Innovation Ventures LLC et al v. Pittsburg Wholesale Grocers Inc et al
Filing
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ORDER GRANTING CONSENT JUDGMENT AND PERMANENT INJUNCTION by Hon. William Alsup granting 274 Stipulation.(whalc1, COURT STAFF) (Filed on 3/27/2013)
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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
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UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
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INNOVATION VENTURES, LLC, LIVING ESSENTIALS,
LLC, and INTERNATIONAL IP HOLDINGS, LLC,
Plaintiffs,
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V.
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PITTSBURG WHOLESALE GROCERS, INC., d/b/a
PITCO FOODS, et al.,
Case No. C-12-5523-WHA
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Defendants,
[PROPOSED] CONSENT
JUDGMENT AND
PERMANENT
INJUNCTION
AND RELATED CROSS-CLAIMS.
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On consent of Plaintiffs Innovation Ventures, LLC, Living Essentials, LLC, and International IP
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Holdings, LLC (together, "Living Essentials") and Defendants Santa Monica Distributing, Inc.,
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Manouchehr Heikali, and Aziz Heikali (together, the "Santa Monica Defendants"), it is hereby
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ORDERED, ADJUDGED and DECREED:
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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION
5 93 984 Iv. I
CASE NO. C-12-5523-WHA
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1.
For purposes of this injunction, the "5-Hour ENERGY® Marks" are:
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. "5 HOUR ENERGY" (Registration No. 3,003,077);
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. "5-HOUR ENERGY" (Registration No. 4,004,225);
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5-hour
ENERGY
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(Registration No. 4,104,670);
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which includes the wording "5-hour ENERGY" in black outlined in
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yellow, below which are the words "EXTRA STRENGTH" in yellow, along
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with a person in black silhouette, outlined in yellow, shown in an athletic pose
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adjacent to an uneven landscape, with the sky depicted in transitioning colors
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from black to red as the sky meets the landscape (Registration No. 4,116,951);
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., commonly referred to as "Running Man," (Registration No. 3,698,044);
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and
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M1
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I
•. E/1E817 V
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•19010which includes the wording "5-hour ENERGY" in black outlined in
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yellow, along with a person in black silhouette, outlined in yellow, shown in
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an athletic pose adjacent to an uneven landscape, with the sky depicted in
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transitioning colors from red to yellow as the sky meets the landscape
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(Registration No. 4,120,360).
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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:
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a.
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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
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CASE NO. C-12-5523-WHA
on any counterfeit product in connection with the manufacture, sale, offer
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for sale, distribution, advertisement, or any other use of dietary
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supplements;
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b.
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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
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which has the effect of falsely representing that the services or products of
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the Santa Monica Defendants or of others are sponsored by, authorized by,
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or in any way associated with Living Essentials;
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C.
infringing any of the 5-Hour ENERGY® Marks;
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d.
falsely representing themselves as being connected with Living Essentials
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or sponsored by or associated with Living Essentials, or engaging in any
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act which is likely to cause the trade, retailers, or members of the
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purchasing public to believe that they or the other defendants are associated
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with Living Essentials, provided, however, that the purchase and sale of 5-
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hour ENERGY® products shall not in and of itself fall within this sub-
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paragraph;
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e.
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using any reproduction, counterfeit, copy, or colorable imitation of any of
the 5-hour ENERGY® Marks in connection with the publicity, promotion,
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sale, or advertising of dietary supplements;
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f.
affixing, applying, annexing, or using in connection with the sale of any
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goods, a false description or representation, including words or other
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symbols tending to falsely describe or represent those goods as being 5-
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hour ENERGY® and from offering such goods in commerce;
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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION
5 93 984 lv. I
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CASE NO. C-12-5523-WHA
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buying, selling, transferring (other than to Living Essentials or law
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enforcement officials), altering, or destroying any counterfeit products with
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the 5-hour ENERGY® Marks; and
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h.
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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)
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above.
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3.
Nothing contained in this Consent Judgment and Permanent Injunction is or shall
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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.
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Any claims that the Santa Monica Defendants may have against any other
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individual or entity arising out of their purchase, distribution, advertising, offering for sale, and
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sale in commerce of the products containing the 5-Hour ENERGY® Marks are hereby assigned
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to Living Essentials.
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5.
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In addition to other remedies, including damages, for contempt of this Permanent
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Injunction, in the event of breach or violation of the terms of this Permanent Injunction by the
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Santa Monica Defendants, their agents, servants, employees, affiliates, subsidiaries or any other
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person in active concert and participation with them, Living Essentials is entitled to a preliminary
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and permanent injunction against the breaching conduct solely upon a showing of a likelihood of
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success of establishing that such a breach occurred. Living Essentials and the Santa Monica
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Defendants each agree that jurisdiction and venue for such an action exist in this District Court
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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
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Civil Procedure, and this action is hereby dismissed with prejudice only against the Santa Monica
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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
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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
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Consent Judgment or the settlement of this action with regard to the Santa Monica Defendants, A
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prevailing party, in addition to any award of damages or injunctive relief, shall be entitled to an
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award of actual attorneys' fees in any such dispute.
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Dated: March )' Z 2013
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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
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The Court shall retain jurisdiction over this consent judgment and
permanent injunction for three years.
IT IS SO ORDERED.
UNIT
ED
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Date: March 26, 2013.
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IT IS S
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NO
HONORABLE dge William Als ALSUP
WILLIAM H.
Ju
UNITED STATES DISTRICT JUDGE
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By:
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D IS T IC T O
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[PROPOSED] CONSENT JUDGMENT AND
PERMANENT INJUNCTION
5939841v.1
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CASE NO, C- I 2-5523-WHA
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