ABS-CBN Corporation, et al v. John Does, et al

Filing 25

PRELIMINARY INJUNCTION ORDER by Judge Stephen V. Wilson. (See document for specifics) (mrgo)

FILED

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CLERK, U.S. DISTRICT COURT

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Dec 14, 2016

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CENTRAL DISTRICT OF CALIFORNIA

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PMC

BY: ___________________ DEPUTY

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IN THE UNITED STATES DISTRICT COURT

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FOR THE CENTRAL DISTRICT OF CALIFORNIA

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13 ABS-CBN CORPORATION, a
Philippines corporation,
14 ABS-CBN FILM PRODUCTIONS,
INC. d/b/a Star Cinema, a Philippines
15 corporation, and ABS-CBN
INTERNATIONAL CORPORATION,
16 a California corporation,
Plaintiffs,

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18

v.

19 JOHN DOES 1–10 inclusive
d/b/a,<,CINEPINOY.TF> a/k/a
20 <PINOYFLIX.TF>, and DOES 1-10
and/or XYZ Corporations 2-100,
21 inclusive,
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Case No. 2:16-cv-07918-SVW-SS
xxxxxxxxxxxxxx
[PROPOSED] PRELIMINARY
INJUNCTION ORDER

Judge: Hon. Stephen V. Wilson
Date: December 12, 2016
Time: 1:30 p.m.
Courtroom: 6
Complaint Filed: October 24, 2016

Defendants.

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SMRH:480125962.2

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The Court having granted (Dkt. No. 13) Plaintiffs ABS-CBN Corporation’s,

2 ABS-CBN Film Productions, Inc.’s, and ABS-CBN International’s (collectively,
3 “ABS-CBN” or “Plaintiffs”) Ex Parte Application for a Temporary Restraining
4 Order (“TRO”) and an Order to Show Cause (“OSC”) Re: Preliminary Injunction
5 (the “Application”) against Defendants John Does 1–10 inclusive doing business as
6 <CINEPINOY.TF> and/or <PINOYFLIX.TF> (collectively, “Defendants”), and
7 having reviewing the Application and papers in support thereof, and the file in this
8 civil action and there having been no showing why the requested Preliminary
9 Injunction should not issue, the Court hereby rules as follows:
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1.

Plaintiffs’ request for the Preliminary Injunction is granted.

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2.

Plaintiffs have created a publication website (“Publication Website”)1

12 and are ordered to post copies of this Order as well as the other pleadings in this
13 action and then send a message to Defendants’ anonymous customer service contact
14 boxes on their websites (to the extent that they remain in working order) advising
15 Defendants to view the Publication Website because this Preliminary Injunction has
16 been entered against Defendants.
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3.

ABS-CBN has satisfied the requirements for a preliminary injunction to

18 issue. ABS-CBN has demonstrated a probability of success on the merits of its
19 claims as to Defendants, as set forth in its Complaint in this case, and the potential
20 for irreparable injury resulting from Defendants’ conduct as set forth in the
21 Application. Specifically, ABS-CBN has shown that it is likely to succeed on its
22 claims that Defendants are knowingly and intentionally advertising, promoting,
23 distributing, and performing ABS-CBN’s copyrighted works for instant streaming
24 and using ABS-CBN’s trademarks without authorization through the Internet
25 websites operating under the domain names identified as cinepinoy.tf and
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https://collaborate.sheppardmullin.com/sheppardmullin/autoLogin.action?userID=8
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SMRH:480125962.2

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1 pinoyflix.tf (“Subject Domain Names”). Further, the prohibition against the transfer
2 of the Subject Domain Names preserves the status quo.
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4.

ABS-CBN has established that it will suffer irreparable harm in the

4 absence of immediate relief. Among other things, Defendants are (a) depriving
5 ABS-CBN of its right to determine the manner in which its trademarks are presented
6 to consumers; (b) defrauding consumers into thinking Defendants’ broadcast
7 distribution services for pirated versions of ABS-CBN’s copyrighted works are
8 authorized by ABS-CBN; (c) deceiving the public as to ABS-CBN’s sponsorship of
9 and/or association with Defendants’ illegal broadcast distribution services and the
10 websites through which such content is performed, marketed, advertised, and
11 distributed; (d) wrongfully trading and capitalizing on ABS-CBN’s reputation and
12 goodwill and the commercial value of the ABS-CBN trademarks; and (e) interfering
13 with ABS-CBN’s ability to market its copyrighted works and distribution services
14 and educate consumers about its brand via the Internet in a free and fair
15 marketplace.
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5.

ABS-CBN has demonstrated that the balance of equities tips sharply in

17 its favor. Defendants do not have any legitimate interest that would be damaged by
18 the requested preliminary injunction. An injunction is also in the public interest
19 because it will effectuate the policy and purpose of the Copyright Act to protect
20 intellectual property rights and to incentivize the creation of copyrightable works. It
21 will also prevent consumer deception and confusion.
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6.

The Court hereby orders that Defendants and their subsidiaries,

23 officers, agents, servants, directors, employees, servants, partners, representatives,
24 assigns, distributors, successors, related companies, and attorneys, and/or all persons
25 in active concert or participation with the Defendants or with any of the foregoing,
26 including any corporation or other entity in which Defendants have or had any
27 interest, or play or played any role in the creation, organization, funding, or
28 operating of, are preliminary enjoined from:
SMRH:480125962.2

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(a)

Advertising, promoting, performing, copying, broadcasting,

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performing, and/or distributing any ABS-CBN Copyrighted Works

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(including but not limited to those identified on Exhibit A hereto)

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and/or content that currently exists or which exists in the future;

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(b)

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(including but not limited to those identified on Exhibit B hereto), or

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any mark similar thereto, in connection with the advertisement,

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promotion, or distribution of pirated content, from using any logo, trade

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name or trademark or trade dress that may be calculated to falsely

Infringing, counterfeiting, or diluting the ABS-CBN Marks

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advertise the services of Defendants as being sponsored by, authorized

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by, endorsed by, or in any way associated with ABS-CBN;

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(c)

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CBN, through sponsorship or association, or engaging in any act that is

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likely to falsely cause members of the public to believe any pirated

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content or services of Defendants is in any way endorsed by, approved

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by, and/or associated with ABS-CBN;

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(d)

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colorable imitation of the ABS-CBN Marks in connection with the

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publicity, promotion, advertising, or distribution of any pirated content

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by Defendants; from affixing, applying, annexing or using in

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connection with the promotion, distribution, or advertisement of any

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pirated content, a false description or representation, including words or

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other symbols tending to falsely describe or represent Defendants’

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pirated content as being in any way endorsed by ABS-CBN;

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(e)

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colorable imitations of the ABS-CBN name or trademarks; and from

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otherwise unfairly competing with ABS-CBN;

Falsely representing themselves as being connected with ABS-

Using any reproduction, counterfeit, infringement, copy or

Engaging in search engine optimization strategies using

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SMRH:480125962.2

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(f)

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the World Wide Web based illegal marketplace used to copy,

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distribute, perform, advertise, or promote pirated content bearing

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counterfeits or infringements of the ABS-CBN Marks;

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(g)

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pinoyflix.tf; and

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(h)

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person or business entity in or performing any of the activities referred

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to in paragraphs 6(a) to (g) above.

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7.

Creating, maintaining, operating, joining, and participating in,

Transferring the Subject Domain Names cinepinoy.tf and

Knowingly assisting, inducing, aiding or abetting any other

The above preliminary injunction shall remain in effect until the final

11 adjudication in this lawsuit.
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8.

Plaintiffs shall give notice of this Order to the registrars for the Subject

13 Domain Names (cinepinoy.tf and pinoyflix.tf), including the requirement that,
14 pending further order of the Court:
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(a)

the domain-name registrars for the Subject Domain Names are directed,

16 to the extent not already done, to transfer to Plaintiffs’ counsel, for deposit with the
17 Court, any domain name certificates for cinepinoy.tf and pinoyflix.tf,
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(b)

the domain-name registrars for the Subject Domain Names are directed,

19 to the extent not already done, to immediately lock each of the Subject Domain
20 Names,
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(c)

the domain-name registrars for the Subject Domain Names are directed

22 to immediately notify each registrant of record of the Order and of the locking of the
23 domain name,
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(d)

The registrars for the Subject Domain Names shall immediately, to the

25 extent not already done, assist and/or facilitate the transfer of the Subject Doman
26 Names to a holding account with a registrar of ABS-CBN’s choosing (“New
27 Registrar”), where they will be held in trust for the Court during the pendency of
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SMRH:480125962.2

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1 this action and set to automatically redirect to Publication Website, to be maintained
2 by Plaintiffs as described below, and
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(e)

To the extent the registrars do not assist in changing the registrars of

4 record for the domains under their respective control within one business day of
5 receipt of this Order, the Top Level Domain (“TLD”) registries for the Subject
6 Domain Names or their administrators, including backend registry operators or
7 administrators, within five business days of receipt of this Order, shall change or
8 assist in changing, the registrar record for the Subject Domain Names to a holding
9 account with the New Registrar, where they will be held in trust for the Court during
10 the pendency of this action and set to automatically redirect to Plaintiffs’ Publication
11 Website.
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(f)

Plaintiffs shall continue to maintain the Publication Website so that,

13 upon such redirection, a copy of all of the pleadings, other documents and Court
14 orders issued in this matter will be immediately visible to Defendants the moment
15 they type either of the Subject Domain Names into a web browser.
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9.

Plaintiffs shall include a copy of this Order in any correspondence they

17 send to any person or entity they believe is acting in active concert or anticipation
18 with any of the Defendants, including without limitation any person or entity who
19 provides hosting services for one the websites specified in this Order.
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10.

Plaintiffs may apply to this Court for modifications of this preliminary

21 injunction as appropriate, including without limitation to request that the terms of
22 this Order be extended to such further and additional domain names as Plaintiffs
23 may discover are being used by any or all of the Defendants or their officers, agents,
24 servants, employees, attorneys, or anyone in active concert or participation with any
25 of them to infringe any of Plaintiffs’ rights.
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11.

The bond Plaintiffs posted in the sum of $10,000 (Dkt. No. 14) shall

27 constitute the bond for the payment of such costs and damages as may be incurred
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SMRH:480125962.2

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1 or suffered by any party who is found to have been wrongfully preliminarily
2 enjoined or restrained.
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12.

This preliminary injunction is issued on this 14th day of ______, 2016
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Dec

4 at ______ am/pm.
3:30 xxx
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Dated: ___________ 2016
December 14,

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_______________________________
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_________________________________
HON
DISTRICT
C
HON. UNITED STATES DISTRICT JUDGE
STEPHEN V. WILSON

8
9 Presented By:

SHEPPARD, MULLIN, RICHTER & HAMPTON LLP

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By: /s/ Rebecca Edelson
Rebecca Edelson
Attorneys for Plaintiffs
ABS-CBN CORPORATION, ABS-CBN FILM
PRODUCTIONS, INC. D/B/A STAR CINEMA, and
ABS-CBN INTERNATIONAL

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SMRH:480125962.2

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EXHIBIT A

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2 Copyright Registrations:

Movies

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Title of Work:

Registration

Number:

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Registration

Date:

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A Second Chance

PA 1-965-375

12/8/2015

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Always be my Maybe

PA 1-997-531

8/23/2016

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Ang Tanging Pamilya

PA 1-997-527

8/23/2016

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Beauty and the Bestie

PA 1-997-536

8/23/2016

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Bride for Rent

PA 1-940-387

4/28/2015

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Crazy Beautiful You

PA 1-940-375

4/28/2015

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Da Possessed

PA 1-940-384

4/28/2015

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Ettiquitte for Mistresses

PA 1-997-538

8/23/2016

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Everyday I Love You

PA 1-997-539

8/23/2016

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Everything About Her

PA 1-997-532

8/23/2016

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Girl Boy Bakla Tomboy

PA 1-997-541

8/23/2016

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It Takes a Man and a Woman

PA 1-997-528

8/23/2016

Just the Way You Are

PA 1-997-542

8/23/2016

Maria Leonora Teresa

PA 1-940-381

4/28/2015

Maybe this Time

PA 1-940-383

4/28/2015

My Cactus Heart

PA 1-997-544

8/23/2016

My Illegal Wife

PA 1-997-545

8/23/2016

Past Tense

PA 1-940-379

4/28/2015

She's Dating the Gangster

PA 1-997-547

8/23/2016

Starting Over Again

PA 1-940-386

4/28/2015

The Achy Breaky Hearts

PA 1-997-529

8/23/2016

The Breakup Playlist

PA 1-997-537

8/23/2016

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SMRH:480125962.2

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The Love Affair

PA 1-997-543

8/23/2016

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Television Shows

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Title of Work:

Registration

Number:

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Registration

Date:

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Ang Probinsyano, July 28, 2016

PA 1-995-716

8/3/2016

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ASAP, July 24, 2016

PA 1-995-722

8/3/2016

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Banana Sundae, July 24, 2016

PA 1-995-725

8/3/2016

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Be My Lady, July 28, 2016

PA 1-995-707

8/3/2016

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Born for You, July 28, 2016

PA 1-995-710

8/3/2016

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Doble Kara, July 28, 2016

PA 1-995-711

8/3/2016

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Dolce Amore, July 28, 2016

PA 1-995-712

8/3/2016

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Failon Ngayon, July 23, 2016

PA 1-995-743

8/3/2016

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Gandang Gabi Vice, July 24, 2016

PA 1-995-727

8/3/2016

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Goin Bulilit, July 24, 2016

PA 1-995-729

8/3/2016

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Home Sweetie Home, July 23, 2016

PA 1-995-735

8/3/2016

Ipaglaban Mo, July 23, 2016

PA 1-995-744

8/3/2016

My Super D, July 15, 2016

PA 1-995-724

8/3/2016

Tubig At Langis, July 28, 2016

PA 1-995-705

8/3/2016

We Will Survive, July 15, 2016

PA 1-995-748

8/3/2016

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SMRH:480125962.2

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EXHIBIT B

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2 Registered Trademarks:
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Trademark Registration Registration
Number
Date
ABS-CBN
2,334,131
March 28,
2000
TFC
3,733,072
Jan. 5, 2010

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10 Common Law Trademark:
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Trademark

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SMRH:480125962.2

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Class/Services
IC 038 – television broadcasting
services via satellite and cable
IC 038 – Cable television
broadcast
IC 041 – television show
production
and programming