Luxottica Group S.p.A. v. Bill Palmatary et al

Filing 21

ORDER RE CONSENT JUDGMENT INCLUDING PERMANENT INJUNCTION AND VOLUNTARY DISMISSAL OF CLAIMS AS TO DEFENDANT BILL PALMATARY by Judge Andre Birotte, Jr. IT IS HEREBY ORDERED that, pursuant to the parties' stipulation, that: This Court has jurisdict ion over the parties to this Final Judgment and has jurisdiction over the subject matter hereof pursuant to.15 USC section 1121. Luxottica is the owner of various Ray-Ban trademarks including but not limited the following United States Trademark Registrations. Defendant and his agents, servants, employees and all persons in active concert and participation with him who receive actual notice of this Final Judgment are hereby permanently restrained and enjoined (MD JS-6. Case Terminated.) (jp)

JS-6

1
2
3
4
5
6
7
8

UNITED STATES DISTRICT COURT

9

CENTRAL DISTRICT OF CALIFORNIA

10
11
12

Plaintiff,

13
v.

14
15
16

BILL PALMATARY, an individual;
CHIHUNG SZETO, an individual; and
DOES 1-10, inclusive,
Defendants.

17
18
19
20
21
22
23
24
25
26
27
28

) CASE NO. CV 14-07630-AB-FFM
)
) [PROPOSED] ORDER RE
) CONSENT JUDGMENT
) INCLUDING PERMANENT
) INJUNCTION AND VOLUNTARY
) DISMISSAL OF CLAIMS AS TO
) DEFENDANT BILL PALMATARY
)
)
)
)
)

LUXOTTICA GROUP, S.p.A., an Italian
Corporation,

WHEREAS Plaintiff Luxottica Group, S.P.A. having filed a Complaint in this
action charging Defendant Bill Palmatary with Trademark Infringement, False
Designations of Origin, Trademark Dilution, Unfair Competition, and related state law
claims arising from the alleged illegal importation, distribution, offering for sale, and/or
sale of products bearing counterfeit reproductions of the Ray-Ban Marks (“Counterfeit
Products”), and the parties herein having entered into a Settlement Agreement and
Mutual Release; and the parties hereto desiring to fully settle all of the claims in this
action among the parties to this Final Judgment, IT IS HEREBY ORDERED that,
pursuant to the parties’ stipulation, that:
1.

This Court has jurisdiction over the parties to this Final Judgment and has

jurisdiction over the subject matter hereof pursuant to .15 U.S.C. § 1121.
1
[PROPOSED] ORDER

1

2.

Luxottica is the owner of various Ray-Ban trademarks (collectively, he “Ray-

2

Ban Marks”), including but not limited the following United States Trademark

3

Registrations:

4
5
6

Trademark

Registration No.
650,499

sunglasses, shooting glasses, and
ophthalmic lenses, in class 26.

7
8

1,093,658

ophthalmic products and accessories –
namely, sunglasses; eyeglasses;
spectacles; lenses and frames for
sunglasses, eyeglasses, spectacles and
goggles; and cases and other protective
covers for sunglasses, eyeglasses,
spectacles in class 9.

1,726,955

bags; namely, tote, duffle and all-purpose
sports bags, in class 18.

9
10
11
12
13

Good And Services

14

cloths for cleaning ophthalmic products,
in class 21.

15
16

clothing and headgear; namely, hats, in
class 25.

17
18
19

1,080,886

ophthalmic products and accessories –
namely, sunglasses; eyeglasses;
spectacles; lenses and frames for
sunglasses, eyeglasses, spectacles – in
class 9.

1,490,305

clothing, namely, t-shirts, in class 25.

2,718,485

goods made of leather and imitation
leather, namely, wallets, card cases for
business cards, calling cards, name cards
and credit cards in class 18.

20
21
22
23
24
25
26
27
28

clothing for men and women, namely,
polo shirts; headgear, namely, berets and
2
[PROPOSED] ORDER

caps.

1
1,320,460

sunglasses and carrying cases there for, in
class 9.

3,522,603

2

sunglasses, eyeglasses, lenses for
eyeglasses, eyeglasses frames, cases for
eyeglasses, in class 9.

3
4
5
6
7
8
3.

9

Defendant and his agents, servants, employees and all persons in active

10

concert and participation with him who receive actual notice of this Final Judgment are

11

hereby permanently restrained and enjoined from infringing upon the Ray-Ban Marks

12

either directly or contributorily in any manner, including:
(a)

13

Manufacturing, importing, producing, distributing, circulating, selling,

14

offering for sale, importing, exporting, advertising, promoting, displaying, shipping or

15

marketing products bearing the Ray-Ban Marks or marks identical, substantially

16

indistinguishable, and/or confusingly similar thereto;
(b)

17

Using the Ray-Ban Marks or any reproduction, counterfeit, copy or

18

colorable imitation thereof in connection with the manufacture,' importation,

19

distribution, advertisement, offer for sale and/or sale of merchandise, or in any manner

20

likely to cause others to believe that Defendant's products are authorized, licensed,

21

and/or sponsored by Ray-Ban;

22

(c)

Shipping, delivering, holding for sale, distributing, 'returning,

23

transferring or otherwise moving, storing or disposing of in any manner any products

24

identified in Paragraph 3(a) or (b) above, except as otherwise provided in the parties’

25

written Settlement Agreement;

26

(d)

Assisting, aiding or attempting to assist or aid any other person or

27

entity in performing any of the prohibited activities referred to in Paragraphs 3(a) to 3(c)

28

above.
3
[PROPOSED] ORDER

1

(e)

Paragraph 3 of this Consent Judgment shall not be construed to

2

restrict the lawful sale of genuine Ray-Ban products by Defendant and his agents,

3

servants, and assigns where said persons are employees and/or non-controlling

4

shareholders/investors/members of a business licensed and/or authorized by Luxottica to

5

perform the acts described in Paragraphs 3(a) to 3(d) above.

6

4.

The jurisdiction of this Court is retained for the purpose of making any

7

further orders necessary or proper for the construction, amendment, and/or modification

8

of this Final Judgment, the enforcement thereof and the punishment of any violations

9

thereof.

10
11
12

5.

The jurisdiction of this Court is retained for the purpose of making any further

orders necessary or proper for enforcement of the settlement between the parties.
6.

The execution of this Consent Judgment shall serve to bind and obligate

13

the parties hereto. However, this Consent Judgment shall not have preclusive effect on

14

those who are not specifically released in the parties' written settlement agreement, all

15

claims against whom Plaintiff expressly reserves.

16
17

IT IS SO ORDERED.

18
19

DATED: February 27, 2015

__________________________
HON. ANDRÉ BIROTTE JR.
United States District Judge

20
21
22
23
24
25
26
27
28
4

[PROPOSED] ORDER