Opinion
CASE NO: C 02-02999 SI
May 8, 2003
KENNETH B. WILSON, State Bar No. 130009, STEFANI E. SHANBERG, State Bar No. 206717, LUNG-CHI LEE, State Bar No. 215521, PERKINS COIE LLP, San Francisco, California, Attorneys for Plaintiff TILIA INTERNATIONAL, INC.
LAW OFFICES OF RAY K. SHAHANI, Ray K. Shahani, Attorneys for Defendants Impak Corporation and J. Kevin Cullen
[PROPOSED] STIPULATED JUDGMENT AND PERMANENT INJUNCTION
WHEREAS, on June 24, 2002, Tilia International, Inc. ("Tilia") filed its complaint for Patent Infringement, Trademark Infringement and Unfair Competition ("Complaint") against Defendants J. Kevin Cullen and Impak Corporation (collectively, the "Defendants");
WHEREAS, on July 19, 2002, this Court issued a Temporary Restraining Order against Defendants, enjoining Defendants from offering to sell the accused vacuum packaging bags, using the FOODSAVER trademark in any form, and destroying any evidence or documents related in any way to this litigation ("Temporary Restraining Order");
WHEREAS, the parties desire that the Court enter this [Proposed] Stipulated Judgment and convert the Temporary Restraining Order into a Permanent Injunction as set forth below. THE PARTIES HEREBY AGREE AND STIPULATE, AND THE COURT ORDERS, ADJUDGES AND DECREES, AS FOLLOWS:
1. This Court has jurisdiction of the subject matter of the action and the parties to this action, and venue is proper in this judicial district;
2. Tilia is the owner of the trademarks, "FOODSAVER" and "TILIA", which are valid trademarks registered with the United States Patent and Trademark Office that have been in exclusive and continuous use by Tilia since at least 1986, and Defendants have infringed such marks;
3. Tilia is the owner of United States Patent No. RE 34,929, entitled Plastic Bag for Vacuum Sealing, which originally issued on July 12, 1988, to Hanns J. Kristen (the "`929 Patent");
4. The `929 Patent is valid and enforceable, and Defendants have infringed one or more claim(s) of that patent;
5. Defendants, and their officers, agents, servants, employees and attorneys, and those persons in active concert and participation with Defendants are ordered:
a. To provide, convey, assign and transfer to Tilia within five (5) business days upon entry of this [Proposed] Stipulated Judgment and Permanent Injunction by the Court:
(i) All vacuum packaging bags in Defendants' possession, custody, and/or control which are marked with the FOODSAVER or TILIA trademarks or the `929 Patent number or which are accused of infringing the `929 Patent;
(ii) All business records in Defendants' possession, custody and/or control relating to the purchase, distribution, manufacture, reproduction, source of supply, marketing and/or sale of all vacuum packaging bags which are marked with the FOODSAVER or TILIA trademarks or the `929 Patent number or which are accused of infringing the `929 Patent;
(iii) Lists setting forth all suppliers, distributors, manufacturers, wholesalers and/or other makers (the "Suppliers") of vacuum packaging bags marked with the FOODSAVER or TILIA trademarks or the `929 Patent number or which are accused of infringing the `929 Patent, and all information regarding Defendants' relationship with the Suppliers, contact information for the Suppliers, inventory marketed by the Suppliers, channels from which the Suppliers receive the goods they sell, and any other information known to Defendants about such Suppliers;
(iv) Reports setting forth all information known to Defendants relating to and regarding the manufacture, distribution, marketing and/or sale of all vacuum packaging bags marked with the FOODSAVER or TILIA trademarks or the `929 Patent number or which are accused of infringing the `929 Patent.
b. Not to disparage in any way Tilia or the products, services, employees or business or reputation of Tilia or otherwise engage in conduct that is intended to disrupt, damage, impair or interfere with the business or reputation of Tilia;
c. To cooperate and to provide assistance to Tilia at no cost to Defendants, from time to time, in any efforts Tilia may use to enforce its intellectual property rights against any suppliers, distributors, manufacturers, wholesalers and/or other makers of vacuum packaging bags of which Defendants have knowledge.
6. Defendants, and their officers, agents, servants, employees and attorneys, and those persons in active concert and participation with Defendants, are permanently enjoined from directly or indirectly:
a. Manufacturing, marketing, offering for sale and/or sale of all products that infringe the `929 Patent and/or products bearing the FOODSAVER or TILIA trademarks, or bearing Tilia's United States or foreign patent numbers; and
b. Using the FOODSAVER or TILIA trademarks, or any variation or imitation thereof, except to specifically state: "These bags are not intended for use with Tilia's FoodSaver™ machines".
7. Each party shall bear its own costs and attorneys' fees;
8. The court shall retain jurisdiction of this action for the purposes of enforcement of compliance with this [Proposed] Stipulated Judgment and Permanent Injunction and for the punishment of violations thereof
IN WITNESS WHEREOF, by signing below the parties by and through their counsel of record agree, stipulate and request the Court enter judgment according to this [Proposed] Stipulated Judgment and Permanent Injunction.
IT IS SO ORDERED, ADJUDGED AND DECREED: