Opinion
Case No. 2:05CV00538.
August 19, 2005
Brian C. Johnson, Esq., Graden P. Jackson, Esq., Attorneys for John A. Anderson and Utah Health Magazine LLC.
David M. Bennion, Esq., John E. Delaney, Parsons Behle Latimer, Salt Lake City, UT, Attorneys for Moringa, Inc. d/b/a Zija International.
AGREED PERMANENT INJUNCTION ORDER
WHEREAS, plaintiff Moringa, Inc. d/b/a Zija International ("Zija") filed the present action against, among others, John A. Anderson an individual d/b/a citihealth ("Mr. Anderson"), and Utah Health Magazine LLC, a Utah limited liability company ("Utah Health") (collectively referred to as "Defendants"); and whereas only Zija and Defendants desire to resolve this dispute as between those three parties only; and whereas Defendants admit no wrongdoing; and whereas Zija and Defendants waived the making of written findings of fact and conclusions of law in connection with this Order and have further waived any hearing concerning the entry of this Permanent Injunction Order; therefore, upon good cause appearing therefore, and upon stipulation of Zija and Defendants, the Court orders as follows:
The Parties to this Order.
1. Zija alleges that it markets and sells nutritional and dietary supplement products throughout Utah, the United States, and internationally. Zija further alleges that it promotes, markets, distributes, and sells its Zija™ branded nutritional and dietary supplement beverage throughout Utah, the United States, and internationally.
2. While not a party to this Order, Defendant Monarch Health Sciences, Inc. ("Monarch") also allegedly markets and sells nutritional dietary supplement products throughout Utah, the United States, and internationally. Specifically, Monarch allegedly markets and sells and has marketed and sold the nutritional and dietary supplement beverage and gel products branded as Mona-Vie (the "Mone-Vie Branded Products").
3. Zija and Monarch are allegedly direct competitors in the multi-level (or network) marketing channel in promoting, marketing, distributing, and selling nutritional and dietary supplement products, including beverages, and in providing assistance in the establishment and/or operation of distributorships, person to person, and wholesale and retail merchandising of nutritional and dietary supplements.
4. The Mona-Vie Branded Product allegedly competes directly with the Zija™ branded nutritional and dietary supplement beverage.
5. Mr. Anderson has promoted, marketed, distributed, and sold the Mona-Vie Branded Product. As such, Zija contends that Mr. Anderson is or was a direct competitor of Zija's distributors in the promotion, marketing, distribution, and sale of nutritional and dietary supplement products, including beverages, and in providing assistance in the establishment and/or operation of distributorships, person to person, and wholesale and retail merchandising of nutritional and dietary supplements.
6. Utah Health promotes and advertises various nutritional and dietary supplement products throughout Utah, the United States, and internationally. On behalf of Monarch, such advertisements have included advertisements of the Mona-Vie Branded Product.
The Marks at Issue in this Order.
7. Zija is allegedly the owner of the trademark and service marks DRINK LIFE IN (U.S. App. Ser. No. 76/613,340) and ZIJA DRINK LIFE IN (stylized) (U.S. App. Ser. No. 76/613,334) (the "DRINK LIFE IN Marks"). These applications were filed with the United States Patent and Trademark Office ("USPTO") as intent-to-use based applications on September 27, 2004.
8. From as early as August 2004 to the present, Zija contends that it has devoted a substantial amount of effort and spent substantial amounts of money advertising and promoting its DRINK LIFE IN Marks.
9. Zija alleges that its DRINK LIFE IN Marks are used in promoting, marketing, distributing, and selling "nutritional and dietary supplements", including its Zija™ branded nutritional and dietary supplement beverage, and with "rendering technical assistance in establishment and/or operation of distributorships and person to person and wholesale and retail merchandising of various goods; including nutritional and dietary supplements." Zija further alleges that it has continuously used its DRINK LIFE IN Marks in interstate commerce throughout Utah, the United States, and internationally in connection with the above-identified goods and services since as early as December 2004.
10. The Mona-Vie Branded Product allegedly is or has been promoted, marketed, distributed, and sold in interstate commerce in connection with the use and adoption by Monarch of the mark DRINK LIFE, a mark that Zija alleges is confusingly similar to the DRINK LIFE IN Marks.
11. As a distributor of the Mona-Vie Branded Product, Mr. Anderson, as an individual, has promoted, marketed, distributed, and sold the Mona-Vie Branded Product and that product promotion included the mark DRINK LIFE. Mr. Anderson is not currently a licensee of, or in any way affiliated, connected or associated with Zija and its DRINK LIFE IN Marks, and other than Zija's future consent to advertise the Zija™ branded product, does not have Zija's consent to use its DRINK LIFE IN Marks or anything confusingly similar therewith such as Monarch's DRINK LIFE mark.
12. Utah Health, as a Utah limited liability corporation, has also promoted and marketed the Mona-Vie Branded Product through its advertisements of that product, and that promotion included the mark DRINK LIFE. Utah Health is not currently a licensee of, or in any way affiliated, connected or associated with Zija and its DRINK LIFE IN Marks, and other than Zija's future consent to advertise the Zija™ branded product, does not have Zija's consent to use its DRINK LIFE IN Marks or anything confusingly similar therewith such as Monarch's DRINK LIFE mark.
13. Zija alleges that its rights in its DRINK LIFE IN Marks are superior to any rights of Defendants in the mark DRINK LIFE in connection with the promotion, marketing, distribution, and sale of "nutritional and dietary supplements" and with "rendering technical assistance in establishment and/or operation of distributorships and person to person and wholesale and retail merchandising of various goods; including nutritional and dietary supplements."
Zija's Allegations and Mr. Anderson and Utah Health's Response.
14. Zija has alleged that Defendants' use of the DRINK LIFE mark is likely to cause confusion, to cause mistake, and/or to deceive consumers into believing that the Mona-Vie Branded Product originate with, or are affiliated with Zija, or are approved by Zija, or that Defendants are otherwise associated with Zija. Defendants have generally denied this allegation.
15. Zija has alleged that Defendants' use of the DRINK LIFE mark in commercial advertising or promotion of the Mona-Vie Branded Product and for purposes of providing assistance in the establishment and/or operation of multi-level distributorships, person to person, and wholesale and retail merchandising of nutritional and dietary supplements in connection with the Mona-Vie Branded Product constitutes a false or misleading description of fact, and/or a false or misleading representation of fact. Defendants have generally denied this allegation.
16. Zija has alleged that by engaging in the activities immediately described above, Defendants have violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). Defendants have generally denied this allegation.
17. Zija has alleged that Defendants' acts were done willfully and with full knowledge of Zija's rights in its DRINK LIFE IN Marks and that, as such makes this case an extraordinary case entitling Zija to an award of three times Defendants' profits from the sale of goods and/or services that infringe the DRINK LIFE IN Marks or three times Zija's damages, which ever is greater, together with an award of prejudgment interest and the reasonable attorneys' fees Zija has incurred to pursue this action. Defendants have generally denied this allegation.
18. Zija has alleged that Defendants' acts as described above constitute trademark infringement under the common law of the State of Utah. Defendants have generally denied this allegation.
19. Zija has alleged that Defendants' acts as described above constitute unfair competition in violation of the common law of Utah. Defendants have generally denied this allegation.
20. Zija has alleged that Defendants' acts as described above constitute intentional interference with Zija's economic relations through improper means and/or for an improper purpose, including, but not limited to, trademark infringement and unfair competition. Defendants have generally denied this allegation.
21. Zija has alleged that Defendants' acts as described above constitute unfair and deceptive trade practices, in violations of Utah Code Ann. § 13-11a-3(1) because, among other things, Defendants' use of the DRINK LIFE mark is likely to cause confusion or a misunderstanding as to the source, sponsorship, or approval of Defendants goods and/or services bearing the DRINK LIFE mark. Defendants have generally denied this allegation.
22. Zija and Defendants have entered into a Settlement Agreement dated August 11, 2005, regarding this matter.
The following is HEREBY ORDERED:
John A. Anderson, an individual, and Utah Health Magazine LLC, a Utah limited liability corporation, are permanently enjoined from:
Using, in any manner, including printing or publishing advertisements at the request of third-parties (other that Zija or its successors and assigns), the mark DRINK LIFE, or any other mark confusingly similar thereto, and any mark confusingly similar to the DRINK LIFE IN Marks or likely to cause injury to the goodwill associated with Zija and its DRINK LIFE IN Marks, and from otherwise engaging in acts of unfair competition and/or interfering with Zija's economic relations. Pursuant to this injunction, Defendants are directed to file with the Court and serve on Zija, within thirty (30) days after service on Defendants of this injunction, a written report that is sworn under oath that sets forth in detail the manner and form in which Defendants have complied with the injunction.