Urban Sophistication Ltd v. van Elst ( 2022 )

1 Jay Woollacott (Cal. Bar. #83032) Woollacott PLC 2 10850 Wilshire Blvd., Suite 825 3 Los Angeles, California 90024 4 T: (310) 481-2222 / F: (310) 481-9801 E: jw@woollacottPLC.com 5 6 Mari-Elise Paul (admitted pro hac vice) 7 Stites & Harbison PLLC 400 W. Market St., Suite 1800 8 Louisville, Kentucky 40202 9 T: (703) 837-3932 10 E: mpaul@stites.com 11 Attorneys for Urban Sophistication Ltd. 12 13 UNITED STATES DISTRICT COURT 14 EASTERN DISTRICT OF CALIFORNIA 15 16 Urban Sophistication Ltd., Case No. 2:22-cv-00093-KJM-JDP 17 Plaintiff, 18 FINDINGS AND 19 vs. ORDER REGARDING JUDGMENT 20 BY CONSENT DECREE AS TO Ajmall Gulham DEFENDANT AJMALL GULHAM 21 D/B/A The Puffer Case, Jordi van 22 Elst, and DOES 1-17, 23 Defendants. 24 25 26 27 28 1 FINDINGS AND ORDER REGARDING JUDGMENT 2 BY CONSENT DECREE 3 4 The Court has read, considered, and accepts the Stipulation for Settlement 5 | Including Judgment by Consent Decree as to Defendant Ajmall Gulham (“Stip- 6 | ulation’) made by and between plaintiff Urban Sophistication Ltd. (“Urban So- 7 phistication”) and defendant Ajmall Gulham (“Gulham’’). 8 Pursuant to the Stipulation, including admissions made by Gulham in the 9 | Stipulation, the Court finds as between Urban Sophistication and Gulham: 10 1. Urban Sophistication is the owner of U.S. Registration No. 11 | 6,342,246 for the mark URBAN SOPHISTICATION® used in connection with a 12 | variety of goods and services, including but not limited to cell phone cases and 13 | protective cases for cell phones. 14 2. Urban Sophistication has since 2019 been selling a polyurethane cell 15 | phone case product that resembles a quilted down puffer jacket (“the Puffer 16 | Case”). 17 3. The Puffer Case displays and advertises Urban Sophistication’s 18 mark URBAN SOPHISTICATION®. 19 4. The Puffer Case including its unique shape constitutes Urban So- 20 | phistication’s protected trade dress (“the Trade Dress’’). 21 5. The Puffer Case also displays and advertises Urban Sophistication’s 22 | trademark, THE PUFFER CASE, which has become exclusively associated with 23 | Urban Sophistication. The Puffer Case also displays and advertises Urban So- phistication’s Puffer Case logo, which is depicted immediately below: 25 26 THE PUELER ES 27 CASE 28 FINDINGS AND ORDER REGARDING JUDGMENT BY CONSENT DECREE AQ TH TYBREBENTIANT ATNAATT CSTIT WAM. 1 1 | THE PUFFER CASE wordmark and The Puffer Case logo are referred to collec- 2 | tively as “The Puffer Case Marks”. 3 6. An example of The Puffer Case including the Trade Dress and show- 4 | ing The Puffer Case Marks appears below: 5 6 © © rs 8 9 10 11 12 13 14 15 16 7. Gulham engaged in wrongful acts in violation of Urban Sophistica- 7 tion’s rights regarding Urban Sophistication’s mark URBAN SOPHISTICA- 12 TION®, The Puffer Case, the Trade Dress, and the Puffer Case Marks: Gulham 19 admits that: (1) Gulham filed a trademark application (U.S. Serial Number 90/646,761) for the mark THE PUFFER CASE in connection with cell phone cases in International Class 009, despite having no lawful or legitimate purpose for seeking such registration; (2) Gulham registered the domain names 73 www.thepuffercase.com and https://thepuffercase.co through the service IONOS, despite having no lawful or legitimate purpose for seeking such registration, and 95 despite such domain names being confusingly similar to Urban Sophistication’s intellectual property and likely to result in consumer confusion; (3) Gulham ac- quired the Instagram handle @Wthepuffercase; (4) Gulham designed, sourced, and 28 FINDINGS AND ORDER REGARDING JUDGMENT BY CONSENT DECREE AQ TH DNBREBNTANT ATNAATT (CSTIT □□□ □□ 1 acquired counterfeit products incorporating and infringing on Urban Sophistica- 2 tion’s distinctive trade dress and THE PUFFER CASE Marks, including cell 3 phone cases and packaging for cell phone cases, in preparation for and with the 4 intent to advertise and engage in commerce to sell such products to consumers; 5 (5) Gulham committed all such acts described above without any claim of right 6 by agreement with Urban Sophistication, applicable law, or otherwise; (6) Gul- 7 ham committed all such acts described above with the intent to engage in com- 8 merce for the advertising and sale of counterfeit products in competition with 9 Urban Sophistication’ lawful commerce, seeking to profit from the goodwill in 10 Urban Sophistication’s lawful commerce in and using THE PUFFER CASE 11 Marks, the URBAN SOPHISTICATION® mark, and Urban Sophistication’s 12 trade dress including cell phone cases; (7) Gulham’s acts were likely to cause 13 consumer confusion and likely to lead to impairment of the distinctiveness of 14 Urban Sophistication’s THE PUFFER CASE Marks, the URBAN SOPHISTI- 15 CATION® mark, and Urban Sophistication’s trade dress including cell phone 16 cases; and (8) Gulham would have continued with such unlawful conduct but for 17 pendency of this action. 18 8. The First Amended Complaint is now the operative pleading. Urban 19 Sophistication’s claims for relief against Gulham in the First Amended Com- 20 plaint are false designation of origin in violation of 15 U.S.C. § 1125(a) (Count 21 Three), Trade Dress Infringement in violation of 15 U.S.C. § 1125 (Count Seven), 22 cybersquatting in violation of 15 U.S.C. § 1125(d) (Count Nine), and statutory 23 unfair competition in violation of Cal. Business & Professions Code § 17200 24 (Count Twelve). Gulham’s acts, per the Stipulation and the findings above, sup- 25 port his liability to Urban Sophistication on those counts. 26 9. Based on Urban Sophistication’s intellectual property rights, Gul- 27 ham’s acts, and the Stipulation, all as per the court’s findings above, the injunc- 28 tive relief ordered below is fair, adequate, and reasonable, and consistent with the 1 public interest, including without limitation based on the findings above and for 2 the purpose of finality of negotiated settlements in commercial litigation. (United 3 States v. Lexington-Fayette Urban County Gov., 591 F.3d 484, 489 (6th Cir. 4 2010); Arizona v. City of Tucson, 761 F.3d 1005, 1011-1012 (9th Cir. 2014). There 5 is no reason for delay in entry of judgment pursuant to the Stipulation. 6 10. This judgment resolves only those claims for relief in the action 7 made against Gulham, specifically, counts three, seven, nine, and twelve of the 8 First Amended Complaint, referenced above. Nothing in this judgment shall pre- 9 vent Urban Sophistication from continuing this action on any and all claims for 10 relief against separate parties other than claims for relief against Gulham. 11 11. To the extent not included in the judgment, below, the Court ex- 12 pressly retains ancillary jurisdiction to enforce the Stipulation. (Kokkonen v. 13 Guardian Life Ins. Co., 511 U.S. 375 (1994).) 14 IT IS THEREFORE ORDERED, ADJUDGED, AND DECREED: 15 1. The Court accepts the Stipulation as between plaintiff Urban So- 16 phistication Ltd., and defendant Ajmall Gulham; and 17 2. The clerk is directed to enter Judgment in favor of plaintiff Urban 18 Sophistication Ltd., and against defendant Ajmall Gulham, pursuant to the Stip- 19 ulation and this Order, as follows: “Ajmall Gulham, and his agents, servants, em- 20 ployees and all those in active concert or participation with him, ARE HEREBY 21 PERMANENTLY RESTRAINED AND ENJOINED from, directly or indirectly: 22 (a) advertising for sale, distributing, importing, manufacturing, marketing, sell- 23 ing, or receiving the proceeds from sales of any product and any product packag- 24 ing bearing Urban Sophistication’s mark URBAN SOPHISTICATION® or any 25 mark confusingly similar, any product and any product packaging bearing Urban 26 Sophistication’s mark THE PUFFER CASE or any mark confusingly similar, any 27 product and any product packaging bearing Urban Sophistication’s The Puffer 28 1 | Case logo or any logo or mark confusingly similar, and any product and any prod- 2 | uct packaging bearing Urban Sophistication’s trade dress including without lim- 3 itation the unique shape of The Puffer Case or any trade dress confusingly similar; 4 | (b) acquiring, registering, or seeking to acquire or register any domain name con- 5 | taining or using the mark URBAN SOPHISTICATION® or the mark “The Puffer 6 | Case” or using the words of phrases “Urban Sophistication” or “The Puffer 7 Case”; (c) using in commerce or applying for registration of the mark URBAN 8 | SOPHISTICATION, the mark “The Puffer Case” or any confusingly similar 9 mark; and (d) aiding or abetting any person or entity in engaging or attempting 10 | to engage in acts prohibited by (a), (b), or (c) above.” 11 12 | DATED: August 3, 2022 13 14 ( ti / ¢ Q_/ 15 CHIEF NT] ED STATES DISTRICT JUDGE 16 17 | Approval by the Parties to the Stipulation: 18 19 July 18, 2022 URBAN SOPHISTICATION LTD. 20 Authorized Signatory 23 July 18, 2022 24 □ 95 Ajmall Gulham 26 4 Approval by Counsel as to Form: 28 FINDINGS AND ORDER REGARDING JUDGMENT BY CONSENT DECREE AQ TO TIBREBENTIANT ATNAATT CSTIT WAM .« 1 July 18, 2022 2 /s/ Jay Woollacott ________________________________ 3 Jay Woollacott 4 California SBN 83032 5 Woollacott PLC 10850 Wilshire Boulevard, Suite 825 6 Los Angeles, California 90024 7 (310) 481-2222 jw@woollacottPLC.com 8 Attorneys for Urban Sophistication Ltd. 9 10 July 18, 2022 /s/ Mari-Elise Paul 11 ________________________________ 12 Mari-Elise Paul (admitted pro hac vice) 13 Stites & Harbison PLLC 400 W. Market St., Suite 1800 14 Louisville, Kentucky 40202 15 (703) 837-3932 mpaul@stites.com 16 Attorneys for Urban Sophistication Ltd. 17 18 July 18, 2022 19 /s/ Brian Russ 20 ________________________________ Brian Russ 21 California SBN 318281 22 Brian Russ Law, Inc. 2110 K Street 23 Sacramento, California 95816 24 (916) 750-5155 25 brian@brianrusslaw.com Attorneys for Ajmall Gulham 26 27 28