Starbucks Corporation v. Hitman Glass et al

Filing 52

CONSENT JUDGMENT AND PERMANENT INJUNCTION AGAINST DEFENDANT HITMAN GLAS (SEE DOCUMENT RE SPECIFICS) 51 by Judge Otis D. Wright, II ( MD JS-6. Case Terminated ) (lc)

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K&L GATES LLP
10100 Santa Monica Blvd., 8th Floor
Los Angeles, CA 90067
Telephone: [phone]
Facsimile: [phone]
Seth A. Gold (SBN 163220)
[e-mail]
Rebecca Liu (SBN 300870)
[e-mail]

JS-6

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K&L GATES LLP
925 Fourth Avenue, Suite 2900
Seattle, WA 98104-1158
Telephone: [phone]
Facsimile: [phone]
Pallavi Mehta Wahi
[e-mail]
(admitted pro hac vice)
Aaron Millstein
[e-mail]
(admitted pro hac vice)
Attorneys for Plaintiff
Starbucks Corporation d/b/a/ Starbucks
Coffee Company

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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STARBUCKS CORPORATION d/b/a
STARBUCKS COFFEE COMPANY, a
Washington corporation,
Plaintiffs,

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vs.
HITMAN GLASS, a California
corporation; JAMES LANDGRAF, an
individual residing in Oregon and doing
business under the Oregon assumed
business name EVOL GLASS; and DOES
1 through 10, inclusive,

Case No. 2:16-CV-03937-ODW-PJW
[PROPOSED] CONSENT JUDGMENT
XXXXXXXXX
AND PERMANENT INJUNCTION
AGAINST DEFENDANT HITMAN
GLASS
Judge:

Hon. Otis D. Wright II

Defendants.

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CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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This action came before the Court, the Honorable Otis D. Wright, II, United

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States District Judge presiding, on the Stipulation for Consent Judgment and Entry of

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Permanent Injunction (the “Stipulation”) filed by Plaintiff Starbucks Corporation d/b/a

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Starbucks Coffee Company (“Starbucks Corp.”) and Defendant Hitman Glass. Having

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reviewed the Stipulation and good cause appearing, the Court hereby finds as follows:

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1.

Starbucks Corp. is the owner of all rights, title, and interest in numerous

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trademarks for the Siren Logo and the 40th Anniversary Siren Logo, which trademarks

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it has used and uses in connection with the distribution, sale, advertising, and

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promotion of various goods and services, including but not limited to coffee products,

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restaurant and café services, coffee cups, tea cups, mugs, glassware, dishes, plates and

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bowls, toys and books, and, T-shirts, caps, sweatshirts, jackets, aprons, and other

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clothing items (collectively, the “Starbucks Goods and Services”), and which

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trademarks are registered in the United States as set forth below:

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Trademark

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Siren Logo Black
& White
Siren Logo Black
& White
Siren Logo Black
& White
Siren Logo Black
& White
Siren Logo Black
& White
Siren Logo Black
& White
Siren Logo Black
& White
Siren Logo Black
& White
Siren Logo Black
& White

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Reg. No.

Reg. Date

Trademark

1,542,775

June 6, 1989

1,815,938

January 11, 1994

2,028,943

January, 7 1997

2,176,976

July 28, 1998

3,298,945

September 25, 2007

3,673,335

August 25, 2009

1,943,361

December 12, 1995

2,120,653

December 9, 1997

3,428,127

May 13, 2008
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CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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Siren Logo
Green, Black, &
White
Siren Logo
Green, Black, &
White
Siren Logo
Green, Black, &
White
Siren Logo
Green, Black, &
White
Siren Logo
Green, Black, &
White
Siren Logo
Green, Black, &
White
40th
Anniversary
Siren Logo Black
& White
40th
Anniversary
Siren Logo Black
& White
40th
Anniversary
Siren Logo Black
& White

1,815,937

January 11, 1994

2,266,351

August, 3, 1999

2,266,352

August, 3 1999

2,325,182

March 7, 2000

1,893,602

May 9, 1995

3,428,128

May 13, 2008

4,415,862

October 8, 2013

4,538,053

May 27, 2014

4,639,908

November 18, 2014

40th
Anniversary
Siren Logo
Green & White
40th
Anniversary
Siren Logo
Green & White
40th
Anniversary
Siren Logo
Green & White

4,538,585

May 27, 2014

4,572,688

July 22, 2014

4,635,864

November 11, 2014

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CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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Collectively, the above trademarks, including all federal registrations and common law

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rights for the Siren Logo and the 40th Anniversary Siren Logo, are referred to herein

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as the “Starbucks Marks.”

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2.

Starbucks Corp. has used the Starbucks Marks comprising the Siren Logo

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at least with respect to restaurant services serving coffee, among other things, in

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commerce continuously since as early as 1988 and has used the Starbucks Marks

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comprising the Siren Logo in connection with, among other things, the promotion and

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offering for sale of all the Starbucks Goods and Services in commerce continuously

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since at least as early as 2008; Starbucks Corp. has used the Starbucks Marks

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comprising the 40th Anniversary Siren Logo in connection with among other things

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the promotion and offering for sale of the Starbucks Goods and Services in commerce

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continuously since at least as early as 2012.

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3.

As a result of the widespread, exclusive, and continuous use of the

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Starbucks Marks to identify the Starbucks Goods and Services and to identify

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Starbucks Corp. as their source, Starbucks Corp. owns valid and subsisting federal

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statutory and common law rights to the Starbucks Marks.

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4.

The Starbucks Marks are distinctive to the consuming public.

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5.

As a result of Starbucks Corp.’s investment, the Starbucks Marks have

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come to symbolize the high quality of the Starbucks Goods and Services with which

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the Starbucks Marks are used, and the Starbucks Marks have acquired and represent

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invaluable distinction, goodwill, and reputation that are exclusive to Starbucks Corp.

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6.

As a result of their inherent and commercial distinctiveness, as well as

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their widespread use and promotion throughout the United States, the Starbucks Marks

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are famous within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. §

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1125(c).

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7.

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Starbucks owns United States copyright registrations for the Siren Logo

and the 40th Anniversary Siren Logo, including United States copyright Registration

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3

CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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No. VA 875-932 and Registration No. VA 1-768-520 (the “Starbucks Copyrights”), as

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set forth below:

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Copyright

Reg. No.

Reg. Date

Starbucks Coffee Siren Logo

VA 875-932

March 9, 1998

Starbucks 40th Anniversary
Siren Logo

VA 1-768-520

Copyright

April 26, 2011

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8.

Starbucks Corp. filed this action on June 3, 2016 against defendants

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Hitman Glass, a California corporation, and James Landgraf, an individual residing in

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Oregon and doing business under the Oregon assumed business name Evol Glass,

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seeking injunctive relief and damages based on the following alleged claims: (1)

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Federal Trademark Dilution pursuant to the Lanham Act (15 U.S.C. § 1125(c)); (2)

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California Trademark Dilution pursuant to California Business and Professions Code §

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14247; (3) Federal Copyright Infringement pursuant to the Copyright Act (17 U.S.C. §

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501 et seq.); (4) Federal Trademark Infringement pursuant to the Lanham Act (15

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U.S.C. § 1114); and, (5) False Designation of Origin pursuant to the Lanham Act (15

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U.S.C. § 1125(a)). The gravamen of Starbucks Corp.’s complaint is that Hitman Glass

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and Evol Glass sold a line of products (the “Accused Products”) that diluted and/or
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CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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infringed the Starbucks Marks and infringed the Starbucks Copyrights. The Accused

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Products include the following:

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9.

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July 21, 2016.

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10.

Starbucks Corp. served the Summons and Complaint on Hitman Glass on

With respect to the claims for Federal Trademark Dilution, Copyright

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Infringement, Trademark Infringement, and False Designation of Origin, this Court has

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original and/or exclusive jurisdiction over the subject matter of this action and Hitman

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Glass pursuant to 28 U.S.C. §§ 1331 and 1338(a) and (b); with respect to the claim for

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California Trademark Dilution pursuant to California Business and Professions Code,

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this Court has supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a); venue is

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proper in this Court pursuant to 28 U.S.C. § 1391(b) and (c).

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11.

Hitman Glass filed an answer to the Complaint on September 9, 2016.
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CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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12.

Hitman Glass admits that Starbucks Corp. is the owner of all rights, title,

and interest in the Starbucks Marks and in the Starbucks Copyrights.
13.

Hitman Glass does not contest that the Starbucks Marks and the Starbucks

Copyrights are valid and enforceable and that the Starbucks Marks are famous.
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Starting after Starbucks Corp. acquired protectable exclusive rights in the

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Starbucks Marks and after the Starbucks Marks became famous within the meaning of

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Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), without Starbucks Corp.’s

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permission, Hitman Glass began using on the Accused Products a mark confusingly

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and substantially similar to the Starbucks Marks and to the material protected by the

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Starbucks Copyrights.

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thousand five-hundred twelve (1,512) units of the Accused Products (the “Subject

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Accused Products”).

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15.

Hitman Glass has represented that it sold a total of one-

Hitman Glass’ acts have caused and are likely to continue causing dilution

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by blurring and to dilute the distinctive quality of the Starbucks Marks, constitute

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infringement of Starbucks Copyrights, and constitute infringement of certain of

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Starbucks Marks.

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Starbucks Marks. This dilution by blurring has irreparably harmed Starbucks Corp.

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because no monetary damages can adequately compensate for the dilution of the

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distinctive quality of the Starbucks Marks.

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16.

Consumers have associated the Accused Products with the

Hitman Glass has agreed to entry of this Consent Judgment and

Permanent Injunction.
17.

Hitman Glass is unaware of any other interested parties in this litigation

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besides Evol Glass, and Hitman Glass is not representing the interests of any entity

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other than those of Hitman Glass. Hitman Glass is signing this Consent Judgment and

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Permanent Injunction on its own volition.

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NOW THEREFORE, upon consent of the parties hereto, it is HEREBY
ORDERED, ADJUDGED, and DECREED that:

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CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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1.

Hitman Glass, together with all of its officers, directors, employees,

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agents, representatives, owners, attorneys, successor companies, related companies,

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and all persons acting in concert or participation with it, and each of them, are

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permanently enjoined and restrained from directly or indirectly:

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a.

making, using, selling, advertising, promoting, or authorizing any

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third party to make, use, sell, advertise, or promote, any product or service bearing or

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utilizing in any way any of the Starbucks Marks, or any other mark that is a copy,

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simulation, confusingly similar variation, or colorable imitation of the Starbucks

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Marks;

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b.

engaging in any activity that is likely to dilute or impair the

distinctiveness of any of the Starbucks Marks;

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c.

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any of the Starbucks Marks;

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d.

engaging in any activity that infringes Starbucks Corp.’s rights in

using any word, term, name, symbol, device, trademark, logo, or

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design that tends to falsely represent, or is likely to confuse, mislead, cause mistake, or

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deceive, consumers, purchasers, Hitman Glass’ customers, prospective customers, or

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any member of the public that Hitman Glass’ promotions, advertisements, products, or

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services originate from or have been sponsored by, approved by, are affiliated with, are

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connected to, or licensed by, or are otherwise associated with Starbucks Corp.;

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e.

making, using, selling, advertising, promoting, or authorizing any

third party to make, use, sell, advertise, or promote any of the Accused Products;

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f.

reproducing, making derivative works of, distributing, or displaying

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the materials protected by the Starbucks Copyrights or any substantially similar

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materials including those materials included among the Accused Products;

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2.

This Consent Judgment constitutes a final judgment concerning this

action with respect to only defendant Hitman Glass.

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CONSENT JUDGMENT AND
PERMANENT INJUNCTION

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3.

This Consent Judgment and Permanent Injunction shall be binding upon

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and shall inure to the benefit of the parties and their respective successors, assigns, and

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acquiring companies.

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4.

If Hitman Glass is found by the Court to be in contempt of, or to have

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violated this Consent Judgment and Permanent Injunction, the parties agree that

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Starbucks Corp. shall be entitled to all relief available which it may request from the

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Court, including sanctions for contempt, damages, injunctive relief, attorneys' fees,

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costs, and any and all other relief that is proper if there is such violation.

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5.

The parties waive any right to appeal from the filing or entry of this

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Consent Judgment and Permanent Injunction based on the Stipulation; the parties also

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waive any right to attack the validity of this Consent Judgment and Permanent

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Injunction based on the Stipulation; the parties waive any and all findings of fact and

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conclusions of law arising out of the entry of this Consent Judgment and Permanent

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Injunction other than those set forth above; each of the parties shall bear its own

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attorneys’ fees and costs other than as contemplated by the parties’ settlement

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agreement.

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6.

The Court shall retain jurisdiction of this matter for purposes of enforcing

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the terms of this Consent Judgment and Permanent Injunction. Except as otherwise

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provided herein, this action is fully resolved with prejudice.

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7.

This Consent Judgment and Permanent Injunction shall remain in full

force and effect unless and until modified by order of this Court.
IT IS SO ORDERED.
April 24
Dated: ___________, 2017

Hon. Otis D. Wright II
United States District Judge

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CONSENT JUDGMENT AND
PERMANENT INJUNCTION