Hill Design v. Hodgdon, et al.

2003 DNH 151

Opinion

Hill Design v. Hodgdon, et al. CV-03-074-M 09/02/03 UNITED STATES DISTRICT COURT

DISTRICT OF NEW HAMPSHIRE

Hill Design, Inc., Plaintiffs

v. Civil No. 03-74-M Opinion No. 2003 DNH 151 Vivian Hodgdon; Art in Cooking, Inc.; Patricia Carpenter; and The Garden Shed, LLC, Defendants

O R D E R

In his second Report (document no. 36), the Magistrate Judge

again recommends granting in part, and denying in part

plaintiff's reguest for injunctive relief. Specifically, the

Magistrate Judge recommends that "Defendants not be enjoined from

selling items from the Helen Ross Inventory to fill outstanding

contracts pre-dating April 11, 2002, or BROWN BAG items that

Hodgdon made lawfully at the Hill facility under an oral

agreement with the Natkiels." In other words, the Magistrate

Judge recommends enjoining defendants only from selling items

from the Helen Ross inventory to fill orders placed after April 11 , 2002.1 For the reasons given below, the Magistrate Judge's

Report and Recommendation is accepted.

The Magistrate Judge's recommendation to enjoin only

prospective sales of items from the Helen Ross inventory is

appropriate, given that the record supports a finding that before

April 11, 2002, Paul Natkiel directed customers to Hodgdon, and

authorized Hodgdon to fill their orders from the Helen Ross

inventory. Because Natkiel authorized Hodgdon to fill orders

from the Helen Ross inventory, plaintiff is unlikely to succeed

on its claim that defendants infringed its distribution right by

using the Helen Ross inventory to fill orders directed to Hodgdon

by Natkiel. Moreover, as the Magistrate Judge correctly pointed

out, to enjoin Hodgdon from using the Helen Ross inventory to

fill orders placed prior to April 11 could potentially expose her

to liability for breach of contract, for doing nothing more than

1 This recommendation is, of course, in addition to the Magistrate Judge's previous recommendation that defendants be enjoined from suggesting or implying an ongoing business relationship with plaintiff and from obscuring or obstructing plaintiff's copyright notices. That part of the Magistrate Judge's previous Report and Recommendation was not remanded by this court's order of May 27, 2002 (document no. 33), and is hereby accepted.

2 accepting orders at Paul Natkiel's direction. Such a result

would be inequitable.

It is also unlikely that plaintiff will succeed on the

merits of a copyright infringement claim based upon defendants'

sales of the items Hodgdon made at the Hill facility. The facts

found support the Magistrate's conclusion that Hodgdon was the

lawful owner of those copies, not merely the possessor of them,

which distinguishes this case from Platt & Munk Co. v. Republic

Graphics, Inc., 315 F.2d 847 (2d Cir. 1963). In Platt & Mun k,

the defendant printing company attempted to sell copies of

plaintiff's copyrighted educational toys, produced for plaintiff

by defendant, after plaintiff rejected them as defective. I d . at

850. Here, by contrast, Hodgdon not only supplied the materials

(and electricity) to make the copies in question, but did so

under the authority of defendant and/or the Natkiels, and with

their express permission to distribute those copies, in exchange

for royalties. While Hodgdon may well owe royalties for the

copies she sold, or may sell in the future, that matter is

separate and distinct from her right to sell them.

3 Because the Magistrate Judge correctly determined that

plaintiff has little likelihood of success on its claims that

defendants infringed its copyrights by distributing items from

the Helen Ross inventory to fill orders placed before April 11,

2002, or by distributing the items that Hodgdon made at the Hill

facility, the Magistrate Judge's Report and Recommendation

(document no. 36) is accepted and adopted.

Pending a final determination on the merits in this case,

Vivian Hodgdon and Art In Cooking, Inc., together with their

agents, affiliates, subsidiaries and any person in active concert

with or participation with them, are hereby enjoined and

restrained from suggesting or implying that they have an ongoing

business relationship with plaintiff unless expressly authorized

to do so in writing, and are enjoined and restrained from

obstructing or obscuring plaintiff's copyright notice in

connection with the sale, promotion, advertising, or offering of

items made by Vivian Hodgdon at the Hill facility, or obtained by

Hodgdon through other sources. Those same parties are also

enjoined and restrained from selling items from the Helen Ross

inventory to fill contracts post-dating April 11, 2002, but are

4 not enjoined or restrained from selling items from the Helen Ross

inventory to fill outstanding contracts pre-dating April 11,

2002, and are not enjoined or restrained from selling BROWN BAG

items that Hodgdon made lawfully at the Hill facility under an

oral agreement with the Natkiels.

SO ORDERED.

Steven J. McAuliffe United States District Judge

September 2, 2003

cc: David P. Eby, Esg. Garfield B. Goodrum, Jr., Esg. Vivian Hodgdon