Filed: Jan. 31, 2013
Latest Update: Jan. 31, 2013
Summary: [ PROPOSED ] CONSENT DECREE PURSUANT TO STIPULATION R. GARY KLAUSNER, District Judge. The Court, having read and considered the Joint Stipulation for Entry of Consent Decree that has been executed on behalf of Plaintiff Sanrio, Inc. ("Plaintiff"), on the one hand, and Defendant BKV, Inc. a/k/a BKV Tellos Inc. d/b/a Tello's ("Defendant"), on the other hand, and good cause appearing therefore, hereby: ORDERS that this Consent Decree shall be and is hereby entered in the within action as follows
Summary: [ PROPOSED ] CONSENT DECREE PURSUANT TO STIPULATION R. GARY KLAUSNER, District Judge. The Court, having read and considered the Joint Stipulation for Entry of Consent Decree that has been executed on behalf of Plaintiff Sanrio, Inc. ("Plaintiff"), on the one hand, and Defendant BKV, Inc. a/k/a BKV Tellos Inc. d/b/a Tello's ("Defendant"), on the other hand, and good cause appearing therefore, hereby: ORDERS that this Consent Decree shall be and is hereby entered in the within action as follows:..
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[PROPOSED] CONSENT DECREE PURSUANT TO STIPULATION
R. GARY KLAUSNER, District Judge.
The Court, having read and considered the Joint Stipulation for Entry of Consent Decree that has been executed on behalf of Plaintiff Sanrio, Inc. ("Plaintiff"), on the one hand, and Defendant BKV, Inc. a/k/a BKV Tellos Inc. d/b/a Tello's ("Defendant"), on the other hand, and good cause appearing therefore, hereby:
ORDERS that this Consent Decree shall be and is hereby entered in the within action as follows:
1) This Court has jurisdiction over the parties to this action and over the subject matter hereof pursuant to 17 U.S.C. § 101 et seq., 17 U.S.C. § 501, 28 U.S.C. §§ 1331 and 1338, and 28 U.S.C. § 1367. Service of process was properly made against Defendant.
2) For purposes of this action against Defendant, Plaintiff is the owner or exclusive licensee of all rights in and to the copyright and trademark registrations listed in Exhibits "A" and "B," attached hereto and incorporated herein by this reference, and the copyrights associated with the same ("Plaintiff's Properties").
3) Plaintiff has expended considerable resources in the creation and commercial exploitation of Plaintiff's Properties on merchandise and in the enforcement of its intellectual property rights in Plaintiff's Properties.
4) Plaintiff has alleged that Defendant has made unauthorized uses of Plaintiff's Properties or substantially similar likenesses or colorable imitations thereof.
5) Defendant and its agents, servants, employees and all persons in active concert and participation with it who receive actual notice of the injunction are hereby restrained and enjoined from:
a) Infringing Plaintiff's copyrights and trademarks in Plaintiff's Properties, either directly or contributorily, in any manner, including generally, but not limited to manufacturing, importing, distributing, advertising, selling, offering for sale, any unauthorized product which features any of Plaintiff's Properties ("Unauthorized Products"), and, specifically:
i) Importing, manufacturing, distributing, advertising, selling, offering for sale, the Unauthorized Products or any other unauthorized products which picture, reproduce, copy or use the likenesses of or bear a substantial similarity to any of Plaintiff's Properties;
ii) Importing, manufacturing, distributing, advertising, selling, offering for sale, renting or offering to rent in connection thereto any unauthorized promotional materials, labels, packaging or containers which picture, reproduce, copy or use the likenesses of or bear a confusing similarity to any of Plaintiff's Properties;
iii) Engaging in any conduct that tends falsely to represent that, or is likely to confuse, mislead or deceive purchasers, Defendant's customers and/or members of the public to believe, the actions of Defendant, the products sold by Defendant, or Defendant itself are connected with Plaintiff, are sponsored, approved or licensed by Plaintiff, or are affiliated with Plaintiff; or
iv) Affixing, applying, annexing or using in connection with the importation, manufacture, distribution, advertising, selling, offering for sale, or other use of any goods or services, a false description or representation, including words or other symbols, tending to falsely describe or represent such goods as being those of Plaintiff.
6) Each side shall bear its own fees and costs of suit.
7) This Consent Decree shall be deemed to have been served upon Defendant at the time of its execution by the Court.
8) The Court finds there is no just reason for delay in entering this Consent Decree and, pursuant to Rule 54(a) of the Federal Rules of Civil Procedure, the Court directs immediate entry of this Consent Decree against Defendant.
9) The Court shall retain jurisdiction of this action to entertain such further proceedings and to enter such further orders as may be necessary or appropriate to implement and enforce the provisions of this Consent Decree.
10) Except as provided herein, all claims alleged in the Complaint as to Defendant are dismissed with prejudice. All claims alleged in the Complaint as to the remaining defendants shall remain pending before the Court.
EXHIBIT A
SANRIO CO.'S COPYRIGHTED DESIGNS
Copyright Title of Work (Character) Type of Work
Registration
VAu 684-322 SANRIO 2005 CHARACTER Graphic Artwork
GUIDE
VA 1-303-874 CHARACTER MERCHANDISING Collective work of
artwork, text and
photos
TX 3-769-888 SANRIO 1993 PRODUCT AND Visual Material
SALES PROMOTION CATALOG
VA 1-296-115 2004-100 CHARACTERS Graphic Artwork
VA 811-440 BAD BADTZ MARU Graphic Artwork
VAu 498-617 CHOCOCAT Art original
VA 130-420 HELLO KITTY Graphic Artwork
VA 636-579 KEROKEROKEROPPI Sticker Book
Pictorial Cartoon
VA 707-212 KEROKEROKEROPPI Drawing
VA 246-421 LITTLE TWIN STARS Stickers
VA 840-495 MONKICHI Graphic Artwork
VA 130-419 MY MELODY, A BUNNY WITH Graphic Artwork
HOOD
VA 130-421 PATTY & JIMMY, A BOY AND Graphic Artwork
GIRL WITH SCHOOL BOOKS
VA 636-582 PEKKLE- AHIRU NO PEKKLE Graphic Artwork
MINI STICKER BOOK
VA 840-496 PICKE BICKE Graphic Artwork
VA 636-580 POCHACCO Sticker Book
VA 148-625 TUXEDO SAM, TUXEDO SAM Stickers
GRAND REGATTA, SPIFFY'S
THE COOLEST AND SPIFFY IS
COOL STICKERS
VA 840-494 WINKIPINKI Graphic Artwork
VA 636-581 ZASHIKIBUTA Stickers
VA 1-352-721 KEROPPI/LITTLE FROG ... BIG Visual Material
SPLASH
Vau 1-078-385 SANRIO 2010 CHARACTER Visual Material
GUIDE
VA 1-342-775 SANRIO 2002 HELLO KITTY Visual Material
STYLE GUIDE
VA 657-748 KOBUTA NO PIPPO Visual Material
VA 1-342-774 SANRIO 2005 KEROPPI STYLE Visual Material
GUIDE
Vau 655-028 THE RUNABOUTS & 2001 Visual Material
VA 1-416-374 TENORIKUMA(BLUE CAFE), Visual Material
MY MELODY(HEART),
KUROMI(KUROMI5),
CHARMMY KITTY(RABBIT),
HELLO KITTY(LOGO)
EVERYDAY CAT.JUNE 2006
MASYUMARU(INTRO);
CINNAMOROLL(SPORT);
SUGARBUNNIES(DOUGHNUTS);
CHARMMYKITTY(RABBIT);
VA 1-416-375 LITTLE TWIN STARS(STARS);
HELLO KITTY(BEAR);
EVERYDAY CATALOG JULY Visual Material
2006
PANDAPPLE(INTRO),
FROOLIEMEW(FANCY),
VA 1-370-020 HOCOCAT(DOT)/SANRIO 2005 Visual Material
PRODUCT CATALOG AUG NEW
DOKIDOKI HOTDOG/THE
VA 1-303-873 CHILI PEPPER TRIO/CATALOG Visual Material
EVERYDAY 5 MAY 2003
EXHIBIT B
SANRIO CO.'S TRADEMARKS
Trademark
Trademark Mark Drawing Trademark Registration
Code Registration No. Date
Design Plus
Chococat Words, Letters, 2,842,707 5/18/04
and/or Numbers
Design Plus
Chococat Words, Letters, 2,707,592 4/15/03
and/or Numbers
Design Plus
Chococat Words, Letters, 2,705,164 4/8/03
and/or Numbers
Design Plus
Chococat Words, Letters, 2,714,130 5/6/03
and/or Numbers
Design Plus
Chococat Words, Letters, 2,952,043 5/17/05
and/or Numbers
Design Plus
Chococat Words, Letters, 2,845,315 5/25/04
and/or Numbers
Hello Kitty Design Only 1,200,083 7/6/82
Hello Kitty Design Only 1,277,721 5/15/84
Hello Kitty Typed Drawing 1,215,436 11/9/82
Hello Kitty Typed Drawing 1,279,486 5/29/84
Hello Kitty Typed Drawing 1,391,550 4/29/86
Hello Kitty Design Only 1,370,105 11/12/85
Keroppi Standard Character 3,531,383 11/11/08
Mark
Keroppi Standard Character 3,181,350 12/5/06
Mark
Keroppi Standard Character 3,531,382 11/11/08
Mark
Keroppi Standard Character 3,181,349 12/5/06
Mark
Keroppi Standard Character 3,436,548 5/27/08
Mark
Keroppi Standard Character 3,181,348 12/5/06
Mark
Keroppi Standard Character 3,181,347 12/5/06
Mark
Keroppi Standard Character 3,449,938 6/17/08
Mark
Keroppi Standard Character 3,531,381 11/11/08
Mark
Keroppi Standard Character 3,531,380 11/11/08
Mark
Keroppi Standard Character 3,181,346 12/5/06
Mark
Keroppi Standard Character 3,423,288 5/6/08
Mark
Keroppi Standard Character 3,181,345 12/5/06
Mark
Little Twin Stars Typed Drawing 1,341,864 6/18/85
Little Twin Stars Typed Drawing 1,192,946 4/6/82
Little Twin Stars Standard Character 3,245,999 5/29/07
Mark
Little Twin Stars Standard Character 3,245,998 5/29/07
Mark
Little Twin Stars Standard Character 3,245,997 5/29/07
Mark
Little Twin Stars Standard Character 3,245,994 5/29/07
Mark
Little Twin Stars Standard Character 3,245,993 5/29/07
Mark
Little Twin Stars Standard Character 3,245,992 5/29/07
Mark
Little Twin Stars Standard Character 3,245,991 5/29/07
Mark
Monkichi Standard Character 3,699,381 10/20/09
Mark
My Melody Typed Drawing 1,305,637 11/20/84
My Melody Typed Drawing 1,210,192 9/28/82
Pekkle Typed Drawing 2,053,346 4/15/97
Pochacco Typed Drawing 2,236,507 4/6/99
Pochacco Typed Drawing 1,985,358 7/9/96
Design Plus
Sanrio Words, Letters, 2,506,705 11/13/01
and/or Numbers
Sanrio Typed Drawing 2,506,577 11/13/01
Design Plus
Sanrio Words, Letters, 2,721,680 6/3/03
and/or Numbers
Design Plus
Sanrio Words, Letters, 2,742,381 7/29/03
and/or Numbers
Design Plus
Sanrio Words, Letters, 2,721,679 6/3/03
and/or Numbers
Design Plus
Sanrio Words, Letters, 2,693,639 3/4/03
and/or Numbers
Design Plus
Sanrio Words, Letters, 2,696,063 3/11/03
and/or Numbers
KEROKEROKEROPPI Standard Character 3,531,378 11/11/2008
Mark
KEROKEROKEROPPI Standard Character 3,531,376 11/11/2008
Mark
Bow Design only 3,260,857 7/10/2007
Bow Design only 3,359,800 12/25/2007
Bow Design only 3,359,801 12/25/2007
Bow Design only 3,272,377 7/31/2007
Bow Design only 3,260,860 7/10/2007
Bow Design only 3,362,512 1/1/2008
Bow Design only 3,3,48,608 12/4/2008
Bow Design only 3,249,704 6/5/2007
Bow Design only 3,362,514 1/1/2008
Bow Design only 3.359,799 12/25/2007
Bow Design only 3,260,858 7/10/2007
Bow Design only 3,445,304 6/10/2008
Bow Design only 3,260,859 7/10/2007
Bow Design only 3,359,802 12/25/2007
Bow Design only 3,260,861 7/10/2007
Bow Design only 3,253,794 6/19/2007
Bow Design only 3,260,862 7/10/2007
Outline of Hello Kitty Design only 3,666,736 8/11/2009
Outline of Hello Kitty Design only 3,756,724 3/9/2010
Outline of Hello Kitty Design only 3,751,315 2/23/2010
Outline of Hello Kitty Design only 3,868,138 10/26/2010
Outline of Hello Kitty Design only 3,756,725 3/9/2010
Outline of Hello Kitty Design only 3,666,736 8/11/2009
Outline of Hello Kitty Design only 3,679,187 9/8/2009
Outline of Hello Kitty Design only 3,865,208 10/19/2010
