Opinion
5:21-cv-00320-JWH-SPx
06-20-2022
SEIKO EPSON CORPORATION; and EPSON AMERICA, INC., Plaintiffs, v. THOMAS NELSON dba Seller Account TM Nelsons; GANTER dba Seller Account Gantery; KATERYNA STOHNII; SVITLANA SHMATKOVA; VALERII TKACHUK; and DOES 4-10, inclusive, Defendants.
JUDGMENT
JOHN W. HOLCOMB UNITED STATES DISTRICT JUDGE
Pursuant to the “Order Granting Plaintiffs' Motion for Default Judgment [ECF No. 50]” (the “Order”) entered substantially contemporaneously herewith, and in accordance with Rule 55(b) of the Federal Rules of Civil procedure, It is hereby ORDERED, ADJUDGED, and DECREED as follows:
1. This Court has jurisdiction over the parties to this action and over the subject matter hereof pursuant to the provisions of the Lanham Act, 15 U.S.C. § 1051, et seq., as well as 28 U.S.C. §§ 1331 and 1338(a).
2. Service of process was properly made on Defendants Thomas Nelson d/b/a Seller Account TM Nelsons, Ganter d/b/a Seller Account Gantery, Kateryna Stohnii, Svitlana Shmatkova, and Valerii Tkachuk (collectively “Defendants”), and each of them.
3. Defendants Does 4-10 are DISMISSED.
4. Plaintiffs Seiko Epson Corporation (“SEC”) and Epson America, Inc. (jointly, “Plaintiffs”) are the owners of all rights in and to trademark registrations, including, but not limited to, the trademarks that are the subject of the registrations listed in Exhibit A (collectively, “Plaintiffs' Trademarks”), attached hereto.
5. Defendants are using Plaintiffs' Trademarks or marks confusingly similar to Plaintiffs' Trademarks, in connection with the importation, manufacture, distribution, sale, and offer for sale of ink, ink cartridges, and ink bottles using identical, unauthorized reproductions or substantially similar copies of registered trademarks owned by Plaintiffs (the “Infringing Product”).
6. Defendants have intentionally and falsely advertised their Infringing Product, which consisted of counterfeit, used, expired, near expired, or Initial Cartridges for re-sale in the United States in counterfeit retail box packaging, in interstate commerce as being new and/or genuine product, which were material statements of fact that actually deceived or had the tendency to deceive the public, thereby injuring Plaintiffs.
7. Defendants and their agents, servants, employees, and all persons in active concert and participation with them who receive actual notice of the injunction are hereby restrained and enjoined from infringing Plaintiffs' Trademarks, either directly or contributorily, in any manner, including generally, but not limited to, manufacturing, reproducing, importing, advertising, selling, and/or offering for sale any unauthorized product that features any of Plaintiffs' Trademarks, and, specifically:
“Persons in active concert and participation” includes but is not limited to Amazon.com, internet search engines that identify Defendants' websites, Seller Accounts, or other seller accounts, in response to searches for Plaintiffs' Trademarks (either through paid or non-paid listings), payment provider services that provide payment services to Defendants or their websites or seller accounts, web hosts that host content for Defendants or their websites or seller accounts, and registrars that hold domain names for Defendants or their websites.
a. importing, manufacturing, distributing, advertising, selling, and/or offering for sale the Infringing Product or any other unauthorized products that picture, reproduce, copy, or use the likenesses of or bear a substantial similarity to any of Plaintiffs' Trademarks;
b. importing, manufacturing, reproducing, distributing, advertising, selling, and/or offering for sale in connection thereto any unauthorized promotional materials, labels, packaging, or containers that picture, reproduce, copy, or use the likenesses of or bear a confusing similarity to Plaintiffs' Trademarks;
c. engaging in any conduct that tends falsely to represent that, or that is likely to confuse, mislead, or deceive purchasers, Defendants' customers, and/or members of the public to believe that, the actions of Defendants or their Seller Accounts, the counterfeit products, and related merchandise manufactured, sold, and/or offered for sale by Defendants or
their Seller Accounts, or Defendants or their Seller Accounts themselves are connected with Plaintiffs, are sponsored, approved, or licensed by Plaintiffs, or are affiliated with Plaintiffs;
d. affixing, applying, annexing, or using in connection with the importation, manufacture, distribution, advertising, sale, and/or offer for sale or other use of any goods or services, a false description or representation, including words or other symbols, tending falsely to describe or represent such goods as being those of Plaintiffs;
e. secreting, destroying, altering, removing, or otherwise dealing with the Infringing Product or any books or records that may contain any information relating to the importing, manufacturing, producing, distributing, circulating, selling, marketing, offering for sale, advertising, promoting, or displaying of all unauthorized products that infringe any of Plaintiffs' Trademarks;
f. aiding, abetting, contributing to, or otherwise assisting anyone from infringing upon Plaintiffs' Trademarks; and g. engaging in any of the aforesaid prohibited activities over the Internet.
8. Amazon and/or Amazon.com, and any other third-party service provider in privity with Defendants with actual notice of this Order shall, within two (2) business days of their receipt of this Order, disable, terminate, and block any accounts used by Defendants, including accounts related to Defendants, that offer or sell counterfeit or infringing goods using Plaintiff's Trademarks, and provide to Plaintiffs all identifying and contact information for such accounts, all sales history, and all associated financial information, as well as all addresses used for the return of product by such accounts.
9. Defendants are ORDERED to deliver for destruction all Infringing Product, as well as any parts, labels, signs, prints, packages, dyes, wrappers, receptacles, and advertisements relating thereto in their possession or under their control bearing any of Plaintiffs' Trademarks or any simulation, reproduction, counterfeit, copy, or colorable imitations thereof, and all plates, molds, heat transfers, screens, matrices, and other means of making the same.
10. Pursuant to 15 U.S.C. § 1117, Plaintiffs shall have JUDGMENT in their favor, and against Defendants, jointly and severally, in the amount of Six Million Three Hundred Thousand U.S. Dollars ($6,300,000).
11. Defendants are ORDERED to pay interest on the principal amount of the judgment to Plaintiffs at the statutory rate pursuant to 28 U.S.C. § 1961(a).
12. Title and ownership of the items seized and currently stored pursuant to the Temporary Restraining Order; Order to Show Cause re Issuance of Preliminary Injunction; Order Restraining Transfer of Assets; Order for Disclosure of Information and Order for Alternative Service entered on March 2, 2021 (the “TRO”), and the Preliminary Injunction entered on March 31, 2021 (the “Preliminary Injunction”), including approximately 1770 units of alleged “Epson” products, are transferred and released to Plaintiffs forthwith.
13. All monies currently restrained pursuant to the TRO and the Preliminary Injunction are transferred and released to Plaintiffs immediately as partial payment of the damages awarded herein, including title and ownership in the amount of $32,649.65 received from Amazon from Defendants' Seller Accounts.
See Order Sealing File Pending Hearing on Order to Show Cause [ECF No. 12]; Default by Clerk [ECF No. 48].
14. Until the Judgment is satisfied in full, Plaintiffs may serve this Order on any bank, financial institution, or financial service provider (e.g., PayPal, Payoneer, First Century Bank, etc.) currently known or later discovered to be used by any of Defendants or that hold any monies for any of Defendants, who must:
a. within two (2) business days, locate all accounts owned, maintained, or connected to Defendants or their Seller Accounts;
b. within two (2) business days, restrain and enjoin such accounts from transferring or disposing of any monies or assets; and c. within ten (10) business days, release all monies or assets restrained in Defendants' accounts to Plaintiffs as partial payment of the damages awarded herein.
15. The $5,000 cash bond deposited by Plaintiffs on March 3, 2021, is hereby exonerated and any funds provided in connection therewith shall be returned to Plaintiffs by wire or check made payable to the order of “Wang Law Corporation, Trust Account.”
16. Plaintiffs are ORDERED forthwith to serve a copy of the Order and this Judgment on Defendants, and each of them, by overnight delivery, by U.S. Mail (return receipt requested), by email, or by any other means likely to accomplish delivery. Plaintiffs are further ORDERED to file a declaration detailing their efforts to accomplish such service within 72 hours thereafter.
17. The Court shall retain jurisdiction of this action to entertain such further proceedings and to enter such further orders as may be necessary or appropriate to implement and to enforce the provisions of this Judgment and any orders of this Court.
18. Other than potential post-judgment remedies (including those provided in Rule 54(d) of the Federal Rules of Civil Procedure), to the extent that any party requests any other form of relief, such request is DENIED.
IT IS SO ORDERED.
EXHIBIT A
SEC's TRADEMARKS
Trademark Registration Number Date of Registration Class(es) of Goods EPSON 1,134,004 4/29/1980 9 EPSON 2,144,386 3/17/1998 2, 9 and 16 EPSON 2,949,374 5/10/2005 16 EPSON 3,092,025 5/16/2006 9 EPSON 3,520,274 10/21/2008 9 3,448,351 6/17/2008 2, 9 and 16 (Image Omitted) 3,875,333 11/16/2010 2, 9, 16 and 40 CLARIA 3,428,711 5/13/2008 2 DURABRITE 2,644,235 10/29/2002 2 ECOTANK 4,875,047 12/22/2015 2 and 9 ULTRACHROME 4,265,246 12/25/2012 2 (Image Omitted) 5,402,648 2/13/2018 2 (Image Omitted) 5,514,446 7/10/2018 2