Opinion
Case No. 99-2082 Civ.-Jordan/Mag. Bandstra
July 22, 2002
CONSENT PERMANENT INJUNCTION AND FINAL JUDGMENT AGAINST DEFENDANTS MARK SIEGEL AND TRIO INTERNATIONAL TRADING, INC.
Plaintiff Merisant Company commenced the above-captioned action in the United States District Court for the Southern District of Florida, Miami Division, against, inter alia, the above-named defendants and prayed for, inter alia, a permanent injunction against defendants, requiring them to refrain from certain acts described in the Complaint and more particularly set forth herein, and for damages against them.
Now upon the granting of partial summary judgment against defendants Mark Siegel ("Siegel") and Trio International Trading, Inc. ("Trio") on the issue of liability as to Count I (trademark infringement, pursuant to 15 U.S.C. § 1114(1)(a)), Count II (trademark infringement pursuant to 15 U.S.C. § 1125(a)(1)(A)), Count III (trademark infringement pursuant to 15 U.S.C. § 1125(a)(1)(B)), Count IV (copyright infringement pursuant to 17 U.S.C. § 101 et seq.), Count V (common law unfair competition) and Count VI (unjust enrichment) of the Complaint, and upon the consent of the undersigned parties, it is hereby
ORDERED that, pursuant to Fed.R.Civ.Pro.65, 15 U.S.C. § 1116, 17 U.S.C. § 502, and Florida's common law for unfair competition, that Siegel and Trio, alone or in concert with (a) any family members (siblings, parents, children, cousins, aunts and uncles, grandparents and grandchildren, spouses and in-laws of the individual defendants or their spouses), of Siegel, or (b) any corporations in which Siegel or Trio or any family member of Siegel owns five percent (5%) or more of the shares of stock, or (c) any partnership in which any of the foregoing defendants or their family members hold more than a five percent (5%) partnership share, or (d) the directors, officers, shareholders, employees, agents, servants, representatives, attorneys, successors and assigns, and all persons acting on behalf of or in concert with Siegel and Trio, shall be forever enjoined and restrained:
1. From possessing, receiving, manufacturing, assembling, distributing, advertising, promoting, selling, transferring, offering for sale, holding for sale or transfer or otherwise dealing in any manner, except for personal use, the following products manufactured and/or sold by the Merisant Company under the following brand names as long as said products are manufactured and/or sold by the Merisant Company: Equal (tabletop sweetener products), and NutraSweet (tabletop sweetener products);
2. From using, except for personal use, the following trademarks: "Equal", Registration No. 1, 318, 800, registered on February 12, 1985; "Equal" trademark, Registration No. 2, 012, 219, registered on October 29, 1996, "Nutra-Sweet," Registration No. 1, 262, 746, registered on January 3, 1984; "NutraSweet," Registration No. 1, 358, 678 registered on September 10, 1985; and "Nutrasweet," Registration No. 1, 336, 188 registered on May 21, 1985; the "NutraSweet Symbol" Registration No. 1, 325, 241, registered on March 19, 1985; and NutraSweet symbol Registration No. 1, 366, 139 registered on October 22, 1985; and the following copyrights: the strawberry design consisting of photographs, text and graphics, as described in the Register of Copyrights, Certificates of Registrations with respect to the Strawberry Design dated April 13, 1999; and the coffee cup design consisting of photographs, text and graphics, as described in the Register of Copyrights, Certificates of Registration with respect to the Coffee Cup Design dated March 29, 1999;
3. From possessing, receiving, manufacturing, assembling, distributing, advertising, promoting, selling, transferring, offering for sale, holding for sale or transfer or otherwise dealing in any manner or disposing of any goods, packaging, goods, wrappers, containers and recepticals, and any catalogues, price lists, promotional materials and the like bearing a copy or colorable imitation of the Equal and/or NutraSweet trademarks and copyrights or the Equal and/or NutraSweet trade dress;
The term "Merisant Company" shall include hereinafter any successor entities or corporations of Merisant Company.
4. From infringing the Equal and/or NutraSweet trademarks and copyrights;
5. From otherwise unfairly competing with Merisant Company in connection with the Equal and/or NutraSweet trademarks and copyrights or the Equal and/or NutraSweet trade dress;
6. From using any reproduction, counterfeit, copy or colorable imitation of the Equal and/or NutraSweet trademarks and copyrights or trade dress in connection with publicity, promotion, sale, transfer or advertising goods sold or distributed by Siegel or Trio, including, without limitation, sweetener product bearing a copy or colorable imitation of the Equal and/or NutraSweet trademarks and copyrights;
7. From affixing, applying, annexing or using in connection with the same any goods, false description or any representation, including words or other symbols, falsely describing or falsely representing such goods as being those of Merisant Company and from offering such goods in commerce;
8. From using any trademark, trade name or trade dress in connection with the sale of any goods which falsely represent such goods as being connected with, approved by or sponsored by the Merisant Company as identified in paragraph 1 above;
9. From assisting, aiding or abetting any other person or business entity in engaging in or performing any of the activities referred to in subparagraphs (1) through (8) above;
10. The provisions of Paragraphs 3 through 9 herein shall not apply to instances where the NutraSweet trademark identified in Paragraph 2 above has been affixed to the products or the packaging of such products of other manufacturers by authorized entities.
ORDERED that any items, product or merchandise bearing the Equal and/or NutraSweet trademarks and copyrights or the Equal and/or NutraSweet trade dress or any reproduction, counterfeit, copy or colorable imitation thereof currently in the possession of Siegel or Trio be made immediately available for transfer to Merisant Company; and it is further
ORDERED that, upon a finding by a court of competent jurisdiction that Siegel, or Trio violated any term of this Permanent Injunction, then the defendants who have committed said violation shall be jointly and severally liable to Merisant Company in the sum of five hundred thousand dollars ($500,000.00), for each violation, which amount represents liquidated damages, and which shall be awarded to Merisant Company in addition to any other non-monetary remedy which may be available to Merisant Company for any violation of this injunction; and it is further
ORDERED that Merisant Company have judgment against defendants Trio and Siegel, jointly and severally, in the sum of five million dollars ($5,000,000) as damages, attorneys' fees and costs of suit, and that execution issue therefor.