Board of Commissioners of The Port of New Orleans v. Stern et al

Filing 65

ORDER GRANTING 63 Motion for Entry of Stipulated Permanent Injunction as set forth in document. Signed by Judge Ivan L.R. Lemelle on 3/9/2017. (mmv)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF LOUISIANA
THE BOARD OF COMMISSIONERS
OF THE PORT OF NEW ORLEANS

CIVIL ACTION
NO. 15-6527

VERSUS
MARK STERN, ET AL.

SECTION “B”(3)
ORDER

Considering

the

foregoing

“Joint

Motion

for

Entry

of

that

the

Stipulated Permanent Injunction” (Rec. Doc. 63),
IT

IS

ORDERED

that

the

Motion

is

GRANTED

and

following stipulation be entered:
WHEREAS, Plaintiff The Board of Commissioners of the Port of
New Orleans (hereinafter “Port”) and Defendants Mark Stern and
Grubb

Young

&

Co.

(hereinafter

collectively

“Defendants”),

referred to collectively as the “Parties,” desire to resolve this
litigation in its entirety, conserve judicial resources, and avoid
further expense, uncertainty, and inconvenience, amongst other
burdens associated with prolonged litigation, and pursuant to the
Parties’ compromise as acknowledged by the Court and the executed
settlement agreement arising therefrom, hereby stipulate to the
entry of this Stipulated Permanent Injunction against Defendants;
and
WHEREAS, in exchange for the dismissal of the above-captioned
action

on

the

merits,

Defendants

shall

make

an

agreed

upon

compensatory payment and be subject to the stipulated permanent
injunction, as outlined herein.
NOW THEREFORE, IT IS HEREBY STIPULATED AND AGREED by the Port
and Defendants:
1. “Port

of

New

Orleans

Marks”

hereinafter

refers

to

any

trademark and/or service mark, and the goodwill associated
therewith,
accompanying

wherefrom
right

the

in,

Port

or

right

holds
to

or
use

may
or

hold

to

any

exploit,

including without limitation the Port’s numerous federal
service mark and trademark registrations incorporating the
text “PORT OF NEW ORLEANS,” including the designs as depicted
below, in addition to any other mark whereby the Port obtained
or may obtain common law rights thereon, and any registration
that may arise therefrom.

2. The Port of New Orleans Marks are valid and enforceable, and
the Port is obligated to protect its rights thereto.
3. This United States District Court for the Eastern District of
Louisiana is the proper forum for the above-captioned action

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as this Court is the proper venue and may properly exercise
jurisdiction over the Parties and the subject matter at issue.
4. The Port accordingly and appropriately brought claims under
federal, state, and common law against Defendants in the
above-captioned action, pursuant to Sections 32 and 43 of the
Lanham Act, codified as 15 U.S.C. §§ 1114 and 1125, state
statutory law, including

LA. REV. STAT. 51:1401, et seq., and

LA. REV. STAT. 51:223.1, and common law as related to trademark
infringement, in consequence of the actionable conduct of
Defendants, including as alleged their registration and use
of the online domain name, [www.portofneworleansparking.com],
and conduct of advertising, marketing, and promoting parking
services bearing Port of New Orleans Marks, constituting as
trademark infringement, unfair competition, and dilution of
the Port of New Orleans Marks.
5. Entry and enforcement of this Stipulated Permanent Injunction
against Defendants is therefore within the authority of this
Court, as it will achieve the purposes of the Lanham Act,
State of Louisiana law, and common law as related to trademark
infringement.
6. Consequently, Defendants, along with their officers, agents,
servants,

employees,

representatives,

successors

and

assignees, and all other persons or entities acting in concert
or participation with them as provided in FED. R. CIV. P. 65,
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shall

be

and

are

each

hereby

PERMANENTLY

ENJOINED

and

RESTRAINED from:
a. Using the Port of New Orleans Marks in connection with any
advertising, including any online or offline advertisement
or promotion of Defendants’ goods and/or services or any
of

its

clients’

or

customers’

goods

and/or

services,

whether it is initiated by Defendants or whether it is
created

on

Defendants’

behalf

or

on

the

behalf

of

Defendants’ clients or customers, and including without
limitation use of key words or search terms to influence
or monitor internet searches, links, or advertisements,
and including the generation of “impressions” in response
to the use by consumers of certain words in internet
searches to publish advertisements to those consumers;
b. Using the Port of New Orleans Marks in connection with any
sale of any goods and/or services;
c. Using

on

or

advertisement,

in

connection

promotion,

with

the

displaying

manufacture,
for

sale,

distribution of any articles or merchandise, advertising
of services or for any purpose whatsoever, the designation
“Port of New Orleans” in any context including, inter alia,
a

context

indicative

of

transportation,

parking services in commerce;

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storage,

and

d. Representing

by

any

means

whatsoever,

directly

or

indirectly, or doing any other acts or things calculated
or

likely

to

cause

confusion,

mistake

or

to

deceive

consumers into believing that the Defendants’ services
originated with or are the services of the Port, or that
there is any affiliation or connection between the Port
and

Defendants

or

their

products

and

Defendants

will

refrain from otherwise unfairly competing with the Port,
including using on or in connection with the production,
manufacture,
displaying

advertisement,
for

sale,

domain

offering

for

name,
sale,

promotion,
sale,

or

distribution of any articles of merchandise or service, or
for any purpose whatsoever, the mark “Port of New Orleans”
in commerce;
e. Using any mark in a manner as to dilute the distinctive
quality of the Port of New Orleans Marks without written
consent from the Port; and
f. Applying for registration of any trademark or service mark
or domain containing the designation “Port of New Orleans”.
7. The Court shall retain jurisdiction to entertain and resolve
such future disputes and proceedings and to enter such further
orders as may be appropriate to implement and/or enforce the
provisions of this Stipulated Permanent Injunction, whereupon
proof of any violation, the Court shall be authorized to
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enjoin any future violation, award damages, and other relief
available at law or in equity, including the recovery of
reasonable

attorney’s

fees

and

costs

associated

with

correcting such violation.

New Orleans, Louisiana, this 9th day of March, 2017.

___________________________________
SENIOR UNITED STATES DISTRICT JUDGE

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