Santa Fe Natural Tobacco Company, Inc. v. The Spirit et al

Filing 19

FINAL JUDGMENT AND PERMANENT INJUNCTION ON CONSENT by Judge James V. Selna. (see document for details). (MD JS-6, Case Terminated). (dro)

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JS-6 1 2 3 4 5 6 7 8 9 ` KILPATRICK TOWNSEND & STOCKTON LLP Christopher T. Varas (Bar No. 257080) 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 ) 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. 10 UNITED STATES DISTRICT COURT 11 FOR THE CENTRAL DISTRICT OF CALIFORNIA 12 SOUTHERN DIVISION 13 14 15 SANTA FE NATURAL TOBACCO COMPANY, INC., 16 Case No. 8:16-cv-1110-JVS(JCGx) Plaintiff, 17 18 19 20 21 22 23 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. 24 25 FINAL JUDGMENT AND PERMANENT INJUNCTION ON CONSENT 26 Santa Fe Natural Tobacco Company, Inc. (“SFNTC”) and Defendants (i) Eun 27 Lee, individually and d/b/a “NATURAL THE SPIRIT,” (ii) Chris Kim, individually 28 and d/b/a “NATURAL THE SPIRIT,” and (iii) The Spirit d/b/a “NATURAL THE - 1 CASE NO. 8:16-CV-1110-JVS(JCGX) 1 SPIRIT” (collectively, “Defendants”), have reached a confidential agreement in ` 2 settlement of the dispute between them and have consented to the entry of this Final 3 Judgment and Permanent Injunction on Consent (“Consent Judgment”), based on the 4 following stipulated findings of facts and conclusions of law, which the Court hereby 5 adopts for purposes of the entry of this Consent Judgment. FINDINGS OF FACT AND CONCLUSIONS OF LAW 6 7 8 9 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. 2. SFNTC is engaged in the business of manufacturing, distributing, 10 marketing, advertising, offering for sale, and selling various types of tobacco 11 products throughout the United States. SFNTC is the owner of distinctive trademarks, 12 including, but not limited to trademarks consisting of the words “NATURAL 13 AMERICAN SPIRIT,” alone and in conjunction with other words and designs, 14 including depictions of a Native American chief (the “Chief Logo”). 15 3. SFNTC, through its predecessors-in-interest and affiliates, has used the 16 NATURAL AMERICAN SPIRIT trademarks continuously since as early as 17 September 8, 1992 in connection with tobacco products, including, but not limited to 18 cigarettes. (For convenience, and unless the context indicates otherwise, the term 19 “Santa Fe” will be used to refer collectively to SFNTC’s predecessors-in-interest 20 and/or to SFNTC’s corporate affiliates who use the trademarks owned by SFNTC 21 under authority from SFNTC.) 22 4. SFNTC has registered various versions of its NATURAL AMERICAN 23 SPIRIT marks on the Principal Register of the United States Patent and Trademark 24 Office (“USPTO”) under, inter alia, U.S. Trademark Registration Nos. 2,581,724; 25 2,581,727; 2,581,723; 2,661,935; 2,620,468; 2,620,467; 2,620,466; 2,620,465; 26 2,578,127; 2,692,958; 4,194,788; 4,194,786; 4,194,785; 4,194,784; 4,194,783; and 27 4,198,629. (For convenience, the marks shown in these registrations and their 28 - 2 CASE NO. 8:16-CV-1110-JVS(JCGX) 1 common-law counterparts are collectively referred to hereinafter as the “NATURAL ` 2 AMERICAN SPIRIT Marks”). 3 5. Santa Fe has used depictions of a Native American Chief in advertising 4 and on its packaging to promote its tobacco products (the “Chief Logo Artwork”). 5 SFNTC is the sole and exclusive owner of all right, title, and interest in and to the 6 copyrights in the Chief Logo Artwork. 7 6. SFNTC owns by assignment a copyright registration for the Chief Logo, 8 bearing Registration Number VA0000363481 with the United States Copyright 9 Office. The effective date of registration for the copyright covering the Chief Logo is 10 July 19, 1989. 11 7. As a result of many years of continuous use and promotion of the 12 NATURAL AMERICAN SPIRIT Marks, SFNTC’s NATURAL AMERICAN 13 SPIRIT Marks have acquired a high degree of recognition throughout the United 14 States as symbols of the highest quality of tobacco products. The public is uniquely 15 aware of the NATURAL AMERICAN SPIRIT Marks, and identifies those marks 16 with SFNTC. The NATURAL AMERICAN SPIRIT Marks are famous trademarks 17 that are widely recognized by the general public as a designation of the source of 18 SFNTC’s goods. 19 8. Defendant Eun Lee (“Defendant Lee”), together with Defendant Chris 20 Kim (“Defendant Kim”) direct, control participate in, engage in, perform, authorize, 21 approve, ratify, actively and knowingly cause, and are active and conscious forces 22 behind the business activities of Defendant The Spirit /b/a “NATURAL THE 23 SPIRIT.” 24 9. Defendants operate and control the website located at 25 THESPIRITUSA.COM (“Defendants’ Website”), through which Defendants 26 advertise, offer for sale, and sell natural tobacco products called “E-Liquid,” 27 “EJuice,” or “Vape Juice” (collectively referred to hereinafter as “E-Liquid”), and 28 other products associated with electronic cigarettes. - 3 CASE NO. 8:16-CV-1110-JVS(JCGX) 10. 1 Defendants advertised, sold, `and distributed products bearing the 2 NATURAL AMERICAN SPIRIT Marks, or marks confusingly similar to the 3 NATURAL AMERICAN SPIRIT Marks, and have reproduced the copyrighted Chief 4 Logo. 5 11. On June 15, 2016, SFNTC commenced the above-captioned action (the 6 “Action”) by filing a complaint (the “Complaint”) against Defendants. The 7 Complaint alleged claims for trademark infringement, unfair competition and false 8 designation of origin, and trademark dilution arising under sections 32 and 43 of the 9 Federal Trademark Act of 1946 (the “Lanham Act”), 15 U.S.C. §§ 1114, 1125; 10 copyright infringement under the U.S. Copyright Act of 1976, 17 U.S.C. §§ 411(c), 11 501, et seq.; unfair business practices arising under Cal. Bus. & Prof. Code §§ 17200 12 et seq.; and trademark infringement and unfair business practices arising under the 13 common law of the State of California. 14 12. The parties have agreed to resolve their dispute by the entry of this Final 15 Judgment and Permanent Injunction on Consent, as well as by payment from 16 Defendants to SFNTC of a confidential amount of money. 17 13. Pursuant to Section 39 of the Lanham Act, 15 U.S.C. § 1121, and 18 pursuant to 28 U.S.C. §§ 1331, 1332, and 1338, this Court has subject matter 19 jurisdiction over Santa Fe’s claims against Defendants, and supplemental jurisdiction 20 pursuant to 28 U.S.C. § 1367. 21 14. This Court has personal jurisdiction over Defendants because 22 Defendants have purposefully availed themselves of the privilege of doing business 23 in this district. Defendants own and operate the website located at 24 THESPIRITUSA.COM, which is an interactive website that is accessible by Internet 25 users in this district and offers goods to residents of California. The infringing 26 products that Defendants offer under the NATURAL AMERICAN SPIRIT Marks, or 27 colorable imitations thereof, and made available through Defendants’ Website to 28 purchasers in the United States, are capable of being ordered, and have been ordered, - 4 CASE NO. 8:16-CV-1110-JVS(JCGX) 1 by purchasers in California, and are capable of being shipped, and have been shipped, ` 2 to purchasers in California. 3 15. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b), in that, 4 on information and belief, a substantial part of the events or omissions giving rise to 5 the claim occurred in this judicial district. PERMANENT INJUNCTION AND ORDER 6 7 8 9 Based on the parties’ stipulation and agreement hereto, it is hereby ORDERED, ADJUDGED, and DECREED as follows: 1. Defendants and their agents, representatives, employees, attorneys, 10 successors and assigns, and all others in active concert or participation with 11 Defendants or any of them, are hereby PERMANENTLY ENJOINED AND 12 RESTRAINED from: 13 a) using, advertising, promoting, displaying, or making any use 14 whatsoever, in connection with the advertisement, promotion, or 15 sale of tobacco, tobacco-related products, vapor products or 16 vapor-related products, electronic cigarettes or products related to 17 electronic cigarettes, liquid nicotine products, or flavored nicotine 18 products, of (i) the designation “NATURAL AMERICAN 19 SPIRIT,” or any colorable imitation of the NATURAL 20 AMERICAN SPIRIT Marks (including but not limited to 21 NATURAL THE SPIRIT and THE SPIRIT); (ii) visual or graphic 22 depictions of a Native American chief; and (iii) the following 23 SFNTC trademarks or any colorable imitations thereof: 24 RESPECT FOR THE EARTH; REAL. SIMPLE. DIFFERENT.; 25 and IT’S ONLY NATURAL; 26 27 b) engaging in any other activity constituting an infringement of SFNTC’s trademarks; and 28 - 5 CASE NO. 8:16-CV-1110-JVS(JCGX) c) 1 using any false designation of origin or false representations ` 2 which are likely to lead the trade, the public, or individuals to 3 believe erroneously that Defendants, or any one of them, are in 4 any way sponsored, approved, authorized, or controlled by Santa 5 Fe. 6 7 8 9 2. Defendants shall pay to SFNTC the confidential amount of money agreed upon by the parties. 3. SFNTC and Defendants acknowledge that they have knowingly and voluntarily entered into this Consent Judgment after reviewing the same with their 10 counsel or having had ample opportunity to consult with counsel of their choice. 11 SFNTC and Defendants understand the undertakings, obligations and terms of this 12 Consent Judgment. 13 4. Except as to Defendants’ obligations set forth in this Consent Judgment, 14 SFNTC’s claims against Defendants in this Action are hereby dismissed with 15 prejudice. No appeals shall be taken from this Consent Judgment, and Defendants 16 hereby waive all right to appeal from this Consent Judgment. 17 5. This Court shall retain jurisdiction over this matter to enforce a violation 18 of this Judgment’s terms. If any such violation occurs, the Court may award, (a) 19 without regard to proof of actual damages, an amount the Court deems adequate to 20 compensate SFNTC for such breach; as well as (b) injunctive relief enjoining any 21 22 23 24 25 26 27 28 - 6 CASE NO. 8:16-CV-1110-JVS(JCGX) 1 further breach of this Order, or such modifications to the present Order as the Court ` 2 deems appropriate; (c) attorneys’ fees, costs and disbursements, as determined by the 3 Court; and (d) such other relief as the Court deems just and proper. 4 5 It is SO ORDERED, this the 16th day of September, 2016. 6 7 8 __________________________________ United States District Judge 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 7 CASE NO. 8:16-CV-1110-JVS(JCGX)

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