AirWair International Ltd. v. NEXT PLC

Filing 29

Consent Judgment and Permanent Injunction. Signed by Judge Susan Illston on 10/12/16. (tfS, COURT STAFF) (Filed on 10/12/2016)

1 BRYAN CAVE LLP
Marcy J. Bergman, California Bar No. 75826

2 Alexandra C. Whitworth, California Bar No. 303046
560 Mission Street, 25th Floor
San Francisco, CA 94105
4 Telephone: [phone]
Facsimile:
[phone]
5 Email:
[e-mail]
[e-mail]

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7 Attorneys for Plaintiff

AIRWAIR INTERNATIONAL LTD.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

Bryan Cave LLP
560 Mission Street, Suite 2500
San Francisco, California 94105

11 AIRWAIR INTERNATIONAL LTD., a
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Honorable Susan Illston
Plaintiff,

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Case No. 3:16-cv-00944

company of the United Kingdom,
CONSENT JUDGMENT AND
PERMANENT INJUNCTION

vs.
NEXT PLC, a company of the United Kingdom;

15 NEXT RETAIL LTD., a company of the United
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Kingdom; and DOES 1-50,
Defendants.

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Action Filed: February 25, 2016
Judge: Honorable Susan Illston

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CONSENT JUDGMENT AND PERMANENT INJUNCTION
SF/203373.1
286431.3
424697v2

The parties hereto having agreed to a settlement of the claims between them, and having

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2 stipulated to entry of this consent judgment, it is hereby ORDERED, ADJUDGED AND
3 DECREED:
1.

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This Court has jurisdiction over Defendants Next PLC and Next Retail Ltd.

5 (collectively, “NEXT”) for the purpose of this Consent Judgment only and over the subject matter
6 at issue in this action. NEXT consents to jurisdiction of this Court, and this Court retains
7 jurisdiction for the purpose of executing and enforcing this Consent Judgment and Permanent
8 Injunction.
2.

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Plaintiff AirWair International Ltd. (“AirWair”) is the owner of the Dr. Martens®

10 trade dress for footwear and is the owner of several U.S. registrations for its trade dress in the

Bryan Cave LLP
560 Mission Street, Suite 2500
San Francisco, California 94105

11 United States Patent and Trademark Office, including “the combination of yellow stitching in the
12 welt area and a two-tone grooved sole edge” (Reg. No. 2,437,751, attached as Exhibit 1); the
13 yellow “welt stitch located around the perimeter of footwear” (Reg. No. 2,437,750, attached as
14 Exhibit 2); its DMS undersole design mark (Reg. No. 2,102,468, attached as Exhibit 3, the “DMS
15 Design Mark”); “the design of an [sic] sole edge including longitudinal ribbing, and a dark color
16 band over a light color” (Reg. No. 2,104,349, attached as Exhibit 4); and “longitudinal ribbing and
17 a dark color band over a light color on the outer sole edge, welt stitching, and a tab at the top back
18 heel of footwear” (Reg. No. 2,341,976, attached as Exhibit 5) (the above registrations collectively,
19 “AirWair Trade Dress Marks”). AirWair has the exclusive right to use the AirWair Trade Dress
20 Marks in commerce, on or in connection with footwear, and enforces its rights throughout the
21 world.
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3.

NEXT acknowledges the validity of the trade dress registrations attached as

23 Exhibits 1–5.
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4.

NEXT has imported, distributed, offered for sale, and sold footwear under the style

25 names “Lace Up Boot (Older Girls),” “Lace Up Boot (Younger Girls),” and “Black Super Heavy
26 Lace-Ups” that features the AirWair Trade Dress Marks (“NEXT Accused Footwear”).
27 Representative samples of the NEXT Accused Footwear are shown in Exhibit 6.
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CONSENT JUDGMENT AND PERMANENT INJUNCTION
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286431.3
424697v2

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5.

NEXT represents and warrants that it sold approximately 115 pairs of the NEXT

2 Infringing Footwear in the United States, with sales revenue totaling approximately £2152. NEXT
3 further represents that it has no pairs of the NEXT Infringing Footwear remaining in inventory.
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6.

NEXT represents and warrants that as of the date of this Agreement, it has

5 discontinued manufacturing, licensing, distributing, advertising, marketing, purchasing or selling
6 the NEXT Accused Footwear in the United States and worldwide. NEXT further represents and
7 warrants that it is not currently manufacturing, distributing, selling or offering for sale any
8 footwear or any component part thereof that includes any of the features that are the subject of any
9 of the AirWair Trade Dress Marks.
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7.

NEXT further represents that there is no remaining inventory of any point-of-sale

Bryan Cave LLP
560 Mission Street, Suite 2500
San Francisco, California 94105

11 materials, labels, signs, boxes, prints, catalogs, line sheets, marketing materials, internet web
12 pages, metatags, packages, papers, other trade dress, and advertisements in the possession of
13 NEXT bearing images, illustrations, or representations of the enjoined shoes and boots, trade dress
14 and undersole patterns, nor does it have any plates, molds, matrixes, and other means of making
15 the same in its possession or control.
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8.

NEXT, and each of its officers, directors, servants, employees, subsidiaries, and

17 successors who receive actual notice of this order by personal service or otherwise, are
18 permanently enjoined from manufacturing, importing, exporting, distributing, licensing, selling,
19 marketing, advertising, promoting or offering for sale the NEXT Accused Footwear or any
20 footwear that includes any of the features that are the subject of any of the AIRWAIR Trade Dress
21 Marks or any component part thereof that includes any of the features that are the subject of any of
22 the Airwair Trade Dress Marks. NEXT also agrees not to authorize, enable or procure any other
23 person to do such acts.
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9.

It is hereby ordered that this action be closed.

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CONSENT JUDGMENT AND PERMANENT INJUNCTION
SF/203373.1
286431.3
424697v2

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IT IS SO ORDERED.

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10/12/16
4 Dated: ____________

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By: ____________________________
The Honorable Susan Illston
Judge of the U.S. District Court

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8 Dated: October 5, 2016

BRYAN CAVE LLP

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By: /s/ Alexandra Whitworth
Alexandra C. Whitworth
Attorneys for Plaintiff
AIRWAIR INTERNATIONAL LTD.

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Bryan Cave LLP
560 Mission Street, Suite 2500
San Francisco, California 94105

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Dated: October 5, 2016

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By:

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Defendant NEXT PLC.

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17 Dated: October 5, 2016
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By:
Defendant NEXT RETAIL LTD.

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Attestation: I, Alexandra C. Whitworth, hereby attest that concurrence in the filing of this

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document has been obtained from each of the other signatories.

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______/s/ Alexandra Whitworth_____
Alexandra C. Whitworth

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CONSENT JUDGMENT AND PERMANENT INJUNCTION
SF/203373.1
286431.3
424697v2

1 BRYAN CAVE LLP
Marcy J. Bergman, California Bar No. 75826

2 Alexandra C. Whitworth, California Bar No. 303046
560 Mission Street, 25th Floor
San Francisco, CA 94105
4 Telephone: [phone]
Facsimile:
[phone]
5 Email:
[e-mail]
[e-mail]

3

6

7 Attorneys for Plaintiff

AIRWAIR INTERNATIONAL LTD.

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9

UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

Bryan Cave LLP
560 Mission Street, Suite 2500
San Francisco, California 94105

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12 AIRWAIR INTERNATIONAL LTD., a
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Plaintiff,

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CASE NO. 3:16-CV-00944-SI

company of the United Kingdom,
CERTIFICATE OF SERVICE

vs.
NEXT PLC, a company of the United Kingdom;

16 NEXT RETAIL LTD., a company of the United
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Date Action Filed: February 25, 2016

Kingdom; and DOES 1-50,
Defendants.

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CERTIFICATE OF SERVICE
279516.3

CERTIFICATE OF SERVICE

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I am employed in the aforesaid County, State of California; I am over the age of eighteen
years and not a party to the within entitled action; my business address is: 560 Mission Street, 25th
3 Floor, San Francisco, California 94105.

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On October 11, 2016, I caused to be served on the interested parties in said action the

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within:

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CONSENT JUDGMENT AND PERMANENT INJUNCTION

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on the interested parties in this action by placing a true copy thereof, enclosed in a sealed

7 envelope, addressed as follows:
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Adam M Cohen, Esq.
Dana Susman, Esq.
Kane Kessler, P.C.
666 Third Avenue
New York, NY 10017-4041
Tel: [phone]
[e-mail]
[e-mail]
Next Plc.
Desford Road
Enderby
Leicester
LE19 4AT

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Bryan Cave LLP
560 Mission Street, Suite 2500
San Francisco, California 94105

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Defendant

Next Retail Ltd.
Desford Road
Enderby
Leicester
LE19 4AT

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Attorneys for Defendants
Next Plc and Next Retail Ltd.

Defendant

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[X]
BY FEDERAL EXPRESS: I placed such envelope for deposit in the Federal
Express drop slot for service by Federal Express. I am "readily familiar" with the firm's practice
22 of collection and processing correspondence for mailing. Under that practice it would be
deposited with Federal Express on that same day at San Francisco, California in the ordinary
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course of business. I am aware that on motion of the party served, service is presumed invalid if
24 service is more than one day after date of deposit for express service in affidavit.
I declare that I am employed within the office of a member of the bar of this Court at
whose direction the service was made. Executed on October 11, 2016, at San Francisco,
26 California.

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/s/ Angela Franklin
Angela Franklin

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CERTIFICATE OF SERVICE
279516.3