Opinion
Brent H. Blakely, Cindy Chan, BLAKELY LAW GROUP, Manhattan Beach, California, Attorneys for Plaintiff Chrome Hearts LLC.
ORDER RE PERMANENT INJUNCTION AND VOLUNTARY DISMISSAL OF DEFENDANT PAYLESS SHOESOURCE WORLDWIDE, INC. WITH PREJUDICE
S. JAMES OTERO, Magistrate Judge.
WHEREAS, Plaintiff Chrome Hearts LLC ("Chrome Hearts") having filed a Complaint in this action charging Defendant Payless ShoeSource Worldwide, Inc. ("Payless") with Trademark Infringement, False Designations of Origin, and Unfair Competition under federal, state, and common law arising from Payless's manufacture, production, distribution, promotion, advertisement, offering for sale, and/or sale of products bearing a mark that Chrome Hearts alleges to be substantially indistinguishable/nearly identical to one or more of the Chrome Hearts Marks; and
WHEREAS, Chrome Hearts is the owner of the word mark "CHROME HEARTS" and various composite trademarks comprising said mark and assorted design components, including those shown below (hereinafter collectively the "Chrome Hearts Marks"); and
Mark U.S. Registration Goods/Services No(s). 3, 385, 449 Jewelry, namely, bracelets, rings, watch bands, necklaces and lighters made of precious metals 3, 365, 408 Retail store services in the field of jewelry, clothing, handbags, CH Plus Mark eyewear, home furnishings, bed linen and toys. 3, 605, 860 Jewelry, namely, rings, earrings, pendants, necklaces, bracelets, cuff bracelets, cuff links, watch bracelets and key rings made of precious metals CH Cross Mark
WHEREAS, Payless has denied Chrome Hearts' claims and asserted various affirmative defenses thereto, and has further asserted counterclaims seeking declarations of non-infringement and invalidity of one or more of the Chrome Hearts Marks; and
WHEREAS, the parties herein having simultaneously entered into a Settlement Agreement and Mutual Release; and
WHEREAS, the parties hereto desiring to fully settle all of the claims in this action among the parties to this Final Judgment; and
WHEREAS, Payless has agreed to consent to the below terms of a permanent injunction without any admission of wrongdoing, IT IS HEREBY ORDERED that:
1. Payless and its agents, servants, employees and all persons in active concert and participation with it who receive actual notice of this Consent Judgment are hereby permanently restrained and enjoined from:
(a) Manufacturing, purchasing, producing, distributing, circulating, selling, offering for sale, importing, exporting, advertising, promoting, displaying, shipping, marketing and/or incorporating in advertising or marketing the Disputed Products shown below;
(b) Delivering, holding for sale, returning, transferring or otherwise moving, storing or disposing in any manner the Disputed Products except as otherwise provided in the parties' confidential written Settlement Agreement;
(c) Knowingly assisting, aiding or attempting to assist or aid any other person or entity in performing any of the prohibited activities referred to in Paragraphs 2(a) to 2(b) above.
WHEREAS, Chrome Hearts and Payless have further agreed as follows, IT IS FURTHER ORDERED that:
2. This Court has jurisdiction over the parties to this Final Consent Judgment and has jurisdiction over the subject matter hereof pursuant to 15 U.S.C. § 1121.
3. Chrome Hearts and Payless shall bear their own costs and attorneys' fees associated with this action.
4. Chrome Hearts' claims against Payless are hereby dismissed with prejudice, however, such dismissal shall not have preclusive effect on those who are not a party to the Stipulation or who are not specifically released in the parties' written settlement agreement, all claims against whom Chrome Hearts expressly reserve. Further, Payless expressly reserves its right to assert any claims it has or may have against Defendant L & J Accessories, LLC, its affiliates, or insurers.
5. Payless's counterclaims against Chrome Hearts are also dismissed with prejudice.
6. The execution of this Consent Judgment shall serve to bind and obligate the parties hereto.
7. The jurisdiction of this Court is retained for the purpose of making any further orders necessary or proper for the construction or modification of this Consent Judgment, the enforcement thereof and the punishment of any violations thereof. Except as otherwise provided herein, this action is fully resolved with prejudice as to Defendant Payless ShoeSource Worldwide, Inc. only.
IT IS SO ORDERED.