, it won’t take but a few minutes, and I’m sime there’ll be plenty of exciting things for you to do today.” The narration continues: “Little did Mr. MeDunn know how true that was.”

While discussing the day’s plans, the family is surprised to see a brachiosaur, “the biggest land animal that ever lived,” eating leaves from the tops of the trees. The family then enters the Nursery, a “warm and humid” glass-roofed building, and views proto-ceratops hatchlings and éggs.

Next, the McDunns proceed to the T-Rex Express. Tim purchases a “Supertour” ticket, allowing him to ride the train through each of the geologic periods in which dinosaurs lived: the Triassic, Jurassic, and Cretaceous eras. The rest of the family purchases tickets only for the Triassic era. “After that Tim would be on his own. He was very excited.”

During the trip through the Triassic period, the train passes by the shore of the Dinosaur Sea where it is approached by a shrieking, twenty-five foot nothosaur. Several train passengers scream as the nothos-aur comes “closer and closer, until Tim could hear him breathe and see water dripping from his needle-sharp teeth.” When the not-hosaur suddenly slips back into the sea, Tim is left “a little frightened and wondering how much excitement the rest of the trip would bring.”

At the end of the Triassic tour, Tim’s family disembarks, his father warning:

This is your first trip here, so be very careful not to lose your guide. Whatever you need to know, just ask. And remember, no matter what happens, don’t get off the train.

Watching his family disappear from sight, Tim “couldn’t help feeling just a little lonesome as he continued his adventure.”

The tour continues into the Jurassic period. As Tim leans out the train window to get a better view of several diplodoeus wading in a swamp, he “did something that would change his whole day”: he knocked the radio guide out of the window. “It clattered down the embankment by the side of the tracks and came to rest almost under the tail of a huge stegosaur....” Tim climbs out of the train to retrieve the guide, taking the opportunity to touch the “thick and wrinkled” skin of the stegosaur, that rattled its tail “ominously” at the intrusion, but then continued eating a plant.

As Tim picks up the guide, he hears the T-Rex Express leave the area without him. ‘Without any warning, ... he was alone— lost in the middle of Dinosaur World.” As Tim stands alone on the train tracks, with several dinosaurs staring at him and distant roars sounding in the distance, the radio guide sputters back to life, and warns “how fast can you run? ... you don’t want to get caught out here when the allosaur zzz bzzt ssstrt grrx.” Hearing the warning, Tim begins to think about the allosaur, an animal “that stood over twenty feet tall, had teeth like steak knives and a disposition like a bucket of rattlesnakes.” “[N]ow Dinosaur World seemed mysterious. Strange. Perhaps even ... dangerous.”

Walking on his own, Tim encounters a lost baby parasaurolophus, a duckbill dinosaur. Tim feeds it, and the dinosaur follows him through the park. An allosaur then emerges from the trees and chases Tim and the baby dinosaur. Tim “could feel the allosaur’s breath hot on his neck.” Tim and the baby dinosaur escape into the Dinosaur Sea, just ahead of the allosaur which “was furious at seeing his dinner just out of reach.”

After the baby dinosaur is safely returned to its mother, another roaring dinosaur comes out of the distance: the T-Rex Express, returning to take Tim back to his parents.

Explorers in Dinosaur World

Explorers in Dinosaur World, also thirty pages long, is intended for children approximately eleven years old. The story centers on two siblings, Peter and Wendy. Peter, a dinosaur enthusiast, is dismayed when his sister wins a radio station contest to spend a weekend previewing “Dinosaur World’s newest attraction — Pangaea—the island of mystery in the middle of Dinosaur Sea.” By promising to do Wendy’s chores for a year, Peter convinces Wendy to let him accompany her on the trip.

When they arrive at Dinosaur World, Peter and Wendy are met by their guide for the weekend, Jake DuMel, a designer of Pangaea. The trio sets off for the boat dock and Jake explains the tasks of all the uniformed workers they see on the way:

It takes a lot of people to run a place this big. Engineers for the T-Rex Express trains, guides for group tours ... keepers who help in the Nursery feeding the baby dinosaurs, gardeners to take care of all the plants and flowers and a staff of scientists who spend time studying the animals.

Pangaea, about a half-mile from the mainland, appears “ghostly and mysterious.” As he loads the boat, Jake checks the children’s gear, including a radio. Peter tells Wendy, “[w]e need it to call for help if we get into any trouble.” Jake adds, “Dinosaur World is full of surprises, not trouble. Still, you can’t be too careful_”

As they cross the Dinosaur Sea, the group is pursued by an elasmosaur, a large, serpent-like creature. The elasmosaur arches over the boat, flashing its sharp teeth. Fortunately, the creature becomes distracted by other prey, and Peter, Wendy, and Jake escape harm.

After the elasmosaur incident, the boat’s engine fails and Jake begins to row the final distance to Pangaea. Another sea dinosaur, a “terrible” and “massive” kronosaur, threatens the trio, but they are able to lasso a passing sea turtle that pulls the boat quickly across the water to Pangaea. The kronosaur roars “in frustration and anger” as it watches “its breakfast escape.”

On Pangaea, “a world impossibly old and, at the same time, wondrously new,” the group first see an apatosaur “bigger than a moving van.” Then, a saltopus “no bigger than a cat” runs by “on its hind legs, bent over, balancing itself with its long tail.” After this introduction to the animals of the island, the group walks into the center of the “breathtakingly beautiful” island. Jake warns Peter and Wendy about the deinony-chus, carnivorous dinosaurs that “run like the wind, hunt in packs like wolves, are always hungry and have extremely long, sharp claws.” Jake reassures them that “there are special fences that keep dangerous dinosaurs from wandering into the areas where we’ll be going.”

After a night camping on the island, during which Jake tells the children many dinosaur tales and the children keep a watchful eye on the forest beyond the campsite, Jake receives a warning on the portable radio:

[Radio]: Security reports a break in the perimeter fencing on the east side of the lake.
[Jake]: How bad is it, Main Base?
[Radio]: Bad enough. Tracking computers indicate a pack of deinonychus is on the loose, and Jake ... they’re heading your way. Suggest you make for the chopper pad. We have a bird on its way now. You should have plenty of time to make it. Do you copy?
[Jake]: We’re on our way.... You heard him. Let’s go, kids.

As they rush to the helicopter pad, an arikylosaur, a bony-plated dinosaur with a club-like tail, blocks their path. From behind, a pack of deinonychus approaches. To avoid confrontation, the trio veers into the forest. As they watch, the ankylosaur fights off the deinonychus with its powerful tail. The group then reaches the helicopter pad and departs from Pangaea.

Jurassic Park, The Novel

Jurassic Park is a 400-page novel written for an adult audience. As one would expect from its length, it is a complicated story full of many plot twists. The basic plot outline is as follows:

Unregulated genetic engineering firms are making leaps and bounds in the field hoping for financial gains. The developing technology, however, can have disastrous consequences. One firm, InGen, suffered some sort of problem in the genetics work it performed on a remote island off Costa Rica. Though much of the affair has gone unreported, a few people are willing to reveal the events of the “InGen Incident.” The tale is the story of Jurassic Park.

John Hammond, InGen’s founder, has attempted to create a dinosaur zoo on the volcanic Isla Nublar, by cloning dinosaurs using DNA extracted from the remains of blood-gorged mosquitos preserved in amber. The park, which is set to open in a.year, has fifteen different species of dinosaurs, over two hundred animals in all, in a computer-controlled environment combining state-of-the-art electronic and biological technologies. Several of the dinosaur species are carnivorous, the most vicious being the tyrannosaurus rex and the velociraptors, medium-sized carnivores that hunt in packs.

Several problems, among them the escape of small procompsognathid dinosaurs to the mainland and the death of three Isla Nublar workmen killed by velociraptors, have made the investors nervous about the venture’s success. Hammond is forced to bring a team of specialists to the island to inspect the safety of the zoo.

The inspection team consists of Dr. Alan Grant, a paleontologist, Dr. Ellie Sattler, a paleobotanist, Ian Malcolm, a mathematician, and Dennis Nedry, a computer scientist. Malcolm believes in chaos theory, a primary theme of the novel, which posits that even simple systems engage in complex and highly unpredictable behavior. He has insisted since first learning of the dinosaur zoo that such a project would bring nothing but disaster.

On the island, the group first encounters brachiosaurs eating from the tops of trees. After this innocuous incident, the group travels to the island’s headquarters, where they soon discover some of the zoo’s potential problems. In the nursery, they learn that the dinosaurs have been genetically engineered not to reproduce. Yet Grant later finds in the jungle a velociraptor eggshell fragment, leading him to suspect the dinosaurs have overcome their infertility. These fears are confirmed when the group learns that the electronic trackers that monitor the creatures indicate that there are several more dinosaurs on the island than were placed there by InGen. Also troubling is Sattler’s discovery of some poisonous plant species on the island. Finally, the reader learns that Dennis Nedry has become a spy for Biosyn, a rival genetics firm. Nedry agrees to steal several dinosaur embryos for Biosyn in exchange for $1.5 million. These incidents foreshadow additional problems the island zoo will soon suffer.

Hammond’s grandchildren, Tim and Alexis, arrive at the island. Although Hammond has ostensibly brought his grandchildren so that they may enjoy a sneak-peek at the dinosaurs, their real function is to convince the investors that the zoo is safe enough for children and will be extremely lucrative. The inspection team and the children set off with a guide to tour the park in automated Toyota Land Cruisers that run on a track. A pre-recorded program runs inside the cars, explaining the island’s inhabitants to the group as they tour.

The tour progresses until a storm develops. Surveying the island, the tour guide sees that small velociraptors have boarded a supply boat leaving for Costa Rica. The group attempts to warn the boat by radio, but communications are down.

The reader learns that Nedry has shut down all the communications and security systems on the island in order to escape undetected with the stolen embryos. As he rushes to a boat dock, Nedry is caught in the storm and eventually violently killed by a dilophosaur on the loose.

Meanwhile, the Land Cruisers carrying the inspection team and the children have stalled. A tyrannosaurus rex attacks, tossing the children’s vehicle over a precipice and mauling Malcolm. The tour group leader is soon killed by a baby tyrannosaurus rex, though the children, Grant, and the others manage to escape.

A tyrannosaurus rex chases a stampeding herd of dinosaurs. Later, the tyrannosaurus rex attacks Grant and the children as they try to escape by raft on a river, but the creature becomes distracted by other dinosaurs on land and the raft avoids disaster. The raft is then dive-bombed by a pterodactyl that nearly flies off with one of the children. Eventually, the group makes it back to the headquarters, where Sattler, Hammond, and others are trying to restore order to the island. Malcolm also is rescued and brought to headquarters, though he is severely injured.

Because the electric fences that usually separate the dinosaurs have been shut off, the dinosaurs are roaming free throughout the island. Velociraptors hunting in packs attack many people, killing some and narrowly missing others. The children are attacked by a pack while hiding in the headquarter’s cafeteria, but they manage to trick the veloci-raptors into entering a giant freezer. Eventually, some of the attacking velociraptors are killed by poison, though many more remain in a nest that the surviving group of people attempts to destroy.

During this tumult, time has elapsed and now only an hour remains to contact the supply boat and warn it of its deadly cargo before it reaches Costa Rica. Just as the boat is about to reach shore, and with the help of Tim’s computer knowledge, they make contact with the supply boat. The boat’s crew kills the velociraptors. Grant, Sattler, the children, and others then contact Costa Rican rescuers.

Malcolm, near death, argues with Hammond that the park was doomed to failure from the beginning. Hammond stalks off, and is soon killed and eaten by procompsog-nathids. Malcolm also dies, succumbing to his injuries.

As Grant, Sattler, the children, and the remaining island survivors escape by Costa Rican National Guard helicopter, Isla Nublar is bombed and the zoo is destroyed. An epilogue informs us, however, that some creatures have reached the mainland and appear to be migrating.

Jurassic Park, the Movie

The movie version of Jurassic Park is just over two hours in length. Like most film adaptations, it eliminates many of the novel’s details and some scenes are cut, such as the veloeiraptors on the supply boat. The chaos theory and genetic engineering themes of the novel are truncated. Some material is added, such as the inevitable Hollywood love interest between Dr. Grant and Dr. Sattler. The children’s ages are reversed, and the sister becomes the more competent of the two. Some characters are eliminated or combined, and some character traits, notably those of Malcolm and Hammond, are softened. Malcolm and Hammond also have the good fortune to survive in the movie version. Hammond concedes at the end of the film that the zoo is a disaster, though the actual destruction of the island is not depicted in the movie, leaving the audience with a more ambiguous ending.

DISCUSSION

Williams argues that the district court erred in granting summary judgment to the Appellees on the ground that there is no substantial similarity between the Dinosaur World books and the Jurassic Park works.

Summary judgment is mandated when “there is no genuine issue as to any material fact and ... the moving party is entitled to a judgment as a matter of law.” Fed.R.Civ.P. 56(c). A court must determine “whether the evidence presents a sufficient disagreement to require submission to a jury or whether it is so one-sided that one party must prevail as a matter of law.” Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 251-52, 106 S.Ct. 2505, 2512, 91 L.Ed.2d 202 (1986); see also Celotex Corp. v. Catrett, 477 U.S. 317, 322, 106 S.Ct. 2548, 2552, 91 L.Ed.2d 265 (1986). We review de novo the district court’s grant of summary judgment in favor of the Appellees. Arica Inst., Inc., v. Palmer, 970 F.2d 1067, 1071 (2d Cir.1992).

To establish copyright infringement, “two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). The parties do not dispute that Williams obtained valid copyrights in the Dinosaur World books. Therefore, in order to prevail, Williams must show that the Appellees copied the Dinosaur World books. In the absence of direct evidence, copying is proven by showing “(a) that the defendant had access to the copyrighted work and (b) the substantial similarity of protectible material in the two works.” Kregos v. Associated Press, 3 F.3d 656, 662 (2d Cir.1993), cert. denied, — U.S. -, 114 S.Ct. 1056, 127 L.Ed.2d 376 (1994); Laureyssens v. Idea Group, Inc., 964 F.2d 131, 139-40 (2d Cir.1992).

For purposes of the summary judgment motion, the Appellees have conceded that they had access to Williams’s books. This ease thus turns upon the second part of the test: whether, in the eyes of the average lay observer, the Jurassic Park works are substantially similar to the protectible expression in the Dinosaur World books. See Fisher-Price, Inc. v. Well-Made Toy Mfg. Corp., 25 F.3d 119, 123 (2d Cir.1994). If “the similarity concerns only noncopyrightable elements of plaintiff work,” or “no reasonable trier of fact could find the works substantially similar,” summary judgment is appropriate. Walker v. Time Life Films, Inc., 784 F.2d 44, 48 (2d Cir.), cert. denied, 476 U.S. 1159, 106 S.Ct. 2278, 90 L.Ed.2d 721 (1986); see also Arica Inst., 970 F.2d at 1072.

It is “a principle fundamental to copyright law” that “a copyright does not protect an idea, but only the expression of an idea.” Kregos, 3 F.3d at 663; Warner Bros. Inc. v. American Broadcasting Cos., 720 F.2d 231, 239-40 (2d Cir.1983). Similarly, scenes a faire, sequences of events that “necessarily result from the choice of a setting or situation,” do not enjoy copyright protection. Walker, 784 F.2d at 50. The distinction between an idea and its expression is an elusive one. Judge Learned Hand provided the guiding principle to this often impenetrable inquiry in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir.1930), cert. denied, 282 U.S. 902, 51 S.Ct. 216, 75 L.Ed. 795 (1931):

Upon any work, ... a great number of patterns of increasing generality will fit equally well, as more and more of the incident is left out. The last may perhaps be no more than the most general statement of what the [work] is about, and at times might consist only of its title; but there is a point in this series of abstractions where they are no longer protected, since otherwise the [author] could prevent the use of his ‘ideas,’ to which, apart from their expression, his property is never extended.

Professor Chafee further defined the boundary between idea and expression, stating that “protection covers the ‘pattern’ of the work ... the sequence of events and the development of the interplay of characters.” Zechariah Chafee, Reflections on the Law of Copyright, 45 Colum.L.Rev. 503, 513 (1945); see generally 3 Melville B. Nimmer & David Nimmer, Nimmer on Copyright § 13.03[A] (1995).

Examples aid us in applying these abstract principles. In Mattel, Inc. v. Azrak-Hamway Int’l, Inc., 724 F.2d 357, 360 (2d Cir.1983) (per curiam), we found that a 5% inch Warlord doll did not infringe upon a 5]é inch Masters of the Universe doll because, though the dolls looked remarkably similar, the similarities all were attributable to the unprotec-tible idea of “a superhuman muscleman crouching in what since Neanderthal times has been a traditional fighting pose.” We found that protectible expression might only arise from the way the two dolls emphasized the idea, such as by accentuating certain muscle groups instead of others. Id.

An example of unprotectible scenes a faire can be found in Walker, 784 F.2d at 50, regarding stories of police work in the Bronx. We said that “[e]lements such as drunks, prostitutes, vermin and derelict cars would appear in any realistic work about ... policemen in the South Bronx,” and thus are un-protectible scenes a faire. Similarly, “[f]oot chases and the morale problems of policemen, not to mention the familiar figure of the Irish cop, are venerable and often-recurring themes of police fiction,” not in and of themselves entitled to copyright protection. Id. As the court said in Berkic v. Crichton, 761 F.2d 1289, 1294 (9th Cir.), cert. denied, 474 U.S. 826, 106 S.Ct. 85, 88 L.Ed.2d 69 (1985), “[t]he common use of such stock .... merely reminds us that in Hollywood, as in the life of men generally, there is only rarely anything new under the sun.”

When we determine that a work contains both protectible and unprotectible elements, we must take care to inquire only whether “the protectible elements, standing alone, are substantially similar.” Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995); see also Fisher-Price, 25 F.3d at 123. We also must recognize that dissimilarity between some aspects of the works will not automatically relieve the infringer of liability, for “no copier may defend the act of plagiarism by pointing out how much of the copy he has not pirated.” Rogers v. Koons, 960 F.2d 301, 308 (2d Cir.), cert. denied, 506 U.S. 934, 113 S.Ct. 365, 121 L.Ed.2d 278 (1992). It is only when the similarities between the protected elements of plaintiff’s work and the allegedly infringing work are of “small import quantitatively or qualitatively” that the defendant will be found innocent of infringement. Id.; see also 3 Nimmer on Copyrights, supra, § 13.03[B][1][a].

To apply the law to the dispute before us, we examine the similarities in such aspects as the total concept and feel, theme, characters, plot, sequence, pace, and setting of the Dinosaur World books and the Jurassic Park works. See Walker, 784 F.2d at 48; Berkic, 761 F.2d at 1292; Reyher v. Children’s Television Workshop, 533 F.2d 87, 91 (2d Cir.), cert. denied, 429 U.S. 980, 97 S.Ct. 492, 50 L.Ed.2d 588 (1976); Green v. Lindsey, 885 F.Supp. 469, 481-82 (S.D.N.Y.1992), aff'd, 9 F.3d 1537 (2d Cir.1993), cert. denied, - U.S. -, 114 S.Ct. 1318, 127 L.Ed.2d 667 (1994). Having reviewed both parties’ works in detail, we find that nearly all the similarities between the works arise from noncopyrightable elements, and thus the district court correctly concluded that the works are not substantially similar.

Consideration of the total concept and feel of a work, rather than specific inquiry into plot and character development, is especially appropriate in an infringement action involving children’s works, because children’s works are often less complex than those aimed at an adult audience. Reyher, 533 F.2d at 91. Here, the total concept and feel of the two works differ substantially. The Jurassic Park works are high-tech horror stories with villainous characters and gruesome bloodshed. Books II and III of the Dinosaur World series, by contrast, are adventure stories and, although suspenseful in places, have happy endings. The threats and danger in Books II and III do not arise because of the evils of humans; rather, the threats exist because of the wild nature of dinosaurs and are intended to educate children about the behavior of these now-extinct creatures. The total concept and feel of the Jurassic Park works is of a world out of control, while Williams’s Dinosaur World is well under control.

Turning to specific similarities in the theme, setting, characters, time sequence, plot, and pace, we also find that the Appel-lees’ works are not substantially similar to the Dinosaur World books. Any similarity in the theme of the parties’ works relates to the unprotectible idea of a dinosaur zoo. Once one goes beyond this level of abstraction, the similarity in themes disappears. The Jurassic Park works involve genetic engineering, ego, greed, and the consequences of man’s hubris in believing that nature can be controlled. No similar themes are evident in any of the Dinosaur World books.

The settings of the parties’ works- also do not give rise to a finding of substantial similarity. While both the Dinosaur World books and the Jurassic Park works share a setting of a dinosaur zoo or adventure park, with electrified fences, automated tours, dinosaur nurseries, and uniformed workers, these settings are classic scenes afaire that flow from the uncopyrightable concept of a dinosaur zoo. Thus, though perhaps substantially similar, the settings are not protec-tible. Williams, however, points to the setting of Book III on the island of Pangaea, a lush volcanic island not yet open to the public, and argues that this setting is a protecti-ble expression of the dinosaur zoo idea. We disagree, finding both that Pangaea and Isla Nublar are distinct from one another (one is a man-made theme park attraction, the other a remote natural island) and that placing dinosaurs on a prehistoric island far from the mainland amounts to no more than a scene a faire in a dinosaur adventure story.

Williams contends that the children in Book III, Peter and Wendy, and the children in the Jurassic Park works, Tim and Alexis, along with the respective guides Jake DuMel and Dr. Grant, are substantially similar. It is true that both Peter and Tim are dinosaur enthusiasts, that both groups of children are siblings, and that both guides are intelligent. Likewise, we recognize that in both works the characters spend the night in the dinosaur zoo and escape from dangerous dinosaurs by helicopter through the combined wit of the children and adults.

These similarities, however, do not suggest infringement. As Judge Learned Hand advised, “the less developed the characters, the léss they can be copyrighted; that is the penalty an author must bear for marking them too indistinctly.” Nichols, 45 F.2d at 121. Such can be said of Peter, Wendy, and Jake, all of whom are much less developed than their alleged counterparts. Setting that aside, however, the characters still do not appear substantially similar. When one looks beyond the superficial similarities in the characters, many differences emerge, including the motivations for the characters’ trip to the dinosaur parks, the skills and credentials of the characters, and their interpersonal relationships. As a result, we find that no reasonable observer would find substantial similarity between the characters of the works at issue.

Finally, an examination of the time sequence, pace, and plot of the parties’ works reveals no infringement. Book II takes place in the space of a day; Book III, in a twenty-four hour period. The Jurassic Park works, by contrast, involve a much longer timeline. Although the pace of the parties’ works are similar, both quickly moving from scene to scene, we agree with the district court that the pace, without more, does not create an issue of overall substantial similarity between the works.

The plot, or sequence of events, of the works likewise is not substantially similar. Although Williams points to several specific instances of similarity, we agree with the district court that such lists are “inherently subjective and unreliable,” particularly where “the list emphasizes random similarities scattered throughout the works.” Litchfield v. Spielberg, 736 F.2d 1352, 1356 (9th Cir.1984), cert. denied, 470 U.S. 1052, 105 S.Ct. 1753, 84 L.Ed.2d 817 (1985). Such a scattershot approach cannot support a finding of substantial similarity because it fails to address the underlying issue: whether a lay observer would consider the works as a whole substantially similar to one another. See Walker, 784 F.2d at 50; Burroughs v. Metro-Goldwyn-Mayer, Inc., 683 F.2d 610, 624 (2d Cir.1982).

Additionally, even those scenes that appear similar in their abstract description prove to be quite dissimilar once examined in any detail. For example, in both Book III and the Jurassic Park movie, the characters escape deadly, pack-hunting dinosaurs (deino-nychus and velociraptors, respectively) when another dinosaur (an ankylosaur and a tyrannosaurus rex, respectively) intervenes. However, the Book III dinosaurs are not purposefully hunting the human characters as the velociraptors are in the movie. In Book III, the intervening dinosaur is unsuspecting, non-threatening, but well-armored, whereas the tyrannosaurus rex in the movie is itself a marauding beast that has terrorized the characters throughout much of the action. The final scene of the movie, showing the tyrannosaurus rex roaring over the fallen velociraptors in the lobby of the island’s headquarters, surrounded by a prehistoric skeleton of a dinosaur and banner that reads ‘When Dinosaurs Ruled the Earth” symbolizes the theme of man’s hubris and emphasizes that nature cannot be controlled. An analysis of this scene and others leads us to conclude that a finding of substantial similarity cannot be supported.

When we consider the combined elements of the Dinosaur World books and compare them to the Jurassic Park works, we hold that a lay observer would not find substantial similarities between the protectible material of these works.

We must emphasize one final point. Williams rightly points out that his books, written for a young audience, deserve copyright protection as much as works created for an adult audience. Williams fears that unless he prevails, children’s book authors everywhere will be stripped of the protection of copyright because adult book authors will be able to point to the greater complexity of their works as evidence that no infringement has occurred.

We answer Williams’s concern in two ways. First, the copyright law is to be uniformly applied across a variety of media and audiences; see, e.g., Smith v. Little, Brown & Co., 245 F.Supp. 451 (S.D.N.Y.1965) (adult-audience work allegedly infringed by children’s work), aff'd, 360 F.2d 928 (2d Cir.1966); Rogers, 960 F.2d at 308, 312 (photograph allegedly infringed by sculpture); Horgan v. Macmillan, Inc., 789 F.2d 157, 162 (2d Cir.1986) (ballet choreography allegedly infringed by photographs of ballet). The law takes into account Williams’s concern by requiring the lay observer to focus on similarities rather than differences when evaluating a work. Only when the similarities are- insubstantial or unprotectible will a claim fail.

Second, Williams’s claim fails here largely because the similar parts of the parties’ works are unprotectible scenes a faire or trivial, scattered details. We know of many stories written for children that are more detailed in characterization and plot than Williams’s books, and likewise can think of several adult novels that are less original. The claim would be equally weak if the Jurassic Park works had preceded the Dinosaur World books, and the Appellees had attempted to sue Williams. Thus, it is not the distinction between children’s books and adult books, but rather the degree of similarity between these particular dinosaur adventure stories that compels our holding in this case.

CONCLUSION

For the foregoing reasons, we affirm the district court’s grant of summary judgment in favor of the Appellees.

      . These similarities are: in Book I, an initial encounter between visitors and dinosaurs "smaller than a chicken” and a stampede of dinosaurs running from a tyrannosaurus rex; and in Book IV, the use of an automated cable car ride through Dinosaur World.

      . What seems to us a clear case of death is made more ambiguous by the sequel to Jurassic Park, a novel entitled The Lost World, where Malcolm is again a central character.

      . These include: encounters with small dinosaurs in Books I, III, and the Jurassic Park novel; encounters with brachiosaurs in Book II and the Jurassic Park movie; visits to dinosaur nurseries in both Book II and the Jurassic Park works; tours with automated vehicles and recorded guides in Books II, IV and the Jurassic Park works; stranded characters encountering ferocious dinosaurs in Book II and the Jurassic Park works; characters in boats being pursued by dinosaurs in Book III and the Jurassic Park novel; dinosaurs escaping from paddock fences in both Book III and the Jurassic Park works; and characters escaping pack-hunting dinosaurs through the intervention of another dinosaur and a helicopter in Book III and the Jurassic Park movie.


text:
    JAMES SQUARE NURSING HOME, INC., Plaintiff-Appellee, v. Brian WING, as Acting Commissioner of the Department of Social Services of the State of New York, Defendant-Appellant.
    No. 1294, Docket 95-9044.
    United States Court of Appeals, Second Circuit.
    Argued April 26, 1996.
    Decided May 23, 1996.
    Cindi R. Brandt, New York City (Jerome T. Levy, Kronish, Lieb, Weiner & Heilman, LLP, New York City, of counsel), for Plaintiff-Appellee.
    Denise A Hartman, Assistant Attorney General for the State of New York, Albany, NY (Dennis C. Yacco, Attorney General, Peter H. Schiff, Deputy Solicitor General, Nancy A. Spiegel, Assistant Attorney General, Albany, NY, of counsel), for Defendant-Appellant.
    Before: VAN GRAAFEILAND and MAHONEY, Circuit Judges, and CARTER, District Judge.

      The Honorable Robert L. Carter, of the United States District Court for the Southern District of New York, sitting by designation.

   PER CURIAM:

Defendant-appellant Brian Wing, acting Commissioner of the Department of Social Services of the State of New York (“New York”), appeals from a judgment entered September 6, 1995 in the United States District Court for the Northern District of New York, Frederick J. Seullin, Jr., Judge, that granted summary judgment to plaintiff-ap-pellee James Square Nursing Home, Inc. (“James Square”) on its claim pursuant to 42 U.S.C. § 1983 for injunctive and declaratory relief under the Medicare Act, 42 U.S.C. § 1396 et seq., and the Medicaid Act, 42 U.S.C. § 1396 et seq. James Square’s complaint alleges that New York’s procedure for ensuring that James Square does not receive payment from both Medicare and Medicaid for medical services that James Square provides to persons eligible under both programs (“dual eligibles”) violates the Medicare and Medicaid Acts. New York offsets against the Medicaid payments that it makes to James Square for services rendered to dual eligibles the full amount of Medicare Part B payments received by James Square with respect to those services. On this appeal, New York contends that its method of accounting for Medicare payments made for medical services also covered by Medicaid violates neither statute.

We affirm the judgment of the district court substantially for the reasons set forth in its decision and order. See James Square Nursing Home, Inc. v. Wing, 897 F.Supp. 682 (N.D.N.Y.1995).


text:
    STARTER CORPORATION, Plaintiff-Appellant, v. CONVERSE, INC., Defendant-Appellee.
    No. 1318, Docket 95-9150.
    United States Court of Appeals, Second Circuit.
    Argued Feb. 6, 1996.
    Decided May 23, 1996.

      J. Joseph Bainton, Ross & Hardies, New YorkCity, for Appellant, Starter Corporation.
    Harley I. Lewin, Lewin & Laytin, New York City, for Appellee, Converse, Inc.

      Before: OAKES and McLAUGHLIN, Circuit Judges, and OWEN, District Judge.

       Honorable Richard Owen, of the United States District Court for the Southern District of New York, sitting by designation.

   PER CURIAM:

The Starter Corporation appeals from the district court’s dismissal of its declaratory-judgment complaint against appellee Converse, Inc. on the ground that the court lacked subject matter jurisdiction, and its pronouncement that it would decline to exercise declaratory judgment jurisdiction even if an “actual case or controversy” did exist.

Starter is a manufacturer of athletic apparel and Converse is a manufacturer of athletic footwear and licensor of sports apparel. Both parties possess trademark rights in versions of a five-pointed star. This dispute arises out of Starter’s planned use of its registered trademarks, a five-pointed star in various designs, called Starter Marks or House Marks, on athletic footwear. In anticipation of this use, Starter filed for registration of its Starter Marks on athletic footwear with the Patent and Trademark Office. Converse opposed the registration of these applications before the Trademark Trial and Appeal Board on the ground that if used on footwear, the Starter Marks would create a likelihood of confusion with Converse’s star mark, and thereafter advised Starter that if Starter brought any footwear to the marketplace bearing the Starter Marks, Converse would sue Starter for trademark infringement.

Starter, however, commenced this action on May 19,1995, prior to bringing any Starter footwear to the marketplace, seeking declaratory relief concerning its right to use its House Marks on athletic footwear. On July 19, 1995, Converse moved to dismiss the complaint for lack of subject matter jurisdiction, and on November 13, 1995, the district court granted the motion dismissing Starter’s complaint on the ground that the complaint failed to allege an actual “case or controversy” as required for subject matter jurisdiction under both Article III of the United States Constitution and the Declaratory Judgment Act, 28 U.S.C. 2201(a). The district court further noted that even if an actual case or controversy had existed, it would have exercised its discretion and declined to rule in the absence of any actual rendering of Starter’s footwear in the marketplace. This appeal followed.

Starter’s first contention before us is that the district court was in error in holding that it lacked subject matter jurisdiction over Starter’s declaratory judgment action. On appeal from such determination, we review the district court’s factual findings for clear error and legal conclusions de novo. In re Vogel Van & Storage Inc., 59 F.3d 9, 11 (2d Cir.1995).

The Declaratory Judgment Act, 28 U.S.C. 2201(a), provides that

in a case of actual controversy within its jurisdiction ... any court of the United States, upon the filing of an appropriate pleading, may declare the rights and legal relations of any party seeking such declaration, whether or not further relief is or could be sought. Any such declaration shall have the force and effect of a final judgment or decree and shall be renewable as such.

In addition, in order for a federal court to have jurisdiction over an “actual controversy,” a federal question “arising under the Constitution, laws or treaties of the United States” must be involved, 28 U.S.C. § 1331, since it is well-settled that the Declaratory Judgment Act does not expand the jurisdiction of the federal courts. Albradco Inc., v. Bevona, 982 F.2d 82, 85 (2d Cir.1992) (citations omitted). Accordingly, we must first determine whether a federal question exists, and if it does—thereby providing the court with original jurisdiction—we must then determine whether the dispute presents a substantial controversy or merely an abstract question. There is no bright line here. As the Supreme Court explained in Maryland Cas. Co. v. Pacific Coal & Oil Co., 312 U.S. 270, 273, 61 S.Ct. 510, 512, 85 L.Ed. 826 (1941),

[t]he difference between an abstract question and a “controversy” contemplated by the Declaratory Judgment Act is necessarily one of degree, and it would be difficult, if it would be possible, to fashion a precise test for determining in every case whether there is such a controversy. Basically, the question in each case is whether the facts alleged, under all the circumstances, show that there is a substantial controversy, between parties having adverse legal interests, of sufficient immediacy and reality to warrant the issuance of a declaratory judgment.

If both a federal question and an actual controversy exist, then declaratory judgment jurisdiction may appropriately be exercised. If no such controversy exists, however, the courts are prohibited from rendering an advisory opinion which would be beyond our constitutional power. See Aetna Life Ins. Co. v. Haworth, 300 U.S. 227, 241, 57 S.Ct. 461, 464, 81 L.Ed. 617 (1937).

Starter’s complaint asserts that jurisdiction is predicated on 28 U.S.C. § 1338, which confers original jurisdiction upon the district court in “any civil action arising under any Act of Congress relating to patents ... copyrights, and trademarks_” The Lanham Act, the only Act of Congress relevant to this action, in turn applies only to a mark “use[d] in commerce”, defined in 15 U.S.C. § 1127 as a mark “(1) on goods when (A) placed in any manner on the goods ... and (B) the goods are sold or transported in commerce....”

Converse contends that because Starter has not yet begun the manufacture and sale of its footwear, Starter athletic shoes are not yet “in commerce”, thus Starter’s footwear is not yet subject to the Lanham Act, and therefore no statutory basis for federal question jurisdiction exists. In response, Starter contends that because it has already registered and used the Starter Marks on athletic apparel, the marks are “in commerce” and therefore satisfy the requirements of the Lanham Act, even though Starter has not yet used the Starter Marks on footwear in commerce. Starter, as observed, also owns federal registrations for its House Marks, and has an undisputed real, legal interest in their use. We conclude that Starter’s prior use of its marks places the marks sufficiently “in commerce” to sustain federal question jurisdiction under the Lanham Act.

We next turn to the question of whether, at the time the complaint was filed, an actual case or controversy existed. In a declaratory judgment action involving trademarks, the test for an “actual case or controversy” has two prongs, both of which must be satisfied in order to establish declaratory judgment jurisdiction: (1) has the defendant’s conduct created a real and reasonable apprehension of liability on the part of the plaintiff, and (2) has the plaintiff engaged in a course of conduct which has brought it into adversarial conflict with the defendant. Windsurfing Intern., Inc. v. AMF Inc., 828 F.2d 755, 757-58 (Fed.Cir.1987) (applying Second Circuit law). Neither party disputes that the first prong of this test has been satisfied by Converse’s unambiguous communication to Starter of its intent to bring an infringement suit should Starter engage in the sale of footwear bearing its House Marks. However, in reliance upon Windsurfing, Converse submits that absent Starter’s engaging in the manufacture and sale of footwear bearing the Starter Marks, Starter cannot be said to be using the mark for the purpose of establishing an adversarial relationship that meets the “actual case or controversy” standard, and thus, Converse contends, there is no declaratory jurisdiction.

The district court below saw Starter as pleading “no more than a desire and intention to use its trademark on athletic footwear at a future time,” and concluded that Windsurfing required more before athletic footwear bearing the Starter Marks can satisfy the second prong óf the justiciability analysis. Starter, however, contends before us, as it did below, that it has pleaded more, and that actual use of the mark is not the appropriate test here, instead urging that the “imminent intention and ability” test, which has its origins in patent case law, is the applicable test. See, e.g., Wembley, Inc. v. Superba Cravats, Inc., 315 F.2d 87, 89-90 (2d Cir.1963). Applying that test, an actual case or controversy exists where a party has engaged in a course of conduct evidencing a “definite intent and apparent ability to commence use” of the marks on the product. See Golden Gulf Corp. v. Jordache Enterprises, Inc., 896 F.Supp. 337, 340 (S.D.N.Y.1995), citing G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 873 F.2d 985 (7th Cir.1989).

We find this test appropriate here. Declaratory judgment actions involving trademarks are analogous to those involving patents, Windsurfing, 828 F.2d at 757; Manufacturers Hanover Corp. v. Maine Sav. Bank, 225 U.S.P.Q. 525, 526, 1985 WL 181 (S.D.N.Y.1985), and principles applicable to declaratory judgment actions involving patents are generally applicable with respect to trademarks. See Banff, Ltd. v. Federated Dept. Stores, Inc., 657 F.Supp. 336, 339 (S.D.N.Y.1987) (applying the Wembley “immediate intention and ability” test to ascertain justiciability in trademark dispute); Manufacturers Hanover Corp., 225 U.S.P.Q. at 526 (extending liberal interpretation of Declaratory Act’s “actual case or controversy” requirement from patent infringement to trademark disputes); 6A J. Moore, Moore’s Federal Practice § 57.20 at 57-222, 57-223 (citations omitted). Moreover, in articulating the second prong of the justiciability inquiry, we note that the court in Windsurfing relied upon the trademark case of Polaroid v. Berkey, 425 F.Supp. 605 (D.Del.1976) in which the court acknowledged the applicability of the immediate intention and ability test by its statement that “the most liberal interpretation of justiciability will not admit to an active controversy in the absence of either some imminent infringing conduct or some assertion of the same.” Id. at 609 (emphasis added).

Also persuasive in considering the applicability of this test is the policy animating the Declaratory Judgment Act, which is to enable parties to adjudicate their disputes before either suffers great damage. In re Combustion Equipment Associates, 838 F.2d 35, 37 (2d Cir.1988). Declaratory judgment actions are particularly useful in resolving trademark disputes, in order to promptly resolve controversies where the alleged owner of a trademark right threatens to sue for infringement. Accordingly, in such a case, the finding of an actual controversy should be determined with some liberality. Larami Corp. v. Amron, 1994 WL 369251, *4 (S.D.N.Y., July 13, 1994); Manufacturers Hanover Corp., 225 U.S.P.Q. at 526. A more restrictive view would in this case require Starter to go to substantial expense in the manufacture, marketing, and sale of its footwear, and subject itself to considerable liability for a violation of the Lanham Act before its right to even engage in this line of commerce could be adjudicated. We do not read the Act as requiring this. Accordingly, we turn to whether Starter has demonstrated the imminent intent and ability to use its House Marks on athletic footwear in order to determine whether the second prong of the justiciability inquiry is satisfied.

To demonstrate an actual intent and ability to imminently engage in the allegedly infringing conduct, Starter must show more than a vague or general desire to use its House Marks. See Wembley, 315 F.2d at 90; Windsurfing, 828 F.2d at 758. It must be engaged in “meaningful preparation,” Arrowhead Indust. Water, Inc. v. Ecolochem, Inc., 846 F.2d 731, 6 U.S.P.Q.2d 1685, 1689 (Fed. Cir.1988), such that it is “actively preparing to produce the article in question. This is the last point before the point of no return.” G. Heileman, 873 F.2d at 990. Whether a declaratory judgment plaintiff has so demonstrated this must be decided on a case-by-case basis, Aetna, 300 U.S. at 239-41, 57 S.Ct. at 463-64; Wembley, 315 F.2d at 89.

Starter’s complaint alleges that but for Converse’s threat of a trademark infringement suit, Starter would have been immediately prepared, at the time the complaint was filed, to begin manufacture and sale of shoes bearing the Starter Marks. It has invested a significant amount of time and money in this project; designed styles and prepared prototype shoes; conducted a consumer survey; made strategic decisions regarding who should manufacture the shoes; hired an external licensing agent; and attempted to find a manufacturing partner. It is this final step that Starter claims has been delayed by Converse’s threats of litigation. Accordingly, we view the total situation here distinguishable from that in Windsurfing, 828 F.2d.at 758, where the court found that the declaratory plaintiff had failed to engage in any conduct that brought it into adversarial conflict with the declaratory defendant regarding the use of trademarks. In the instant case, the steps Starter has taken are specific and evidence a concrete intention to use its House Marks. Accordingly, there is the requisite adversarial conflict here to meet the actual case or controversy requirement, and declaratory jurisdiction is therefore proper.

Having concluded that subject matter jurisdiction exists, we turn to the question of whether the district court properly exercised its discretion in declining to take declaratory judgment jurisdiction in any event. We review the district court’s decision to refuse declaratory relief de novo and may exercise our independent judgment in determining whether a declaratory judgment action should be entertained, and thus, if we are of a different view, we may substitute our judgment for that of the court below. Continental Cas. Co. v. Coastal Sav. Bank, 977 F.2d 734, 736 (2d. Cir.1992).

While it is true that a district court’s determination whether to exercise declaratory jurisdiction is denominated as discretionary, Muller v. Olin Mathieson Chemical Corp., 404 F.2d 501, 505 (2d Cir.1968), a district court is required to entertain a declaratory judgment action “(1) when the judgment will serve a useful purpose in clarifying and settling the legal relations in issue, or (2) when it will terminate and afford relief from the uncertainty, insecurity, and controversy giving rise to the proceeding.” Continental Cas. Co., 977 F.2d at 737. Here, a declaratory judgment will definitively determine appellant’s rights to use the Starter Marks in the athletic footwear market and resolve the demonstrated uncertainty between the parties that has been generated by this controversy, avoiding attendant expenses. Appellant provided the district court with a sample, prototype shoe of the type intended for sale to consumers. Because there is no uncertainty as to how it will use its House Marks on its athletic footwear, the district court is therefore in a position to conduct a trademark infringement analysis. Accordingly, we conclude that this case is one where declaratory jurisdiction should be exercised.

In sum, we find an actual case or controversy to exist conferring subject matter jurisdiction on the district court, and further concluding that because a declaratory judgment would clarify the legal relations at issue between the parties and afford relief from the controversy regarding whether Starter can use its House Marks in the athletic footwear market, declaratory jurisdiction should be exercised here, and we therefore reverse and remand for further proceedings accordingly.


author: McLAUGHLIN, Circuit Judge:

text:
    Mark Anthony CATO, Petitioner, v. IMMIGRATION AND NATURALIZATION SERVICE, Respondent.
    No. 1682, Docket 93-4039.
    United States Court of Appeals, Second Circuit.
    Argued June 10, 1993.
    Decided May 23, 1996.

      Robert A Murtha, Jr., New York City, for Petitioner.
    Diogenes P. Kekatos, Asst. U.S. Atty., S.D.N.Y., New York City (Roger S. Hayes, U.S. Atty., Mary Jo White, U.S. Atty., James A O’Brien, III, Special Asst. U.S. Atty., Thomas A. Zaccaro, Asst. U.S. Atty., Claude M. Millman, Asst. U.S. Atty., of counsel), for Respondent.
    Before OAKES, WINTER, and McLAUGHLIN, Circuit Judges. •
   McLAUGHLIN, Circuit Judge:

Mark Anthony Cato, a lawful permanent resident of the United States, pled guilty to possession of a loaded firearm, and thereafter the Immigration and Naturalization Service (“INS”) brought deportation proceedings against him. Cato conceded his deportability, but asked for a chance to apply for a discretionary waiver of deportation. The immigration judge found Cato ineligible to apply for such relief, and ordered him deported. The Board of Immigration Appeals (“BIA”) affirmed.

Cato petitioned this Court to review his deportation order. We initially held this case in abeyance pending the BIA’s decision in In re Esposito, Interim Decision No. 3243 (BIA Mar. 30, 1995) (reported at 1995 WL 147030), following our remand of that case, see Esposito v. INS, 987 F.2d 108 (2d Cir.1993). The Esposito proceedings have since come to a close. We now decide Cato’s case on the merits. For the reasons discussed below, the petition for review is denied.

BACKGROUND

Cato, a native and citizen of Jamaica, has lawfully resided in the United States since 1981. In 1990, he was arrested after firing a gun in the direction of other people. On February 28, 1991, Cato pled guilty in New York state court to criminal possession of a weapon in the third degree, in violation of N.Y. Penal Law § 265.02. The court sentenced him to one year’s imprisonment.

On December 12, 1991, the INS served Cato with an order to show cause and notice of hearing, charging that his weapons conviction rendered him deportable from the United States, pursuant to § 241(a)(2)(C) of the Immigration and Nationality Act (“INA”), 8 U.S.C. § 1251(a)(2)(C). At his deportation proceedings, Cato, represented by counsel, conceded his deportability, but requested an opportunity to apply to the Attorney General for a discretionary waiver of deportation pursuant to INA § 212(c), 8 U.S.C. § 1182(c).

Immigration Judge Sydney B. Rosenberg held that Cato was statutorily ineligible for § 212(c) relief. Noting that § 212(e) relief is available to a deportee only if the ground for deportation has an analogous ground for exclusion listed in INA § 212(a), 8 U.S.C. § 1182(a), Judge Rosenberg found that Cato’s ground for deportation — a weapons offense — had no such analogue in § 212(a). Judge Rosenberg ordered Cato deported to Jamaica. Cato appealed to the BIA, which affirmed the order of deportation. The BIA agreed with Judge Rosenberg that Cato was ineligible for § 212(c) relief because “[tjhere is no section 212(a) ground of excludability which corresponds to a charge of deportability under section 241(a)(2)(C) of the [INA] for conviction of a firearms violation.”

Cato petitions this Court for review of his deportation order, arguing that: (1) Congress originally intended that aliens ordered deported because of a weapons conviction be entitled to § 212(e) relief; (2) Congress further intended, through recent amendments to the INA, to make § 212(c) relief available to aliens ordered deported because of a weapons conviction; and (3) if he is not eligible for § 212(c) relief, he is being denied his constitutional right to equal protection.

DISCUSSION

Our question is singular and straightforward: may Cato, ordered deported on the sole ground of his weapons conviction, apply for a § 212(e) waiver of deportation? The answer is no.

I. General Eligibility for § 212(c) Relief

An alien may be denied resident status in this country in one of two ways: (1) if he is already in the United States, he may be deported (under § 241); or (2) if he is not currently in the United States, but seeks to enter, he may be excluded (under § 212). Congress has chosen to treat deportation and exclusion differently: there are some acts or offenses that are grounds for deportation under § 241 which are not grounds for exclusion under § 212, and vice versa. See generally 8 U.S.C. §§ 1151-1365. Therein lies Cato’s problem.

INA § 212 relates only to exclusion, and it sets forth several grounds to deny an alien admission into the United States. See 8 U.S.C. § 1182(a). But under § 212(c) the Attorney General, in her discretion, may allow an alien to be admitted despite § 212(a). See 8 U.S.C. § 1182(c).

While § 212(c), on its face, applies only to excludees, and not to deportees like Cato, we held in Francis v. INS, 532 F.2d 268 (2d Cir.1976), that, for equal protection reasons, § 212(c)’s privilege of discretionary waiver for aliens in exclusion proceedings should also be extended to similarly situated aliens in deportation proceedings. See Francis, 532 F.2d at 272. A deportee and an excludee are similarly situated when the ground for the deportee’s removal from the country is the same as the ground for the excludee’s denial of admission; thus, a § 212(c) waiver becomes available in a deportation proceeding if the reason for deportability is “substantially equivalent” to a ground of exclusion listed in § 212(a). See Bedoya-Valencia v. INS, 6 F.3d 891, 894 (2d Cir.1993); Campos v. INS, 961 F.2d 309, 313 n. 6 (1st Cir.1992).

Going a step further, in Bedoya-Valencia v. INS, 6 F.3d 891 (2d Cir.1993), we held that a deportee whose ground of deportation under § 241 could have no conceivable analogue in the exclusion setting should also be eligible for § 212(c) relief. For example, while an alien may be deported for “entry without inspection,” see 8 U.S.C. § 1251(a)(1)(B), obviously an alien could not be excluded on that ground — an excludee, by definition, has not yet “entered” the country, and, hence, could not possibly have done so without inspection, see Bedoya-Valencia, 6 F.3d at 894-95. In those limited circumstances, we found that a “modest extension” of the Francis rule would promote “coherence and consistency” in the statutory scheme. See id. at 897. We were, perhaps, emboldened by the lack of legislative guidance, and the fact that the Francis rule itself — which was judicially (not legislatively) crafted — gave rise to the “interstitial issue” we faced. Id.

Thus, the confluence of Francis and Bedo-ya-Valencia results in three categories into which a deportee seeking the privilege of a § 212(c) waiver may fall:

(1) The deportee’s ground of deportation may be congruent with a ground of exclusion listed in § 212(a). Such a deportee is eligible for § 212(c) relief.
(2) The deportee’s ground of deportation may be one that could not possibly be analogous to a ground of exclusion. Such a deportee is also eligible for § 212(c) relief.
(3) The deportee’s ground of deportation may be one that could conceivably have an analogous ground of exclusion under § 212(a) but, unhappily, Congress has not chosen to include that ground in § 212(a). Such a deportee is not eligible for § 212(c) relief.

Cato falls squarely into the third group. He does not fall into the first group, because a weapons offense is not a ground of exclusion listed in § 212(a) — Cato candidly concedes as much. Although Cato believes he falls into the second category, his argument is misplaced. There is no question that Congress, had it so chosen, could have included weapons offenses as grounds of exclusion; but it has not. Because a weapons offense is not a ground of deportation that “could not conceivably” have an exclusion counterpart, see Bedoya-Valencia, 6 F.3d at 897, the Bedoya-Valencia reasoning does not apply. Thus, Cato is ineligible for § 212(c) relief.

II. Congressional Intent

In an attempt to stretch § 212(e) to cover him, Cato mounts several assaults on the overall scheme created by Francis and Bedo-ya-Valencia.

First, Cato argues that Congress did intend to extend the privilege of § 212(c) relief to aliens ordered deported because of a weapons conviction. Specifically, he claims that Congress designed § 212(c) to be a broad, humanitarian provision, permitting forgiveness in deportation proceedings to lawful permanent residents with deeply-rooted ties to the United States. Cato asserts that denial of § 212(c) eligibility to weapons offenders violates this intent.

This argument flies in the teeth of the statute itself, which unequivocally provides relief only for exeludees, and, then, only for certain specified grounds of exclusion. See 8 U.S.C. § 212. It also flouts the legislative history, which indicates that Congress intended that § 212(c) relief be granted sparingly. See H.R.Rep. No. 1365, 82nd Cong., 2d Sess. 2 (1952), reprinted in 1952 U.S.C.C.A.N. 1653, 1705 (“any discretionary authority to waive the grounds for exclusion should be carefully restricted to those eases where extenuating circumstances clearly require such action and ... the discretionary authority should be surrounded with strict limitations”). In any event, we rejected Cato’s “original intent” argument, at least implicitly, in Francis: if Congress wished to provide sweeping and generous relief to all deportees with substantial ties to the country, we would have recognized this gesture in Francis, and would not have narrowed our holding to deportees who can show an analogous ground of exclusion in § 212(a). See Francis, 532 F.2d at 273; see also Leal-Rodriguez v. INS, 990 F.2d 939, 949-950 (7th Cir.1993).

III. ADAA and IMMACT

Cato claims that Congress intended, through recent amendments to the INA, to extend § 212(c) relief to aliens ordered deported on the ground of a weapons conviction. He points to the Anti-Drug Abuse Act of 1988 (“ADAA”), Pub.L. No. 100-690, 102 Stat. 4181 (1988), and the Immigration Act of 1990 (“IMMACT”), Pub.L. No. 101-649, 104 Stat. 4978 (1990). But neither of those statutes can carry the weight Cato seeks to place on them.

A ADAA

The ADAA added to federal law two new grounds . of deportation. With ADAA § 7348(a), 102 Stat. 4473, Congress amended INA § 241(a)(14), 8 U.S.C. § 1251(a)(14), to make the illegal possession of any firearm a deportable offense. See 8 U.S.C. 1251(a)(2)(C) (current version); see also Campos, 961 F.2d at 314. And, ADAA § 7344(a), 102 Stat. 4470, amended INA § 241(a)(4), 8 U.S.C. § 1251(a)(4), to include an aggravated felony as a ground for deportation. See 8 U.S.C. § 1251(a)(2)(A)(iii) (current version).

Cato asserts (without citation) that several Senators supported a provision that would have made aggravated-felon-deportees expressly ineligible for § 212(c) relief, and that Congress rejected this provision. Cato then argues that, “[i]n view of the careful congressional consideration given to the deportation of aggravated felons, precluding § 212(c) relief for simple unlawful possession of a handgun would contravene both the spirit and intent of Congress as evidenced in the ADAA” Petitioner’s Brief at 10. We are not persuaded.

Even accepting Cato’s allegations of “careful congressional consideration,” such consideration related only to the eligibility of aggravated felons for § 212(e) relief, and did not relate to eligibility of weapons offenders. As to congressional treatment of weapons offenders in the ADAA:

The amendment [of section 241(a)(14) to include all weapons offenders] itself showed only that Congress believed such offenses were now serious enough to warrant deportation. What, if anything, Congress may have thought on the issue of discretionary relief [for weapons offenders] is simply unknown....

Campos, 961 F.2d at 314. If Congress wanted to confer upon weapons offenders the privilege of discretionary waiver from deportation, it could have done so expressly, or it could have added weapons offenses to § 212(a) as waivable grounds of exclusion. Until it does one of these things, we must assume that Congress intended that weapons offenders be ineligible for § 212(c) relief.

B. IMMACT

With IMMACT § 511(a), 104 Stat. 5052, Congress amended INA § 212(c), 8 U.S.C. § 1182(e), to provide that an alien convicted of an aggravated felony who has served five years or more in prison is ineligible for a discretionary waiver. See 8 U.S.C. § 1182(c). Cato discerns from that provision an intent that permanent resident aliens convicted of aggravated felonies who serve less than five years in prison be automatically eligible for § 212(c) relief. And, Cato argues, it would undermine congressional intent to allow some aggravated felons to apply for § 212(c) relief, but prohibit simple weapons offenders from requesting a discretionary waiver.

But IMMACT § 511(a) has nothing to say about weapons offenders. It simply provides that some aggravated felons are ineligible for § 212(c) relief. It would be perverse to infer from this amendment — which limits the scope of § 212(c) — a concurrent expansion of § 212(c) eligibility to an offense that is neither listed in § 212(a), nor mentioned in IMMACT § 511(a) itself. “By leaving the exceedingly specific language of § 212(c) substantially unchanged, [Congress] can only be said to have expressed a continued desire to limit § 212(e) relief to the listed grounds of exclusion.” Campos, 961 F.2d at 315; see also Leal-Rodriguez, 990 F.2d at 951.

TV. Equal Protection

Finally, Cato argues that, if he is not eligible for § 212(c) relief, his constitutional right to equal protection has been denied. Cato, however, does not claim that his ground of deportation under § 241 — a weapons offense — is substantially equivalent to a ground of exclusion under § 212(a), and that his ineligibility for a discretionary waiver therefore violates Francis. Rather, he claims that his crime is “less serious” than some crimes that qualify for exclusion (and thus are eligible for a § 212(e) waiver), and that this odious result violates equal protection. See U.S. Const. Amend. V, XIV.

Congress has a “facially legitimate and bona fide reason,” Fiallo v. Bell, 430 U.S. 787, 794, 97 S.Ct. 1473, 1479, 52 L.Ed.2d 50 (1977), to treat weapons offenders and other offenders differently. See Guam, Chow Tok v. INS, 538 F.2d 36, 38-39 (2d Cir.1976). The Constitution does not require “Congress to lay out crimes on a spectrum, and grant at least as much discretion for the less serious as for any more serious crimes.” Cabasug v. INS, 847 F.2d 1321, 1327 (9th Cir.1988). Different crimes raise different policy concerns, and it is not a judicial function to second-guess the classifications between offenses that Congress has drawn for purposes of immigration. See generally Correa v. Thornburgh, 901 F.2d 1166, 1173 (2d Cir.1990) (“scope of review as to [an alien’s] equal protection claim is exceedingly narrow”).

CONCLUSION

In sum, we hold that an alien, deported on the ground of a weapons conviction, is ineligible for § 212(c) relief. We have considered all the additional arguments raised by Cato, and find them without merit. Accordingly, the petition for review is DENIED.

      . In Esposito, the BIA held in part that a deportee cannot cure his ineligibility for discretionary relief from deportation under the Immigration and Nationality Act § 212(c), 8 U.S.C. § 1182(c) — because his charged ground of deportation does not have a counterpart ground of exclusion listed in § 212(a) of that Act, 8 U.S.C. § 1182(a) — by showing that his offense may support some further ground for excludability that is so listed. See Esposito, Interim Decision No. 3243 at 13-15.