Opinion
4:21-cv-04669-HSG
09-07-2021
PLM OPERATIONS, LLC, Plaintiff, v. TERESITA FERNANDEZ, and DOES 1-5, inclusive, Defendants.
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP A Limited Liability Partnership Including Professional Corporations LAURA L. CHAPMAN, Cal. Bar No. 167249 Counsel for Plaintiff PLM Operations, LLC
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP A Limited Liability Partnership Including Professional Corporations LAURA L. CHAPMAN, Cal. Bar No. 167249 Counsel for Plaintiff PLM Operations, LLC
CONSENT JUDGMENT AND PERMANENT INJUNCTION
Plaintiff PLM Operations, LLC ("Plaintiff' or "PLM") and Defendant Teresita Fernandez ("Defendant") (collectively the "Parties") have entered into a written settlement agreement, pursuant to which, among other things, they consent to entry of this Consent Judgment and Permanent Injunction, to its prompt entry by the Court, and to each and every provision, order, and decree herein.
STIPULATIONS BETWEEN THE PARTIES
Plaintiff and Defendant, for the purpose of resolution of this matter, hereby stipulate to the following facts as true and correct:
1.The Parties agree that this action arises under the United States Lanham Act, 15 U.S.C. §§ 1114, 1125(a), the Copyright Act, 17 U.S.C. § 101 et seq, and California common law.
2. The Parties agree that this Court has subject matter jurisdiction over the Lanham Act claims pursuant to 15 U.S.C. § 1121 (actions arising under the Lanham Act), 28 U.S.C. § 1331 (federal question), 1338(a) (any Act of Congress relating to patents or trademarks), and 1338 (b) (any action asserting claim of unfair competition joined with a substantial and related claim under the trademark law). This Court has subject matter jurisdiction over the copyright claim pursuant to 28 U.S.C. §§ 1331 and 1338. This Court has supplemental jurisdiction over the California state law claims pursuant to 28 U.S.C. § 1367 because those claims are so closely related to the federal claims asserted herein as to form part of the same case and controversy.
3. The Parties agree that Defendant is subject to personal jurisdiction in the Northern District of California because she engaged in the acts complained of below in this district, regularly transacts business in this district, and, on information and belief, resides here.
4. The Parties agree that venue is proper pursuant to 28 U.S.C. § 1391(b).
5. The Parties agree that Plaintiff owns and uses the trademark that consists of or contains the words "La Michoacana" and the following design in the United States:
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6. The Parties agree that Plaintiff owns the following trademark registrations in the United States:
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7. The Parties agree that Plaintiff owns U.S. Copyright Registration Nos. VAu001126759 and VA0001858889, which includes the Girl in Pink with Cone design shown below:
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8. The Parties agree that Defendant is infringing on Plaintiffs marks by using the protected designs at various Northern California stores in the following representative ways:
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9. The Parties agree that Defendant has violated Section 32(1)(a) of the Lanham Act, 15 U.S.C. § 1114(1)(a);
10. The Parties agree that Defendant has violated Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); and
11. The Parties agree that Defendant has violated the Copyright Act, 17 U.S.C. § 501.
NOW THEREFORE, upon consent of the parties hereto, IT IS ORDER, ADJUDGED, AND DECREED as follows:
PERMANENT INJUNCTION
Defendant, as well as each of her agents, servants, employees, attorneys, successors and assigns, and all those persons in active concert or participation with her hereby, are permanently enjoined from knowingly engaging in, committing, or performing, directly or indirectly, any or all of the following acts:
1. Using PLM's Girl with Bar, Girl with Cone, Girl in Pink with Bar, Girl in Pink with Cone, PLM's La Michoacana + Design Mark, or any other reproduction, counterfeit, copy or colorable imitation of marks owned by PLM or any other marks confusingly similar thereto, on or in connection with any goods or services;
2. Using any simulation, reproduction, counterfeit, copy, or colorable imitation of PLM's trademarks or any other marks confusingly similar thereto, in connection with the promotion, advertisement, display, sale, offer for sale, manufacture, production, importation, circulation, or distribution of any products, including but not limited to the following designs:
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4. Making any statement or representation whatsoever, or using any false designation of origin or false description, or performing any act, which can or is likely to lead the trade or public, or individual members thereof, to believe that any products manufactured, distributed, or sold by Defendants are in any manner associated or connected with Plaintiff, or are sold, manufactured, licensed, sponsored, approved, or authorized by Plaintiff;
5. Copying, reproducing or displaying Plaintiffs copyrighted work; and
6. Effecting assignments or transfers, forming new entities or associations, or utilizing any other device for the purpose of circumventing or otherwise avoiding the prohibitions set forth in subparagraphs (1) through (5).
JUDGMENT IN PART AND DISMISSAL OF CLAIMS IN PART
Judgment is hereby entered in favor of PLM and against Defendant on the following three claims for relief:
. The first claim for Trademark Counterfeiting Under the Lanham Act, 15 U.S.C. § 1114;
. The fifth claim for Trademark Infringement Under California Common Law - La Michoacana + Design Mark; and
. The sixth claim for Copyright Infringement, 17 U.S.C. § 501.
Pursuant to Federal Rule of Civil Procedure 41(a), PLM hereby dismisses without prejudice the remainder of claims for relief:
. The second claim for Trademark Infringement Under the Lanham Act, 15 U.S.C. §1114;
. The third claim for Unfair Competition Under the Lanham Act, 15 US, C. § 1125(a) - La Michoacana Word Mark; and
. The fourth claim for Trademark Infringement Under California Common Law - La Michoacana Word Mark.
This Court shall retain jurisdiction to consider any dispute regarding or action to enforce the terms of this Consent Judgment and Permanent Injunction. The Permanent Injunction shall remain in full force and effect unless and until modified by order of this Court.
There being no just reason for delay, IT IS SO ORDERED and JUDGMENT SHALL BE ENTERED ACCORDINGLY.
CONSENT TO ENTRY
The parties hereby consent to the terms and conditions of this Consent Judgment and Permanent Injunction as set forth herein and consent to entry thereof.