Opinion
[PROPOSED] ORDER GRANTING MAG INSTRUMENT, INC.'S MOTION FOR PARTIAL SUMMARY JUDGMENT; PERMANENT INJUNCTION
AUDREY B. COLLINS, District Judge.
Plaintiff Mag Instrument, Inc.'s Motion for Partial Summary Judgment having been considered by this Court, and good cause having been shown, IT IS HEREBY ORDERED AND ADJUDGED:
1. That defendant Vinsy Technology Limited, as MAG Technology Co., Ltd.'s assignee, has breached, and continues to breach, the January 18, 1996 Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co., Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world) by its maintenance of United States Trademark Registration No. 3, 500, 264 and its use of the mark MAG (stylized) and all other marks that contain the term "MAG" or any confusingly similar mark in connection with the following goods: ELECTRONIC PUBLICATIONS, NAMELY, BOOKS FEATURING THE SUBJECT MATTER OF ELECTRONIC WHITEBOARDS RECORDED ON COMPUTER MEDIA; VIDEO CAMERAS; DIGITAL CAMERAS; TELEVISION MONITORS FOR CLOSED-CIRCUIT TELEVISION; COMPACT DISK PLAYERS; MULTIMEDIA PLAYERS, NAMELY, CD PLAYERS, DIGITAL AUDIO PLAYERS, DIGITAL VIDEO PLAYERS; TELEVISION APPARATUS FOR PROJECTION PURPOSES; PROJECTION SCREENS; TELEVISION RECEIVERS; TV SETS; SATELLITE RECEIVERS; MP3 PLAYERS; LIQUID CRYSTAL DISPLAY TELEVISIONS; TELEVISION SETS AND PARTS THEREOF; AUDIO SPEAKERS AND PARTS THEREFOR; MULTIMEDIA TEACHING APPARATUS, NAMELY, AUDIO-VISUAL RECEIVERS; ELECTRIC STORAGE BATTERIES; ELECTRICAL STORAGE BATTERIES; LITHIUM BATTERIES; TELEPHONE APPARATUS, NAMELY, INTERCOMS; VIDEOPHONES; VIDEO CONFERENCE EQUIPMENT, NAMELY, VIDEO MONITORS, MICROPHONES, AUDIO SPEAKERS, AND CAMERAS; ELECTRIC COILS; and TUNER BOXES USED FOR TUNING AND SELECTING THE CHANNELS OF A TV SYSTEM.
2. That defendant Vinsy Technology Limited, as MAG Technology Co., Ltd.'s assignee, has breached, and continues to breach, the January 18, 1996 Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co., Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world) by its maintenance of United Kingdom Trademark Registration No. 2562408 and its use of the mark MAG (stylized) and all other marks that contain the term "MAG" or any confusingly similar mark in connection with the following goods: TELEVISION APPARATUS; CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC.
3. That defendant Vinsy Technology Limited, as MAG Technology Co., Ltd.'s assignee, has breached, and continues to breach, the January 18, 1996 Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co., Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world) by its maintenance of New Zealand Trademark Registration No. 832620 and its use of the mark MAG (stylized) and all other marks that contain the term "MAG" or any confusingly similar mark in connection with the following goods: TELEVISION APPARATUS; CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC.
4. That defendant Vinsy Technology Limited, its officers, directors, employees, attorneys, and all persons and/or entities acting for, with, by, through, or in active concert or participation with it, be enjoined preliminarily and permanently from:
(a) Maintaining United States Trademark Registration No. 3, 500, 264 with respect to any of the following goods: ELECTRONIC PUBLICATIONS, NAMELY, BOOKS FEATURING THE SUBJECT MATTER OF ELECTRONIC WHITEBOARDS RECORDED ON COMPUTER MEDIA; VIDEO CAMERAS; DIGITAL CAMERAS; TELEVISION MONITORS FOR CLOSED-CIRCUIT TELEVISION; COMPACT DISK PLAYERS; MULTIMEDIA PLAYERS, NAMELY, CD PLAYERS, DIGITAL AUDIO PLAYERS, DIGITAL VIDEO PLAYERS; TELEVISION APPARATUS FOR PROJECTION PURPOSES; PROJECTION SCREENS; TELEVISION RECEIVERS; TV SETS; SATELLITE RECEIVERS; MP3 PLAYERS; LIQUID CRYSTAL DISPLAY TELEVISIONS; TELEVISION SETS AND PARTS THEREOF; AUDIO SPEAKERS AND PARTS THEREFOR; MULTIMEDIA TEACHING APPARATUS, NAMELY, AUDIO-VISUAL RECEIVERS; ELECTRIC STORAGE BATTERIES; ELECTRICAL STORAGE BATTERIES; LITHIUM BATTERIES; TELEPHONE APPARATUS, NAMELY, INTERCOMS; VIDEOPHONES; VIDEO CONFERENCE EQUIPMENT, NAMELY, VIDEO MONITORS, MICROPHONES, AUDIO SPEAKERS, AND CAMERAS; ELECTRIC COILS; and TUNER BOXES USED FOR TUNING AND SELECTING THE CHANNELS OF A TV SYSTEM;
(b) Using or seeking to register, anywhere in the world, the mark that is the subject of United States Trademark Registration No. 3, 500, 264 or any other mark that contains the term "MAG" or any confusingly similar mark, in association with or for any of the following goods: ELECTRONIC PUBLICATIONS, NAMELY, BOOKS FEATURING THE SUBJECT MATTER OF ELECTRONIC WHITEBOARDS RECORDED ON COMPUTER MEDIA; VIDEO CAMERAS; DIGITAL CAMERAS; TELEVISION MONITORS FOR CLOSED-CIRCUIT TELEVISION; COMPACT DISK PLAYERS; MULTIMEDIA PLAYERS, NAMELY, CD PLAYERS, DIGITAL AUDIO PLAYERS, DIGITAL VIDEO PLAYERS; TELEVISION APPARATUS FOR PROJECTION PURPOSES; PROJECTION SCREENS; TELEVISION RECEIVERS; TV SETS; SATELLITE RECEIVERS; MP3 PLAYERS; LIQUID CRYSTAL DISPLAY TELEVISIONS; TELEVISION SETS AND PARTS THEREOF; AUDIO SPEAKERS AND PARTS THEREFOR; MULTIMEDIA TEACHING APPARATUS, NAMELY, AUDIO-VISUAL RECEIVERS; ELECTRIC STORAGE BATTERIES; ELECTRICAL STORAGE BATTERIES; LITHIUM BATTERIES; TELEPHONE APPARATUS, NAMELY, INTERCOMS; VIDEOPHONES; VIDEO CONFERENCE EQUIPMENT, NAMELY, VIDEO MONITORS, MICROPHONES, AUDIO SPEAKERS, AND CAMERAS; ELECTRIC COILS; and TUNER BOXES USED FOR TUNING AND SELECTING THE CHANNELS OF A TV SYSTEM;
(c) Maintaining United Kingdom Trademark Registration No. 2562408 with respect to any of the following goods: TELEVISION APPARATUS; CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC;
(d) Using or seeking to register, anywhere in the world, the mark that is the subject of United Kingdom Trademark Registration No. 2562408 or any other mark that contains the term "MAG" or any confusingly similar mark, in association with or for any of the following goods: TELEVISION APPARATUS; CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC;
(e) Maintaining New Zealand Trademark Registration No. 832620 with respect to any of the following goods: TELEVISION APPARATUS; CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC;
(f) Using or seeking to register, anywhere in the world, the mark that is the subject of New Zealand Trademark Application No. 832620 or any other mark that contains the term "MAG" or any confusingly similar mark, in association with or for any of the following goods: TELEVISION APPARATUS; CAMERAS [PHOTOGRAPHY]; CAMCORDERS; SET-TOP BOXES; GRAPH PLOTTERS; NAVIGATIONAL INSTRUMENTS; AUTOMATIC ADVERTISING MACHINES; DIGITAL PHOTO FRAMES FOR DISPLAYING DIGITAL PICTURES; and VIDEO CLIPS AND MUSIC; and
(g) Using the mark MAG or any mark that contains the term "MAG" or any confusingly similar mark anywhere in the world, seeking to register the mark MAG or any mark that contains the term "MAG" or any confusingly similar mark anywhere in the world, or maintaining a registration for the mark MAG or any mark that contains the term "MAG" or any confusingly similar mark anywhere in the world for any goods and services other than computer peripherals and computer-related goods and services (the following goods, for purposes of this paragraph, being expressly excluded from the definition of "computer peripherals and computer-related goods and services": ELECTRONIC PUBLICATIONS, NAMELY, BOOKS FEATURING THE SUBJECT MATTER OF ELECTRONIC WHITEBOARDS RECORDED ON COMPUTER MEDIA; VIDEO CAMERAS; DIGITAL CAMERAS; TELEVISION MONITORS FOR CLOSED-CIRCUIT TELEVISION; COMPACT DISK PLAYERS; MULTIMEDIA PLAYERS, NAMELY, CD PLAYERS, DIGITAL AUDIO PLAYERS, DIGITAL VIDEO PLAYERS; TELEVISION APPARATUS FOR PROJECTION PURPOSES; PROJECTION SCREENS; TELEVISION RECEIVERS; TV SETS; SATELLITE RECEIVERS; MP3 PLAYERS; LIQUID CRYSTAL DISPLAY TELEVISIONS; TELEVISION SETS AND PARTS THEREOF; AUDIO SPEAKERS AND PARTS THEREFOR; MULTIMEDIA TEACHING APPARATUS, NAMELY, AUDIO-VISUAL RECEIVERS; ELECTRIC STORAGE BATTERIES; ELECTRICAL STORAGE BATTERIES; LITHIUM BATTERIES; TELEPHONE APPARATUS, NAMELY, INTERCOMS; VIDEOPHONES; VIDEO CONFERENCE EQUIPMENT, NAMELY, VIDEO MONITORS, MICROPHONES, AUDIO SPEAKERS, AND CAMERAS; ELECTRIC COILS; and TUNER BOXES USED FOR TUNING AND SELECTING THE CHANNELS OF A TV SYSTEM).
5. That defendant Vinsy Technology Limited is required, within thirty (30) days after issuance of the injunction herein, to file with this Court and hand-deliver to Mag Instrument, Inc. a written report, under oath, confirming that Vinsy Technology Limited and its officers, directors, employees, attorneys, and all persons and/or entities acting for, with, by, through, or in active concert or participation with it, have fully complied with Paragraph 4, above, and detailing the manner in which they have done so.
6. That United States Trademark Registration No. 3, 500, 264 is cancelled with prejudice pursuant to 15 U.S.C. §1119 - and this Court has certifies its decree of cancellation with prejudice to the Director of the United States Patent and Trademark Office.
7. That Mag Instrument, pursuant to Paragraph 5 of the January 18, 1996 Settlement Agreement between Mag Instrument, Inc. and MAG Technology Co., Ltd. (as modified, on March 7, 1996, to apply in all countries throughout the world) is the "prevailing party" and shall be awarded its attorney fees' and expenses incurred in connection with the above-captioned action. as well as its attorney fees' and expenses incurred in connection with related Central District of California Case No. CV 12-04038 ABC (OPx).