Opinion
2:20-cv-03503-CBM (RAOx)
03-28-2024
INTERNATIONAL MEDICAL DEVICES, INC.; et al., Plaintiffs, v. ROBERT CORNELL, MD, an individual; et al., Defendants.
PERMANENT INJUNCTION
CONSUELOB.MARSHALL, UNITED STATES DISTRICT JUDGE
The Court having granted Plaintiffs' Motion for a Permanent Injunction issues the following injunction:
1. For a period of five (5) years upon entry of this Permanent Injunction, Defendants Robert J. Cornell; Cornell P.A; Augmenta, LLC; Augmenta Investors, LLC; Cornell Cosmetic Urology, LLC; David Louis Nichols; Huck Medical Technologies, Inc.; Hans Mische; Hans Mische, LLC; Run Wang, M.D.; and Richard B. Finger, and their members, officers, directors, agents, servants, successors, licensees, partners and employees, shall be and hereby are, effective immediately, permanently enjoined, without the prior written authorization or consent from Plaintiffs, from using, licensing, selling, exploiting, commercializing, promoting, marketing, advertising, publishing, and/or profiting from any of the following trade secrets:
a. The incorporation of internal pockets or voids of space within the silicone body of a cosmetic penile silicone implant to add softness and elasticity.
b. The incorporation of mesh tabs embedded in or around the distal tip of a cosmetic penile implant to facilitate tissue ingrowth.
c. The use of absorbable sutures as part of the cosmetic silicone penile implant procedure paired or in combination with mesh tabs embedded in and around the distal tip of the implant to hold the implant.
d. A particular list of instruments and materials used to perform the surgical method associated with the placement of a cosmetic penile implant referred to as the Penuma Instrument and Supply List.
2. For a period of ten (10) years beginning upon entry of this Permanent Injunction, Defendants Cornell, Mische, and Nichols and their members, officers, directors, agents, servants, successors, licensees, partners and employees, shall be and hereby are, effective immediately, enjoined from infringing, by unauthorized use, and inducing copyright infringement, by unauthorized use or any other means, of any of Plaintiff James Elist, M.D.'s exclusive rights in his registered copyrighted work entitled “Penile Enlargement Surgical Animation Video” including but not limited to direct copyright infringement, inducement to infringe copyrights, contributory copyright infringement, and vicarious copyright infringement.
3. For a period of ten (10) years beginning upon entry of this Permanent Injunction, Defendants Cornell and Cornell P.A., and their members, officers, directors, agents, servants, successors, licensees, partners and employees, effective immediately, enjoined from any unauthorized use of the Penuma Mark and are further enjoined from infringing or from inducing infringement, by any means, of any of the exclusive rights in the registered Penuma Mark owned and possessed by Plaintiff Menova, under the Lanham Act. The conduct enjoined includes, but is not limited to, direct trademark infringement, trademark counterfeiting, inducement to infringe trademarks, contributory trademark infringement, and vicarious trademark infringement.
4. For a period of ten (10) years from the date of entry of this Permanent Injunction, Defendants are enjoined from engaging in the following conduct:
a. Referencing, mentioning, promoting, advertising, marketing, and/or using the Penuma Mark in commerce, including but not limited to, on any website or social media or network; and
b. Acting in a way likely to cause confusion, mistake, or deception on the part of consumers as to the origin, ownership, or sponsorship of Penuma.
5. Violation of this Permanent Injunction shall expose Defendants and all other persons bound by this Permanent Injunction to all applicable penalties, including sanctions and contempt of Court.
6. The lifting of this Permanent Injunction is conditioned upon full payment of the damages ordered by this Court in the Order re Motion for Award of Reasonable Royalties, Disgorgement, Statutory Damages, Prejudgment Interest, and Exemplary Damages.
7. This Court shall retain jurisdiction to modify and/or enforce this Permanent Injunction, which may also be enforced by any other court of competent jurisdiction.
IT IS SO ORDERED.