Levi Strauss & Co. v. Blue in Green, LLC et al, No. 3:2016cv07011 - Document 67 (N.D. Cal. 2018)
Court Description: ORDER GRANTING ENTRY OF DEFAULT JUDGMENT AND PERMANENT INJUNCTION by Judge William H. Orrick re: 62 Motion for Default Judgment. (jmdS, COURT STAFF) (Filed on 8/17/2018)
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1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 LEVI STRAUSS & CO., Plaintiff, 8 v. 9 10 BLUE IN GREEN, LLC, et al., ORDER GRANTING ENTRY OF DEFAULT JUDGMENT AND PERMANENT INJUNCTION Defendants. 11 United States District Court Northern District of California Case No. 16-cv-07011-WHO Plaintiff’s motion for entry of default judgment was properly noticed and served and was 12 13 heard on July 18, 2018, at 2:00pm. Having reviewed the record, including the Supplemental 14 Responses and revised declaration, I GRANT plaintiff’s motion for entry of default judgment and 15 enter a judgment and permanent injunction against defaulting defendant Full Count Co., Ltd. as 16 follows: 17 I. SUMMARY OF THE COMPLAINT 18 Plaintiff Levi Strauss & Co. (“LS&Co.”) has filed a Complaint alleging trademark 19 infringement, dilution, and unfair competition under federal and California law against Full Count 20 Co., Ltd. (“Defendant” or “Full Count”). LS&Co. also sued a retailer of Full Count products, 21 Blue in Green, LLC, against whom judgment has been entered earlier. (Docket No. 37.) LS&Co. 22 alleges that Full Count has imported, promoted, advertised, distributed, offered, and sold clothing 23 products, including jeans and other apparel, that violate LS&Co.’s rights in a number of its 24 federally registered trademarks, and violates this Court’s 2009 Final Judgment and Permanent 25 Injunction, issued on October 19, 2009, in Case No. 4:07-cv-00245- PJH (the “2009 Injunction”). 26 LS&Co. further alleges that many of the allegedly infringing and contemptuous products that Full 27 Count has manufactured, sourced, marketed, offered for sale and/or sold display designs that are 28 confusingly similar to LS&Co.’s Arcuate Stitching Design Trademark (the “Arcuate trademark”), 1 Tab Device Trademark (the “Tab trademark”), and Shirt Tab Device Trademark (the “Shirt Tab 2 trademark”). Defendant has failed to respond to LS&Co.’s First Amended Complaint and default 3 was entered on August 3, 2017. (Docket No. 47.) 4 II. 5 FINDINGS OF FACT AND CONCLUSIONS OF LAW, BASED ON FULL COUNT’S DEFAULT 1. LS&Co. has federal trademark registrations for its Arcuate, Tab and Shirt Tab 6 trademarks. LS&Co. continuously has used these trademarks, some for well over a century, to 7 distinguish its products. (FAC ¶¶ 9, 11, 15, 20.) 8 2. The Arcuate trademark consists of a distinctive pocket stitching design that is the 9 oldest known apparel trademark in the United States still in continuous use. (FAC ¶¶ 11-13 & Ex. 10 E.) LS&Co. has used the Arcuate trademark continuously since 1873 in interstate commerce on 11 United States District Court Northern District of California jeans and later used it on other products, as well, and owns a number of federal registrations for 12 the mark. (FAC ¶¶ 11-12.) 13 3. The Arcuate trademark is valid and protectable, and exclusively owned by LS&Co. 14 (FAC ¶¶ 12-13.) The Arcuate trademark is famous and recognized around the world and 15 throughout the United States by consumers as signifying authentic, high quality LEVI’S® 16 products. (FAC ¶ 13.) 17 4. The Arcuate trademark became famous prior to Defendant’s conduct that is the 18 subject of the FAC. (FAC ¶ 13.) 19 5. LS&Co. also owns the famous Tab trademark, which consists of a textile marker or 20 other material sewn into one of the regular structural seams of the garment. LS&Co. has used the 21 Tab trademark continuously since 1936 in interstate commerce on clothing products, and owns a 22 number of federal registrations for the mark. (FAC ¶¶ 15-18 & Ex. G.) 23 6. The Tab trademark is valid and protectable, and exclusively owned by LS&Co. 24 (FAC ¶¶ 17-18.) The Tab trademark is famous and recognized around the world and throughout 25 the United States by consumers as signifying authentic, high quality LEVI’S® garments, including 26 jeans and pants. (FAC ¶ 18.) 27 6. The Tab trademark became famous prior to Defendant’s conduct that is the subject 28 2 1 of the FAC. (FAC ¶ 18.) 8. 2 3 marker or other material sewn into the exterior of a shirt pocket. LS&Co. has used the Shirt Tab 4 trademark continuously since 1969 in interstate commerce and on clothing products, and owns a 5 number of federal registrations for the mark. (FAC ¶ 20-22 & Ex. I.) 9. 6 The Shirt Tab trademark is valid and protectable, and exclusively owned by 7 LS&Co. (FAC ¶¶ 21-22.) The Shirt Tab trademark is famous and recognized around the world 8 and through-out the United States by consumers as signifying authentic, high quality LEVI’S® 9 products. (FAC ¶ 22.) 10. 10 11 United States District Court Northern District of California LS&Co. also owns the famous Shirt Tab trademark, which consists of a textile The Shirt Tab trademark became famous prior to Defendant’s conduct that is the subject of the FAC. (FAC ¶ 22.) 11. 12 Defendant, Full Count, with knowledge of LS&Co.’s trademarks, has 13 manufactured, promoted and sold garments under the brand “FULL COUNT” that bear designs 14 that are likely to cause confusion regarding the source of the products, or of an affiliation or 15 sponsorship with LS&Co. or its products or the Arcuate and Tab trademarks, as shown in Exhibit 16 P to the FAC. (FAC ¶¶ 40-41 & Ex. P.) The Full Count garments bear designs that are 17 confusingly similar to LS&Co.’s marks. They compete with LS&Co.’s products, and are likely to 18 erode substantial goodwill that LS&Co. has accumulated in its distinctive trademarks over many 19 years. Full Count’s sale of these garments occurred after, and without regard for, an injunction 20 against Full Count in a prior action for similar infringements. See Levi Strauss & Co. vs. Toyo 21 Enterprise Co., Ltd., et al., U.S.D.C., N.D. Cal., Case No. 4:07-cv- 00245-PJH (Docket No. 8). 12. 22 Once a defendant has defaulted, the well-pleaded allegations of the complaint are 23 accepted as true, and the defendant’s liability as framed by the complaint is established. See 24 Adriana Int’l Corp. v. Thoeren, 913 F.2d 1406, 1414 (9th Cir. 1990), cert. denied, 498 U.S. 1109 25 (1991). 26 13. The Lanham Act prohibits the unauthorized use in commerce of “any reproduction, 27 counterfeit, copy, or colorable imitation of a registered mark” where such use is likely to cause 28 confusion, to cause mistake, or to deceive. 15 U.S.C. § 1114(1)(a). To prevail on its trademark 3 1 infringement claims, LS&Co. must establish that (1) it owns valid and protectable trademarks, and 2 (2) defendants’ use of similar designs creates a likelihood of confusion as to the origin or sponsor- 3 ship of defendants’ goods. See Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352, 1354 (9th 4 Cir. 1985). 5 14. 6 any time after the owner’s mark has become famous, [it] commences use of a mark or trade name 7 in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous 8 mark, regardless of the presence or absence of actual or likely confusion, of competition, or of 9 actual economic injury.” 15 U.S.C. §1125(c). 10 United States District Court Northern District of California The Lanham Act also renders Defendant liable for diluting LS&Co.’s mark if, “at 15. Full Count’s challenged products, examples of which are depicted in Exhibit P to 11 the FAC according to the relevant marks, infringe and dilute LS&Co.’s Arcuate and Tab 12 trademarks. 13 16. Full Count has received a minimum of $112,482.53 in revenue attributable to sales 14 of these infringing and diluting products following entry of the 2009 Injunction. See 15 Supplemental Declarations of Yuji Fukushima and Gordon Heffner. No evidence of costs to 16 produce these revenues appears in the record. 17 17. Full Count acted willfully and in disregard of LS&Co.’s rights such that there is no 18 equitable basis for limiting LS&Co.’s recovery of Full Count’s profits and establishing that this is 19 an exceptional case for purposes of LS&Co.’s entitlement to attorneys’ fees. Nat’l Grange of 20 Order of Patrons of Husbandry v. California State Grange, 715 F. App’x 747, 748 (9th Cir. 2018) 21 (affirming finding of willfulness and exceptional case status where defendant in trademark 22 infringement action had violated prior permanent injunction). 23 18. The Lanham Act expressly authorizes courts to grant injunctions to remedy 24 violations of a trademark owner’s rights. 15 U.S.C. § 1116(a) (vesting the district court with the 25 “power to grant injunctions, according to principles of equity and upon such terms as the court 26 may deem reasonable, to prevent the violation of any right” of a trademark owner). “It is well 27 established that courts can issue injunctions as part of default judgments.” China Cent. Television 28 v. Create New Tech. (HK) Ltd., 2015 WL 12732432, at *19 (C.D. Cal. Dec. 7, 2015) (quoting 4 1 Sony Music Entm’t, Inc. v. Elias, No. CV 03–6387 DT (RCx), 2004 WL 141959, *3 (C. D. Cal. 2 Jan. 20, 2004)). 19. United States District Court Northern District of California 3 Full Count’s actions have caused and, unless enjoined, will cause LS&Co. 4 irreparable harm for which money damages are inadequate. (FAC ¶ 46.) A permanent injunction 5 is warranted where LS&Co. demonstrates (1) that it has suffered irreparable injury; (2) that there 6 is no adequate remedy at law; (3) “that, considering the balance of hardships between the plaintiff 7 and defendant, a remedy in equity is warranted”; and (4) that it is the public’s interest to issue the 8 injunction. 9 20. A permanent injunction is an appropriate remedy for the irreparable harm caused 10 by continuous and ongoing trademark infringement. See, e.g., Sennheiser Elec. Corp. v. Eichler, 11 2013 WL 3811775, at *10 (C.D. Cal. July 19, 2013); China Cent. Television, 2015 WL 12732432, 12 at *19; see also Century 21 Real Estate LLC v. RealtyComp.com, No. C-14-4774 EMC, 2015 WL 13 1009660, at *5 (N.D. Cal. Mar. 6, 2015) (granting a permanent injunction against a defaulting 14 defendant because the infringing activity persisted, and because defendant competed directly with 15 the plaintiff). 16 III. ORDER OF JUDGMENT 17 21. Good cause appearing, it is hereby ordered and adjudged as follows: 18 a. Defendant shall pay $112,482.53 in damages to LS&Co., plus $5,782.88 in 19 attorney’s fees and $100.00 in costs, totaling $118,365.41. 20 b. 21 Injunction, Full Count, its principals, agents, affiliates, employees, officers, directors, 22 servants, privies, successors, and assigns, and all persons acting in concert or participating 23 with it or under its control who receive actual notice of this Order, are hereby permanently 24 enjoined and restrained, directly or indirectly, from doing, authorizing or procuring any 25 persons to do any of the following until such time as this Order is dissolved or modified by 26 further Court order: Commencing as of the “So Ordered” date of this Judgment and Permanent 27 i. Manufacturing, licensing, selling, offering for sale, distributing, importing, 28 exporting, advertising, promoting, or displaying any garment that displays any of 5 United States District Court Northern District of California 1 the designs and/or designations illustrated in Exhibit P to the FAC or any other 2 designation and/or design that is as similar to the Arcuate, Tab, or Shirt Tab 3 trademarks as the designs shown in Exhibit P are to the identified trademarks 4 (hereinafter collectively the “Prohibited Designs and Designations”); 5 ii. 6 any of the Prohibited Designs and Designations; 7 iii. 8 ownership or control of assets associated with the production of goods under the 9 Full Count trademark, without disclosing and providing actual notice to the Applying, now or in the future, for the federal registration of trademarks for Licensing or assigning the Full Count trademark, or the assets or beneficial 10 licensee, buyer or assignee of such trademarks or assets; 11 iv. 12 seller located in the United States or its territories which, upon receiving notice of 13 this Injunction, returns products to Full Count bearing the Prohibited Designs and 14 Designations; 15 v. 16 any act prohibited by this paragraph. Refusing refunds to any retailer, wholesaler, jobber, distributor or other Assisting, aiding or abetting any person or entity engaging in or performing This Injunction shall apply throughout the world to the fullest extent of this Court’s 17 c. 18 jurisdiction. This is a final judgment as to all claims asserted against Defendant in this 19 action. 20 d. 21 necessary or proper for the construction or modification of this Judgment, the enforcement 22 thereof, and/or the punishment for any violations thereof. If LS&Co. commences an action 23 for enforcement of this Judgment, the prevailing party shall be awarded reasonable 24 attorneys’ fees and costs from the other party. 25 22. This Court shall retain jurisdiction for the purpose of making any further orders For the purpose of any future proceeding to enforce the terms of this Judgment, 26 service by certified or registered mail upon a party or their counsel of record at their last known 27 address shall be deemed adequate notice for each party. 28 23. Full Count’s obligations under this Judgment and Permanent Injunction are 6 1 additional to—and do not displace, supersede or preempt—the obligations of Full Count, its 2 affiliates, subsidiaries, assignees, licensees, successors, and all other entities under its control, 3 under any past judgment or injunction, including the 2009 Injunction. 4 5 6 IT IS SO ORDERED. Dated: August 17, 2018 7 8 William H. Orrick United States District Judge 9 10 United States District Court Northern District of California 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 7
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