British Broadcasting Corporation et al v. Scott Stander & Associates, Inc. et al

Filing 141

CONSENT JUDGMENT AND PERMANENT INJUNCTION by Judge Fernando M. Olguin. It is hereby ORDERED, ADJUDGED, and DECREED that: (1) The DWTS Marks Are Valid And Enforceable. The DWTS Marks are famous, valid, and enforceable. (2) Permanent Injunction Against SS and A. SS and A, and all of its agents, employees, representatives, customers, successors, assigns, attorneys, and all other persons acting for, with, by, through, or under authority from SS and A, or in concert or participation with SS and A, shall immediately and permanently cease and refrain. (3) SS and A shall pay the BBC Entities the agreed upon sum by the date set forth in the Settlement Agreement. (SEE ATTACHMENT FOR FURTHER DETAILS). (jp)

FILED
CLERK, U.S. DISTRICT COURT

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ADRIAN M. PRUETZ - State Bar No. 118215
[e-mail]
ERICA J. VAN LOON - State Bar No. 227712
[e-mail]
REX HWANG - State Bar No. 221079
[e-mail]
NICHOLAS E. HUSKINS - State Bar No. 299133
[e-mail]
GLASER WEIL FINK
HOWARD AVCHEN & SHAPIRO LLP
10250 Constellation Boulevard, 19th Floor
Los Angeles, California 90067
Telephone: [phone]
Facsimile: [phone]

CENTRAL DISTRICT OF CALIFORNIA

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WESTERN DIVISION

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vdr
BY: ___________________ DEPUTY

UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

Attorneys for Plaintiffs
British Broadcasting Corporation,
BBC Worldwide, Ltd., and
DWTS Productions, LLC fka
BBC Worldwide Productions, LLC

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JUNE 27 2017

BRITISH BROADCASTING
CORPORATION, a foreign corporation,
BBC WORLDWIDE, LTD., a foreign
limited company, and DWTS
PRODUCTIONS, LLC fka BBC
Worldwide Productions, LLC, a
California limited liability company,

Case No.:
-------------------- CONSENT
[PROPOSED]

JUDGMENT AND PERMANENT
INJUNCTION

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Plaintiffs,

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v.

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SCOTT STANDER & ASSOCIATES,
INC., a California corporation, SCOTT
STANDER, an individual, and THE
STANDER GROUP, INC., a California
corporation,
Defendants.

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[PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION
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(Ex)

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Plaintiffs British Broadcasting Corporation, BBC Worldwide, Ltd. (collectively,

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the “BBC”), and DWTS Productions, LLC, aka Lime Grove Productions, LLC, fka

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BBC Worldwide Productions, LLC (“DWTS Productions”) (all plaintiffs collectively,

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the “BBC Entities”) on the one hand, and Defendants Scott Stander & Associates, Inc.,

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Scott Stander, and The Stander Group, Inc. (collectively, “SS&A”) on the other (each

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a “Party,” and collectively the “Parties”), having consented to this judgment and the

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terms of the permanent injunction set forth below, this Court hereby finds as follows:

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1.

This case arises under the laws of the United States, specifically the

trademark laws of the United States, 15 U.S.C. § 1114. This Court has original

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jurisdiction over this action under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338.

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This Court has supplemental jurisdiction under 28 U.S.C. § 1367 because the claims

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are so related as to form part of the same case or controversy.

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2.

Scott Stander & Associates, Inc., Scott Stander, and The Stander Group,

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Inc. reside in this judicial district and are subject to personal jurisdiction in this

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district. A substantial portion of the events giving rise to this action occurred in this

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district. Personal jurisdiction and venue are therefore proper in this district pursuant

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to 28 U.S.C. § 1391.

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3.

The BBC owns and produces the extremely popular television program

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“Dancing With The Stars” (“DWTS”), which has continuously aired in the United

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States since 2005. The DWTS show features celebrity contestants paired with

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professional dancers that compete in a weekly dance contest. Each couple performs

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predetermined dances and competes against the others for the judges’ points and

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audience votes. The couple receiving the lowest combined total of judges’ points and

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audience votes is eliminated each week until only the champion dance pair remains.

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4.

The BBC owns intellectual property rights related to DWTS, including

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common law and federally incontestable registered trademark rights to the trademark

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DANCING WITH THE STARS for entertainment services, including shows, stage

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events, theatrical performances, concerts, and live performances (United States Patent
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and Trademark Office (“USPTO”) Reg. No. 3,749,844) (the “DWTS Wordmark”).

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The BBC also owns common law trademark rights to the current iteration of the

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DWTS logo (the “DWTS Logo”), as a result of consistent use of the mark in

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commerce in connection with the promotion, marketing, and advertisement of the

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DWTS television and live touring shows since as early as March 2010. The DWTS

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Wordmark and DWTS Logo (collectively, the “DWTS Marks”) are widely

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recognized by the consuming public and are famous.

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5.

DWTS Productions has contracts with professional dancers that perform

on the DWTS show, including, but not limited to, Valentin Chmerkovskiy, Emma
Slater, Sharna Burgess, Peta Murgatroyd, and Jenna Johnson (the “DWTS Dancers”).
6.

SS&A is the producer of various live performance stage shows which

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feature DWTS dancers performing live dances. Such shows include “Ballroom With

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A Twist,” “Ballroom With A Twist-Mas!,” “Dancing With A Twist,” “Dancing With

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A Twist-Mas,” “Dancing With The Movies,” and “Dance To The Movies”

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(collectively, “SS&A’s Live Shows”). SS&A’s Shows are performed at theaters

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across the nation, and tickets are promoted and sold on numerous theater websites, as

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well as online ticket retailers such as TicketMaster.com.

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7.

The Parties’ have agreed to settle this dispute and have entered into a

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binding Confidential Settlement Agreement (“Settlement Agreement”). And

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consistent with the terms of the Parties’ Settlement Agreement, SS&A consents to

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entry of judgment in the above-captioned case and entry of the following permanent

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injunction order against it.

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8.

The parties waive the entry of findings of fact and conclusions of law

under Rules 52 and 65 of the Federal Rules of Civil Procedure.
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The permanent injunction order will be entered under Federal Rule of

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Civil Procedure 65 and will constitute the final judgment in this matter. SS&A

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waives the right to appeal from this judgment and will bear its respective costs,

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including any attorney’s fees or other expenses of this litigation.
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10.

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This Court should retain jurisdiction over this matter for the purpose of

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implementing and enforcing the permanent injunction order. If SS&A violates the

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permanent injunction order, it may be subject to civil and criminal sanctions for

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contempt of court.
In accordance with the Parties’ Settlement Agreement, the parties hereto

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stipulate and agree to this consent judgment and to the entry of a permanent

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injunction against SS&A in the form set forth below.

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It is hereby ORDERED, ADJUDGED, and DECREED that:

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1.

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The DWTS Marks Are Valid And Enforceable. The DWTS Marks are

famous, valid, and enforceable.
2.

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Permanent Injunction Against SS&A. SS&A, and all of its agents,

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employees, representatives, customers, successors, assigns, attorneys, and all other

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persons acting for, with, by, through, or under authority from SS&A, or in concert or

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participation with SS&A, shall immediately and permanently cease and refrain

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from:

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a. Directly or indirectly, infringing the DWTS Marks in any manner,

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including using the DWTS Marks, or any similar variations thereof.

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SS&A may use the phrase “Dancing With The Stars” as a factual or

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descriptive reference to its dancers or other talent, but only in the

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limited manner described in Section A(2)(d) of the Parties’ Settlement

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Agreement;

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b. Marketing, advertising, or promoting any of the SS&A Live Shows,

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or any other live dance show produced by SS&A in any media

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platform, in any manner that implies any association, affiliation,

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authorization, or sponsorship by DWTS or the BBC Entities,

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including, without limitation, using the DWTS Logo or a confusingly

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similar version thereof, or describing any SS&A Live Show as a

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“spinoff” of, or “from” the DWTS show.
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c. Creating, making, designing, displaying, disseminating, posting,

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adopting, endorsing, or otherwise using any and all marketing,

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advertising, or promotional materials in a manner that is inconsistent

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with the restrictions and limitations set forth in the Parties’ Settlement

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Agreement;
d. Use of all marketing, advertising, or other promotional material

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already created that violates the sections above. To the extent third

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parties (such as show venues) have already ordered, paid for, or

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displayed any marketing, advertising, or other promotional material

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for an upcoming SS&A Live Show that violates the sections above,

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SS&A shall cancel any such orders and inform these third parties that

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such materials must be immediately removed and destroyed. SS&A

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is free to provide replacement materials that do not infringe on the

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BBC Entities’ intellectual property or otherwise violate the sections

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above;
e. Inducing the breach of, or otherwise interfering with, the contractual

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relationships or prospective economic relationships between the BBC

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Entities and any of the DWTS Dancers. This includes, but is not

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limited to, engaging, hiring, contracting with, or paying the DWTS

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Dancers to perform in SS&A Live Shows, or any other live dance

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show produced by SS&A, without obtaining prior written

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confirmation from (1) any DWTS Dancers that they have obtained

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prior written permission from the BBC Entities to perform in said

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show, and (2) the BBC Entities that they have in fact given such

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written permission to such dancer(s).

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3.

Payment of Settlement Sum. SS&A shall pay the BBC Entities the

agreed upon sum by the date set forth in the Settlement Agreement.
4.

Service. Service may be made upon the Parties by registered mail or
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overnight delivery service (acceptance signature required) addressed as follows:

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To SS&A: Through Counsel for SS&A, Peter J. Babos, Law Offices of Peter

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Babos, 3731 Wilshire Blvd, Suite 940, Los Angeles, California, 90010.

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To the BBC Entities: Through counsel for the BBC Entities, Erica J. Van Loon,

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Glaser Weil Fink Howard Avchen & Shapiro LLP, 10250 Constellation Blvd.,

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19th Floor, Los Angeles, California 90067.

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A copy of this Consent Judgment and Permanent Injunction shall be deemed

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sufficient notice under Federal Rule of Civil Procedure 65.
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Dispute Resolution. Any dispute concerning the interpretation or

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enforcement of the terms of the Settlement Agreement or this Consent Judgment and

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Permanent Injunction shall first be addressed by written notice to the other party

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followed by a formal meet and confer between counsel for both Parties an attempting

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to resolve the dispute. If resolution cannot be accomplished between counsel, the

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Parties further agree to then submit the matter to formal mediation before ADR

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Services, Inc., in Los Angeles, California. The Parties shall mutually cooperate to

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select the ADR Services mediator, and the cost of the mediation shall be shared

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equally by both sides of the dispute. If the Parties are unable to resolve the dispute at

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mediation, the dispute may then be submitted by either party to binding arbitration

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before the Judicial Arbitration and Mediation Services (“JAMS”) in Los Angeles,

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California. In the event of an arbitration, the Parties shall mutually cooperate to select

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a JAMS arbitrator. Any arbitration will be conducted in accordance with the then

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current JAMS Comprehensive Arbitration Rules. Nothing herein is intended to waive

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the provision of California law pertaining to arbitration, including without limitation

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California Civil Procedures Code § 1283.05(A).

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6.

Entry of Judgment. The Court expressly determines that there is no just

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reason for delay in entering this Consent Judgment and Permanent Injunction

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pursuant to Federal Rule of Civil Procedure 54(a), and the Court enters this Consent

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Judgment and Permanent Injunction against SS&A.
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June 27, 2017

/s/ Fernando M. Olguin