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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JOHNSON & PHAM, LLP
Christopher D. Johnson, SBN: 222698
E-mail: [e-mail]
Christopher Q. Pham, SBN: 206697
E-mail: [e-mail]
Marcus F. Chaney, SBN: 245227
E-mail: [e-mail]
Ani Sakalian, SBN: 274846
E-mail: [e-mail]
6355 Topanga Canyon Boulevard, Suite 115
Woodland Hills, California 91367
Telephone: [phone]
Facsimile: [phone]

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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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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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