Shakey's USA, Inc. v. Tutto's Pizza Corp., et al

Filing 26

STIPULATION and ORDER for Entry of Permanent Injunction and Judgment Against Defendant Joshua Cho signed by Judge Oliver W. Wanger on 1/8/2010. CASE CLOSED. (Bradley, A)

1 BRYAN CAVE LLP

2 Shelly C. Gopaul, California Bar No. 246382 3 Santa Monica, California 90401-2386 4 Facsimile: 5
Email: Telephone: 120 Broadway, Suite 300 [phone] [phone] [e-mail] [e-mail]

Glenn Plattner, California Bar No. 137454

6 Attorneys for Plaintiff 7 8 9
Bryan Cave LLP 120 Broadway, Suite 300 Santa Monica, California 90401-2386

SHAKEY'S USA, INC. UNITED STATES DISTRICT COURT EASTERN DISTRICT OF CALIFORNIA

10 11 SHAKEY'S USA, Inc., a Delaware corporation, 12 13 14
v. TUTTO'S PIZZA CORP., business entity Plaintiff, Case No. 1:09-CV-00093-OWW-DLB STIPULATION AND ORDER FOR ENTRY OF PERMANENT INJUNCTION AND JUDGMENT AGAINST DEFENDANT JOSHUA CHO

15 unknown; CM RESTAURANT GROUP, INC., a 16 individual; and JOSHUA CHO, an individual, 17 18 19 20 21 22 23 24 25 26 27 28
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California corporation; AMIRA HANNA, an Defendants.

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STIPULATION AND ORDER FOR ENTRY OF PERMANENT INJUNCTION AND JUDGMENT

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PLAINTIFF SHAKEY'S USA, INC., a Delaware corporation ("Shakey's"), on the one

2 hand, and DEFENDANT JOSHUA CHO, an individual ("Cho"), on the other hand, do each 3 individually and collectively stipulate and agree pursuant to Rule 65 of the Federal Rules of Civil 4 Procedure as follows: 5
WHEREAS, Shakey's previously entered into a Franchise Agreement with James Kim

6 ("Kim") for the operation of the Shakey's restaurant located at 4984 E. King Canyon Rd., Fresno, 7 California, 93727 (the "Restaurant"). 8
WHEREAS, on or around August 1, 2006, Kim assigned all of his rights, title and interest

9 in and to the franchise agreement to Eugene and Nancy Yamamoto (the "Yamamotos"), who then
Bryan Cave LLP 120 Broadway, Suite 300 Santa Monica, California 90401-2386

10 operated the Restaurant as a Shakey's restaurant under a franchise agreement with Shakey's. 11
WHEREAS, the Yamamotos' franchise agreement was terminated on February 22, 2007,

12 as a result of the Yamamotos' multiple breaches of the franchise agreement, however, the 13 Restaurant continued to be operated using Shakey's trademarks and trade dress. 14
WHEREAS, Shakey's is informed and believes that after the Yamamotos ceased running

15 the Restaurant, Joshua Cho ("Cho") was involved with the operation of the Restaurant; 16
WHEREAS, Shakey's filed a complaint in the United States District Court, Eastern

17 District of California, entitled Shakey's USA, Inc. v. Tutto's Pizza Corp. et al., Case No. 1:09-CV18 00093-OWW-DLB alleging Federal Trade Dress Infringement, Federal Trademark Infringement, 19 California Common Law Trademark Infringement and Unfair Competition, Federal and State 20 Trademark Dilution, Misappropriation of Trade Secrets, Common Law Misappropriation of Trade 21 Secrets, False Designation of Origin and False Description, Unfair Competition and Temporary 22 Restraining Order and Injunctive Relief (the "Action"); 23 24 25
WHEREAS, Cho contends that he no longer has any involvement with the Restaurant; WHEREAS, this injunction is needed to protect Shakey's trademarks and trade secrets; WHEREAS, Shakey's and Defendant Joshua Cho ("Cho") consent to and waive all

26 objections to the non-exclusive personal jurisdiction of, and venue in, the United States District 27 Court, Eastern District of California, for the purposes of all cases and controversies involving this 28
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STIPULATION AND ORDER FOR ENTRY OF PERMANENT INJUNCTION AND JUDGMENT

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1 Stipulated Injunction and its enforcement and consent to the continued jurisdiction of this Court to 2 enforce this Stipulated Injunction; 3 4 5 6 7 8 9
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NOW, THEREFORE, the parties agree as follows: (1) Cho and his agents, directors, officers, and employees are required to: (a) immediately discontinue the use of the Shakey's Marks, including but not

limited to Shakey's service marks, trademarks and trade name, the sale of Mojo Potatoes, and the use of any and all signs and printed goods bearing the said Shakey's Marks and/or any references whatever thereto; (b) immediately destroy all materials imprinted with the name "Shakey's"

10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

and/or "Shakey's Pizza Parlor and Ye Public House" and/or any other Shakey's Marks; (c) immediately discontinue to operate or do business under any name or in any

manner that might tend to give the general public the impression that Cho is any longer connected in any way with Shakey's or any longer has any right to the use of the Shakey's System; (d) immediately discontinue to make, use or avail of any of the trade secrets of,

or information imparted by Shakey's or disclose or reveal any such other information or any portion thereof to others; (e) immediately return to Shakey's the Operations Manual and all copies

thereof, together with all other material containing trade secrets, operating instructions, or business practices, if any such information is currently in Cho's possession, custody, or control; (f) refrain from occupying, constructing, equipping, ordering or assisting any

person or persons in the occupation, construction, or equipping of any premises incorporating the distinctive features or equipment layout which Shakey's has originated and developed and which are identifying characteristics of premises operated by Shakey's franchisees; (g) immediately cease using in the Restaurant, or otherwise, any Shakey's

artwork and signs, interior and exterior color schemes distinctive to Shakey's, distinctive
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STIPULATION AND ORDER FOR ENTRY OF PERMANENT INJUNCTION AND JUDGMENT

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window glass and lamps, or other trade dress used by any licensed Shakey's pizza parlor restaurant; (2) That Cho and his employees, agents, servants, attorneys, and those persons in

4 active concert or participation with him are permanently enjoined and restrained from: 5 6 7 8
(a) Doing anything to cause potential purchasers of Cho's goods or services to

believe that Cho's goods or services originate with Shakey's or are authorized, endorsed, or affiliated with or sponsored by Shakey's, including but not limited to using the Shakey's Marks, trade secrets or trade dress.

9 IT IS SO STIPULATED.
Bryan Cave LLP 120 Broadway, Suite 300 Santa Monica, California 90401-2386

10 Dated: May 31, 2009 11 12 13 14 15 16 17 18 19 20 21 22 IT IS SO ORDERED. 23 24 25 26 27 28
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Respectfully submitted, BRYAN CAVE LLP GLENN PLATTNER SHELLY C. GOPAUL /s/ SHELLY GOPAUL Shelly C. Gopaul Attorneys for Plaintiff Shakey's USA, Inc.

Dated: May 31, 2009

Respectfully submitted, JOSHUA CHO

By: /s/ JOSHUA CHO Joshua Cho Defendant in Pro Per

DATED: January 8, 2010

_/s/ OLIVER W. WANGER__________ Honorable Oliver W. Wanger Judge, United States District Court

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STIPULATION AND ORDER FOR ENTRY OF PERMANENT INJUNCTION AND JUDGMENT

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