Otter Products LLC v. Equipped LLC et al

Filing 28

PERMANENT INJUNCTION ORDER AGAINST DEFENDANTS EQUIPPED, LLC AND ARI CIMENT by Judge John F. Walter. (kbr)

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JOHNSON & PHAM, LLP
Christopher D. Johnson, SBN: 222698
E-mail: [e-mail]
Christopher Q. Pham, SBN: 206697
E-mail: [e-mail]
Marcus F. Chaney, SBN: 245227
E-mail: [e-mail]
Ani S. Garibyan, SBN: 274846
E-mail: [e-mail]
6355 Topanga Canyon Boulevard, Suite 326
Woodland Hills, California 91367
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
OTTER PRODUCTS, LLC
Closed

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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Case No.: CV12-04189 JFW (Ex)

OTTER PRODUCTS, LLC, a Colorado
Limited Liability Company,

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PERMANENT INJUNCTION
ORDER AGAINST DEFENDANTS
EQUIPPED, LLC AND ARI
CIMENT

Plaintiff,

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v.
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EQUIPPED, LLC, a New York Limited
Liability Company; ARI CIMENT, an
Individual d/b/a DEAL.FISHER and
d/b/a EQUIPPED LLC; and DOES 1-10,
Inclusive,

Complaint Filed: May 14, 2012

Defendants.

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-1PERMANENT INJUNCTION ORDER AGAINST DEFENDANTS EQUIPPED, LLC AND ARI CIMENT

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Having reviewed the Stipulation to Issuance of Permanent Injunction entered into

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between Plaintiff OTTER PRODUCTS, LLC (“Plaintiff”) and Defendants EQUIPPED, LLC and

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ARI CIMENT (“Defendants”), and good cause appearing, the Court hereby finds as follows:

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a.

WHEREAS Plaintiff is the owner of numerous trademarks

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which it uses in connection with the manufacture, distribution, sale and promotion

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of a wide range of products, including high-quality protective cases, peripherals

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and accessories for portable electronic devices and computers. Plaintiff owns all

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rights in and to a family of federally registered trademarks which include the

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following, among others (collectively, “Plaintiff’s Registered Marks”):

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Trademark

Reg. No.

Reg. Date

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OTTER BOX

2287619

October 19, 1999

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[DESIGN MARK]

3791318

May 18, 2010

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OTTER BOX

3788535

May 11, 2010

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OTTERBOX

3788534

May 11, 2010

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WE’VE GOT

3865367

October 19, 2010

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TECHNOLOGY COVERED

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DEFENDER SERIES

3623789

May 19, 2009

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STRENGTH

4079672

January 3, 2012

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COMMUTER SERIES

3963182

May 17, 2011

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COMMUTER

3791317

May 18, 2010

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IMPACT SERIES

3795187

March 10, 2010

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REFLEX ZONE

4111433

March 13, 2012

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REFLEX SERIES

3972039

May 31, 2011

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UTILITY SERIES

4064940

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ARMOR SERIES

3632231

June 2, 2009

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PINK IS STRENGTH!

4053182

November 8, 2011

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OTTERCARES

4101071

February 21, 2012

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[DESIGN MARK]

4116998

March 27, 2012

November 29, 2011

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2.

WHEREAS Plaintiff also has numerous pending trademarks with the

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United States Patent and Trademark Office. The serial numbers of Plaintiff’s

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pending trademarks are as follows: 85416877; 85456430; 85458259; 85462689;

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85483745; 85505980; 85576166; 85531307; 85505993; 85505986; 85505999;

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85428337; 85288182; 85288187 and 85342514.

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3.

WHEREAS on May 14, 2012, Plaintiff filed its Complaint in this

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Civil Action No. Civil Action No. CV12-04189 JFW (Ex) against Defendants,

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alleging causes of action under §32(1) of the Lanham Act (15 U.S.C. §1114(1))

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for infringement of federally registered trademarks, under §43(c) of the Lanham

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Act (15 U.S.C. 1125(c)) and California Business & Professions Code § 14247 for

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dilution of federally registered and common law trademarks, under §43(a) of the

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Lanham Act (15 U.S.C. §1125(a)) for unfair competition, and under the statutory

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and common law of the State of California to enjoin Defendants’ current and

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prospective infringement and dilution of the Plaintiff’s Marks and unfair

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competition, and to recover monetary damages resulting from those actions.

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4.

WHEREAS Plaintiff served the summons and Complaint on

Defendants on May 29, 2012.
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WHEREAS Defendants are alleged to have sold no less than 10,000

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units of alleged counterfeit OTTERBOX® products on eBay.com and

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Amazon.com, seller ID “deal.fisher”.

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6.

WHEREAS after reviewing the papers and evidentiary support

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provided to Defendants, Defendants have agreed to stipulate to the issuance of a

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permanent injunction with respect to matters referenced in this Stipulation.

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7.

WHEREAS Defendants

deny

the

allegations

asserted

by

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OTTERBOX® and believes that it possesses defenses and claims it could interpose

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against third parties.

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8.

WHEREAS the parties expressly waive any findings of fact,

conclusions of law, statement of decision and any right to notice or right to be
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heard in any matter in connection with or arising out of the filing, rendition or

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entry of the Permanent Injunction Order on this Stipulation for Entry of Permanent

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Injunction, provided however, that no such waiver shall be deemed to exist insofar

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as damages are concerned, it being agreed that Defendants may offer proof in

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defense of Plaintiff’s claims for damages.9. WHEREAS the parties agree that the

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permanent injunction shall remain in full force and effect through the final

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disposition of this action and that any right to set aside the permanent injunction,

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appeal therefrom or to otherwise attack its validity is hereby waived.

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NOW THEREFORE, IT IS HEREBY ORDERED THAT Defendants and its

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agents, employees, officers, directors, owners, attorneys, representatives, successor

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companies, related companies, and all persona acting in concert or participation

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with it, and each of them, are, through the final disposition of this action,

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PERMANENT ENJOINED from:

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a.

The import, export, making, manufacture, reproduction,

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assembly, use, acquisition, purchase, offer, sale, transfer, brokerage, consignment,

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distribution, shipment, licensing, development, display, delivery, marketing,

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advertising or promotion of the counterfeit OTTERBOX® product identified in the

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Complaint and any other unauthorized OTTERBOX® product (including any non-

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genuine reproduction, counterfeit, copy or colorable imitation thereof).

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b.

The import, export, making, manufacture, reproduction,

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assembly, use, acquisition, purchase, offer, sale, transfer, brokerage, consignment,

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distribution, shipment, licensing, development, display, delivery, marketing,

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advertising or promotion of the infringing and diluting product identified in the

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Complaint and any other product which infringes or dilutes any Plaintiff’s Mark,

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trade name and/or trade dress including, but not limited to, any of Plaintiff’s Marks

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at issue in this action.

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c.

The unauthorized use, in any manner whatsoever, of any Plaintiff’s

trademark, trade name and/or trade dress including, but not limited to, the
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Plaintiff’s Marks at issue in this action, any variants, colorable imitations,

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translations and/or simulations thereof and/or any items that are confusingly

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similar thereto, including specifically:

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i.

on or in conjunction with any product or service; and

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ii.

on or in conjunction with any advertising, promotional

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materials, labels, hangtags, packaging, or containers.

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d.

The use of any trademark, trade name, or trade dress that falsely

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represents, or is likely to confuse, mislead or deceive purchasers, customers, or

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members of the public to believe that unauthorized product imported, exported,

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manufactured, reproduced, distributed, assembled, acquired, purchased, offered,

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sold, transferred, brokered, consigned, distributed, stored, shipped, marketed,

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advertised and/or promoted by Defendants originates from Plaintiff, or that said

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merchandise has been sponsored, approved, licensed by, or associated with

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Plaintiff or is, in some way, connected or affiliated with Plaintiff.

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e.

Engaging in any conduct that falsely represents that, or is likely to

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confuse, mislead, or deceive purchasers, customers, or members of the public to

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believe that Defendants themselves are connected with, or is in some way

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sponsored by or affiliated with Plaintiff, purchases product from or otherwise has a

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business relationship with Plaintiff.

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f.

Affixing, applying, annexing, or using in connection with the

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manufacture, distribution, advertising, sale, and/or offering for sale or other use of

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any goods, a false description or representation, including words or symbols,

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tending to falsely describe or represent such goods as being those of Plaintiff.

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g.

Hiding, disposing of, destroying, moving, relocating or transferring

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any and all products, advertising, promotional materials, labels, hangtags,

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packaging or containers bearing any of Plaintiff’s Marks; and/or

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h.

Disposing of, destroying, moving, relocating or transferring any

documents or things, including electronic records, pertaining to the purchase,
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procurement, development, making, manufacture, use, display, advertisement,

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marketing, licensing, sale, offer for sale, distribution, shipping, or delivery of any

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products or services bearing any Plaintiff’s Marks or which otherwise refer or

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relate to Plaintiff or any of Plaintiff’s Marks.

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10.

This Permanent Injunction shall be deemed to have been served upon

Defendants at the time of its execution by the Court.
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The Court finds there is no just reason for delay in entering this

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Permanent Injunction and, pursuant to Rule 54(a) of the Federal Rules of Civil

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Procedure, the Court directs immediate entry of this Permanent Injunction against

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Defendants.
IT IS SO ORDERED.

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DATED: February 19, 2013

___________________________________
Hon. John F. Walter
United States District Court Judge

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-6PERMANENT INJUNCTION ORDER AGAINST DEFENDANTS EQUIPPED, LLC AND ARI CIMENT