L Oreal USA Creative, Inc. et al v. Maggy Tsui et al, No. 2:2016cv08673 - Document 83 (C.D. Cal. 2017)

Court Description: FINAL JUDGMENT UPON CONSENT AS TO DEFENDANTS LOUIS LIN, INDIVIDUALLY AND D/B/A SKINCARE3, MICHAEL LEE, INDIVIDUALLY AND DBA SAKURAMARKET AND/OR GRASSLIMA, AND TERESA TSAI, INDIVIDUALLY AND DBA TREASURESGALORE45 by Judge Fernando M. Olguin. ORDERED, A DJUDGED AND DECREED that: Pursuant to the terms of the Agreement, this Judgment is hereby entered in favor of Plaintiffs against Stipulating Defendants. Each party is to bear its own fees and costs unless the Agreement provides otherwise. This Court retains jurisdiction to enforce the terms of this Judgment, should that be necessary. This Judgment shall be deemed to have been served upon the Parties atthe time of its execution by the Court. (MD JS-6, Case Terminated). (jp)
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L Oreal USA Creative, Inc. et al v. Maggy Tsui et al 1 2 3 4 5 6 7 8 9 10 11 12 13 Doc. 83 KILPATRICK TOWNSEND & STOCKTON LLP DAVID K. CAPLAN (Bar No. 181174) dcaplan@kilpatricktownsend.com CAROLINE Y. BARBEE (Bar No. 239343) cbarbee@kilpatricktownsend.com 9720 Wilshire Blvd, Penthouse Suite Beverly Hills, California 90212 Telephone: (310) 248-3830 Facsimile: (310) 860-0363 JS-6 KILPATRICK TOWNSEND & STOCKTON LLP ROBERT POTTER (Admitted Pro Hac Vice) rpotter@kilpatricktownsend.com OLIVIA HARRIS (Admitted Pro Hac Vice) oharris@kilpatricktownsend.com The Grace Building 1114 Avenue of the Americas New York, New York 10036 Telephone: (212) 775-8700 Facsimile: (212) 775-8800 Attorneys for Plaintiffs L’ORÉAL USA CREATIVE, INC. and L’ORÉAL USA, INC. 14 UNITED STATES DISTRICT COURT 15 CENTRAL DISTRICT OF CALIFORNIA 16 WESTERN DIVISION 17 18 L’ORÉAL USA CREATIVE, INC. and L’ORÉAL USA, INC., Plaintiffs, 19 20 21 22 23 24 25 26 27 v. MAGGY TSUI, individually and d/b/a MADAMESKINCARE; LOUIS LIN, individually and d/b/a SKINCARE3; MICHAEL LEE, individually and d/b/a SAKURAMARKET; TERESA TSAI and AARON LI, individually and d/b/a TREASURESGALORE45; MICHAEL LEE, AKINA MUKAI, and MAGGIE TSUI, individually and d/b/a GRASSLIMA, and DOES 1-10 acting in concert with them, CASE NO.: 2:16-cv-08673 FMO (FFMx) FINAL JUDGMENT UPON CONSENT AS TO DEFENDANTS LOUIS LIN, INDIVIDUALLY AND D/B/A SKINCARE3, MICHAEL LEE, INDIVIDUALLY AND D/B/A SAKURAMARKET AND/OR GRASSLIMA, AND TERESA TSAI, INDIVIDUALLY AND D/B/A TREASURESGALORE45 Defendants. 28 FINAL JUDGMENT UPON CONSENT CASE NO. 2:16-CV-08673-FMO(FFMX) -1Dockets.Justia.com 1 Plaintiffs L’Oréal USA Creative, Inc. (“L’Oréal Creative”) and L’Oréal USA, 2 Inc. (“L’Oréal USA”) (collectively, “Plaintiffs”), having filed a Complaint and First 3 Amended Complaint in this Action charging Defendants Louis Lin, individually and 4 d/b/a Skincare3, Michael Lee, individually and d/b/a Sakuramarket and/or Grasslima, 5 and Teresa Tsai, individually and d/b/a TreasuresGalore45 (collectively, “Stipulating 6 Defendants”) (Plaintiffs and Stipulating Defendants collectively, the “Parties”), inter 7 alia, with Federal Trademark Counterfeiting and Infringement, Federal Unfair 8 Competition, State Unfair Competition, and Common Law Trademark Infringement 9 and Unfair Competition, and the Parties desiring to settle the controversy between 10 them, it is by Stipulation: ORDERED, ADJUDGED AND DECREED as between the Parties hereto 11 12 13 that: 1. The United States District Court for the Central District of California has 14 subject matter jurisdiction over this Action and personal jurisdiction over Stipulating 15 Defendants for the purposes of this Action. 16 17 18 2. Stipulating Defendants were each properly and timely served with a copy of Plaintiffs’ First Amended Complaint in this Action. 3. Plaintiffs own many intellectual property rights for their 19 SKINCEUTICALS line of products, including without limitation all common law 20 trademark rights in L’Oréal Creative’s registered SKINCEUTICALS trademark, as 21 well as other trademarks and trade dress appearing on and/or used in connection with 22 the marketing and promotion of Plaintiffs’ SKINCEUTICALS line of products, 23 including without limitation the following registered trademarks: 24 SKINCEUTICALS®, C E FERULIC®, PHLORETIN CF®, PHYTO +®, and 25 SKINCEUTICALS HYDRATING B5 GEL® (collectively, the “SKINCEUTICALS 26 Marks”). 27 4. 28 L’Oréal Creative owns all federal trademark rights in its registrations for the SKINCEUTICALS Marks, including without limitation U.S. Trademark Reg. FINAL JUDGMENT UPON CONSENT CASE NO. 2:16-CV-08673-FMO(FFMX) -2- 1 Nos. 2,156,487 (SKINCEUTICALS); 2,930,299 (SKINCEUTICALS HYDRATING 2 B5 GEL); 3,497,589 (C E FERULIC); 3,574,640 (PHLORETIN CF); and 4,067,122 3 (PHYTO +) (collectively, the “Registered Marks”). 4 5. Stipulating Defendants promoted, distributed, offered for sale, and sold 5 goods, identical in type to those listed in L’Oréal Creative’s registrations for its 6 Registered Marks, bearing trademarks and other indicia that are identical to, 7 substantially indistinguishable from, or otherwise confusingly similar to its 8 Registered Marks (the “Counterfeit Goods”). 9 6. Stipulating Defendants’ Counterfeit Goods have not been manufactured, 10 licensed, authorized, sponsored, endorsed, or approved by Plaintiffs, and the 11 Stipulating Defendants are not associated, affiliated, or connected with Plaintiffs, or 12 licensed, authorized, sponsored, endorsed, or approved by Plaintiffs in any way. 13 7. Stipulating Defendants, and any employees, agents, servants, officers, 14 representatives, directors, attorneys, successors, affiliates, assigns, and entities owned 15 or controlled by Stipulating Defendants, and all those in active concert and 16 participation with Stipulating Defendants, and each of them who receives notice 17 directly or otherwise of such injunction are permanently enjoined and restrained from 18 a) importing, exporting, manufacturing, producing, distributing, 19 circulating, selling, offering for sale, advertising, promoting or displaying any 20 Counterfeit Goods, and any other products that tend to deceive, mislead, or confuse 21 the public into believing that Stipulating Defendants’ products in any way originate 22 with, are sanctioned by, or are affiliated with L’Oréal; 23 b) imitating, copying, or making unauthorized use of L’Oréal 24 Creative’s Registered Marks, other indicia of L’Oréal’s SKINCEUTICALS line of 25 products, or any other trademarks or trade dress used by or associated with L’Oréal; 26 c) importing, exporting, manufacturing, producing, distributing, 27 circulating, selling, offering for sale, advertising, promoting or displaying any 28 product bearing any simulation, reproduction, counterfeit, copy or colorable imitation FINAL JUDGMENT UPON CONSENT CASE NO. 2:16-CV-08673-FMO(FFMX) -3- 1 of L’Oréal Creative’s Registered Marks, other indicia of L’Oréal’s 2 SKINCEUTICALS line of products, or any other trademarks or trade dress used by or 3 associated with L’Oréal; d) using L’Oréal Creative’s Registered Marks, other indicia of 4 5 L’Oréal’s SKINCEUTICALS line of products, or any other trademarks or trade dress 6 used by or associated with L’Oréal, and/or any simulation, reproduction, counterfeit, 7 copy or colorable imitation thereof, in connection with the importation, promotion, 8 advertisement, display, sale, offering for sale, manufacture, production, circulation or 9 distribution of any product in such fashion as to relate or connect, or tend to relate or 10 connect, such product in any way to L’Oréal or to any goods sold, manufactured, 11 sponsored, approved by or connected with L’Oréal; e) using any false designation of origin or false description, or 12 13 performing any act which is likely to lead members of the trade or public to believe 14 that any product manufactured, distributed or sold by any of Stipulating Defendants is 15 in any manner associated or connected with L’Oréal, or is sold, manufactured, 16 licensed, sponsored, approved or authorized by L’Oréal; f) engaging in any other activity constituting unfair competition with 17 18 L’Oréal, or constituting infringement and/or counterfeiting of L’Oréal Creative’s 19 Registered Marks; g) forming new entities or associations, or utilizing any other device 20 21 for the purpose of circumventing or otherwise avoiding the prohibitions set forth in 22 subparagraphs (a) through (f) above; and h) instructing, assisting, aiding or abetting any other person or entity 23 24 in engaging in or performing any of the activities referred to in subparagraphs (a) 25 through (g) above. 26 27 8. Stipulating Defendants shall, within thirty (30) days of the Court’s entry of this Judgment: 28 FINAL JUDGMENT UPON CONSENT CASE NO. 2:16-CV-08673-FMO(FFMX) -4- a) make available to L’Oréal for review, inspection and copying all 1 2 books, records (including all hard drives on computers used for business purposes, 3 including servers, as well as all computer disks and back up disks) and other 4 documents and things concerning all transactions relating to the purchase or sale of 5 Counterfeit Goods or any other products or packaging incorporating a simulation, 6 reproduction, counterfeit, copy or colorable imitation of L’Oréal Creative’s 7 Registered Marks, other indicia of L’Oréal’s SKINCEUTICALS line of products, or 8 any other trademarks or trade dress used by or associated with L’Oréal; and provide 9 to L’Oréal the names, addresses and all other contact information in their possession 10 (e.g., telephone numbers, fax numbers) for the source(s) of such products and 11 packaging, including all manufacturers, distributors and/or suppliers; b) deliver to L’Oréal’s counsel for destruction at Stipulating 12 13 Defendants’ costs any and all Counterfeit Goods, as well as all signs, products, 14 components of products, liquids, gels, sera, substances, packaging, promotional 15 material, advertising material, catalogs and any other item that bears, contains or 16 incorporates L’Oréal Creative’s Registered Marks, other indicia of L’Oréal’s 17 SKINCEUTICALS line of products, or any other trademarks or trade dress used by or 18 associated with L’Oréal, and/or any simulation, reproduction, counterfeit, copy or 19 colorable imitation thereof; c) recall from all distributors, retailers or other recipients any and all 20 21 Counterfeit Goods as well as all other products and packaging sold or distributed by 22 Stipulating Defendants under or in connection with L’Oréal Creative’s Registered 23 Marks, other indicia of L’Oréal’s SKINCEUTICALS line of products, or any other 24 trademarks or trade dress used by or associated with L’Oréal, or any simulation, 25 reproduction, counterfeit, copy or colorable imitation thereof, and, upon recall, 26 deliver such goods up to L’Oréal’s counsel for destruction at Stipulating Defendants’ 27 cost; and 28 FINAL JUDGMENT UPON CONSENT CASE NO. 2:16-CV-08673-FMO(FFMX) -5- 1 d) file with the Court and serve upon L’Oréal’s counsel a report in 2 writing under oath setting forth in detail the manner and form in which Stipulating 3 Defendants have complied with subparagraphs (a) through (c) above. 4 9. Any products turned over to Plaintiffs’ counsel by Stipulating 5 Defendants may be destroyed at Stipulating Defendants’ expense and/or disposed of 6 at Plaintiffs’ judgment and in such manner as Plaintiffs deem appropriate. 7 10. Upon receipt of any subpoena issued pursuant to Rule 45 of the Federal 8 Rules of Civil Procedure, Stipulating Defendants shall cooperate in good faith with 9 Plaintiffs in pursuing the source(s) of any Counterfeit Goods by supplying necessary, 10 11 reasonable, and relevant documents, information and/or testimony. 11. Stipulating Defendants shall notify Plaintiffs’ counsel on an ongoing 12 basis of any Counterfeit Goods they may be offered or receive. Such notification 13 shall be made within fifteen (15) business days of Stipulating Defendants’ learning 14 that they have been offered or have received such product. No liability shall attach to 15 Stipulating Defendants in connection with their timely identification of any 16 Counterfeit Goods pursuant to this provision, provided Stipulating Defendants are 17 otherwise in compliance with the terms of this Judgment and the Parties’ settlement 18 agreement (the “Agreement”). 19 12. Pursuant to the terms of the Agreement, this Judgment is hereby entered 20 in favor of Plaintiffs against Stipulating Defendants. Each party is to bear its own fees 21 and costs unless the Agreement provides otherwise. 22 23 24 25 26 27 13. This Court retains jurisdiction to enforce the terms of this Judgment and the Agreement, should that be necessary. 14. This Judgment shall be deemed to have been served upon the Parties at the time of its execution by the Court. 15. The Court expressly determines that there is no just reason for delay in entering this Judgment, and pursuant to Rule 54(b) of the Federal Rules of Civil 28 FINAL JUDGMENT UPON CONSENT CASE NO. 2:16-CV-08673-FMO(FFMX) -6- 1 Procedure, the Court directs entry of judgment against Stipulating Defendants as 2 specified herein 3 4 5 Dated: May 31, 2017 6 _________/s/___________________ Hon. Fernando M. Olguin United States District Judge 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 FINAL JUDGMENT UPON CONSENT CASE NO. 2:16-CV-08673-FMO(FFMX) -7-