Vans, Inc. et al v. Walmart, Inc. et al

Filing 400

CONSENTED PERMANENT INJUNCTION filed by Judge David O. Carter: This action, having come on for consideration upon the First Amended Complaint of Plaintiff, Vans, Inc. and VF Outdoor, LLC ("Vans"), is one for infringement of Vans' trade dress and registered trademarks, unfair competition, and false designation of origin in violation of the Lanham Act, Cal. Bus. & Prof. 17200, et seq., and common law against Walmart, Inc. and ACI International (collectively, "Defendants"). Pursuant to settlement agreements between Vans and Defendants, having waived the entry of findings of fact and conclusions of law, and without trial, argument, or adjudication of any issue of fact or law, having consented to and stipulated to the entry of this Permanent Injunction under the terms provided herein: SEE DOCUMENT FOR FURTHER INFORMATION. (es)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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SOUTHERN DIVISION

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5 VANS, INC. and VF OUTDOOR, LLC,
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Case No. 8:21-cv-01876-DOC-KES

Plaintiffs,

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vs.

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10 WALMART, INC. AND ACI
INTERNATIONAL,
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CONSENTED PERMANENT

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INJUNCTION
Defendants.

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This action, having come on for consideration upon the First Amended

2 Complaint of Plaintiff, Vans, Inc. and VF Outdoor, LLC (“Vans”), is one for
3 infringement of Vans’ trade dress and registered trademarks, unfair competition, and
4 false designation of origin in violation of the Lanham Act, Cal. Bus. & Prof. § 17200,
5 et seq., and common law against Walmart, Inc. and ACI International (collectively,
6 “Defendants”). Pursuant to settlement agreements between Vans and Defendants,
7 having waived the entry of findings of fact and conclusions of law, and without trial,
8 argument, or adjudication of any issue of fact or law, having consented to and
9 stipulated to the entry of this Permanent Injunction under the terms provided herein:
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IT IS HEREBY ORDERED, ADJUDGED AND DECREED:
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This Court has original jurisdiction over the subject matter of this action

under the laws of the United States pursuant to 15 U.S.C. § 1121(a), as well as 28
U.S.C. § 1331 (Federal Question Jurisdiction); 28 U.S.C. § 1337(a) (Commerce
Regulations); and 28 U.S.C. § 1338(b) (Trademark and Unfair Competition). This
Court has jurisdiction of all pendant state law claims pursuant to 28 U.S.C. § 1367(a)
(Supplemental Jurisdiction) because all such claims are based upon the same or
substantially the same conduct by the Defendants.

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2.

The Court hereby ORDERS as follows:

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a) Defendants, their agents, officers, employees, attorneys, and all persons who
are in active concert or participation with Defendants, including but not
limited to any e-commerce websites who receive actual notice of this order,
are enjoined from advertising, marketing, distributing, importing,
manufacturing, promoting, offering for sale, distributing, or selling the
sneakers shown in Exhibit 1 attached hereto, any other colorways of these
same shoe designs, colorable imitations of the shoes shown in Exhibit 1,
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and/or facilitating, inducing, or assisting any of the foregoing conduct.

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b) Defendants, and their agents, officers, employees, attorneys, and all persons
who are in active concert or participation with Defendants are enjoined from
using Walmart’s side stripe marks depicted on the shoes shown in Exhibit 1,
or any mark substantially similar thereto, on or in connection with any of
Walmart’s shoes or related services.
c) Defendants, and their agents, officers, employees, attorneys, and all persons
who are in active concert or participation with Defendants, are enjoined from
using Vans’ Side Stripe Mark, Old Skool Trade Dress, SK8-Hi Trade Dress,
Old Skool Toddler Trade Dress, Sk8-Mid Toddler Trade Dress, Checkerboard
Trade Dress or any of Vans’ registered trademarks shown and defined in
Exhibit 2, and/or any trade dress or trademark that is substantially similar
thereto, on or in connection with Defendants’ shoes or related services.

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d) This Permanent Injunction shall take effect immediately.
e) The Court retains jurisdiction to enforce the terms of this Permanent
Injunction and the terms of the settlement agreements between Vans and
Defendants.

21 IT IS SO ORDERED.
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23 DATED: November 14, 2023
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DAVID O. CARTER
UNITED STATES DISTRICT JUDGE

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1 DATED: November 8, 2023

MCGUIREWOODS LLP

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By: /s/ Tanya L. Greene
Tanya L. Greene
Lucy Jewett Wheatley
Nicholas J. Hoffman
Claire Hagan Eller

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Attorneys for Plaintiffs Vans, Inc.
and VF Outdoor, LLC

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Amster, Rothstein & Ebenstein LLP

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By:

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/s/ Anthony F. Lo Cicero
Richard S. Mandaro
Anthony F. Lo Cicero
Brian A. Comack
Thomas Hart
Attorneys for Defendant Walmart, Inc.

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DATED: November 8, 2023

Ervin Cohen & Jessup LLP
By: /s/ Kelly Cunningham
Kenneth P. Hsu
Kelly Cunningham
Jason L. Haas
Banu S. Naraghi
Attorneys for Defendant ACI
International

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Exhibit 1

Time and Tru Women’s Retro Sneakers

Time and Tru Women’s Retro Sneakers

Wonder Nation Little & Big Boys Casual Skate Sneaker

Wonder Nation Casual Colorblock Skate Sneaker (Little Boys & Big Boys)

Wonder Nation Little Girl & Big Girl Casual Canvas Skate Shoe

Wonder Nation Little & Big Boys Casual Skate High Top Shoe

Wonder Nation Little Girl & Big Girl Casual Canvas Skate Shoe

Wonder Nation Toddler Boys Casual Skate Sneaker

Wonder Nation Baby Boy Casual Skate Shoes

Wonder Nation Little & Big Boys Casual Skate Sneaker

No Boundaries Women's Retro Casual Sneakers

Wonder Nation Toddler Boys Casual Skate Shoes

Wonder Nation Boys Casual Skate Shoes

Wonder Nation Little & Big Boys Casual Skate Sneaker

“Wonder Nation” Toddler Shoe

No Boundaries Men's Low Retro Lace-up Casual Sneakers

No Boundaries Men's Low Retro Lace-up Casual Sneakers

No Boundaries Men's Low Retro Lace-up Casual Sneakers

No Boundaries Men's Low Retro Lace-up Casual Sneakers

No Boundaries Mens Retro Sneakers

No Boundaries Men's Mid Retro Lace-up Casual Sneakers

No Boundaries Men's Mid Retro Lace-up Casual Sneaker

No Boundaries Men's Mid Retro Lace-up Casual Sneakers

No Boundaries Men's Mid Retro Lace-up Casual Sneakers

“Wonder Nation” Boys’ Shoe

“Wonder Nation” Boys’ Shoe

“Wonder Nation” Childrens’ Shoe

“Wonder Nation” Boys’ Shoe

“Wonder Nation” Boys’ Shoe

“Wonder Nation” Boys’ Shoe

No Boundaries Men’s Low-Top Shoe

No Boundaries Men’s Low-Top Shoe

Wonder Nation Toddler Boys Casual Skate Shoe

Doll Maker Slip-On

Doll Maker Skate Shoe

WISPR Toddler Shoes

Wonder Nation Girls’ Shoe

Wonder Nation Girls’ Shoe

Wonder Nation Girls’ Shoe

Wonder Nation Girls’ Shoe

Tredsafe High Top Resistant Shoe

Tredsafe Unisex Deacon Slip Resistant Shoe

Exhibit 2

Old Skool Trade Dress
The Old Skool trade dress consists of a distinctive combination of source-identifying elements,
including: (1) the Vans Side Stripe Mark on the shoe upper; (2) a rubberized sidewall with a
consistent height around the perimeter of the shoe; (3) the uppermost portion of the sidewall
having a three-tiered or grooved appearance; (4) a textured toe box outer around the front of the
sidewall; (5) visible stitching, including where the eyestay meets the vamp; and (6) the
placement and proportion of these elements in relation to one another.
By way of example, the following are embodiments of the Old Skool trade dress:

11067985.1

Old Skool Toddler Trade Dress
The Old Skool Toddler trade dress consists of a distinctive combination of source-identifying
elements, including: (1) the Vans Side Stripe Mark on the shoe upper; (2) a rubberized sidewall
with a consistent height around the perimeter of the shoe; (3) the uppermost portion of the
sidewall having a three-tiered or grooved appearance; (4) a textured toe box outer around the
front of the sidewall; (5) visible stitching; and (6) the placement and proportion of these elements
in relation to one another.
By way of example, the following are embodiments of the Old Skool Toddler trade dress:

11067985.1

Sk8-Hi Trade Dress
The Sk8-Hi trade dress consists of a distinctive combination of source-identifying elements,
including: (1) the Vans Side Stripe Mark on the shoe upper; (2) a rubberized sidewall with a
consistent height around the perimeter of the shoe; (3) the uppermost portion of the sidewall
having a three-tiered or grooved appearance; (4) a textured toe box outer around the front of the
sidewall; (5) a ribbed collar formation that encircles the uppermost part of the shoe; (6) visible
stitching, including separating the individual ankle collar corrugations; and (7) the placement and
proportion of these elements in relation to one another.
By way of example, the following are embodiments of the Sk8-Hi trade dress:

11067985.1

Sk8-Mid Toddler Trade Dress
The Vans’ SK8-MID Toddler trade dress consists of a distinctive combination of sourceidentifying elements, including: (1) the Vans Side Stripe Mark on the shoe upper; (2) a
rubberized sidewall with a consistent height around the perimeter of the shoe; (3) the uppermost
portion of the sidewall having a three-tiered or grooved appearance; (4) a textured toe box outer
around the front of the sidewall; (5) a ribbed collar formation that encircles the uppermost part of
the shoe; (6) visible stitching, including separating the individual ankle collar corrugations; and
(7) the placement and proportion of these elements in relation to one another.
By way of example, the following are embodiments of the Sk8-Mid Toddler trade dress:

11067985.1

Checkerboard Slip-On Trade Dress
The Checkerboard Slip-On trade dress consists of a distinctive combination of source-identifying
elements, including: (1) checkerboard pattern on the upper portion of a twin-gore slip-on shoe,
including on the vamp; (2) a rubberized sidewall with a consistent height around the perimeter of
the shoe; (3) the uppermost portion of the sidewall having a three-tiered or grooved appearance;
(4) a textured toe box outer around the front of the sidewall; and (5) the placement and
proportion of these elements in relation to one another.
By way of example, the following are embodiments of the Checkerboard Slip-On trade dress:

11067985.1

Vans Trademark Registrations
Mark

11067985.1

Reg. No.

Goods and Services

2,177,772

Footwear

2,170,961

Footwear

2,172,482

Footwear

1,583,727

Shoes

5,070,471

Footwear, namely, twin-gore slip-on shoes

5,070,470

Footwear, namely, twin-gore slip-on shoes

5,320,384

Footwear

6,451,279

Footwear

6,436,779

Footwear