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 Best4U, Inc. d/b/a Bestway Realty ("Best4U") 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. §1 201, 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. subsidiary and licensee of Munhwa. MBC's principal place of business is 3400 West 6
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 Best4U is a California Corporation and has its principal place of business 6131 Orangethorpe Avenue, No. 495, Buena Park, California 90620.
8. Best4U is vicariously liable for the acts of those who publicly performed, retransmitted, reproduced, used, marketed, distributed, advertised, and/or promoted, commercially in interstate commerce, Plaintiffs' television programs and broadcasts, directly or indirectly, through their promotion, sale and use of the TVpad broadcast transmission apparatus, as shown by way of example in
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. 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
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
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
12. By its knowledge of, control over and financial benefit derived from the public performance of the Plaintiffs' copyright protected broadcasts and programs using the TVpad Device, including by (a) retransmission of such broadcasts and programs to third party TVpad users in the Create New Technology (HK) Co. Ltd. network "swarm," and (b) inducing of others to display and publicly perform such broadcasts and programs, Best4U has vicariously 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 Best4U 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 Best4U 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 Best4U 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
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
19. Likewise, for many years, and prior to the acts of Best4U 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 SBS. SBS' broadcasts bear the distinctive SBS mark ("SBS Mark").
20. Additionally, for many years, and prior to the acts of Best4U 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 mark.
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
23. For many years, and prior to the acts of Best4U 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 Best4U discussed herein, KBS, through license of its parent company, has continuously broadcast, distributed and sold its television broadcast programs in interstate commerce, under ("KBS Mark").
25. Additionally, for many years, and prior to the acts of Best4U 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 marks.
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
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
29. The use, marketing, distribution, advertising, and promotion of Plaintiffs' broadcasts and programs displaying the MBC Marks, SBS Marks, and KBS Marks (hereinafter "Plaintiffs' Marks"), or marks confusingly similar thereto, for which Best4U is vicariously liable is likely to cause, and has caused, confusion, mistake, and deception among the consuming public that such activity is licensed, approved, or authorized by Plaintiffs, which is an infringement of Plaintiffs' federal of the Lanham Act, 15 U.S.C. §1125(a).
30. Best4U's vicarious liability for the 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 Plaintiffs' business reputation and goodwill.
31. Best4U's vicarious liability for the use, marketing, distribution, advertising, and promotion of Plaintiffs' broadcasts and programs with Plaintiffs' Marks also 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:
(h) transmitting any of the Copyrighted Works.
35. The Enjoined Parties shall further be immediately and permanently enjoined from engaging in any activities having the object or effect of fostering infringement of Plaintiffs' Copyrighted Works, including without limitation, by engaging in any of the following activities:
36. The terms of Paragraphs 36 and 37 of this Permanent Injunction shall not apply to any Copyrighted Work for which Defendant has obtained express written authorization or license for the use being made of such Copyrighted Work from each Plaintiff that owns or controls the rights to such Copyrighted Work, provided such authorization or license is in force and valid at the time of Defendant's use of the Copyrighted Work.
37. Prior to Defendant entering into any agreement or transaction whatsoever to sell, lease, license, assign, convey, distribute, loan, encumber, pledge or otherwise transfer, whether or not for consideration or compensation, any part of the system, software, source code, data files, other technology, domain names, trademarks, brands, or files used in connection with the TVpad System and Service or any Comparable System (a "Transfer of TVpad-Related Assets"), Defendant shall require, as a condition of any such transaction, that the transferee:
Defendant shall not permit any Transfer of TVpad-Related Assets to close until the Court has entered such an order. Defendant further shall not engage in a Transfer of TVpad-Related Assets with or to any person whom Defendant know to be engaged in, or intending to be engaged in, conduct that would violate the terms of Paragraphs 34 to 38 above.
38. The Enjoined Parties shall identify all domain names and IP addresses and the physical locations of all servers owned, leased or operated by any of the Enjoined Parties that are used in connection with the activities enjoined under Paragraphs 34 to 38 hereinabove.
39. Third parties providing web, server and file hosting services used by any of the Enjoined Parties in connection with the activities enjoined under Paragraphs 34 to 38 hereinabove, including but not limited to the third parties providing hosting services for the Internet servers, and who receive actual notice of this Order, are enjoined from providing such hosting services to any Enjoined Party in connection with the activities enjoined under Paragraphs 34 to 38 hereinabove.
40. Violation of this Injunction shall expose Defendant and all other Enjoined Parties to all applicable penalties, including contempt of Court.
41. This Permanent Injunction shall bind the Enjoined Parties. Defendant shall provide a copy of this Permanent Injunction to its officers, agents, servants, employees, attorneys, principals, shareholders, current and future administrators or moderators for the TVpad System and Service (or Comparable System and Service) or any online forums associated with the TVpad System and Service (or Comparable System), and any domain name registries or registrars responsible for any domain names used in connection with the TVpad System and Service (or Comparable System and Service).
42. 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.
43. For purposes of clarity, as the Court has personal jurisdiction over Defendant and has concluded that the conduct of Defendant induce infringement of Plaintiffs' Copyrighted Works in the United States under the copyright laws of the United States, this Permanent Injunction enjoins the conduct of Defendant wherever it may be found, including without limitation in Hong Kong, Samoa and China.
44. The Court further clarifies that this injunction covers any acts of direct infringement, as defined in 17 U.S.C. § 106, that take place in the United States. To the extent that an act of reproducing, copying, distributing, performing, or displaying takes place in the United States, it may violate 17 U.S.C. § 106, subject to the generally applicable requirements and defenses of the Copyright Act. United States copyright law does not require that both parties be located in the United States. Rather, the acts of transmitting, uploading and downloading are each independent grounds of copyright infringement liability. Each transmission, download or upload of Plaintiffs' copyrighted material violates Plaintiffs' copyrights if even a single United States based user is involved in the "swarm" process of distributing, transmitting, or receiving a portion of a computer file containing Plaintiffs' copyrighted content.
45. Further, Defendant, its officers, directors, agents, servants, employees, attorneys, and all persons and/or entities acting for, with, by, through, and/or in concert and participation with them, or any of them, are further hereby permanently enjoined from engaging in any of the following activities:
46. Service by mail upon Best4U, Inc. at 6131 Orangethorpe Avenue, No. 495, Buena Park, California 90620, of a copy of this Consent Judgment and Permanent Injunction entered by the Court is deemed sufficient notice to Best4U under Federal Rule of Civil Procedure 65. It shall not be necessary for Best4U to sign any form of acknowledgement of service.
47. Within 14 days of the date the Court enters this Injunction, Defendant shall file and serve a report in writing and under oath setting forth in detail the manner and form with which Defendant and the Enjoined Parties have complied with the Injunction.
48. The parties shall bear their own attorneys' fees and costs.
