Rand International, Inc. v. Lucasfilm LTD.,

Filing 47

ORDER re 46 , 44 GRANTING Stipulated Permanent Injunction and Dismissal of Claims. Signed by Judge Jeffrey S. White on October 10, 2008. (jswlc2, COURT STAFF) (Filed on 10/10/2008)

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Case 3:08-cv-03897-JSW Document 44 Filed 10/09/2008 Page 1 of 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 JAMES J. BROSNAHAN (CA SBN 34555) JBrosnahan@mofo.com JUDSON E. LOBDELL (CA SBN 146041) JLobdell@mofo.com MORRISON & FOERSTER LLP 425 Market Street San Francisco, California 94105-2482 Telephone: 415.268.7000 Facsimile: 415.268.7522 JAMES W. HUSTON (CA SBN 115596) JHuston@mofo.com MORRISON & FOERSTER LLP 12531 High Bluff Drive, Suite 100 San Diego, California 92130-2040 Telephone: 858.720.5100 Facsimile: 858.720.5125 Attorneys for Defendant LUCASFILM LTD. KELLEY DRYE & WARREN JONATHAN COOPERMAN (pro hac vice) ELANA GLATT (pro hac vice) 101 Park Avenue New York, NY 10178-0002 Telephone: (212) 808-7800 Facsimile: (212) 808-7897 jcooperman@kelleydrye.com BUCHALTER NEMER A professional Corporation RICHARD C. DARWIN (CA SBN 161245) 333 Market Street, 25th Floor San Francisco, CA 94105-2126 Telephone: (415) 227-0900 Facsimile: (415) 227-0770 rdarwin@buchalter.com Attorneys for Plaintiff RAND INTERNATIONAL, INC. UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION RAND INTERNATIONAL, INC., Plaintiff, v. LUCASFILM LTD., Case No. CV-08 -3897-JSW [PROPOSED] STIPULATED PERMANENT INJUNCTION, DISMISSAL OF CLAIMS, AND ORDER Hon. Jeffrey S. White Defendant. LUCASFILM LTD., Cross-Complainant, v. RAND INTERNATIONAL, INC., Cross-Defendant. [PROPOSED] STIPULATED PERMANENT INJUNCTION, DISMISSAL, AND ORDER CV-08 -3897-JSW sf-2459169 1 Case 3:08-cv-03897-JSW Document 44 Filed 10/09/2008 Page 2 of 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 2. 23 24 25 26 27 28 BACKGROUND On August 14, 2008, Plaintiff and Cross-Defendant Rand International, Inc. ("Rand") filed an action against Defendant and Cross-Complainant Lucasfilm Ltd. ("Lucasfilm") (collectively, the "Parties"), alleging breach of contract, tortious interference with contract, and violation of California Business & Professions Code section 17200, in connection with Lucasfilm's termination of a non-exclusive Merchandise License Agreement entered into by and between the Parties as of October 1, 2007 (the "License Agreement") and attached herein as Exhibit A. On August 14, 2008, Rand also filed an application for a temporary restraining order and preliminary injunction seeking reinstatement of the License Agreement (the "Application"). On August 22, 2008, the Court heard Rand's Application. On October 9, 2008, Lucasfilm filed a Cross-Complaint against Rand, alleging trademark infringement, violation of unfair competition laws, and deceptive, false, and misleading advertising. Without admitting wrongdoing, the Parties have entered into a settlement agreement which includes entry of this Stipulated Permanent Injunction and Dismissal (the "Stipulated Injunction"), in order to avoid the need for further costly litigation between them. STIPULATED INJUNCTION In consideration of, and in reliance on the foregoing, Lucasfilm and Rand stipulate to the entry of an order as follows: 1. All terms not defined herein shall have the meaning ascribed to them as set forth in License Agreement, a true and correct copy of which is attached hereto as Exhibit A. Until January 14, 2009, Rand shall be permitted to dispose of the following already manufactured units of Licensed Products: (a) SW-2000 Star Wars Skateboard (16,944 units); (b) SW-5045 Star War Disc W/Launch (186,612 units); (c) SW-5031 Star Wars Bubble Set (44,916 units); [PROPOSED] STIPULATED PERMANENT INJUNCTION, DISMISSAL, AND ORDER CV-08 -3897-JSW sf-2459169 1 Case 3:08-cv-03897-JSW Document 44 Filed 10/09/2008 Page 3 of 5 1 2 3 4 5 6 7 8 3. 9 10 (d) SW-977 Helmets w/pad sets (9,800 units); (e) SW-99110 Mints (32,256 units); and (f) SW-4010 Star Wars Toy Skate Combo (15,588 units). (The "Limited Right to Sell-Off.") Rand shall also be permitted to dispose of up to (a) 145,000 units of the SW-6600 Star Wars Children's Quad (the "Quads"), until December 31, 2008 pursuant to firm orders for shipment; and (b) 35,000 units of the SW-5 Star Wars Three-Wheel Scooter until January 14, 2009 pursuant to firm orders for shipment. Notwithstanding the terms of Clause I(2)(a) of the License Agreement, Rand shall pay Lucasfilm a royalty on Quads products sold under the Limited Right to Sell-Off as provided under the terms of the Settlement Agreement and Release entered into by and between the Parties. 11 With respect to all other License Products sold under the Limited Right to Sell-Off, Rand shall 12 pay to Lucasfilm the Royalties owed under the License Agreement. 13 14 15 16 17 18 5. 19 have any right to sell or otherwise distribute any Licensed Products, including bicycles and 20 folding scooters, remaining in Rand's possession, custody or control. 21 22 23 24 25 26 27 28 [PROPOSED] STIPULATED PERMANENT INJUNCTION, DISMISSAL, AND ORDER 4. Rand's Limited Right to Sell-Off is expressly conditioned upon Rand complying with all terms of the Settlement Agreement and Release entered into by and between the Parties, and all terms of the License Agreement, including Rand's obligation to pay royalties under the License Agreement. Except as otherwise provided under the Limited Right to Sell-Off, Rand shall not 6. Pursuant to 15 U.S.C. 1116, and except as otherwise provided under the Limited Right to Sell-Off, Rand, its successors, officers, parents, subsidiaries, affiliates, agents, assigns and employees, and anyone acting in concert with or at the behest or direction of Rand, jointly and severally, are hereby PERMANENTLY ENJOINED AND RESTRAINED from the following: CV-08 -3897-JSW sf-2459169 2 Case 3:08-cv-03897-JSW Document 44 Filed 10/09/2008 Page 4 of 5 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 (a) Distributing, displaying, marketing, promoting, offering for sale, and/or selling any goods or services using Lucasfilm's Licensed Property; (b) Disseminating any products, promotional materials, advertisements, point of sale materials, signage or other materials containing or incorporating Lucasfilm's Licensed Property; and (c) Representing directly or indirectly in any form or manner whatsoever, that Rand's products or services are in fact the same as or related to any services or products of Lucasfilm, or are in any manner associated with, sponsored, or approved by Lucasfilm, or taking any action likely to cause confusion, mistake or deception on the part of purchasers as to the source, origin, sponsorship, approval or affiliation of Rand's products or service or Rand's services and products. 7. This Stipulated Injunction applies to all manufacturing, marketing, distribution, sale, or promotion of any Rand product in the United States, Canada, and all territories in which the trademarks, tradenames, servicemarks, servicenames, and copyrights owned by Lucasfilm are recognized as property of Lucasfilm under such territory's applicable trademark and intellectual property laws. 8. The injunction contained herein shall take effect upon the Court's entry of this Stipulated Injunction. 9. There shall be no bond in connection with this Stipulated Injunction. 20 21 22 23 through their respective counsel, stipulate and request that the Court dismiss, with prejudice, all 24 of the claims asserted by Rand in its complaint, and all claims asserted by Lucasfilm in its cross25 complaint. 26 27 28 [PROPOSED] STIPULATED PERMANENT INJUNCTION, DISMISSAL, AND ORDER DISMISSAL Pursuant to Federal Rule of Civil Procedure 41(a)(2) and 41(c), the Parties, by and CV-08 -3897-JSW sf-2459169 3 Case 3:08-cv-03897-JSW Document 44 Filed 10/09/2008 Page 5 of 5 1 2 IT IS SO STIPULATED, THROUGH COUNSEL OF RECORD. Dated: October 9, 2008 MORRISON & FOERSTER LLP 3 4 By: 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 By: 20 21 PURSUANT TO STIPULATION, IT IS SO ORDERED. 22 23 24 25 26 27 28 CV-08 -3897-JSW sf-2459169 /s/ Judson E. Lobdell Judson E. Lobdell Attorneys for Defendant LUCSASFILM LTD. Dated: October 9, 2008 KELLEY DRYE & WARREN By: /s/ Jonathan Cooperman Jonathan Cooperman Attorneys For Plaintiff RAND INTERNATIONAL, LLC. GENERAL ORDER 45 ATTESTATION I, Geoffrey Graber, am the ECF User whose ID and password are being used to file this [Proposed] Stipulated Permanent Injunction, Dismissal of Claims, and Order. In compliance with General Order 45, X.B., I hereby attest that Judson Lobdell and Jonathan Cooperman have concurred in this filing. Dated: October 9, 2008 MORRISON & FOERSTER LLP /s/ Geoffrey Graber Geoffrey Graber This Court retains jurisdiction of this matter for purposes of enforcing this Order but otherwise all claims asserted by Rand in its complaint, and all claims asserted by Lucasfilm in its crosscomplaint are dismissed with prejudice. October 10, 2008 Dated: __________________________ _____________________________________ Honorable Jeffrey S. White UNITED STATES DISTRICT COURT 4 [PROPOSED] STIPULATED PERMANENT INJUNCTION, DISMISSAL, AND ORDER

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