Santa Barbara Winery, Inc. v. Foster's Wine Estates Americas Company et al

Filing 50

CONSENT DECREE by Judge Jacqueline H. Nguyen. IT IS HEREBY ORDERED, ADJUDGED AND DECREED THAT: SBW own common law rights to the trademark SANTA BARBARA WINERY throughout the United States. Treasury, its employees, officers, directors, servants subsidiaries, parents and licensees, and all person in active concert and participation with it, shall cease all use of the SANTA BARBARA WINE COMPANY mark. ( MD JS-6. Case Terminated ) (bp)

-PLA Santa Barbara Winery, Inc. v. Foster's Wine Estates Americas Company et al

Doc. 50

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JOHN B. SCHERLING (State Bar No. 122234) [e-mail] SUGHRUE MION, PLLC 4250 Executive Square, Suite 900 San Diego, California 92037 Telephone: [phone] Facsimile: [phone] GARY D. KRUGMAN (pro hac vice) LEIGH ANN LINDQUIST (pro hac vice) SHAHRZAD POORMOSLEH (CA State Bar No. 223146) SUGHRUE MION, PLLC 2100 Pennsylvania Avenue NW, Suite 600 Washington, D.C. 20037 Telephone: [phone] Facsimile: [phone] Attorneys for Defendants and Counterclaim Plaintiffs TREASURY WINE ESTATES AMERICAS COMPANY, FOSTER'S WINE ESTATES SALES CO. and Defendant TREASURY WINE ESTATES HOLDINGS, INC. K. ANDREW KENT ([e-mail]) GREGORY N. ALBRIGHT ([e-mail]) RINCON VENTURE LAW GROUP 2815 Townsgate Road, Suite 215 Westlake Village, California 91361 Telephone: [phone] Facsimile: [phone] Attorneys for Plaintiff and Counterclaim Defendant SANTA BARBARA WINERY, INC.

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UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA - WESTERN DIVISION SANTA BARBARA WINERY, INC., Plaintiff, vs. TREASURY WINE ESTATES AMERICAS COMPANY, FOSTER'S WINE ESTATES SALES CO., and TREASURY WINE ESTATES HOLDINGS, INC., and DOES 1 through 10 inclusive, Defendants. And related counterclaims. CASE NO. 2:10-cv-01026-JHN ­PLAx CONSENT DECREE

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Plaintiff, Santa Barbara Winery, Inc. (hereinafter "SBW") filed the above civil action against Defendants Treasury Wine Estates Americas Company, Foster's Wine Estates Sales Co. and Treasury Wine Estates Holdings, Inc. (hereinafter collectively referred to as "Treasury"). The Court, upon the consent and request of SBW and Treasury, hereby

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acknowledges that the parties have reached an agreement as to their dispute and
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have stipulated to the following facts and to entry of this Decree.

FACTS 1. This Court has jurisdiction over the parties and the subject matter of

this action pursuant to 15 U.S.C. §1121 and 28 U.S.C. §§1331 and 1338. 2. SBW owns the trademark SANTA BARBARA WINERY in

connection with wines and related goods. 3. SBW has been using its SANTA BARBARA WINERY mark since in

or about 1962, and has made use of its mark in interstate commerce throughout the United States continuously since in or about the 1960s. 4. In or about December 2009, Treasury began using a trademark, trade

name and brand SANTA BARBARA WINE COMPANY in connection with wines. 5. Plaintiff SBW's complaint in this action has alleged claims for

infringement of its common law mark, under Section 43(a) of the Lanham Act, 15
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U.S.C. § 1125(a), and related claims. Treasury has disputed SBW's claims.
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6.
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SBW and Treasury have now entered a confidential written settlement

agreement ("January 2011 Settlement Agreement") resolving the issues in this case, subject to the entry of this Consent Decree, and have filed a Stipulation with the Court requesting the entry of this Consent Decree.

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ORDER Accordingly, pursuant to the Agreement between the parties, and their Stipulation for Consent Judgment filed concurrently herewith, it is hereby ordered, adjudged and decreed that: 1. SBW owns common law rights to the trademark SANTA BARBARA

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WINERY throughout the United States.
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2.

Treasury, its employees, officers, directors, servants, subsidiaries,

parents and licensees, and all persons in active concert and participation with it, shall cease all use of the SANTA BARBARA WINE COMPANY mark, brand and name in any way, including on products, labels, advertising and promotional materials, including websites. In addition, Treasury shall not adopt, make use of or seek to register a trademark, brand or trade name in commerce in any way, including on products, labels, advertising and promotional materials, including websites, whose formative or component terms include the words "Santa Barbara" followed in any manner by "Wine," "Winery" or an approximation of those terms (including, for instance the foreign equivalents of "wine," "wines" and "winery" and terms closely synonymous to winery such as "cellars" and "vineyards"); nor shall Treasury adopt or use in commerce, or seek to register, a trademark, brand or trade name that is confusingly similar to SBW's SANTA BARBARA WINERY trademark. Treasury's trademark usage shall also keep a safe distance from the SANTA BARBARA WINERY trademark, beyond mere avoidance of confusing

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similarity, and Treasury shall comply with all provisions of the parties' January
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2011 Settlement Agreement that provide the parameters for Treasury to maintain
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that safe distance. 3. Treasury shall be allowed a transition period in order to sell off its

existing inventory of wines that was already bottled and labeled as of November

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23, 2010 with the "SANTA BARBARA WINE COMPANY" brand, under the following conditions set forth below: a. Treasury may continue to sell its existing inventory of wine

already labeled with SANTA BARBARA WINE COMPANY until January 31, 2011 in the State of California, and until June 30, 2011 in the remaining

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states, territories and possessions of the United States. Any advertisement or
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Distribution of wine under a SANTA BARBARA WINE COMPANY label after these dates shall be a violation of this Decree. b. Treasury's inventory sell-off is conditioned on its compliance

with the monetary compensation and advertising provisions of the parties' January 2011 Settlement Agreement. 4. Treasury shall provide notice, to those of its authorized distributors who

received shipment of SANTA BARBARA WINE COMPANY wine, of the terms of Paragraphs 2 and 3 of this Decree, and shall advise them that, by Court decree, they are required to comply with the distribution, advertising and sale restrictions of those paragraphs by October 10, 2011. 5. In the event of a breach of this Judgment, or violation of any of its

terms, SBW shall have the right to apply to this Court and this Court shall have the power to award appropriate monetary and equitable relief, including, without limitation, issuance of a temporary restraining order or preliminary injunction to prevent further violations of the terms of this Judgment.

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6.
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In the event Treasury is found by the Court to have violated a term of

this Judgment, Plaintiff SBW shall be entitled to recover liquidated damages from Treasury in the amount of the greater of $10,000 per violation for each state or territory in which the violation occurs, or 70% (seventy percent) of Treasury's gross profit from any sale in violation of this Consent Decree. The liquidated

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damages provided for in this Consent Decree shall be considered damages and not a license to share profits or revenues among unrelated entities. SBW shall also be entitled to recovery of SBW's attorneys fees incurred in applying to the Court for a remedy for a violation of this Judgment. Such relief shall not limit the Court's power to issue additional equitable relief or monetary sanctions to ensure future

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compliance with the judgment. In any proceeding upon this Consent Decree, the
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Court may award reasonable attorneys' fees and costs to the prevailing party consistent with the Lanham Act and applicable case law. 7. On August 31, 2011, Treasury shall serve upon Plaintiff a report,

made under oath, confirming the steps it has taken in order to ensure compliance by Treasury with the provisions of this Consent Decree. The report will not be filed with the Court, except in the event of a dispute between the parties. 8. prejudice. 9. Decree. 10. No appeal shall be taken by the parties to this Judgment. This Court retains jurisdiction for purposes of enforcing this Consent The parties stipulate that Treasury's Counterclaim be dismissed with

Approved and consented to: // // //

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//
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//
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// // //

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SANTA BARBARA WINERY, INC. By:

TREASURY WINE ESTATES AMERICAS COMPANY; FOSTER'S FOSTER'S WINE ESTATES SALES CO.; TREASURY WINE ESTATES HOLDINGS, INC. By: Name: Title: Date:

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Name: Title: Date: IT IS SO ORDERED.

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DATED: March 02, 2011 Jacqueline H. Nguyen United States District Judge

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