Wm. Wrigley Jr. Company v. Roberto Conde et al, No. 5:2021cv00777 - Document 85 (C.D. Cal. 2022)
Court Description: FINAL JUDGMENT BYCONSENT UNDER RULE 54(b),INCLUDING PERMANENTINJUNCTIVE RELIEF RE:DEFENDANT STEVEN MATTAD/B/A OC 420 COLLECTION by Judge John W. Holcomb 63 . (SEE DOCUMENT FOR FURTHER DETAILS) (yl)
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Wm. Wrigley Jr. Company v. Roberto Conde et al 1 2 3 4 5 6 7 8 9 10 Doc. 85 DOUGLAS N. MASTERS (pro hac vice) dmasters@loeb.com LOEB & LOEB LLP 321 N. Clark St., Suite 2300 Chicago, IL 60654 Telephone: 312.464.3100 Facsimile: 312.464.3111 KYLE R. PETERSEN (SBN 307483) kpetersen@loeb.com LOEB & LOEB LLP 10100 Santa Monica Blvd., Suite 2200 Los Angeles, CA 90067 Telephone: 310.282.2000 Facsimile: 310.282.2200 Attorneys for Plaintiff WM. WRIGLEY JR. COMPANY 11 UNITED STATES DISTRICT COURT 12 CENTRAL DISTRICT OF CALIFORNIA 13 14 15 16 17 18 19 20 21 22 23 WM. WRIGLEY JR. COMPANY, a Delaware corporation, Plaintiff, v. ROBERTO CONDE d/b/a 2020EDIBLEZ, an individual; JOEL LEDESMA d/b/a INLAND EMPIRE 420 SUPPLY, an individual; JESSICA MOHR, an individual; STEVEN MATTA d/b/a OC 420 COLLECTION, an individual; DOE 1 d/b/a GASBUDS; DOE 2 d/b/a CANNABIS 420 SUPPLY; and DOES 3 through 10, Defendants. Case No.: 5:21-cv-00777 JWH (SHKx) Assigned to Hon. John W. Holcomb FINAL JUDGMENT BY CONSENT UNDER RULE 54(b), INCLUDING PERMANENT INJUNCTIVE RELIEF RE: DEFENDANT STEVEN MATTA D/B/A OC 420 COLLECTION Complaint Filed: May 3, 2021 Trial Date: October 31, 2022 24 25 26 27 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations Dockets.Justia.com 1 This matter having come before the Court for the entry of Final Judgment 2 against defendant Steven Matta d/b/a OC 420 Collection (the correct spelling of 3 which, as stated in his answer [Dkt. 35], is Stephan Mata) (“Mata”), with the 4 consent of plaintiff Wm. Wrigley Jr. Company (“Wrigley”) and Mata (Wrigley and 5 Mata are collectively referred to herein as the “Parties,” and each individually as a 6 “Party”), in accordance with Rule 54(b) of the Federal Rules of Civil Procedure, it is 7 ORDERED, ADJUDGED, and DECREED as follows: 8 1. Mata has been properly served and consents to the Court exercising 9 personal jurisdiction over him. Mata waives all defenses of lack of jurisdiction over 10 his person, improper venue, insufficiency of process, and insufficiency of service of 11 process. 12 2. This Court has subject matter jurisdiction over this action. 13 3. The Parties agree to submit to the jurisdiction of this Court to enforce 14 15 16 17 the provisions of this Stipulation and Final Judgment by Consent worldwide. 4. Plaintiff Wrigley is a Delaware corporation with its principal place of business at 1132 West Blackhawk Street, Chicago, Illinois 60642. 5. Defendant Mata is an individual residing in Orange County, California 18 and has at all relevant times directed and controlled the complained of activities by 19 the business known as OC 420 Collection (“OC420”), which conducts its operations 20 through the website located at https://oc420collection.com. 21 6. Wrigley is a recognized global leader in confections and, together with 22 its affiliates, offers a wide range of product offerings including gum, mints, and 23 candies. Wrigley markets products under dozens of well-known, distinctive, and 24 famous brands, including SKITTLES®, STARBURST®, LIFE SAVERS®, 25 DOUBLEMINT®, and JUICY FRUIT®, to name a few. 26 7. Wrigley and its predecessors have long marketed candy and related 27 products under the famous SKITTLES® mark and trade dress, which features, 28 among other things, the word mark SKITTLES® in white block lettering, distinctive Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 2 1 rainbow designs, distinctive candy-coated lentils with an “S” imprinted thereon, and 2 a cascade design of these candy lentils (hereinafter referred to as the “Skittles Trade 3 Dress”), examples of which are shown below: 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 3 1 8. For 50 years, Wrigley and its predecessors-in-interest have 2 continuously used the SKITTLES® mark to advertise, promote, and sell candy 3 throughout the United States. 4 9. Wrigley has earned billions of dollars in revenues from the sale of 5 SKITTLES® candy in the United States. Many millions of people throughout the 6 country have purchased or consumed SKITTLES® candy. In fact, SKITTLES® 7 candy has been the best-selling non-chocolate candy in the United States for years. 8 9 10. Wrigley has invested many millions of dollars to promote SKITTLES® candy. Wrigley’s advertisements and commercials for SKITTLES® have been seen 10 by many millions of people nationwide. Wrigley advertises SKITTLES® candy 11 during the Super Bowl and other highly watched events. 12 11. Based on the wide-spread and long-standing use and recognition of the 13 SKITTLES® brand, Wrigley enjoys extensive trademark rights in the SKITTLES® 14 mark and the Skittles Trade Dress. 15 12. Wrigley owns numerous federal registrations for its SKITTLES® mark 16 and the Skittles Trade Dress, including, but not limited to, U.S. Reg. Nos. 17 1,221,105; 2,535,714; 4,377,303; and 4,983,664 (such federal registrations, 18 collectively with the common law trademark rights in the SKITTLES® mark and 19 Skittles Trade Dress, are hereinafter referred to as the “SKITTLES® Mark and 20 Trade Dress”). 21 13. Similarly, Wrigley and its predecessors have long marketed candy and 22 related products under the famous STARBURST® mark and trade dress, which 23 features, among other things, the word mark STARBURST® in stylized lettering 24 and distinctive wrappers with an “S” imprinted thereon (hereinafter referred to as 25 the “Starburst Trade Dress”), examples of which are shown below: 26 27 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 4 1 2 3 4 5 6 7 8 9 10 11 12 14. For 50 years, Wrigley and its predecessors-in-interest have 13 continuously used the STARBURST® mark to advertise, promote, and sell candy 14 throughout the United States. 15 15. Wrigley has earned billions of dollars in revenue from the sale of 16 STARBURST® candy in the United States. Many millions of people throughout 17 the country have purchased or consumed STARBURST® candy. 18 16. Wrigley has invested many millions of dollars to promote 19 STARBURST® candy. Wrigley’s advertisements and commercials for 20 STARBURST® have been seen by many millions of people nationwide. 21 17. Based on the wide-spread and long-standing use and recognition of the 22 STARBURST® brand, Wrigley enjoys extensive trademark rights in the 23 STARBURST® mark and the Starburst Trade Dress. 24 18. Wrigley owns numerous federal registrations for its STARBURST® 25 mark and trade dress, including, but not limited to, U.S. Reg. Nos. 1,000,007; 26 1,545,544; 4,179,436; 4,268,392; and 4,625,960 (such federal registrations, 27 collectively with the common law trademark rights in the STARBURST® mark and 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 5 1 Starburst Trade Dress, are hereinafter referred to as the “STARBURST® Mark and 2 Trade Dress”). 3 19. Each of the above-referenced trademark registrations are valid, 4 subsisting, and in full force under 15 U.S.C. § 1065, and, together with Wrigley’s 5 extensive common law rights, make the SKITTLES® Mark and Trade Dress and 6 STARBURST® Mark and Trade Dress (collectively, the “Wrigley Trademarks”) 7 valuable assets owned by Wrigley. 8 9 10 11 12 20. Mata, doing business as OC420, is engaged in the marketing, offering for sale, sale, and distribution of edible cannabis candy products. 21. Mata used the Wrigley Trademarks, without authorization or license, in the marketing of his products. 22. Specifically, Mata has marketed, offered for sale, sold, and distributed 13 the products online via the OC420 website, located at https://oc420collection.com, 14 which violate Wrigley’s rights in the Wrigley Trademarks. Those products include: 15 (1) “Medicated Skittles” (sold in four flavors: “Original,” “Sour,” “Wild Berry,” and 16 “Seattle Mix”); (2) “Medicated Cannaburst Gummies” (sold in three flavors: 17 “Original Sours,” “Berry Sours,” and “Tropical”); and (3) a “Munchies Edible Deal” 18 which includes a package of the “Cannaburst Gummies.” These products, 19 collectively referred to as the “OC420 Infringing Products,” are pictured below as 20 they appear or appeared on OC420’s website: 21 22 23 24 25 26 27 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 6 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 7 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 23. With respect to the SKITTLES® Mark and Trade Dress, Mata adopted 18 and used the SKITTLES mark in plain text and white block lettering, distinctive 19 rainbow designs, images of candy-coated lentils with an “S” imprinted thereon, 20 and/or a design featuring such candy lentils cascading along an upside-down 21 rainbow, marks and trade dress that are identical to, substantially indistinguishable 22 from, and/or imitations of the SKITTLES® Mark and Trade Dress and the marks 23 and logos in the SKITTLES® registrations. 24 24. With respect to the STARBURST® Mark and Trade Dress, Mata 25 adopted and used the “Cannaburst” mark with stylized lettering and images of 26 square candies with a stylized “S” imprinted thereon, marks and trade dress that are 27 identical to, substantially indistinguishable from, and/or imitations of the 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 8 1 STARBURST® Mark and Trade Dress and the marks and logos in the 2 STARBURST® registrations. 3 25. Mata took such actions with full knowledge of, and in willful disregard 4 of, Wrigley’s intellectual property rights, and with the intent to take advantage of 5 the good will that Wrigley has developed in the Wrigley Trademarks. 6 26. Mata’s complained-of acts above constitute the following: 7 a. 8 U.S.C. § 1114; 9 b. 10 c. Dilution of the inherently distinctive and famous Wrigley Trademarks in violation of 15 U.S.C. § 1125(c); d. 13 14 Infringement of the Wrigley Trademarks in violation of 15 U.S.C. §§ 1114 and 1125(a); 11 12 Counterfeiting of the Wrigley Trademarks in violation of 15 Unfair competition and deceptive acts and practices in violation of 15 U.S.C. § 1125(a)(1)(A); e. 15 Unlawful, unfair, and/or fraudulent acts or business practices, 16 including unfair, deceptive, untrue, and misleading advertising, in violation of 17 California Business and Professions Code §§ 17200, et seq.; f. 18 Dilution of the inherently distinctive and famous Wrigley 19 Trademarks in violation of California Business and Professions Code 20 § 14247; 21 g. Unfair competition and deceptive acts and practices in violation 22 of common law. 23 27. This is an exceptional case in accordance with 15 U.S.C. § 1117. 24 28. Mata, in his capacity both as an individual and as the proprietor of 25 OC420, and his/its respective officers, agents, servants, employees, successors, 26 assigns, attorneys, and all other persons acting in concert or in participation with or 27 affiliated with Mata and/or OC420, jointly and severally, are permanently enjoined 28 and restrained: Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 9 a. 1 From directly or indirectly engaging in any further trademark 2 counterfeiting, trademark infringement, trademark dilution, unfair 3 competition, or deceptive business practices relating to the Wrigley 4 Trademarks, including the SKITTLES® Mark and Trade Dress and the 5 STARBURST® Mark and Trade Dress, or any other trademarks or trade 6 dress owned by Wrigley; b. 7 From making, manufacturing, advertising, marketing, offering, 8 selling, or distributing any products that feature, copy, imitate, simulate, or 9 are confusingly similar to, or are likely to dilute the distinctive nature of, or 10 tarnish the goodwill of, the Wrigley Trademarks, including the SKITTLES® 11 Mark and Trade Dress and the STARBURST® Mark and Trade Dress, or any 12 other trademarks or trade dress owned by Wrigley; c. 13 From representing by any means whatsoever, directly or 14 indirectly, that any products sold or services rendered by Mata and/or OC420 15 are associated with, sponsored by, licensed by, and/or connected or affiliated 16 with Wrigley, or from otherwise taking any action likely to cause confusion, 17 mistake, or deception on the part of purchasers as to the origin or licensing of 18 Mata’s and/or OC420’s products or services; d. 19 20 or engaging in deceptive conduct; e. 21 22 From otherwise competing unfairly with Wrigley in any manner From continuing to perform in any manner whatsoever any of the acts complained of in the Complaint as to Wrigley; and 23 f. From causing, engaging in, or permitting others to do any of the 24 aforesaid acts. 25 29. Within thirty (30) days of the entry of this Final Judgment, Mata shall 26 file with the Court and serve on counsel for Wrigley a sworn written statement as 27 provided in 15 U.S.C. § 1116(a) setting forth in detail the manner and form in which 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 10 1 Mata, in his capacity as an individual and as the proprietor of OC420, has complied 2 with the permanent injunction. 3 30. Mata, in his capacity as an individual and as the proprietor of OC420, 4 shall immediately recall from all distribution channels any products, packaging, 5 advertising, and promotional materials bearing or infringing on the Wrigley 6 Trademarks, including the SKITTLES® Mark and Trade Dress, STARBURST® 7 Mark and Trade Dress, or any other trademarks or trade dress owned by Wrigley. 8 9 31. Mata, in his capacity as an individual and as the proprietor of OC420, shall immediately deliver to Wrigley’s counsel for destruction any products, 10 packaging, advertising, and promotional materials bearing or infringing on the 11 Wrigley Trademarks, including the SKITTLES® Mark and Trade Dress, 12 STARBURST® Mark and Trade Dress, or any other trademarks or trade dress 13 owned by Wrigley, pursuant to 15 U.S.C. § 1118. Any electronic equivalents of 14 such materials shall be immediately deleted. 15 32. Mata, in his capacity as an individual and as the proprietor of OC420, 16 shall immediately cease sales of the products described above on the OC420 17 website, located at https://oc420collection.com, and in any other locations on the 18 Internet, including other websites owned or operated by Mata or any of his affiliates, 19 and any social media platforms owned or operated by Mata or any of his affiliates. 20 21 22 33. Mata shall immediately account for and disgorge to Wrigley all profits wrongfully derived by his unlawful conduct and pay to Wrigley: a. All monetary actual and/or statutory damages sustained and to be 23 sustained by Wrigley as a consequence of Mata’s unlawful conduct, 24 including, without limitation, statutory damages in the amount of $2,000,000 25 per counterfeit mark per type of goods sold, offered for sale, or distributed 26 pursuant to 15 U.S.C. § 1117(c)(2), lost profits, and corrective advertising 27 damages; 28 Loeb & Loeb A Limited Liability Partnership Including Professional Corporations 11
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