May 17, 2013
NIKE, INC. and CONVERSE INC., Plaintiffs/Counterclaim Defendants,
SUPERSTAR INTERNATIONAL, INC., AC INT'L TRADING INC., and SAI LIU, Defendants/Counterclaim Plaintiffs, and JEAIR SHOES INC., KING-AIR TRADING INC., DUN HUANG INTERNATIONAL TRADING INC., XIAO MING WU, JIAN QIANG LIU, and YUN MEI YUAN, Defendants.
CALDWELL LESLIE & PROCTOR, PC, JOAN MACK, State Bar No. 180451, MICHAEL D. ROTH, State Bar No. 217464, Los Angeles, California, BANNER & WITCOFF, LTD., CHRISTOPHER J. RENK, ERIK S. MAURER, MICHAEL J. HARRIS, ERIC J. HAMP, Chicago, Illinois, Attorneys for Plaintiffs NIKE, INC. and CONVERSE INC.
Robert C. HSU, State Bar No. 225437, LEXINT LAW APLC, Temple City, CA, Attorney for Jian Qiant Liu, King Air Trading Inc., Dun Huang International Trading Inc., and Xiao Ming Wu.
[PROPOSED] CONSENT JUDGMENT AND PERMANENT INJUNCTION ORDER AGAINST DEFENDANTS DUN HUANG INTERNATIONAL TRADING INC., and KING-AIR TRADING INC., JIAN QIANG LIU AND XIAO MING WU
JOHN F. WALTER, District Judge.
Plaintiffs NIKE, Inc. ("NIKE") and Converse Inc. ("Converse") (collectively, "Plaintiffs") filed civil action number 12-CV-5240 on June 15, 2012 against Dun Huang International Trading Inc. ("Dun Huang"), King-Air Trading Inc. ("King-Air"), Jian Qiang Liu ("J. Liu"), and Xiao Ming Wu ("Wu") (collectively, "the Dun Huang Defendants"), and other defendants who are not party to this stipulation, asserting claims for (a) trademark infringement under 15 U.S.C. § 1114; (b) unfair competition under 15 U.S.C. § 1125(a); (c) trademark dilution under 15 U.S.C. § 1114; (d) trademark infringement and unfair competition under the common law; (e) trademark dilution under the California Business & Professions Code § 14247; (f) unfair competition under the California Business & Professions Code §§ 17200 et seq.; and (g) patent infringement under 35 U.S.C. § 271. Plaintiffs duly served their Complaint on the Dun Huang Defendants on June 19, 2012 or June 28, 2012. The Dun Huang Defendants now stipulate and consent to the Court's entry of this Consent Judgment.
NOW THEREFORE, upon consent of the parties, IT IS HEREBY ORDERED, ADJUDGED, AND DECREED:
1. The Court has subject matter jurisdiction over this action pursuant to 15 U.S.C. § 1121(a) and 28 U.S.C. §§ 1331, 1338(a) & (b), and 1367(a).
2. The Court has personal jurisdiction over the Dun Huang Defendants and venue is proper in this judicial district at least because of the Dun Huang Defendants' commission of infringing acts in this judicial district.
3. The Dun Huang Defendants admit that Converse owns all right, title, and interest in and to the valid and enforceable federal and common law trademark rights in: (a) the distinctive and non-functional overall look of the Chuck Taylor All Star high and low designs, and the midsole and outsole elements of those designs, (b) the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, any sub-combination of these elements, and the relative position of these elements to each other, (c) U.S. Trademark Registration Nos. 1, 588, 960; 3, 258, 103; 4, 062, 112; and 4, 065, 482, and (d) the appearance of Converse's "Star in Circle" logos, including U.S. Trademark Registration Nos. 1, 789, 476 and 3, 437, 967. Converse's federally registered and common law trademark rights in these designs and/or logos are collectively hereafter referred to as the "Converse Marks."
4. The Dun Huang Defendants admit that the Converse Marks are well known, famous, and associated with Converse, and that the goodwill appurtenant thereto belongs exclusively to Converse.
5. The Dun Huang Defendants admit that Converse owns all right, title, and interest in and to the valid and enforceable U.S. Design Patent Nos. D555, 332; D618, 897; and D619, 797, collectively hereafter referred to as the "Converse Patents."
6. The Dun Huang Defendants admit that NIKE owns all right, title, and interest in and to the valid and enforceable U.S. Design Patent Nos. D398, 762; D498, 912; D504, 562; D511, 884; D512, 214; D529, 273; D530, 904; and D531, 396, collectively hereafter referred to as the "NIKE Patents."
7. The Dun Huang Defendants admit that Dun Huang and King-Air's promotion of, advertising of, offers to sell, sales, distribution and/or importation of products in connection with the Converse Marks or colorable imitations thereof, and/or of shoes bearing a design of the Converse Patents or a substantially similar design, and/or bearing a design of the NIKE Patents or a substantially similar design (collectively hereafter referred to as the "Infringing Footwear"): (a) is likely to cause confusion, mistake, or to deceive as to the affiliation, connection, or association of Dun Huang and King-Air with Converse, or as to the source, origin, sponsorship, or approval of Dun Huang and King-Air's products by Converse, dilutes the distinctiveness of the Converse Marks, and constitutes false designations of origin, (b) infringes the Converse Patents, and/or (c) infringes the NIKE Patents, respectively.
8. The Dun Huang Defendants admit that their actions constitute unfair competition.
9. The Dun Huang Defendants and their respective subsidiaries, parents, affiliates, agents, licensees, successors, and assigns and all persons and entities in active concert or participation with them, are permanently enjoined and prohibited from:
a. Ordering, marketing, offering to sell, selling, importing and/or distributing - whether directly or indirectly - (i) Infringing Footwear, (ii) products bearing the Converse Marks, including all elements and confusingly similar variations of the Converse Marks, (iii) products bearing the design of one or more of the Converse Patents, (iv) products bearing the design of one or more of the NIKE Patents, or (v) colorable imitations of any of the foregoing items;
b. Using - whether directly or indirectly - any of the Converse Marks - including all elements, colorable imitations, and confusingly similar variations of the Converse Marks - in connection with marketing, offering to sell, selling, importing or distributing footwear, apparel, or accessories worldwide;
c. Aiding, assisting or abetting any other party in doing any act prohibited by sub-paragraphs (a) through (b) above.
10. The Dun Huang Defendants shall immediately and permanently remove all references to and depictions of the Infringing Footwear as well as all references to and depictions of the Converse Marks - including all elements, colorable imitations, and confusingly similar variations of the Converse Marks - from any businesses or Internet website(s), email(s), or other electronic material(s) under their control.
11. The Dun Huang Defendants shall destroy any and all Infringing Footwear that is returned to them from anyone for any reason.
12. If the Dun Huang Defendants violate any of the provisions provided above, NIKE and/or Converse shall be entitled to: (a) bring a lawsuit against any or all of the Dun Huang Defendants and collect damages and/or profits for all violations of the Converse Marks, Converse Patents, and/or NIKE Patents; (b) secure preliminary and permanent injunctions enjoining the Dun Huang Defendants' violations without the need to post bond, (c) collect liquidated damages in the amount of no less than $15.00 per article of Infringing Footwear product made, promoted, advertised, offered for sale, sold, or imported, as compensation and not as a penalty, it being understood that the damage caused by such a breach would be difficult to determine; and/or (d) payment of NIKE and/or Converse's costs and attorneys' fees resulting from NIKE and/or Converse's enforcement of these provisions.
13. Except as provided herein, each party shall bear its own costs and attorney fees.
14. This Court shall retain jurisdiction over the parties for the purpose of enforcing the terms of this Consent Judgment and Permanent Injunction.
15. Judgment is hereby entered in favor of Plaintiffs on all counts of their Complaint as to Dun Huang and King-Air.
16. Judgment is hereby entered in favor of Plaintiffs on their counts of unfair competition under 15 U.S.C. § 1125 and unfair competition under the California Business & Professions Code §§ 17200 et seq. as to J. Liu and Wu. The remaining claims of the Plaintiffs' Complaint as to J. Liu and Wu are dismissed with prejudice.
17. This Order represents a final adjudication of all claims, counterclaims, and defenses that were, or could have been, brought between Plaintiffs and the Dun Huang Defendants in this case. This Order is intended to be final and shall bind Plaintiffs and the Dun Huang Defendants, and their affiliates and successors on all issues that were or could have been litigated in this proceeding and that no appeal shall be taken here from.