ROBOCOPP, LLC vs. Orion Pictures Corporation

Filing 19

STIPULATED PERMANENT INJUNCTION AND ORDER OF DISMISSAL (jstlc3S, COURT STAFF) (Filed on 4/18/2017)

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1 2 3 4 5 6 7 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA 10 11 12 ROBOCOPP, LLC, 13 Plaintiff, 14 15 16 v. [PROPOSED] STIPULATED PERMANENT INJUNCTION AND ORDER OF DISMISSAL ORION PICTURES CORPORATION, Defendant. 17 18 19 Case No. 3:16-cv-5476 Dept: Judge: Courtroom 9 Hon. Jon S. Tigar ORION PICTURES CORPORATION, 20 Counterclaimant, 21 v. 22 23 24 ROBOCOPP, LLC, Counterdefendant. 25 26 27 28 [PROPOSED] JUDGMENT FOR PERMANENT INJUNCTION 1 TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD, PLEASE 2 TAKE NOTICE THAT, in accordance with the Stipulation for Entry of Permanent 3 Injunction and Order of Dismissal entered into and filed herewith by Plaintiff/ 4 Counterdefendant ROBOCOPP, LLC and Defendant/Counterclaimant Orion 5 Pictures Corporation, through their respective counsel of record in this action, the 6 Court HEREBY FINDS THAT: 7 8 9 1. On September 26, 2016, Plaintiff filed the Complaint in this action, seeking a declaratory judgment that its commercial use of the term “ROBOCOPP” 10 as a business name, trademark and domain name does not infringe any trademark 11 rights of Defendant. 12 13 2. On November 28, 2016, Defendant filed an answer and counterclaims, 14 seeking damages, injunctive relief, and other legal and equitable relief based on 15 Plaintiff’s use of the mark “ROBOCOPP.” In its counterclaims, Defendant 16 asserted (i) that Orion owns valid and incontestable trademarks (the “ROBOCOP 17 Marks”) related to the Robocop motion pictures, television shows, videogames, 18 and other media and licensed merchandise, including federal trademark registration 19 nos. 4880501, 1609202, 1557690, and 1523650; (ii) that the ROBOCOP Marks are 20 widely known and extraordinarily famous; and (iii) that Plaintiff’s usage of the 21 trade name, mark and domain name “ROBOCOPP” infringed upon and diluted 22 Defendant’s ROBOCOP Marks and violated numerous laws, including but not 23 limited to 15 U.S.C. § 1114, 15 U.S.C. § 1125(a)(1)(A), 15 U.S.C. 24 § 1125(a)(1)(B), 15 U.S.C § 1125(c), Cal. Business & Professions Code § 17200, 25 et seq., Cal. Business & Professions Code § 17500, et seq., Cal. Business & 26 Professions Code § 14247, et seq., and various common law rights. 27 28 -1[PROPOSED] JUDGMENT FOR PERMANENT INJUNCTION 1 3. Without any admission of liability by any Party, Plaintiff and 2 Defendant have entered into a settlement agreement and have stipulated to the 3 entry by the Court of this Permanent Injunction and Order of Dismissal (the 4 “Permanent Injunction Order”) in this action on the terms set forth below. 5 6 7 NOW, THEREFORE, THE COURT HEREBY ORDERS, ADJUDGES, AND DECREES THAT: 8 9 A. Pursuant to Rule 65 of the Federal Rules of Civil Procedure, Plaintiff 10 ROBOCOPP, LLC, its respective parent, subsidiary and affiliated companies, 11 together with their respective officers, directors, members, agents, servants, 12 employees, representatives, successors, assigns, licensees, transferees, and all those 13 persons and entities acting in concert or participation with them, or at their 14 direction, or within their control (collectively, the “Enjoined Entities”), SHALL 15 BE PERMANENTLY ENJOINED AND RESTRAINED as follows: 16 17 1. Within thirty (30) days of April 18, 2017, the Enjoined Entities 18 shall cease and desist from (a) any and all use of the trademark, service 19 mark, trade name, business or entity name, and/or domain name 20 “ROBOCOPP” or any variation thereof that includes the word part “Robo” 21 or “Cop” or the phonetic equivalent thereof; (b) any and all use of any 22 trademark, service mark, logo, trade name, business or entity name, domain 23 name or trade dress that includes or is similar to any of the ROBOCOP 24 Marks; (c) any and all participation or assistance in any such activity, 25 whether occurring within the United States or outside the United States; and 26 (d) directly or indirectly infringing or diluting in any manner any of the 27 ROBOCOP Marks or unfairly competing with Orion, or otherwise injuring 28 Orion’s business or reputation in any matter, or participating in or assisting -2[PROPOSED] JUDGMENT FOR PERMANENT INJUNCTION 1 in any such activity. Notwithstanding the foregoing, for a period of ninety 2 (90) days following April 18, 2017, Plaintiff shall be permitted to publicly 3 display the “ROBOCOPP” mark in a notice of its name change, in a manner 4 agreed upon in writing by the Parties. 5 6 2. The Enjoined Entities shall not register, attempt to register, or 7 maintain any trademark registration or application for (a) the mark 8 “ROBOCOPP” or any variation thereof that includes the word part “Robo” 9 or “Cop” or the phonetic equivalent thereof; or (b) any trademark, service 10 mark, logo, trade name, business or entity name, domain name or trade dress 11 that includes or is similar to any of the ROBOCOP Marks; nor shall the 12 Enjoined Entities participate in or assist in any such activity whether 13 occurring within the United States or outside the United States. 14 15 B. Within ten (10) days of the entry of this Permanent Injunction Order, 16 Plaintiff shall provide written notice of the Permanent Injunction Order (1) to each 17 of its respective officers, directors, members, agents, employees, successors, 18 assigns, and licensees; and (2) to all distributors, retailers, wholesalers, and other 19 parties that it knows or has reason to believe are in possession of any item bearing 20 marks the use of which by the Enjoined Entities is prohibited under paragraph A.1 21 hereinabove, including but not limited to the ROBOCOPP “Sound Grenade” 22 product. Plaintiff shall inform these individuals or entities that, in accordance with 23 this Permanent Injunction Order, the products bearing marks the use of which by 24 the Enjoined Entities is prohibited under paragraph A.1 are not to be advertised, 25 promoted, marketed, displayed, licensed, sold, rented, or otherwise distributed, 26 either within the United States or outside the United States. Plaintiff shall provide 27 a copy of the Permanent Injunction Order as part of such notice, which may be 28 transmitted by email. -3[PROPOSED] JUDGMENT FOR PERMANENT INJUNCTION 1 2 C. Plaintiff’s request for a declaratory judgment, Defendant’s 3 counterclaims against Plaintiff, and all other claims, counterclaims and defenses in 4 this action, are hereby dismissed with prejudice and without costs to either Party, 5 except the Court shall retain continuing jurisdiction for purposes of enforcement of 6 the Permanent Injunction Order and the settlement agreement between the Parties. 7 8 April 18 9 Dated: ___________, 2017 10 11 12 By: Hon. Jon S. Tigar United States District Judge 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -4[PROPOSED] JUDGMENT FOR PERMANENT INJUNCTION

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