Google Inc. v. Local Lighthouse Corp.

Filing 41

ORDER by Judge Haywood S. Gilliam, Jr. Granting 40 ENTRY OF STIPULATED JUDGMENT AND PERMANENT INJUNCTION. (ndrS, COURT STAFF) (Filed on 7/15/2016) Modified on 7/15/2016 (ndrS, COURT STAFF).

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COOLEY LLP
MICHAEL G. RHODES (116127)
([e-mail])
101 California Street, 5th Floor
San Francisco, CA 94111
Telephone: [phone]
Facsimile: 415 693 2222
COOLEY LLP
BRENDAN J. HUGHES (pro hac vice)
([e-mail])
REBECCA GIVNER-FORBES (pro hac vice)
([e-mail])
1299 Pennsylvania Avenue, NW, Ste. 700
Washington, DC 20004
Telephone: [phone]
Facsimile: 202 842 7899
Attorneys for Plaintiff
Google Inc.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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GOOGLE INC., a Delaware corporation,
Plaintiff,

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Case No. 4:15-cv-04219-HSG
[PROPOSED] STIPULATED JUDGMENT
AND PERMANENT INJUNCTION

v.
LOCAL LIGHTHOUSE CORP., a California
corporation,

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Defendant.
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This Court, pursuant to the Joint Motion for Entry of Stipulated Judgment and Permanent

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Injunction between Plaintiff Google Inc. (“Google”) and Defendant Local Lighthouse Corp.

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(“Defendant”), hereby ORDERS, ADJUDGES, and DECREES that:

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1. This Court has jurisdiction over the subject matter of this action under 15 U.S.C. §§ 1121
and 28 and 15 U.S.C. §§ 1331 and 1338.

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2. This Court has personal jurisdiction over the parties hereto.

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3. Venue is proper in this district under 28 U.S.C. § 1391(b) and (c).

COOLEY LLP
ATTORNEYS AT LAW
SAN FRANCISCO

STIPULATED JUDGMENT AND
PERMANENT INJUNCTION
4:15-CV-04219-HSG

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4. As

used

herein,

the

“GOOGLE

Marks”

refer

to

the

marks

listed

at

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https://www.google.com/permissions/trademark/trademark-list.html. Defendant does not

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dispute that (a) the GOOGLE Marks are valid and protectable, and (b) Google owns all

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right, title, and interest in and to the GOOGLE Marks.

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5. Defendant has made unauthorized and infringing use of the GOOGLE Marks.

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6. Members of Defendant’s sales team have made false and misleading claims during

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Defendant’s telemarketing calls that were likely to confuse the purchasing public

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regarding the true source or nature of Defendant’s services and the relationship between

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Google and Defendant.

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7. While Defendant may use Google’s AdWords services, Defendant is not currently

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affiliated with Google; Google has not contracted with Defendant to provide Search

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Engine Optimization (“SEO”) or Search Engine Marketing services on its behalf; and

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Google does not approve, sponsor, or endorse Defendant or Defendant’s goods and

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services.

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8. Google has been, and will continue to be, damaged and irreparably harmed by the actions
of Defendant described in Paragraphs 5 and 6.

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9. Defendant, its officers, agents, servants, employees, attorneys and all persons in active

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concert or participation with them who receive actual notice of this injunction, are hereby

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permanently restrained and enjoined, pursuant to 15 U.S.C. § 1116, from engaging in,

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directly or indirectly, or authorizing or assisting any third party to engage in, any of the

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following activities:

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a. Using the GOOGLE Marks or any other mark owned by Google, or any

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confusingly similar variation thereof, in connection with marketing, promoting,

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advertising, selling, or distributing any goods or services in any manner that is

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likely to cause confusion, or to cause mistake, or to deceive as to an affiliation or

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association with, or endorsement or sponsorship by, Google;

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COOLEY LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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STIPULATED JUDGMENT AND
PERMANENT INJUNCTION
4:15-CV-04219-HSG

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b. In connection with marketing, promoting, advertising, selling, or distributing any

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goods or services, making any implied or express statement that is likely to cause

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consumers to believe:

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i. That Defendant’s goods or services originate from Google or are associated
with, or endorsed or sponsored by, Google;

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ii. That Defendant, or anyone acting on its behalf, is connected with Google

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through sponsorship, endorsement, affiliation, or association, including,

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without limitation, that Defendant or anyone acting on its behalf is (1)

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“with Google,” “from Google,” a Google representative, or any similar

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representation, (2) a “Google partner” or “certified by Google” (unless

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Defendant has active Google Partner status or certification at the time of

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the representation), (3) under contract with Google or a subcontractor of

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Google, or (4) calling on behalf of Google regarding a listing on any

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Google service or any account with Google;

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iii. That Google requires a payment or an action in connection with any good

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or service or feature thereof when Google requires no such payment or

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action, including, without limitation that (1) free services are “pay for

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insertion,” (2) a person or business may lose a listing, account, or position

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in GOOGLE search, GOOGLE Maps, or any other Google platform if they

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do not participate in a telephone call with Defendant or sign up for

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Defendant’s services, (3) a listing, account, or position in GOOGLE

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search, GOOGLE Maps, or any other Google platform must be “claimed,”

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or (4) Google receives any portion of any payment solicited or collected by

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Defendant; or

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iv. That Defendant can guarantee top placement (e.g., first page placement) in
GOOGLE search results;

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c. Destroying, disposing of, or distributing beyond its control any record or recording

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of a customer service complaint describing a possible violation of any of the

COOLEY LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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STIPULATED JUDGMENT AND
PERMANENT INJUNCTION
4:15-CV-04219-HSG

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foregoing terms for a period of no less than two (2) years after the record or

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recording is created; and

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d. Effecting assignments or transfers, forming new entities or associations, or

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utilizing any other device with the intention of circumventing or otherwise

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avoiding any of the obligations or prohibitions set forth herein.

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10. In any marketing solicitation (whether via telephone, online chat, email, mail, or any other

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format) for or on behalf of Defendant, Defendant, its officers, employees, contractors, and

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all persons in active concert or participation with them who receive actual notice of this

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injunction, shall:

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a. Immediately following any reference to Google or Google’s products or services,

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make a statement (the “Disclaimer Statement”) identifying Defendant as the

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company on whose behalf the communication is being made and expressly

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disclaiming any affiliation or association with, or endorsement or sponsorship by,

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Google; and

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b. Respond to any question regarding Google’s relationship to Defendant or

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Defendant’s goods or services, or the nature or characteristics of any Google

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product or service, by clearly stating or restating the Disclaimer Statement and

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answering the question accurately and truthfully.

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c. Notwithstanding Paragraph 10(a), supra, subsequent Disclaimer Statements are

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not required during a verbal marketing solicitation (e.g., a telemarketing call)

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where (1) the solicitation is not the first verbal communication with the recipient

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and Defendant complied with Paragraph 10(a) during the first verbal

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communication, or (2) the recipient is an existing customer of Defendant as of the

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date of entry of this Stipulated Judgment and Permanent Injunction.

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11. Defendant shall provide the exact wording of the Disclaimer Statement and any proposed

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modifications thereto for Google’s advance written approval and shall provide Google

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with fifteen (15) business days to approve or propose or request alternative wording for

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the Disclaimer Statement.

COOLEY LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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STIPULATED JUDGMENT AND
PERMANENT INJUNCTION
4:15-CV-04219-HSG

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12. Defendant shall provide a copy of this Stipulated Judgment and Permanent Injunction to

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each of its officers, agents, servants, representatives, contractors who are conducting

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marketing activities on behalf of Defendant, employees, attorneys, parent and subsidiary

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corporations, affiliates, assigns, and successors in interest as soon as practicable.

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13. Defendant shall file with the Clerk of this Court and serve Google, within thirty (30) days

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after the entry of this Stipulated Judgment and Permanent Injunction, a report in writing,

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under oath, setting forth in detail the manner and form in which Defendant has complied

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with Paragraphs 9 through 12 above and implemented adequate and effective means to

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either discontinue doing business and/or continue doing business in compliance with

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Paragraphs 9 through 12 above.

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14. Defendant shall notify Google of any trade names or “doing business as” names adopted

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by Defendant or any third parties conducting marketing calls, solicitations, or other

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outreach on its behalf. Defendant shall provide such notification promptly, and in no case

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longer than thirty (30) days, after the adoption of any such names by Defendant or third

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parties operating on its behalf.

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15. Nothing set forth herein shall impair Google’s right to seek all legal and equitable

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remedies that the Court deems appropriate in the event of a violation or failure by

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Defendant to comply with any of the provisions hereof.

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16. This Stipulated Judgment and Permanent Injunction shall be deemed to have served upon
Defendant at the time of its execution by the Court.

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17. The Court finds there is no just reason to delay in entering this Stipulated Judgment and

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Permanent Injunction and, pursuant to Federal Rule of Civil Procedure 54(a), the Court

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directs immediate entry of this Stipulated Judgment and Permanent Injunction against

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Defendant.

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18. No appeals shall be taken from this Stipulated Judgment and Permanent Injunction;

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however, the parties preserve their respective rights to appeal any further action arising

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out of this Stipulated Judgment and Permanent Injunction.

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COOLEY LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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STIPULATED JUDGMENT AND
PERMANENT INJUNCTION
4:15-CV-04219-HSG

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19. This Court will retain continuing jurisdiction over this matter following the dismissal of

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Google’s claims in order to enforce the terms of this Stipulated Judgment and Permanent

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Injunction and the Settlement Agreement between the parties.

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20. Except as set forth in Paragraph 15, each party shall bear its own attorneys’ fees and costs
incurred in this matter.

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IT IS SO ORDERED, ADJUDICATED, and DECREED this ___ day of _______, 2016.
July
15th

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________________________________
HON. HAYWOOD S. GILLIAM, JR.
United States District Judge
Northern District of California

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COOLEY LLP
ATTORNEYS AT LAW
SAN FRANCISCO

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STIPULATED JUDGMENT AND
PERMANENT INJUNCTION
4:15-CV-04219-HSG