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