Opinion
Case No.: 11-CV-01266 GHK (OPx)
08-17-2011
Christopher E. Talavera, an individual, formerly doing business as Turnkey Web Tools; and Turnkey Web Tools, Inc., a California corporation. Plaintiffs, v. E-HARBOR INC., a Utah corporation; MARKETECTURE, INC., a Delaware corporation, E-PRO STORES, LLC, a Delaware Limited Liability Company, and DOES 1 through 10, inclusive. Defendants
Stephen L. Anderson (CBN 150860) ANDERSON & ASSOCIATES Attorney for Plaintiffs
Stephen L. Anderson (CBN 150860)
ANDERSON & ASSOCIATES
Attorney for Plaintiffs
CONSENT DECREE AND PERMANENT INJUNCTION; AND ORDER
Hon. George H. King
Plaintiffs CHRISTOPHER E. TALAVERA, and TURNKEY WEB TOOLS, INC., a California corporation (hereinafter "Plaintiffs") and Defendants E-HARBOR INC., a Utah corporation; MARKETECTURE, INC., a Delaware corporation, and E-PRO STORES, LLC, a Delaware Limited Liability Company, respectively, having consented to entry of this Consent Decree and Permanent Injunction, the following Findings of Fact are made and it is hereby ORDERED, ADJUDGED AND DECREED as follows:
STIPULATED FACTS
Plaintiff and Defendants, as well as their agents, servants, employees, attorneys, successors and assigns, and all those persons in active concert or participation with them hereby stipulate to the following facts as true and correct:
A. This case arises under the Copyright Act, 17 U.S.C. §§ 101, et. seq.; and the Lanham Act, 15 U.S.C. §1051, et seq., and related state laws, and this Court has jurisdiction over the subject matter and over each of the parties to this action by virtue of 15 U.S.C. §1121 and 28 U.S.C. §§1331 and 1338(a).
Plaintiff, CHRISTOPHER E. TALAVERA, is an individual residing in California and Plaintiff TURNKEY WEB TOOLS, INC, is a California corporation doing business in this judicial district.
Defendant E-HARBOR INC., is a Utah corporation.
Defendant MARKETECTURE, INC., is a Delaware corporation.
Defendant E-PRO STORES, LLC, is a Delaware Limited Liability Company.
Each of the respective Defendants maintain their respective principal place(s) of business in the State of Utah, (collectively, "Defendants").
The claims arising under state statutory and common law unfair competition are joined with substantial and related claims pursuant to 28 U.S.C. §§1338(b) and 1367(a). Venue is proper in this district by virtue of 28 U.S.C. §1391(b), (c) and 1400(a), in that the Defendants are respectively corporations and a limited liability company subject to personal jurisdiction in this district and, thus, reside here.
B. Plaintiff, CHRISTOPHER E. TALAVERA, ("Mr. Talavera") wrote a computer source code and online shopping cart software program entitled: "SunShop," (alternatively entitled: SunShop Shopping Cart") (hereinafter "SunShop"). As fixed in its various tangible media, Mr. Talavera's SunShop source code, computer program and resulting screen displays and features constitute copyrightable subject matter under the laws of the United States. The Copyright Act (17 U.S.C. § 201(a)) gives initial ownership to the author who creates any such work.
Between January 1, 2001 and February 20, 2004, and continuing through the present date, Mr. Talavera engaged in business under the fictitious name "Turnkey Web Tools and secured the exclusive rights and privileged in and to the copyright of his original SunShop computer program and source code. As prima facie evidence of Mr. Talavera's ownership of the work, the parties incorporate herein, Exhibit 1, a true copy of copyright registration certificate no. TX 5-896-387 from the United States Copyright Office in the name of Mr. Talavera which bears the registration date of February 20, 2004.
Plaintiff, TURNKEY WEB TOOLS, INC. (hereinafter "TWT, Inc.") is a corporation duly organized and existing under the laws of the State of California, From June 11, 2003, and continuing to the present, Plaintiff, Turnkey Web Tools, Inc., is, and has been the exclusive distributor, and copyright and license administrator for SunShop.
From on or about January 1, 2001, and continuing through on or about June 11, 2003, while doing business under the trade name and trade mark "Turnkey Web Tools," Mr. Talavera published and distributed his SunShop software program and source code to the public, subject to the applicable terms of the then-in-effect license agreement related thereto, and all copies made by Plaintiff or under his authority or license have been published in strict conformance of all laws governing copyright.
Since its incorporation in 2003, and continuing to the present, TWT, Inc. has been authorized by Mr. Talavera as the exclusive copyright and license administrator for the SunShop program and as the exclusive distributor of the SunShop work. Further, since some time in June 2003, TWT, Inc. has distributed the SunShop program and source code to the public under the authority of Mr. Talavera, subject to the respective terms of the applicable license agreement(s).
The SunShop Copyright registered under Certificate No. TX 5-896-387 is valid and enforceable for purposes of this Consent Decree only.
C. On February 10, 2011, Plaintiffs filed its lawsuit against Defendants in the case entitled, Christopher E. Talavera, et.al. v. E-HARBOR INC., et.al; Case No.: 11-CV-01266 GHK (OPx) ("Action")
In the Action, Plaintiffs alleged that the Defendants' actions infringe Plaintiffs' rights and constitute violations of the law including Federal Copyright Infringement, Violation of the Lanham Act, Unfair Competition and Unjust Enrichment.
D. Plaintiffs assert that they have no adequate remedy at law and the alleged harm to Plaintiffs and to the public outweighs the harm to the legitimate interests of Defendants.
E. The parties desire to the avoid the cost and expense of trial and to resolve the referenced disputes in a business-like fashion, but intend that the Court retain continuing jurisdiction in the event of the breach of the settlement agreement between the parties relating to this case (the "Settlement Agreement") or other need for judicial interpretation thereof.
In accordance with the Settlement Agreement, and except as otherwise agreed therein the parties hereto stipulate and agree to the entry of a permanent injunction in the form set forth below.
It is further hereby ORDERED, ADJUDGED, and DECREED:
PERMANENT INJUNCTION
Defendants, as well as their respective affiliates, agents, servants, employees, subsidiaries, divisions, officers, directors, licensees, successors and assigns, and all those persons in active concert or participation with any one of them, directly or through any corporation, subsidiary, division, website, or other device, who receive actual notice of this Order by personal service or otherwise, are hereby permanently enjoined from engaging in, committing, or performing, directly or indirectly, all of the following acts:
a. The unlicensed use of Plaintiff's copyrighted computer program and/or source code and any and derivatives thereof as defined by the Copyright Act and identified as SunShop and/or SunShop Shopping cart -- U.S. Copyright Reg. No. TX 5-896-387, unless and until such Defendant(s) is/are specifically authorized in writing and are duly licensed by Plaintiffs to engage in such conduct;
b. Defendants shall refrain from all unlicensed use, display, reproduction and sale of SunShop and all of its derivatives as defined by the Copyright Act and Lanham Act.
c. Committing any acts calculated or intended to cause purchasers to believe falsely that any of Defendants' products or services are associated with, sponsored by, approved by, guaranteed by, connected with or produced under the control and supervision or within the authority of the Plaintiffs.
d. The Parties agree that the United States District Court for the Central District of California (hereinafter the "Court"), shall have sole and exclusive jurisdiction to enforce the terms of this Decree, and agree that they will present any disputes thereunder, including without limitation, any claims for breach or enforcement of this Decree and/or the Settlement Agreement, exclusively to the Court. Each of the Parties consents to the jurisdiction of the Court, consent to the jurisdiction of the United States Magistrate Judge and/or the United States District Court Judge, acknowledges that the Court has jurisdiction over this Decree, and that the Court shall retain jurisdiction for the purposes of implementing and enforcing the terms hereof.
In the event that any Party fails to comply with this Decree the breaching Party shall pay all reasonable attorneys' fees, costs, and expenses incurred by the non-breaching Party relating to enforcement of thereof.
PAYMENT
Defendants collectively shall pay the amount of One Hundred and Fourteen Thousand Dollars ($114,000.00) which shall be payable and delivered to "Anderson & Associates" according to the following Payment Plan ("Payment Plan"):
a. On or before August 20, 2011, Defendants shall pay the sum of four thousand dollars ($4,000.00) ;
b. On or before August 20, 2011, and continuing on the thirtieth (30th) day of each and every consecutive month thereafter, through and including December 30, 2011, Defendants shall, collectively, pay the sum of Ten Thousand Dollars ($10,000.00.);
c. On or before January 20, 2011, Defendants shall, collectively, pay the sum of Ten Thousand Dollars ($10,000.00.)
d. Each such payment shall be tendered by wire, money order or cashier's check, for a total of seven months to Stephen L. Anderson Attorney/Client Trust Account c/o Anderson & Associates 27247 Madison Avenue, Suite 121, Temecula, CA 92590. Defendants shall have a grace period of ten (10) days to cure a missed, late, or otherwise overdue payment in which no penalties, fines, or legal action will be taken by Plaintiffs against Defendants.
REMITTANCE OF FUNDS ON DEPOSIT
IT IS FURTHER ORDERED that the sum of Fifty Thousand Dollars ($50,000.00) which has been deposited with this Court shall be remitted to Plaintiffs and shall be delivered forthwith to Stephen L. Anderson Attorney/Client Trust Account at Anderson & Associates 27247 Madison Avenue, Suite 121, Temecula, CA 92590.
SERVICE
Service of this Order and/or any Notices as may be required hereunder may be made upon Defendants by mail or courier addressed as follows:
E-Harbor, Inc.
1323 N. Research Way, #K1100
Orem, UT 84097
EProStores, LLC
1323 N. Research Way, #K1100
Orem, UT 84097
Marketecture, Inc.
510 E. Timpangos Parkway, Bldg S
Orem, UT 84097
A copy of this Stipulated Order for Consent Decree and Permanent Injunction shall be deemed sufficient notice under Federal Rule of Civil Procedure 65. Such service is permissible, notwithstanding Defendants' representation by counsel.
It shall not be necessary for Defendants to sign any form of acknowledgment of service.
The Court retains jurisdiction to enforce the Settlement Agreement between the parties.
IT IS SO ORDERED, ADJUDGED AND DECREED.
Hon. George H. King
United States District Court Judge