Continental D.I.A. Diamond Products, Inc. v. Dong Young Diamond Industrial Co., Ltd. et al

Filing 162

consent decree/injunction Modified on 3/2/2010 (tf, COURT STAFF).

1 JEFFREY M. RATINOFF (SBN 197241) Email: [e-mail] 2 KARINEH KHACHATOURIAN (SBN 202634) Email: [e-mail] 3 K&L GATES LLP 630 Hansen Way 4 Palo Alto, CA 94304 Telephone: [phone] Facsimile: [phone] 6 Attorneys for Plaintiff/Counter-Defendant, CONTINENTAL D.I.A. DIAMOND PRODUCTS, INC. 7 8 ALFRED C. FRAWLEY (pro hac vice) (Maine Bar No. 2547) Email: [e-mail] 9 WILLIAM D. HAGEDORN (pro hac vice) (SBN 199322) Email: [e-mail] 10 PRETI, FLAHERTY, BELIVEAU & PACHIOS, LLP One City Center, P.O. Box 9546 11 Portland, Maine 04112-9546 Telephone: [phone] Facscimile: [phone] 13 Attorneys for Defendants, DONG YOUNG DIAMOND INDUSTRIAL CO., LTD, 14 AND DONGSOO LEE 15 16 17 18 19 Plaintiff, 20 21 vs. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA CONTINENTAL D.I.A. DIAMOND PRODUCTS, INC., a California corporation, Case No. CV 08-2136 SI STIPULATED INJUNCTION AND CONSENT DECREE Judge: The Honorable Susan Illston

22 DONG YOUNG DIAMOND INDUSTRIAL CO., LTD., a South Korean company, 23 DONGSOO LEE, an individual, and DOES 110, inclusive, 24 25 26 27 28 STIPULATED INJUNCTION AND CONSENT DECREE CASE NO.: CV 08-2136 SI AND RELATED COUNTERCLAIMS. Defendants.

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WHEREAS, Plaintiff and Counter-Defendant Continental D.I.A. Diamond Products, Inc.

2 ("Continental" or "Plaintiff"), Defendants and Counterclaimants Dong Young Diamond Industrial 3 Co., Ltd. and Defendant DongSoo Lee (collectively "Defendants") have resolved the disputed 4 between them in this civil action through a confidential settlement agreement, executed on February 5 24, 2010 ("the Settlement Agreement"), hereby stipulate and consent pursuant to Fed. R. Civ. P. 6 41(a)(1)(ii), 41 (c), and 54, by their undersigned counsel, to the following stipulated permanent 7 injunction and consent decree (the "Stipulated Injunction"): 8 9 IT IS HEREBY ORDERED, ADJUDGED, AND DECREED as follows: 1. This Court has jurisdiction over the parties to this Stipulated Injunction and the

10 subject matter of this Civil Action. 11 12 Action. 13 3. Continental is the owner of all rights throughout the United States of America to the 2. Venue properly lies in this Court to adjudicate the issues set forth in this Civil

14 trademark and trade name and logo comprising "Continental D.I.A. Diamond Products, Inc." 15 ("Trade Name" or "Continental Logo") at common law from and after said date. A true and correct 16 copy of the Continental Logo is attached hereto as Exhibit A. 17 4. Continental has acquired trademark rights to and is the owner of all rights throughout

18 the United States of America to the following trademarks: "TERMINATOR", Reg. No. 2,497,482; 19 "TERMINATOR XTREME", Reg. No. 3,028,708; "TERMINATOR G5", Reg. No. 3,083,811; and 20 "TERMINATOR ZOOM", Reg. No. 3,581,253 (hereinafter collectively referred to as "the 21 TERMINATOR® marks"). True and correct copies of these registration certificates are attached 22 hereto as Exhibits B through E. 23 5. Continental has acquired trademark rights to and is the owner of all rights throughout

24 the United States of America of certain distinctive flame pattern trademarks, both at common law 25 from and further by virtue of registration with the United States Patent and Trademark Office, 26 including Flame Pattern Mark, Reg. No. 3,500,842, (collectively "Terminator Flame Marks"). True 27 and correct copies of the Terminator Flame Marks are attached as Exhibits F-I and the registration 28 certificate is attached hereto as Exhibit J. -1STIPULATED INJUNCTION AND CONSENT DECREE CASE NO.: CV 08-2136 SI

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6.

Continental is the author and owner of the copyrights in the distinctive flame

2 patterns, registered as Certificate of Registration Nos. VA0001225714 and VA0001244829. True 3 and correct copies of which attached hereto as Exhibits K and L. 4 7. Continental's rights referred to herein in Paragraphs 3-6 are good and valid in law

5 and equity. 6 8. Continental owns certain confidential and proprietary information identified in the

7 Parties' Settlement Agreement ("Proprietary Information") that Defendants were contractually 8 bound not to discuss, disclose or use other than as provided by agreement between the parties. 9 9. Dong Young Diamond Industrial Co., Ltd. and DongSoo Lee, and their parents,

10 subsidiaries, affiliates, shareholders, officers, directors, agents, servants, employees, privies, heirs, 11 successors, assigns and all persons in active concert or participation with them, shall be and are 12 hereby and forever restrained and enjoined as follows: 13 a. Defendants shall not copy, disseminate, reproduce, affix or use any of

14 Continental's trade name, logos, marks and copyrights identified in Exhibits A through L (the 15 "Continental Marks and Copyrights") in any manner or for any commercial purpose, including but 16 not limited in the solicitation of actual or potential customers; 17 b. Defendants shall not disseminate or use images of any of the products

18 identified in the Settlement Agreement ("Continental Products") in any manner or for any 19 commercial purpose other than for comparative advertising to the extent permitted under 20 California's Unfair Competition Law, Cal. Bus. & Prof Code §§ 17200 et seq., and the Lanham Act, 21 15 U.S.C. §§ 1051 et seq.; 22 23 Information; 24 d. Defendants shall not manufacture or sell products identical in color, c. Defendants shall not discuss, disclose or use any of Continental's Proprietary

25 appearance and design, or specification (including bond formulae and diamond concentration) to the 26 Continental Products and shall not use or infringe upon Continental's Proprietary Information in the 27 manufacturing or sale of Defendants' products; 28 e. Defendants shall not make any statements or representations concerning CASE NO.: CV 08-2136 SI

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1 Continental or the Continental Products that would lead actual or potential customers to believe that 2 Defendants have access to or the right to use any of Continental's Proprietary Information; 3 f. Defendants shall not engage in any conduct or make any representations that

4 would lead actual or potential customers to believe that Defendants manufacture any products for 5 Continental, that Defendants were or are a source of the Continental Products, and shall not 6 otherwise make statements that are likely to cause consumer confusion concerning the source of the 7 Continental Products; 8 g. Defendants shall either destroy or turn over to Continental all documents,

9 electronic files and things evidencing, reflecting or containing Continental's Proprietary 10 Information within fifteen (15) court days of entry of this Stipulated Injunction; 11 h. Defendants shall destroy all molds used to manufacture any Continental

12 Products within fifteen (15) court days of entry of this Stipulated Injunction; and 13 i. Defendants shall destroy all products and materials bearing any of the

14 Continental Marks and Copyrights within fifteen (15) court days of entry of this Stipulated 15 Injunction. 16 10. In the event Defendants violate the aforementioned permanent injunction, or in the

17 event of a default for non-payment as set forth in the Settlement Agreement that is not cured within 18 fifteen (15) court days thereof, Continental shall be entitled to further entry of a final judgment as 19 follows: 20 a. Final judgment shall be entered in favor of Plaintiff and against Defendants

21 on Plaintiff's claims for breaches of contract, copyright infringement (17 U.S.C. § 101 et. seq.), 22 trademark infringement (15 U.S.C. § 1114); unfair competition (15 U.S.C. § 1125(a)), and unfair 23 business practices (Cal. Bus. & Prof. Code § 17200 et. Seq.); and 24 b. Final judgment shall be entered in favor of Plaintiff against Defendants in the

25 amount of one million three hundred thousand U.S. Dollars ($1.3 million USD), inclusive of all 26 damages and costs, and with each party to bear its own attorneys' fees to this date (subject to any 27 allocation of attorneys' fees for post-judgment activities as law may allow). 28 11. Continental and Defendants respectfully request that the Court direct the parties to CASE NO.: CV 08-2136 SI

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1 perform each of the obligations set forth in the parties' Settlement Agreement, and incorporate the 2 terms of the Settlement Agreement into the Stipulated Injunction by reference. Continental and 3 Defendants further request that the Court expressly retain jurisdiction over them for the purposes of 4 enforcing this Stipulated Injunction and the parties' Settlement Agreement, as well as entry of a 5 further judgment enumerated in Paragraph 10, if required. 6 12. All remaining claims for relief in this action, including all counterclaims by

7 Defendants, are hereby dismissed with prejudice, and with each party to bear its own fees and costs. 8 IT IS SO STIPULATED. K&L GATES LLP /s/ Jeffrey M. Ratinoff By: JEFFREY M. RATINOFF Attorneys for Plaintiff/Counter-Defendant, Continental D.I.A. Diamond Products, Inc. Dated: February 26, 2010 PRETI FLAHERTY BELIVEAU & PACHIOS, LLP /s/ Alfred C. Frawley By: ALFRED C. FRAWLEY Attorneys for Defendants/Counterclaimants, Dong Young Diamond Industrial Co., Ltd., and DongSoo Lee

9 Dated: February 26, 2010 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

ATTESTATION PURSUANT TO GENERAL ORDER 45 Concurrence in the filing of this document has been obtained from the other signatory. Dated: February 26, 2010 K&L GATES LLP /s/ Jeffrey M. Ratinoff By: JEFFREY M. RATINOFF Attorneys for Plaintiff/Counter-Defendant, Continental D.I.A. Diamond Products, Inc.

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CASE NO.: CV 08-2136 SI

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JUDGMENT NOW, THEREFORE, PURSUANT TO STIPULATION, IT IS SO ORDERED,

3 ADJUDGED AND DECREED THAT a permanent injunction be entered in the form identified 4 above against Defendants and Counterclaimant Dong Young Diamond Industrial Co., Ltd. and 5 Defendant DongSoo Lee (collectively "Defendants") in favor of Plaintiff and Counter-Defendant 6 Continental D.I.A. Diamond Products, Inc. ("Continental" or "Plaintiff"). Subject to the terms 7 governing the entry of judgment in favor of Plaintiff against Defendants, all remaining claims for 8 relief in the above-captioned action, including all counterclaims by Dong Young Diamond 9 Industrial Co., Ltd. and DongSoo Lee, are hereby dismissed with prejudice, with each party to bear 10 its own fees and costs. 11 Continental and Defendants are hereby directed to perform each of the obligations set forth

12 in the parties' Settlement Agreement executed on February 24, 2010, the terms of which are 13 incorporated herein by reference. This Court shall retain personal and exclusive jurisdiction over 14 Continental and Defendants for the purpose of enforcing or interpreting any portion of the 15 Stipulated Injunction or Settlement Agreement. Said jurisdiction may be invoked by or against any 16 party hereto by filing a limited request to re-open Case No. CV 08-2136 SI, which request shall 17 specifically identify the provision of the Stipulated Injunction or Settlement Agreement in question 18 and the nature of the dispute or disagreement. 19 Dated: 3/1/10 20 21 22 23 24 25 26 27 28 -5STIPULATED INJUNCTION AND CONSENT DECREE CASE NO.: CV 08-2136 SI THE HONORABLE SUSAN ILLSTON UNITED STATES DISTRICT COURT JUDGE