Forever 21, Inc. v. Hi Fashion, Inc. et al

Filing 12

PERMANENT INJUNCTION filed by Judge George H Wu against defendant Hi Fashion, Inc. (MD JS-6. Case Terminated) (pj) (Additional attachment(s) added on 6/23/2011: # 1 copy of order) (pj).

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1 2 3 4 5 6 7 8 9 10 11 JOHNSON & PHAM, LLP Christopher D. Johnson, SBN: 222698 E-mail: cjohnson@johnsonpham.com Christopher Q. Pham, SBN: 206697 E-mail: cpham@johnsonpham.com Marcus F. Chaney, SBN: 245227 E-mail: mchaney@johnsonpham.com Ani Sakalian, SBN: 274846 E-mail: asakalian@johnsonpham.com 6355 Topanga Canyon Boulevard, Suite 115 Woodland Hills, California 91367 Telephone: (818) 888-7540 Facsimile: (818) 888-7544 J S -6 Attorneys for Plaintiff FOREVER 21, INC. 12 13 14 UNITED STATES DISTRICT COURT 15 CENTRAL DISTRICT OF CALIFORNIA 16 17 18 FOREVER 21, INC., a California Corporation, 19 20 21 22 23 24 Case No.: CV11-01931 GW (FMOx) PERMANENT INJUNCTION ORDER Plaintiff, Complaint Filed: March 7, 2011 vs. HI FASHION, INC., a California Corporation, et al., Defendants. 25 26 27 28 -1PERMANENT INJUNCTION ORDER 1 Having reviewed the Stipulation to Issuance of Permanent Injunction entered 2 into between Plaintiff Forever 21, Inc. (“Forever 21”) and Defendant Hi Fashion, 3 Inc. (“Hi Fashion”), and good cause appearing, the Court hereby finds as follows: 4 1. WHEREAS Forever 21 is the owner of numerous trademarks which it 5 uses in connection with the manufacture, distribution, sale and promotion of a wide 6 range of products, including clothing and accessories. Forever 21 owns all rights in 7 and to a family of Forever 21 federally registered trademarks which include the 8 following, among others (collectively, “FOREVER 21 Registered Marks”): 9 Trademark Reg. No. Reg. Date 10 FOREVER 21 2,583,457 June 18, 2002 11 FOREVER 21 2,836,546 April 27, 2004 12 FOREVER 21 2,913,132 December 21, 2004 13 FOREVER 21 2,067,637 June 3, 1997 14 XXI 2,873,174 August 17, 2004 15 XXI 2,914,810 December 28, 2004 16 XXI 2,842,184 May 18, 2004 17 HERITAGE 1981 3,447,097 June 10, 2008 18 FORLOVE21 3,140,565 September 5, 2006 19 FORLOVE21 3,140,561 September 5, 2006 20 LOVE & BEAUTY 3,794,963 May 25, 2010 21 LOVE 21 3,775,903 April 13, 2010 22 TWELVE BY TWELVE 3,518,050 October 14, 2008 23 FOREVER STATIONERY 3,689,946 September 29, 2009 24 FOREVER XXI 2,889,536 September 28, 2004 25 FOREVER XXI 2,940,346 April 12, 2005 26 FASHION 21 2,848,238 June 1, 2004 27 2. 28 WHEREAS Forever 21 also owns all rights in and to a family of Forever 21 common law trademarks which include the following (collectively, -2PERMANENT INJUNCTION ORDER 1 “FOREVER 21 Common Law Marks”):1 2 Trademark 3 TWENTY ONE and Bird Design 4 XXI and Bird Design 5 21 6 I ♥ H81 7 F21 8 HTG81 9 FAITH 21 10 I LOVE H81 11 2.1 DENIM 12 LIFE IN PROGRESS 13 JOY 21 14 PEACE 21 15 21 MEN 16 TWENTYONE MEN 17 SOPHIE & ME 18 CEREAL 19 3. WHEREAS on March 7, 2011, Forever 21 filed its Complaint in this 20 Civil Action No. CV11-01931 GW (FMOx) against Hi Fashion, alleging causes of 21 action under §32(1) of the Lanham Act (15 U.S.C. §1114(1)) for infringement of 22 federally registered trademarks, under §43(c) of the Lanham Act (15 U.S.C. 23 1125(c)) and California Business & Professions Code § 14247 for dilution of 24 federally registered and common law trademarks, under §43(a) of the Lanham Act 25 (15 U.S.C. §1125(a)) for unfair competition, and under the statutory and common 26 law of the State of California to enjoin Hi Fashion’s current and prospective 27 28 1 All of Forever 21’sw trademarks including the FOREVER 21 Registered Marks and the FOREVER 21 Common Law Marks are referred to collectively herein as “the FOREVER 21 Marks.” -3PERMANENT INJUNCTION ORDER 1 infringement and dilution of the FOREVER 21 Marks and unfair competition, and 2 to recover monetary damages resulting from those actions. 3 4 5 4. WHEREAS Forever 21 served the Complaint on Hi Fashion on March 25, 2011. 5. WHEREAS after reviewing the papers and evidentiary support 6 provided to Hi Fashion throughout good faith settlement negotiations, Hi Fashion 7 has agreed to stipulate to the issuance of a permanent injunction with respect to 8 matters referenced in this Stipulation. 9 6. WHEREAS Hi Fashion admits that, without Forever 21’s knowledge 10 or consent and based on information provided to Hi Fashion by Forever 21, it 11 purchased and sold in interstate commerce counterfeit and non-genuine clothing 12 products which displayed, infringed, and diluted the FOREVER 21 Marks. 13 7. WHEREAS the parties expressly waive any findings of fact, 14 conclusions of law, statement of decision and any right to notice or right to be 15 heard in any matter in connection with or arising out of the filing, rendition or 16 entry of the Permanent Injunction Order on this Stipulation for Entry of Permanent 17 Injunction; provided however, that no such waiver shall be deemed to exist insofar 18 as damages are concerned, it being agreed that Hi Fashion may offer proof in 19 defense of Forever 21’s claims for damages.8. 20 that the permanent injunction shall remain in full force and effect through the final 21 disposition of this action and that any right to set aside the permanent injunction, 22 appeal therefrom or to otherwise attack its validity is hereby waived. WHEREAS the parties agree 23 NOW THEREFORE, IT IS HEREBY ORDERED THAT Hi Fashion and its 24 agents, employees, officers, directors, owners, attorneys, representatives, successor 25 companies, related companies, and all persona acting in concert or participation 26 with it, and each of them, are, through the final disposition of this action, 27 PERMANENT ENJOINED from: 28 a. The import, export, making, manufacture, reproduction, -4PERMANENT INJUNCTION ORDER 1 assembly, use, acquisition, purchase, offer, sale, transfer, brokerage, consignment, 2 distribution, shipment, licensing, development, display, delivery, marketing, 3 advertising or promotion of the counterfeit Forever 21 product identified in the 4 Complaint and any other unauthorized Forever 21 product (including any non- 5 genuine reproduction, counterfeit, copy or colorable imitation thereof). 6 b. The import, export, making, manufacture, reproduction, 7 assembly, use, acquisition, purchase, offer, sale, transfer, brokerage, consignment, 8 distribution, shipment, licensing, development, display, delivery, marketing, 9 advertising or promotion of the infringing and diluting product identified in the 10 Complaint and any other product which infringes or dilutes any FOREVER 21 11 Mark, trade name and/or trade dress including, but not limited to, any FOREVER 12 21 Mark at issue in this action. 13 c. The unauthorized use, in any manner whatsoever, of any 14 Forever 21 trademark, trade name and/or trade dress including, but not limited to, 15 the FOREVER 21 Marks at issue in this action, any variants, colorable imitations, 16 translations and/or simulations thereof and/or any items that are confusingly 17 similar thereto, including specifically: 18 i. on or in conjunction with any product or service; and 19 ii. on or in conjunction with any advertising, promotional 20 materials, labels, hangtags, packaging, or containers. 21 d. The use of any trademark, trade name, or trade dress that falsely 22 represents, or is likely to confuse, mislead or deceive purchasers, customers, or 23 members of the public to believe that unauthorized product imported, exported, 24 manufactured, reproduced, distributed, assembled, acquired, purchased, offered, 25 sold, transferred, brokered, consigned, distributed, stored, shipped, marketed, 26 advertised and/or promoted by Hi Fashion originates from Forever 21, or that said 27 merchandise has been sponsored, approved, licensed by, or associated with Forever 28 21 or is, in some way, connected or affiliated with Forever 21. -5PERMANENT INJUNCTION ORDER e. 1 Engaging in any conduct that falsely represents that, or is likely 2 to confuse, mislead, or deceive purchasers, customers, or members of the public to 3 believe that Hi Fashion itself is connected with, or is in some way sponsored by or 4 affiliated with Forever 21, purchases product from or otherwise has a business 5 relationship with Forever 21. f. 6 Affixing, applying, annexing, or using in connection with the 7 manufacture, distribution, advertising, sale, and/or offering for sale or other use of 8 any goods, a false description or representation, including words or symbols, 9 tending to falsely describe or represent such goods as being those of Forever 21. g. 10 Hiding, disposing of, destroying, moving, relocating or 11 transferring any and all products, advertising, promotional materials, labels, 12 hangtags, packaging or containers bearing any of the FOREVER 21 Marks; and/or h. 13 Disposing of, destroying, moving, relocating or transferring any 14 documents or things, including electronic records, pertaining to the purchase, 15 procurement, development, making, manufacture, use, display, advertisement, 16 marketing, licensing, sale, offer for sale, distribution, shipping, or delivery of any 17 products or services bearing any FOREVER 21 Mark or which otherwise refer or 18 relate to Forever 21 or any FOREVER 21 Mark. 19 9. This Permanent Injunction shall be deemed to have been served upon 20 Defendant at the time of its execution by the Court. 21 /// 22 /// 23 24 25 26 27 28 10. The Court finds there is no just reason for delay in entering this -6PERMANENT INJUNCTION ORDER 1 Permanent Injunction and, pursuant to Rule 54(a) of the Federal Rules of Civil 2 Procedure, the Court directs immediate entry of this Permanent Injunction against 3 Defendant. 4 IT IS SO ORDERED. 5 6 7 8 DATED: June 23, 2011 ___________________________________ Hon. George H. Wu United States District Court Judge for the Central District of California 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 -7PERMANENT INJUNCTION ORDER

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