Opinion
Case No. 05-21092-CIV-JORDAN.
August 25, 2005
PERMANENT INJUNCTION AND FINAL JUDGMENT AGAINST COOKIES-N-CREAM PARTY RENTAL, INC., and ANAIS OLIVER D/B/A COOKIES-N-CREAM FUNNY CLOWN SHOW
Upon consideration of the Settlement Agreement and Consent to Permanent Injunction, and this Court being fully aware of the premises, the Court makes the following findings of fact and conclusions of law:
1. This Court has jurisdiction over the Plaintiffs and Cookies-N-Cream Party Rental, Inc., and Anais Oliver d/b/a Cookies-N-Cream funny Clown Show (hereinafter collectively referred to as "COOKIES-N-CREAM") and the Subject Matter of this action.
2. The Plaintiffs are the owners of the distinctive copyrighted properties and trademarks and identified by the index of registrations attached as Exhibits "A" and "B" to the Complaint and hereinafter referred to as "the Copyrighted Properties and Trademarks." The registrations are valid and subsisting and are conclusive proof of the Plaintiffs' rights to the Copyrighted Properties and Trademarks and properties noted, and are indexed to this Final Order and Permanent Injunction as Exhibits "A" and "B".
3. The Plaintiffs brought the present action against COOKIES-N-CREAM alleging claims of copyright infringement, trademark infringement, false design or designation of origin, false description, and unfair competition. COOKIES-N-CREAM has never been authorized by any of the Plaintiffs to utilize the Plaintiffs' Copyright Properties and Trademarks in conjunction with any adult costumes, wooden cut-outs or inflatable bouncers, nor have Plaintiffs authorized COOKIES-N-CREAM to utilize their Copyrighted Properties and Trademarks in conjunction with or to promote their children's party entertainment services.
4. COOKIES-N-CREAM admits that it has infringed upon the Copyrighted Properties and Trademarks by advertising, marketing, offering for sale and selling children's party entertainment services, which services included adult costumes, wooden cut-outs and inflatable bouncers incorporating unauthorized reproductions of the Plaintiffs' Copyrighted Properties and Trademarks (hereinafter referred to as the "Infringing Products"). COOKIES-N-CREAM admits that it has further infringed upon the Plaintiffs' Copyrighted Properties and Trademarks through the manufacture, sale, offer for sale, and marketing of children's party services, inflatable bouncers and related merchandise bearing the Plaintiffs' Copyrighted Properties and Trademarks (hereinafter "Unauthorized Services").
5. The Plaintiffs are suffering and have suffered irreparable injure as a result of COOKIES-N-CREAMS' acts better described in paragraph 4 above.
6. COOKIES-N-CREAM agrees and stipulates that it will turn over to Plaintiffs' undersigned counsel all Infringing Products, and any related merchandise which incorporate the Infringing Products, or otherwise bearing unauthorized reproductions of the Plaintiffs' Copyrighted Properties and Trademarks upon execution of this Agreement (hereinafter "Surrendered Merchandise"). COOKIES-N-CREAM further agrees that the Surrendered Merchandise shall be delivered to Plaintiffs' counsel at COOKIES-N-CREAM'S sole cost and expense. COOKIES-N-CREAM further stipulates and agrees that any Surrendered Merchandise turned over to Plaintiffs' counsel as provided for in this Order, may be destroyed and/or disposed of at the Plaintiffs' discretion and in such manner, as Plaintiffs' deem appropriate. COOKIES-N-CREAM hereby waives any and all right, title and/or interest to the Surrendered Merchandise and forever releases the Plaintiffs from any and all claims arising out of the Surrendered Merchandise's disposition.
7. COOKIES-N-CREAM stipulates and agrees to entry of a Permanent Injunction forever enjoining it from the sale, offer for sale, and marketing of children's party entertainment services in conjunction with the Infringing Products and Unauthorized Services, the sale, offer for sale, rental and marketing of the Infringing Products and Unauthorized Services to the public, the public display of the Infringing Products and Unauthorized Services, and the manufacture, sale, offer for sale, and marketing of adult costumes, wooden cut-outs or inflatable bouncers and any other related merchandise bearing the Plaintiffs' Copyrighted Properties and Trademarks.
In view of the foregoing:
IT IS ORDERED AND ADJUDGED that a PERMANENT INJUNCTION is entered as to Cookies-N-Cream Party Rental, Inc., and Anais Oliver d/b/a Cookies-N-Cream, pursuant to Rule 65 of the Federal Rules of Civil Procedure, enjoining Cookies-N-Cream Party Rental, Inc., and Anais Oliver d/b/a Cookies-N-Cream, their agents, servants, employees and attorneys, and upon those persons in active concert or participation with them who receive actual notice of this Order by personal service or otherwise:
(a) From manufacturing, procuring, distributing, shipping, retailing, selling, offering for sale, marketing, renting, advertising or trafficking, in any merchandise, including Infringing Costumes, not authorized by the Plaintiffs, bearing unauthorized simulations, reproductions, counterfeits, copies or colorable imitations of the Copyrighted Properties and Trademarks, or bearing a design or image which is of a substantially similar appearance to the Copyrighted Properties and Trademarks indexed Exhibits "A" and "B" to the Complaint and to this Order;
(b) From passing off, inducing or enabling others to sell or pass off, as authentic products produced by the Plaintiffs or otherwise authorized by the Plaintiffs, any product not manufactured by the Plaintiffs or produced under the control or supervision of the Plaintiffs and approved by the Plaintiffs, which utilize anv of the Copyrighted Properties and Trademarks indexed on Exhibits "A" and "B" to the Complaint and to this Order;
(c) From committing any act calculated to cause purchasers to believe that Cookies-N-Cream Party Rental, Inc.'s, and Anais Oliver d/b/a Cookies-N-Cream's products and services are those sold under the control and supervision of the Plaintiffs, or are sponsored, approved or guaranteed by the Plaintiffs, or are connected with and produced under the control or supervision of the Plaintiffs;
(d) From further diluting and infringing Plaintiffs' Copyrighted Properties and Trademarks and damaging their goodwill; and
(e) From causing, aiding, and/or abetting any other person from doing any act proscribed under a through d above.
It is further, ORDERED AND ADJUDGED,
That this Court shall retain jurisdiction of this action for purposes of enforcing the provisions of the Settlement Agreement, Permanent Injunction and Final Order by way of contempt or otherwise. Cookies-N-Crean Party Rental, Inc., and Anais Oliver d/b/a Cookies-N-Cream agrees not to contest the validity of the Copyrighted Properties and Trademarks in any such proceedings.
It is further, ORDERED AND ADJUDGED,
That the parties waive appeal of this Permanent Injunction and Final Order.
It is further, ORDERED AND ADJUDGED,
That any Surrendered Merchandise turned over to Plaintiffs' undersigned counsel's possession may be destroyed and/or disposed of at the Plaintiffs' discretion and in such manner, as Plaintiffs' deem appropriate.
It is further, ORDERED AND ADJUDGED,
That this Permanent Injunction and Final Order shall operate as a final judgment as to Cookies-N-Cream Party Rental, Inc., and Anais Oliver d/b/a Cookies-N-Cream.
It is further, ORDERED AND ADJUDGED,
That each party to this Permanent Injunction and Final Order shall bear its own attorneys' fees and costs of this action.
EXHIBIT A COPYRIGHT REGISTRATIONS
Plaintiff: HIT ENTERTAINMENT LIMITED (f/k/a HIT ENTERTAINMENT, P.L.C.)
TITLE COPYRIGHT NO. REGISTRATION DATE "Bob the Builder: no. 1-13 PA-957-661 August 23, 1999 "Mambo no. 5" PA-1-064-854 October 10, 2001 "Bob the Builder to the Rescue" PA-1-113-088 October 15, 2002 "Bob the Builder: no 17, 63 65, Bob's White Christmas" PA-1-119-342 October 16, 2002 "Bob the Builder: no 1, 26, 31 and 47, Pets PA-1-119-854 October 16, 2002 in a pickle" "Bob the Builder no: 11, 28, 29 and 45, Bob the Builder Can we PA-1-119-862 October 16, 2002 Fix It?" "Bob the Builder: Bob's camera" SR-326-509 January 23, 2003 "Bob's recycling day" TX-5-385-413 November 16, 2001 "A day at the barn" TX-5-385-423 November 16, 2001 "Scoop" TX-5-649-609 December 27, 2002 "Roley and the rock star" TX-5-744-949 May 8, 2003
Plaintiff: LYON'S PARTNERSHIP, L.P.
TITLE COPYRIGHT NO. REGISTRATION DATE "Barney" RE-207-358 March 30, 1984 "Barney" RE-705-082 August 17, 1995 "Barney PA-10-710 June 9, 1978 "Barney" PA-12-334 August 15, 1978 "Barney" PA-227-430 March 14, 1984 "Barney Baby VA-573-406 June 1, 1993 Bop" "Barney" Stuffed VA-550-465 January 28, 1983 Toy "The Backyyard PA-496-592 November 21, 1990 Show" "Barney in Concert" PA-594-375 December 23, 1992
Plaintiff: THE WALT DISNEY COMPANY
TITLE COPYRIGHT NO. REGISTRATION DATE "Steamboat Willie" MP 2124 November 21, 1928 "Steamboat Willie" R 162021 December 22, 1955Mickey Mouse GP 80183 February 17, 1972 Mickey Mouse VA 58-937 September 15, 1980 Minnie Mouse as a MP 2124 November 21, 1928 character in "Steamboat Willie" Minnie Mouse GP 80191 February 17, 1972 Minnie Mouse VA 58-938 September 15, 1980 Donald Duck as character in M1 4802 May 31, 1934 "The Wise Little Hen — Walt Disney's Silly Symphony" Donald Duck as character in R 277811 June 19, 1961 "The Wise Little Hen — Walt Disney's Silly Symphony" Donald Duck GP 80184 August 8, 1972 Donald and Daisy VA 58-935 September 15, 1980 Goofy as a character in M1-3342 May 30, 1932 "Mickey's Revue" Goofy R 237770 June 8, 1959 Goofy GP 80187 February 17, 1972 Goofy VA 58-936 September 15, 1980 "Aladdin" PA 583-905 June 15, 1909 "Beauty and the Beast" PA 542 647 November 20, 1991 Daisy Duck in "Don Donald" Daisy Duck GP 81520 November 8, 1972 Daisy Duck VA 58-933 September 15, 1980 "The Lion King" PA 659-979 June 20, 1994 "The Little Mermaid" PA 431*543 November 17, 1989 Pluto as a character in M1906 September 8, 1930 "The Chain Gang" Pluto "The Chain Gang" R 204524 December 16, 1957 Pluto GP 80192 February 17, 1972 Pocahontas Style Guide VA 690-928 January 12, 1995 "Snow White and the Seven LP 7689 Dwarfs" "Who Framed Roger Rabbit" VA 272 999 August 10, 1987 Licensing Kit "Hercules" PA 670-961 July 15, 1997 "The Hunchback of Notre PA 795-221 July 11, 1996 Dame" "101 Dalmatians" PA 789-990 December 11, 1996 "One Hundred and One RE 370-901 January 21, 1998 Dalmatians" "One Hundred and One LP 18715 November 18, 1960 Dalmatians" "Winnie The Pooh" VA 242 333 October 31, 1996 Licensing Kit "Winnie The Pooh" GP 81528 October 31, 1972 "Toy Story" PA 765-713 December 20, 1995 "Toy Story" Style Guide VA 735-197 August 28, 1995 "A Bug's Life" PA 901-890 December 30, 1998 "A Bug's Life" Style Guide VA 875-986 March 12, 1998 "Mulan" PA 799-025 July 7, 1998 "Mulan" Style Guide VA 849-510 September 29, 1997 "Tarzan" PA 939-561 July 30, 1999 "Tarzan" Style Guide VA 949-479 November 5, 1998 "Monsters, Inc." VA 999-982 December 15, 2000 "The Emperor's New VA 999-573 June 19, 2000 Groove" "Lilo and Stitch" VA1-094-896 August 2, 2001
Plaintiff: SANRIO COMPANY, LTD.
TITLE COPYRIGHT NO. REGISTRATION DATE Bad Badtz Maru VA 811 440 February 4, 1997 Graphic Artwork Hello Kitty Graphic VA 130 420 December 2, 1982 Artwork KeroKeroKeroppi Sticker VA 636 579 May 25, 1994 Book Little Twin Stars Stickers VA 246 421 December 15, 1986 Monkichi Graphic Artwork VA 840 495 February 4, 1997 My Melody Graphic VA 130 419 December 2, 1982 Artwork Patty Jimmy Graphic VA 130 421 December 2, 1982 Artwork Pekkle Graphic Artwork VA 636 582 May 25, 1994 Picke Bicke Graphic VA 840 496 February 4, 1972 Artwork Pochacco Sticker Book VA 636 580 May 25, 1994 Tuxedo Sam Stickers VA 148 625 February 21, 1984 Winkipinki Graphic VA 840 494 February 4, 1997 Artwork Zashikibuta Stickers VA 636 581 May 25, 1994
EXHIBIT B TRADEMARK REGISTRATIONS
Plaintiff: HIT ENTERTAINMENT LIMITED (f/k/a HIT ENTERTAINMENT, P.L.C.)
MARK REGISTRATION DATE OF CLASS NUMBER ISSUANCE
"Bob the Builder 2,759,172 September 2, 2003 41 "Bob the Builder" 2,713,778 May 6, 2003 41
Plaintiff: LYONS PARTNERSHIP, L.P.
MARK REGISTRATION NUMBER DATE OF ISSUANCE CLASS "Barney" 1,697,415 June 30, 1992 9 "Barney Friends" 1,754,307 February 23, 1993 41 "Barney" 1,782,534 July 20, 1993 9 "Barney" 1,791,394 September 7, 1993 9 "Barney" 1,761,784 March 30, 1993 41 "Barney" 1,921,594 September 26, 1995 41 "Barney" 2,455,086 May 29, 2001 41 "Barney" 1,815,882 January 11, 1994 16 "Barney" music 1,921,665 September 26, 1995 9 "Barney" 1,860,039 October 25, 1994 41 Bedtime with Barney" 2,081,856 July 22, 1997 28
Plaintiff: DISNEY ENTERPRISES, INC. MARK REGISTRATION DATE OF CLASS NUMBER ISSUANCE
"Mickey's Kitchen" and Design 1,674,655 February 4, 1992 42 "Mickey Mouse' 313,765 August 23, 1994 38 "Mickey Mouse' 1,857,626 October 11, 1997 14 "Mouse Ears Design" 1,524,601 February 14, 1989 25 "Donald Duck" 1,161,868 July 21, 1981 16 Plaintiff: SANRIO COMPANY, LTD.
MARK REGISTRATION DATE OF CLASS NUMBER ISSUANCE Hello Kitty (rep.) 1,200,083 July 6, 1982 16 Hello Kitty (rep.) 1,200,083 July 6, 1982 18 Hello Kitty (rep.) 1,277,721 May 15, 1984 16 Hello Kitty (rep.) 1,277,721 May 15, 1984 18 Hello Kitty (words) 1,215,436 November 9, 1982 16 Hello Kitty (words) 1,215,436 November 9, 1982 18 Hello Kitty (words) 1,279,486 May 29, 1984 16 Hello Kitty (words) 1,279,486 May 29, 1984 18
COPYRIGHT REGISTRATIONS
Plaintiff: HIT ENTERTAINMENT, P.L.C.
TITLE COPYRIGHT NO. REGISTRATION DATE "Bob the Builder: no. 1-13 PA-957-661 August 23, 1999 "Mambo no. 5" PA-1-064-854 October 10, 2001 "Bob the Builder to the Rescue" PA-1-113-088 October 15, 2002 "Bob the Builder: no 17, 63 65, Bob's White Christmas" PA-1-119-342 October 16, 2002 "Bob the Builder: no 1, 26, 31 and 47, Pets in a PA-1-119-854 October 16, 2002 pickle" "Bob the Builder no: 11, 28, 29 and 45, Bob the Builder Can we Fix It?" PA-1-119-862 October 16, 2002 "Bob the Builder: Bob's camera" SR-326-509 January 23, 2003 "Bob's recycling day" TX-5-385-413 November 16, 2001 "A day at the barn" TX-5-385-423 November 16, 2001 "Scoop" TX-5-649-609 December 27, 2002 "Roley and the rock star" TX-5-744-949 May 8, 2003
Plaintiff: LYON'S PARTNERSHIP, L.P.
TITLE COPYRIGHT NO. REGISTRATION DATE "Barney" RE-207-358 March 30, 1984 "Barney" RE-705-082 August 17, 1995 "Barney PA-10-710 June 9, 1978 "Barney" PA-12-334 August 15, 1978 "Barney PA-227-430 March 14, 1984 "Barney Baby Bop" VA-573-406 June 1, 1993 "Barney" Stuffed Toy VA-550-465 January 28, 1983 "The Backyyard Show" PA-496-592 November 21, 1990 "Barney in Concert" PA-594-375 December 23, 1992
Plaintiff: THE WALT DISNEY COMPANY
TITLE COPYRIGHT NO. REGISTRATION DATE
"Steamboat Willie" MP 2124 November 21, 1928 "Steamboat Willie" R 162021 December 22, 1955 Mickey Mouse GP 80183 February 17, 1972 Mickey Mouse VA 58-937 September 15, 1980 Minnie Mouse as a MP 2124 November 21, 1928 character in "Steamboat Willie" Minnie Mouse GP 80191 February 17, 1972 Minnie Mouse VA 58-938 September 15, 1980 Donald Duck as MI 4802 May 31, 1934 character in "The Wise Little Hen — Walt Disney's Silly Symphony" Donald Duck as R 277811 June 19, 1961 character in "The Wise Little Hen — Walt Disney's Silly Symphony" Donald Duck GP 80184 August 8, 1972 Donald and Daisy VA 58-935 September 15, 1980 Goofy as a character in MI-3342 May 30, 1932 "Mickey's Revue" Goofy R 237770 June 8, 1959 Goofy GP 80187 February 17, 1972 Goofy VA 58-936 September 15, 1980 "Aladdin" PA 583-905 June 15, 1909 "Beauty and the Beast" PA 542 647 November 20, 1991 Daisy Duck in "Don Donald" Daisy Duck GP 81520 November 8, 1972 Daisy Duck VA 58-933 September 15, 1980 "The Lion King" PA 659-979 June 20, 1994 "The Little Mermaid" PA 431*543 November 17, 1989 Pluto as a character in M1906 September 8, 1930 "The Chain Gang" Pluto "The Chain Gang" R 204524 December 16, 1957 Pluto GP 80192 February 17, 1972 Pocahontas Style Guide VA 690-928 January 12, 1995 "Snow White and the LP 7689 Seven Dwarfs" "Who Framed Roger VA 272 999 August 10, 1987 Rabbit" Licensing Kit "Hercules" PA 670-961 July 15, 1997 "The Hunchback of PA 795-221 July 11, 1996 Notre Dame" "101 Dalmatians" PA 789-990 December 11, 1996 "One Hundred and One RE 370-901 January 21, 1998 Dalmatians" "One Hundred and One LP 18715 November 18, 1960 Dalmatians" "Winnie The Pooh" VA 242 333 October 31, 1996 Licensing Kit "Winnie The Pooh" GP 81528 October 31, 1972 "Toy Story" PA 765-713 December 20, 1995 "Toy Story" Style Guide VA 735-197 August 28, 1995 "A Bug's Life" PA 901-890 December 30, 1998 "A Bug's Life" Style VA 875-986 March 12, 1998 Guide "Mulan" PA 799-025 July 7, 1998 "Mulan" Style Guide VA 849-510 September 29, 1997 "Tarzan" PA 939-561 July 30, 1999 "Tarzan" Style Guide VA 949-479 November 5, 1998 "Monsters, Inc." VA 999-982 December 15, 2000 "The Emperor's New VA 999-573 June 19, 2000 Groove" "Lilo and Stitch" VA1-094-896 August 2, 2001
Plaintiff: SANRIO COMPANY, LTD.
TITLE COPYRIGHT NO. REGISTRATION DATE
Bad Badtz Maru VA 811 440 February 4, 1997 Graphic Artwork Hello Kitty Graphic VA 130 420 December 2, 1982 Artwork KeroKeroKeroppi VA 636 579 May 25, 1994 Sticker Book Little Twin Stars VA 246 421 December 15, 1986 Stickers Monkichi Graphic VA 840 495 February 4, 1997 Artwork My Melody Graphic VA 130 419 December 2, 1982 Artwork Patty Jimmy Graphic VA 130 421 December 2, 1982 Artwork Pekkle Graphic VA 636 582 May 25, 1994 Artwork Picke Bicke Graphic VA 840 496 February 4, 1972 Artwork Pochacco Sticker Book VA 636 580 May 25, 1994 Tuxedo Sam Stickers VA 148 625 February 21, 1984 Winkipinki Graphic VA 840 494 February 4, 1997 Artwork Zashikibuta Stickers VA 636 581 May 25, 1994
TRADEMARK REGISTRATIONS
Plaintiff: HIT ENTERTAINMENT, P.L.C.
MARK REGISTRATION DATE OF CLASS NUMBER ISSUANCE "Bob the Builder 2,759,172 September 2, 41 2003 "Bob the Builder" 2,713,778 May 6, 2003 41
Plaintiff: LYONS PARTNERSHIP, L.P.
MARK REGISTRATION DATE OF CLASS NUMBER ISSUANCE "Barney" 1,697,415 June 30, 1992 9 "Barney 1,754,307 February 23, 1993 41 Friends" "Barney" 1,782,534 July 20, 1993 9 "Barney" 1,791,394 September 7, 1993 9 "Barney" 1,761,784 March 30, 1993 41 "Barney" 1,921,594 September 26, 1995 41 "Barney" 2,455,086 May 29, 2001 41 "Barney" 1,815,882 January 11, 1994 16 "Barney" music 1,921,665 September 26, 1995 9 "Barney" 1,860,039 October 25, 1994 41 Bedtime with Barney" 2,081,856 July 22, 1997 28
Plaintiff: DISNEY ENTERPRISES, INC.
MARK REGISTRATION DATE OF CLASS NUMBER ISSUANCE "Mickey's Kitchen" and 1,674,655 February 4, 1992 42 Design "Mickey Mouse' 313,765 August 23, 1994 38 "Mickey Mouse' 1,857,626 October 11, 1997 14 "Mouse Ears Design" 1,524,601 February 14, 25 1989 "Donald Duck" 1,161,868 July 21, 1981 16
Plaintiff: SANRIO COMPANY, LTD.
MARK REGISTRATION DATE OF CLASS NUMBER ISSUANCE Hello Kitty (rep.) 1,200,083 July 6, 1982 16 Hello Kitty (rep.) 1,200,083 July 6, 1982 18 Hello Kitty (rep.) 1,277,721 May 15, 1984 16 Hello Kitty (rep.) 1,277,721 May 15, 1984 18 Hello Kitty (words) 1,215,436 November 9, 1982 16 Hello Kitty (words) 1,215,436 November 9, 1982 18 Hello Kitty (words) 1,279,486 May 29, 1984 16 Hello Kitty (words) 1,279,486 May 29, 1984 18