CONSENT JUDGMENT AND PERMANENT INJUNCTION
NOTE: CHANGES MADE BY THE COURT
R. GARY KLAUSNER, District Judge.
WHEREAS, plaintiffs Munwha Broadcasting Corporation ("Munhwa"), MBC America Holdings, Inc. ("MBC"), Seoul Broadcasting System International, Inc.("SBS") and KBS America, Inc. ("KBS" and collectively with the other plaintiffs, "Plaintiffs") and defendant C.J. Wilshire, Inc. d/b/a Beul, have agreed in a separate agreement to settlement of the matters in issues between them and to entry of this Consent Judgment and Permanent Injunction, it is hereby ORDERED, ADJUDGED, AND DECREED THAT:
Any conclusions of fact or law herein are made only as to the parties to this Consent Judgment and Permanent Injunction ("Consent Judgment"), and the terms of this Consent Judgment are only enforceable as to the parties thereto.
1. This is an action for: (1) copyright infringement under the copyright laws of the United States, 17 U.S.C. § 101, et seq.; (2) federal trademark infringement, federal false designation of origin, and federal unfair competition under the Trademark (Lanham) Act of 1946, as amended, 15 U.S.C. § 1051, et seq.; (3) violation of the Digital Millennium Copyright Act pursuant to 17 U.S.C. § 1201, et seq.; (4) common law trademark infringement; (5) statutory unfair competition under California Business and Professions Code § 17200, et seq.; and (6) common law unfair competition.
2. This Court has jurisdiction over all of the parties in this action and over the subject matter in issue based on 28 U.S.C. §§ 1331, 1338(a), 1338(b), and 1367(a), as well as 15 U.S.C. § 1121(a). This Court further has continuing jurisdiction to enforce the terms and provisions of this Consent Judgment and Permanent Injunction. Venue is also proper in this Court pursuant to 28 U.S.C. §§ 1391(b) and 1391(c), as well as 28 U.S.C. § 1400(b).
3. Plaintiff Munhwa is a Korean Corporation having its principal place of business at 31, Youido-dong, Youngdeunpgo-gu, Seoul, 150-728, Republic of Korea.
4. Plaintiff MBC is a California Corporation and wholly owned U.S. subsidiary and licensee of Munhwa. MBC's principal place of business is 3400 West 6th Street, Los Angeles, California 90020.
5. Plaintiff SBS is a California Corporation and the wholly owned U.S. subsidiary and licensee of Korean broadcaster SBS Media Holdings Co., Ltd. SBS' principal place of business is 3530 Wilshire Boulevard, Suite 1000, Los Angeles, California 90010.
6. Plaintiff KBS is a California Corporation and the wholly owned U.S. subsidiary and licensee of Korean Broadcasting System and/or its affiliates. KBS' principal place of business is 625 S. Kingsley Drive, Los Angeles, California 90005.
7. Defendant CJ Wilshire, Inc. d/b/a Beul is a California Corporation with a principal place of business at 3240 Wilshire Blvd., Suite 401, Los Angeles, California 90010.
8. CJ Wilshire, Inc. has publicly performed, retransmitted, reproduced, and promoted Plaintiffs' television programs and broadcasts, directly or indirectly, through their use of the TVpad broadcast transmission apparatus, as shown by way of example in Exhibit 1 (Munhwa's Korean Language Major League Baseball Broadcasts, the "MBC Sports Broadcasts"). Public performance of Plaintiffs' copyright protected works by transmission or otherwise, including those works listed at Exhibits 2 to 4 below, using a TVpad broadcast transmission apparatus and/or the TVpad broadcast transmission service are not authorized by Plaintiffs.
9. Munhwa is the beneficial and/or legal owner of all right, title, and interest in the copyrights of certain television programs and broadcasts created by or for it for public performance and/or distribution, including the MBC Sports Broadcasts. Munhwa's television programs and broadcasts are foreign works, and registration with the United States Copyright Office therefore is not a prerequisite to filing a copyright infringement action with respect to them. A list of representative copyright registrations is attached hereto as Exhibit 2.
10. SBS is the beneficial and/or legal owner or exclusive licensee of all right, title, and interest in the U.S. copyrights of television programs and broadcasts created by or for its parent company for public performance and/or distribution. SBS television programs and broadcasts are foreign works, and registration with the United States Copyright Office therefore is not a prerequisite to filing a copyright infringement action with respect to them. A list of representative copyright registrations is attached hereto as Exhibit 3.
11. KBS is the beneficial and/or legal owner or exclusive licensee of all right, title, and interest in the U.S. copyrights of television programs and broadcasts created by or for its parent company for public performance and/or distribution. KBS television programs and broadcasts are foreign works, and registration with the United States Copyright Office therefore is not a prerequisite to filing a copyright infringement action with respect to them. A list of representative copyright registrations is attached hereto as Exhibit 4.
12. By publicly performing the Plaintiffs' copyright protected broadcasts and programs using the TVpad Device, including by (a) retransmitting such broadcasts and programs to third party TVpad users in the Create New Technology (HK) Co. Ltd. network "swarm," and (b) displaying such broadcasts and programs to its patrons, CJ Wilshire, Inc. has infringed Plaintiffs' exclusive copyright rights in violation of the U.S. Copyright Act, 17 U.S.C. § 106.
13. For many years, and prior to the acts of CJ Wilshire, Inc. discussed herein, Munhwa through its U.S. affiliates, has continuously broadcast, distributed and sold its television broadcast programs in interstate commerce, under the distinctive trademark MBC®. Munhwa's broadcasts bear the distinctive MBC® mark ("MBC Mark").
14. For many years, and prior to the acts of CJ Wilshire, Inc. discussed herein, Munhwa through its U.S. affiliates, has also continuously broadcast, distributed and sold its television broadcast programs in interstate commerce, under the distinctive trademark MBCD®. Munhwa's broadcasts bear the distinctive MBCD® mark ("MBCD Mark").
15. Likewise, for many years, and prior to the acts of CJ Wilshire, Inc. discussed herein, Munhwa through its U.S. affiliates, has continuously broadcast, distributed and sold its television broadcast programs in interstate commerce, under the distinctive trademark MBC Sports. Munhwa's broadcasts bear the distinctive MBC Sports mark ("MBC Sports Mark," and collectively with the MBC Mark and MBCD Mark, the "MBC Marks").
16. The MBC Marks, including the MBC Sports Mark, have acquired secondary meaning in that they have come to be associated by the trade and consuming public exclusively with Munhwa, and have come to signify Munhwa as the source of authorized broadcasts and programs bearing the MBC Marks.
17. Munhwa has obtained, and is the owner of, a federal registration on the MBC Mark, which is valid and enforceable throughout the United States. A copy of the registration for the MBC Mark (United States Trademark Registration No. 4,259,591) is attached hereto as Exhibit 5.
18. Munhwa has also obtained, and is the owner of, a federal registration on the MBCD Mark, which is valid and enforceable throughout the United States. A copy of the registration for the MBCD Mark (United States Trademark Registration No. 3,605,573) is attached hereto as Exhibit 6.
19. For many years, and prior to the acts of CJ Wilshire, Inc. discussed herein, SBS, through license of its parent company, has continuously broadcast, distributed and sold television broadcast programs in interstate commerce, under the distrinctive trademark SBS. SBS' broadcasts bear the distinctive SBS mark ("SBS Mark").
20. Likewise, for many years, and prior to the acts of CJ Wilshire, Inc. discussed herein, SBS, through license of its parent company, has continuously broadcast, distributed and sold television broadcast programs in interstate commerce, under the distinctive trademark SEOUL BROADCASTING SYSTEM®. SBS' broadcasts include the distinctive mark SEOUL BROADCASTING SYSTEM ("SEOUL BROADCASTING SYSTEM Mark," and collectively with the SBS Mark, the "SBS Marks").
21. The SBS Marks have acquired secondary meaning in that they have come to be associated by the trade and consuming public exclusively with SBS, and have come to signify SBS as the source of authorized broadcasts and programs bearing the marks.
22. SBS is the exclusive U.S. licensee of a federal registration on the SEOUL BROADCASTING SYSTEM Mark, which is valid and enforceable throughout the United States. A copy of the registration for the SEOUL BROADCASTING SYSTEM Mark (United States Trademark Registration No. 3,969,875) is attached hereto as Exhibit 7.
23. For many years, and prior to the acts of CJ Wilshire, Inc. discussed herein, KBS, through license of its parent company, has continuously broadcast, distributed and sold its television broadcast programs in interstate commerce, under the distinctive trademark KBS WORLD®. KBS' broadcasts bear the distinctive KBS WORLD® mark ("KBS WORLD Mark").
24. Likewise, for many years, and prior to the acts of CJ Wilshire, Inc. discussed herein, KBS, through license of its parent company, has continuously broadcast, distributed and sold its television broadcast programs in interstate commerce, under the distinctive trademark KBS. KBS' broadcasts bear the distinctive KBS mark ("KBS Mark").
25. Additionally, for many years, and prior to the acts of CJ Wilshire, Inc. discussed herein, KBS, through license of its parent company, has continuously broadcast, distributed and sold its television broadcast programs in interstate commerce, under the distinctive trademark KBS AMERICA®. KBS' broadcasts bear the distinctive KBS AMERICA® mark ("KBS AMERICA Mark," and collectively with the KBS Mark and the KBS WORLD Mark, the "KBS Marks").
26. The KBS Marks have acquired secondary meaning in that they have come to be associated by the trade and consuming public exclusively with KBS, and have come to signify KBS as the source of authorized broadcasts and programs bearing the mark.
27. KBS is the exclusive U.S. licensee of a federal registration on the KBS AMERICA Mark, which is valid and enforceable throughout the United States. A copy of the registration for the KBS AMERICA Mark (United States Trademark Registration No. 4,599,526) is attached hereto as Exhibit 8.
28. KBS is the exclusive U.S. licensee of a federal registration on the KBS WORLD Mark, which is valid and enforceable throughout the United States. A copy of the registration for the KBS WORLD Mark (United States Trademark Registration No. 4,378,636) is attached hereto as Exhibit 9.
29. CJ Wilshire, Inc.'s use in commerce of the MBC Marks, SBS Marks, and KBS Marks ("Plaintiffs' Marks") in connection with entertainment services is likely to cause, and has caused, confusion, mistake, and deception among the consuming public that such services are from, licensed, approved, or authorized by Plaintiffs, which is an infringement of Plaintiffs' federal and common law trademark rights in Plaintiffs' Marks in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
30. CJ Wilshire, Inc.'s use of Plaintiffs' Marks also constitutes trademark infringement of Plaintiffs' federally registered trademarks in violation of the Lanham Act, 15 U.S.C. § 1114, to the substantial and irreparable injury of the public and of Plaintiffs' business reputation and goodwill.
31. CJ Wilshire, Inc.'s use and distribution of Plaintiffs' broadcasts and programs with Plaintiffs' Marks further constitutes statutory unfair competition in violation of California Business & Professions Code § 17200, et seq., common law trademark infringement, and common law unfair competition.
32. For the purposes of the following Permanent Injunction, the following definitions shall apply:
(a) "Defendant" shall mean CJ Wilshire, Inc. d/b/a Beul.
(b) "TVpad Device" shall mean the transmission apparatuses marketed as TVpad, and any other devices that offer the Infringing TVpad Applications (as defined in below) for download.
(c) "Infringing TVpad Applications" shall mean any TVpad Application whereby Plaintiffs' Copyrighted Works are publicly performed without authorization by transmission to members of the public, including but not limited to the TVpad Applications identified in Exhibit 10 hereto.
(d) "Copyrighted Works" shall mean each of those works, or portions thereof, whether now in existence or later created, in which any Plaintiff (or parent, subsidiary or affiliate of any Plaintiff), at the time of Defendant's conduct in question, owns or controls a valid and subsisting exclusive right under the United States Copyright Act, 17 U.S.C. §§ 101, et seq.
33. Defendant, and all of its parents, subsidiaries, affiliates, officers, directors, agents, servants, employees, attorneys, and all persons or entities acting in active concert or participation with them who receive actual notice of this Order (collectively, the "Enjoined Parties") shall be permanently enjoined from engaging in any of the following activities:
(a) transmitting, retransmitting, streaming, tracking or otherwise publicly performing, directly or indirectly, by means of any device or process including the TVpad Device and Infringing TVpad Applications, Plaintiffs' Copyrighted Works;
(b) otherwise infringing Plaintiffs' rights in their Copyrighted Works, whether directly, secondarily, by active inducement, contributorily, vicariously or in any other manner;
(c) using the MBC Marks, SBS Marks, KBS Marks, or any other mark, design, reproduction, copy, or symbol that is a colorable imitation thereof, or confusingly similar thereto, in connection with broadcasting, video on demand, digital downloads or any other entertainment services, or related goods or services, not originating from or authorized by Plaintiffs;
(d) using the MBC Marks, SBS Marks, KBS Marks, or any other mark, design, reproduction, copy, or symbol that is a colorable imitation thereof, in any manner likely to cause confusion, to cause mistake, or to deceive the consuming public;
(e) representing in any manner, or by any method whatsoever, that goods and services provided by CJ Wilshire, Inc. are licensed, sponsored, approved, authorized by, or originate from Plaintiffs or otherwise taking any action likely to cause confusion, mistake, or deception as to the origin, approval, sponsorship, or license of such goods or services;
(f) infringing or diluting (whether directly or indirectly) the distinctive quality of Plaintiffs' Marks; and
(g) unfairly competing with Plaintiffs in any manner.
34. Nothing in this Permanent Injunction shall limit the right of Plaintiffs to seek to recover damages under 17 U.S.C. § 504, or costs, including attorneys' fees, under 17 U.S.C. § 505.
35. Service by mail upon CJ Wilshire, Inc. at 3240 Wilshire Boulevard, Suite 401, Los Angeles, California, 90010, of a copy of this Consent Judgment and Permanent Injunction entered by the Court is deemed sufficient notice to CJ Wilshire, Inc. under Federal Rule of Civil Procedure 65. It shall not be necessary for CJ Wilshire, Inc. to sign any form of acknowledgement of service.
36. Within 14 days of the date the Court enters this Injunction, CJ Wilshire, Inc. shall file and serve a report in writing and under oath setting forth in detail the manner and form with which it and the Enjoined Parties have complied with the Injunction
37. The parties shall bear their own attorneys' fees and costs.
IT IS SO ORDERED:
EXHIBIT 1
EXHIBIT 2
EXHIBIT 3
EXHIBIT 4
EXHIBIT 5
EXHIBIT 6
EXHIBIT 7
EXHIBIT 8
EXHIBIT 9
EXHIBIT 10
