Opinion
No. C 04-1689 CRB.
May 21, 2004
PILLSBURY WINTHROP LLP, CHRISTOPHER R. BALL, PETER M. BRANSTEN, San Francisco, CA, Attorneys for Plaintiff The SF NEWSPAPER COMPANY LLC.
JOSEPH T. ZICHICHI Martinez, CA, Attorneys for Defendants COUNTY NEWS GROUP, INC., CONTRA COSTA EXAMINER, INC. and JOHN FOLBY.
STIPULATED FINAL JUDGMENT
Plaintiff, THE SF NEWSPAPER COMPANY LLC ("SF Newspaper"), and defendants COUNTY NEWS GROUP, INC., CONTRA COSTA EXAMINER, INC. and JOHN FOLEY (collectively, "defendants"), hereby stipulate through their respective counsel as follows:
RECITALS
WHEREAS, SF Newspaper publishes and distributes a newspaper known to the public by the names "San Francisco Examiner" and "The Examiner" (hereinafter the "Examiner Newspaper");
WHEREAS, SF Newspaper is the owner of a federal trademark registration in the name "San Francisco Examiner" and common law trademark rights in the names "San Francisco Examiner" and "The Examiner";
WHEREAS, defendant John Foley is an individual residing in Sonoma County, California;
WHEREAS, defendants County News Group, Inc. and Contra Costa Examiner, Inc., are California corporations with their principal place of business in Martinez, California;
WHEREAS, on April 29, 2004, defendants commenced publication and distribution in Contra Costa County of a tabloid newspaper under the name "Contra Costa Examiner," with defendant Foley acting as the editor and publisher of the paper;
WHEREAS, on April 30, 2004 SF Newspaper commenced this action against defendants, asserting various federal and state law claims, including claims for false designation of origin, trademark dilution, trademark infringement, false advertising and unfair competition;
WHEREAS, defendants have been served with the summons and complaint;
WHEREAS, on April 30, 2004, SF Newspaper filed a motion for a temporary restraining order, seeking an injunction barring defendants from publishing, circulating or distributing any weekly, daily or other newspaper bearing the name "Contra Costa Examiner" in any of the nine Bay Area counties (Alameda, Contra Costa, Marin, Napa, San Francisco, San Mateo, Santa Clara, Solano and Sonoma);
WHEREAS, on May 3, 2004, defendants filed papers in opposition to SF Newspaper's motion for a temporary restraining order;
WHEREAS, the Court heard argument on SF Newspaper's motion for a temporary restraining order on May 4, 2004;
WHEREAS, on May 4, 2004, the Court granted SF Newspaper's motion for a temporary restraining order, finding that defendants' publication of a newspaper under the name "Contra Costa Examiner" will create a likelihood of confusion among the relevant public, and hence irreparable harm, and that SF Newspaper was therefore likely to succeed on the merits of its claims;
WHEREAS, the parties desire to resolve this litigation pursuant to the terms of this Stipulated Final Judgment, as set forth below.
NOW, THEREFORE, based upon the stipulation of the parties, and for good cause shown, it is hereby ORDERED, ADJUDGED andDECREED that final judgment is entered as follows:
1. Defendants, and each of them, along with their officers, agents, servants, employees, representatives, attorneys and all persons in active concert, privity or participation with them, shall be immediately and permanently enjoined and restrained from engaging in, committing, causing or abetting, directly or indirectly, any and all of the following acts:
a) Publishing, circulating or distributing any weekly, daily or other newspaper bearing the name "Contra Costa Examiner" in any of the nine Bay Area counties (Alameda, Contra Costa, Marin, Napa, San Francisco, San Mateo, Santa Clara, Solane and Sonoma);
b) Making any statement, whether spoken, written or otherwise, that any business they own, operate or work in is in any way a part of, associated with, sponsored by or endorsed by SF Newspaper or the Examiner Newspaper;
c) Using any business signage that uses the name "Examiner," "Contra Costa Examiner," "Contra Costa Examiner, Inc." or any other name that incorporates the word "Examiner";
d) Using any business stationery, business cards, work order forms, invoices, business credit cards, or any other business material that bears the name "Examiner," "Contra Costa Examiner," "Contra Costa Examiner, Inc." or any other name that incorporates the word "Examiner";
e) Using any advertising that uses the name "Examiner," "Contra Costa Examiner," "Contra Costa Examiner, Inc." or any other name that incorporates the word "Examiner." Defendants shall forthwith cause the termination and withdrawal from publication of any such advertising. In the event that any such advertising cannot be withdrawn from circulation, defendants are permanently enjoined from renewing said advertising;
f) Attempting to register the name "Examiner," "Contra Costa Examiner" or "Contra Costa Examiner, Inc." in or as any name or trademark. Defendants shall, within ten days of the date of this Stipulated Final Judgment, withdraw and abandon any trademark applications that they have filed which incorporate the term "Examiner," including that U.S. Application Ser. No. 78/407520, filed by defendants on or about April 24, 2004;
g) Using the name "Examiner," "Contra Costa Examiner" or "Contra Costa Examiner, Inc." or any other name that incorporates the word "Examiner" to identify any entity, business or company that is in any way involved in publishing, circulating or distributing a newspaper of any kind in any of the nine Bay Area counties (Alameda, Contra Costa, Marin, Napa, San Francisco, San Mateo, Santa Clara, Solano and Sonoma), except only as follows:
(i) It shall not be a violation of this Stipulated Final Injunction for defendants to possess those previously-printed share certificates bearing the name "Contra Costa Examiner, Inc.," provided, however, that upon such time as any such certificate is submitted to the company or its transfer agent (whether in connection with a transfer or otherwise), the certificate as re-issued shall not bear the word "Examiner"; and
(ii) Defendants shall, within thirty (30) days from the date of this Stipulated Final Judgment, cause the corporate name "Contra Costa Examiner, Inc." to be changed to some other name that does not use the name "Examiner." Pending that 30-day period, it will not constitute a violation of this Stipulated Final Judgment for defendants to use those previously pre-printed checks that bear the name "Contra Costa Examiner, Inc.," provided, however, that upon the change of the name from "Contra Costa Examiner, Inc." to some other name, defendants will immediately cease using checks that bear the name "Contra Costa Examiner, Inc." and will cause any such remaining, unused checks to be destroyed. In addition, within the 30-day period following this Stipulated Final Judgment, defendants shall cause all other filings with any governmental agency bearing the name "Contra Costa Examiner, Inc." to be amended to reflect the new name of the company.
2. SF Newspaper shall take no other relief or recovery by its complaint in this action; and
3. Each party shall bear its own attorneys' fees and costs.
4. This Court retains jurisdiction to enforce this Stipulated Final Judgment, and to resolve any disputes arising thereunder.