Opinion
CIVIL CASE NO. CV03-00012
September 2, 2003
JEHAN'AD G. MARTINEZ, KLEMM, BLAIR, STERLING JOHNSON, AGANA, GUAM, for Plaintiff Chrome Hearts, Inc.
Plaintiff CHROME HEARTS, INC. ("Plaintiff") having filed a Complaint in this action charging, inter alia, Defendants WOOHYUN CORPORATION dba MAUI DIVERS JEWELRY CENTER OF GUAM, P J CORPORATIONS ALOHA JEWELRY 3, DAVID K. PAK, KYONG MI PAK, WON KI PAK, and JOYEN RHEE (hereinafter referred to as "Defendants") with copyright infringement, trademark infringement and unfair competition; and upon Plaintiff's Ex Parte Motion, the Court having granted a Temporary Restraining Order against all of the Defendants and having further granted Plaintiff a Seizure Order against certain Defendants permitting law enforcement personnel to seize all the counterfeits of Plaintiff's goods, as well as those genuine goods of Plaintiff's used to sell Defendants' counterfeits and any records relating thereto; and the parties having resolved their claims and desiring to settle the controversy between them, it is hereby
ORDERED, ADJUDGED AND DECREED as between CHROME HEARTS and WOOHYUN CORPORATION dba MAUI DIVERS JEWELRY CENTER OF GUAM, P J CORPORATION dba ALOHA JEWELRY 3, DAVID K. PAK, KYONG MI PAK, WON KI PAK, and JO YEN RHEE that:
1. This Court has jurisdiction over the parties to this action; and has jurisdiction over the subject matter hereof pursuant to 17 U.S.C. § 501 et seq. and 15 U.S.C. § 1121.
2. Plaintiff is the owner of, inter alia, the following trademarks and their respective U.S. Trademark Registrations:
Trademark U.S. Registration Registration Date Class
CHROME HEARTS 1,665,791 November 26, 1991 14, 18, 25 26 CHROME HEARTS Scroll Design 2,216,570 January 5, 1999 14 CHROME HEARTS Horseshoe Design 2,216,575 January 5, 1999 25 CHROME HEARTS Scroll Design 2,118,026 December 2, 1997 18 25 CHROME HEARTS Dagger Design 2,214,642 December 29, 1998 18 CHROME HEARTS Dagger Design 2,214,641 December 29, 1998 25 (hereinafter, collectively, the "Chrome Hearts Trademarks"), Plaintiff is further the owner of, inter alia, the following U.S. Copyright Registrations registered in the United States Copyright Office, and is entitled to the exclusive use thereof: Name of Design Copyright Registration No. Date Pendants Necklaces Bracelets Rings Buttons Key Rings Buckles Celtic Chain Necklace VA 642-742 3/28/95 Celtic Pendant VA 642-743 3/28/95 Fancy Chain Link VA 642-746 3/28/95 CH Cross VA 705-193 3/28/95 Filigree Cross VA 705-194 3/28/95 Star VA 705-195 3/28/95 CH Fleur VA 705-196 3/28/95 Dagger VA 705-197 3/28/95 Floral #1 VA 705-198 3/28/95 Roller VA 705-199 3/28/95 Barrel VA 705-231 3/28/95 1Cross Ball VA 705-232 3/28/95 Filigree Pull Pendant w/Bolo Tips VA 912-283 3/13/98 Filigree Pull Fancy Pendant w/Bolo VA 912-284 3/13/98 Star Charm VA 946-986 11/6/98 Cross Crimpt VA 946-987 11/6/98 Campana Pendant VA 946-988 11/6/98 Cross Band Pendant VA 946-991 11/6/98 Scroll Band Pendant VA 946-992 11/6/98 Campana Cross VA 946-994 11/6/98 Dagger Heart VA 952-07 12/26/99 Vulcan Cross VA 954-730 11/6/98 Cemetary, CH Cross Dagger Tags VA 967-376 5/25/99 Celtic Cross VA 967-378 5/25/99 Hairy Dagger VA 967-384 5/25/99 Framed Charms (BS Fleur Star, Claw) VA 967-385 5/25/99 Cross, Dagger Dog Tag Pendants VA 1-045-308 7/7/00 Fleur Dagger Dog Tag Pendant VA 1-045-309 7/7/00 X-Small Celtic Cross Pendant VA 1-045-324 7/7/00 Cemetery VA 1-128-316 4/26/02 Three Cross Bracelet VA 642-736 3/28/95 Dagger Bracelet VA 642-737 3/28/95 Cuff Bracelet VA 642-744 3/28/95 Floral Cross Bracelet VA 689-392 3/28/95 Claw Link VA 705-200 3/28/95 Celtic ID Bracelet VA 912-280 3/13/98 Narrow V Band Celtic VA 912-281 3/13/98 Classic Keeper Bracelet VA 9 12-282 3/13/98 Floral Cross Cuff Bracelet VA 912-285 3/13/98 Filigree I Link Bracelet VA 912-286 3/13/98 Filigree ID Bracelet VA 912-287 3/13/98 Filigree Teardrop Cuff VA 912-288 3/13/98 Star Link Bracelet VA 946-985 11/6/98 Spider Link Bracelet VA 946-990 11/6/98 Keeper Link Bracelet VA 946-993 11/6/98 BS Fleur H Link Bracelet VA 964-910 3/13/98 BS Fleur Bracelet VA 964-911 3/13/98 H Link Cross Bracelet VA 964-913 3/13/98 I — Link Claw Bracelet VA 967-379 5/25/99 I — Link Cross Bracelet VA 967-380 5/25/99 I — Link Floral Bracelet VA 967-3 81 5/25/99 Narrow V Band Bracelet VA 967-382 5/25/99 #1 Celticball Bracelet VA 1-045-306 7/7/00 #1 Multi Ball Bracelet w/BS Fleur VA 1-045-307 7/7/00 Floral Ring VA 642-738 3/28/95 K T Ring VA 642-745 3/28/95 Dagger Ring VA 642-747 3/28/95 Floral Cross VA 705-230 3/28/95 SET Band Ring VA 946-989 11/6/98 BS Fleur Wide V Band Ring VA 964-912 3/13/98 CH X-Narrow V Band Ring VA 964-914 3/13/98 Dog in Band Rin VA 1-045-310 7/7/00 Wide Spider Band VA 1-128-314 4/26/02 Eternity Vine Band VA 1-128-315 4/26/02 Big Claw VA 1-128-317 4/26/02 Single Wide Vine Band VA 1-128-318 4/26/02 Double Narrow Vine Band VA 1-128-320 4/26/02 Spider In Band VA 1-128-321 4/26/02 Celtic Button VA 705-19 13/28/95 Cross #4 VA 705-233 3/28/95 Horseshoe Button VA 967-377 5/25/99 Roller Key Ring VA 705-201 3/28/95 1 ½ Celtic Belt VA 642-739 3/28/95 1 ½ Celtic Roller VA 642-740 3/28/95 Celtic Center Bar VA 642-741 3/28/95 1 Celtic Roller VA 705-192 3/28/95 3 Roller Buckle VA 705-202 3/28/95 Classic OvAl VA 705-234 3/28/95 Four Corner Claw VA 705-235 3/28/95 2 ½ Classic VA 705-236 3/28/95 1 ½ Classic Center Bar VA 705-237 3/28/95 1 ½ Classic VA 705-238 3/28/95 1 Classic VA 705-239 3/28/95 1 Classic Center Bar VA 705-240 3/28/95 ¾ Classic VA 705-241 3/28/95 ¾ Classic Center Bar VA 705-242 3/28/95 1 ½ Claw VA 705-243 3/28/95 2 Roller VA 705-244 3/28/95 1 ½ Roller VA 705-245 3/28/95 2 Center Bar Talon VA 705-246 3/28/95 3 Talon VA 705-247 3/28/95 2 Talon VA 705-248 3/28/95 1 ½ Talon VA 705-249 3/28/95 OTJ Buckle VA 967-383 5/25/99 (hereinafter collectively referred to herein as the "Chrome Hearts Copyrighted Works").3. Plaintiff has alleged that Defendants' distribution and sale of unauthorized products bearing and comprising copies of Plaintiff's the Chrome Hearts Trademarks and comprising piratical copies of the Chrome Hearts Copyrighted Works constitutes trademark infringement, copyright infringement and unfair competition.
4. Defendants hereby confirm the voluntary relinquishment of all of the goods pursuant to the Court's Ex parte Temporary Restraining Order and confirms that such goods should be delivered to Plaintiff for destruction and further that any records seized from Defendants relating to the trafficking of Defendants' counterfeit goods shall become the possession of Plaintiff. Defendants acknowledge and agree that the requirement of the posting of a Bond by Plaintiff in this action shall be vacated and Plaintiff shall have the right to receive the amount of its Bond back from the Clerk of the Court.
5. Defendants, their agents, servants, employees, and attorneys-in-fact and all persons in active concert and participation with them, are hereby permanently restrained and enjoined:
a. from using any of the Chrome Hearts Trademarks in any manner and from using any mark confusingly similar thereto; and from manufacturing, promoting, advertising and selling any products bearing the Chrome Hearts Trademarks and any mark confusingly similar thereto; and from impliedly or expressly representing any of the products distributed and/or sold by Defendants to be a genuine product of the Plaintiff unless such is the case; and,
b. from infringing upon and/or using the Chrome Hearts Copyrighted Works and from manufacturing, promoting, advertising and selling any product substantially similar to the Chrome Hearts Copyrighted Works or any other copyright owned by Plaintiff, or any work substantially similar to Chrome Hearts Copyrighted Works or substantially similar to any other copyright owned by Plaintiff.
6. The parties having agreed that Defendants shall pay to Plaintiff an amount in settlement of Plaintiff's demand for damages, profits, costs, disbursements and attorneys' fees based upon Defendants' sales activities, Defendants' warranties and representations and obligations to make such payment are incorporated herein and no other award for damages, profits, costs, disbursements and attorneys' fees is made herein.
7. The jurisdiction of this Court is retained for the purpose of making any further orders necessary or proper for the construction or modification of this Judgment, the enforcement thereof and the punishment of any violations thereof.
8. This Judgment shall be deemed to have been served upon Defendants at the time of its execution by the Court.
APPROVED AND SO ORDERED
CONSENTS
The undersigned hereby consent to the entry of a Final Judgment Upon Consent in the foregoing form or in such other form as the Court may approve.
STATE OF NEW YORK )) ss: COUNTY OF NEW YORK )
ACKNOWLEDGEMENTS
ON THIS 24 th day of June, 2003, before me, a notary public in and for the State of New York, personally appeared ROBERT BOWMAN, known or identified to me to be the Vice President of CHROME HEARTS, INC., a California corporation, whose name is subscribed to the foregoing instrument, and acknowledged to me that he executed the same on behalf of said corporation, in such capacity, being fully authorized to do so, and for the uses and purposes therein contained.IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.
GUAM, U.S.A. )) ss: CITY OF HAGATNA )ON THIS 30 th day of May, 2003, before me, a notary public in and for Guam, personally appeared, known or identified to me to be the a Principal and duly authorized representative of WOOHYUN CORPORATION dba MAUI DIVERS JEWELRY CENTER OF GUAM, whose name is subscribed to the foregoing instrument, and acknowledged to me that he/she executed the same on behalf of said corporation, in such capacity, being fully authorized to do so, and for the uses and purposes therein contained.
IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.
GUAM, U.S.A. )) ss: CITY OF HAGATNA )
ACKNOWLEDGEMENTS
ON THIS ___ day of ___, 2003, before me, a notary public in and for the State of New York, personally appeared ROBERT BOWMAN, known or identified to me to be the Vice President of CHROME HEARTS, INC., a California corporation, whose name is subscribed to the foregoing instrument, and acknowledged to me that he executed the same on behalf of said corporation, in such capacity, being fully authorized to do so, and for the uses and purposes therein contained. IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.
GUAM, U.S.A. )) ss: CITY OF HAGATNA )ON THIS 30 th day of May, 2003, before me, a notary public in and for Guam, personally appeared, known or identified to me to be the a Principal and duly authorized representative of WOOHYUN CORPORATION dba MAUI DIVERS JEWELRY CENTER OF GUAM, whose name is subscribed to the foregoing instrument, and acknowledged to me that he/she executed the same on behalf of said corporation, in such capacity, being fully authorized to do so, and for the uses and purposes therein contained.
IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.
GUAM, U.S.A. )) ss: CITY OF HAGATNA )ON THIS 30 th day of May, 2003, before me, a notary public in and for Guam, personally appeared, known or identified to me to be the a Principal and duly authorized representative of P J CORPORATION dba ALOHA JEWELRY 3, whose name is subscribed to the foregoing instrument, and acknowledged to me that he/she executed the same on behalf of said corporation, in such capacity, being fully authorized to do so, and for the uses and purposes therein contained.
IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.
GUAM, U.S.A. )) ss: CITY OF HAGATNA )ON THIS 30 th May day of 2003, before me, a notary public in and for Guam, personally appeared DAVID K. PAK , known or identified to me to be the person whose name is subscribed to the foregoing instrument, and acknowledged to me that he executed the same as his free and voluntary act and deed for the uses and purposes therein contained.
IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.
GUAM, U.S.A. )) ss: CITY OF HAGATNA )ON THIS 4 th day of June, 2003, before me, a notary public in and for Guam, personally appeared KYONG MI PAK, known or identified to me to be the person whose name is subscribed to the foregoing instrument, and acknowledged to me that he/she executed the same as his/her free and voluntary act and deed for the uses and purposes therein contained.
IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.
GUAM, U.S.A. )) ss: CITY OF HAGATNA )ON THIS ___ day of ___, 2003, before me, a notary public in and for Guam, personally appeared WON KI PAK, known or identified to me to be the person whose name is subscribed to the foregoing instrument, and acknowledged to me that he/she executed the same as his/her free and voluntary act and deed for the uses and purposes therein contained.
IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.
GUAM, U.S.A. )) ss: CITY OF HAGATNA )ON THIS ___ day of ___ 2003, before me, a notary public in and for Guam, personally appeared JOYEN RHEE, known or identified to me to be the person whose name is subscribed to the foregoing instrument, and acknowledged to me that he/she executed the same as his/her free and voluntary act and deed for the uses and purposes therein contained.
IN WITNESS WHEREOF, I have hereunto set my hand and affixed my official seal the day and year first above written.