Salba Corp., N.A. et al v. X Factor Holdings, LLC et al

Filing 197

ORDER FOR PERMANENT INJUNCTION re: Motion for Entry and Quantification of Default Judgment and Permanent Injunction Against Defendants X Factor Holdings, LLC; Ancient Naturals, LLC; Core Naturals, LLC; and 193 Natural Guidance, LLC; and Motion for Entry and Quantification of Default Judgment and Permanent Injunction Against Defendant Mitch Propster. By Judge Robert E. Blackburn on 9/28/2015. (Attachments: # 1 Exhibit, # 2 Exhibit) (mlace, )

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO
Judge Robert E. Blackburn
Civil Action No. 12-cv-01306-REB-KLM
SALBA CORP., N.A., a Canadian corporation,
SALBA SMART NATURALS PRODUCTS, a Colorado limited liability company,
WILLIAM A. RALSTON, and
RICHARD L. RALSTON,
Plaintiffs,
v.
X FACTOR HOLDINGS, LLC, an inactive Florida limited liability company, and
ANCIENT NATURALS, LLC, a Florida limited liability company,
MITCHELL A. PROPSTER, a resident of the State of Florida,
CORE NATURALS, LLC, a Florida limited liability company, and
NATURAL GUIDANCE, LLC, a Florida limited liability company,
Defendants and Counter-Claimants.

ORDER FOR PERMANENT INJUNCTION
Blackburn, J.
This matter is before the court on the following: (1) Motion for Entry and
Quantification of Default Judgment and Permanent Injunction Against Defendants
X Factor Holdings, LLC; Ancient Naturals, LLC; Core Naturals, LLC; and Natural
Guidance, LLC [#173]1 filed May 13, 2015; and (2) Motion for Entry and
Quantification of Default Judgment and Permanent Injunction Against Defendant
Mitch Propster [#193] filed June 25, 2015. No response was filed addressing either
motion.

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“[#173]” is an example of the convention I use to identify the docket number assigned to a
specific paper by the court’s case management and electronic case filing system (CM/ECF). I use this
convention throughout this order.

I. JURISDICTION
I have jurisdiction over this case under 28 U.S.C. § 1331 (federal question), 15
U.S.C. § 1121 (Trademark Act), 28 U.S.C. § 1338 (patent, trademark, and associated
unfair competition claims), and 28 U.S.C. § 1367 (supplemental).
II. BASIS FOR PERMANENT INJUNCTION
Concurrently with this order, I have entered an order granting the motions for
default judgment against each of the defendants. In both motions, the plaintiffs seek the
entry of a permanent injunction against all of the defendants. The permanent injunction
is sought based on the claims listed below as asserted in the Amended Complaint
With Jury Demand [#62] filed January 14, 2014:
a. Trademark infringement under 15 U.S.C. §§ 1114(1) and 1116 (First
Portion Of First Claim For Relief). Id. at ¶¶ 59-66;
b. Federal unfair competition and false advertising under 15 U.S.C. §§
1125(a)(1)(a) (Second Claim For Relief). Id. at ¶¶ 67-81;
c. Deceptive trade practices under the Colorado Consumer Protection Act,
C.R.S. § 6-1-101 et seq. (Third Claim For Relief). Id. at ¶¶ 82-93; and
d. Common law trademark infringement and unfair competition (Fifth
Claim For Relief). Id. at ¶¶ 103-110.
In my concurrent order granting both motions for default judgment, I order the
entry of default judgment in favor of the plaintiffs and against the defendants on each of
these claims. Based on these claims on which default judgment has been granted, the
entry of a permanent injunction prohibiting the defendants from committing future
violations as established in these claims is proper.

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THEREFORE, IT IS ORDERED as follows:
1. PERMANENT INJUNCTION
A. That as used in this order, the term “defendants” shall mean X Factor
Holdings, LLC, an inactive Florida limited liability company, Ancient Naturals, LLC, a
Florida limited liability company, Mitchell A. Propster, a resident of the State of Florida,
Core Naturals, LLC, a Florida limited liability company, and Natural Guidance, LLC, a
Florida limited liability company;
B. That the defendants and each of their members, officers, directors, agents,
servants, employees, subsidiaries, affiliates, predecessors, successors, heirs, assigns
and/or other related companies, and persons in active concert or participation with any
one of them who receive actual notice of this Permanent Injunction by personal service
or otherwise, are enjoined permanently from and shall forever cease and desist from
i. any and all further use of any of: (1) the SALBA trademark rights,
trademark registrations and all trade dress and goodwill appurtenant
thereto (the “Salba Marks”, defined below); (2) the copyrights and
copyright registrations owned by Salba Smart Natural Products for product
packaging and other printed and visual materials and all goodwill
appurtenant thereto (the “Salba Works,” defined below); and (3) the
“Salvia Marks”, “Salvia Works”, “Chia Joy Marks” or “Chia Joy Works”
(each of which are defined below), specifically including without limitation
the Defendants’ past and current Salba, Salvia and Chia Joy product
labels, designs, trade dress and marketing materials, in whole or in part,
or any colorable imitation or derivative thereof, or any marks, drawings,
labels, designs, works or wording confusingly similar thereto, including
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but not limited to uses in combination with other terms, marks, works,
labels, designs, symbols or trade dress;
ii. the above prohibited uses include, but are not limited to, the use of any
such mark, work, drawing, label, design, wording, imitation or derivative in
any printed, electronic, broadcast, or other format, on or in connection with
any manufacturing, importing, exporting, distributing, licensing, selling,
marketing, advertising, promoting or offering for sale or distribution of any
product or services, including, without limitation, Salvia hispanica L. seed,
chia seed and/or related food products;
iii. the above prohibited uses also include, but are not limited to, the use of
any such mark, work, drawing, label, design, wording, imitation or
derivative, over or in connection with the Internet, any Internet search
engine website, the purchase or use of keyword or search terms from any
such Internet search engine or website, or the purchase or use of any
form of advertising or listing from any Internet search engine or website;
iv. the above prohibited uses also include, but are not limited to any use of
the word “Salba”; any use of the word “Salvia,” and any use of the term
“Chia Joy”;
v. performing any action or using any trademark, symbol, imagery, slogan,
or any false designation of origin or false advertising which is likely to
cause confusion or mistake or lead the trade and/or public into believing
that SALBA and the common species of chia, Salvia hispanica L., are one
and the same, or that Plaintiffs are the sponsor of the Defendants or their
products, or that Plaintiffs are in some matter affiliated with the
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Defendants or that the Defendants’ products originate with Plaintiffs,
contain authentic SALBA seed, or are connected or offered with the
approval, consent, or authorization or under the supervision of Plaintiffs,
specifically including, but not limited to, the Defendants’ past and current
“SALBA,” “SALVIA,” and “CHIA JOY” packaging;
vi. engaging in any conduct constituting unfair competition with Plaintiffs
as a result of the use of any of the Salba Marks, Salba Works, Salvia
Marks, Salvia Works, Chia Joy Marks or Chia Joy Works or any similar,
formative or derivative words or marks in commerce, or violation of the
Colorado Consumer Protection Act;
vii. filing applications for trademark or copyright registrations with the U.S.
Patent and Trademark Office, U.S. Copyright Office, or governmental
entities in any foreign country, or filing for domain name registrations in
the U.S. or overseas, that incorporate the Salba Marks, Salba Works,
Salvia Marks, Salvia Works, Chia Joy Marks, Chia Joy Works or
derivatives thereof; and/or
viii. assisting, aiding, or abetting another person or business entity in
engaging or performing any of the activities enumerated in subparagraphs
A(i) through A(vii) above;
C. That the defendants and each of their members, officers, directors, agents,
servants, employees, subsidiaries, affiliates, predecessors, successors, heirs, assigns
and/or other related companies, and persons in active concert or participation with any
one of them who receive actual notice of this Permanent Injunction by personal service
or otherwise, shall
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i. Within ten (10) days of the entry of this Permanent Injunction, destroy
the following: (a) all products, point-of-sale materials, labels, signs, boxes,
bottles, containers, prints, catalogs, line sheets, marketing materials,
internet web pages, metatags, packages, papers, other trade dress, and
advertisements in their possession, custody or control bearing images,
illustrations, or representations of any of the Salba Marks, Salba Works,
Salvia Marks, Salvia Works, Chia Joy Marks, Chia Joy Works; and (b) all
plates, films, molds, programs, data, matrixes, and other means of making
the same; and
ii. Within ten (10) days of the entry of this Permanent Injunction, deliver a
copy of this Permanent Injunction by United States Certified Mail, return
receipt requested, to each of the persons to whom the Defendants sold
products bearing the Salba Marks, Salvia Marks, or Chia Joy Marks;
provided, further, the Defendants shall direct such persons to remove
forthwith from their websites and marketing materials all images of and
references to the Salba Marks, Salvia Marks, and Chia Joy Marks; and
further, the Defendants shall provide Plaintiffs’ counsel with a copy of all
such correspondence, all return receipts relating to their mailing, and all
responsive and related communications with the recipients.
2. DEFINITIONS
That as used in this order, the following terms shall be defined as stated below:
A. Definition of “Salba Marks” The Salba Marks include the following trademark
rights, trademark registrations and all goodwill and trade dress appurtenant thereto:

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Trademark

Serial/Registration Number

Country

“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA”
“SALBA CHIA”
“SALBA CHIA”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA SMART”
“SALBA OLÉ”
“SALBA OLÉ”
“SALBA VIDA”

3,071,655
1,118,508
737,717
6973-10
003850831
5,039,857
884,843
1,135,800
40-884843
830,655,018
169147
749,560
784,617
86110438
102,063,486
3,575,940
3,764,274
1,271,014
1,111,865
1,147,324
980,207
1,081,534
1,081,535
976,134
797,755
747,406
1,546,555
77142369
1,318,478
1,253,192

U.S.
Australia
Canada
Ecuador
European OHIM
Japan
Korea
Korea
Korea
Puerto Rico
Peru
New Zealand
New Zealand
U.S.
Taiwan
U.S.
U.S.
Australia
Australia
Canada
European Community
Mexico
Mexico
Mexico
New Zealand
New Zealand
Taiwan
U.S.
Canada
Mexico

The “Salba Marks” include each of the Trademarks listed above, together with
any and all trade dress and derivatives associated therewith, including all rights under
common law relating to each Trademark, together with all of the goodwill of the
business associated therewith and symbolized thereby, and any trademark registrations
and trademark applications Plaintiffs or any of the Defendants have filed in the United
States Patent and Trademark Office or in any other Office or Registrar worldwide with
respect to the Trademarks, along with any priorities, rights or registrations resulting

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therefrom, together with any and all rights and causes of action to recover past, present,
or future damages, royalties, fees, profits, or other relief, including equitable or
injunctive relief, arising from infringement of the Trademarks by a third party and to
which Plaintiffs or any of the Defendants are or would have been entitled, and the
corresponding registrations and applications for each Trademark;
B. Definition of “Salba Works” Plaintiffs’ own various copyrights for all past
and current SALBA seed product packaging, marketing and other visual materials,
which have been used and marketed in the U.S. and worldwide in connection with
Plaintiffs’ SALBA brand seed and food products. The product packaging was created
and fixed in a tangible medium of expression by Salba Corp. no later than February of
2008, and on February 8, 2008, Salba Corp. obtained a U.S. Copyright Registration,
No. VAu001018274, entitled “Salba Packaging and Design Collection” for its product
packaging design. Plaintiff Salba Corp. has been and is the sole owner of the entire
right, title, and interest in and to U.S. Copyright Registration, No. VAu001018274. In
addition to these federal rights, Plaintiffs are also the owners of original works of
authorship fixed in a tangible medium of expression that are entitled to copyright
protection and they have used such works in connection with their SALBA brand seed
and food products. Plaintiffs are, and at all relevant time have been, licensees of
exclusive rights under copyright with respect to copyrighted materials containing the
word SALBA or any derivative or form thereof. All of the above are herein referred to
individually and collectively as the “Salba Works”; further, the “Salba Works” include all
right, title and interest in and to materials containing the word SALBA or any derivative
or form thereof, including, without limitation, all copyrights associated with documents,
illustrations, labels, packaging, designs, photographs, advertisements, representations
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or other forms of use of the word SALBA including website content hosted by Plaintiffs
or the Defendants at any time (including but not limited to all SALBA-derived content
ever appearing on the Defendants’ www.SALBA.com, www.SALBArx.com,
www.SALBArx.com, www.SALBAmiracle.com, and www.SALBAstore.com domains),
and all other SALBA-related material to which any of the Plaintiffs or the Defendants
have claimed, now claim or may claim any copyright under United States federal law,
state law, common law, or the law of any foreign country.
C. Definition of “Salvia Marks” In approximately 2013, the Defendants
began marketing and selling their competing “SALVIA” brand non-SALBA chia seed
products using Plaintiffs’ trade dress, leaf image, color scheme, font, starburst feature
and other unique label, packaging and marketing designs. Examples of the Defendants’
“SALVIA” brand packaging, labels and marketing material images are attached hereto
as Exhibit 1. The “Salvia Marks” include each of the Defendants’ “SALVIA” brand
packages, labels and related marketing material images, including all rights under
common law relating to each, together with any and all trade dress and derivatives and
all of the goodwill of the business associated therewith and symbolized thereby, and
any trademark registrations and trademark applications that the Defendants have filed
in the United States Patent and Trademark Office or in any other Office or Registrar
worldwide with respect to their “SALVIA” brand packaging, labels, trade dress and
marketing material images, along with any priorities, rights or registrations resulting
therefrom, together with any and all rights and causes of action to recover past, present,
or future damages, royalties, fees, profits, or other relief, including equitable or
injunctive relief, arising from infringement of the trademarks by a third party and to
which the Defendants are or would have been entitled, and the corresponding
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registrations and applications for each Trademark.
D. Definition of “Salvia Works” The Defendants’ own various copyrights for
all past and current product packaging, marketing and other visual materials, which
have been used and marketed in the U.S. and worldwide in connection with the
Defendants’ SALVIA brand non-SALBA chia seed and food products. The Defendants
also own original works of authorship fixed in a tangible medium of expression they
have used such works in connection with Defendants’ SALVIA brand chia seed and
food products. All of the above are herein referred to individually and collectively as the
“Salvia Works”; further, the “Salvia Works” include all right, title and interest in and to
any and all copyrightable materials promoting or used in connection with Defendants’
SALVIA brand chia seed and food products or any derivative or form thereof, including,
without limitation, all copyrights associated with documents, illustrations, labels,
packaging, designs, photographs, advertisements, representations or other forms of use
for such products including website content hosted by the Defendants at any time, and
all other SALVIA brand chia seed and food product-related material to which any of the
Defendants have claimed, now claim or may claim any copyright under United States
federal law, state law, common law, or the law of any foreign country.
E. Definition of “Chia Joy Marks” In approximately 2012, the Defendants
began marketing and selling their competing “CHIA JOY” non-SALBA chia seed and
food products using Plaintiffs’ trade dress, leaf image, color scheme, font, starburst
feature and other unique label, packaging and marketing designs. Examples of the
Defendants’ “CHIA JOY” packaging, labels and marketing material images are attached
hereto as Exhibit 2. In addition, Defendant Natural Guidance owns the Trademark with
Registration Number 4,295,314 and a Registration Date of February 26, 2013, from the
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United States Patent and Trademark Office. The “Chia Joy Marks” include the Chia Joy
Trademark Registration Number 4,295,314, and each of Defendants’ “CHIA JOY”
packages, labels and related marketing material images, including all rights under
common law relating to each, together with any and all trade dress and derivatives and
all of the goodwill of the business associated therewith and symbolized thereby, and
any trademark registrations and trademark applications the Defendants have filed in the
United States Patent and Trademark Office or in any other Office or Registrar worldwide
with respect to the “CHIA JOY” packaging, labels, trade dress and marketing material
images, along with any priorities, rights or registrations resulting therefrom, together
with any and all rights and causes of action to recover past, present, or future damages,
royalties, fees, profits, or other relief, including equitable or injunctive relief, arising from
infringement of the trademarks by a third party and to which the Defendants are or
would have been entitled, and the corresponding registrations and applications for each
Trademark.
F. Definition of “Chia Joy Works” The Defendants own various copyrights
for all past and current CHIA JOY seed product packaging, marketing and other visual
materials, which have been used and marketed in the U.S. and worldwide in connection
with the Defendants’ CHIA JOY brand non-SALBA chia seed and food products. The
Defendants also own original works of authorship fixed in a tangible medium of
expression that are entitled to copyright protection and they have used such works in
connection with their CHIA JOY brand seed and food products. All of the above are
herein referred to individually and collectively as the “Chia Joy Works”; further, the “Chia
Joy Works” include all right, title and interest in and to materials containing the words
CHIA JOY or any derivative or form thereof, including, without limitation, all copyrights
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associated with documents, illustrations, labels, packaging, designs, photographs,
advertisements, representations or other forms of use of the words CHIA JOY including
website content hosted by the Defendants at any time, and all other CHIA JOY-related
material to which any of the Defendants have claimed, now claim or may claim any
copyright under United States federal law, state law, common law, or the law of any
foreign country.
Dated September 28, 2015, at Denver, Colorado.
BY THE COURT:

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