ORDER RE STIPULATION
RAYMOND P. MOORE, District Judge.
This matter is before the Court on the parties' renewed Stipulation for Entry of Consent Judgments with Permanent Injunction and Dismissal with Prejudice of Remaining Claims and Counterclaims ("Stipulation II") (ECF No. 57), along with proposed consent judgments and order of dismissal. Stipulation II was filed after the Court issued its Order of May 1, 2019, raising certain issues in the parties' original stipulation ("Stipulation I") (ECF No. 55). Upon consideration of Stipulation I and II and the parties' apparent intent, the Court finds the proposed documents fail to address the requirements of Fed. R. Civ. P. 58 as the consent order and judgment are combined; and Does 1-5. In the interest of judicial economy, the Court has modified the parties' proposed documents from Stipulation I and II and prepared (1) a proposed Consent Order for each Defendant; (2) a proposed Order of dismissal of the remaining claims, counterclaims, and Doe defendants; and (3) a proposed Consent Judgment to be entered by the Clerk. (Proposed documents attached.)
Based on the foregoing, it is ORDERED that on or before Friday, May 31, 2019, the parties shall file a status report and advise if the orders and judgment which the Court proposes to enter are acceptable.
CONSENT ORDER OF PERMANENT INJUNCTION AND MONETARY DAMAGES AGAINST DEFENDANT XVAPE LLC
The Court, having been presented with a Stipulation for Entry of Permanent Injunction, Consent Judgment, and Dismissal with Prejudice of Remaining Claims and Counterclaims (ECF No. 57), and being otherwise fully advised in the matter, hereby FINDS AND ORDERS:
1. The Court has jurisdiction over the parties and the subject matter of this action, and enforcement of this Consent Order. Venue in the District of Colorado is proper. The Court shall retain jurisdiction to enforce this Consent Order.
2. Plaintiff, Shenzhen Topgreen Technology Co. Ltd. ("Topgreen" or "Plaintiff"), is a Chinese corporation with its principal place of business in Shenzhen, Guangdong Province, China. Plaintiff is the owner of the USPTO-registered trademarks below:
a. XVAPE, reg. no. 4,654,719
b. XVAPE, reg. no. 5,156,688
c. XMAX, reg. no. 5,463,351
Collectively, the three (3) trademarks are referred to as the "Plaintiff's Trademarks."
3. Defendant XVAPE LLC is a Colorado limited liability company with its principal place of business at 2175 S. Jasmine Street, Suite 1000, Denver, CO 80222.
4. Defendant Anthony F. Lin, aka Tony Lin, is the manager or principal of XVAPE LLC.
5. Collectively, Defendant XVAPE LLC and Defendant Anthony Lin are referred to as the Defendants.
6. Plaintiff's Second Amended Complaint asserts the following claims:
a. Trademark Infringement
b. Unfair Competition
c. Tortious Interference with Business Relationship
d. Breach of Contract
e. Breach of Fiduciary Duty
f. Open Book Account
g. Accounting and Liquidation/Winding Up
7. Defendants filed counterclaims of setoff for expenses and defective products under theories of Breach of Contract, Promissory Estoppel, and/or Unjust Enrichment.
8. Defendants acknowledged the ownership and validity of the Plaintiff's Trademarks.
9. The parties have resolved the disputes between them and agreed to this Consent Order, and associated Consent Judgment, as to Plaintiff's first claim (Count I) for trademark infringement under the Lanham Act as entered herein.
10. Pursuant to Federal Rule of Civil Procedure 65(d), the provisions of this Consent Order are binding upon the Defendant XVAPE LLC and its officers, agents, servants, employees and all other persons or entities in active concert or participation with it, who receive actual notice of this Consent Order by personal service or otherwise.
11. By this order, the Court enters no adjudication as to any claims, causes of action, and/or counterclaims raised by Plaintiff or Defendants other than the matters specifically resolved and ordered herein,
ACCORDINGLY, IT IS HEREBY ORDERED THAT JUDGMENT shall enter in favor of Plaintiff Topgreen and against Defendant XVAPE LLC on Plaintiff's claim for trademark infringement (Count I) as follows:
a. Permanent Injunction:
XVAPE LLC and its officers, agents, servants, employees and all persons or entities in active concert or participation with him, who receive actual notice of this Consent Order by personal service or otherwise, are hereby permanently restrained and enjoined from:
I. Owning or operating any websites that contain the name of Plaintiff's Trademarks in the website domain name, specifically including the websites xvape.com and xvapeus.com; and
II. Owning or operating any merchandizing or service business where Plaintiff's Trademarks, including marks that are substantially similar thereto and intended to compete with Plaintiff's products, are readily displayed or associated with the goods or services in the normal course of commercial business activities, such as sales, offers for sales, promotion, distribution, or marketing activities; and
b. Monetary Damages against XVAPE LLC in the stipulated amount of $120,000.00.
SO ORDERED.
CONSENT ORDER OF PERMANENT INJUNCTION AGAINST DEFENDANT TONY LIN
The Court, having been presented with a Stipulation for Entry of Permanent Injunction, Consent Judgment, and Dismissal with Prejudice of Remaining Claims and Counterclaims (ECF No. 57), and being otherwise fully advised in the matter, hereby FINDS AND ORDERS:
1. The Court has jurisdiction over the parties and the subject matter of this action, and enforcement of this Consent Order. Venue in the District of Colorado is proper. The Court shall retain jurisdiction to enforce this Consent Order.
2. Plaintiff, Shenzhen Topgreen Technology Co. Ltd. ("Topgreen" or "Plaintiff"), is a Chinese corporation with its principal place of business in Shenzhen, Guangdong Province, China. Plaintiff is the owner of the USPTO-registered trademarks below:
a. XVAPE, reg. no. 4,654,719
b. XVAPE, reg. no. 5,156,688
c. XMAX, reg. no. 5,463,351
Collectively, the three (3) trademarks are referred to as the "Plaintiff's Trademarks."
3. Defendant XVAPE LLC is a Colorado limited liability company with its principal place of business at 2175 S. Jasmine Street, Suite 1000, Denver, CO 80222.
4. Defendant Anthony F. Lin, aka Tony Lin, is the manager or principal of XVAPE LLC.
5. Collectively, Defendant XVAPE LLC and Defendant Anthony Lin are referred to as the Defendants.
6. Plaintiff's Second Amended Complaint asserts the following claims:
a. Trademark Infringement
b. Unfair Competition
c. Tortious Interference with Business Relationship
d. Breach of Contract
e. Breach of Fiduciary Duty
f. Open Book Account
g. Accounting and Liquidation/Winding Up
7. Defendants filed counterclaims of setoff for expenses and defective products under theories of Breach of Contract, Promissory Estoppel, and/or Unjust Enrichment.
8. Defendants acknowledged the ownership and validity of the Plaintiff's Trademarks.
9. The parties have resolved the disputes between them and agreed to this Consent Order, and associated Consent Judgment, as to Plaintiff's first claim (Count I) for trademark infringement under the Lanham Act as entered herein.
10. Pursuant to Federal Rule of Civil Procedure 65(d), the provisions of this Consent Order are binding upon the Defendant Anthony Line and his agents, servants, employees, and all other persons or entities in active concert or participation with him, who receive actual notice of this Consent Order by personal service or otherwise.
11. By this order, the Court enters no adjudication as to any claims, causes of action, and/or counterclaims raised by Plaintiff or Defendants other than the matters specifically resolved and ordered herein,
ACCORDINGLY, IT IS HEREBY ORDERED THAT JUDGMENT shall enter in favor of Plaintiff Topgreen and against Defendant Anthony Lin on Plaintiff's claim for trademark infringement (Count I) by entry of a permanent injunction as follows:
Anthony Lin and his agents, servants, employees and all persons or entities in active concert or participation with him, who receive actual notice of this Consent Order by personal service or otherwise, are hereby permanently restrained and enjoined from:
I. Owning or operating any websites that contain the name of Plaintiff's Trademarks in the website domain name, specifically including the websites xvape.com and xvapeus.com; and
II. Owning or operating any merchandizing or service business where Plaintiff's Trademarks, including marks that are substantially similar thereto and intended to compete with Plaintiff's products, are readily displayed or associated with the goods or services in the normal course of commercial business activities, such as sales, offers for sales, promotion, distribution, or marketing activities.
SO ORDERED.
ORDER OF DISMISSAL OF REMAINING CLAIMS, COUNTERCLAIMS, AND PARTIES WITH PREJUDICE
This matter comes before the Court on the Parties' Stipulation for Entry of Consent Judgments with Permanent Injunction and Dismissal with Prejudice of Remaining Claims and Counterclaims (ECF No. 57), and the Court, having reviewed the Stipulation and being otherwise fully advised, hereby ORDERS as follows:
1. The consent orders on Plaintiff's first claim (Count I) for trademark infringement under the Lanham Act are being separately entered against each of the Defendants;
2. The Court shall retain jurisdiction to enforce the parties' confidential Settlement Agreement pursuant to Fed. R. Civ. P. 41(a)(2);
3. Plaintiff's remaining claims for unfair competition (Count II), tortious interference in business relations (Count III), breach of contract (Count IV), breach of fiduciary duty (Count V), open book account (Count VI), and accounting and liquidation/winding up (Count VII), and the Defendants' counterclaims are hereby dismissed with prejudice, with each party to bear his or its own costs and fees;
4. That Does 1-5 are hereby dismissed prejudice; and
5. That the Clerk shall enter judgment in accordance with this Order and the consent orders.
CONSENT JUDGMENT
In accordance with the orders filed during the pendency of this case, and pursuant to Fed. R. Civ. P. 58(a), the following Final Judgment is hereby entered.
PURSUANT to and in accordance with the Consent Order of Permanent Injunction Against Defendant Tony Lin (ECF No. ____), the Consent Order of Permanent Injunction and Monetary Damages Against Defendant XVAPE LLC (ECF No. ____), and the Order of Dismissal of Remaining Claims, Counterclaims, and Parties with Prejudice (ECF No. ____) entered by the Honorable Raymond P. Moore on ____________, all of which are incorporated herein by reference, it is
ORDERED, ADJUDGED, AND DECREED THAT JUDGMENT is entered in favor of Plaintiff Topgreen and against Defendant Anthony Lin on Plaintiff's claim for trademark infringement (Count I) by entry of a permanent injunction as follows:
Anthony Lin and his agents, servants, employees and all persons or entities in active concert or participation with him, who receive actual notice of the Consent Order of Permanent Injunction Against Defendant Tony Lin by personal service or otherwise, are hereby permanently restrained and enjoined from:
I. Owning or operating any websites that contain the name of Plaintiff's Trademarks in the website domain name, specifically including the websites xvape.com and xvapeus.com; and
II. Owning or operating any merchandizing or service business where Plaintiff's Trademarks, including marks that are substantially similar thereto and intended to compete with Plaintiff's products, are readily displayed or associated with the goods or services in the normal course of commercial business activities, such as sales, offers for sales, promotion, distribution, or marketing activities; and it is
FURTHER ORDERED, ADJUDGED, AND DECREED THAT JUDGMENT is entered in favor of Plaintiff Topgreen and against Defendant XVAPE LLC on Plaintiff's claim for trademark infringement (Count I) by:
(1) Entry of a permanent injunction as follows:
a. XVAPE LLC and its officers, agents, servants, employees and all persons or entities in active concert or participation with him, who receive actual notice of this Consent Order of Permanent Injunction and Monetary Damages Against Defendant XVAPE LLC by personal service or otherwise, are hereby permanently restrained and enjoined from:
I. Owning or operating any websites that contain the name of Plaintiff's Trademarks in the website domain name, specifically including the websites xvape.com and xvapeus.com; and
II. Owning or operating any merchandizing or service business where Plaintiff's Trademarks, including marks that are substantially similar thereto and intended to compete with Plaintiff's products, are readily displayed or associated with the goods or services in the normal course of commercial business activities, such as sales, offers for sales, promotion, distribution, or marketing activities; and
(2) Entry of an award of damages as follows:
Monetary Damages against XVAPE LLC in the stipulated amount of $120,000.00; and it is
FURTHER ORDERED that the remaining claims, counterclaims, and Does 1-5 are dismissed with prejudice; and it is
FURTHER ORDERED that this Court shall retain jurisdiction of this action for purposes of enforcing compliance with the Consent Order of Permanent Injunction Against Defendant Tony Lin (ECF No. ____), the Consent Order of Permanent Injunction and Monetary Damages Against Defendant XVAPE LLC (ECF No. ____), the parties' Settlement Agreement, and the terms of this Consent Judgment.
DATED: ___________. FOR THE COURT:
JEFFREUY P. COLWELL, CLERK
By: _____________________
Deputy Clerk
