UL LLC v. Gangsong Group Corp. et al

Filing 80

CONSENT DECREE AND PERMANENT INJUNCTION AS TO DEFENDANTS GANGSONG GROUP CORP., FLYING MEDICAL USA LLC, LOGISTIC PUBLIC WAREHOUSE, AND THOMAS SOON CHIAH by Judge Dale S. Fischer (SEE ORDER FOR SPECIFICS) (bp)

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UNITED STATES DISTRICT COURT

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FOR THE CENTRAL DISTRICT OF CALIFORNIA

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Plaintiff,

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Case No.: 2:17-CV-08166 DSF

UL LLC,

v.
Gangsong Group Corp., a California
corporation; Flying Medical USA LLC, a
California company; Logistic Public
Warehouse, a California company; Thomas
Soon Chiah, an individual; Shenzhen Kebe
Technology Co. Ltd., a foreign company;
Jing Hua Zhou, an individual; Shenzhen
Leidisi Electronics Technology Co., Ltd., a
foreign company; TRC International Corp.,
a California corporation; Sum Fortune
International Group, a California
corporation; Defang USA, LLC, a
California company; Sun Defang, an
individual; ManSeeManWant LLC, an
Illinois company; James Ellenberg, an
individual; and John Does 1-10,
individuals,

CONSENT DECREE AND
PERMANENT INJUNCTION AS TO
DEFENDANTS GANGSONG GROUP
CORP., FLYING MEDICAL USA LLC,
LOGISTIC PUBLIC WAREHOUSE,
AND THOMAS SOON CHIAH

Defendants.

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CONSENT DECREE AND PERMANENT INJUNCTION
CHI 69743844v1

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Plaintiff UL LLC (“UL”), and Defendants Gangsong Group Corporation a/k/a

2 Logistic Public Warehouse, Flying Medical USA LLC, and Thomas Soon Chiah,
3 (collectively the “Gangsong Defendants), through their respective counsel of record, have
4 agreed to enter into a stipulated Consent Decree and Permanent Injunction in conjunction
5 with their Settlement Agreement.
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This order is made with reference to the following facts, which the Gangsong

7 Defendants admit:
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1.

UL asserts it is the owner of the renowned UL-in-a-circle certification mark,

9 and variations thereof, in the United States and abroad, including UL® (stylized) (Reg.
10 No. 782,589), UL® (stylized) (Reg. No. 2,391,140), UL® (Reg. No. 4,201,014), and UL
11 CERTIFIED ® (stylized) (Reg. No. 4,283,962), among other trademark registrations. UL
12 asserts its UL Marks are valid, famous, incontestable, and enforceable.
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2.

The Gangsong Defendants leased 1,500 square feet of the Logistic Public

14 Warehouse to Defendant Shenzhen Kebe Technology Co. Ltd. (“Kebe”) starting on April
15 30, 2017. The Gangsong Defendants were informed by Kebe that Kebe was going to store
16 hoverboards at the warehouse. UL asserted in the Action that these hoverboards, many of
17 which were marked with counterfeit labels bearing the UL Certification Mark, were falsely
18 marketed and sold to U.S. consumers as being certified by UL when they were not. The
19 Gangsong Defendants knew that hoverboards needed to comply with safety standards
20 governing self-balancing scooters (aka “hoverboards.”)

The Gangsong Defendants

21 provided “pick and pack” services concerning certain of the orders of hoverboards for
22 Defendants Kebe and Shenzhen Leidisi Electronics Technology Co., Ltd. As one example,
23 the Gangsong Defendants coordinated shipping/logistical services with respect to various
24 hoverboards to Defendants Ellenberg and ManSeeManWant.
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3.

On September 18, 2017, the Los Angeles County Sheriff’s Department

26 conducted a raid of the Logistic Public Warehouse located at 10001 Pioneer Blvd., Santa
27 Fe Springs, California 90670.

The Sheriff’s Department seized approximately 2,500

28 hoverboards, many of which were marked with counterfeit labels bearing UL Certification

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1 Marks and 2,325 counterfeit UL holographic labels bearing the UL Certification Mark.
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4.

On November 22, 2017, the Court entered a Stipulated Preliminary Injunction

3 as to the Gangsong Defendants. (Dkt. No. 38.) The parties have now entered into a
4 settlement agreement, and as part of that settlement agreement have stipulated to this
5 Consent Decree and Permanent Injunction.
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It is hereby ORDERED, pursuant to Federal Rule of Civil Procedure 65, that the

7 Gangsong Defendants, and each of them, and their respective officers, agents, servants,
8 employees, and attorneys, and all others in active concert or participation therewith, are
9 hereby enjoined and restrained from:
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(i)

using any reproduction, counterfeit, copy, or colorable imitation of the UL’s

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Marks, including but not limited to its famous certification mark, in

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connection with the manufacture, importation, sale, offering for sale, or

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distribution of goods in the United States, which goods in fact are not certified

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by UL or are not genuine UL certified products, which such use is likely to

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cause confusion, or to cause mistake, or to deceive;

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(ii)

committing any other acts reasonably calculated to cause purchasers to

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believe that Defendants’ products are authorized or certified by UL, when in

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fact such products are not authorized or certified by UL;

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(iii)

approved, or authorized by UL;

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(iv)

making, having made, importing, distributing, or offering for sale any
hoverboards which are not certified by UL; and

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passing off any goods that are not authorized by UL as being certified,

(v)

assisting, aiding, or abetting any other person or business entity in engaging

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in or performing any of the activities referred to in the above paragraphs (i)

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through (v), inclusive.

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Nothing in the Order shall prohibit the Gangsong Defendants, or any of their

27 officers, agents, servants, employees, and those persons in active concert or participation
28 with Defendants, from selling or offering to sell products bearing genuine UL Marks.

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IT IS FURTHER ORDERED that, if Gangsong Defendants continue to sell or

2 distribute any items bearing UL certification marks, UL may perform inspections, during
3 the Gangsong Defendants’ business hours, of Gangsong Defendants’ entire inventory, and
4 to take possession of any and all goods bearing counterfeit or unauthorized imitations of
5 any of the UL Marks.

The inspections may be carried out by UL personnel, or by

6 investigators retained by UL. UL shall have the right to audit all of Gangsong Defendants’
7 purchases of UL certified goods. Gangsong Defendants shall maintain in good order all of
8 their records reflecting purchases of all UL certified goods. Upon an audit being initiated,
9 the Gangsong Defendants shall cooperate with UL by making available for copying and
10 inspection all documents that could reflect suppliers of, purchases of, and/or payments for
11 any UL certified goods. Any documents obtained from Gangsong Defendants for the
12 purposes of copying shall be returned within two (2) business days. Inspections and audits
13 under this paragraph shall be limited to two (2) per year, until the Settlement Payment is
14 paid at which time such rights shall terminate.
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IT IS FURTHER ORDERED that the Court will retain jurisdiction of this action

16 for purposes of enforcement of this Consent Decree and Permanent Injunction, and of the
17 parties’ settlement agreement, including the payment terms of the parties’ settlement
18 agreement.
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IT IS SO ORDERED.
DATED: December 6, 2018
Honorable Dale S. Fischer
UNITED STATES DISTRICT JUDGE

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