STIPULATED INJUNCTION AND CONSENT DECREE CASE NO.: CV 08-2136 SI

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JEFFREY M. RATINOFF (SBN 197241)

Email: jeffrey.ratinoff@klgates.com

KARINEH KHACHATOURIAN (SBN 202634)

Email: karineh.khachatourian@klgates.com

K&L GATES LLP

630 Hansen Way

Palo Alto, CA 94304

Telephone: (650) 798-6700

Facsimile: (650) 798-6701

Attorneys for Plaintiff/Counter-Defendant,

CONTINENTAL D.I.A. DIAMOND PRODUCTS, INC.

ALFRED C. FRAWLEY (pro hac vice) (Maine Bar No. 2547)

Email: afrawley@preti.com

WILLIAM D. HAGEDORN (pro hac vice) (SBN 199322)

Email: whagedorn@preti.com

PRETI, FLAHERTY, BELIVEAU & PACHIOS, LLP

One City Center, P.O. Box 9546

Portland, Maine 04112-9546

Telephone: (207) 791-3000

Facscimile: (207) 791-3111

Attorneys for Defendants,

DONG YOUNG DIAMOND INDUSTRIAL CO., LTD,

AND DONGSOO LEE

UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

CONTINENTAL D.I.A. DIAMOND 

PRODUCTS, INC., a California corporation,

Plaintiff,

vs.

DONG YOUNG DIAMOND INDUSTRIAL 

CO., LTD., a South Korean company, 

DONGSOO LEE, an individual, and DOES 1-

10, inclusive,

Defendants.

Case No. CV 08-2136 SI

STIPULATED INJUNCTION AND 

CONSENT DECREE

Judge: The Honorable Susan Illston

AND RELATED COUNTERCLAIMS.

Case 3:08-cv-02136-SI Document 162 Filed 03/02/10 Page 1 of 35
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STIPULATED INJUNCTION AND CONSENT DECREE CASE NO.: CV 08-2136 SI

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WHEREAS, Plaintiff and Counter-Defendant Continental D.I.A. Diamond Products, Inc. 

(“Continental” or “Plaintiff”), Defendants and Counterclaimants Dong Young Diamond Industrial 

Co., Ltd. and Defendant DongSoo Lee (collectively “Defendants”) have resolved the disputed 

between them in this civil action through a confidential settlement agreement, executed on February 

24, 2010 (“the Settlement Agreement”), hereby stipulate and consent pursuant to Fed. R. Civ. P. 

41(a)(1)(ii), 41 (c), and 54, by their undersigned counsel, to the following stipulated permanent 

injunction and consent decree (the “Stipulated Injunction”):

IT IS HEREBY ORDERED, ADJUDGED, AND DECREED as follows:

1. This Court has jurisdiction over the parties to this Stipulated Injunction and the 

subject matter of this Civil Action. 

2. Venue properly lies in this Court to adjudicate the issues set forth in this Civil 

Action.

3. Continental is the owner of all rights throughout the United States of America to the 

trademark and trade name and logo comprising “Continental D.I.A. Diamond Products, Inc.” 

("Trade Name" or "Continental Logo") at common law from and after said date. A true and correct 

copy of the Continental Logo is attached hereto as Exhibit A.

4. Continental has acquired trademark rights to and is the owner of all rights throughout 

the United States of America to the following trademarks: “TERMINATOR”, Reg. No. 2,497,482; 

“TERMINATOR XTREME”, Reg. No. 3,028,708; “TERMINATOR G5”, Reg. No. 3,083,811; and 

“TERMINATOR ZOOM”, Reg. No. 3,581,253 (hereinafter collectively referred to as “the 

TERMINATOR® marks”). True and correct copies of these registration certificates are attached 

hereto as Exhibits B through E.

5. Continental has acquired trademark rights to and is the owner of all rights throughout 

the United States of America of certain distinctive flame pattern trademarks, both at common law 

from and further by virtue of registration with the United States Patent and Trademark Office, 

including Flame Pattern Mark, Reg. No. 3,500,842, (collectively “Terminator Flame Marks”). True 

and correct copies of the Terminator Flame Marks are attached as Exhibits F-I and the registration 

certificate is attached hereto as Exhibit J.

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STIPULATED INJUNCTION AND CONSENT DECREE CASE NO.: CV 08-2136 SI

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6. Continental is the author and owner of the copyrights in the distinctive flame 

patterns, registered as Certificate of Registration Nos. VA0001225714 and VA0001244829. True 

and correct copies of which attached hereto as Exhibits K and L.

7. Continental’s rights referred to herein in Paragraphs 3-6 are good and valid in law 

and equity.

8. Continental owns certain confidential and proprietary information identified in the 

Parties’ Settlement Agreement (“Proprietary Information”) that Defendants were contractually 

bound not to discuss, disclose or use other than as provided by agreement between the parties.

9. Dong Young Diamond Industrial Co., Ltd. and DongSoo Lee, and their parents, 

subsidiaries, affiliates, shareholders, officers, directors, agents, servants, employees, privies, heirs, 

successors, assigns and all persons in active concert or participation with them, shall be and are 

hereby and forever restrained and enjoined as follows:

a. Defendants shall not copy, disseminate, reproduce, affix or use any of 

Continental’s trade name, logos, marks and copyrights identified in Exhibits A through L (the 

“Continental Marks and Copyrights”) in any manner or for any commercial purpose, including but 

not limited in the solicitation of actual or potential customers; 

b. Defendants shall not disseminate or use images of any of the products 

identified in the Settlement Agreement (“Continental Products”) in any manner or for any 

commercial purpose other than for comparative advertising to the extent permitted under 

California’s Unfair Competition Law, Cal. Bus. & Prof Code §§ 17200 et seq., and the Lanham Act, 

15 U.S.C. §§ 1051 et seq.;

c. Defendants shall not discuss, disclose or use any of Continental’s Proprietary 

Information;

d. Defendants shall not manufacture or sell products identical in color, 

appearance and design, or specification (including bond formulae and diamond concentration) to the 

Continental Products and shall not use or infringe upon Continental’s Proprietary Information in the 

manufacturing or sale of Defendants’ products;

e. Defendants shall not make any statements or representations concerning 

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Continental or the Continental Products that would lead actual or potential customers to believe that 

Defendants have access to or the right to use any of Continental’s Proprietary Information;

f. Defendants shall not engage in any conduct or make any representations that 

would lead actual or potential customers to believe that Defendants manufacture any products for 

Continental, that Defendants were or are a source of the Continental Products, and shall not 

otherwise make statements that are likely to cause consumer confusion concerning the source of the 

Continental Products;

g. Defendants shall either destroy or turn over to Continental all documents, 

electronic files and things evidencing, reflecting or containing Continental’s Proprietary 

Information within fifteen (15) court days of entry of this Stipulated Injunction;

h. Defendants shall destroy all molds used to manufacture any Continental 

Products within fifteen (15) court days of entry of this Stipulated Injunction; and

i. Defendants shall destroy all products and materials bearing any of the 

Continental Marks and Copyrights within fifteen (15) court days of entry of this Stipulated 

Injunction.

10. In the event Defendants violate the aforementioned permanent injunction, or in the 

event of a default for non-payment as set forth in the Settlement Agreement that is not cured within 

fifteen (15) court days thereof, Continental shall be entitled to further entry of a final judgment as 

follows:

a. Final judgment shall be entered in favor of Plaintiff and against Defendants 

on Plaintiff’s claims for breaches of contract, copyright infringement (17 U.S.C. § 101 et. seq.), 

trademark infringement (15 U.S.C. § 1114); unfair competition (15 U.S.C. § 1125(a)), and unfair 

business practices (Cal. Bus. & Prof. Code § 17200 et. Seq.); and

b. Final judgment shall be entered in favor of Plaintiff against Defendants in the 

amount of one million three hundred thousand U.S. Dollars ($1.3 million USD), inclusive of all 

damages and costs, and with each party to bear its own attorneys’ fees to this date (subject to any 

allocation of attorneys’ fees for post-judgment activities as law may allow).

11. Continental and Defendants respectfully request that the Court direct the parties to 

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perform each of the obligations set forth in the parties’ Settlement Agreement, and incorporate the 

terms of the Settlement Agreement into the Stipulated Injunction by reference. Continental and 

Defendants further request that the Court expressly retain jurisdiction over them for the purposes of 

enforcing this Stipulated Injunction and the parties’ Settlement Agreement, as well as entry of a 

further judgment enumerated in Paragraph 10, if required. 

12. All remaining claims for relief in this action, including all counterclaims by 

Defendants, are hereby dismissed with prejudice, and with each party to bear its own fees and costs.

IT IS SO STIPULATED.

Dated: February 26, 2010 K&L GATES LLP

/s/ Jeffrey M. Ratinoff

By: JEFFREY M. RATINOFF

Attorneys for Plaintiff/Counter-Defendant,

Continental D.I.A. Diamond Products, Inc.

Dated: February 26, 2010 PRETI FLAHERTY BELIVEAU & PACHIOS, LLP

 /s/ Alfred C. Frawley

By: ALFRED C. FRAWLEY

Attorneys for Defendants/Counterclaimants,

Dong Young Diamond Industrial Co., Ltd., and DongSoo Lee

ATTESTATION PURSUANT TO GENERAL ORDER 45

Concurrence in the filing of this document has been obtained from the other signatory.

Dated: February 26, 2010 K&L GATES LLP

/s/ Jeffrey M. Ratinoff

By: JEFFREY M. RATINOFF

Attorneys for Plaintiff/Counter-Defendant,

Continental D.I.A. Diamond Products, Inc.

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JUDGMENT

NOW, THEREFORE, PURSUANT TO STIPULATION, IT IS SO ORDERED, 

ADJUDGED AND DECREED THAT a permanent injunction be entered in the form identified 

above against Defendants and Counterclaimant Dong Young Diamond Industrial Co., Ltd. and 

Defendant DongSoo Lee (collectively “Defendants”) in favor of Plaintiff and Counter-Defendant 

Continental D.I.A. Diamond Products, Inc. (“Continental” or “Plaintiff”). Subject to the terms 

governing the entry of judgment in favor of Plaintiff against Defendants, all remaining claims for 

relief in the above-captioned action, including all counterclaims by Dong Young Diamond 

Industrial Co., Ltd. and DongSoo Lee, are hereby dismissed with prejudice, with each party to bear 

its own fees and costs. 

Continental and Defendants are hereby directed to perform each of the obligations set forth 

in the parties’ Settlement Agreement executed on February 24, 2010, the terms of which are 

incorporated herein by reference. This Court shall retain personal and exclusive jurisdiction over 

Continental and Defendants for the purpose of enforcing or interpreting any portion of the 

Stipulated Injunction or Settlement Agreement. Said jurisdiction may be invoked by or against any 

party hereto by filing a limited request to re-open Case No. CV 08-2136 SI, which request shall 

specifically identify the provision of the Stipulated Injunction or Settlement Agreement in question 

and the nature of the dispute or disagreement. 

Dated: 

THE HONORABLE SUSAN ILLSTON

UNITED STATES DISTRICT COURT JUDGE

3/1/10

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