FINAL JUDGMENT AND PERMANENT INJUNCTION AGAINST DEFENDANTS LEEA CUSTOMS, INC. AND EDWARD A. EHMER
S. JAMES OTERO, District Judge.
Plaintiff K&N Engineering, Inc. ("K&N"), by and through its counsel of record, Gordon & Rees, LLP, and Defendants Leea Customs, Inc. and Edward A. Ehmer (collectively "Defendants"), have executed a Stipulation for Entry of Final Judgment and Permanent Injunction providing for the final resolution of all claims of relief pending between them and have agreed to the entry of this Final Judgment and Permanent Injunction.
Accordingly, having considered all papers and pleadings on file in this Case 5:15-cv-00552-SJO-PJW Document 18 Filed 05/28/15 Page 2 of 6 Page ID #:113 action, including the fully executed Stipulation for Entry of Final Judgment and Permanent Injunction, and having determined that K&N and Defendants (the "Parties") have provided written consent to the entry of Final Judgment and Permanent Injunction, it is hereby ORDERED that:
1. This Court has jurisdiction over the Parties.
2. This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. §§ 1338 and 1367, and venue is proper in this Judicial District pursuant to 28 U.S.C. §§ 1391 and 1392.
3. This Court finds that K&N holds United States Trademark Registrations and foreign trademark registrations for its marks used in connection with its numerous products. K&N is the owner of the stylized K&N mark, U.S. service mark registration Nos. 1,536,024; 2,581,371 and 3,692,417 (hereinafter collectively "K&N Mark"), used in connection with the advertising, marketing and sales of its numerous air filters and oil filter products.
4. This Court finds that K&N has been manufacturing and selling air filter products under its K&N marks for more than 40 years and oil filter products for over 13 years. K&N's products, including the K&N crankcase vent filter ("K&N Product"), prominently display the K&N Mark
5. This Court finds that Defendants created an aftermarket automotive part that incorporated the K&N Product to create a modified oil filler cap, or "breather," for certain models of Corvette automobiles and that Defendants permanently affixed the K&N Product to one or more other components and sold these unified parts as a single part they called a "breather" bearing the aforementioned stylized K&N Mark (the "Infringing Product").
6. Defendants are ordered to produce to Plaintiff, within 10 days of entry of this Judgment herein, all business records that relate to or evidence the number of K&N Products Defendants purchased and all business records that relate to or evidence the number of Infringing Products sold and to whom each such Infringing Case 5:15-cv-00552-SJO-PJW Document 18 Filed 05/28/15 Page 3 of 6 Page ID #:114 Product was sold, and shall produce within 10 days of any written request by Plaintiff such additional records as Plaintiff may request to reasonably establish the number of K&N Products Defendants purchased, the number of Infringing Products Defendants sold, and to whom each such Infringing Product was sold.
7. Defendants are ordered to surrender to Plaintiff, within 10 days of entry of this Judgment herein, any remaining inventory of Infringing Products in Defendants' possession or under its control, or in the possession or under the control of Defendants' subsidiaries, parent and/or affiliated companies, successors, assigns, officers, directors, representatives, agents, partners, and/or employees, or those acting in concert or participation with Defendants.
8. Defendants, including any subsidiaries, parent and/or affiliated companies, successors, assigns, officers, directors, representatives, agents, partners, and/or employees, and all those acting in concert or participation with Defendants, are further ordered, in connection with the manufacture, marketing and sale of automobile parts to immediately:
(a) Cease and desist all current use and hereafter refrain from the use of any and all products bearing or incorporating the K&N Mark or any other marks, words, phrases, pictures, or names similar to the K&N Mark and/or incorporating the name "K&N" or any of Plaintiff's other registered trademarks in the manufacture, marketing and/or sale of automobile parts. This provision shall not enjoin or preclude Defendants from advertising, marketing or selling Plaintiff's products bearing the K&N Mark or any of Plaintiff's other registered trademarks, provided the subject product is being advertised, marketed or sold in its original form or condition, as manufactured or distributed by Plaintiff, and has not been altered or modified by incorporation or consolidation with another part or component, or modified or altered in any other manner, from its original form or Case 5:15-cv-00552-SJO-PJW Document 18 Filed 05/28/15 Page 4 of 6 Page ID #:115 condition, and further provided that the advertising, marketing or selling of such products is not misleading or confusing as to source, features, traits, characteristics, specifications, warranties or other facts affecting or relating to said products;
(b) Remove all marks, words, phrases, pictures, logos or names similar to the K&N Mark or any other marks, words, phrases, pictures, or names similar to the K&N Mark and/or incorporating the name "K&N", or any of Plaintiff's other registered trademarks, from all advertisements, marketing and promotional materials, printed materials, and any websites that Defendants control or maintain, including, but not limited to, www.nakidparts.com, and refrain from such uses in the future, except as to the advertising, marketing and selling of Plaintiff's products bearing the K&N Mark or any of Plaintiff's other registered trademarks, provided the subject product is being advertised, marketed or sold in its original form or condition, as manufactured or distributed by Plaintiff, and has not been altered or modified by incorporation or consolidation with another part or component, or altered or modified in any other manner from its original form or condition, and further provided that the advertising, marketing or selling of such products is not misleading or confusing as to source, features, traits, characteristics, specifications, warranties or other facts affecting or relating to said products;
(c) Remove all references to "K&N" or any other marks, words, phrases, pictures, or names similar to the K&N Mark or incorporating the name "K&N", or any of Plaintiff's other registered trademarks, in any domain name registration and/or use in any top-level domain relating to, involving, or referencing any website that Defendants control or maintain, and refrain from such uses in the future; and Case 5:15-cv-00552-SJO-PJW Document 18 Filed 05/28/15 Page 5 of 6 Page ID #:116
(d) Cease marketing and selling the Infringing Product.
9. No bond shall be required to secure this Final Judgment and Permanent Injunction.
10. This Permanent Injunction, upon approval and entry by this Court herein, shall have the force and effect of a permanent injunction entered into by the Court following a fully contested trial on the merits.
11. The Court shall maintain continuing jurisdiction over the enforcement of this Final Judgment and Permanent Injunction, and shall have jurisdiction to make any orders or findings necessary to effectuate and enforce this Final Judgment and Permanent Injunction, including the authority to award damages, civil penalties and other monetary relief authorized by law, including but not limited to sanctions for contempt of court, for any violation of the Final Judgment and Permanent Injunction.
12. Any party that violates the terms of this Final Judgment and Permanent Injunction shall be liable for attorneys' fees related to the enforcement of the same.
13. This Final Judgment and Permanent Injunction shall be binding upon and inure to the benefit of the Parties, and their successors and assigns.
14. The claims in K&N's Complaint against Defendants that are not adjudicated by this Final Judgment and Permanent Injunction are hereby dismissed without prejudice.
15. Defendants waive all rights to appeal this Final Judgment and Permanent Injunction.
16. Defendants shall reimburse K&N for its fees and costs, including attorneys' fees and court costs, incurred in this action up to the entry of this [Proposed] Final Judgment and Permanent Injunction in the sum of Ten Thousand Dollars ($10,000.00), payable upon entry of Judgment herein.
17. This is a Final Judgment and is enforceable upon entry. The Parties Case 5:15-cv-00552-SJO-PJW Document 18 Filed 05/28/15 Page 6 of 6 Page ID #:117 have waived findings of fact, conclusions of law, a statement of decision, and any right to set aside this Judgment, to appeal herefrom, to seek a new trial, or otherwise contest the validity or enforceability of this Final Judgment and Permanent Injunction in any way whatsoever, either directly or collaterally.
18. Service on any then current member, manager, or officer of Defendant Leea Customs, Inc., of a copy of this Judgment and Permanent Injunction shall constitute notice to Defendant Leea Customs, Inc.
IT IS SO ORDERED.
