Opinion
8:23-cv-01190-FWS-DFM
11-15-2024
PUBLIC STORAGE OPERATING COMPANY, Plaintiff, v. CHARLES D. BURRUS Family trust D/B/A MINI PUBLIC STORAGE, Defendant.
FINAL JUDGMENT AND PERMANENT INJUNCTION
HON. FRED W. SLAUGHTER, UNITED STATES DISTRICT JUDGE
On October 3, 2024, the court issued the Order Granting Plaintiff Public Storage Operating Company's (“Plaintiff”) Motion for Summary Judgment, Denying Defendant Charles D. Burrus Family Trust D/B/A Mini Public Storage's (“Defendant”) Motion for Summary Judgment, and Granting Plaintiff's CrossMotion for Summary Judgment. (Dkt. 72.) The court then issued an Order Directing the Parties to Meet and Confer Regarding a Proposed Judgment. (Dkt. 75.) Plaintiff and Defendant now “consent and agree to the terms and conditions of this Final Consent Judgment and Permanent Injunction.” (Dkt. 76.)
Accordingly, having considered all the pleadings and papers filed in this case, the evidence on record, the argument of counsel, the parties' agreement regarding the terms and conditions of this Final Judgment and Permanent Injunction, and the applicable law, and for the good cause appearing therein, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED AS FOLLOWS:
A. Final judgment is entered in favor of Plaintiff and against Defendant on all of Plaintiff's claims, i.e. Plaintiff's (1) First Claim for Relief for trademark infringement and false designation of origin pursuant to 15 U.S.C. § 1125(a); (2) Second Claim for Relief for trademark infringement pursuant to 15 U.S.C. § 1114; (3) Third Claim for Relief for unfair competition in violation of Cal. Bus. Prof. Code §§ 17200, et seq.; and (4) Fourth Claim for Relief for unfair competition in violation of California common law.
B. Except as expressly permitted as described below, Defendant, and its officers, agents, directors, employees, attorneys, affiliates, parents, subsidiaries, assignees, licensees, successors and all other related entities or persons in active concert or participation with it who receive actual notice of this injunction by personal service or otherwise, are permanently restrained and enjoined from:
1. using the PUBLIC STORAGE, MINI PUBLIC STORAGE, and MINI PUBLIC SELF STORAGE marks, and any other mark containing
PUBLIC, in any manner, including but not limited to (i) advertising, promoting, displaying, selling, offering to sell, distributing or providing products or services in connection with the PUBLIC STORAGE, MINI PUBLIC STORAGE, and MINI PUBLIC SELF STORAGE marks, or any other mark containing PUBLIC, (collectively, “the Marks”), including but not limited to, on forms, products, signage, packaging, marketing or promotional materials, whether physical or electronic, to any person or entity and (ii) manufacturing or causing to be manufactured, any forms, products, signage, packaging, marketing or promotional materials, or any other materials bearing the Marks;
2. adopting, using, or seeking registration for the Marks or any other mark that is confusingly similar to any of the Marks;
3. registering or attempting to register any domain name, social media account, corporate name, business name, or trade name or the like that contain and/or is confusingly similar to any of the Marks; and
4. disputing or contesting, directly or indirectly, Plaintiff's exclusive rights and titles to the Marks or the validity thereof in the courts or any administrative agency or body of the United States;
C. On or before December 12, 2024, Defendant shall transfer, or cause to be transferred, to Plaintiff the domain <www.minipublicstorage.com>. Defendant shall cooperate with Plaintiff as necessary to implement this transfer, including, but not limited to, providing Plaintiff with any applicable user name(s), password(s), or authorization codes. Prior to December 12, 2024, Defendant shall not assign, license, or otherwise encumber or transfer any rights to the <www.minipublicstorage.com> domain name in any way.
D. On or before December 12, 2024, Defendant shall permanently take down, or cause to be permanently taken down, all content from and permanently disable any social media pages owned or otherwise controlled by Defendant that contains the PUBLIC STORAGE, MINI PUBLIC STORAGE, and/or MINI PUBLIC SELF STORAGE marks, including, but not limited to, https://www.facebook.eom/p/Mini-Public-Storage-Stanton-100063768233896/?rdr. Prior to December 12, 2024, Defendant shall not assign, license, or otherwise encumber or transfer any rights to the social media accounts that contain the PUBLIC STORAGE, MINI PUBLIC STORAGE, and MINI PUBLIC SELF STORAGE marks in any way.
E. On or before December 12, 2024, Defendant shall have destroyed or changed to completely remove or completely and permanently cover, or caused to be destroyed or changed to completely remove or completely and permanently cover, whichever the case may be, the PUBLIC STORAGE, MINI PUBLIC STORAGE, and MINI PUBLIC SELF STORAGE marks, or any other mark containing PUBLIC from any signage, products, packaging or other materials, except for physical signs located at 11342 Western Ave Stanton, CA 90680 (the “Facility”). Within 60 days of this Permanent Injunction, Defendant shall remove all physical signs located at the Facility (including on doors located at such real estate) bearing the PUBLIC STORAGE, MINI PUBLIC STORAGE, and MINI PUBLIC SELF STORAGE marks, or any other mark containing PUBLIC.
F. On or before January 13, 2025, Defendant shall change to completely remove, or cause to be changed to completely remove, whichever the case may be, all usage of PUBLIC STORAGE, MINI PUBLIC STORAGE, and/or MINI PUBLIC SELF STORAGE from <www.aaaqualityselfstorage.com>, and any other website owned or otherwise controlled by Defendant or its officers, agents, directors, employees, attorneys, affiliates, parents, subsidiaries, assignees, licensees, successors, and all other related entities or persons in active concert or participation with it who receive actual notice of this injunction by personal service or otherwise.
G. On or before January 13, 2025, Defendant shall change to completely remove, or cause to be changed to completely remove, whichever the case may be, all usage of PUBLIC STORAGE, MINI PUBLIC STORAGE, and/or MINI PUBLIC SELF STORAGE from <https://www.yelp.com/biz/mini-public-storage-stanton-stanton>, yellowpages.com, Google and Google Maps, any other search engine or navigation service, and any self-storage aggregator, including, but not limited to, Sparefoot.com, Selfstorage.com, Storage.com, Usselfstorage.com, and Ezstorit.com.
H. On or before January 13, 2025, Defendant shall remove or cause to be removed (via dissolution or change of name) the PUBLIC STORAGE, MINI PUBLIC STORAGE, and MINI PUBLIC SELF STORAGE marks or any other mark containing PUBLIC from the name of all business entities owned or otherwise controlled by Defendant bearing the PUBLIC STORAGE mark or any other mark containing PUBLIC.
I. This court shall retain jurisdiction of this matter for all purposes, including for the purpose of enforcing the terms and provisions of this Final Judgment and Permanent Injunction, until February 3, 2025.
J. Each party shall bear its own fees, costs, and expenses.
K. The Clerk of the Court is directed to enter this Judgment and Permanent Injunction forthwith.