Mag Instrument Inc v. Vinsy Technology Limited

Filing 72

CONSENT JUDGMENT by Judge Andre Birotte, Jr in favor of Mag Instrument Inc against Vinsy Technology Limited Related to: Stipulation for Judgment 71 . That Mag Instrument, pursuant to Paragraph 5 of the January 18, 1996 Settlement Agreement betwe en Mag Instrument, Inc. and MAG Technology Co., Ltd. is the "prevailing party" and shall be awarded its attorneys' fees and expenses incurred in connection with the above-captioned action in the amount of Eighty Thousand U.S. Dollars ($80,000.00), which shall be paid by Vinsy Technology, Limited to Mag Instrument, Inc. not later than December 21, 2014. See document for details. ( MD JS-6. Case Terminated ) (smo)

JS-6
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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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MAG INSTRUMENT, INC.,

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Plaintiff,
v.
VINSY TECHNOLOGY LIMITED,

Case No. EDCV 13-359 AB (OPx)
[PROPOSED] JOINT STIPULATED
FINAL JUDGMENT
Hon. André Birotte, Jr.

Defendant.

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M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

[Proposed] Joint Stipulated Final Judgment

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Plaintiff Mag Instrument, Inc. and defendant Vinsy Technology Limited,

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having stipulated to all the terms contained herein, and good cause having been

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shown, IT IS HEREBY ORDERED AND ADJUDGED:

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1.

That defendant Vinsy Technology Limited, as MAG Technology Co.,

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Ltd.'s assignee, has breached, and continues to breach, the January 18, 1996

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Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co.,

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Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world)

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by its maintenance of United States Trademark Registration No. 3,500,264 and its

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use of the mark MAG (stylized) and all other marks that contain the term "MAG"

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or any confusingly similar mark in connection with the following goods:

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ELECTRONIC PUBLICATIONS, NAMELY, BOOKS FEATURING THE

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SUBJECT MATTER OF ELECTRONIC WHITEBOARDS RECORDED ON

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COMPUTER MEDIA; VIDEO CAMERAS; DIGITAL CAMERAS;

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TELEVISION MONITORS FOR CLOSED-CIRCUIT TELEVISION; COMPACT

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DISK PLAYERS; MULTIMEDIA PLAYERS, NAMELY, CD PLAYERS,

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DIGITAL AUDIO PLAYERS, DIGITAL VIDEO PLAYERS; TELEVISION

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APPARATUS FOR PROJECTION PURPOSES; PROJECTION SCREENS;

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TELEVISION RECEIVERS; TV SETS; SATELLITE RECEIVERS; MP3

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PLAYERS; LIQUID CRYSTAL DISPLAY TELEVISIONS; TELEVISION SETS

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AND PARTS THEREOF; AUDIO SPEAKERS AND PARTS THEREFOR;

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MULTIMEDIA TEACHING APPARATUS, NAMELY, AUDIOVISUAL

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RECEIVERS; ELECTRIC STORAGE BATTERIES; ELECTRICAL STORAGE

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BATTERIES; LITHIUM BATTERIES; TELEPHONE APPARATUS, NAMELY,

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INTERCOMS; VIDEOPHONES; VIDEO CONFERENCE EQUIPMENT,

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NAMELY, VIDEO MONITORS, MICROPHONES, AUDIO SPEAKERS, AND

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CAMERAS; ELECTRIC COILS; and TUNER BOXES USED FOR TUNING

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AND SELECTING THE CHANNELS OF A TV SYSTEM.

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M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment

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2.

That defendant Vinsy Technology Limited, as MAG Technology Co.,

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Ltd.'s assignee, has breached, and continues to breach, the January 18, 1996

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Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co.,

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Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world)

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by its maintenance of United Kingdom Trademark Registration No. 2562408 and

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its use of the mark MAG (stylized) and all other marks that contain the term

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"MAG" or any confusingly similar mark in connection with the following goods:

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TELEVISION APPARATUS; CAMERAS [PHOTOGRAPHY]; CAMCORDERS;

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SET-TOP BOXES; GRAPH PLOTTERS; NAVIGATIONAL INSTRUMENTS;

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AUTOMATIC ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR

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DISPLAYING DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC.

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3.

That defendant Vinsy Technology Limited, as MAG Technology Co.,

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Ltd.'s assignee, has breached, and continues to breach, the January 18, 1996

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Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co.,

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Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world)

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by its maintenance of New Zealand Trademark Registration No. 832620 and its use

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of the mark MAG (stylized) and all other marks that contain the term "MAG" or

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any confusingly similar mark in connection with the following goods:

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TELEVISION APPARATUS; CAMERAS [PHOTOGRAPHY]; CAMCORDERS;

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SET-TOP BOXES; GRAPH PLOTTERS; NAVIGATIONAL INSTRUMENTS;

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AUTOMATIC ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR

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DISPLAYING DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC.

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That defendant Vinsy Technology Limited, its officers, directors,

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employees, attorneys, and all persons and/or entities acting for, with, by, through,

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or in active concert or participation with it, be enjoined permanently from:

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(a)

Maintaining United States Trademark Registration No.

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3,500,264, including the following goods: ELECTRONIC PUBLICATIONS,

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NAMELY, BOOKS FEATURING THE SUBJECT MATTER OF ELECTRONIC

M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment

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WHITEBOARDS RECORDED ON COMPUTER MEDIA; VIDEO CAMERAS;

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DIGITAL CAMERAS; TELEVISION MONITORS FOR CLOSED-CIRCUIT

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TELEVISION; COMPACT DISK PLAYERS; MULTIMEDIA PLAYERS,

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NAMELY, CD PLAYERS, DIGITAL AUDIO PLAYERS, DIGITAL VIDEO

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PLAYERS; TELEVISION APPARATUS FOR PROJECTION PURPOSES;

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PROJECTION SCREENS; TELEVISION RECEIVERS; TV SETS; SATELLITE

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RECEIVERS; MP3 PLAYERS; LIQUID CRYSTAL DISPLAY TELEVISIONS;

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TELEVISION SETS AND PARTS THEREOF; AUDIO SPEAKERS AND

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PARTS THEREFOR; MULTIMEDIA TEACHING APPARATUS, NAMELY,

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AUDIOVISUAL RECEIVERS; ELECTRIC STORAGE BATTERIES;

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ELECTRICAL STORAGE BATTERIES; LITHIUM BATTERIES; TELEPHONE

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APPARATUS, NAMELY, INTERCOMS; VIDEOPHONES; VIDEO

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CONFERENCE EQUIPMENT, NAMELY, VIDEO MONITORS,

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MICROPHONES, AUDIO SPEAKERS, AND CAMERAS; ELECTRIC COILS;

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and TUNER BOXES USED FOR TUNING AND SELECTING THE CHANNELS

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OF A TV SYSTEM;

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(b)

Using or seeking to register, anywhere in the world, the mark

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that is the subject of United States Trademark Registration No. 3,500,264 or any

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other mark that contains the term "MAG" or any confusingly similar mark, in

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association with or for any of the following goods: ELECTRONIC

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PUBLICATIONS, NAMELY, BOOKS FEATURING THE SUBJECT MATTER

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OF ELECTRONIC WHITEBOARDS RECORDED ON COMPUTER MEDIA;

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VIDEO CAMERAS; DIGITAL CAMERAS; TELEVISION MONITORS FOR

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CLOSED-CIRCUIT TELEVISION; COMPACT DISK PLAYERS;

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MULTIMEDIA PLAYERS, NAMELY, CD PLAYERS, DIGITAL AUDIO

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PLAYERS, DIGITAL VIDEO PLAYERS; TELEVISION APPARATUS FOR

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PROJECTION PURPOSES; PROJECTION SCREENS; TELEVISION

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RECEIVERS; TV SETS; SATELLITE RECEIVERS; MP3 PLAYERS; LIQUID

M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment

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CRYSTAL DISPLAY TELEVISIONS; TELEVISION SETS AND PARTS

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THEREOF; AUDIO SPEAKERS AND PARTS THEREFOR; MULTIMEDIA

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TEACHING APPARATUS, NAMELY, AUDIO VISUAL RECEIVERS;

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ELECTRIC STORAGE BATTERIES; ELECTRICAL STORAGE BATTERIES;

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LITHIUM BATTERIES; TELEPHONE APPARATUS, NAMELY, INTERCOMS;

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VIDEOPHONES; VIDEO CONFERENCE EQUIPMENT, NAMELY, VIDEO

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MONITORS, MICROPHONES, AUDIO SPEAKERS, AND CAMERAS;

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ELECTRIC COILS; and TUNER BOXES USED FOR TUNING AND

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SELECTING THE CHANNELS OF A TV SYSTEM;

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(c)

Maintaining United Kingdom Trademark Registration No.

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2562408 with respect to any of the following goods: TELEVISION APPARATUS;

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CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH

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PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC

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ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING

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DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC;

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(d)

Using or seeking to register, anywhere in the world, the mark

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that is the subject of United Kingdom Trademark Registration No. 2562408 or any

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other mark that contains the term "MAG" or any confusingly similar mark, in

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association with or for any of the following goods: TELEVISION APPARATUS;

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CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH

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PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC

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ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING

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DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC;

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(e)

Maintaining New Zealand Trademark Registration No. 832620

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with respect to any of the following goods: TELEVISION APPARATUS;

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CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH

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PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC

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M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment

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ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING

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DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC;

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(f)

Using or seeking to register, anywhere in the world, the mark

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that is the subject of New Zealand Trademark Application No. 832620 or any other

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mark that contains the term "MAG" or any confusingly similar mark, in association

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with or for any of the following goods: TELEVISION APPARATUS; CAMERAS

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[PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH PLOTTERS;

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NAVIGATIONAL INSTRUMENTS; AUTOMATIC ADVERTISING

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MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING DIGITAL

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PICTURES; and VIDEO CLIPS AND MUSIC; and
(g)

Using the mark MAG or any mark that contains the term

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"MAG" or any confusingly similar mark anywhere in the world, seeking to register

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the mark MAG or any mark that contains the term "MAG" or any confusingly

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similar mark anywhere in the world, or maintaining a registration for the mark

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MAG or any mark that contains the term "MAG" or any confusingly similar mark

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anywhere in the world for any goods and services other than computer peripherals

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and computer-related goods and services (the following goods, for purposes of this

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paragraph, being expressly excluded from the definition of "computer peripherals

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and computer-related goods and services": ELECTRONIC PUBLICATIONS,

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NAMELY, BOOKS FEATURING THE SUBJECT MATTER OF ELECTRONIC

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WHITEBOARDS RECORDED ON COMPUTER MEDIA; VIDEO CAMERAS;

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DIGITAL CAMERAS; TELEVISION MONITORS FOR CLOSED-CIRCUIT

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TELEVISION; COMPACT DISK PLAYERS; MULTIMEDIA PLAYERS,

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NAMELY, CD PLAYERS, DIGITAL AUDIO PLAYERS, DIGITAL VIDEO

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PLAYERS; TELEVISION APPARATUS FOR PROJECTION PURPOSES;

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PROJECTION SCREENS; TELEVISION RECEIVERS; TV SETS; SATELLITE

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RECEIVERS; MP3 PLAYERS; LIQUID CRYSTAL DISPLAY TELEVISIONS;

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TELEVISION SETS AND PARTS THEREOF; AUDIO SPEAKERS AND

M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment

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PARTS THEREFOR; MULTIMEDIA TEACHING APPARATUS, NAMELY,

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AUDIO-VISUAL RECEIVERS; ELECTRIC STORAGE BATTERIES;

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ELECTRICAL STORAGE BATTERIES; LITHIUM BATTERIES; TELEPHONE

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APPARATUS, NAMELY, INTERCOMS; VIDEOPHONES; VIDEO

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CONFERENCE EQUIPMENT, NAMELY, VIDEO MONITORS,

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MICROPHONES, AUDIO SPEAKERS, AND CAMERAS; ELECTRIC COILS;

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and TUNER BOXES USED FOR TUNING AND SELECTING THE CHANNELS

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OF A TV SYSTEM);

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(h)

Seeking a new registration for or registering, anywhere in the

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world, a trademark or service mark that includes the term "MAG" (whether stylized,

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not stylized, alone, or in connection with one or more other words, logos or

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symbols);

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(i)

Opposing or in any way contesting any application by Mag

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Instrument, Inc. (or a Mag Instrument, Inc. affiliate or licensee) to register

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anywhere in the world a trademark or service mark that includes the term "MAG"

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(whether stylized, not stylized, alone, or in connection with one or more other

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words, logos, or symbol); or

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(j)

Attempting to cancel or in any way contesting any trademark or

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service mark owned by Mag Instrument (or a Mag Instrument, Inc. affiliate or

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licensee) anywhere in the world (now or in the future) that includes the term

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"MAG" (whether stylized, not stylized, alone, or in connection with one or more

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other words, logos, or symbol).

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5.

That defendant Vinsy Technology Limited is required, within ninety

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(90) days after entry of this Judgment, to file with this Court and hand-deliver to

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counsel for Mag Instrument, Inc. a written report, under oath, confirming that Vinsy

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Technology Limited and its officers, directors, employees, attorneys, and all

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persons and/or entities acting for, with, by, through, or in active concert or

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participation with it, have fully complied with Paragraph 4, above, and detailing the

M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment

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manner in which they have done so (which shall include details about retaining

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local trademark attorneys in the United Kingdom and New Zealand for removal of

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the violated items listed in Paragraph 4).

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That United States Trademark Registration No. 3,500,264 is cancelled

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with prejudice pursuant to 15 U.S.C. §1119 – and this Court has certified its decree

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of cancellation with prejudice to the Director of the United States Patent and

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Trademark Office.

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That Mag Instrument, pursuant to Paragraph 5 of the January 18, 1996

Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co.,

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Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world)

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is the "prevailing party" and shall be awarded its attorneys' fees and expenses

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incurred in connection with the above-captioned action in the amount of Eighty

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Thousand U.S. Dollars ($80,000.00), which shall be paid by Vinsy Technology,

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Limited to Mag Instrument, Inc. not later than December 21, 2014 (that is, received

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by Mag Instrument, Inc. on or before that date).

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8.

Vinsy Technology Limited waives any right to appeal from this Final

Judgment.
9.

This Court retains personal and subject matter jurisdiction over the

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parties and any future disputes that may arise with respect to the January 18, 1996

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Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co.,

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Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world)

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and/or this Final Judgment.

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///

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///

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///

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///

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///

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M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment

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10.

Counsel for the Parties listed below have full authority to bind the

Party for which they sign to the terms of this Final Judgment.

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Dated: December 9, 2014

By:
Hon. André Birotte Jr.
United States District Judge

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M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment

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Presented by:

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Robert W. Dickerson (State Bar No. 89,367)
[e-mail]
MANATT, PHELPS & PHILLIPS, LLP
11355 West Olympic Boulevard
Los Angeles, CA 90064
Telephone: [phone]
Facsimile: [phone]

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Charles A. Kertell (State Bar No. 181,214)
[e-mail]
MANATT, PHELPS & PHILLIPS, LLP
695 Town Center Drive, 14th Floor
Costa Mesa, CA 92626
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
MAG INSTRUMENT, INC.
Maria W. Tam (State Bar No. 164,996)
[e-mail]
LAW OFFICE OF MARIA W. TAM
809 South Atlantic Boulevard, Suite 205
Monterey Park, CA 91754
Telephone: [phone]
Facsimile: [phone]
Attorney for Defendant
VINSY TECHNOLOGY LIMITED

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M ANATT , P HELPS &
P HILLIPS , LLP
ATTORNEYS AT LAW
LOS ANGELES

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[Proposed] Joint Stipulated Final Judgment