January 17, 2014
DISNEY ENTERPRISES, INC., a Delaware corporation, Plaintiff,
PHASE 4 FILMS, INC., a Canadian corporation, PHASE 4 FILMS (USA) LLC, a Delaware limited liability company, and Does 1-10, Defendants.
Steven A. Marenberg (101033), Josh B. Gordon (244818), Ryan A. Ward (278699), IRELL & MANELLA LLP, Los Angeles, California, Attorneys for Plaintiff, DISNEY ENTERPRISES, INC.
COSTA, ABRAMS & COATE LLP, Charles M. Coate, Attorneys for Defendant, Phase 4 Films (USA), LLC.
RONALD S.W. LEW, District Judge.
WHEREAS, Plaintiff Disney Enterprises, Inc. ("DEI") owns all right, title, and interest to the trademarks utilized in connection with the Walt Disney Pictures animated motion picture FROZEN;
WHEREAS, DEI marketed and promoted FROZEN using the following trademarks:
WHEREAS, Defendant Phase 4 Films (USA), LLC ("Phase 4 Films") (together with DEI, the "Parties") acquired the right to distribute the motion picture The Legend of Sarila in the United States and thereafter commenced distributing that picture in the United States under the name FROZEN LAND;
WHEREAS, Phase 4 Films marketed and promoted The Legend of Sarila as FROZEN LAND using the following logo (the "FROZEN LAND LOGO"):
WHEREAS, on December 20, 2013, DEI commenced a lawsuit in this Court entitled Disney Enterprises, Inc. v. Phase 4 Films, Inc., Phase 4 Films (USA) LLC, and Does 1-10, Case No. 13-CV-09401-RSWL-MANx, in which DEI alleged claims of trademark infringement and unfair competition against the Defendants (the "Action");
WHEREAS, the Parties have negotiated and entered into a settlement agreement (the "Settlement Agreement") that resolves the Action;
WHEREAS, in conjunction with the Settlement Agreement, the Parties agree and stipulate that judgment shall be entered as follows:
1. Phase 4 Films shall immediately cease marketing and distribution of The Legend of Sarila as FROZEN LAND. Any further distribution, marketing, and/or promotion of The Legend of Sarila or related products, irrespective of format, shall be under the name The Legend of Sarila or another name not confusingly similar to or intended to create any association with FROZEN or any other motion picture marketed, promoted, or released by DEI or its affiliated companies, including Walt Disney Pictures.
2. Phase 4 Films shall immediately cease all use of the FROZEN LAND LOGO, including its component parts (individually or collectively), such as the title, lettering, coloring, oval, and artistic flourishes thereon, in the marketing or promotion of The Legend of Sarila, any other motion picture or other content, and/or any merchandise or other products of any kind.
3. Phase 4 Films shall not use in connection with the marketing or promotion of The Legend of Sarila, or any other motion picture, or on any merchandise or other products of any kind associated with The Legend of Sarila or any other motion picture, any trademarks, logos, or other designs confusingly similar to the FROZEN Trademark Logo or the FROZEN Blue Oval, and shall not henceforth release and use any titles, trademarks, logos, or other designs intended to create any association with FROZEN or any other motion picture marketed, promoted, or released by DEI or its affiliated companies, including Walt Disney Pictures.
4. Phase 4 Films shall undertake all practicable efforts to immediately remove or cause to be removed from all distribution centers, stores, online distributors, or any other location at which copies of FROZEN LAND are stored or can be purchased, licensed, or otherwise acquired in any format, and shall thereafter, as soon as practicable and in no event later than February 14, 2014, destroy all materials in its possession, custody or control (or the possession, custody or control of any parent, sister or subsidiary company of Phase 4 Films), including but not limited to DVDs, DVD covers, posters, publications, software (including master files for digital downloads), merchandise, products of any kind, brochures, labels, signs, other versions of the picture, and promotional material, that use or contain the FROZEN LAND LOGO or any other logo or depiction of the name FROZEN LAND. Phase 4 Films shall file a certification under penalty of perjury that it has complied with the foregoing no later than March 3, 2014.
5. Within ten (10) business days of the entry of this Stipulated Judgment, DEI shall be paid as a settlement payment the amount of one hundred thousand dollars ($100, 000.00).
6. This Court shall retain jurisdiction over the Parties to enforce this Stipulated Judgment until performance is completed.
This Stipulated Judgment is hereby entered by the Court pursuant to the terms set forth above. The Court Clerk shall close this action.