Exxon Mobil Corporation v. The Individuals and Business Entities Identified on Schedule "A"

Filing 87

STIPULATED FINAL JUDGMENT AND PERMANENT INJUNCTION. GRANTING 86 The Parties' Joint Motion for Entry of Stipulated Final Judgment and Permanent Injunction. JUDGMENT in favor of Plaintiff, Exxon Mobil Corporation. Signed by Judge Beth Bloom on 5/22/2023. See attached document for full details. (caw)

Case 1:22-cv-22695-BB Document 87 Entered on FLSD Docket 05/22/2023 Page 1 of 5

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF FLORIDA
Case No. 22-cv-22695-BLOOM/Otazo-Reyes
EXXON MOBIL CORPORATION,
Plaintiff,
v.
M&J SUNSHINE, CORP. and
JOSE F. OCHOA,
Defendants.
______________________________/
STIPULATED FINAL JUDGMENT AND PERMANENT INJUNCTION
THIS CAUSE is before the Court upon the Parties’ Joint Motion for Entry of Stipulated
Final Judgment and Permanent Injunction, ECF No. [86] (“Motion”), filed on May 19, 2023. The
Court has carefully considered the Motion, the record, and the governing law. For the reasons
stated below, the Court grants the Motion and enters this Stipulated Final Judgment and Permanent
Injunction.
I.

BACKGROUND
This is a case of trademark infringement arising under the Lanham Act, 15 U.S.C. §§ 1114,

1116, and 1125, and other related claims under Florida law. See Complaint, ECF No. [1]. Plaintiff
Exxon Mobil Corporation alleges that Defendants M&J Sunshine Corp. and Jose Ochoa sold
counterfeit Mobil-branded motor oils and lubricants. Id.
On March 30, 2023, the parties represented that they had reached a settlement agreement.
ECF No. [84]. On May 19, 2023, they filed the instant Motion, wherein the parties confirm that
they have settled all claims in this matter, and agree to Final Judgment in the amount of $5,000,000
and entry of a permanent injunction against Defendants. ECF No. [86].

Case 1:22-cv-22695-BB Document 87 Entered on FLSD Docket 05/22/2023 Page 2 of 5
Case No. 22-cv-22695-BLOOM/Otazo-Reyes
II.

LEGAL STANDARD
The Lanham Trademark Act makes a defendant liable for using in commerce, without the

consent of the registrant, any reproduction, counterfeit, copy, or colorable imitation of a registered
mark in connection with the sale, offering for sale, distribution, or advertising of any goods or
services on or in connection with which such use is likely to cause confusion, or to cause mistake,
or to deceive. 15 U.S.C. § 1114(a). In counterfeiting cases, a plaintiff may elect to recover statutory
damages of up to $200,000 per counterfeit mark per type of goods or services sold, offered for
sale, or distributed. Id. § 1117(c). And if the court finds that use of the counterfeit mark was willful,
the plaintiff may recover up to $2,000,000 per counterfeit mark. Id. § 1117(c)(2). The Lanham Act
also authorizes courts to grant injunctive relief “to prevent the violation of any right of the
registrant of a mark registered in the Patent and Trademark Office[.]” Id. § 1116(a).
“To obtain a permanent injunction, a plaintiff must show (1) that he has suffered an
irreparable injury; (2) that his remedies at law are inadequate; (3) that the balance of hardships
weighs in his favor; and (4) that a permanent injunction would not disserve the public interest.”
Barrett v. Walker Cnty. Sch. Dist., 872 F.3d 1209, 1229 (11th Cir. 2017) (citation omitted).
III.

ANALYSIS
According to the parties’ joint stipulation, Defendants admit that they willfully used in

commerce counterfeits of at least five Mobil Marks. ECF No. [86-1] at 4. They agree that they are
liable for up to $10,000,000. Id.; see 15 U.S.C. § 1117(c). The parties have agreed to a Final
Judgment in the amount of $5 million and a permanent injunction prohibiting Defendants from
using the Mobil Marks, selling any products bearing Plaintiff’s trademarks, and selling counterfeit
Mobil-branded products. ECF No. [86].
The Court finds the parties’ agreement reasonable, and the Court also agrees that all four
permanent injunction factors favor a permanent injunction being entered in this case. The
2

Case 1:22-cv-22695-BB Document 87 Entered on FLSD Docket 05/22/2023 Page 3 of 5
Case No. 22-cv-22695-BLOOM/Otazo-Reyes
likelihood of confusion caused by the sale of counterfeit goods constitutes irreparable harm. See
Davidoff & CIE, S.A. v. PLD Int’l Corp., 263 F.3d 1297, 1304 (11th Cir. 2001). There is no
adequate remedy at law for injury caused by continuing infringement. Chanel, Inc. v.
besumart.com, 240. F. Supp. 3d 1283, 1290 (S.D. Fla. 2016). The balance of hardships favor
injunctive relief because Defendants face no hardship if they are prohibited from committing the
illegal act of trademark infringement. Id. at 1290-91. Finally, “the public interest is served by
preventing consumer confusion in the marketplace.” Davidoff, 263 F.3d at 1304.
IV.

CONCLUSION
Accordingly, it is ORDERED AND ADJDUGED as follows:
1. The Motion, ECF No. [86], is GRANTED.
2. The Stipulated Final Judgment and Permanent Injunction, ECF No. [86-1], is
APPROVED. It is therefore ORDERED that:
a. Defendants, their officers, agents, employees, managers, members, parents,
subsidiaries, related and affiliated companies, successors, assigns, and all those
in active concert or participation with any of them, are permanently enjoined
and restrained from using the MOBIL Marks and any other trademarks owned
by ExxonMobil, or any trademark bearing the word “Mobil,” or any
confusingly similar variation of those trademarks, and from manufacturing,
importing, exporting, advertising, promoting, offering to sell, selling,
distributing, or transferring any products bearing and/or using the MOBIL
Marks, or any confusingly similar mark or designation.
b. Defendants shall, within fifteen (15) days of the date of this Final Judgment,
deliver to ExxonMobil for destruction, or cause to be destroyed and provide
proof of destruction, any and all products, and any other materials in
3

Case 1:22-cv-22695-BB Document 87 Entered on FLSD Docket 05/22/2023 Page 4 of 5
Case No. 22-cv-22695-BLOOM/Otazo-Reyes
Defendants’ possession, custody or control that use, bear, or depict the MOBIL
Marks, including any element thereof, and any other Mobil trademark or mark
confusingly similar thereto, or, in the event no such products or materials are in
Defendants’ possession, custody, or control, certify same under oath.
c. Defendants are to serve upon ExxonMobil, within thirty (30) days after the
entry of this Order, a report in writing and under oath setting forth in detail the
manner and form in which Defendants have complied with the foregoing terms
of this Order.
d. Judgment in the amount of $5,000,000.00 is hereby entered against Defendants,
jointly and severally, in favor of Plaintiff Exxon Mobil Corporation. In partial
satisfaction of this judgment, the Clerk of the Court shall RELEASE the bond
in the amount of $100,000 and pay it to ExxonMobil.
e. Each party shall bear its own expenses and attorneys’ fees incurred in this
litigation.
f. This is a consented Final Judgment to which all parties expressly represent that
they waive all rights of appeal.
g. To the extent not otherwise disposed of, all pending options are DENIED AS
MOOT and all deadlines are TERMINATED.
h. The Clerk of Court is directed to CLOSE this case for administrative purposes.
i. The Court shall retain jurisdiction for the sole purpose of enforcing this Final
Judgment and the terms of the settlement agreement between the parties.

4

Case 1:22-cv-22695-BB Document 87 Entered on FLSD Docket 05/22/2023 Page 5 of 5
Case No. 22-cv-22695-BLOOM/Otazo-Reyes
DONE AND ORDERED in Chambers at Miami, Florida, on May 22, 2023.

_________________________________
BETH BLOOM
UNITED STATES DISTRICT JUDGE

Copies to:
Counsel of Record

5