Assurance Industries Company, Inc. v. Snag, Inc. et al

Filing 115

JUDGMENT, ***Civil Case Terminated.. Signed by Judge ARMSTRONG on 1/28/13. (lrc, COURT STAFF) (Filed on 1/28/2013)

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JOHN F. DOMINGUE, CA STATE BAR NO. 193570
THOMAS P. MURPHY, CA STATE BAR NO. 121251
BERLINER COHEN
TEN ALMADEN BOULEVARD
ELEVENTH FLOOR
SAN JOSE, CALIFORNIA 95113-2233
TELEPHONE: [phone]
FACSIMILE: [phone]
[e-mail]
ATTORNEYS FOR DEFENDANTS AND
COUNTERCLAIMANTS PLAYER DEVELOPMENT
PRODUCTS, LLC, AND SNAG, INC. AND DEFENDANT
TERRENCE ANTON

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UNITED STATES DISTRICT COURT
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NORTHERN DISTRICT OF CALIFORNIA
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OAKLAND DIVISION
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ASSURANCE INDUSTRIES COMPANY,
INC., a California corporation,

CASE NO. CV 10 1718 SBA
JUDGMENT

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Plaintiff,
v.
SNAG, INC., a Florida corporation;
TERRENCE P. ANTON, an individual and
resident of Oklahoma; WALTER E.
ARMSTRONG III, an individual and resident
of Florida; PLAYER DEVELOPMENT
PRODUCTS, LLC, a Florida limited liability
company: and DOES 1 through 100,

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Defendants.

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SNAG, INC., a Florida corporation; PLAYER
DEVELOPMENT PRODUCTS, LLC, a
Florida limited liability company,

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Counter-Claimants,
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v.
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ASSURANCE INDUSTRIES COMPANY,
INC., a California corporation, AND SHENG
HSIUNG CHEN a/k/a STEVE CHEN,

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Counter-Defendants.
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CASE NO. CV 10 1718 SBA
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-1STIPULATED JUDGMENT

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Plaintiff and Cross-Defendant ASSURANCE INDUSTRIES COMPANY, INC. and

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Cross-Defendant SHENG HSIUNG CHEN a/k/a STEVE CHEN (collectively “AIC”), on the one

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hand, and Defendants and Cross-Complainants Player Development Products, LLC, SNAG, Inc.

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and TERRENCE P. ANTON (collectively “SNAG”), on the other, stipulate to judgment as set

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forth below.

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Judgment is hereby entered in favor of SNAG and against AIC as follows:

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FINDINGS OF FACT
“SNAG” is an acronym for “starting new at golf.”

SNAG is in the business of

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researching, developing, and marketing products that, among other things, make it easy and fun

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for people of all ages to learn and enjoy the game of golf—primarily through the golf-like game

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patented by SNAG, Inc. In addition to its patents, SNAG, Inc. is the owner of registered

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trademarks covering products used in the SNAG, golf-like game and golf teaching program.

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SNAG has licensed its patent and trademark rights on an exclusive basis to Player Development

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Products, LLC, which in turn arranges for the manufacture of SNAG products and sells such

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products.

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Player Development Products, LLC and AIC had an ongoing commercial relationship

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under which SNAG used AIC to manufacture SNAG products. The relationship between SNAG

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and AIC terminated in March 2010 (the “Termination”). Since that time, SNAG has exclusively

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used Gopher Golf Co., LTD to manufacture SNAG products, and Gopher Golf Co., LTD is the

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only company authorized to manufacture or otherwise produce SNAG products.

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In the course of its work to manufacture SNAG products before Termination, AIC used

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prototypes and production molds containing the SNAG mark and its intellectual property. AIC

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states that it used third-parties, including contract employees, factories and manufacturing

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companies (collectively “Contractors”) to make SNAG products, and that AIC gave (or caused to

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be given) possession of certain SNAG prototypes and/or production molds to Contractors. One

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of these Contractors goes by the English name “Mark Liu,” whose last-known phone number is

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86-133-6888-6866, address unknown at this time. Without consent, Mark Liu has unlawfully

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marketed SNAG products for sale.
CASE NO. CV 10 1718 SBA

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The following chart shows the manufacturer, chain of custody and current possessor of

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selected SNAG molds initially created or controlled by AIC:

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Mold Type and Maker
(w/date of manufacture)

Transferred To (w/date
and reason for transfer)

Transferred To (w/date
and reason for transfer)

Currently Held By (include
all known contact info)

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Launcher, RH, AIC/Dan
Goods/On Lee, Sept. 2000

Chic Sports / expert in
sporting goods, May 2004

Mr. Liu Zheng Qiang, 86-1336888-6866

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Launcher, LH, AIC/Dan
Goods/On Lee, Sept. 2000

Chic Sports / expert in
sporting goods, May 2004

Roller, AIC/Dan Goods/On
Lee, Sept. 2000

Chic Sports / expert in
sporting goods, May 2004

Flagsticky, AIC/Dan
Goods/On Lee, Sept. 2000

Chic Sports / expert in
sporting goods, May 2004

Flagsticky cap/flagholder,
AIC/Dan Goods/On Lee,
Sept. 2000
Launch Pad/ AIC/Dan
Goods/On Lee, Sept. 2000

Chic Sports / expert in
sporting goods, May 2004
Chic Sports / expert in
sporting goods, May 2004

Tak Shun Ind. / better factory
in plastic molding prod. Jan
2005
Tak Shun Ind. / better factory
in plastic molding prod. Jan
2005
Tak Shun Ind. / better factory
in plastic molding prod. Jan
2005
Tak Shun Ind. / better factory
in plastic molding prod. Jan
2005
Tak Shun Ind. / better factory
in plastic molding prod. Jan
2005
Tak Shun Ind. / better factory
in plastic molding prod. Jan
2005

Blue Tee, AIC/Dan Goods/On
Lee, Sept. 2000

Chic Sports / expert in
sporting goods, May 2004

Roller Brush, AIC/Dan
Goods/On Lee, Oct. 2000

Chic Sports / expert in
sporting goods, May 2004

Grips, AIC/Dan
Goods/Chaucer, Sept. 2000
Ball, AIC/Dan Goods/Chic
Sports, Oct. 2000

Shanghai Xiangfu Electrical
Elements Co. Aug. 2009
Yangzhou Flight Sporting
Goods Co. 2005. Better
supplier.

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Tak Shun Ind. / better factory
in plastic molding prod. Jan
2005
Tak Shun Ind. / better factory
in plastic molding prod. Jan
2005

Mr. Liu Zheng Qiang, 86-1336888-6866
Mr. Liu Zheng Qiang, 86-1336888-6866
Mr. Liu Zheng Qiang, 86-1336888-6866
Mr. Liu Zheng Qiang, 86-1336888-6866
Mr. Liu Zheng Qiang, 86-1336888-6866
Mr. Liu Zheng Qiang, 86-1336888-6866
Mr. Liu Zheng Qiang, 86-1336888-6866
Shanghai Xiangfu Electrical
Elements Co. 86-21-5913-7565
Yangzhou Flight Sporting Goods
Co. 86-514-8827-9160

SNAG-O-Matic, AIC/Dan
Goods/Yangzhou Flight
Sporting Goods Co. May,
2008
Super Launcher head handmade model, RH, AIC/Dan
Goods/Liu Zheng Qiang, Jan.
2010, left behind in factory
office.

Yangzhou Flight Sporting Goods
Co. 86-514-8827-9160
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Left in office at 2 Fl., Bldg. 2E,
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Nanshan 2 Ind. Dist, Yientien,
Fenggang, Dongguang. I suspect
it is in Mr. Liu Zheng Qiang’s
hand.

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ORDERS

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1.

AIC’s Complaint. AIC shall take nothing by the Complaint and its action shall be

dismissed with prejudice.
2.

SNAG’s Countersuit. On SNAG’s Counterclaims, the Court orders, adjudges and

decrees the following:
a.

All SNAG products, prototypes and molds embody and contain SNAG,

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Inc.’s intellectual property, including without limitation trademark and

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trade dress rights (all of the aforementioned rights, products, prototypes

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and molds are collectively referred to as the “SNAG Intellectual
CASE NO. CV 10 1718 SBA

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Property”).

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Intellectual Property. AIC is enjoined from possessing, marketing, or

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selling, or contributing to any such activities by a Contractor with respect

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to any SNAG product, prototype, mold, or anything else that bears,

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contains or embodies any SNAG Intellectual Property.

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b.

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AIC has no right, title or interest in or to any SNAG

As of the Termination in March 2010, SNAG did not owe any money or
other obligation to AIC.

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c.

Any and all SNAG molds or prototypes (or any other material containing

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SNAG Intellectual Property) in the possession of any Contractor are the

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property of SNAG and shall be destroyed under the supervision of SNAG

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(or its designee), including without limitation any molds or prototypes

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held by Mark Liu.

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d.

Except for SNAG products either made by Gopher Golf or purchased by

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and delivered to SNAG or its designees by AIC before the Termination,

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any and all existing SNAG products are deemed unauthorized and

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counterfeit, including in particular any products being held by any of

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AIC’s

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Unauthorized Product includes without limitation the container of

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$55,527.00 in SNAG product being held by AIC in Fremont, the

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$53,619.35 worth of SNAG product that AIC had on hand as of the

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Termination (which included the attached list of products), all SNAG

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products displayed at the 2010 and 2011 Bejing Golf Shows, and all

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products held or marketed by a Mark Liu or Mr. Liu.

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e.

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Contractors

(collectively

the

“Unauthorized

Product”).

All Unauthorized Product shall be destroyed under the supervision of
SNAG (or its designee).

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Compliance With the Above Orders. To the extent the above orders can be

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carried out by AIC, performance is due within 60 days. Otherwise, AIC shall use diligent and

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best efforts to carry out the above, including without limitation contacting Contractors, arranging
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and/or participating in telephone or face-to-face meetings (with face-to-face meetings being

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limited to one such meeting if required by any legal proceeding initiated to recover SNAG molds

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and/or SNAG products in the possession of Mark Liu), writing letters or other correspondence,

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signing or producing documents, and conducting other like activities that may be necessary or

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helpful to fulfill the requirements of this judgment. Furthermore, AIC shall cooperate (by doing

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the aforementioned activities) with SNAG, its Chinese distributor, Gopher Golf, and any Chinese

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government officials to:

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a.

Fulfill the requirements of this judgment;

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b.

Stop the production, marketing, sale or perpetuation of Unauthorized

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Product;

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c.

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Hold any persons accountable for the unlawful production, marketing, sale
or perpetuation of Unauthorized Product;

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d.

Revive prior orders in China for SNAG product that were lost as a result

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of the unlawful production, marketing, sale or perpetuation of

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Unauthorized Product, including without limitation the orders that

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SNAG’s Chinese distributor lost from the Chinese government when

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Mark Liu contacted them and undercut the distributor’s pricing with

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counterfeit product.

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4.

Reasonable costs incurred by AIC in the physical destruction of SNAG molds,

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products, and/or prototypes of SNAG products, and extraordinary costs in cooperating with

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SNAG to recover SNAG molds and prototypes in the possession of Mark Liu, should be

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reimbursed by Player Development Products, LLC.

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IT IS SO ORDERED.

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DATED: JANUARY 28, 2013

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HON. SAUNDRA B. ARMSTRONG
UNITED STATES DISTRICT JUDGE

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CASE NO. CV 10 1718 SBA
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AGREED AND ACCEPTED BY:

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Dated: JANUARY ____, 2013

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By: /s/
SHENG HSIUNG CHEN a/k/a STEVE CHEN

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Dated: JANUARY ____, 2013

ASSURANCE INDUSTRIES, INC.

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By: /s/
By: SHENG HSIUNG CHEN aka STEVE CHEN
Its: PRESIDENT

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Dated: JANUARY ____, 2013

PLAYER DEVELOPMENT PRODUCTS, LLC

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By: /s/
By: TERRENCE ANTON
Its: Member

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Dated: JANUARY ____, 2013

SNAG, INC.

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By: /s/
By: TERRENCE ANTON
Its: President

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APPROVED AS TO FORM BY:

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DATED: JANUARY ____, 2013

BERLINER COHEN

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BY: /S/
THOMAS P. MURPHY
ATTORNEYS FOR PLAYER DEVELOPMENT
PRODUCTS, LLC, SNAG, INC., AND TERRENCE
ANTON

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DATED: JANUARY ____, 2013

LAW OFFICES OF ADAM WANG

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BY: /S/
ADAM WANG
ATTORNEYS FOR ASSURANCE INDUSTRIES
COMPANY, INC. AND STEVE CHEN

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CASE NO. CV 10 1718 SBA
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