Opinion
CV-21-02212-PHX-MTL
06-10-2022
Optimistic Investments LLC, et al., Plaintiffs, v. Kangaroo Manufacturing Incorporated, et al., Defendants.
STIPULATED PERMANENT INJUNCTION
MICHAEL T. LIBURDI, UNITED STALES DISTRICT JUDGE.
Optimistic Investments, LLC, Michael S. Murphy, OIG Brand Management, LLC, Giraffe Manufacturing, LLC, Lyka Distribution, LLC, Crazy Games, LLC, FBA King, LLC, Toy Time, LLC, Divine Skin & Cosmetics, LLC. Joshua Tischer, John Burns, Kangaroo Manufacturing, Inc., Justin Ligeri, JNBV, LLC, and Emily Muradyan having stipulated to entry of this Stipulated Permanent Injunction, and to each and every provision, order, and decree herein, the Court hereby enters its Findings and Orders as follows:
1. Optimistic Investments, LLC, is the owner of the following valid and subsisting trademarks registered on the Principal Register of the U.S. Patent and Trademark Office (“the Optimistic Marks”):
(a) U.S. Trademark Reg. No. 4, 897, 428 for the KANGAROO mark
(b) U.S. Trademark Reg. No. 5, 474, 531 for the KANGAROO mark
(c) U.S. Trademark Reg. No. 5, 132, 989 for the KANGAROO mark
(d) U.S. Trademark Reg. No. 5, 132, 990 for the KANGAROO
MANUFACTURING mark
(e) U.S. Trademark Reg. No. 4, 980, 760 for the KANGAROO MANUFACTURING mark
(f) U.S. Trademark Reg. No. 4, 936, 937 for the KANGAROO MANUFACTURING mark
(g) U.S. Trademark Reg. No. 5, 004, 070 for the LIL' SPROUTS mark
(h) U.S. Trademark Reg. No. 4, 969, 574 for the LIL' SPROUTS mark
(i) U.S. Trademark Reg. No. 5, 263, 260 for the MR. KITCHEN mark
(j) U.S. Trademark Reg. No. 5, 629, 199 for the RESCUE GUARD mark
(k) U.S. Trademark Reg. No. 5, 795, 085 for the COUNTERFEIT BLONDE mark
(1) U.S. Trademark Reg. No. 6, 237, 358 for the CHEYENNE BRANDS mark
(m) U.S. Trademark Reg. No. 6, 066, 013 for the TOWER OF BABEL mark
(n) U.S. Trademark Reg. No. 6, 065, 766 for the RED ROBIN GREETINGS mark
(o) U.S. Trademark Reg. No. 5, 903, 087 for the SILLY GOOSE GAMES mark
(p) U.S. Trademark Reg. No. 5, 188, 466 for the PULL ‘N STACK mark
(q) U.S. Trademark Reg. No. 5, 224, 757 for the HIDE ‘N TWEET mark
(r) U.S. Trademark Reg. No. 5, 23 8, 320 for the KINDER GARDENING mark
(s) U.S. Trademark Reg. No. 4, 896, 266 for the NAKED mark
2. Michael S. Murphy is the owner of valid and subsisting trademarks registered in the Principal Register, including U.S. Trademark Reg. No. 5, 433, 422, issued on March 27, 2018, for the ILLUMAGLOW 2.0 mark for Class 16 (children's wall stickers and murals) and U.S. Trademark Reg. No. 5, 437, 444, issued on April 3, 2018, for the ULTRA-GLOW SUPER STARS mark for Class 16 (children's wall stickers and murals), U.S. Trademark Reg. Nos. 5, 963, 514 and 6, 081, 606, for NARWHAL NOVELTIES, U.S. Trademark Reg. No. 6, 297, 114, for GALAXY BRITE, and U.S. Trademark Reg. No. 6, 291, 071 for LUNAR PHASE (hereinafter the “Murphy Marks”).
3. OIG Brand Management, LLC, is the owner of a valid and subsisting trademark registered in the Principal Register for which it holds U.S. Trademark Reg. No. 6, 219, 636 for STAR DUST ULTRA GLOW STARS (hereinafter the “OIG Mark”).
4. Giraffe Manufacturing, LLC, is the owner of a valid and subsisting trademark for the word mark GIRAFFE MANUFACTURING, for which it holds Trademark Registration No. 5, 668, 207 (the “Giraffe Mark”).
5. Crazy Games, LLC, is the owner of a valid and subsisting trademark for the CRAZY GAMES mark for which it holds Trademark Registration No. 6, 551, 497 (the “Crazy Games Mark”).
6. Lyka Distribution, LLC, is the owner of a valid and subsisting trademark for the LYKA DISTRIBUTION mark for which it holds Trademark Registration No. 6, 468, 958 (the “Lyka Mark”) (together, the Optimistic Marks, the Murphy Marks, the OIG Mark, the Crazy Games Mark, the Giraffe Mark and the Lyka Mark shall be referred to herein as the “Plaintiffs' Marks”).
7. Optimistic is the owner of the copyrighted works set forth in Exhibit A hereto (the “Optimistic Copyrights”).
8. Crazy Games is the owner of Copyright Registration No. VA0002295240, which it uses to market its backgammon (small, brown), backgammon (medium, brown), backgammon (medium, black), backgammon (large, brown), backgammon (medium, black), kid's cornhole game, and deluxe card shuffler products through its Amazon seller account (the “Crazy Games Copyright”) (together, the Optimistic Copyrights and the Crazy Games Copyright are referred to herein as the “Optimistic Parties' Copyrights”).
Based on the foregoing Findings, IT IS HEREBY ORDERED that Defendants Kangaroo Manufacturing, Inc. (“Kangaroo”), Justin Ligeri (“Ligeri”) JNBV, LLC (“JNBV”) and Emily Muradyan (“Muradyan”) and their directors, officers, members, managers, employees, attorneys, agents, representatives and all persons in active concert or participation with them, directly or indirectly are permanently enjoined from:
(a) using any of the Plaintiffs' Marks alone or in combination with any other word(s) or elements(s), or any mark, name, domain name, or other designation that depicts, contains or consists of any name or mark confusingly similar to any of the Plaintiffs' Marks for the purpose of advertising, marketing, promoting, offering for sale, selling, importing, or distributing goods or products that are sold online either directly or through platforms or websites operated by third parties or otherwise sold to the public either directly or through distributors;
(b) manufacturing, distributing, selling, marketing, advertising, promoting, or authorizing any third party to manufacture, distribute/provide, sell, market, advertise, or promote any goods or services using any of the Plaintiffs' Marks or any other mark that is a counterfeit, copy, simulation, confusingly similar variation, or colorable imitation of the Plaintiffs' Marks;
(c) engaging in any activity that infringes Plaintiffs' rights in the Plaintiffs' Marks;
(d) engaging in any activity constituting unfair competition with Plaintiffs;
(e) making or displaying any statement, representation, or depiction that is likely to lead the public or the trade to believe that (i) the goods the Defendants are in any manner approved, endorsed, licensed, sponsored, authorized, or franchised by or associated, affiliated, or otherwise connected with Plaintiffs or (ii) that Plaintiffs' goods or are in any manner approved, endorsed, licensed, sponsored, authorized, or franchised by or associated, affiliated, or otherwise connected with Defendants;
(f) using or authorizing any third party to use in connection with any business
or goods any false description, false representation, or false designation of origin, or any marks, names, words, symbols, devices, or trade dress that falsely associate such business and/or goods with Plaintiffs or tend to do so;
(g) registering, or applying to register, any trademark, service mark, domain name, trade name, or other source identifier or symbol of origin consisting of or incorporating one or more of the Plaintiffs' Marks or any other mark that infringes or is likely to be confused with Plaintiffs' Marks;
(h) recording or attempting to record with the USPTO or any third party any assignments of the Plaintiffs' Marks;
(i) claiming ownership of the Plaintiffs' Marks in any forum, including without limitation in any infringement reports, takedown notices, claims, lawsuits or complaints; or taking any other actions that may have the effect of preventing or impeding Plaintiffs' use of the Plaintiffs' Marks.
IT IS FURTHER ORDERED that Defendants Kangaroo, Ligeri, JNBV, and Muradyan and their directors, officers, members, managers, employees, attorneys, agents, representatives and all persons in active concert or participation with them, directly or indirectly are permanently enjoined from:
(a) claiming ownership of the Optimistic Parties' Copyrights in any forum, including without limitation in any infringement reports, takedown notices, claims, lawsuits or complaints; or taking any other actions that may have the effect of preventing or impeding Optimistic's use of the Optimistic Copyrights;
(b) reproducing, publishing, distributing, transmitting, promoting, or publicly displaying, Optimistic Copyrights or authorizing, enabling, or assisting any third party to reproduce, publish, distribute, transmit, promote, or publicly display an Optimistic Copyrights or other materials that include, copy, are derived from, or embody any or all of the Optimistic Parties' Copyrights;
(c) engaging in any activity that infringes the Optimistic Parties' rights in the
Optimistic Parties' Copyrights; and
(d) aiding, assisting, or abetting any other individual or entity in doing any act prohibited by the foregoing paragraphs.
IT IS FURTHER ORDERED that Defendants Kangaroo, Ligeri, JNBV, and Muradyan, their agents, attorneys, companies, and assigns are prohibited from filing Amazon complaints regarding any of the products at issue in this case as identified in Plaintiffs' Exhibit 18 and Defendants' Exhibit 107 admitted at hearing in this cause on April 14-15, 2022, or regarding any other products which are subject to the Plaintiff's Marks or the Optimistic Parties' Copyrights.
IT IS FURTHER ORDERED that this permanent injunction shall remain in full force and effect unless and until modified by order of this Court.
IT IS FURTHER ORDERED that, the parties having stipulated that this Stipulated Permanent Injunction finally resolves all claims, counterclaims and third-party claims as to all parties in this matter, this matter is hereby dismissed with prejudice pursuant to Rule 54(b), Fed. R. Civ. P, with the respective parties to bear their own attorneys' fees and costs.
(EXHIBIT OMITTED)