UL LLC v. Gangsong Group Corp. et al

Filing 80


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NO JS-6 1 2 3 4 5 6 7 8 9 UNITED STATES DISTRICT COURT 10 FOR THE CENTRAL DISTRICT OF CALIFORNIA 11 12 Plaintiff, 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 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. 28 CONSENT DECREE AND PERMANENT INJUNCTION CHI 69743844v1 1 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. 6 This order is made with reference to the following facts, which the Gangsong 7 Defendants admit: 8 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. 13 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. 25 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 1 CONSENT DECREE AND PERMANENT INJUNCTION CHI 69743844v1 1 Marks and 2,325 counterfeit UL holographic labels bearing the UL Certification Mark. 2 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. 6 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: 10 (i) using any reproduction, counterfeit, copy, or colorable imitation of the UL’s 11 Marks, including but not limited to its famous certification mark, in 12 connection with the manufacture, importation, sale, offering for sale, or 13 distribution of goods in the United States, which goods in fact are not certified 14 by UL or are not genuine UL certified products, which such use is likely to 15 cause confusion, or to cause mistake, or to deceive; 16 (ii) committing any other acts reasonably calculated to cause purchasers to 17 believe that Defendants’ products are authorized or certified by UL, when in 18 fact such products are not authorized or certified by UL; 19 (iii) approved, or authorized by UL; 20 21 (iv) making, having made, importing, distributing, or offering for sale any hoverboards which are not certified by UL; and 22 23 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 24 in or performing any of the activities referred to in the above paragraphs (i) 25 through (v), inclusive. 26 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. 2 CONSENT DECREE AND PERMANENT INJUNCTION CHI 69743844v1 1 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. 15 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. 19 20 IT IS SO ORDERED. DATED: December 6, 2018 Honorable Dale S. Fischer UNITED STATES DISTRICT JUDGE 21 22 23 24 25 26 27 28 3 CONSENT DECREE AND PERMANENT INJUNCTION CHI 69743844v1

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