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Partners For Health and Home, L.P., Etc v. Seung Wee Yang

October 28, 2011

PARTNERS FOR HEALTH AND HOME, L.P., ETC., PLAINTIFF,
v.
SEUNG WEE YANG, ETC., ET AL., DEFENDANTS.



The opinion of the court was delivered by: Ralph Zarefsky United States Magistrate Judge

UNDISPUTED FACTS AND CONCLUSIONS OF LAW UNDISPUTED FACTS

1. In the 1980's in New York, Domenico Santorelli, who is not a party to these proceedings, began selling stainless steel cookware under the brand name Perma-Life®.

2. In 1986, Ki Won ("Jean") Shim entered into a 50-50 business partnership with Mr. Santorelli whereby they would jointly own and operate the Perma-Life cookware business, including specifically the Perma-Life trademark.

3. In 2002, Ms. Shim purchased from Domenico Santorelli the rights to the Perma-Life trademark and to U.S. Trademark Registration No. 2,029,777 ("the '777 Registration") for the goods of, inter alia, metal cookware, and the goodwill associated with that mark.

4. Since purchasing the rights to the Perma-Life trademark and associated goodwill of the business from Mr. Santorelli, together Ms. Shim and Plaintiff Partners for Health & Home, L.P. ("Partners"), of which Ms. Shim is the President, have continuously sold stainless steel cookware under the Perma-Life trademark.

5. In 2008, Plaintiff's prior trademark counsel, Paul Supnick, transferred his files for Jean Shim, including the trademark files, to Plaintiff's current counsel, Joel Voelzke.

6. In reviewing those incoming files, Mr. Voelzke noticed that Mr. Supnick had failed to renew the '777 registration and that the time period for filing a late renewal had expired. Mr. Voelzke filed a new trademark application to re-register the Perma-Life trademark.

7. The time period from the time that the PTO officially declared the '777 registration lapsed on June 6, 2008, until the day that attorney Voelzke filed the new application on June 8, 2008, was one day.

8. The application filed by attorney Voelzke registered as Registration No. 3,564,113 ("the '113 Registration") on January 20, 2009 for the mark Perma-Life.

9. The '113 Registration is a valid and subsisting federal trademark registration for the mark Perma-Life.

10. The period during which there was no federal trademark registration for Perma-Life owned in whole or in part by Plaintiff, its principal Jean Shim, or a predecessor company in which Jean Shim was part owner, was less than 8 months (from June 6, 2008 until January 20, 2009).

11. In 2009, Ms. Shim assigned both of the registrations, including the goodwill associated with the mark and the right to sue for past infringements, to Plaintiff Partners for Health and Home, L.P. ("Partners"), of which she is the President.

12. At no time from 1986 until the present did Ms. Shim or her companies ever stop selling Perma-Life cookware, whether through her partnership with Domenico Santorelli, through her company Perma-Life Cookware, or through her company Partners.

13. Defendant S T P America, Inc. ("STP") is 100% owned by Defendant Seung Wee ("Edward") Yang.

14. Defendant Seung Wee Yang made all of the managerial decisions for STP.

15. Defendant Seung Wee Yang made all of STP's marketing and advertising decisions.

16. For several years, Defendant Yang imported "health mattresses" and water purifiers from Korea.

17. From about October 2005 to about April 2007, Plaintiff purchased mattresses and water purifiers from Mr. Yang, and used its distribution network to sell those products to end customers in America.

18. In January 2008, Mr. Yang began selling stainless steel cookware; he called his new cookware Pearl Life.

19. Defendants sold approximately $400,000 worth of Pearl Life cookware. 20. Defendants' purchase price for that cookware from the manufacturer was approximately $223,708.

21. Occasionally, Defendants advertised their cookware as being "PEARL-LIFE" (with a hyphen).

22. A significant target market for both Plaintiff's cookware and Defendants' cookware is the Korean American community in the Los Angeles area.

23. In their discovery answers, Defendants claimed to be unable to remember any way in which they had ever used Plaintiff's Perma-Life trademark within their own advertising to sell their competing Pearl Life cookware.

24. In 2006, Mr. Yang registered the domain name www.permalife.co.kr. 25. Mr. Yang placed, or caused to be placed, the metatag "permalife" on the website located at www.permalife.co.kr.

26. Mr. Yang placed the www.permalife.co.kr domain for sale by stating on that website that the domain was "For Sale."

27. On July 9, 2008, Mr. Yang registered a second Korean domain, www.perma-life.co.kr.

28. Mr. Yang admitted in deposition that in early 2007 his relationship with Ms. Shim fell apart; then more than a year later, he registered the domain www.permalife.co.kr and linked it to his www.pearllife.com website (framed that website) from which he advertised his Pearl Life cookware; then later he put the www.perma-life.co.kr domain up for sale, all without ever telling Ms. Shim that he had done those things.

29. Mr. Yang repeatedly denied in this litigation that Exhibit 4 to the Complaint, which showed the domain www.perma-life.co.kr being used to promote Mr. Yang's own Pearl Life cookware, was an accurate representation of what the website at www.perma-life.co.kr looked like.

30. Mr. Yang admitted in deposition however, that Exhibit 3 to the deposition (which is identical to Exhibit 4 to the Complaint) was an accurate representation of what www.perma-life.co.kr looked like.

31. Mr. Yang admitted in deposition that he had caused the domain www.perma-life.co.kr to be "linked" or "forwarded" to his "home page" at www.pearllife.com.

32. Contrary to his deposition testimony, Mr. Yang did not actually stop linking (framing) www.perma-life.co.kr to his own Pearl Life website until at least October 2009.

33. Mr. Yang repeatedly denied in this litigation that he had caused the metatags "perma-life" and "perma life" to be placed on the website at www.permalife.co.kr.

34. That source code for the website www.perma-life.co.kr contained the terms "perma life" and ...


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