Nike, Inc. et al v. QiLoo International Limited

Filing 29

PRELIMINARY INJUNCTION. IT IS FURTHER ORDERED that Plaintiffs shall post a new surety bond for $25,000.00 to remain in place until the trial on the merits. Signed by Judge Gloria M. Navarro on 3/22/12. (Attachments: # 1 Appendix)(Copies have been distributed pursuant to the NEF - EDS)

1 Michael J. McCue (Nevada Bar #6055)
[e-mail]

2 Jonathan W. Fountain (Nevada Bar #10351)
[e-mail]

3 Lewis and Roca LLP

3993 Howard Hughes Parkway, Suite 600

4 Las Vegas, Nevada 89109

Telephone: [phone]

5 Facsimile: [phone]
6 Christopher J. Renk
Erik S. Maurer

7 Michael J. Harris
Azuka C. Dike

8 Banner & Witcoff, Ltd.

10 South Wacker Drive, Suite 3000

9 Chicago, Illinois 60606

Telephone: [phone]

10 Facsimile: [phone]
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(Pro Hac Vice to be Submitted)

12 Attorneys for Plaintiffs, NIKE, Inc. and Converse Inc.
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UNITED STATES DISTRICT COURT

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DISTRICT OF NEVADA
NIKE, INC.

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and
CONVERSE INC.,
Plaintiffs,
vs.
QILOO INTERNATIONAL LIMITED
Defendant.

Case No. 2:12-cv-00191-GMN-GWF
[PROPOSED] PRELIMINARY
PRELIMINARY INJUCTION
INJUNCTION ORDER
ORDER

On February 6, 2012, Plaintiffs, NIKE, Inc., and Converse Inc., moved ex parte for a

24 Temporary Restraining Order, Seizure Order, and an Order for Preliminary Injunction, pursuant
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to Rule 65 of the Federal Rules of Civil Procedure, Lanham Act Section 34 (15 U.S.C. § 1116),

the Patent Act, 35 U.S.C. § 283, and Local Rule 7-5. (Dkt. No. 4). Plaintiffs alleged that
Defendant QiLoo International Ltd. (“QiLoo”) imported into the United States, and was

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1 distributing, promoting, offering to sell, and selling footwear products at the World Shoe
2 Association (“WSA”) trade show in Las Vegas, Nevada, that infringe Plaintiffs’ design patents
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and trademarks.

On February 7, 2012, the Court granted Plaintiffs’ Motion for Entry of

Temporary Restraining Order and Seizure Order (Dkt. No. 12), Plaintiffs posted a security bond
as directed by the Court (Dkt. No. 13), hand-served the Complaint, motion papers, and the

7 Court’s Order on QiLoo (Dkt. No. 18), and seized evidence of infringements (Dkt. No. 14).
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Having identified additional infringing products during the seizure activities, Plaintiffs

9 moved on February 8, 2012, to amend the Temporary Restraining Order. (Dkt. No. 16). On
10 February 9, 2012, the Court granted Plaintiffs’ motion and entered an Amended Temporary
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Restraining Order. (Dkt. No. 17).
In its February 7, 2012, Order, the Court directed QiLoo to respond to Plaintiffs’ motion
by February 10, 2012, and to appear for a preliminary injunction hearing on February 16, 2012.

15 QiLoo failed to serve any opposition and did not appear for the scheduled hearing.
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Having duly considered Plaintiffs’ arguments at the hearing, and having also considered

17 the First Amended Complaint, the relevant Motions and Supporting Memorandum of Law, along
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with the declarations and exhibits submitted therewith, the Court makes the following findings
and conclusions:

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1.

Plaintiffs are likely to succeed in showing that they own the NIKE Design Patents

and the Converse and NIKE Trademarks asserted in the First Amended Complaint, and that

23 those rights are valid and enforceable. Specifically: (A) NIKE is likely to establish that it owns
24 United States Design Patent Nos.: D361,884; D429,877; D462,830; D475,523; D494,353;
25 D499,247; D500,585; D500,917; D523,618; D524,028; D524,529; D532,600; D546,541;
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D547,541; D555,332; D573,338; D573,339; D575,046; D578,294; D579,186; D580,636;
D580,646; D586,548; D641,968; and D642,369; (B) NIKE is likely to establish that it owns
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1 common law and registered trademark rights in the mark shown in United States Trademark
2 Registration No. 3,451,905; and (C) Converse is likely to establish that it owns common law and
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registered trademark rights in the marks shown in United States Trademark Registration Nos.:
1,588,960; 1,998,884; 3,258,103; 4,062,112; and 4,065,482.

NIKE’s United States design

patents are presumed valid, 35 U.S.C. § 282, and Plaintiffs’ trademark registration certificates

7 are prima facie evidence of the validity, ownership, and exclusive rights of Converse and NIKE
8 to use the registered trademarks. 15 U.S.C. § 1057. Converse’s rights in connection with
9 Registration Nos. 1,588,960 and 1,998,884 are also now incontestable. 15 U.S.C. § 1065.
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2.

Plaintiffs are likely to succeed in showing that QiLoo has made, used, sold,

offered for sale, and/or imported into the United States shoes bearing designs that infringe the
NIKE Design Patents and that are counterfeits of the Converse and NIKE Trademarks (hereafter,
“Alleged Infringing Shoes”). It appears to the Court that QiLoo has not regularly or consistently

15 identified its shoes with distinguishing model numbers. Nevertheless, at least the following
16 QiLoo model numbers are associated with shoes bearing the designs of the NIKE Design Patents
17 or the Converse and NIKE Trademarks: QL-21193; QL-21533; QL-21712; QL-21810; QL18
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23416; QL-23860; QL-24715; QL-25216; QL-25472; QL-26294; QL-27141; QL-27188; QL21103107A;

QL-21103274A;

QL-21103472A;

QL-21103630A;

QL-21103631A;

QL-

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21103631B; QL-21103929A; and QL-21104050A.
3.

QiLoo is a China-based manufacturer of footwear products that, with the

23 exception of its temporary presence in Las Vegas during the biannual WSA show, does not have
24 a regular place of business or assets in the United States. Over the past several WSA shows,
25 QiLoo has established a pattern of importing Alleged Infringing Shoes into the United States,
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promoting, offering to sell, and selling those shoe designs at the WSA show, then leaving the
United States.
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4.

Absent a preliminary injunction pending trial on the merits, QiLoo’s manufacture,

2 use, sales, offers to sell, and/or importation into the United States of Alleged Infringing Shoes
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will result in immediate and irreparable injury to Plaintiffs in the form of loss of control over
their valuable intellectual property rights, loss of consumer goodwill, and interference with
Plaintiffs’ ability to exploit the NIKE Design Patents and the NIKE and Converse Trademarks.

7 Gallagher Benefit Servs., Inc. v. De La Torre, 283 Fed. Appx. 543, 546 (9th Cir. 2008); Polymer
8 Techs., Inc. v. Bridwell, 103 F.3d 970, 975-76 (Fed. Cir. 1996); Farmer Brothers Co. v. Albrecht,
9 2011 WL 4736858, *3 (D. Nev. October 6, 2011). In addition, because QiLoo has no presence
10 in the United States, Plaintiffs are likely to suffer irreparable harm because it may be difficult or
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impossible for them to recover a money judgment against QiLoo. Robert Bosch, LLC v. Pylon
Mfg. Corp, 659 F.3d 1142, 1156 (Fed. Cir. 2011) (citing O2 Micro Int’l Ltd. v. Beyond
Innovation Tech. Co., 2007 WL 869576, at *2 (E.D. Tex. Mar. 21, 2007), vacated and remanded

15 on other grounds, 521 F.3d 1351 (Fed. Cir. 2008).
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5.

The harm to Plaintiffs in denying a preliminary injunction outweighs the harm to

17 the legitimate interests of QiLoo from granting such relief. Here, QiLoo’s pattern of entering the
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United States for purposes of selling Alleged Infringing Shoes for a period of just a few days
once every six months has hamstrung Plaintiffs’ ability to effectively enforce their patent and

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trademark rights. NIKE, Inc. v. Meitac Int’l, 2006 WL 3883278, *3 (D.Nev. 2006) (if defendant
is not enjoined, “Nike will be severely handicapped in its ability to prevent further importation of

23 infringing products, thereby destroying any potential of preserving the status quo pending a
24 resolution of this case on its merits.”). On the other hand, QiLoo has many non-infringing
25 footwear designs it could sell instead of the Alleged Infringing Shoes. Celsis In Vitro, Inc. v.
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CellzDirect, Inc., 2012 WL 34381, *8 (Fed. Cir. Jan. 9, 2012). In view of the foregoing facts,
QiLoo took a calculated risk by returning to the United States to continue selling the Alleged
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1 Infringing Shoes and the balance of harms tips in Plaintiffs’ favor.
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6.

The public interest weighs in favor of granting Plaintiffs a preliminary injunction,

because this relief will promote an intellectual property system where rights can be effectively
enforced and will protect the public from consumer confusion. NIKE, 2006 WL 3883278, *3;
Tile Outlet Always In Stock, Inc. v. Big Leaps, Inc., 2010 WL 5239229, at *3 (D. Nev. Dec. 16,

7 2010). Any other result – particularly in view of QiLoo’s failure to appear in opposition to this
8 motion – would undermine the public’s interest in Plaintiffs’ continued incentives to create and
9 invest in the manufacture of ornamental footwear designs.
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The Surety Bond posted security bond9, 2012 in the amount the$25,000.00 for no
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In view of the $25,000 on February posted by Plaintiffs, of Court finds that
11 the Temporary Restraining Order has expired, and a new surety bond shall be posted by
Plaintiffs, security is required.
additional to remain in place until a trial on the merits.
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PRELIMINARY INJUNCTION
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IT IS THEREFORE ORDERED that QiLoo and its officers, agents, servants,
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15 employees, and attorneys; and all other persons acting in active concert or participation with any
16 of them, are hereby preliminarily enjoined from making, using, selling, offering to sell, and/or
17 importing into the United States any and all products bearing the designs, and colorable
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imitations thereof, shown in NIKE’s United States Design Patent Nos: D361,884; D429,877;
D462,830; D475,523; D494,353; D499,247; D500,585; D500,917; D523,618; D524,028;

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D524,529; D532,600; D546,541; D547,541; D555,332; D573,338; D573,339; D575,046;
D578,294; D579,186; D580,636; D580,646; D586,548; D641,968; and D642,369. QiLoo is

23 further preliminarily enjoined from using in commerce any reproduction, counterfeit, copy, or
24 colorable imitation of the designs shown in NIKE’s United States Trademark Registration No.
25 3,451,905 and Converse’s United States Trademark Registration Nos.: 1,588,960; 1,998,884;
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3,258,103; 4,062,112; and 4,065,482, including selling, offering for sale, distributing, promoting,
or advertising goods or services in connection with the NIKE and Converse trademarks or
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1 colorable imitations thereof; and transferring, moving, returning, destroying, or otherwise
2 disposing of any Alleged Infringing Shoes except pursuant to an order of this Court.
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Illustrative examples of Alleged Infringing Shoes bear model numbers QL-21193; QL21533; QL-21712; QL-21810; QL-23416; QL-23860; QL-24715; QL-25216; QL-25472; QL26294; QL-27141; QL-27188; QL-21103107A; QL-21103274A; QL-21103472A; QL-

7 21103630A; QL-21103631A; QL-21103631B; QL-21103929A; and QL-21104050A, and are
8 shown in Appendix 1 to this Order. The scope of this injunction applies to all products bearing
9 the designs of the design patents and trademarks listed above, including colorable imitations
10 thereof, regardless of any model number associated with the product, or any variations in color,
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materials, or construction methods.
Plaintiffs shall forthwith serve this Order upon QiLoo by international courier to its
business address in Fujian, China and by email to [e-mail]. QiLoo is hereby given

15 further notice that it shall be deemed to have actual notice of the issuance and terms of this
16 preliminary injunction and that any act by it in violation of any of the terms hereof may be
17 considered and prosecuted as contempt of this Court.
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IT IS FURTHER ORDERED that Plaintiffs shall post a new surety bond for $25,000.00
SIGNED AND the trial on this
to remain in place until ENTEREDthe merits.

day of February, 2012.

DATED and DONE this 22nd day of March, 2012.
20th
Gloria M. Navarro
United States District Judge
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Gloria M. Navarro
United States District Judge

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