Santa Fe Natural Tobacco Company, Inc. v. The Spirit et al
Filing
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FINAL JUDGMENT AND PERMANENT INJUNCTION ON CONSENT by Judge James V. Selna. (see document for details). (MD JS-6, Case Terminated). (dro)
JS-6
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KILPATRICK TOWNSEND & STOCKTON LLP
Christopher T. Varas (Bar No. 257080)
cvaras@kilpatricktownsend.com
9720 Wilshire Blvd PH
Beverly Hills, CA 90212-2018
Telephone: 310-248-3830
Facsimile: 310-860-0363
William M. Bryner (pro hac vice to be submitted )
bbryner@kilpatricktownsend.com
1001 West Fourth Street
Winston-Salem, North Carolina 27101
Telephone: 336 607 7300
Facsimile: 336 607 7500
Attorneys for Plaintiff
SANTA FE NATURAL TOBACCO COMPANY, INC.
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UNITED STATES DISTRICT COURT
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FOR THE CENTRAL DISTRICT OF CALIFORNIA
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SOUTHERN DIVISION
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SANTA FE NATURAL TOBACCO
COMPANY, INC.,
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Case No. 8:16-cv-1110-JVS(JCGx)
Plaintiff,
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v.
THE SPIRIT D/B/A “NATURAL THE
SPIRIT”, EUN LEE, individually and
d/b/a “NATURAL THE SPIRIT”, AND
CHRIS KIM, individually and d/b/a
“NATURAL THE SPIRIT”,
Defendants.
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FINAL JUDGMENT AND PERMANENT INJUNCTION ON CONSENT
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Santa Fe Natural Tobacco Company, Inc. (“SFNTC”) and Defendants (i) Eun
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Lee, individually and d/b/a “NATURAL THE SPIRIT,” (ii) Chris Kim, individually
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and d/b/a “NATURAL THE SPIRIT,” and (iii) The Spirit d/b/a “NATURAL THE
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SPIRIT” (collectively, “Defendants”), have reached a confidential agreement in
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settlement of the dispute between them and have consented to the entry of this Final
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Judgment and Permanent Injunction on Consent (“Consent Judgment”), based on the
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following stipulated findings of facts and conclusions of law, which the Court hereby
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adopts for purposes of the entry of this Consent Judgment.
FINDINGS OF FACT AND CONCLUSIONS OF LAW
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1.
SFNTC is a corporation organized and existing under the laws of New
Mexico with its principal place of business in Santa Fe, New Mexico.
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SFNTC is engaged in the business of manufacturing, distributing,
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marketing, advertising, offering for sale, and selling various types of tobacco
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products throughout the United States. SFNTC is the owner of distinctive trademarks,
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including, but not limited to trademarks consisting of the words “NATURAL
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AMERICAN SPIRIT,” alone and in conjunction with other words and designs,
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including depictions of a Native American chief (the “Chief Logo”).
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3.
SFNTC, through its predecessors-in-interest and affiliates, has used the
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NATURAL AMERICAN SPIRIT trademarks continuously since as early as
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September 8, 1992 in connection with tobacco products, including, but not limited to
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cigarettes. (For convenience, and unless the context indicates otherwise, the term
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“Santa Fe” will be used to refer collectively to SFNTC’s predecessors-in-interest
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and/or to SFNTC’s corporate affiliates who use the trademarks owned by SFNTC
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under authority from SFNTC.)
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4.
SFNTC has registered various versions of its NATURAL AMERICAN
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SPIRIT marks on the Principal Register of the United States Patent and Trademark
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Office (“USPTO”) under, inter alia, U.S. Trademark Registration Nos. 2,581,724;
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2,581,727; 2,581,723; 2,661,935; 2,620,468; 2,620,467; 2,620,466; 2,620,465;
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2,578,127; 2,692,958; 4,194,788; 4,194,786; 4,194,785; 4,194,784; 4,194,783; and
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4,198,629. (For convenience, the marks shown in these registrations and their
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common-law counterparts are collectively referred to hereinafter as the “NATURAL
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AMERICAN SPIRIT Marks”).
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5.
Santa Fe has used depictions of a Native American Chief in advertising
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and on its packaging to promote its tobacco products (the “Chief Logo Artwork”).
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SFNTC is the sole and exclusive owner of all right, title, and interest in and to the
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copyrights in the Chief Logo Artwork.
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6.
SFNTC owns by assignment a copyright registration for the Chief Logo,
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bearing Registration Number VA0000363481 with the United States Copyright
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Office. The effective date of registration for the copyright covering the Chief Logo is
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July 19, 1989.
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7.
As a result of many years of continuous use and promotion of the
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NATURAL AMERICAN SPIRIT Marks, SFNTC’s NATURAL AMERICAN
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SPIRIT Marks have acquired a high degree of recognition throughout the United
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States as symbols of the highest quality of tobacco products. The public is uniquely
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aware of the NATURAL AMERICAN SPIRIT Marks, and identifies those marks
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with SFNTC. The NATURAL AMERICAN SPIRIT Marks are famous trademarks
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that are widely recognized by the general public as a designation of the source of
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SFNTC’s goods.
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8.
Defendant Eun Lee (“Defendant Lee”), together with Defendant Chris
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Kim (“Defendant Kim”) direct, control participate in, engage in, perform, authorize,
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approve, ratify, actively and knowingly cause, and are active and conscious forces
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behind the business activities of Defendant The Spirit /b/a “NATURAL THE
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SPIRIT.”
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9.
Defendants operate and control the website located at
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THESPIRITUSA.COM (“Defendants’ Website”), through which Defendants
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advertise, offer for sale, and sell natural tobacco products called “E-Liquid,”
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“EJuice,” or “Vape Juice” (collectively referred to hereinafter as “E-Liquid”), and
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other products associated with electronic cigarettes.
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10.
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Defendants advertised, sold, `and distributed products bearing the
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NATURAL AMERICAN SPIRIT Marks, or marks confusingly similar to the
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NATURAL AMERICAN SPIRIT Marks, and have reproduced the copyrighted Chief
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Logo.
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On June 15, 2016, SFNTC commenced the above-captioned action (the
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“Action”) by filing a complaint (the “Complaint”) against Defendants. The
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Complaint alleged claims for trademark infringement, unfair competition and false
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designation of origin, and trademark dilution arising under sections 32 and 43 of the
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Federal Trademark Act of 1946 (the “Lanham Act”), 15 U.S.C. §§ 1114, 1125;
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copyright infringement under the U.S. Copyright Act of 1976, 17 U.S.C. §§ 411(c),
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501, et seq.; unfair business practices arising under Cal. Bus. & Prof. Code §§ 17200
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et seq.; and trademark infringement and unfair business practices arising under the
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common law of the State of California.
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The parties have agreed to resolve their dispute by the entry of this Final
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Judgment and Permanent Injunction on Consent, as well as by payment from
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Defendants to SFNTC of a confidential amount of money.
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13.
Pursuant to Section 39 of the Lanham Act, 15 U.S.C. § 1121, and
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pursuant to 28 U.S.C. §§ 1331, 1332, and 1338, this Court has subject matter
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jurisdiction over Santa Fe’s claims against Defendants, and supplemental jurisdiction
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pursuant to 28 U.S.C. § 1367.
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This Court has personal jurisdiction over Defendants because
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Defendants have purposefully availed themselves of the privilege of doing business
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in this district. Defendants own and operate the website located at
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THESPIRITUSA.COM, which is an interactive website that is accessible by Internet
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users in this district and offers goods to residents of California. The infringing
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products that Defendants offer under the NATURAL AMERICAN SPIRIT Marks, or
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colorable imitations thereof, and made available through Defendants’ Website to
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purchasers in the United States, are capable of being ordered, and have been ordered,
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by purchasers in California, and are capable of being shipped, and have been shipped,
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to purchasers in California.
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Venue is proper in this district pursuant to 28 U.S.C. § 1391(b), in that,
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on information and belief, a substantial part of the events or omissions giving rise to
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the claim occurred in this judicial district.
PERMANENT INJUNCTION AND ORDER
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Based on the parties’ stipulation and agreement hereto, it is hereby
ORDERED, ADJUDGED, and DECREED as follows:
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Defendants and their agents, representatives, employees, attorneys,
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successors and assigns, and all others in active concert or participation with
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Defendants or any of them, are hereby PERMANENTLY ENJOINED AND
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RESTRAINED from:
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a)
using, advertising, promoting, displaying, or making any use
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whatsoever, in connection with the advertisement, promotion, or
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sale of tobacco, tobacco-related products, vapor products or
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vapor-related products, electronic cigarettes or products related to
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electronic cigarettes, liquid nicotine products, or flavored nicotine
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products, of (i) the designation “NATURAL AMERICAN
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SPIRIT,” or any colorable imitation of the NATURAL
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AMERICAN SPIRIT Marks (including but not limited to
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NATURAL THE SPIRIT and THE SPIRIT); (ii) visual or graphic
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depictions of a Native American chief; and (iii) the following
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SFNTC trademarks or any colorable imitations thereof:
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RESPECT FOR THE EARTH; REAL. SIMPLE. DIFFERENT.;
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and IT’S ONLY NATURAL;
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b)
engaging in any other activity constituting an infringement of
SFNTC’s trademarks; and
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c)
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using any false designation of origin or false representations
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which are likely to lead the trade, the public, or individuals to
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believe erroneously that Defendants, or any one of them, are in
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any way sponsored, approved, authorized, or controlled by Santa
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Fe.
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2.
Defendants shall pay to SFNTC the confidential amount of money
agreed upon by the parties.
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SFNTC and Defendants acknowledge that they have knowingly and
voluntarily entered into this Consent Judgment after reviewing the same with their
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counsel or having had ample opportunity to consult with counsel of their choice.
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SFNTC and Defendants understand the undertakings, obligations and terms of this
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Consent Judgment.
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4.
Except as to Defendants’ obligations set forth in this Consent Judgment,
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SFNTC’s claims against Defendants in this Action are hereby dismissed with
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prejudice. No appeals shall be taken from this Consent Judgment, and Defendants
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hereby waive all right to appeal from this Consent Judgment.
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5.
This Court shall retain jurisdiction over this matter to enforce a violation
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of this Judgment’s terms. If any such violation occurs, the Court may award, (a)
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without regard to proof of actual damages, an amount the Court deems adequate to
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compensate SFNTC for such breach; as well as (b) injunctive relief enjoining any
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further breach of this Order, or such modifications to the present Order as the Court
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deems appropriate; (c) attorneys’ fees, costs and disbursements, as determined by the
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Court; and (d) such other relief as the Court deems just and proper.
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It is SO ORDERED, this the 16th day of September, 2016.
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United States District Judge
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