The opinion of the court was delivered by: WEIGEL
STANLEY A. WEIGEL, UNITED STATES DISTRICT JUDGE
Plaintiff seeks a declaratory judgment that its videotape performance system does not violate defendants' copyright. Defendants counterclaim for copyright infringement, alleging that plaintiff's system infringes on their exclusive right to publicly perform their motion pictures. The system, which plaintiff installs and operates, allows a hotel to offer its guests the opportunity to view videotapes in their rooms. Using a remote control unit, the guest selects a videotape which triggers the system to play that tape and display it on the television set in that room.
The matter now before this Court is defendants' motion for court approval of notice of potential infringement. Defendants seek to send a notification letter of the pending litigation to plaintiff's hotel owner customers who have installed or are under contract to install plaintiff's video system. Plaintiff maintains that sending the letter would be actionable for bad faith. Therefore, defendants seek this Court's approval of the letter as a good-faith form of notification in order to avoid a subsequent attack by plaintiff on the ground that the notification was sent in bad faith. Defendants' motion is well-taken.
Plaintiff opposes defendants' motion on the grounds that: (1) this is a discovery matter which should be brought before the magistrate; and (2) defendants are acting in bad faith.
Plaintiff's contention that this is a discovery matter which should be brought before the Magistrate is without merit because defendants are not seeking to discover or prevent discovery of information through their motion.
However, as discussed below, a patent or copyright holder, acting in good faith, has the right to notify a competitor's customers of the pendency of an infringement suit and warn them of similar actions. Neither plaintiff's alleged oral notice, the content of which is unknown and subject to dispute, nor plaintiff's offers to provide written notice, eliminate defendants' right to provide good-faith written notice to plaintiff's hotel owner customers.
Defendants' proposed letter advises the concerned hotels in neutral, non-inflammatory language of the litigation and their potential exposure. Defendants maintain the proposed letter serves the hotels' interests by providing important information concerning their decision to install and operate On Command's system. It also serves defendants' legitimate interest in negating any possible claim that they are estopped by their failure to give notice or that laches bars action against the hotels. See M. Nimmer, Nimmer on Copyright §§ 12.06, 13.07 (1990).
Courts routinely uphold good faith notifications to non-parties of intellectual property claims. See Virtue v. Creamery Package Mfg. Co., 227 U.S. 8, 18, 57 L. Ed. 393, 33 S. Ct. 202 (1913) ("The only limitation on the right to issue [warnings of patent infringement] is the requirement of good faith."); Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 489 F. Supp. 174, 180 (N.D. Ga. 1980) ("The court finds that the actions taken by plaintiff and its agents which are complained of, including notifying retailers and the public that defendants' goods were infringing copies of copyrighted articles, were lawful and good-faith efforts to protect a valid copyright"), aff'd, 684 F.2d 821 (11th Cir. 1982); see also Airtex Corp. v. Shelley Radiant Ceiling Co., 536 F.2d 145, 155-56 (7th Cir. 1976); Magnetic Eng'g & Mfg Co. v. Dings Mfg. Co., 178 F.2d 866, 868 (2d Cir. 1950). Notification of intellectual property claims or disputes is prohibited only where the alleged infringer can demonstrate bad faith by the rightholder. See Lucasey Mfg. Corp. v. Anchor Pad Int'l, Inc., 698 F. Supp. 190 (N.D. Cal. 1988).
To be in good faith, the communications must not contain misstatements or other language unsupported by the allegations of the complaint in the pending infringement action. Chromium Indus. v. Mirror Polishing & Plating, 448 F. Supp. 544, 558-9 (N.D. Ill. 1978); Celotex Co. v. Insulite Co., 39 F.2d 213, 217-218 (D.C. Minn. 1930).
Defendants' proposed letter is a neutrally-worded notification that is consistent with court rulings. The letter advises hotels that On Command is a party to litigation concerning defendants' copyrighted motion pictures and states that the hotels installing the On Command system may be liable for damages and subject to an injunction if defendants prevail. The letter also suggests that the hotel may wish to contact On Command or the hotel's counsel regarding this matter.
Plaintiff fails to support its claim that defendants' desire to send its notification letter constitutes bad faith. Indeed, plaintiff makes no objection to the content of defendants' proposed letter other ...