Shingle Springs Band of Miwok Indians v. Caballero

Filing 259

ORDER signed by Judge John A. Mendez on 2/7/13 ORDERING that the Tribe's 236 Motion for Partial Summary Judgment and Entry of Permanent Injunction is GRANTED. Summary judgment is hereby entered in the Tribe's favor and against Caballero a s to the Tribe's First, Second, Fourth, and Fifth Causes of Action, and as to its unfair competition claim under its Third Cause of Action. A permanent injunction hereby issues, effective immediately, consistent with this Order. Caballero shall file with this Court, and serve on the Tribe within 60 days after this Order is filed, a report in writing, under oath, setting forth in detail the manner and form in which Caballero has acted to comply with all of the foregoing requirements. The Tribes remaining claims, including all claims for damages, are hereby DISMISSED, without prejudice. Judgment shall be entered consistent with this Order. CASE CLOSED (Kastilahn, A)

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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SHINGLE SPRINGS BAND OF MIWOK
INDIANS,
Plaintiff,

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v.
CESAR CABALLERO,

No.

2:08-CV-03133-JAM-DAD

ORDER GRANTING SHINGLE SPRINGS
BAND OF MIWOK INDIANS’ MOTION
FOR PARTIAL SUMMARY JUDGMENT
AND ENTRY OF PERMANENT
INJUNCTION

Defendant.

The unopposed Motion of Plaintiff Shingle Springs Band of
Miwok Indians (“Tribe”) for Partial Summary Judgment and Entry of
Permanent Injunction was noticed for hearing on February 6, 2013.
The Court determined that no hearing was required pursuant to
Local Rule 230(g).

After considering Plaintiff’s papers, and all

other matters presented to the Court, and good cause appearing
therefor, the Court rules as follows:
THE COURT HEREBY FINDS THAT, for the reasons set forth in
the Tribe’s moving papers, no genuine issue of material fact
exists, and the Tribe is entitled to partial summary judgment in
its favor, as to the Tribe’s First, Second, Fourth, and Fifth

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Causes of Action, and as to its unfair competition claim under

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its Third Cause of Action, and to an order entering a permanent

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injunction against Defendant Cesar Caballero.

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THE COURT FURTHER FINDS THAT, as between the parties, the

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Tribe has superior rights to use the following marks in any

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format, regardless of spacing and capitalization, (collectively

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the “Marks”):

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Springs Rancheria,” “Shingle Springs Band of Miwok Indians,

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Shingle Springs Rancheria (Verona Tract), California,” “Red Hawk

“Shingle Springs Band of Miwok Indians,” “Shingle

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Casino,” “Shingle Springs Miwok Tribe,” “Shingle Springs Miwok

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Chief,” “Shingle Springs Reservation,” “Shingle Springs Indian

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Reservation,” marks that consist of or include the terms “Shingle

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Springs” and “Band(s),” marks that consist of or include the

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terms “Shingle Springs” and “Miwok(s),” marks that consist of or

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include the terms “Shingle Springs” and “Indian(s),” and any

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other marks confusingly similar to “Shingle Springs Band of Miwok

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Indians,” “Shingle Springs Rancheria,” “Shingle Springs Band of

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Miwok Indians, Shingle Springs Rancheria (Verona Tract),

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California,” or “Red Hawk Casino.”

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THE COURT FURTHER FINDS THAT the Tribe is entitled to

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summary judgment on its First, Second, Third, and Fourth Causes

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of Action because no genuine dispute exists that (1) the Tribe

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owns the Marks, (2) the Tribe is the senior holder of the Marks,

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and (3) Caballero’s use of the Marks and confusingly similar

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terms is likely to cause confusion in the marketplace.

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specifically finds that (1) Caballero’s use of the exact marks

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“Shingle Springs Band of Miwok Indians,” “Shingle Springs

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Rancheria,” and “Red Hawk Casino” is likely to cause confusion in
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The Court

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the marketplace; (2) Caballero’s use of “Shingle Springs Miwok

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Tribe,” “Shingle Springs Miwok Chief,” “Shingle Springs

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Reservation,” “Shingle Springs Indian Reservation” is likely to

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cause confusion in the marketplace; and (3) Caballero’s use of

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any other marks that consist of or include the terms “Shingle

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Springs” and “Band(s),” marks that consist of or include the

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terms “Shingle Springs” and “Miwok(s),” marks that consist of or

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include the terms “Shingle Springs” and “Indian(s),” is likely to

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cause confusion in the marketplace.

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THE COURT FURTHER FINDS THAT the Tribe is entitled to

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summary judgment on its Fifth Cause of Action because no genuine

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dispute exists that Caballero has, with a bad faith intent to

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profit, registered, trafficked in, or used domain names that are

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identical or confusingly similar to the Tribe’s distinctive

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Marks.

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THE COURT FURTHER FINDS THAT no genuine dispute exists that

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prevailing on these claims entitles the Tribe to permanent

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injunctive relief because (1) Caballero’s conduct has caused the

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Tribe irreparable injury; (2) remedies available at law, such as

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monetary damages, are inadequate to compensate for that injury;

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(3) considering the balance of hardships between the Tribe and

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Caballero, a remedy in equity is warranted; and (4) the public

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interest would not be disserved by a permanent injunction.

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THE COURT FURTHER FINDS THAT, good cause exists for an

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order, pursuant to Rule 41(a)(2) of the Federal Rules of Civil

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Procedure, (1) dismissing the Tribe’s remaining claims, including

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all claims for compensatory and punitive damages, without

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prejudice, and (2) preserving the right of the Tribe to reassert
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those claims within thirty-six months after entry of judgment

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(relating back to the date of the original complaint) if

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Caballero appeals the judgment or fails to comply with the

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Court’s injunction.

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no legal prejudice from such a dismissal.

The Court finds that Caballero will suffer

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It is, therefore:

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1.

ORDERED that the Tribe’s Motion for Partial Summary

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Judgment and Entry of Permanent Injunction is granted.

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judgment is hereby entered in the Tribe’s favor and against

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Caballero as to the Tribe’s First, Second, Fourth, and Fifth

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Causes of Action, and as to its unfair competition claim under

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its Third Cause of Action.

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enforcement or appeal of this order.

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2.

Summary

There is no just cause to delay

IT IS FURTHER ORDERED THAT a permanent injunction

hereby issues, effective immediately, as follows:
Caballero and any other persons or entities acting under his

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direct control or at his direction are permanently enjoined and

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restrained from:

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a.

Reproducing, copying, counterfeiting, colorably

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imitating, or otherwise using in any way without the

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express written consent of the Tribe, the Marks.

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b.

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Registering or applying to register any of the Marks
anywhere in the world.

c.

Opposing, bringing any action against, contesting or

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challenging the validity of, or the Tribe’s use or

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ownership of, any of the Marks or any of the Tribe’s

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application(s) to register or registration(s) for any

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of the Marks anywhere in the world.
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d.

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Circulating advertising or promotional literature, or
advertising any product or service, bearing the Marks.

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Representing that Caballero is in any way associated or

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affiliated with, or authorized, approved, or licensed

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by, the Tribe.

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f.

Representing that Caballero has ownership of, authority

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or control over, or entitlement to, the Tribe’s

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personal property, real property, artifacts or human

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remains, trust land held for the Tribe, assets of any

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kind, members, government or business operations,

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business ventures, customers, employees, officers, or

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agents of the Tribe, including, but not limited to,

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those of the Shingle Springs Community Health Clinic

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and/or the Red Hawk Casino.

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g.

Running, or otherwise distributing any television,

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radio, print, Internet, electronic correspondence or

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other ads containing the Marks.

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h.

Using the Marks on <ShingleSpringsReservation.com>,

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<ShingleSpringsMiwokTribe.com>,

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<ShingleSpringsReservation.org>,

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<ShingleSpringsRancheria.org>,

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<ShingleSpringsMiwokTribe.org>,

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<ShingleSpringsIndianReservation.com>,

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<RedHawkCasino.info>, <RedHawkCasino.net>,

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<RedHawkCasino.org>, <ShingleSpringsReservation.info>,

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<ShingleSpringsReservation.biz>,

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<ShingleSpringsMiwokTribe.info>, <facebook.com>,

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<Myspace.com>, <Photobucket.com>, including but not
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limited to “championindian’s album,”

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<www.championindian.com>, <wildfireprotest.org>,

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<mewuktribe.com>

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limited to the Myspace AmericanIndians, MiwokTribe and

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ChampionIndian pages, <YouTube.com>, including but not

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limited to the Miwok Promotions channel, and any other

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websites or web pages in Caballero’s control.

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i.

<Twitter.com>, including but not

Registering, trafficking, or using any domain name

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incorporating the Marks or any variation or derivative

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thereof, singly, or in combination with any other word

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or symbol, or any other domain name confusingly similar

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to the Marks, including, but not limited to, any domain

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name containing, regardless of capitalization,

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“ShingleSpringsMiwokTribe,”

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“ShingleSpringsReservation,” “ShingleSpringsRancheria,”

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“ShingleSpringsIndianReservation,” “RedHawkCasino,” and

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all Caballero’s present active and inactive domain

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names, or those of his affiliates, that incorporate the

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Marks;

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j.

Using any DVDs that use the Marks.

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k.

Distributing in any manner any video, audio, or image

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that uses the Marks, or causing or permitting anyone to

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use his voice, name or likeness in connection with any

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video, audio, or image that uses the Marks.

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l.

Using any publicity and marketing materials, including

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flyers, pamphlets, and other such materials that

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contain instances of the Marks.

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m.

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Using any plaques or other signs that contain the
Marks.

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n.

Using the Marks on any deeds, titles, contracts, public

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records, or other such documents, including but not

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limited to any fictitious business name statement,

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business license, or tax identification document

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anywhere in the world.

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o.

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Holding or using a bank account, checks, credit card,
debit card or other financial product under any name

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containing the Marks.

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p.

This injunction does not preclude Mr. Caballero from

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petitioning the Department of Interior for federal

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recognition for any tribal entity he represents, so

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long as he does not misrepresent that he is authorized

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to speak or act for the Tribe;

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3.

IT IS FURTHER ORDERED THAT Caballero shall, within 60

a.

Deliver for destruction all articles of merchandise,

days:

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displays, signs, plaques, advertisements, packaging,

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brochures, order forms, price lists, or any other

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materials in Defendant’s possession or control or in

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the possession or control of Defendant’s agents which

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bear the marks “Shingle Springs Band of Miwok Indians,”

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“Shingle Springs Rancheria,” “Shingle Springs

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Reservation,” “Shingle Springs Gaming Commission,” “Red

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Hawk Casino,” or any other confusingly similar marks.

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b.

Abandon, withdraw, or otherwise terminate the legal
effect of any fictitious business name statements,
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business licenses, public records, or other such

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documents that he may have filed in any jurisdiction,

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as to which he has used “Shingle Springs Band of Miwok

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Indians,” “Shingle Springs Rancheria,” “Shingle Springs

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Reservation,” “Shingle Springs Gaming Commission,” “Red

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Hawk Casino,” or any other confusingly similar name.

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c.

Close any bank account, credit card account, debit card

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account, or other account held under any name

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containing the Marks, including but not limited to

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accounts held with El Dorado Savings Bank, JPMorgan

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Chase Bank, N.A., and Washington Mutual under the name

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“Shingle Springs Band of Miwok Indians” or “Shingle

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Springs Band of Miwok Tribe,” or permanently change all

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names and account titles associated with such accounts

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to names that do not contain the Marks; destroy all

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checks, credit cards, and debit cards that bear any

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name or account title containing the Marks; and destroy

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all documents associated with those accounts that bear

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any name or account title containing the Marks or

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permanently redact all instances of the Marks from such

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documents.

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d.

Remove the Marks from any websites or web pages in

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Caballero’s control, including but not limited to

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removing “www.shinglespringsreservation.info” from the

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“championindian” Twitter page, available at

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<https://twitter.com/championindian>.

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e.

Take any action available under the law, including but
not limited to asserting and enforcing rights under
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California Civil Code, section 3344, or any other law

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prohibiting use of his name, voice, or likeness without

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his consent, to prevent distribution and display of any

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video, advertisement, or other material containing the

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Marks.

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4.

IT IS FURTHER ORDERED THAT Caballero must transfer to

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the Tribe, at his own cost, the following domain names

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(“Infringing Domains”):

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<ShingleSpringsMiwokTribe.com>

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<ShingleSpringsReservation.com>

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<ShingleSpringsReservation.org>

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<ShingleSpringsRancheria.org>

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<ShingleSpringsMiwokTribe.org>

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<ShingleSpringsIndianReservation.com>

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<RedHawkCasino.info>

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<RedHawkCasino.net>

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<RedHawkCasino.org>

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<ShingleSpringsReservation.info>

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<ShingleSpringsReservation.biz>

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<ShingleSpringsMiwokTribe.info>

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5.

IT IS FURTHER ORDERED THAT Caballero shall file with

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this Court, and serve on the Tribe within 60 days after this

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Order is filed, a report in writing, under oath, setting forth

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in detail the manner and form in which Caballero has acted to

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comply with all of the foregoing requirements

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6.

IT IS FURTHER ORDERED THAT the Tribe’s remaining

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claims, including all claims for damages, are hereby dismissed,

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without prejudice.

The Tribe may reassert those claims within
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thirty-six months after entry of judgment (relating back to the

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date of the Tribe’s original complaint) if Caballero appeals

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the judgment or if Caballero fails to comply with any provision

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of this Order.

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7.

IT IS FURTHER ORDERED THAT judgment shall be entered

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consistent with this Order.

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IT IS SO ORDERED.

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Dated: February 7, 2013

____________________________
JOHN A. MENDEZ,
UNITED STATES DISTRICT JUDGE

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