Sanborn Manufacturing Company, Inc. v. Campbell Hausfeld/scott Fetzer Company

HEANEY, Senior Circuit Judge,

concurring in part and dissenting in part.

I would affirm the district court in all respects but one. I agree that the product recall, the mailing of notices to past customers, and the accounting sought by Sanborn are not warranted as preliminary injunctive relief in this case. In my view, however, the record does support a grant of limited injunc-tive relief with respect to the approximately 30,000 air compressors that were still in the hands of distributors or retailers at the time this matter was before the district court.

At the hearing on the preliminary injunction, Campbell agreed to cease further sales of the two disputed air compressor models with the UL label. The district court ruled that this agreement mooted Sanborn’s request for an injunction against further sales of units. I cannot agree. It is clear from the record that 30,000 units had not reached the ultimate consumer at the time of the hearing. It is also clear that it would not have worked a great hardship to have required Campbell to supply the necessary decals to retailers and distributors to cover the UL label on those compressors. This simple action, together with Campbell’s agreement not to put more compressors with the disputed UL label into the market, would have adequately protected Sanborn’s rights and maintained the status quo pending a full hearing on the propriety of injunctive relief — and would have done so at a minimal cost to Campbell.

*491Accordingly, I dissent from the panel opinion to the extent that it affirms the district court’s decision to deny all relief to Sanborn.