Dancesport Videos, LLC et al v. Ediza Online, Inc. et al

Filing 41

ORDER and PRELIMINARY INJUNCTION. Signed by Judge Larry Alan Burns on 11/18/09. (pdc) (jrl).

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On August 28, 2009, the Court issued an order granting Plaintiffs' ex parte application UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA DANCESPORT VIDEOS, LLC, an Arizona ) Case No.: 09cv1873 LAB(RBB) ) VIDEO CREATIONS, INC., a California ) corporation, ) ORDER AND PRELIMINARY ) INJUNCTION Plaintiffs, ) ) v. ) ) EDIZA ONLINE, INC., a California ) corporation; AS SEEN ON TV ) INFOMERCIALS, INC., a Florida ) Corporation; FRANK BIANCO, an ) individual; FRANK BIANCO, INC., a ) Florida corporation; SHAREWELL GROUP, ) INC., a California corporation; MICHAEL ) SCHER, an individual; EUGENE SCHER, an ) individual; and DOES 1 through 50, ) inclusive, ) ) Defendants. ) ) ) )

11 limited liability company; and DIGITAL

25 for seizure of goods and for a temporary restraining order. A hearing was held on September 26 4, 2009, the Court held a hearing as is required under Fed. R. Civ. P. 65(b)(2). The 27 Defendants who were named in the original complaint (the "Original Defendants") were 28 present and represented by counsel.

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At the hearing, the Court entered an order as agreed to by Defendants and directed that

2 Plaintiffs prepare a draft order embodying the substance of the rulings made from the bench 3 and present it to Defendants' counsel for approval as to form and content. (Hearing Tr. At 4 22:3­6.) After the hearing, Plaintiffs amended their complaint to add two new Defendants 5 who were not the subject of the TRO application or the motion for preliminary injunction, and 6 who were not named in any of the Court's previous orders. 7
After some delay, Plaintiffs filed a notice that they were not able to agree on the form

8 of the proposed order, and attached their proposed order as an exhibit. The Court then 9 ordered Defendants to show cause why the proposed order should not be issued. Defendants 10 filed responses (collectively, "Response") consenting to entry of much of the order, but 11 objecting to certain aspects of it. Defendants are now represented by different counsel than at 12 the hearing. 13 I. 14
Preliminary Injunction as Issued At the hearing, the Court issued an order from the bench. This order applies only to

15 Plaintiffs and the Original Defendants, not the newly-added Defendants. The Response 16 apparently assumes no injunction is in place, which is incorrect. The Court specifically 17 entered an injunction as contemplated at the hearing: 18 19 20 21 22 23 24 25 26 27 28 (Hearing Tr. 22:7­19.)

The Court: As of today I order --as of this moment, I order the injunction in effect along the lines that have been agreed to by the parties. The Defendants understand the effect of the Court's order today? Mr. Pfingst [Defendants' counsel]: Yes. The Court: The TRO is continued in all respects with the exception of the duty of production of that computer, and I made a special order with respect to that. Mr. Pfingst: For the record, my clients are in court at this time, have been in court and are aware of the Court's ruling having been present at the time it was made.

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1 The Court made additional rulings with regard to preservation of the computer, which is 2 Defendant Frank Bianco's laptop (Hearing Tr. 22:21­23:2), as well as the return of certain 3 income tax returns (id., 23:13­24:20.) 4
In other words, this order merely memorializes the orders the Court has already made,

5 which continue in force against Plaintiffs and the Original Defendants. Defendants request 6 that the injunction not be entered until Plaintiffs' have conducted an inventory and return tax 7 forms. The injunction, however, is already in place. If Defendants believe they are being 8 injured by Plaintiffs' disobedience to the Court's order they can seek an order holding 9 Plaintiffs in contempt. 10
At the hearing, the Original Defendants consented through counsel they would

11 preserve the contents of Frank Bianco's laptop and it would be kept in Defendants' counsel's 12 custody. They also conceded the seized materials the Court ordered seized were pirated, but 13 argued they had no reason to suspect they had bought pirated materials. Although they now 14 seek to challenge the portion of the order directing seizure of pirated materials and documents 15 relating to those materials, and preservation of the laptop, they have presented the Court with 16 no appropriate basis for reconsideration. If Defendants believe other materials were wrongly 17 seized, they can seek return of this, but in the meantime they should obey the Court's order. 18 II. 19
Injunction Neither version of the injunction proposed by the parties is in complete harmony with

20 that original order. The Court has reviewed the proposed order and objections, and has 21 adopted the proposed language it believes most closely reflect its original order. 22
The Court finds Plaintiffs have shown that they are likely to succeed on the merits of

23 their infringement and counterfeiting claims based on claims of Defendants' wrongful use of 24 DanceSport's federally registered "CORE RHYTHMS" marks and federally registered 25 copyrighted material in connection with counterfeit exercise DVDs. 26 28

The Court finds that Plaintiffs will be irreparably harmed by Defendants' advertising,

27 marketing, distributing, offering for sale, and sale of infringing products.
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The Court finds that the balance of hardships tips in favor of Plaintiffs and that the

2 public interest weighs in favor of granting a preliminary injunction; and
The Court finds that Plaintiffs have made a showing that injunctive relief is warranted

4 given, inter alia, that Defendants were offering goods for sale marked with trademarks 5 registered on the Principal Register of the United States Patent and Trademark Office in 6 connection with the distribution, offering for sale and selling of goods (i.e., exercise DVDs); 7 that such goods were counterfeits and not genuine licensed goods; that the counterfeit 8 products infringe Plaintiffs' copyrights, trade dress and trademarks; and that Plaintiffs will 9 likely be irreparably harmed by infringement. The Original Defendants have consented to an 10 injunction forbidding them to infringe on Plaintiffs' copyrights, trade dress and trademarks. 11 12
The Court therefore ORDERS as follows: (a) The Original Defendants and each of their shareholders, members, owners,

13 parents, subsidiaries, affiliates, distributors, licensees, successors, heirs, assigns, officers, 14 directors, employees, agents, attorneys, and all persons and entities who now or hereafter are 15 in privity with or act in concert with any of them, are hereby temporarily restrained from all 16 of the following acts: 17 18 19 20 21 22 23 24 25 26 27 28

(1)

marketing, advertising, offering to sell, or selling any product, package, fitness program, video, DVD, or any other item of any kind that is or ever was named or labeled with the words "CORE RHYTHMS" or any colorable imitation thereof;

(2)

marketing, advertising, offering to sell, or selling any product in connection with the words "CORE RHYTHMS" or any colorable imitation thereof;

(3)

using the words "CORE RHYTHMS" or any colorable imitation thereof on any website or in any other marketing, advertising, or sales materials of any kind;

(4)

manufacturing, importing, assembling, labeling, or distributing in any way any product, package, fitness program, video, DVD, or any other

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item of any kind that was copied, in whole or in part, from any "CORE RHYTHMS" product; (5) manufacturing, importing, labeling, or distributing in any way product, package, fitness program, video, DVD, or any other item of any kind that is or ever was named or labeled with the words "CORE RHYTHMS" or any colorable imitation thereof; (6) transferring, transporting, shipping, sending, moving, disposing of, discarding, destroying, exporting, or otherwise parting with custody, control, or possession of any product, package, fitness program, video, DVD, or any other item of any kind that is or ever was named or labeled with the words "CORE RHYTHMS" or any colorable imitation thereof (other than as otherwise expressly ordered in writing by this Court); (7) modifying, re-labeling, re-packaging, re-naming, concealing, or otherwise changing the content, appearance, trade dress, name, packaging, or any other element, aspect, characteristic, or feature of any product, package, fitness program, video, DVD, or other item that is or ever was named or labeled with the words "CORE RHYTHMS" or any colorable imitation thereof (other than as otherwise expressly ordered in writing by this Court); (8) transferring, transporting, shipping, sending, moving, disposing of, discarding, destroying, exporting, or otherwise parting with custody, control, or possession of (or modifying, editing, concealing, or otherwise changing the content of) any document, data, or record (including, but not limited to, any computer file, e-mail, spreadsheet, and any other record existing in electronic form) relating in any way to the manufacture, purchase, importation, labeling, assembling, distributing, marketing, advertising, offering to sell, selling, or shipping of any product, package, fitness program, video, DVD, or any other item of any

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kind that is or ever was named or labeled with the words "CORE RHYTHMS" or any colorable imitation thereof (including, but not limited to, any record relating to any purchase or any sale of any item bearing those words or any colorable imitation thereof); or (9) infringing any of the trademarks or copyrights listed below: (a) CORE RHYTHMS® (U.S. Trademark Reg. No. 3189058). (b) CORE RHYTHMS DANCE EXERCISE PROGRAM® (U.S.

8 Trademark Reg. No. 3272320).
(c) Copyright Serial No. 1-58135431, for title CORE RHYTHMS FULL

10 WORKOUT DVD COVER, Reg. No. VA 1-636-818, with Issue/Reg Date of 4/26/08.
(d) Copyright Serial No. 1-58135470 for title CORE RHYTHMS

12 QUICK WORKOUT DVD COVER, Reg. No. VA 1-632-982, with Issue/Reg Date of
(e) Copyright for title CORE RHYTHMS KICK START DVD COVER,

15 Reg. No. VA 1-632-983, with Issue/Reg Date of 4/26/08.
(f) Copyright for title LATIN DANCE MADE EASY DVD COVER,

17 Reg. No. VA 1-632-984, with Issue/Reg Date of 4/26/08.
(g) Copyright for title 7-DAY DIET GUIDE, Reg. No. VA 1-632-981,

19 with Issue/Reg Date of 4/26/08.
(h) Copyright for title CORE RHYTHMS STARTER PACKAGE

21 (RETAIL PKG), Reg. No. VA 1-632-129, with Issue/Reg Date of 4/26/08.
(i) Copyright for title CORE RHYTHMS FULL WORKOUT DVD, Reg.

23 No. PA 1-597-830, with Issue/Reg Date of 4/26/08.
(j) Copyright for title CORE RHYTHMS QUICK WORKOUT DVD,

25 Reg. No. PA 1-597-829, with Issue/Reg Date of 4/26/08.
(k) Copyright for title CORE RHYTHMS KICK START DVD, Reg. No. PA 1-597-831, with Issue/Reg Date of 4/26/08. ///

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(b)

(l) Copyright for title CORE RHYTHMS LATIN DANCE MADE

2 EASY DVD, Reg. No. PA 1-597-826, with Issue/Reg Date of 4/26/08.
(m) Copyright for title CORE RHYTHMS 2-MINUTE COMMERCIAL,

4 Reg. No. PA 1-602-500, with Issue/Reg Date of 7/18/08.
(n) Copyright for title CORE RHYTHMS LONG FORM

6 COMMERCIAL (VERSION 1), Reg. No. PA 1-602-498, with Issue/Reg Date of 7/18/08.
(o) Copyright for title CORE RHYTHMS LONG FORM

8 COMMERCIAL (VERSION 2), Reg. No. PA 1-602-502, with Issue/Reg Date of 7/18/08.
(p) Copyright for title CORE RHYTHMS SALSA BLAST DVD

10 COVER, Reg. No. VA 1-636-477, with Issue/Reg Date of 5/16/08.
(q) Copyright for title CORE RHYTHMS SWING SENSATION DVD

12 COVER, Reg. No. VA 1-636-468, with Issue/Reg Date of 5/16/08.
(r) Copyright for title CORE RHYTHMS LATIN SYNERGY DVD

14 COVER, Reg. No. VA 1-686-472, with Issue/Reg Date of 5/16/08.
(s) Copyright for title CORE RHYTHMS LATIN SYNERGY DVD,

16 Reg. No. PA 1-602-494, with Issue/Reg Date of 5/16/08.
(t) Copyright for title CORE RHYTHMS SALSA BLAST DVD, Reg.

18 No. PA 1-602-472, with Issue/Reg Date of 7/18/08.
(u) Copyright for title CORE RHYTHMS SAMBA FUSION DVD, Reg.

20 No. PA 1-602-437, with Issue/Reg Date of 7/18/08.
(v) Copyright for title CORE RHYTHMS SAMBA FUSION DVD

22 COVER, Reg. No. VA 1-671-725, with Issue/Reg Date of 5/16/2008.
(w) Copyright for title CORE RHYTHMS SWING SENSATION DVD,

24 Reg. No. PA 1-602-452, with Issue/Reg Date of 7/18/2008.
(x) Copyright for title CORE RHYTHMS CLUB MIX COLLECTION. The Original Defendants and each of their shareholders, members, owners,

27 parents, subsidiaries, affiliates, distributors, licensees, successors, heirs, assigns, officers, 28 directors, employees, agents, attorneys, and all persons and entities who now or hereafter are

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1 in privity with or act in concert with any of them, immediately shall remove any and all 2 references to "CORE RHYTHMS" and any videos from any CORE RHYTHMS DVDs from 3 any and all websites over which they have any ownership or control including, but not limited 4 to, the websites at the domain names <www.asseenontv5 infomercials.com>,<http://ediza.securesites.net>, <asontv.com> and 6 <www.asseenontvonline.net>. 7
(c) The Original Defendants and each of their shareholders, members, owners,

8 parents, subsidiaries, affiliates, distributors, licensees, successors, heirs, assigns, officers, 9 directors, employees, agents, attorneys, and all persons and entities who now or hereafter are 10 in privity with or act in concert with any of them, shall deliver to counsel of record for 11 Plaintiffs, for impounding by said counsel and for inspection, every product, package, 12 fitness program, video, DVD, and other item of any kind that is or that ever was named or 13 labeled with the words "CORE RHYTHMS" or any colorable imitation thereof. Plaintiffs 14 shall take possession of the 702 DVDs named or labeled with the words "CORE RHYTHMS" 15 that were seized and impounded by United States Customs and Border Protection. 16
(d) The Original Defendants' counsel shall take possession of the laptop computer

17 used by Defendant Frank Bianco that was not found and not seized, in its condition as of 18 11:00 a.m. on September 4, 2009; that there will be no alterations made before it is given over 19 to counsel, or alternatively, that without any alterations being made and a mirror image copy 20 of the hard drive be obtained and that be turned over to counsel, who shall take possession 21 forthwith. The parties should contact Magistrate Judge Reuben B. Brooks regarding any 22 discovery they seek. 23 25 26 27 28

(e)

The cash bond previously posted by Plaintiffs in the amount of $2,500.00 shall

24 remain on deposit with the Clerk of the Court as security for this preliminary injunction.
IT IS SO ORDERED. Dated: 11-18-09 ___________________________________ Honorable Larry Alan Burns United States District Judge

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