3M Company v. Paylessbeauty

Filing 54

STIPULATED CONSENT JUDGMENT AND PERMANENT INJUNCTION by Judge James V. Selna: IT IS THEREFORE ORDERED that 1. Defendants shall pay 3M the total sum of $60,000, as set forth in the Settlement Agreement. 2. Defendants, their agents, servants, emp loyees, officers and all persons and entities in active concert and participation with them, are permanently enjoined from any of the following: (see document for further details) Related to: Stipulation for Settlement 53 . (MD JS-6. Case Terminated) (bm)

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 1 of 9 Page ID #:911

JAYME C. LONG (Bar. No. 202867)
[e-mail]
STEPHANIE PEATMAN (Bar No. 299577)
[e-mail]
DENTONS US LLP
601 South Figueroa Street, Suite 2500
Los Angeles, California 90017-5704
Telephone: [phone]
Facsimile: [phone]

JS-6

CHRISTOPHER M. WEIMER
(Pro Hac Vice)
(Texas Bar No. 24061894)
[e-mail]
PIRKEY BARBER PLLC
1801 East 6th Street, Suite 300
Austin, TX 78702
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
3M COMPANY
IN THE UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OF CALIFORNIA – WESTERN DIVISION
3M COMPANY,

Case No. 2:20-cv-10536-JVS-JEM

Plaintiff,
STIPULATED CONSENT JUDGMENT
AND PERMANENT INJUNCTION

vs.
RAGE BEAUTY, INC, BLUETOUCH INC.,
AND THEMIS CONSULTING GROUP d/b/a
SALON BACKBAR,
Defendants.

Judge: Hon. James V. Selna
Magistrate: Hon. John E. McDermott

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 2 of 9 Page ID #:912

The undersigned counsel for Plaintiff 3M Company (“Plaintiff” or “3M”) and
Defendants Rage Beauty, Inc.; Bluetouch Inc.; and Themis Consulting Group
Inc.d/b/a Salon Backbar (together, “Defendants”) (collectively, the “Stipulating
Parties”), in the above-captioned action, hereby stipulate and agree that:
WHEREAS, 3M filed the above-captioned case against the Defendants in the
Central District of California, Western Division, on November 18, 2020 (the
“Lawsuit”); and
WHEREAS, 3M filed its First Amended Complaint on January 25, 2021 (Dkt.
052) seeking injunctive relief and monetary damages against Defendants for
infringement of 3M’s famous federally-registered 3M trademarks under Section
32(1) of the Lanham Act, 15 U.S.C. § 1114(1), for unfair competition and false
designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),
for dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and for
substantial and related claims under California Business & Professions Code, §§
17200 et seq., as well as claims under the statutory and common laws of the State of
California;
WHEREAS, Defendants state that they no longer market or sell 3M products,
and have no intention of marketing or selling 3M products, now or in the future;
WHEREAS, on or about February 12, 2021, Defendants and 3M entered into
a Settlement and Mutual Release Agreement (the “Settlement Agreement”) wherein
Defendants, inter alia, agreed to pay to 3M or 3M’s chosen charity a total of $60,000
and further agreed to the entry of this Consent Judgment and Permanent Injunction;
WHEREAS, Defendants state that they are stipulating to the entry of this
Consent Judgment and Permanent Injunction in order to avoid the uncertainties and
costs of litigation; and
WHEREAS, Defendants and 3M have stipulated to entry of this Consent

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 3 of 9 Page ID #:913

Judgment and Permanent Injunction without trial or adjudication of any issue of law
or fact herein and without the Defendants admitting liability for any of the violations
3M alleged in the First Amended Complaint.
NOW, THEREFORE, Defendants and 3M having requested the Court to enter
this Consent Judgment and Permanent Injunction, there Court HEREBY FINDS:
FINDINGS
1.

This Court has jurisdiction over the subject matter of this case and over

the Stipulating Parties.
2.

Venue is proper as to the Stipulating Parties in the Central District of

California pursuant to 28 U.S.C. § 1391(b).
3.

The First Amended Complaint states prima facie claims upon which

relief may be granted against the Defendants under 15 U.S.C. §§ 1114(1), 1116(d),
1125(a)(1)(A), 1125(a)(1)(B), and 1125(c) as well as California Business &
Professions Code, §§ 17200 et seq. and 17500 et seq.
4.

3M is the owner of numerous federal trademark registrations, including

specifically (i) U.S. Trademark Reg. No. 3,398,329, which covers the standardcharacter 3M mark in International Classes 9 and 10 for, inter alia, respirators (the
“’329 Registration”), (ii) U.S. Trademark Reg. No. 2,692,036, which covers the 3M
logo for, inter alia, a “full line of surgical masks, face shields, and respiratory masks
for medical purposes” (the “’036 Registration”); and (iii) U.S. Trademark Reg. No.
2,793,534, which covers the 3M design mark in International Classes 1, 5, and 10
for, inter alia, respirators (the “’534 Registration”), all of which are registered on the
Principal Register in the United States Patent and Trademark Office and have become
incontestable within the meaning of Section 15 of the Lanham Act, 15 U.S.C. § 1065.
5.

Since long before Defendants used any “3M” designation or mark, 3M

has offered products under its 3M mark, including in connection with 3M-brand
respirators.
6.

As a result of its longstanding use of the 3M mark, the 3M mark has

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 4 of 9 Page ID #:914

become famous within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C.
§ 1125(c).
7.

From June 2020 through November 2020, Defendants purchased masks

marked as 3M N95 respirators from various sellers for resale on eBay and elsewhere.
Defendants paid the various sellers approximately $597,363.50 for these masks.
Defendants also incurred approximately $49,729.54 in overhead and other expenses
in association with these masks.
8.

From July 2020 through November 2020, Defendants sold

approximately 143,128 of the masks they had purchased to consumers through
eBay.com and elsewhere for total sales of $742,361.79 (after commissions and fees
paid to eBay and Paypal). Defendants described these masks as authentic 3Mbranded N95 respirators. Defendants subsequently refunded $5,436 to consumers.
9.

In making the sales described above, Defendants adopted and began

using the 3M mark in US commerce. Defendants represented or implied that they
had an association or affiliation with, sponsorship by, and/or connection with, 3M
and 3M’s products. Defendants represented or implied that the products it sold were
authentic 3M N95 respirator masks.. Defendants bought and sold these masks at
substantially inflated prices.
10.

Defendants’ conduct is likely to cause confusion, mistake, and

deception among the relevant consuming public as to the source or origin of
Defendants’ goods and has deceived the relevant consuming public into believing,
mistakenly, that Defendants’ goods and associated conduct originate from, are
associated or affiliated with, or are otherwise authorized by 3M. Defendants’ conduct
is also likely to cause confusion or deceive consumers as to the pricing and value of
3M products. Further, Defendants’ conduct is likely to dilute the distinctive quality
of, and tarnish the reputation of, 3M’s famous 3M mark.
11.

The

foregoing

conduct

by

Defendants

constitutes

trademark

infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), unfair

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 5 of 9 Page ID #:915

competition and false advertising under Section 43(a) of the Lanham Act, 15 U.S.C.
§ 1125(a), dilution under Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), and
violation of California Business & Professions Code, §§ 17200 et seq.
12.

As set forth above, Defendants earned $736,925.79 in sales (after

refunds, and after commissions and fees paid to eBay.com and Paypal) from the sale
of the purported 3M N95 respirators through eBay.com and elsewhere. Defendants
incurred the following costs in connection with those sales:
Cost of materials paid to sellers
Labor
Postage & shipping costs
Shipping supplies
Other commissions and service fees
Total Costs

$597,363.50
$14,880.00
$22,855.64
$2,313.90
$9,680.00
$647,093.04

Accordingly, Defendants have realized $89,832 in profits on the sales of the
purported 3M N95 respirators through eBay.com and elsewhere.
13.

As a direct and proximate result of the Defendants’ conduct alleged

herein, 3M has sustained substantial, immediate, and irreparable injury, and is
entitled to monetary relief and an injunction pursuant to 15 U.S.C. §§ 1116-1117.
14.

Entry of this Consent Judgment and Permanent Injunction is in the

public interest.
15.

Defendants, without admitting the allegations set forth in Plaintiff’s

First Amended Complaint or any wrongdoing on their part, and 3M hereby stipulate
to entry of this Consent Judgment and Permanent Injunction.
16.

Defendants have waived all rights to seek judicial review or otherwise

challenge or contest the validity of this Order, and further waive and release any
claim they may have against 3M its employees and agents, including any rights that
may arise for attorneys’ fees or other costs under the Equal Access to Justice Act, 28

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 6 of 9 Page ID #:916

U.S.C. § 2412, amended by Pub. L. 104-121, 110 Stat. 847,863-64 (1996).
ORDER
IT IS THEREFORE ORDERED that
1.

Defendants shall pay 3M the total sum of $60,000, as set forth in the

Settlement Agreement.
2.

Defendants, their agents, servants, employees, officers and all persons

and entities in active concert and participation with them, are permanently enjoined
from any of the following:
a.

Selling or offering to sell any 3M Products, or otherwise using

the 3M mark (e.g., providing any pricing information regarding 3M Products),
unless expressly authorized by 3M and through an authorized distributor of
3M that has been verified as such by 3M; and
b.

Aiding, assisting, or abetting any other individual or entity in

doing any act prohibited by this paragraph.
3.

This Court shall retain jurisdiction to hear and determine all matters

arising out of, relating to, and/or otherwise concerning the interpretation and/or
enforcement of this Consent Judgment and Permanent Injunction.
4.

If Defendants are found to be in contempt of, or otherwise to have

violated this Consent Judgment and Permanent Injunction, the Stipulating Parties
agree that 3M shall be entitled to all available relief which it may otherwise request
from the Court, including sanctions for contempt, damages, injunctive relief,
attorneys' fees, costs, and any other relief deemed proper in the event of such
violation.
5.

All claims and defenses that were alleged (or that could have been

alleged) in the Lawsuit by any of the Stipulating Parties are hereby resolved by this
Consent Judgment and Permanent Injunction.
6.

The Stipulating Parties, shall each bear their own costs and attorneys’

fees incurred in this action.

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 7 of 9 Page ID #:917

This Consent Judgment and Permanent Injunction constitutes a final judgment
on the merits of 3M’s claims for purposes of res judicata, collateral estoppel, issue
preclusion, and claim preclusion
IT IS SO ORDERED.
Dated: February 17, 2021
HONORABLE JAMES V. SELNA
UNITED STATES DISTRICT JUDGE

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 8 of 9 Page ID #:918

IT IS SO STIPULATED.
Dated: February 16, 2021

CHRISTOPHER WEIMER
By:

Christopher M. Weimer

Attorneys for Plaintiff
3M COMPANY
Dated: February 16, 2021

AMY ALDERFER
By:

Amy Alderfer

Attorneys for Defendants
RAGE BEAUTY, INC.; BLUETOUCH
INC.; AND THEMIS CONSULTING
GROUP INC. D/B/A SALON BACKBAR

Case 2:20-cv-10536-JVS-JEM Document 54 Filed 02/17/21 Page 9 of 9 Page ID #:919

SIGNATURE ATTESTATION
Pursuant to Local Rule 5-4.3.4, the undersigned hereby attests that
concurrence in the filing of this STIPULATED PERMANENT INJUNCTION has
been obtained from counsel for Defendants and is electronically signed with the
express permission of Defendants’ counsel.
Dated: February 16, 2021
Christopher M. Weimer
Christopher M. Weimer