United States District Court, C.D. California
February 10, 2014
MAD DOGG ATHLETICS, INC., a California corporation, Plaintiff,
BH NORTH AMERICA CORPORATION, a Delaware corporation, Defendant. BH NORTH AMERICA CORPORATION, a Delaware corporation, Counter-Claimant,
MAD DOGG ATHLETICS, INC., a California corporation, Counter-Defendant.
Theodore S. Maceiko, MACEIKO IP, Manhattan Beach, California, Attorneys for Plaintiff/Counter-Defendant Mad Dogg Athletics, Inc.
KAUTH, POMEROY, PECK & BAILEY LLP, Joel A. Kauth, Attorneys for Defendant BH North America Corporation.
[PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION
CHRISTINA A. SNYDER, Judge.
WHEREAS plaintiff, Mad Dogg Athletics, Inc. ("Mad Dogg"), and defendant, BH North America Corporation ("BH") have agreed in a separate agreement to settlement of the matter in issue between them and to entry of this judgment, it is ORDERED, ADJUDGED AND DECREED THAT:
1. Mad Dogg alleged claims for Patent Infringement, Trademark Infringement, Unfair Competition and related claims, and BH alleged counterclaims for patent invalidity, unenforceability and non-infringement and for unfair competition.
2. The Court has jurisdiction over the parties in this action and over the subject matter in issue based on 15 U.S.C. §§ 1116(a) and 1121; 28 U.S.C. §§ 1331, 1332(a) and 1338(a) and (b); and 28 U.S.C. § 1367. The Court further has continuing jurisdiction to enforce the terms and provisions of the Consent Judgment and Permanent Injunction. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391(a), (b) and (c) and 1400(b).
3. Mad Dogg is a corporation incorporated under the laws of the State of California, and has its principal place of business at 2111 Narcissus Court, Venice, California 90291.
4. BH is a Delaware corporation having a principal place of business at 20155 Ellipse, Foothill Ranch, California 92610.
5. BH has imported, made, used, sold, offered for sale or distributed certain indoor cycling stationary bicycles.
6. Mad Dogg is the owner of U.S. Patent Nos. 5, 423, 728; 6, 155, 958; 6, 468, 185; 6, 881, 178; 7, 455, 627 and 8, 057, 364 (collectively "Utility Patents"), which were valid and enforceable during their term.
7. Mad Dogg is the owner of U.S. Design Patent Nos. D473, 274 and D463, 602 (collectively "Design Patents") which are valid and enforceable throughout the United States for their remaining term.
8. Mad Dogg is the owner of U.S. Trademark Registration No. 2, 173, 202 for the standard word mark, SPIN, which is valid and enforceable throughout the United States and which has become incontestable pursuant to 15 U.S.C. § 1065 for the goods and services covered by said registration, namely, stationary exercise bicycles and physical fitness instruction (hereinafter the "SPIN trademark").
9. BH, and its related entities, affiliates, officers, directors, subsidiaries, divisions, owners, agents, servants, shareholders, employees, successors, assigns, representatives, and agents of any kind, and all persons or entities acting under BH's direction or control or in active concert or participation with BH (hereinafter collectively referred to as BH's "Related Entities") who receive actual notice of this Order by personal service or otherwise, are hereby permanently enjoined from engaging in any of the following activities:
(a) from infringing, either directly or contributorily and from inducing others to infringe any of Mad Dogg's U.S. Patent Nos. 6, 881, 178, D473, 274 and D472, 602;
(b) from using any of Mad Dogg's SPIN® Family of Marks (attached hereto as Exhibit 1) or any confusingly similar designations thereof, on or in connection with BH's goods or services, web sites (including in its source code and metatags), packaging, manuals, advertisements and marketing materials;
(c) from engaging in any conduct that tends falsely to represent that, or is likely to confuse, mislead, or deceive purchasers, BH's customers, and/or cause members of the public to believe that the actions of BH, the products sold by BH or BH itself is connected with Mad Dogg, is sponsored, approved, or licensed by Mad Dogg, or is in some way associated or affiliated with Mad Dogg;
(d) from affixing, applying, annexing or using in connection with the manufacture, importation, distribution, advertising, sale, and/or offer for sale or other use of any goods or services, any false description or representation, including words or other symbols, tending to falsely describe or represent such goods or services as being those of Mad Dogg;
(e) from diluting and infringing Mad Dogg's SPIN® Family of Marks and thereby damaging Mad Dogg's goodwill and reputation;
(f) from infringing upon Mad Dogg's SPIN® Family of Marks, in any manner, including generally, but not limited to manufacturing, importing, distributing, advertising, selling, and/or offering for sale any merchandise, specifically stationary exercise bicycles and merchandise related thereto, or engaging in any services, specifically exercise programs using stationary exercise bicycles, by using any terms, trademarks, domain names, or other designations of origin that are confusingly similar to, or that reproduce, utilize the likenesses of, or which copy any of the SPIN® Family of Marks now or in the future;
(g) from otherwise infringing upon Mad Dogg's SPIN® Family of Marks, or competing unfairly with Mad Dogg in any manner; and
(h) from effecting assignments or transfers, forming new entities or associations or utilizing any other device for the purpose of circumventing or otherwise avoiding the prohibitions set forth in subparagraphs (a) through (g) above.
10. BH and its Related Entities shall not directly or indirectly take steps to contest the validity or enforceability of any of the Utility Patents or Design Patents, nor assist any third party to do so.
11. BH and its Related Entities shall not directly or indirectly challenge, oppose, interfere with or otherwise seek cancellation of, any of Mad Dogg's SPIN® Family of Marks in the United States or elsewhere, nor assist any third party to do so.
12. Service by mail upon BH, addressed to Bob Whip, BH North America Corporation, 20155 Ellipse, Foothill Ranch, California 92610, of a copy of this Consent Judgment and Permanent Injunction entered by the Court is deemed sufficient notice to BH under Rule 65(d) of the Federal Rules of Civil Procedure, with a copy to BH's undersigned counsel as well. It shall not be necessary for BH to sign any form of acknowledgment of service.
13. The parties shall bear their own attorneys' fees and costs.
14. All remaining causes of action or claims against BH, and all remaining causes of action or counterclaims against Mad Dogg, are hereby dismissed with prejudice.
IT IS SO ORDERED. EXHIBIT 1
COMPLIANCE WITH L.R. 5-4(a)(2)(i)
I hereby certify and attest that all other signatories listed, and on whose behalf the filing is submitted, concur in the filing's content and have authorized the filing.