Innovation Ventures LLC et al v. Pittsburg Wholesale Grocers Inc et al

Filing 279

ORDER GRANTING CONSENT JUDGMENT AND PERMANENT INJUNCTION by Hon. William Alsup granting 274 Stipulation.(whalc1, COURT STAFF) (Filed on 3/27/2013)

Download PDF
2 3 4 5 6 7 8 9 10 11 12 Thomas P. Mazzucco (tmazzucco@mpbf.com ) - CA Bar No. 139758 Aaron K. McClellan (amcclellan@mpbf.com ) —CA Bar No. 197185 Bryan L. P. Saalfeld (bsaalfeld@mpbf.com ) - CA Bar No. 243331 Nicholas C. Larson (nlarson@mpbf.com ) - CA Bar No. 275870 MURPHY, PEARSON, BRADLEY & FEENEY, P.C. 88 Kearny Street, 10th Floor San Francisco, CA 94108-5530 Tel: (415) 788-1900 Fax: (415) 393-8087 Geoffrey Potter (gpotter@pbwt.com ) (pro hac vice) Michelle W. Cohen (mcohen@pbwt.com ) (pro hac vice) Christos G. Yatrakis (cyatrakis@pbwt.com ) (pro hac vice) Aron Fischer (afischer@pbwt.com ) (pro hac vice) PATTERSON BELKNAP WEBB & TYLER LLP 1133 Avenue of the Americas New York, NY 10036 (212) 336-2000 Telephone: (212) 336-2222 Fax: Attorneys for Plaintiffs INNOVATION VENTURES, LLC, LIVING ESSENTIALS, LLC, and INTERNATIONAL IP HOLDINGS, LLC 13 UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA 14 15 16 INNOVATION VENTURES, LLC, LIVING ESSENTIALS, LLC, and INTERNATIONAL IP HOLDINGS, LLC, Plaintiffs, 17 18 V. 19 PITTSBURG WHOLESALE GROCERS, INC., d/b/a PITCO FOODS, et al., Case No. C-12-5523-WHA 20 21 Defendants, [PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION AND RELATED CROSS-CLAIMS. 22 23 24 On consent of Plaintiffs Innovation Ventures, LLC, Living Essentials, LLC, and International IP 25 Holdings, LLC (together, "Living Essentials") and Defendants Santa Monica Distributing, Inc., 26 Manouchehr Heikali, and Aziz Heikali (together, the "Santa Monica Defendants"), it is hereby 27 ORDERED, ADJUDGED and DECREED: 28 [PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION 5 93 984 Iv. I CASE NO. C-12-5523-WHA 1 1. For purposes of this injunction, the "5-Hour ENERGY® Marks" are: 2 . "5 HOUR ENERGY" (Registration No. 3,003,077); 3 . "5-HOUR ENERGY" (Registration No. 4,004,225); 4 5-hour ENERGY 5 0 (Registration No. 4,104,670); 6 7 8 which includes the wording "5-hour ENERGY" in black outlined in 9 yellow, below which are the words "EXTRA STRENGTH" in yellow, along 10 with a person in black silhouette, outlined in yellow, shown in an athletic pose 11 adjacent to an uneven landscape, with the sky depicted in transitioning colors 12 from black to red as the sky meets the landscape (Registration No. 4,116,951); 13 14 15 ., commonly referred to as "Running Man," (Registration No. 3,698,044); 16 and 17 M1 - 18 I •. E/1E817 V 19 •19010which includes the wording "5-hour ENERGY" in black outlined in 20 yellow, along with a person in black silhouette, outlined in yellow, shown in 21 an athletic pose adjacent to an uneven landscape, with the sky depicted in 22 transitioning colors from red to yellow as the sky meets the landscape 23 (Registration No. 4,120,360). 24 25 26 2. The Santa Monica Defendants, their agents, servants, employees, affiliates, or any other person in active concert and participation with them, is permanently enjoined from: 27 a. 28 using any of the 5-Hour ENERGY® Marks, as defined in Paragraph 45 of the Second Amended Complaint (or any marks confusingly similar thereto) [PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION 593984 Iv,1 -2- CASE NO. C-12-5523-WHA on any counterfeit product in connection with the manufacture, sale, offer 1 2 for sale, distribution, advertisement, or any other use of dietary 3 supplements; 4 b. S using any logo, trade name, or trademark confusingly similar to any of the 5-Hour ENERGY® Marks which may be calculated to falsely represent or 6 which has the effect of falsely representing that the services or products of 7 the Santa Monica Defendants or of others are sponsored by, authorized by, 8 or in any way associated with Living Essentials; 9 10 C. infringing any of the 5-Hour ENERGY® Marks; 11 d. falsely representing themselves as being connected with Living Essentials 12 or sponsored by or associated with Living Essentials, or engaging in any 13 act which is likely to cause the trade, retailers, or members of the 14 purchasing public to believe that they or the other defendants are associated 15 with Living Essentials, provided, however, that the purchase and sale of 5- 16 17 hour ENERGY® products shall not in and of itself fall within this sub- 18 paragraph; 19 e. 20 using any reproduction, counterfeit, copy, or colorable imitation of any of the 5-hour ENERGY® Marks in connection with the publicity, promotion, 21 sale, or advertising of dietary supplements; 22 f. affixing, applying, annexing, or using in connection with the sale of any 23 goods, a false description or representation, including words or other 24 25 symbols tending to falsely describe or represent those goods as being 5- 26 hour ENERGY® and from offering such goods in commerce; 27 28 [PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION 5 93 984 lv. I - - CASE NO. C-12-5523-WHA g1 1 buying, selling, transferring (other than to Living Essentials or law 2 enforcement officials), altering, or destroying any counterfeit products with 3 the 5-hour ENERGY® Marks; and 4 h. 5 assisting, aiding, or abetting any other person or entity in engaging in or performing any of the activities referred to in subparagraphs (a) through (g) 6 above. 7 3. Nothing contained in this Consent Judgment and Permanent Injunction is or shall 8 9 10 be construed as an admission, express or implied, of any improper or illegal conduct, or of any culpability or liability by the Santa Monica Defendants. 4. 11 Any claims that the Santa Monica Defendants may have against any other 12 individual or entity arising out of their purchase, distribution, advertising, offering for sale, and 13 sale in commerce of the products containing the 5-Hour ENERGY® Marks are hereby assigned 14 to Living Essentials. 15 5. 16 In addition to other remedies, including damages, for contempt of this Permanent 17 Injunction, in the event of breach or violation of the terms of this Permanent Injunction by the 18 Santa Monica Defendants, their agents, servants, employees, affiliates, subsidiaries or any other 19 person in active concert and participation with them, Living Essentials is entitled to a preliminary 20 and permanent injunction against the breaching conduct solely upon a showing of a likelihood of 21 success of establishing that such a breach occurred. Living Essentials and the Santa Monica 22 Defendants each agree that jurisdiction and venue for such an action exist in this District Court 23 24 25 26 and the Santa Monica Defendants waive any and all defenses based on personal jurisdiction and venue. 6. This Consent Judgment is entered pursuant to Rule 58 of the Federal Rules of 27 Civil Procedure, and this action is hereby dismissed with prejudice only against the Santa Monica 28 Defendants only, without costs or attorneys' fees, save that this District Court shall retain [PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION 5 93 984 Iv. I - 4- CASE NO. C-12-5523-WHA 06:31:01 Le Clair 1 2136240562 03-06-2013 8115 jurisdiction over this action, including, over implementation of, or disputes arising out of, this 2 Consent Judgment or the settlement of this action with regard to the Santa Monica Defendants, A 3 prevailing party, in addition to any award of damages or injunctive relief, shall be entitled to an 4 award of actual attorneys' fees in any such dispute. 5 6 Dated: March )' Z 2013 7 INNOVATION VENTURES, LLC, LIVING ESSENTIALS, LLC, and INTERNATIONAL lP H LDINGS, LLC SANTA MONICA DISTRIBUTING, INC., MANOUCHEHR HEIKALI and AZIZ HElICAL! 7"t y otterE 7 Michelle W. Cohen, Esq. Christos Yatrakis, Esq. Patterson Belknap Webb & Tyler LLP 1133 Avenue of the Americas New York, NY 10036 (212) 336-2000 Attorneys for Innovation Ventures, LLC, Living Essentials, LLC, and International IP Holdings, LLC Thomas M. O'Leary, Esq. James C. Potepan, Esq. LeClair Ryan, LLP 725 S. Figueora St., Ste. 350 Los Angeles, CA 90017-5478 (213) 488-0503 Attorney for Santa Monica Distributing, Inc., Manouchehr Heikali and AzIz Heikali 9 10 16 17 18 19 20 The Court shall retain jurisdiction over this consent judgment and permanent injunction for three years. IT IS SO ORDERED. UNIT ED 22 23 Date: March 26, 2013. RT U O 21 ISTRIC ES D TC AT T ERED O ORD D IT IS S FIE DI AS MO R NIA 15 up NO HONORABLE dge William Als ALSUP WILLIAM H. Ju UNITED STATES DISTRICT JUDGE 24 RT ER H 25 26 FO 14 LI 13 A 12 By: S 11 N F D IS T IC T O R C 27 28 [PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION 5939841v.1 -5- CASE NO, C- I 2-5523-WHA

Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.


Why Is My Information Online?