Signazon v. Nickelson

Filing 53

Judge Richard G. Stearns: ORDER entered granting 27 Motion for a preliminary injunction. (Zierk, Marsha)

UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
CIVIL ACTION NO. 13-11190-RGS
SIGNAZON CORPORATION
v.
CRAIG NICKELSON d/b/a
ebuysigns.com

MEMORANDUM AND ORDER ON PLAINTIFF’S
MOTION FOR A PRELIMINARY INJUNCTION
August 6, 2013
STEARNS, D.J.
Signazon is a Texas Corporation that maintains places of business in
Charlestown, Massachusetts, and Dallas, Texas. Signazon operates an internet-based
online printing business. Defendant Craig Nickelson operates a competing online sign
printing business, Ebuysigns, as well as an internet-based kitchen design business,
Florida Kitchens, from Lake City, Florida.

Both parties actively market their

businesses on the worldwide web and are known to one another as the result of a
copyright dispute in 2010 that was resolved short of litigation.
On May 15, 2013, the court granted Signazon’s motion for a temporary
restraining order after finding a prima facie case that several of its copyrighted designs
had been appropriated by Nickelson. The court issued a short order of notice. A

hearing was held on May 31, 2013, at which the parties agreed to a standstill to permit
defendant to file objections to the court’s personal jurisdiction or, in the alternative, to
move for a change of venue to the Middle District of Florida. On June 20, 2013, the
court denied both of defendant’s motions and authorized expedited discovery. By
agreement of the panties, an evidentiary hearing on the prayer for a preliminary
injunction was held on August 2, 2013. Witnesses testified for each side, including
Richard Debus, the President of Signazon, and Craig Nickelson, the principal of
Ebuysigns, and appropriate exhibits were received in evidence.
ESSENTIAL FACTS
Given the significantly narrowed request by plaintiff for an injunctive order as
reflected in its Amended Proposed Order on the Motion for a Preliminary Injunction
(Dkt # 41), the court needs only note the following essential facts, which are largely
uncontested. See Applewood Landscape & Nursery Co. v. Hollingsworth, 884 F.2d
1502, 1503 (1st Cir. 1989). The original injunctive orders entered by the court
addressed the preservation of evidence, principally images of defendant’s computer
hard drives and their production under the terms of a protective order. The court relied
on the representation of defendant’s counsel that no further infringing activity would
occur while the litigation was pending and that an injunctive order prohibiting such
activity was unnecessary. However, on July 2, 2013, Debus visited the Facebook page
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of ebuysigns.com where he found six of Signazon’s copyrighted designs being offered
for sale as work product of Ebuysigns.1
By affidavit and in his testimony, Nickelson blames the copying on a freelance
public relations consultant, Meghan Polanco, whom he hired originally some seven
months ago to promote his Florida Kitchens internet presence. Nickelson testified that
in late May or early June, he expanded her portfolio to include the embellishment of
Ebuysign’s Facebook page. He further testified that he did not supervise Polanco or
advise her as to the desired page content. He states rather that after receiving notice
from Signazon of the infringement, he contacted Polanco who told him that she had
randomly selected the Signazon images from a Google Images page and that she did
not realize that the images were proprietary. Finally, he states that he immediately
removed the offending images from the Ebuysign’s Facebook page.
While the prompt removal of the images is verified by the evidence, I am very
skeptical of Nickelson’s attempt to shift the blame for the infringing activity to Polanco.
Moreover, I find it highly improbable that the six images Polanco copied came from
Google Images (where they cannot be found in any one location), and were most likely

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Screen shots of the offending Facebook pages were offered in evidence at the
hearing as well as copies of the original Signazon drawings. There is no question but
that the ebuysigns.com graphics are exact duplicates of Signazon’s copyrighted
designs. Nickelson does not dispute the copying.
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copied directly from Signazon’s web page. Whether this was done at Nickelson’s
direction or not is something that I cannot conclusively decide without hearing
Polanco’s testimony, but at a minimum, Nickelson’s admitted negligence (if that is
what it is) in overseeing the content of Ebuysign’s internet advertising is reason enough
for the entry of a preliminary injunction.
ESSENTIAL LAW
“[T]he test governing the award of a preliminary injunction . . . requires
consideration of (1) the movant’s likelihood of success on the merits, (2) the potential
for irreparable harm, (3) a balancing of the relevant equities, and (4) the effect on the
public interest.” Campbell Soup Co. v. Giles, 47 F.3d 467, 470 (1st Cir. 1995).
“Likelihood of success is the main bearing wall of the four-factor framework.” RossSimons of Warwick, Inc. v. Baccarat, Inc., 102 F.3d 12, 16 (1st Cir. 1996). “[W]hen
the likelihood of success on the merits is great, a movant can show somewhat less in
the way of irreparable harm . . . .” E.E.O.C. v. Astra U.S.A., Inc., 94 F.3d 738, 743
(1st Cir. 1996). The loss of a unique or fleeting business opportunity can constitute
irreparable harm. Starlight Sugar, Inc. v. Soto, 114 F.3d 330, 332 (1st Cir. 1997).
Signazon has easily satisfied the first three factors, while the court takes judicial notice
of the public interest in protecting ownership rights in intellectual property as reflected
by Congress’s enactment of the Copyright Act, 17 U.S.C. §§ 101 et seq. in 1976.
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ORDER
For the foregoing reasons, Signazon’s motion for a preliminary injunction is
ALLOWED, and the court will ORDER as follows.
(1) Nickelson, as well as his associated businesses, affiliates, employees,
officers, directors, and representatives (collectively “Defendant”), is Ordered to
permanently remove the offending six composite images (or images derived from them)
identified in the July 2, 2013 Affidavit of Richard Debus as proprietary to Signazon
from its ebuysigns.com web site or any other web site under Defendant’s direct or
indirect control. Defendant is hereby enjoined from posting or using in any of its
marketing materials, whether internet-based or not, any other image appropriated from
Signazon or substantially derived from Signazon’s copyrighted graphic designs.
(2) Defendant is placed on notice that any violation of this Order will be deemed
by the court as punishable to the full extent provided by 17 U.S.C. § 504(c), as the
court deems appropriate.
(3) The court will entertain an application from plaintiff for an award of
reasonable attorney’s fees for the costs of bringing the July 2, 2013 motion.
SO ORDERED.
/s/ Richard G. Stearns
________________________________
UNITED STATES DISTRICT JUDGE
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