Burberry Limited et al v. K-1 Inc et al

Filing 66

PERMANENT INJUNCTION AND DISMISSAL WITH PREJUDICE by Judge Fernando M. Olguin that this Permanent Injunction shall be and is hereby entered in the within action (see attached Permanent Injunction for further details). Defendants and their agents, ser vants, employees and all persons in active concert and participation with them who receive actual notice of the injunction are hereby restrained and enjoined. Each side shall bear its own fees and costs of suit. Except as provided herein, all claims alleged in the Complaint are dismissed with prejudice. This Injunction shall be deemed to have been served upon Defendants at the time of its execution by the Court. The above-captioned action, shall, upon motion by Burberry, be reopened should Defendants default under the terms of this Injunction or their Settlement Agreement with Burberry. (MD JS-6. Case Terminated.) (jp)

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J. Andrew Coombs (SBN 123881)
[e-mail]
Annie S. Wang (SBN 243027)
[e-mail]
J. Andrew Coombs, A P. C.
517 East Wilson Avenue, Suite 202
Glendale, California 91206
Telephone: [phone]
Facsimile: [phone]

JS-6

Attorneys for Plaintiffs
Burberry Limited and Burberry Limited
Barry J. Reagan (SBN 156095)
Michael H. Brody (SBN 238757)
Slaughter & Reagan, LLP
625 E. Santa Clara Street, Suite 101
Ventura, California 93001
Telephone: [phone]
Facsimile: [phone]
Attorney for all Defendants

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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Burberry Limited (a United Kingdom
corporation) and Burberry Limited (a
New York corporation),

) Case No. CV13-4836 FMO (FFMx)
)
) PERMANENT INJUNCTION AND
) DISMISSALWITH PREJUDICE
Plaintiffs,
)
)
vs.
)
)
K-1, Inc. d/b/a K1 Fashion a/k/a K One )
Fashion a/k/a K 1 Fashions a/k/a K1
)
Fashionwear a/k/a Reckless / K. Fashion )
a/k/a K1 Men’s Fashions, et al.
)
)
Defendants.
)
)
The Court, having read and considered the Joint Stipulation for Entry of

Permanent Injunction and Dismissal with Prejudice that has been executed on behalf
of Plaintiffs Burberry Limited (a United Kingdom corporation) and Burberry Limited
(a New York corporation) (collectively “Burberry”), on the one hand, and Defendants
K-1, Inc., Bijan Zarrabi, Tirdad Ariavand, individually, and dba US Pulse, and ZMZ

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Burberry Limited, et al. v. K-1, Inc., et al.: Permanent Injunction
and Dismissal with Prejudice

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Trading, Inc. (collectively “Defendants”), on the other hand, and good cause

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appearing therefore, hereby:

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ORDERS that this Permanent Injunction shall be and is hereby entered in the

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within action as follows:

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1)

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matter hereof pursuant to 17 U.S.C. § 101 et seq., 17 U.S.C. § 501, 28 U.S.C. §§ 1331

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and 1338, and 28 U.S.C. § 1367. Service of process was properly made against

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Defendants.

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2)

This Court has jurisdiction over the parties to this action and over the subject

Burberry is the owner of all rights in and to the trademark registrations listed in

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Exhibit “A,” attached hereto and incorporated herein by this reference (the “Burberry

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Trademarks”).

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3)

Burberry has expended considerable resources in the creation and commercial

exploitation of the Burberry Trademarks on merchandise and in the enforcement of its
intellectual property rights in the Burberry Trademarks.
4)

Burberry has alleged that Defendants have made unauthorized uses of the

Burberry Trademarks or substantially similar likenesses or colorable imitations
thereof.
5)

Defendants and their agents, servants, employees and all persons in active

concert and participation with them who receive actual notice of the injunction are
hereby restrained and enjoined from:
a)

Infringing the Burberry Trademarks, either directly or contributorily, in

any manner, including generally, but not limited to manufacturing, importing,
distributing, advertising, selling, offering for sale, any unauthorized product
which features any of the Burberry Trademarks (“Unauthorized Products”),
and, specifically:
i) Importing, manufacturing, distributing, advertising, selling, offering
for sale, the Unauthorized Products or any other unauthorized

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Burberry Limited, et al. v. K-1, Inc., et al.: Permanent Injunction
and Dismissal with Prejudice

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products which picture, reproduce, copy or use the likenesses of or

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bear a substantial similarity to any of the Burberry Trademarks;

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ii) Importing, manufacturing, distributing, advertising, selling, offering

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for sale, renting or offering to rent in connection thereto any

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unauthorized promotional materials, labels, packaging or containers

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which picture, reproduce, copy or use the likenesses of or bear a

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confusing similarity to any of the Burberry Trademarks;

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iii) Engaging in any conduct that tends falsely to represent that, or is

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likely to confuse, mislead or deceive purchasers, Defendants’

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customers and/or members of the public to believe, the actions of

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Defendants, the products sold by Defendants, or Defendants

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themselves are connected with Burberry, are sponsored, approved or

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licensed by Burberry, or are affiliated with Burberry; or

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

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importation, manufacture, distribution, advertising, selling, offering

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for sale, or other use of any goods or services, a false description or

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representation, including words or other symbols, tending to falsely

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describe or represent such goods as being those of Burberry.
6)

Each side shall bear its own fees and costs of suit.

7)

Except as provided herein, all claims alleged in the Complaint are dismissed

with prejudice.
8)

This Injunction shall be deemed to have been served upon Defendants at the

time of its execution by the Court.
9)

The Court finds there is no just reason for delay in entering this Injunction and,

pursuant to Rule 54(a) of the Federal Rules of Civil Procedure, the Court directs
immediate entry of this Injunction against Defendants.

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Burberry Limited, et al. v. K-1, Inc., et al.: Permanent Injunction
and Dismissal with Prejudice

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10)

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proceedings and to enter such further orders as may be necessary or appropriate to

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implement and enforce the provisions of this Injunction and the parties’ Settlement

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Agreement.

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should Defendants default under the terms of this Injunction or their Settlement

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Agreement with Burberry.

The Court shall retain jurisdiction of this action to entertain such further

The above-captioned action, shall, upon motion by Burberry, be reopened

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Dated: May 5, 2014

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_________/s/____________
Hon. Fernando M. Olguin
United States District Judge

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Presented By:
J. Andrew Coombs, A Prof. Corp.
By: ___________/s/_____________
J. Andrew Coombs
Annie S. Wang
Attorneys for Plaintiffs Burberry Limited
(a United Kingdom corporation) and
Burberry Limited (a New York corporation)
Slaughter & Reagan, LLP

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By: _________/s/_______________
Barry J. Reagan
Michael H. Brody
Attorney for Defendants
K-1, Inc., Bijan Zarrabi,Tirdad Arivand,
individually and dba US Pulse, and ZMZ Trading, Inc.

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Burberry Limited, et al. v. K-1, Inc., et al.: Permanent Injunction
and Dismissal with Prejudice

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EXHIBIT A

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A Select* Listing of Burberry’s Trademarks

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Registered Mark

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The BURBERRY work mark:

U.S. Registration Nos.
259,571
260,843
510,077
1,133,122
1,607,316
1,828,277
2,624,684
2,629,931
2,875,336
3,879,249

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The BURBERRY CHECK trademark:
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1,241,222
1,855,154
2,022,789
2,015,462
2,689,921
2,845,852
3,529,814

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The BURBERRY CHECK (no color
designation) trademark:

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2,612,272
2,732,617
2,728,709

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Burberry Limited, et al. v. K-1, Inc., et al.: Permanent Injunction
and Dismissal with Prejudice

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The EQUESTRIAN KNIGHT DEVICE
trademark:
862,816
863,179
1,622,186
2,952,399
2,512,119
3,766,097

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*Burberry Limited has its trademarks registered in all major markets, not necessarily
included in the chart above.

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Burberry Limited, et al. v. K-1, Inc., et al.: Permanent Injunction
and Dismissal with Prejudice

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