Free Motion for Preliminary Injunction - District Court of California - California

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IN THE UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION ROBERT TRENT JONES II, INC. and ROBERT TRENT JONES LICENSING GROUP, LLC Plaintiffs, v. GFSI, INC. d/b/a GEAR FOR SPORTS, INC. Defendants. Plaintiffs, Robert Trent Jones II, Inc. and Robert Trent Jones Licensing Group, LLC (hereinafter "Plaintiffs"), duly commenced this action by filing the Complaint herein against defendant, GFSI, INC. d/b/a GEAR FOR SPORTS, INC. (hereinafter "Defendant") alleging breach of contract, willful federal trademark infringement, unfair competition and dilution. Plaintiffs filed a Motion for Preliminary Injunction and supporting memorandum and declarations. Defendants filed opposition to plaintiff's motion. Having considered the Complaint, the aforementioned motion and supporting and opposing memoranda and declarations, it is hereby ORDERED, ADJUDGED AND DECREED that: 1. This Court has jurisdiction over the parties and the subject matter as set forth in Magistrate Judge Elizabeth D. Laporte

Case No. 07-CV-04913-EDL [Proposed] ORDER FOR PRELIMINARY INJUNCTION

the Complaint in this action. 2. The evidence presented in support of Plaintiffs' Motion establishes that on May 1,

2005, Plaintiff Robert Trent Jones II, Inc. and Defendant entered into an Intellectual Property License Agreement ("License Agreement") which licenses to Defendant on an exclusive basis

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specific intellectual property ("Licensed Rights") for use in connection with golf apparel ("Licensed Products"). The Licensed Rights include the following: United States Trademark Registrations
Mark Reg. No. 1,899,912 Status Incontestable Reg. Date 06/13/95 Goods Men's accessories, namely jackets, shirts, pants, shorts, sweaters Clothing, namely shirts, sweaters, sweater vests, trousers, shorts, jackets, headwear Pants, shorts, sweaters, jackets, sweatshirts, vests, long-sleeved and shortsleeved golf shirts

5 ROBERT TRENT JONES 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 3,128,905 Registered 08/15/06 3,205,541 Registered 02/06/07

Rights of Publicity The Robert Trent Jones, Jr. Name The Robert Trent Jones, Jr. Signature Likeness, Image and Persona of Robert Trent Jones, Jr. 3. The evidence presented in support of Plaintiffs' Motion establishes that the

License Agreement prohibits Defendant from selling Licensed Products to discount stores, with the exception that Defendant may sell damaged, defective, seconds, or otherwise substandard Licensed Products to Secondary Markets, a specific type of discount store, provided that Defendant removes all Licensed Rights identification from the apparel prior to sales, display or distribution. 4. The evidence presented in support of Plaintiffs' Motion establishes that without

Plaintiffs' authorization, Defendant has sold, and is selling, Licensed Products to discount stores, including Secondary Markets, with Licensed Rights still intact.

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5.

The evidence presented in support of Plaintiffs' Motion establishes that without

Plaintiffs' authorization, Defendant also has sold, and is selling, damaged, defective, seconds, or otherwise substandard Licensed Products to Secondary Markets with the Licensed Rights still intact. 6. This Court finds that Plaintiffs have shown a probable success on the merits and

the possibility of irreparable injury if Defendant is not enjoined from sales of Licensed Products
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to discount stores. Specifically, Defendant's unauthorized use of the Licensed Rights stemming from Defendant's breach of the License Agreement is likely to cause confusion, or to cause mistake, or to deceive, and constitutes, among other things: federal trademark infringement in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1); federal unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); federal trademark dilution in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c); state unfair competition in violation of the California Business and Professions Code, § 17200, et seq., and the common laws of California; and state trademark dilution in violation of the California Business and Professions Code, § 14330, et seq., and the common laws of California. 7. Defendant, any business entity owned or controlled by Defendant, and their

officers, directors, shareholders, agents, servants, employees, subcontractors, partners, licensees, subsidiaries, affiliates and related companies or entities, representatives, attorneys and other persons or entities acting in concert or participation with any of them, are enjoined and restrained from: a. selling or distributing any Licensed Product other than damaged, defective, seconds or product that is otherwise substandard, to any discount store (encompassing any retail seller that generally offers, sells of advertises

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product at prices reduced or discounted from those prices generally offered, advertised or sold at by full-price retail sellers), regardless of whether such discount store is a Secondary Market, as that term is defined in the License Agreement; b. selling, displaying or distributing any damaged, defective, seconds, or otherwise substandard product to any reseller, with the sole exception that

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such damaged, defective, seconds or otherwise substandard product may be sold or distributed to Secondary Markets, as that term is defined under the License Agreement, so long as the Licensed Rights are first (that is, prior to sale to such Secondary Markets) removed from said product. until this action is resolved or final judgment is entered by the Court. 8. Within three (3) days of this Order, Defendant shall provide a copy of this order to

all discount stores to which Defendant has sold Licensed Products and issue a "stop sale request," requesting that the discount stores comply with this order and cease all sales of Licensed Products until this action is resolved or final judgment is entered by the Court. 9. Defendant acknowledges that a violation of any provision of this Preliminary

Injunction will be a willful and knowing violation of Plaintiffs' rights causing serious and substantial, irreparable damage to Plaintiffs, and that it will be difficult, if not impossible, to determine the amount and extent of such damage. If Defendant violates any term or condition of this Preliminary Injunction, Plaintiffs shall immediately be entitled to a judgment finding that Defendant is in contempt, to an award of reasonable damages and attorney's fees, and to such further relief the Court deems appropriate.

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10.

This Court shall retain jurisdiction over the parties and the subject matter of this

action for purposes of enforcing this Preliminary Injunction entered herein.

Date:

Entered: Judge _________________________ United States District Court Northern District of California San Francisco Division

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