United States District Court, D. Minnesota
FINDINGS OF FACT, CONCLUSIONS OF LAW AND ORDER FOR
DEFAULT JUDGMENT AND PERMANENT INJUNCTION
RICHARD NELSON UNITED STATES DISTRICT JUDGE
above-entitled matter came on before the Court upon Plaintiff
Hydreon Corporation's ("Hydreon") motion for
entry of default judgment and permanent injunction against
Defendant JC Brothers, Inc. ("Defendant") and
request for an award of attorneys' fees and costs under
Rule 55 of the Federal Rules of Civil Procedure (ECF No. 15).
The Court, having carefully reviewed Hydreon's motion and
all of the files, pleadings and proceedings herein, makes the
following findings of fact, conclusions of law and order for
STATEMENT OF FACTS AND PROCEDURAL
is a patent infringement, trademark counterfeiting and
infringement, unfair competition and false designation of
origin action arising under the laws of the United States,
including the Patent Act, 35 U.S.C. §§271 and
281-285 and the Lanham Act, 15 U.S.C §§ 1114, 1116
Hydreon is a Minnesota corporation that designs, manufactures
and markets various products, including patented and
trademarked products sold under the brand and registered
this action was commenced, Defendant JC Brothers, Inc.
(“JCB”) was a California corporation with its
registered offices located at 7220 Rosemead Boulevard, Suite
202-7, San Gabriel, CA 91775-1383. JCB purports to be the
owner of retail electronics sold under the brand name
“Jebsens.” According to the California Secretary
of State's website, as of October 6, 2016, JCB's
status is “FTB Suspended” and its address had
changed to 20895 Currier Rd, Unit B, Walnut California 91789.
(ECF No. 18, Perry Decl., ¶3 and ECF No. 18-1, Perry
Decl. Ex. 1.) The agent for service of process is identified
as Haiming Zhang. (Id.) Jebsens' website
indicates the company's “head office” is in
China and still shows the original address as its United
States offices. (Id.)
Hydreon is the assignee and registered owner of the following
a. No. 7, 365, 649 titled “Security Device and Methods
for Security Device Operation” issued on April 29, 2008
(the “‘649 Patent”);
b. 7, 755, 470 titled “Security Television
Simulator” issued on July 13, 2010 (the
“‘470 Patent”); and
c. 7, 719, 435 titled “Security Television Simulator
with Realistic Emulation of Television Output” issued
on May 18, 2010 (the “‘435 Patent”).
‘649, ‘470 and ‘435 Patents are
collectively referred to as “the Patents” herein.
Hydreon is also the owner of U.S. Registered Trademark No.
3519470 for the word “FakeTV.” FakeTV® has
been registered since October 21, 2008.
Hydreon designs, manufactures, markets, advertises,
distributes, and sells in interstate commerce various types
of products, including, FakeTV® products. FakeTV®
products are security/burglar deterrent devices that are
designed to make it appear that people are home watching
television when the home is not occupied. The products are
small energy efficient devices that project and emit light
patterns which simulate real television broadcasts. An
example of a Hydreon FakeTV® is depicted below:
FakeTV® products have and continue to enjoy significant
commercial success. Hydreon primarily sells the products on
Amazon.com. Beginning at least as early as 2008, Hydreon and
its predecessors-in-interest adopted and began using the
FakeTV trademark. Since that time, Hydreon and its
predecessors-in-interest have continuously used the FakeTV
trademark. FakeTV has been used in interstate commerce in the
United States for the purpose of identifying Hydreon's
products and for distinguishing goods from the goods of
registration of the FakeTV Mark on the Principal Register
with the United States Patent and Trademark Office
constitutes prima facie evidence of its validity and is
conclusive evidence of Hydreon's exclusive rights to use
the FakeTV Mark in commerce in connection with the goods
named therein, and commercially related goods. 15 U.S.C.
§ 1057. The registration of the FakeTV Mark also
constitutes constructive notice of Hydreon's ownership
and exclusive rights in the FakeTV Mark, 15 U.S.C. §
Hydreon's products bearing the FakeTV Mark are sold
throughout the United States. In accordance with 15 U.S.C.
§ 1111, the FakeTV Mark is, and has been, displayed on
Hydreon's products or on the packaging, marketing, or
advertising materials, for such products, and is and was
accompanied by the notation “®” to provide
notice that the FakeTV Mark is federally registered and
Hydreon has advertised and promoted its products sold under
the FakeTV Mark throughout the United States by means of
various media, including, but not limited to, the Internet,
and other traditional sales channels.
a consequence of Hydreon's continuous use of the FakeTV
Mark throughout the United States, and due to the significant
investment of time, money, and efforts, widespread sales, and
the high quality of Hydreon's products sold in connection
with the FakeTV Mark, the FakeTV Mark has acquired value and
are well-known to the consuming public and trade as
identifying and distinguishing the source of Hydreon's
Hydreon also takes significant steps to protect its valuable
intellectual property rights.
Hydreon monitors internet marketplace sites such as
Amazon.com and eBay.com for suspected sellers of counterfeit
Hydreon has purchased sample Jebsens and other brands of
FakeTV products from Amazon.com and analyzed to determine
their authenticity and found that the devices infringe its
patents and trademark as discussed below.
Hydreon investigates suspected manufacturers, distributors,
and retailers of unauthorized counterfeit FakeTV products and
then takes steps to halt such unauthorized sales, as
Defendant traffics in counterfeit FakeTVs which infringe one
or more claims of all of the Patents by making, using,
selling, offering to sell, and/or importing the systems
and/or methods covered by one or more claims of the Patents.
Defendant has repeatedly utilized Hydreon's FakeTV Mark
or confusingly similar iterations of the Mark in connection
with the advertising and sale of its counterfeit products
despite notification from Amazon.com and eBay and Hydreon
that Defendant's FakeTV products infringe Hydreon's
Patents and trademark.
Defendant, without authorization or license from Hydreon,
knowingly and willfully used or reproduced Hydreon's
FakeTV Mark in connection with its distributing, importing,
shipping, advertising, offering for sale, selling, and
facilitating the sale of Counterfeit Products in commerce.
addition to infringing the Patents and the FakeTV® Mark,
Defendant has gone so far as to sell a near exact replica of
Hydreon's product as depicted in the table below:
Defendant made substantial sales of Counterfeit Products in
the United States through Amazon and eBay's online stores
and offers for sale, sells, distributes, and facilitates the
sale of Counterfeit Products via eBay.com, Amazon.com, and
other websites as well.
Hydreon became aware of Defendant selling products bearing
the FakeTV® Mark in 2012. Hydreon has periodically
purchased sample products from Amazon.com. Hydreon confirmed
that the samples are Counterfeit Products.
Defendant purchased the Counterfeit Products from a source or
sources that are not authorized or licensed by Hydreon to
manufacture, offer for sale, or sell the products that
infringe Hydreon's patents or bear the FakeTV Mark.
Counterfeit Products are not genuine FakeTV products. Hydreon
did not manufacture, inspect, or package the Counterfeit
Products, prior to the unauthorized sale and did not approve
the Counterfeit Products for sale or distribution.
Defendant is not authorized by Hydreon to manufacture,
advertise, distribute, export, import, ship, sell, offer to
sell, or facilitate the sale of any products bearing
Hydreon's FakeTV Mark that are not authentic products.
Defendant's infringement of the Patents and use of
Hydreon's FakeTV Mark in connection with the advertising,
marketing, distribution, import, export, shipping, offering
for sale, sale, and facilitation of the sale of Counterfeit
Products caused, and in the future are likely to cause,
confusion among potential customers who will be deceived into
believing that Defendant's Counterfeit Products are
authentic products, thus harming the consuming public and
irreparably harming Hydreon's valuable reputation and
aforesaid conduct is causing Hydreon irreparable harm, for