CONSENT JUDGMENT AND PERMANENT INJUNCTION
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 Keum S. Kang ("Mr. Kang") 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.
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 Mr. Kang is a California resident with a residence address of 250 West Central Avenue, Apartment No. 808, Brea, California 92821.
8. Mr. Kang has 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 Exhibit 1 (the "TVpad"). 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. 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) inducing others to display and publicly perform such broadcasts and programs, Mr. Kang 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 Mr. Kang 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 Mr. Kang 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 Mr. Kang 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. Likewise, for many years, and prior to the acts of Mr. Kang 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 Mr. Kang 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 Exhibit 7.
23. For many years, and prior to the acts of Mr. Kang 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 Mr. Kang 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 Mr. Kang 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 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. Mr. Kang's 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, 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 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. Mr. Kang'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 Plaintiffs' business reputation and goodwill.
31. Mr. Kang's 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:
(a) "Defendant" shall mean Keum S. Kang.
(b) "TVpad Device" shall mean the transmission apparatuses marketed as TVpad, and any other devices that offer the Infringing TVpad Applications (as defined in (d) below) for download.
(c) "TVpad Store" shall mean any combination of software and/or services whereby an individual can select and download software applications for use on the TVpad Device.
(d) "TVpad Applications" shall mean software applications and associated services that are designed for use on the TVpad Device.
(e) "Infringing TVpad Applications" shall mean any TVpad Application whereby Plaintiffs' 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.
(f) "TVpad System and Service" shall mean the data transmission service provided by Create New Technology (HK) Ltd. and/or Shenzhen GreatVision Network Technology Co., their successors-in-interest and assigns, and all their 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, and the TVpad Device, TVpad Store, TVpad Applications, Infringing TVpad Applications, and any other apparatuses, servers, trackers, websites, software, and electronic data that make up or support such data transmission service.
(g) "Comparable System and Service" shall mean any data transmission service that provides users access to Plaintiffs' Copyrighted Works and the apparatuses, servers, trackers, websites, software, and electronic data that provides users access to Plaintiffs' Copyrighted Works, using any peer-to-peer or internet based transmission, file sharing or content delivery technology.
(h) "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.
(i) "Infringement Applications or similar files" shall mean electronic files, including TVpad Applications, that correspond, point or lead in whole or in part to any of the Copyrighted Works, and shall further include any dot-torrent files, magnet links, hash links, or other functionally similar files, links or identifiers.
(j) "Infringement-Related Terms" shall mean:
(i) terms that refer to the titles or commonly understood names of Plaintiffs' broadcasts (for example MBC, SBS, KBS, and Hot Korean Television) and/or Plaintiffs' Copyrighted Works (for example, the full title or common name of a television series);
(ii) Plaintiffs may request that this Court modify (i) above to include additional terms upon competent proof that such terms should be included.
33. Defendant, and all of his 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 in connection with the TVpad System and Service or any Comparable System and Service:
(a) Providing, assisting in, controlling or directing access to any Infringement Applications or similar files that correspond, point or lead to any of the Copyrighted Works, including by way of www.appnnn.com or the N+ Store;
(b) creating or providing assistance to others who wish to create an Application or similar file that corresponds, points or leads to any of the Copyrighted Works;
(c) providing or controlling servers which contain any of the Copyrighted Works;
(d) assisting with end-user reproductions or transmissions of any of the Copyrighted Works through a tracker server, or any other server or software that assists users in locating, identifying or obtaining reproductions or transmissions of any of the Copyrighted Works, including from other users offering reproductions or transmissions of any of the Copyrighted Works;
(e) hosting or providing access to any of the Copyrighted Works;
(f) assisting in transmission of any of the Copyrighted Works;
(g) requesting transmission of any of the Copyrighted Works; or
(h) transmitting any of the Copyrighted Works.
34. Further, the Enjoined Parties are enjoined from:
(a) Transmitting, retransmitting, streaming, tracking or otherwise publicly performing, directly or indirectly, by means of any device or process, Plaintiffs' Copyrighted Works;
(b) Authorizing, hosting, reproducing, downloading, providing links to, or otherwise distributing or assisting in the distribution of the Infringement Applications or similar files, including without limitation offering them in the TVpad Store, loading them onto TVpad Devices, or providing them to consumers on separate media;
(c) Advertising, displaying, marketing or otherwise promoting any of the Infringement Applications or similar files, including without limitation publicly displaying any of the Plaintiffs' Copyrighted Works in connection therewith or in connection with the TVpad Device;
(d) Distributing, advertising, marketing or promoting any TVpad Device that contains, connects to, or offers for download any Infringement Applications or similar files, or promote any Infringement Applications or similar files through the inclusion of icons for said Infringement Applications or similar files;
(e) Otherwise infringing Plaintiffs' rights in their Copyrighted Works, whether directly, secondarily, by active inducement, contributorily, vicariously or in any other manner.
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:
(a) advertising or promoting access to or the availability of Plaintiffs' Copyrighted Works and the Infringement Applications or similar files;
(b) encouraging or soliciting others to transmit or reproduce Plaintiffs' Copyrighted Works and the Infringement Applications or similar files;
(c) encouraging or soliciting others to upload, post or index any files that constitute, correspond, point or lead to any of the Copyrighted Works and the Infringement Applications or similar files;
(d) encouraging or soliciting others to offer transmission of Plaintiffs' Copyrighted Works and the Infringement Applications or similar files;
(e) providing technical assistance, support services or servers to others engaged in infringement of, or seeking to infringe, Plaintiffs' Copyrighted Works and the Infringement Applications or similar files;
(f) creating, maintaining, highlighting or otherwise providing access to lists that include, refer to or signal the availability of Plaintiffs' Copyrighted Works and the Infringement Applications or similar files;
(g) including Infringement-Related Terms and the Infringement Applications or similar files in promotional material;
(h) creating, maintaining or providing access to Applications that group transmissions based on Infringement-Related Terms;
(i) organizing, harvesting, categorizing, or using Infringement-Related Terms;
(j) transferring or redirecting users of the TVpad System and Service to any other service that, directly or indirectly, provides access to unauthorized copies of Plaintiffs' Copyrighted Works;
(k) indexing or providing access to files provided on the following sites or services: N+, such as may be found at www.appnnn.com;
(i) Plaintiffs may request that this Court modify the injunction to include additional source websites upon competent proof that such websites should be added to this subsection (k).
(l) soliciting revenue from third party advertisers or advertising brokers based on (or by referring to or highlighting) the Infringement Applications or similar files.
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:
(a) submit to the Court's jurisdiction and venue;
(b) agree to be bound by the terms herein; and
(c) apply to the Court for an order adding it as a party to this Permanent Injunction.
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 knows 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 each of their respective 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 induces 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 he 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, his servants, employees, attorneys, and all persons and/or entities acting for, with, by, through, and/or in concert and participation with him, or any of them, are further hereby permanently enjoined from engaging in any of the following activities:
(a) 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 or entertainment services, or related goods or services, not originating from or authorized by Plaintiffs;
(b) 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;
(c) representing in any manner, or by any method whatsoever, that goods and services provided by Keum S. Kang 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;
(d) committing any acts calculated or likely to cause consumers to believe that Mr. Kang's products and services are authorized by Plaintiffs unless they are such;
(e) infringing or diluting (whether directly or indirectly) the distinctive quality of Plaintiffs' Marks; and
(f) unfairly competing with Plaintiffs in any manner.
46. Service by mail upon Mr. Kang at 250 West Central Avenue, Apartment No. 808, Brea, California 92821, of a copy of this Consent Judgment and Permanent Injunction entered by the Court is deemed sufficient notice to Mr. Kang under Federal Rule of Civil Procedure 65. It shall not be necessary for Mr. Kang 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.
IT IS SO ORDERED:
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