Complaint Review: Cerma Technology Inc. - Staceyville Internet

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

NO. C 08-03608 JW

         Motor Works, LLC

          Plaintiff, v.

                    This action was tried on the facts without a jury, a jury having been waived by both parties.

        The Court stated its findings of facts and conclusions of law on the record after the close of the

        evidence, pursuant to Federal Rule of Civil Procedure 52(a), and invited the parties to submit

        briefing with respect to any other matters.  On June 8, 2010, the Court made and filed its

        Supplemental Findings of Facts and Conclusions of Law.  Based upon its findings, judgment is

        entered as follows:

                    The Court declares that Plaintiff Motor Works, LLC a Nevada corporation is the owner of

        the CERMA family of trademarks, including CERMA, CERMA LUBRICATION, CERMAX,

        CERMA ENGINE LUBE, CERMA LUBE, CERMA ADVANCED LUBRICATION

        TECHNOLOGY, CERMA ORGANIC (hereinafter referred to as the CERMA family of

        trademarks).

                    Defendants Safer Technologies, Inc., Cerma Technology, Inc., George Ackerson and their

        respective officers, agents, servants, employees, and attorneys and all those persons in active concert

        or participation with them:

Case5:08-cv-03608-JW   Document109    Filed06/08/10   Page2 of 4

                  (1)        Are permanently enjoined and restrained from using any of the CERMA

                              family of trademarks or any confusingly similar trademark, trade name

                              component or otherwise, to market, advertise or identify Defendants products

                              in the United States;

                  (2)        Shall cease use of any and all materials developed in connection with the

                              advertising, promotion and marketing of Plaintiffs products including but not

                              limited to customer testimonials, photographs, text, test and performance data,

                              including but not limited to:  (a) the website cermatechnology.com, (b) any

                              telephone number including the pneumonic CERMA (or any variation

                                thereof) in the United States;

                    (3)        Shall cease making any representations concerning the content or quality of

                                the products of Plaintiff and its licensees in the United States;

                    (4)        Within 10 days of the date of this Judgment, shall deliver to Plaintiff or declare under

                                oath that they have destroyed all products, literature, advertising and other material

                                bearing CERMA family of trademarks or any confusingly similar trademarks the

                                infringing designation;

                    (5)        Within 10 days of the date of this Judgment, shall deliver to Plaintiff and lodge a

                                copy with the Court a notarized assignment to Plaintiff of:  (a) any and all state or

                                federal registrations or application for registration of the CERMA family of

                                trademarks issued to Defendants or pending from them; (b) documents necessary to

                                transfer ownership and control or the website cermatechnology.com and any other

                                websites delivered by Plaintiff or its representatives to any Defendant; (c) documents

                                necessary to transfer ownership and control to Plaintiffs all telephone numbers with

                                the pneumonic CERMA or any variation thereof held or controlled by Defendants;

                    (6)        Within 10 days of the date of this Judgment, shall deliver to Plaintiff at Plaintiffs

                                principal place of business or such other location as Plaintiff shall designate all

                                                                                        2

Case5:08-cv-03608-JW   Document109    Filed06/08/10   Page3 of 4

                              equipment, including but not limited to bottling machines provided by Plaintiff to

                              Defendants;

                  (7)        Within 10 days of this Judgment shall provide to Plaintiff and lodge a copy with the

                              Court an accounting of any and all profits of Defendants from sales of products using

                              the CERMA family of trademarks.

                  Because no relief was requested with respect to the corporate name, nothing in this Order

      shall be construed to require that Defendants cease doing business under the corporate name Cerma

      Technology, Inc.  Furthermore, nothing in this Judgment shall be construed to prevent Defendants

      from purchasing and selling products from BYK-Chemie GmbH or any of its distributors in the

        United States.

                    Defendants shall take nothing by way of their counterclaim.

                    Based on the Courts finding that the following Defendants are not liable for the actions of

        Defendants Safer Technologies, Inc., and Cerma Technology, Inc., judgment is entered in favor of

        Defendants Mary Stranahan, Nicholas Streit, and Edward Halbach against Plaintiff Motor Works,

        LLC.  Plaintiff shall take nothing from these named Defendants.  As between each of them and

        Plaintiff, each party shall bear his or her own costs, respectively.

                    Plaintiff has not sought attorneys fees as a sanction pursuant to the Courts March 10, 2010

        Order.  Otherwise, each side shall bear their own attorney fees.  Plaintiff shall recover its costs of

        suit.

                    The Clerk shall close this file.

        Dated:  June 8, 2010

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN JOSE DIVISION

NO. C 08-03608 JW

         Motor Works, LLC

          Plaintiff, v.

                    This action was tried on the facts without a jury, a jury having been waived by both parties.

        The Court stated its findings of facts and conclusions of law on the record after the close of the

        evidence, pursuant to Federal Rule of Civil Procedure 52(a), and invited the parties to submit

        briefing with respect to any other matters.  On June 8, 2010, the Court made and filed its

        Supplemental Findings of Facts and Conclusions of Law.  Based upon its findings, judgment is

        entered as follows:

                    The Court declares that Plaintiff Motor Works, LLC a Nevada corporation is the owner of

        the CERMA family of trademarks, including CERMA, CERMA LUBRICATION, CERMAX,

        CERMA ENGINE LUBE, CERMA LUBE, CERMA ADVANCED LUBRICATION

        TECHNOLOGY, CERMA ORGANIC (hereinafter referred to as the CERMA family of

        trademarks).

                    Defendants Safer Technologies, Inc., Cerma Technology, Inc., George Ackerson and their

        respective officers, agents, servants, employees, and attorneys and all those persons in active concert

        or participation with them:

Case5:08-cv-03608-JW   Document109    Filed06/08/10   Page2 of 4

                  (1)        Are permanently enjoined and restrained from using any of the CERMA

                              family of trademarks or any confusingly similar trademark, trade name

                              component or otherwise, to market, advertise or identify Defendants products

                              in the United States;

                  (2)        Shall cease use of any and all materials developed in connection with the

                              advertising, promotion and marketing of Plaintiffs products including but not

                              limited to customer testimonials, photographs, text, test and performance data,

                              including but not limited to:  (a) the website cermatechnology.com, (b) any

                              telephone number including the pneumonic CERMA (or any variation

                                thereof) in the United States;

                    (3)        Shall cease making any representations concerning the content or quality of

                                the products of Plaintiff and its licensees in the United States;

                    (4)        Within 10 days of the date of this Judgment, shall deliver to Plaintiff or declare under

                                oath that they have destroyed all products, literature, advertising and other material

                                bearing CERMA family of trademarks or any confusingly similar trademarks the

                                infringing designation;

                    (5)        Within 10 days of the date of this Judgment, shall deliver to Plaintiff and lodge a

                                copy with the Court a notarized assignment to Plaintiff of:  (a) any and all state or

                                federal registrations or application for registration of the CERMA family of

                                trademarks issued to Defendants or pending from them; (b) documents necessary to

                                transfer ownership and control or the website cermatechnology.com and any other

                                websites delivered by Plaintiff or its representatives to any Defendant; (c) documents

                                necessary to transfer ownership and control to Plaintiffs all telephone numbers with

                                the pneumonic CERMA or any variation thereof held or controlled by Defendants;

                    (6)        Within 10 days of the date of this Judgment, shall deliver to Plaintiff at Plaintiffs

                                principal place of business or such other location as Plaintiff shall designate all

                                                                                        2

Case5:08-cv-03608-JW   Document109    Filed06/08/10   Page3 of 4

                              equipment, including but not limited to bottling machines provided by Plaintiff to

                              Defendants;

                  (7)        Within 10 days of this Judgment shall provide to Plaintiff and lodge a copy with the

                              Court an accounting of any and all profits of Defendants from sales of products using

                              the CERMA family of trademarks.

                  Because no relief was requested with respect to the corporate name, nothing in this Order

      shall be construed to require that Defendants cease doing business under the corporate name Cerma

      Technology, Inc.  Furthermore, nothing in this Judgment shall be construed to prevent Defendants

      from purchasing and selling products from BYK-Chemie GmbH or any of its distributors in the

        United States.

                    Defendants shall take nothing by way of their counterclaim.

                    Based on the Courts finding that the following Defendants are not liable for the actions of

        Defendants Safer Technologies, Inc., and Cerma Technology, Inc., judgment is entered in favor of

        Defendants Mary Stranahan, Nicholas Streit, and Edward Halbach against Plaintiff Motor Works,

        LLC.  Plaintiff shall take nothing from these named Defendants.  As between each of them and

        Plaintiff, each party shall bear his or her own costs, respectively.

                    Plaintiff has not sought attorneys fees as a sanction pursuant to the Courts March 10, 2010

        Order.  Otherwise, each side shall bear their own attorney fees.  Plaintiff shall recover its costs of

        suit.

                    The Clerk shall close this file.

        Dated:  June 8, 2010