Filed: Apr. 06, 2018
Latest Update: Apr. 06, 2018
Summary: PERMANENT INJUNCTION AND ORDER OF DISMISSAL JOHN A. KRONSTADT , District Judge . TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD, PLEASE TAKE NOTICE THAT, in accordance with the Stipulation for Entry of Permanent Injunction and Order of Dismissal entered into and filed herewith by Plaintiffs Southern California Edison Company and Edison International and Defendant Vivint Solar, Inc., through their respective counsel of record in this action, the Court HEREBY FINDS THAT: 1. On November 16, 201
Summary: PERMANENT INJUNCTION AND ORDER OF DISMISSAL JOHN A. KRONSTADT , District Judge . TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD, PLEASE TAKE NOTICE THAT, in accordance with the Stipulation for Entry of Permanent Injunction and Order of Dismissal entered into and filed herewith by Plaintiffs Southern California Edison Company and Edison International and Defendant Vivint Solar, Inc., through their respective counsel of record in this action, the Court HEREBY FINDS THAT: 1. On November 16, 2017..
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PERMANENT INJUNCTION AND ORDER OF DISMISSAL
JOHN A. KRONSTADT, District Judge.
TO ALL PARTIES AND THEIR ATTORNEYS OF RECORD, PLEASE TAKE NOTICE THAT, in accordance with the Stipulation for Entry of Permanent Injunction and Order of Dismissal entered into and filed herewith by Plaintiffs Southern California Edison Company and Edison International and Defendant Vivint Solar, Inc., through their respective counsel of record in this action, the Court HEREBY FINDS THAT:
1. On November 16, 2017, Plaintiffs filed a complaint, seeking damages, injunctive relief, and other legal and equitable relief based on Defendant's use of the registered and common law trademarks owned by Plaintiffs. Plaintiffs asserted (i) that Plaintiffs own valid registered and common law trademarks (the "Edison Marks") related to Plaintiffs' businesses, including but not limited to federal trademark registration nos. 4735589, 4491677, 4455232, 4367461, 3769254, 2409730, 1862786, 1496165, 1459556, and 2102608 and Application Serial Nos. 87507681 and 87507961; (ii) that the Edison Marks are widely known and famous; and (iii) that Defendant's usage of the Edison Marks infringes upon and dilutes the Edison Marks and violates numerous laws, including but not limited to 15 U.S.C. § 1114, 15 U.S.C. § 1116, 15 U.S.C. § 1125, and California Business & Professions Code § 14247, et seq., and constitutes passing off under California common law.
2. Without any admission of liability by any party, Plaintiffs and Defendant have entered into a settlement agreement and have stipulated to the entry by the Court of this Permanent Injunction and Order of Dismissal (the "Permanent Injunction Order") in this action on the terms set forth below.
NOW, THEREFORE, THE COURT HEREBY ORDERS, ADJUDGES, Case 2:17-cv-08388-JAK-SK Document 23 Filed 04/06/18 Page 3 of 5 Page ID #:183 AND DECREES THAT:
A. Pursuant to Rule 65 of the Federal Rules of Civil Procedure, Defendant Vivint Solar, Inc., along with its subsidiary companies, if any, together with their respective officers, directors, principals, partners, members, agents, employees, representatives, successors, assigns, transferees, and all those persons and entities acting in concert or participation with them, at their direction, or within their control (collectively, the "Enjoined Entities"), SHALL BE PERMANENTLY ENJOINED AND RESTRAINED as follows:
1. The Enjoined Entities immediately shall cease and desist from (i) any and all use of any trademark, service mark, logo, trade name, business or entity name, or trade dress that includes or is similar to any of the Edison Marks, or participating in, assisting in, or contributing to any such use, including without limitation any use of the "Sunburst" logo, federal trademark registration number 2102608; (ii) directly or indirectly infringing or diluting in any manner any of the Edison Marks or otherwise injuring Plaintiffs' businesses or reputation in any matter, or participating in, assisting in, or contributing to any such activity, or (iii) representing that Vivint is in any way associated with, connected with, in partnership with, or part of Southern California Edison Company or Edison International, or otherwise attempting to confuse or mislead Plaintiffs' customers or the public as to any sponsorship, endorsement, connection, or affiliation by or between Vivint and Plaintiffs.
B. Within ten (10) days of the entry of this Permanent Injunction Order, the Enjoined Entities shall offer up for destruction any and all merchandise, products, promotional or advertising materials, clothing, documents, or any other Case 2:17-cv-08388-JAK-SK Document 23 Filed 04/06/18 Page 4 of 5 Page ID #:184 items bearing the Edison Marks, any imitations thereof, or any confusingly similar variations thereof, that have not been licensed or authorized by Plaintiffs, to the extent that Enjoined Entities can identify any such materials after making reasonable efforts to do so.
C. Within ten (10) days of the entry of this Permanent Injunction Order, Defendant shall provide written notice of the Permanent Injunction Order (1) to each of its officers, directors, principals, owners, partners, members, shareholders, agents, employees, representatives, successors, assigns, and licensees; and (2) to all affiliates, distributors, marketing agents, promotional or advertising agencies, and other parties that it knows or has reason to believe are in possession of any items bearing marks the use of which by the Enjoined Entities is prohibited under paragraph A above, including but not limited to the "Sunburst" logo, federal trademark registration number 2102608.
1. Defendant shall inform these individuals or entities that, in accordance with this Permanent Injunction Order, merchandise, products, promotional or advertising materials, clothing, documents, or other items bearing marks the use of which by the Enjoined Entities is prohibited under paragraph A, are not to be displayed, distributed, licensed, sold, advertised or promoted, or otherwise used in any manner, and that such items must be destroyed.
2. Defendant shall require the individuals and entities identified in this paragraph to immediately cease and desist from representing that Vivint is in any way associated with, connected with, in partnership with, or part of Southern California Edison Company or Edison International or otherwise attempting to confuse or mislead Plaintiffs' customers or the public as to any Case 2:17-cv-08388-JAK-SK Document 23 Filed 04/06/18 Page 5 of 5 Page ID #:185 sponsorship, endorsement, connection, or affiliation by or between Vivint and Plaintiffs.
3. Defendant shall provide a copy of the Permanent Injunction Order as part of such notice, which may be transmitted by email.
D. Within thirty (30) days of the date the Court enters this Permanent Injunction Order, Defendant shall file and serve a report in writing and under oath setting forth in detail the manner and form in which Plaintiff has complied with the terms of this Order.
E. Plaintiffs' claims against Defendant, and all other claims, counterclaims and defenses in this action, are hereby dismissed with prejudice and without costs to either Party, except that the parties have consented to, and the Court shall retain, continuing jurisdiction for purposes of enforcement of the Permanent Injunction Order and the parties' settlement agreement. Violation of the Permanent Injunction Order shall expose Defendant and all other persons bound by the Order to all applicable penalties under law, including contempt of Court.
IT IS SO ORDERED.
