SATA GmbH & Co. KG v. Central Purchasing, LLC

I. Background

21 Plaintiff SATA GmbH & Co. KG (“SATA”) manufactures, among 22 other things, paint spray guns. (Complaint ¶ 8.) SATA also owns a 23 design patent, U.S. D552,213 (“the Patent”) in an ornamental design 24 for a paint spray gun. (Id. ¶ 25.) Harbor Freight also sells 25 paint spray guns. (Id. ¶¶ 14, 16.) 26 In 1999, SATA brought suit against Harbor Freight, alleging 27 trade dress infringement and associated claims related to Harbor 28 Freight’s sale of paint spray guns. (Id. ¶ 14.) In 2000, the 1 parties settled all claims and entered into a Settlement Agreement 2 (“the Agreement”). (Id.) Under the Agreement, Harbor Freight 3 agreed “that it shall make no reference to SATA, SATA trademarks, 4 or SATA products, in any advertisements, product descriptions, or 5 any other materials generated in connections with the sale or 6 promotion of [Harbor Freight] paint spray guns or parts therefore.” 7 (Compl., Ex. A ¶ 14 (“Paragraph 14”).) Nevertheless, SATA alleges, 8 Harbor Freight’s advertisements mention SATA by name, in some cases 9 alongside images of SATA paint spray guns and in comparison to 10 Harbor Freight products. (Compl. ¶ 16, Ex. B.) SATA…