Case Information
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8 8 UNITED STATES DISTRICT COURT 9 9 CENTRAL DISTRICT OF CALIFORNIA 10 10 (SOUTHERN DIVISION)
11 11 HYUNDAI MOTOR AMERICA, INC. Case No. 8:19-CV-01413-JVS-DFM
12 12 and HYUNDAI MOTOR COMPANY, 13 13 CONSENT JUDGMENT AND Plaintiffs, PERMANENT INJUNCTION 14 14 vs. 15 15
16 16 YAHALA TRADING COMPANY dba FOURGREEN AUTO PARTS, a
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Michigan Limited Liability Company;
18 18 MOTOR CITY PARTS, an entity of unknown form Defendants and
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Counterclaimant .
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21 21 Pursuant to the Stipulation for Entry of Consent Judgment and Permanent 22 22 Injunction between Plaintiffs Hyundai Motor America, Inc. and Hyundai Motor 23 23 Company (“Plaintiffs” and/or “Hyundai” ), on the one hand, and Defendant Yahala 24 24 Trading Company LLC dba FourGreen AutoParts (“Defendant” or “FourGreen”) on 25 25 the other (the "Stipulation"), the Court hereby ORDERS, ADJUDICATES and 26 26 DECREES that judgment and a permanent injunction shall be and hereby is entered 27 27 28 28
CONSENT JUDGMENT AND PERMANENT INJUNCTION *2
on the Complaint and Counterclaims-in-Reply in the above-referenced matter in favor of the Plaintiffs and against FourGreen and on FourGreen’s Counter-Claims in favor of Hyundai as Counter-Defendant and against Counterclaimant FourGreen as follows: The Court finds that FourGreen is liable to Plaintiffs for Trademark Infringement (15 U.S.C §1114), False Designation of Origin (15 U.S.C. §§ 1125(a)(1)(A) and (a)(1)(B)), Trademark Dilution (15 U.S.C. § 1125(c)), Common- Law Unfair Competition and violation of California law, including California Business & Professions Code §17200 under the claims of the Complaint (Dkt. 1) and the claims of the Counterclaims-in-Reply (Dkt. 71) alleging Infringement (15 U.S.C §1114), False Designation of Origin (15 U.S.C. §§ 1125(a)), False Designation of Origin (15 U.S.C. § 125 (a)(1)(B) , Trademark Dilution (15 U.S.C. §1125(c)), Violation of California Grey Market Statute Cal. Civil Code §1797.8, et seq.), Unfair Competition (California Business & Professions Code §17200), Rescission of 2012 Agreement (California Civil Code §1797.86), Rescission of 2012 (Failure of Consideration) and Breach of Contract, based on FourGreen’s admitted sourcing, importation, distribution, advertisement on the internet, offer for sale, cooperating with and facilitating the importation, offering for sale and sale by third parties and FourGreen’s sale of gray market goods, bearing Hyundai’s trademarks, as alleged in the Complaint (the “Gray Market Hyundai Branded Parts”). FourGreen has acknowledged the validity, ownership, and enforceability
of the Hyundai Marks, as defined in the Complaint (Dkt. 1), and the Court accordingly finds that the Hyundai Marks are valid and enforceable and are owned by Hyundai as set forth in the trademark registrations referenced in the Complaint (Dkt. 1). Based on the Stipulation of the parties, the Court finds that FourGreen’s infringement of the Hyundai Marks, as defined in the Complaint (Dkt. 1) and the Counterclaims in Reply (Dkt. 71), was willful and that this is an exceptional case under 15 U.S.C. § 1117(a). The Court therefore rules that Hyundai is entitled to *3 recovery of its attorneys’ fees and enhanced damages, as authorized under 15 U.S.C. § 1117. The Court has previously granted Hyundai’s motions to dismiss, for
judgment on the pleadings and/or to strike FourGreen’s Counterclaims against Hyundai (Dkt. 33, Dkt. 59, Dkt. 69). The Court hereby enters judgment in Hyundai’s favor on FourGreen’s Counterclaims (Dkt. 33, Dkt. 59, Dkt 69). FourGreen has acknowledged that the Plaintiffs do not have an adequate
remedy at law and is entitled to the immediate entry of a permanent injunction. PERMANENT INJUNCTION . Upon their receipt of actual notice of this order by personal service or otherwise, Yahala Trading Company LLC dba FourGreen Auto Parts, its predecessors, successors, related entities, including each of their owner(s) or shareholders (including, without limitation, Ali Khalife), members, managers, officers, directors, servants, employees, independent contractors, attorneys, agents, representatives, suppliers, and distributors, and to the extent they are within FourGreen’s or Mr. Khalife’s control, all other persons or entities acting in concert or participation with FourGreen, are hereby permanently restrained and enjoined from:
a. misrepresenting in any way the source of origin or the nature or quality of Defendant’s Gray Market Hyundai Branded Parts, i.e. non-genuine Hyundai and Genesis automobile replacement service or repair parts and accessories, defined as Hyundai- or Genesis- branded parts that are not sourced through Hyundai Motor America and its Authorized Chain of Distribution for the United States as defined in the Complaint, which includes U.S. Hyundai and Genesis dealers, as genuine, original, OEM, OE, factory or manufacturer’s parts, or in any way mispresenting the warranties that apply to or cover, in whole or in part, Defendant’s Gray Market Hyundai Branded Parts;
*4 b. making, having made, manufacturing, importing, exporting, sourcing, using, distributing, shipping, licensing, offering for sale, selling, developing, displaying, delivering, advertising on the internet or in any other medium, cooperating with or facilitating the sales of Gray Market Hyundai Branded Parts by third parties and/or otherwise marketing, disposing, transferring to any third party, and/or selling any Gray Market Hyundai Branded Parts; c. cooperating with and/or assisting any third party, individual, or entity in making, having made, manufacturing, importing, exporting, sourcing, using, distributing, shipping, licensing, offering for sale, selling, developing, displaying, delivering, advertising on the internet or in any other medium and/or otherwise marketing, disposing and/or selling any Gray Market Hyundai Branded Parts;
d. engaging in any conduct that infringes the Hyundai Marks or Genesis trademarks, including without limitation, U.S. Registration No. 1,104,727; U.S. Registration No. 3,991,863; U.S. Registration No. 4,065,195; and U.S. Registration No. 1,569,538, U.S. Registration No. 3531628, U.S. Reg. No. 5238649, or colorable imitation thereof. This Judgment shall be deemed to have been served upon FourGreen at
the time of its execution and entry by the Court. The Court finds there is no just reason for delay in entering this
Permanent Injunction, and, pursuant to Rule 54(a) of the Federal Rules of Civil Procedure, the Court directs immediate entry of this Permanent Injunction against FourGreen. DAMAGES: Pursuant to the Stipulation, Plaintiffs are entitled to recover
*5 1 from FourGreen the sum of THREE MILLION DOLLARS ($3,000,000), which 2 represents Plaintiffs’ monetary damages, statutory damages, enhanced damages for 3 Defendant’s willful conduct, costs, and attorneys’ fees, which this Court grants under 4 15 U.S.C. § 1117.
5 NO APPEALS AND CONTINUING JURISDICTION . No appeals 6 shall be taken from this Consent Judgment and Permanent Injunction, and the parties 7 waive all rights to appeal. This Court expressly retains jurisdiction over this matter to 8 enforce any violation of the terms of this Consent Judgment and Permanent Injunction 9 and any related agreement between the parties regarding the resolution of this dispute, 10 including but not limited to the execution and/or enforcement of the Judgment and 11 Permanent Injunction.
12 IT IS SO ORDERED, ADJUDGED AND DECREED this 17th day of July 13
2020.
Dated: July 17, 2020 _______________________________
Hon. James V. Selna UNITED STATES DISTRICT JUDGE