Bajer Design & Marketing, Inc v. Fab Starpoint LLC et al

Filing 23

MOTION by Plaintiff Bajer Design & Marketing, Inc for judgment Joint Motion For Consent Judgment (Scallan, Stephen)

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IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS

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BAJER DESIGN & MARKTING, INC., a Wisconsin corporation,

Case No.: 08-CV-6655
Judge Gettleman

Plaintiff

v.
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York FAB STARPOINT LLC, a New 7 Corporation, and FASHION ACCESSORY BAZAAR LLC, a New York Corporation,

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10 CONSENT JUDGMENT
11 The Plaintiff, BAjER DESIGN & 1:LARKETING, INC., ("Plaintiff") and the Defendants, FAB
12 STARPOINT LLC and FASHION ACCESSORY BAZAAR LLC. ("Defendants"), having agreed to

13 the entry of this consent judgment, it is ORDERED, ADJUDGED AND DECREED as follows:
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1.

This court has jurisdiction over the subject matter of this action and jurisdiction over both

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the Plaintiff and Defendants.

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2.

judgment is hereby entered in favor of Plaintiff and against Defendants on Phúntiff's
claims of infringement of United States Patent Nos. 5,964, 533 and RE37, 924; trademark
infringement; unfair competition; false designation of origin; common law trademark

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infringement; common law unfair competition; and violation of the Illiois Consumer
Fraud Act.

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3.

Defendants waive all defenses and counterclaims which cOlùd have been raised in this

action including al defenses and counterclaims for inv,ùidity, non-infringement, and/or
unenforceability of the patents-in-siút.

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4.

United States Patent Nos. 5,964,533 and RE37, 924 are valid and enforceable.

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5.

United States Trademark Registrations, Fed. Reg. No. 2,276,917, for the mark POP

OPENcI for use on a "collapsible containers" and Fed. Reg. No. 2,271,373, for the mark
POP-UPS!CID for use on "hampers" are vald and enforceable.

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6.

Plaintiff's claims for damages and attorney fees with respect to trademark infringement,

unf,úr competition, false designation of origin, common law trademark infringement,
common

law untàir competition, and violation of the Illnois Consumer Fraud Act are

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dismissed with prejudice, provided, however, that any such cLúms shall be preserved with

respect to any action by any Defendant after the date of entry of judgment.

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Plaintiff's claims fÒr damages and attorney fees \vith respect to patent infringement are
dismissed with prejudice, provided, however, that any such claims shall be preserved with

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respect to any infringement of the patents-in-suit by either Defendant after the date of
entry of judgment.

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8.

Each party is to bear its own costs and attorney fees.

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9.

Defendants, their officers, agents, serv,ilts, employees, attorneys, and those persons or
entities in active concert or participation with them who receive actual notice of this

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PERMANENT INJUNCTION, are hereby permanently enjoined from making, using,
sellng, offering to sell or importing, or inducing others to make, use, sell, offer to sell, or

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import foldable hampers and collapsible cont,úners that infringe upon at least one claim of
United States Patent Nos. 5,964,533 and RE37,924, including: a "Pop-Up Hamper"

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(Complaint Exhibit 5), absent Defendants purchasing foldable containers from Plaintiff or
Defendants being granted a license by Plaintiff under United States Patent No. 5,964,533

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and United States Patent No. RE37, 924, and Defendants not being in any uncured breach
of the terms or conditions of any such license so granted or purchase made.
2.

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10.

This PERivLANENT INJUNCTION shall reimún in effect until anyone of the following
events occurs: (1) the expiration of

United States Patent No. 5,964,533 and United States

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Patent No. RE37, 924 or (2) all of the cLúms of

United States Patent No. 5,964,533 and

United States Patent No. RE37, 924 are held to be invald by a tînal order of a court of
competent jurisdiction that has not or cannot be appealed. In the event that fe\,ver than all

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of the claims of United States Patent No. 5,964,533 and United States Patent No. RE37,
924 (or claims added during reissue or reexamination of those patents) are cancelled or are

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held invalid or unenforceable in a final order that has not or cannot be appealed, and then
Defendants shall not be precluded from seeking modification of this PERi\-IANENT

INJUNCTION, upon a showing by Defendants of non-infringement of such claims that
rema11.

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Defendants, their oftîcers, agents, servants, employees, attorneys, and those persons or

entities in active concert or participation with them who receive actual notice of this

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PERMANENT INJUNCTION, are also hereby permanently enjoined from using in
commerce any reproduction, counterfeit, copy, or colorable imitation of Plaintiff's
trademarks POP-UPS!(R) ,ind POP OPENtE) including the terms POP UP or POP-UP or

POP-OPEN in connection with the sale, offering for sale, or distribution, or advertising of
foldable hampers and collapsible containers until such time as Defendants can prove that

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Plaintiff has ceased use of its POP-UPS! and POP OPEN trademark or colorable imitation
thereof for a period of three (3) consecutive years, absent Defendants being granted a
license by Plaintiff under its POP-UPS! trademark and Defendants not being in any

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uncured breach of the terms or conditions of any such license so granted.

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12.

This Judgment has been unconditionally accepted by authorized representatives of Plaintiff

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and Defendants.

3.

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The court retains jurisdiction to enforce this Order.

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Entered this

day of

2009.

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UNITED STATES DISTRICT JUDGE

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4.

WE

ASK

FOR TilS:

Counsel for Plaintiff

Josep A. Kromholz Ryan Kromholz & Manion, S. C. P.O. Box 26618 Milwaukee, WI 53226-0618 Telephone [phone] Facsimile [phone]

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uval H. Marcus, Esq.
REISMAN, P.C.

OTTIEB, RACKMAN &
270 Madison Avenue, 8th Floor

New York, NY 10016
Telephone [phone] x241

Facsimile [phone]

An rew Staes

Steven Scallan

:l~

Staes & Scallan, LLC. 111 W. Washington,
Suite 1631

Chicago, IL 60602 Telephone [phone]
Facsimile [phone]

(local counsel for Plaintiffs)

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS

AJER DESIGN & MAKETING, INC.,
a Wisconsin corporation,

Plaintiff
v.

Case No.: 08-CY-6655
Judge Gettleman

BAZAA LLC, a New York Corporation, Defendants.

Corporation, and FASHION ACCESSORY

AB STAROINT LLC, a New York

JOINT MOTION FOR ENTRY OF CONSENT JUDGMENT

The Plaintiff, Bajer Design & Marketing, Inc., ("Bajer") the
Defendants, FAB Starpoint LLC and Fashion Accessory Bazaar LLC, have
agreed to the entry of the consent judgment that is attached to this motion.

Entry of the consent judgment by this court is respectfully requested. And it is so ORDERED.

ENTERED this

day of

, 2009.

UNITED STATES DISTRICT JUDGE