3M Company v. The Perfect Part Inc. et al

Filing 68

CONSENT JUDGMENT AND PERMANENT INJUNCTION by Judge James V. Selna. IT IS THEREFORE ORDERED that:1. This Order supersedes the Court's prior temporary restraining orders in this Lawsuit. 2. Defendants shall pay 3M the total sum of $20,621.62 ("Settlement Amount") as set forth in the Settlement and Mutual Release Agreement dated April 22, 2021. 3. Within three (3) business days of receiving the Settlement Amount, 3M shall file an Acknowledgment of Satisfaction of Judgment with the Court acknowledging that the monetary component of the Consent Judgment and Permanent Injunction has been satisfied and paid in full. [See document for details.] ( MD JS-6. Case Terminated ) (es) Modified on 4/26/2021 (es).

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JS-6

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IN THE UNITED STATES DISTRICT COURT

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FOR THE CENTRAL DISTRICT OF CALIFORNIA

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WESTERN DIVISION

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CONSENT JUDGMENT AND
PERMANENT INJUNCTION

Plaintiff,

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Case No. 2:20-cv-10540-JVS-JEM

3M COMPANY,

v.

Complaint Filed: November 18, 2020

THE PERFECT PART INC.,
ADAM ZINKER, and
CORY ZINKER,

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Jury Trial Demanded

Defendants.

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Pursuant to the Notice of Settlement and Stipulation for Entry of Consent

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Judgment and Permanent Injunction between Plaintiff 3M Company (“Plaintiff”

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and/or “3M” ), on the one hand, and Defendants The Perfect Part, Inc., Adam Zinker,

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and Cory Zinker (together, “Defendants”) on the other (the "Stipulation"), the Court

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hereby ORDERS, ADJUDICATES and DECREES that judgment and a permanent

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injunction shall be and hereby is entered as follows:
FINDINGS

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1.

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

the Stipulating Parties.
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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 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),
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

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

From July 2020 through November 2020, Defendants purchased

approximately 59,127 masks marked as 3M N95 respirators from five different
sellers. Defendants paid these sellers a total of approximately $265,122.92 for the
masks marks as 3M N95 respirators.
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From July 2020 through November 2020, Defendants sold

approximately 52,657 of the masks they had purchased to approximately 3,226
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consumers through eBay.com for a total price of approximately $394,245.96.
Defendants described and contend they believed these masks to be authentic 3Mbranded N95 respirators. Defendants sold these masks at prices higher than their
purchase price.
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 they sold
were authentic 3M N95 respirator masks and contend they believed that they were
authentic 3M N95 respirator masks.
10.

After examining evidence provided by 3M via an Attorney’s Eyes-Only

evidence examination, Defendants acknowledge that one or more of their suppliers
may have sold them counterfeit 3M masks and Defendants that Defendants may have
unintentionally sold counterfeit 3M masks. Defendant sold these masks, as well as
other genuine 3M Masks, at inflated prices several times the prices charged by 3M
during the state of emergency that was declared on March 4, 2020 in response to
COVID-19.
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3M contends that 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.
12.

The

foregoing

conduct

by

Defendants

constitutes

trademark

infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1), unfair
competition and false advertising under Section 43(a) of the Lanham Act, 15 U.S.C.
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§ 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. and 17500 et
seq.
13.

Defendants realized approximately $20,621.62 in profits on the sales of

the 3M N95 respirators through eBay.com, and the Court has ordered eBay.com to
hold $20,621.62 in reserve from Defendants’ eBay.com seller account.
14.

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.
15.

Entry of this Consent Judgment and Permanent Injunction is in the

public interest.
16.

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

Complaint or any wrongdoing on their part, and 3M hereby stipulate to entry of this
Consent Judgment and Permanent Injunction.
17.

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

This Order supersedes the Court’s prior temporary restraining orders in

this Lawsuit.
2.

Defendants shall pay 3M the total sum of $20,621.62 (“Settlement

Amount”) as set forth in the Settlement and Mutual Release Agreement dated April
22, 2021.
3.

Within three (3) business days of receiving the Settlement Amount, 3M

shall file an Acknowledgment of Satisfaction of Judgment with the Court
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acknowledging that the monetary component of the Consent Judgment and
Permanent Injunction has been satisfied and paid in full.
4.

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 or any confusingly similar mark unless expressly authorized by
3M; and
b.

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

doing any act prohibited by this paragraph.
5.

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.
6.

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 by the Court to be proper in the
event of such violation.
7.

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. However, notwithstanding the
generality of the foregoing, this Consent Judgment and Permanent Injunction does
not bar Defendants from pursuing subsequent indemnity or contribution claims
against one or more third-parties arising from or relating to the matters in this Lawsuit
or this Consent Judgment.
8.

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

fees incurred in this action.
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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: April 26, 2021
JAMES V. SELNA
UNITED STATES DISTRICT JUDGE

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IT IS SO STIPULATED.
Dated: April 26, 2021

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By:

/s/ Christopher Weimer
Christopher Weimer
Attorneys for Plaintiff
3M COMPANY

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SAMANTHA FAHR
CHRISTOPHER WEIMER

Dated: April 26, 2021

LAW OFFICE OF PARAG L. AMIN, P.C.
/s/ Parag Amin
Parag Amin
Attorney for Defendants
THE PERFECT PART INC., CORY
ZINKER, ADAM ZINKER.
By:

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SIGNATURE ATTESTATION

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Pursuant to Local Rule 5-4.3.4, the undersigned hereby attests that

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concurrence in the filing of this STIPULATED CONSENT JUDGMENT AND

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PERMANENT INJUNCTION has been obtained from counsel for Defendants and

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is electronically signed with the express permission of Defendants’ counsel.

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Dated: April 26, 2021

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SAMANTHA FAHR
CHRISTOPHER WEIMER

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By:

/s/ Christopher Weimer
Christopher Weimer

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Attorneys for Plaintiff
3M COMPANY

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