Baskin-Robbins Franchising LLC et al v. Morris et al

Filing 15

ORDER GRANTING PLAINTIFFS' VERIFIED MOTION FOR PARTIAL DEFAULT JUDGMENT, PERMANENT INJUNCTION, AND DECLARATORY JUDGMENT 8 . (Attachments: # 1 Exhibit to the Order and Appendix) Signed by JUDGE DAVID ALAN EZRA on 8/23/2011. Excerpt of Conclusion: "The Clerk of Court is directed to enter default judgment as against Paradise ten (10) days after the filing of this Order, but may not yet close the case as there has been no resolution of any issue with respect to Defendant Morris." (afc) CERTIFICATE OF SERVICEParticipants registered to receive electronic notifications received this document electronically at the e-mail address listed on the Notice of Electronic Filing (NEF). Participants not registered to receive electronic notifications were served by first class mail on the date of this docket entry

IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF HAWAII
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Plaintiffs,
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vs.
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DEAN MORRIS, individually, and )
PARADISE ENDEAVORS, LLC, a )
Hawaii Limited Liability Company, )
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Defendants.
_____________________________ )
BASKIN-ROBBINS
FRANCHISING LLC, a Delaware
Limited Liability Company,
BASKIN ROBBINS FRANCHISED
SHOPS LLC, a Delaware Limited
Liability Company, and BR IP
HOLDER LLC, a Delaware Limited
Liability Company,

CV. NO. 10-00758 DAE-BMK

EXHIBIT TO ORDER DATED AUGUST 22, 2011 GRANTING PLAINTIFFS’
INJUNCTIVE RELIEF
TO:

PARADISE ENDEAVORS, LLC, a Hawaii Limited Liability

Company, and its AGENTS, REPRESENTATIVES AND EMPLOYEES:
WHEREAS, the above entitled action is pending in the United States
District Court for the District of Hawaii; and
WHEREAS, this Court has reviewed the Complaint, the Request of
Entry of Default filed herein, and Plaintiffs’ instant Motion for (1) PARTIAL
DEFAULT JUDGMENT; (2) PERMANENT INJUNCTION; AND (3)

DECLARATORY JUDGMENT, and the Memorandum in Support, the Affidavits
and Exhibits submitted therewith; and
WHEREAS, it appears to the Court that despite having its rights as a
franchise terminated, Defendant Franchisee continued to operate store # 344851 as
a Baskin-Robbins store and sell ice cream and other Baskin-Robbins branded
products, and otherwise use without authorization Plaintiffs’ Proprietary trade and
service Marks; and
WHEREAS, even after abandoning its unauthorized operation,
Defendant Franchisee failed to fulfill its post-termination duty of de-identifying
said store # 344851, abandoning store # 344851 which remains in disarray while
still bearing the marks and trade dress of Plaintiffs, thereby tarnishing or otherwise
irreparably harming Plaintiffs’ marks and goodwill, as well as other nearby
franchised stores in Plaintiffs’ franchise system;
NOW THEREFORE, upon review of the foregoing Motion filed
herein by Plaintiffs, and the Affidavits, Exhibits and Declaration attached thereto,
and the Court being fully advised in the premises and good cause appearing
therefore,
IT IS HEREBY ORDERED that TEN DAYS from the filing of this
Order you are restrained, prohibited and permanently enjoined from infringing the
trademarks and service marks of Baskin-Robbins and Baskin-Robbins identified
herein, from falsely designating the origin, sponsorship or affiliation of Defendant
Franchisee’s business and services, from diluting the distinctive quality of the

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trademarks and service marks of Plaintiffs, and from unfairly competing with
Plaintiffs in any manner whatsoever, including but not limited to:
(a)

Using in connection with Defendant Franchisee’s businesses

the trademarks and service marks of Baskin-Robbins identified herein, trade
names, trade dress and distinguishing features, or reproductions or colorable
imitations thereof, whether or not preceded or followed by any qualifying language
including but not limited to the likenesses or phrases as set forth appended to this
Exhibit, and;
(b)

Making in any manner whatsoever any statement or

representation or performing any act likely to leave the public or individual
members of the public to believe that Defendant is in any manner, directly or
indirectly, associated or connected with, or licensed, authorized or approved by
Plaintiffs or someone in connection with them; and
(c)

Committing any other act which infringes the trade name, trade

dress, trademarks or service marks of Plaintiffs or constitutes unfair competition
against Plaintiff Franchisors or their franchisees in their respective Systems.
IT IS FURTHER ORDERED, that TEN DAYS from the filing of this
Order, you are restrained, prohibited and enjoined from preventing Plaintiffs, their
authorized representatives, employees or contractors, from entering Defendant
Franchisee’s store premises and removing:
(a)

All paper or other printed products, receipts, stationary, labels,

signs, prints, packages, wrappers, napkins, receptacles, cartons, boxes, instruction

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booklets and advertisements wherever located, in the possession, custody or
control of Defendant Franchisee bearing the likeness or phrases as set forth
appended to this Exhibit; and
(b)

All stationary, business cards, employment applications or other

business forms, invoices, catalogues, advertising materials, checks, or any
materials of any type bearing the likeness or phrases as set forth appended to this
Exhibit.
IT IS FURTHER ORDERED, that copies of this Order shall be posted
on the premises of the following locations for the purpose of immediately stopping
any further passing off of Defendant Franchisee’s ice cream or other products as
Baskin-Robbins, or any further use of Plaintiffs’ Proprietary Marks and/or Trade
dress:
1:

Store # 344851: 2395 S. Kihei Road, Suite 120, Dolphin Plaza,

Kihei, Maui Hawaii 96753; and
2:

Store # 362235: 1280 S. Kihei Road, Kihei, Maui HI 96753 (if

necessary).
IT IS FURTHER ORDERED that U.S. Marshals, the Sheriff of the
State of Hawaii and his deputies, and/or the process servers of the State
Department of Public Safety or private process servers designated by Plaintiffs, are
authorized to accompany Plaintiffs’ selected representatives in carrying out any of
the provisions herein.

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IT IS FURTHER ORDERED that no bond is required to be posted by
Plaintiffs.
IT IS FURTHER ORDERED that Plaintiffs shall be responsible for
all costs and liabilities stemming from damages to the franchise locations and its
fixtures occasioned by Plaintiffs’ removal of its Proprietary Marks and/or Trade
Dress.

IT IS SO ORDERED.
DATED: Honolulu, Hawaii, August 23, 2011.

_____________________________
David Alan Ezra
United States District Judge

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Appendix
BASKIN-ROBBINS, Registration No. 1185045, dated January 5, 1982; BASKIN
31 (IN ARC) ROBBINS, Registration No.1783116, dated July 20, 1993; 31,
Registration No. 0796902, dated September 28, 1965; 31 In a Circle Design,
Registration No. 0710670, dated January 31, 1961; 31 in a Circle Design,
Registration No. 1228930, dated March 1,1983; 31 in an Arc Design, Registration
No. 1761925, dated March 30, 1993; 31 Flavors, Trademark, Registration No.
1227721, dated February 15, 1983; 31 Baskin Robbins, Registration No. 2282002,
dated September 28, 1999; Dots Design, Registration No. 1807776, dated
November 30, 1993; and Dots Design, Registration No. 1835784, dated May 10,
1994.
“BR”, “BR Ice Cream Cake Creations”, “Happiness Served Daily”, “Flavor of the
Month” and “31 Flavors”.

Baskin-Robbins Franchising LLC, et. al. v. Morris, et. al., CV No. 10-00758 DAEBMK; EXHIBIT TO ORDER DATED AUGUST 22, 2011 GRANTING
PLAINTIFFS’ INJUNCTIVE RELIEF

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