Shakopee Mdewakanton Sioux Community v. Templeton Gaming Corporation et al.,

Filing 89

FINAL JUDGMENT and PERMANENT INJUNCTION. See Judgment for details. Signed by Judge James C. Mahan on 7/25/11. (Copies have been distributed pursuant to the NEF - MMM)

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LIONEL, SAWYER, & COLLINS
Rodney M. Jean, Nev. Bar #1395
1700 Bank of America Plaza
300 S. Fourth Street
Las Vegas, NV 89101
Direct Dial: 702-383-8830
Fax: [phone]
[e-mail]

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ATTORNEYS FOR PLAINTIFF
SHAKOPEE MDEWANKANTON SIOUX COMMUNITY

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UNITED STATES DISTRICT COURT
DISTRICT OF NEVADA
SHAKOPEE MDEWAKANTON SIOUX
COMMUNITY,
a Federally Recognized Indian Tribe

)
)
Case No. 2:10-cv-00010 (JCM-RJJ)
)
)
Plaintiff,
)
vs.
) [PROPOSED] FINAL JUDGMENT AND
)
PERMANENT INJUNCTION
FBCV, LLC, a Nevada Limited Liability
)
Company; KEN TEMPLETON, Trustee of
)
the Templeton Gaming Trust, a Nevada Trust; )
TEMPLETON GAMING CORPORATION, a )
Nevada Corporation; and TEMPLETON
)
DEVELOPMENT CORPORATION, a
)
Nevada Corporation
)
)
Defendants.
)

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On June 29, 2011 the Court entered an Order [Docket No. 86] granting Plaintiff

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SMSC’ motion for summary judgment on the issue of trademark infringement and
s

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injunctive relief. “
Injunctive relief is the remedy of choice for trademark and unfair

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competition cases, since there is no adequate remedy at law for the injury caused by

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defendant's continuing infringement.” Bellagio v. Denhammer, 2001 WL 34036599, *6

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(D. Nev. July 10, 2001)(citing Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175

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(9th Cir.1988); 15 U.S.C. § 1116; Blumenfeld Dev. Corp. v. Carnival Cruise Lines, Inc.,
669 F.Supp. 1297, 1321 (E.D. Pa., 1987) (“
Injunctions are appropriate in trademark cases

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where the reputation of the senior user ‘ left to the mercy of the junior user, whose
is

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business policies may not reflect the same sound judgment.’).
”

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A party seeking a permanent injunction must demonstrate: (1) that it has suffered
an irreparable injury; (2) that remedies available at law, such as monetary damages, are

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inadequate to compensate for that injury; (3) that, considering the balance of hardships
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between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the

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public interest would not be disserved by a permanent injunction. Kerzner Int’ Ltd. v.
l.

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Monarch Casino & Resort, Inc., 675 F.Supp.2d 1029, 1045 (D.Nev. 2009)(citing eBay

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Inc. v. MercExchange, L.L.C., 547 U.S. 388, 391 (9th Cir. 2006).

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1.

Irreparable Harm

“ the trademark context, ‘
In
once the plaintiff establishes a likelihood of
confusion, it is ordinarily presumed that the plaintiff will suffer irreparable harm if

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injunctive relief is not granted.’ Id. (citations omitted); (see also Brookfield Comm. Inc.
”
v. West Coast Ent. Corp, 174 F.3d 1036, 1066 (9th Cir. 1999); Caesars World, Inc. v.

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Milanian, 247 F.Supp.2d 1171, 1205 (D. Nev. 2003) (“
Having concluded that Plaintiffs

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have succeeded on proving infringement, the Court need not address the issue of

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irreparable harm . . . once trademark infringement is established through a showing of a

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likelihood of confusion, irreparable injury is presumed.” Competition Specialties, Inc.
);

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v. Competition Specialties, Inc., 2004 WL 94026, *2 (9th Cir. Jan. 20,

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2004)(injunctive relief is the “
remedy of choice”for trademark infringement, and
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“
there is no adequate remedy at law for the injury”
).
The Court has concluded that confusion is likely. This factor weighs in favor of a
permanent injunction.

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2.

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Where a plaintiff has “
established that they have invested millions of dollars

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Balance of the Equities

promoting [its] marks . . . the balance of the equities weighs in favor of enjoining

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defendant[s] from further unlawful use.” Milanian, 247 F.Supp.2d at 1205.
Plaintiff asserts that it has invested millions of dollars and many years in

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maintaining and protecting the name Mystic Lake, Mystic, and all of the Mystic family of

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marks. The Defendants have not attempted to rebut this evidence. Accordingly, the

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Court concludes that this factor favors a permanent injunction.

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3.

The Public Interest

“ important factor in protecting trademarks is to avoid consumer confusion,
An

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which is in the public interest.”Milanian, 247 F.Supp.2d at 1205. “ is in the public
It

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interest not to allow [defendant] to mislead the public into thinking that the services

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offered by [defendants] are somehow related to the Plaintiffs when in fact they are not.

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Enjoining defendants from further display or future use of the marks is necessary to

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prevent consumer confusion.” Id. The Court has concluded that confusion is likely.

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This factor weighs in favor of a permanent injunction. Accordingly, IT IS HEREBY

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ORDERED ADJUDGED AND DECREED that, pursuant to 15 U.S.C. § 1116,

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Defendants, their successors, officers, parents, subsidiaries, affiliates, agents, assigns

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and employees, and anyone acting in concert with or at the behest or direction of
Defendants, jointly and severally, are hereby PERMANENTLY ENJOINED AND
RESTRAINED from the following:

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(a)

Distributing, displaying, marketing, promoting, offering for sale, and/or

selling any goods or services using the mark Mystic Lodge Casino, or any other

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phrase, slogan, or business name that incorporates the word “
Mystic”(a “
Mystic
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Mark”
);
(b)

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Affixing a Mystic Mark to any product, advertisement, point of sale

material, interior/exterior signage or other promotional material;

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(c)

Disseminating any product, advertisement, point of sale material,

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signage or other promotional material containing or incorporating a Mystic Mark;
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(d)

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Mystic Mark; and

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(e)

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Registering any domain name which includes the word “
mystic”or any

Registering and/or applying for any trademark registration for a Mystic

Mark.

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IT IS FURTHER ORDERED that, within sixty (60) days of the date this Order

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becomes effective, Defendants their successors, officers, parents, subsidiaries,

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affiliates, agents, assigns and employees, and anyone acting in concert with or at the

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behest or direction of Defendants, shall remove from any Internet website all

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references to Mystic Lodge Casino and/or any other Mystic Mark.

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IT IS FURTHER ORDERED that, within sixty (60) days of the date this Order

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becomes effective, Defendants shall submit all necessary papers to complete a

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transfer of all Internet domain names which include the Mystic Lodge Casino mark,

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any Mystic Mark, or any variation thereof, to SMSC.

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IT IS FURTHER ORDERED that, within sixty (60) days of the date this Order

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becomes effective, Defendants shall provide written confirmation to counsel for

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SMSC that neither they nor their successors, officers, parents, subsidiaries, affiliates,

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agents assigns and employees, and anyone acting in concert with or at the behest or

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direction of Defendants, are displaying the mark Mystic Lodge Casino or any Mystic

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Mark.

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July 25
Dated: _________, 2011

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__________________________
United States District Judge

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Dated: July 18, 2011

FAEGRE & BENSON LLP
By: s/ Timothy J. Cruz
Jonathan W. Dettmann
Timothy J. Cruz
2200 Wells Fargo Center
90 South Seventh Street
Minneapolis, MN 55402
Tel.: [phone]
Fax: [phone]
[e-mail]
LIONEL, SAWYER, & COLLINS
Rodney M. Jean, Nev. Bar #1395
1700 Bank of America Plaza
300 S. Fourth Street
Las Vegas, NV 89101
Direct Dial: 702-383-8830
Fax: [phone]
[e-mail]
ATTORNEYS FOR PLAINTIFF
SHAKOPEE MDEWAKANTON
SIOUX COMMUNITY

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