Opinion
Case No.: CV-03-4045 SHSx (ER)
December 30, 2003
DEFAULT JUDGMENT AND PERMANENT INJUNCTION AS TO DEFENDANT CASTWORLD PRODUCTS INC.
Plaintiff Philip Morris USA Inc. ("Philip Morris USA") having properly served a Summons and Complaint upon Defendant Castworld Products Inc., ("Defendant"), and Defendant having failed to timely respond to the complaint, it is hereby ORDERED, ADJUDGED and DECREED as follows:
1. This is an action for: (i) infringement of registered trademarks in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114; (ii) false designation of origin and trademark and trade dress infringement in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); (iii) unlawful importation of trademark infringing goods in violation of Section 42 of the Lanham Act, 15 U.S.C. § 1124; (iv) unlawful importation of trademark infringing goods in violation of Section 1526(a) of the Tariff Act, 19 U.S.C. § 1526(a); (v) unfair competition and trademark infringement in violation of the common law of the State of California; and (vi) unfair competition in violation of the California Unfair Competition Law, California Business Professions Code §§ 17200 et seq. This Court has personal jurisdiction over Philip Morris USA and Defendant, and subject matter jurisdiction of the matter in controversy between Philip Morris USA and Defendant. Venue in this judicial district is proper.
2. Defendant has not made any objections regarding the sufficiency of process or the sufficiency of service of process in this action.
3. Philip Morris USA manufactures cigarettes, including the famous MARLBORO(r) brand, for sale in the United States. Philip Morris USA is the registered owner of the following MARLBORO(r) and MARLBORO(r)-related trademarks on the Principal Register of the United States Patent and Trademark Office, all of which are valid, subsisting and incontestable pursuant to 15 U.S.C. § 1065 (collectively, the "Philip Morris USA Marks"):
Registration Registration Trademark Number Date 68,502 April 14, 1908 MARLBORO 938,510 July 25, 1972 MARLBORO Red Label 1,039,412 May 11, 1976 MARLBORO LIGHTS 1,039,413 May 11, 1976 MARLBORO LIGHTS Label 1,544,782 June 20, 1989 MARLBORO LIGHTS MENTHOL Label 1,651,628 July 23, 1991 MARLBORO ULTRA LIGHTS Label4. Philip Morris USA has spent substantial time, effort, and money advertising and promoting the Philip Morris USA Marks throughout the United States, and consequently these marks have developed significant goodwill, have become distinctive, and have acquired secondary meaning. As a result of the sale of counterfeit MARLBORO(r) and/or MARLBORO Red Label(r) cigarettes, Philip Morris USA is suffering a loss of the enormous goodwill associated with the Philip Morris USA Marks, and is losing profits from lost sales of genuine products.
5. On June 10, 2002, and subsequent to Philip Morris USA's adoption and first use of the Philip Morris USA Marks, the United States Bureau of Customs and Border Protection, formerly known as the United States Customs Service ("Customs"), at the Port of Los Angeles in Long Beach Harbor, seized 40,000 cartons of Counterfeit Cigarettes bearing imitation Marlboro Marks including, without limitation imitations of MARLBORO(r) and MARLBORO Red Label(r) brand cigarettes. Customs' Notice of Seizure of Infringing Merchandise indicated that the Counterfeit Cigarettes were imported by Defendant.
6. Philip Morris USA filed the complaint in this action on June 9, 2003.
7. Defendant was served with the Summons and Complaint on June 19, 2003. Entry of Default against Defendant was recorded on September 19, 2003, for Defendant's failure to timely respond to Plaintiff's complaint. On December 5, 2003, Plaintiff presented this Court with its Application for Default Judgment against Defendant. Defendant did not file any opposition to this application.
8. Accordingly, it is hereby ORDERED that Defendant and Defendant's officers, agents, servants, employees, and attorneys, and all persons in active concert or participation with Defendant, are hereby PERMANENTLY ENJOINED from
(i) purchasing, importing, selling, offering for sale, or otherwise using in commerce any counterfeit cigarettes bearing the Marlboro Marks, including without limitation MARLBORO(r) and MARLBORO Red Label(r) brand cigarettes; and 3
(ii) assisting, aiding or abetting any other person or entity in purchasing, importing, selling, offering for sale, or otherwise using in commerce any counterfeit cigarettes bearing the Marlboro Marks, including without limitation MARLBORO(r) and MARLBORO Red Label(r) brand cigarettes.9. IT IS FURTHER ORDERED THAT, pursuant to 15 U.S.C. § 1117(c), Defendant is liable to Plaintiff in the amount of $2,000,000 for violations of Sections 32 and 43(a) of the Lanham Act.
10. IT IS FURTHER ORDERED THAT Defendant is liable to Plaintiff for attorney's fees in the amount of $43,600 and costs in the amount of $472.95.
11. The terms of this Judgment and Permanent Injunction shall be enforceable against Defendant, Defendant's successors in interest and assigns, and any persons or business entities working in concert with Defendant.
12. There being no just reason for delay, the entry of this default judgment by the United States District Court constitutes entry of final judgment as to all remaining claims asserted in this action by Philip Morris USA against Defendant pursuant to Federal Rule of Civil Procedure 54(b).
13. The Court shall retain jurisdiction to enforce this Judgment and Permanent Injunction. If Defendant shall be alleged to have breached the terms of this Judgment and Permanent Injunction, Philip Morris USA shall have the right to reopen this matter upon motion filed and heard on an expedited basis. If this matter is so reopened, Philip Morris USA may pursue any and all remedies it may have against Defendant.
IT IS SO ORDERED