SunEarth Inc. et al v. Sun Earth Solar Power Co., Ltd. et al

Filing 106

ORDER GRANTING IN PART, AND TAKING UNDER SUBMISSION IN PART, PLAINTIFFS 90 MOTION FOR CIVIL CONTEMPT. Signed by Judge Claudia Wilken on 6/20/2012. (ndr, COURT STAFF) (Filed on 6/20/2012)

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IN THE UNITED STATES DISTRICT COURT

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FOR THE NORTHERN DISTRICT OF CALIFORNIA

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SUNEARTH, INC.; and THE SOLARAY
CORPORATION,

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United States District Court
For the Northern District of California

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ORDER GRANTING IN
PART, AND TAKING
UNDER SUBMISSION
IN PART,
PLAINTIFFS’ MOTION
FOR CIVIL CONTEMPT
(Docket No. 90)

Plaintiffs,

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No. C 11-4991 CW

v.
SUN EARTH SOLAR POWER CO., LTD.;
NBSOLAR USA, INC.; and DOES 1-10,
Defendants.
________________________________/

Plaintiffs SunEarth, Inc. and The Solaray Corporation move to

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hold Defendants Sun Earth Solar Power Company, Limited (SESP) and

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NBSolar USA, Inc. in civil contempt for violation of the

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preliminary injunction entered in this case.

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Plaintiffs’ motion.

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the parties in their papers and at the hearing, the Court grants

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Plaintiffs’ motion in part and takes their request for attorneys’

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fees under submission.

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Defendants oppose

Having considered the arguments presented by

BACKGROUND
On October 11, 2011, Plaintiffs initiated this trade name and

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trademark infringement action, alleging that Defendants have

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misappropriated and infringed upon Plaintiffs’ “Sun Earth”

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trademark, service mark and trade name.

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On February 2, 2012, the Court granted Plaintiffs’ motion for

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a preliminary injunction, generally enjoining Defendants from

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using the “Sun Earth” name and mark within the United States

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during the pendency of this action.

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initial preliminary injunction went into effect on February 17,

Docket Nos. 60, 63.

The

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2012 upon Plaintiffs’ payment of a $5,000 bond.

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At the time, instead of enjoining Defendants’ use of the Sun-

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earth.com, SunEarthpower.com, and SunEarthpower.net domain names,

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the Court ordered the parties to attempt to reach an agreement on

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this issue, or to move for a modification to address it, along

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with one other issue.

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Docket No. 67.

Docket No. 63, 37-38.

On February 24, 2012, Defendants filed a motion to amend the

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preliminary injunction, among other things, to add terms

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addressing the use of the domain names.

United States District Court
For the Northern District of California

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Docket No. 69.

On March 6, 2012, Plaintiffs filed a motion to hold

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Defendants in civil contempt for continuing to use the “Sun Earth”

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name and mark on its websites.

Docket No. 77.

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On March 13, 2012, the Court granted in part Defendants’

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motion to modify the initial preliminary injunction and entered a

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modified preliminary injunction, which took effect immediately.

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Docket Nos. 79, 80.

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in part, that Defendants were enjoined

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The modified preliminary injunction provided,

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From using or continuing to use the words “SUN
EARTH” (with or without a space or capitalization or
hyphen), either alone or in conjunction with any other
words or symbols, or any phonetically or visually
similar words or symbols in any combination, as a
trademark, service mark or trade name within the United
States, its territories or possessions (the
“Territory”), provided that:
A.
for goods branded as NBSolar rather than Sun
Earth, Defendants shall be permitted to identify SESP as
the manufacturer, importer or seller of the goods to the
minimum extent necessary as required by law or ordinary
business customs to operate within the United States
under the NBSolar name; and
B.
for equipment purchased by Defendants from
sellers within the United States for export to SESP in
China, Defendants shall be permitted to identify SESP as
the buyer of the equipment, to the minimum extent
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United States District Court
For the Northern District of California

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necessary as required by law or ordinary business
customs.
C.
Under subsections A and B above, wherever
possible, Defendants shall identify themselves as
NBSolar and/or an acronym, such as SESP, that avoids the
use of the words “SUN EARTH” (with or without a space or
capitalization or hyphen). Where Defendants do use the
words “SUN EARTH” under the terms of these subsections,
Defendants shall not display the words “SUN EARTH” in a
distinctive manner of presentation that makes them stand
out in any way from other words on the relevant document
and shall not use the “Sun Earth” logo.
2.
From using or continuing to use the words “SUN
EARTH” (with or without a space or capitalization or
hyphen), either alone or in conjunction with any other
words or symbols, or any phonetically or visually
similar words or symbols in any combination, in, or in
connection with, any marketing or advertising or any
other promotional materials viewable within the
Territory;
3.
From using or continuing to use the words “SUN
EARTH” (with or without a space or capitalization or
hyphen), either alone or in conjunction with any other
words, as an [sic] keyword or other triggering mechanism
to generate any internet advertising viewable within the
Territory; and
4.
From importing into the Territory any goods upon
which the words “SUN EARTH” (with or without a space or
capitalization or hyphen), either alone or in
conjunction with any other words or symbols, or any
phonetically or visually similar words or symbols in any
combination, appears or are shown on the packaging for
such goods.
Modified Preliminary Injunction, Docket No. 80, 1-3.

The

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injunction further required Defendants to take certain affirmative
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steps, including that
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7.
Defendants shall, within thirty days of the date of
this Order:
A.
Take reasonable measures to ensure that
visitors from within the United States who visit SunEarth.com, SunEarthPower.com, and SunEarthPower.net are
presented with a webpage that: (1) allows them to choose
to continue to either the nbsolar.com home webpage or
the sunearthinc.com home webpage; and (2) contains
language clarifying that the companies associated with
those webpages are not affiliated with one another;
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B.
Replace the Sun-Earth logo which currently
appears at the top of each webpage on the nbsolar.com
domain with the nbsolar mark and logo;
C.
Add to the nbsolar.com home webpage the
following explanation, or a similar variation thereof:
“NBSolar USA, Inc. has no affiliation with SunEarth Inc.
or The Solaray Corporation. NBSolar USA, Inc., is a
distributor within the United States of products
carrying the NBSolar brand, manufactured by Sun Earth
Solar Power Co., Ltd., of Ningbo, China. Outside of the
United States, Sun Earth Solar Power Co., Ltd. sells
products under the brand Sun-Earth. All sales in the
United States, however, use only the NBSolar brand.”;
and
D.
Remove all uses of “Sun Earth” from the
keyword metatags of the nbsolar.com domain.

United States District Court
For the Northern District of California

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. . .

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10. Defendants shall file with the Court and serve on
Plaintiffs, within thirty-five (35) days after the
effective date of the original Preliminary Injunction, a
report in writing and under oath, setting forth in
detail the manner and form in which Defendants have
complied.

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Id. at 3-4.
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On March 16, 2012, Plaintiffs withdrew their first motion for
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civil contempt.

Docket No. 82.

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On March 23, 2012, Defendants filed a report pursuant to
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paragraph ten of the modified preliminary injunction, stating
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Since the injunction has been in effect, Defendants
have:

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1. Not shipped to the United States any product on which
SUN EARTH appears;

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2. Not marketed any product for sale to United States
customers under the SUN EARTH brand;

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3. Not distributed any marketing, advertising, or other
promotional materials in the United States using SUN
EARTH;

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4. Removed all uses of SUN EARTH from the keyword
metatags of the nbsolar.com domain;
5. Taken steps so that United States visitors to the
Sun-Earth.com, SunEarthPower.com, and SunEarthPower.net
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United States District Court
For the Northern District of California

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websites are either blocked or redirected to a homepage
with the NBSolar logo and the statement “Nbsolar
products are manufactured by Sun Earth Solar Power Co.,
Ltd. of Ningbo, China. Outside of the United States,
Sun Earth Solar Power Co., Ltd. sells products under the
brand Sun-Earth. All sales in the United States,
however, use only the NBSolar brand. Nbsolar USA Inc.
is a distributor of nbsolar brand within the United
States.”; and
6. Replaced the SUN EARTH logo on the nbsolar.com domain
with the nbsolar mark and logo.
Docket No. 83, 2.
On April 24, 2012, Plaintiffs filed the instant motion asking
the Court to find Defendants in civil contempt for violating the
modified preliminary injunction.

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Docket No. 90.

LEGAL STANDARD

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A district court has the inherent authority to enforce

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compliance with its orders through a civil contempt proceeding.

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International Union, UMWA v. Bagwell, 512 U.S. 821, 827–28 (1994).

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A contempt sanction is considered civil if it “is remedial, and

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for the benefit of the complainant.”

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considered remedial if it either “coerce[s] the defendant into

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compliance with the court’s order, [or] ... compensate[s] the

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complainant for losses sustained.”

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Workers, 330 U.S. 258, 303–304 (1947).

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v. Execuair Corp., 953 F.2d 510, 517 (9th Cir. 1992).

Id.

A contempt fine is

United States v. United Mine
See also Whittaker Corp.

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“The standard for finding a party in civil contempt is well

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settled: The moving party has the burden of showing by clear and

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convincing evidence that the [non-moving party] violated a

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specific and definite order of the court.”

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Media, LLC, 179 F.3d 1228, 1239 (9th Cir. 1999) (quoting Stone v.

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City & County of San Francisco, 968 F.2d 850, 856 n.9 (9th Cir.

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1992)).

FTC v. Affordable

The contempt “need not be willful, and there is no good
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faith exception to the requirement of obedience to a court order.”

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In re Dual-Deck Video Cassette Recorder Antitrust Litig., 10 F.3d

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693, 695 (9th Cir. 1993).

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contempt if his action appears to be based on a good faith and

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reasonable interpretation of the court’s order.”

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formatting and quotations omitted).

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with the court order is a defense to civil contempt, and is not

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vitiated by ‘a few technical violations’ where every reasonable

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effort has been made to comply.”

“But a person should not be held in

Id. (internal

“‘Substantial compliance’

Id. (citing Vertex Distrib.,

United States District Court
For the Northern District of California

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Inc. v. Falcon Foam Plastics, Inc., 689 F.2d 885, 891 (9th Cir.

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1982)).

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Thus, the Court may grant a motion for an order of contempt

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if it finds that Defendants (1) violated the court order,

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(2) beyond substantial compliance, (3) not based on a good faith

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and reasonable interpretation of the order, (4) by clear and

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convincing evidence.

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burden, the burden “shifts to the contemnors to demonstrate why

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they were unable to comply” with the court order.

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at 856 n.9 (citing Donovan v. Mazzola, 716 F.2d 1226, 1240 (9th

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Cir. 1983)).

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comply.”

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(9th Cir. 1976)).

Id.

Once the moving party has met its

Stone, 968 F.2d

“They must show they took every reasonable step to

Id. (citing Sekaquaptewa v. MacDonald, 544 F.2d 396, 406

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When a court imposes civil sanctions, “[g]enerally, the

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minimum sanction necessary to obtain compliance is to be imposed.”

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Id.

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appropriate sanctions.”

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695–96 (9th Cir. 2010) (citing Richmark Corp. v. Timber Falling

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Consultants, 959 F.2d 1468, 1473 (9th Cir. 1992)).

However, “the district court retains discretion to establish
United States v. Bright, 596 F.3d 683,

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“Given the

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remedial purpose of the sanction, a finding of contempt must be

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accompanied by conditions by which contempt may be purged, spelled

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out in either the original order or the contempt order.”

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Id.

DISCUSSION

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Plaintiffs contend that Defendants are in violation of the

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modified preliminary injunction in three ways.

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that Defendants have not modified their websites to comply with

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the terms of the injunction.

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have continued to use the infringing name and mark to advertise in

First, they argue

Second, they allege that Defendants

United States District Court
For the Northern District of California

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a major solar power industry publication that is widely

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distributed within the United States.

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Defendants’ March 23, 2012 compliance report failed to comply with

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the requirements of the injunction.

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I.

Finally, they assert that

Defendants’ websites

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Plaintiffs offer evidence that Defendants violated the

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modified preliminary injunction in multiple ways related to their

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websites.

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2012, more than thirty days after the Court entered the modified

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preliminary injunction, Defendants had not made the changes to the

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Sun-Earth.com, SunEarthPower.com, and SunEarthPower.net websites

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required by paragraph seven of the modified preliminary

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injunction.

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not presented with a webpage allowing them to choose to continue

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to either the nbsolar.com home webpage--Defendants’ United States

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website--or the sunearthinc.com home webpage--Plaintiffs’ website.

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Proffitt Decl. ¶ 3 (describing visit to each page on April 20,

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2012).

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the companies associated with those webpages are not affiliated

First, Plaintiffs offer evidence that, on April 20,

On that date, visitors within the United States were

The webpage also did not contain language clarifying that

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with one another.

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message stating, “No results found.”

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evidence that, as of April 23, 2012, Defendants’ webpages that had

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been hosted at these addresses appeared in the United States

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instead at Sun-Earth.com/web, SunEarthPower.com/web, and

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SunEarthPower.net/web, and continued prominently to display the

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“Sun Earth” mark, in violation of paragraphs one through three of

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the modified preliminary injunction.

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evidence of webpages as they appeared on April 23, 2012).

Id.

Instead, visitors were presented with a
Id.

Plaintiffs also provide

Id. at ¶¶ 5-8 (offering

United States District Court
For the Northern District of California

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Plaintiffs offer further evidence that, as of April 23, 2012, the

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title and metadata for the SunEarthPower.com/web page contained

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multiple uses of the term “Sun Earth.”

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engines typically use such data to determine a suitable response

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to a search query.

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evidence that the SunEarthPower.com/web website appeared on April

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23, 2012 within the first page of search results on the search

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engine Bing.com for the term “Sun-Earth.”

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Id.

Id. at ¶ 9.

Search

Finally, Plaintiffs have submitted

Id. at ¶ 4, Ex. A.

Defendants do not dispute the accuracy of Plaintiffs’

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evidence.

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their own actions and the violations identified by Plaintiffs.

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Defendants present evidence that, after the Court issued the

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modified preliminary injunction, they instructed the third-party

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information technology (IT) company that maintains their websites

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to “set up a choice webpage and take whatever technical measures

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were necessary to assure that United States visitors to

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http://www.sunearth.com, http://www.sunearthpower.com, and

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http://www.sunearthpower.net were redirected to the choice

Instead, they offer additional evidence to explain

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webpage.”

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unable to visit the Sun-Earth.com, SunEarthPower.com, and

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SunEarthPower.net webpages on April 20, because, shortly before

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April 12, 2012, which was thirty days from the date the Court

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entered the modified preliminary injunction, they discovered that

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“there were mistakes in how the IT company had done the job”--

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although they do not state what these mistakes were--and so they

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told the company to block all access to the websites from United

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States visitors until the problems were fixed.

Dong Decl. ¶ 6.1

They argue that Plaintiffs were

Dong Decl. ¶ 7;

United States District Court
For the Northern District of California

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Foster Decl. ¶ 3.

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the IT company that it had finished the work and unblocked access.

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Dong Decl. ¶ 8.

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SunEarthPower.com, and SunEarthPower.net webpages were properly

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offering a choice between the nbsolar.com and sunearthinc.com

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webpages.

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On or before April 24, Defendants were told by

By April 24, 2012, the Sun-Earth.com,

Id.; Rutt Decl. ¶ 2.

As to the Sun-Earth.com/web, SunEarthPower.com/web, and

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SunEarthPower.net/web pages, Defendants contend that these were

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not encompassed within a literal reading of the modified

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preliminary injunction, which refers only to Sun-Earth.com,

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SunEarthPower.com, and SunEarthPower.net in paragraph seven.

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at 7 (citing Dong Decl. ¶ 14).

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limited reading of the injunction, which clearly encompasses all

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subpages within those domain names.

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contained in the first several provisions of the injunction apply

Opp.

However, this is an unreasonably

Further, the prohibitions

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Defendants use the term “choice webpage” to refer to the
webpage that allows visitors to choose between Plaintiffs’
sunearthinc.com webpage and Defendants’ www.nbsolar.com webpage.
Dong Decl. ¶ 4.
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broadly to prohibit Defendants from using the “Sun Earth” mark in

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conjunction with all business within the United States, not just

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on particular websites at particular addresses.

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Defendants also contend that any possible violations by the

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use of the Sun-Earth.com/web, SunEarthPower.com/web and

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SunEarthPower.net/web pages were unintentional.

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speculate, without offering evidentiary support, that their IT

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company created the Sun-Earth.com/web, SunEarthPower.com/web, and

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SunEarthPower.net/web pages and directed attempts from outside the

Defendants

United States District Court
For the Northern District of California

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United States to contact the original homepages to these new

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pages, while directing attempts to contact the original homepages

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inside the United States to the choice webpage.

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evidence that they did not foresee that a United States user would

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reach the Sun-Earth.com/web, SunEarthPower.com/web, and

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SunEarthPower.net/web pages directly, instead of first going to

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the original homepages.

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Defendants also argue that they “were not aware of those pages’

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existence at those addresses,” implying that only the IT company

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knew of their existence.

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in support of this statement, it is not stated in the paragraph

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cited.

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did not know the sites existed at all contradicts their claim that

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they simultaneously thought that no one in the United States would

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try to access these sites, because to know enough to think the

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latter, it is necessary to know the former.

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explanation were credited, lack of willfulness is not a defense to

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a civil contempt finding.

Dong Decl. ¶¶ 12, 14.

Id.

See Dong Decl. ¶ 14.

They provide

In their brief,

While Defendants cite a declaration

However, Defendants’ claim that they

Further, even if this

See Dual-Deck, 10 F.3d at 695.

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Defendants also maintain that they promptly took steps to

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address the issue of the Sun-Earth.com/web, SunEarthPower.com/web,

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and SunEarthPower.net/web pages when they first learned of it

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through Plaintiffs’ filing of the instant motion.

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Defendants instructed their IT company to disable temporarily

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these pages while they ensured that visitors to these sites from

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the United States were presented with the choice page.

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¶ 13.

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¶ 4.

This has now been completed.

At that time,

Dong Decl.

Dong Decl. ¶ 13; Rutt Decl.

United States District Court
For the Northern District of California

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The Court finds that Plaintiffs have offered clear and

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convincing evidence that Defendants violated the court order, by

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not ensuring that the “choice webpage” was accessible more than

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thirty days after the order, maintaining the Sun-Earth.com/web,

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SunEarthPower.com/web, and SunEarthPower.net/web pages as

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accessible from within the United States with substantial use of

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the “Sun Earth” name and mark, and allowing those webpages to use

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keywords that include “Sun Earth” to trigger advertising within

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the United States.

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everything reasonably within their power to avoid these issues.

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For example, Defendants could have hired an IT company competent

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to perform the work, provided appropriate and clear instructions

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to the IT company to carry out their compliance with the

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injunction and required the IT company to provide them with an

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explanation and verification of all the steps that it took in

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response to their instructions.

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Defendants have not shown that they did

However, it is also undisputed that Defendants have brought

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their websites into compliance; when United States users access

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any of Defendants’ websites, they are presented with the choice
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website, and they can choose to go to Plaintiffs’ website or to

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Defendants’ nbsolar website, which does not include the “Sun

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Earth” mark or logo and instead includes the nbsolar mark.

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much of the civil sanction requested--$3,000 per day until

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Defendants come into compliance and a registry hold on Defendants’

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websites--is not required to coerce compliance and could serve

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only punitive purposes, which are not permitted for civil

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sanctions.

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this time.

United States District Court
For the Northern District of California

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Thus,

Thus, the Court declines to impose these sanctions at

II. Advertisements in the Photon International magazine

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Plaintiffs contend that Defendants have violated the

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preliminary injunction by continuing to use the “Sun Earth” words

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to advertise in an industry magazine, Photon International.

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According to its website, “PHOTON International is the

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world’s leading solar power magazine,” and has more than 33,000

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copies distributed worldwide each month, including 5,000 copies

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printed in Chinese.

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are distributed in a variety of ways, including by subscription

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and at tradeshows.

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subscribers, and twenty-four percent of their subscribers are

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located in North America.

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America, ninety-four percent are located in the United States.

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Id.

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the United States monthly.

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copies, an unknown number is distributed at tradeshows, some of

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which are held in the United States.

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Proffitt Decl. ¶ 11, Ex. 7, 2.

Id.

Its copies

Photon International has more than 5,000

Id.

Of the subscribers in North

Thus, more than 1,100 copies are sent to subscribers within
Of the remaining 28,000 monthly

Proffitt Decl. ¶ 12, Ex. 7.

Defendants admit that they placed an advertisement in the
February and March 2012 issues of Photon International.
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Dong

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Decl. ¶ 15.

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name and symbol a number of times, clearly violating paragraphs

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one and two of the modified preliminary injunction.

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Ex. 10.

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in December 2011, before the original injunction was entered.

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Dong Decl. ¶ 15.

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took every reasonable effort to comply with the injunction.

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example, they offer no evidence that they contacted the publisher

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to ask to have the advertisements removed from the publication

The half-page advertisement includes the “Sun-Earth”

Mosier Decl.,

Defendants attest that they placed these advertisements

They do not offer evidence, however, that they
For

United States District Court
For the Northern District of California

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after the injunctions were entered or to have the advertisements

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printed only in the copies circulated outside of the United

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States.

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that Defendants have placed another identical advertisement in the

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April 2012 issue of Photon International, which demonstrates that

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Defendants have continued to violate the terms of the injunction.

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Reed Decl. ¶ 3, Ex. 11.

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they brought this to Defendants’ attention repeatedly before

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filing the instant motion, and Defendants did not respond in any

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way.

Further, with their reply, Plaintiffs submit evidence

Plaintiffs also provide evidence that

Mosier Decl., Ex. 10.

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In response, Defendants offer evidence that they have ceased

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advertising in a separate magazine by the same publishers that is

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aimed primarily at the United States market.

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The fact that Defendants ceased advertising in another periodical,

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however, does not respond to the issue of whether they violated

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the injunction by continuing to advertise in the United States in

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Photon International by using Plaintiffs’ name and mark.

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Dong Decl. ¶ 17.

Defendants appear to argue that the circulation level within
the United States is de minimis.

However, this argument is
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unavailing; of the subscribers to the magazine located anywhere in

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the world, almost a quarter of them are within the United States.

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Defendants also argue that this publication is primarily

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aimed at the photovoltaic market, not the solar collector market.

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However, this argument is irrelevant; the injunction did not

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provide any exception for advertisements that were directed

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primarily at the photovoltaic market.

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found that the parties’ goods were close in proximity to one

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another and would engender confusion for a variety of reasons,

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United States District Court
For the Northern District of California

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including that customers choose between both types of products,

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they are installed by the same contractors in California, and

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there are many currently registered marks used to brand both

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products similar to Plaintiffs’ and products similar to

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Defendants’.

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Further, this Court already

Defendants ask the Court to modify the preliminary injunction

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to “allow SESP to advertise in publications principally directed

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to (Asian [sic] and European markets,” so that they can continue

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to advertise in Photon International.

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declines to modify the preliminary injunction.

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Defendants’ characterization, the current injunction does not

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prevent them from advertising in Europe, but rather limits their

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advertising within the United States.

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Opp. at 9.

The Court

Contrary to

The Court finds that Plaintiffs have met their burden to

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establish that Defendants are in contempt of the preliminary

25

injunction for continuing to advertise within the United States

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using the “Sun Earth” name and mark.

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Defendants $5,000 for each issue of Photon International

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distributed within the United States that contains an
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The Court will sanction

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advertisement in violation of the terms of the modified

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preliminary injunction, which is placed, or which Defendants have

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not used reasonable efforts to rescind, on or after the date of

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this Order.

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III. Defendants’ compliance reports

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Plaintiffs argue that Defendants have not fulfilled the

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affirmative obligation under paragraph ten of the modified

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preliminary injunction that their compliance report “set[] forth

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in detail the manner and form in which Defendants have complied”

United States District Court
For the Northern District of California

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with the injunction.
The Court finds that Defendants’ report is non-compliant on

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its face.

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refrained from taking certain actions, they do not specify the

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manner and form in which they accomplished this, as required by

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the preliminary injunction.

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“taken steps” to make changes to their websites, so that users

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within the United States could only access a website with the

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nbsolar logo, but they do not say what these steps were.

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above, the steps were insufficient.

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While they make conclusory statements that they have

For example, they say that they have

As noted

Further, as Plaintiffs point out, Defendants do not address a

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number of the terms in the preliminary injunction.

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the injunction prevents them from “using or continuing to use the

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words ‘SUN EARTH’ . . . as an [sic] keyword or other triggering

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mechanism to generate any internet advertising viewable within the

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Territory.”

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restriction is not limited to Defendants’ keyword metatags

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associated with the nbsolar website, and applies to any use of

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these terms to generate internet advertising of any type within

Modified Preliminary Injunction ¶ 3.

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For example,

Notably, this

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the United States.

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EARTH” as a keyword on services like Google AdWords to draw United

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States traffic to their nbsolar.com website or use these words to

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trigger the display of banner advertisements for Defendants on

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third party websites within the United States.

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address this term in their report, and instead only state that

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they removed “Sun Earth” from the keyword metatags of the

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nbsolar.com domain name, as required by a separate section of the

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injunction.

United States District Court
For the Northern District of California

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For example, Defendants may not list “SUN

Defendants do not

See id. at ¶ 7(D).

Similarly, while Defendants state that they did not “market

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for sale” or ship to the United States any products with the “Sun

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Earth” name and mark after the preliminary injunction was entered,

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they do not state that they have not actually sold products that

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they already had imported to the United States with that logo.

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Further, the fact that the Photon International

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advertisements were circulated after the injunction went into

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effect demonstrates that the representations made in the

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compliance report filed by Defendants were not complete.

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report, Defendants state that since the injunction went into

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effect, they have “[n]ot distributed any marketing, advertising,

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or other promotional materials in the United States using SUN

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EARTH.”

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advertisements, which were distributed in the United States after

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the preliminary injunction went into effect.

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In the

The report does not disclose the Photon International

Thus, Plaintiffs have presented clear and convincing evidence

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that Defendants are in contempt of the preliminary injunction for

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failing to file a correct and complete compliance report.

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two weeks of the date of this Order, Defendants shall file a new
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Within

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sworn compliance report, addressing the specific steps that they

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have taken through that date to comply with each provision of the

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modified preliminary injunction.

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CONCLUSION

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For the reasons set forth above, the Court GRANTS IN PART
Plaintiffs’ motion to hold Defendants in civil contempt (Docket

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No. 90), and finds Defendants in contempt of Court as described

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above.

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$5,000 for each issue of Photon International distributed within

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United States District Court
For the Northern District of California

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the United States that contains an advertisement in violation of

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the terms of the modified preliminary injunction, which is placed,

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or which Defendants have not used reasonable efforts to rescind,

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on or after the date of this Order.

As previously stated, the Court will sanction Defendants

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The Court TAKES UNDER SUBMISSION Plaintiffs’ request for

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attorneys’ fees incurred in bringing the motions for a preliminary

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injunction and for sanctions.

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this issue along with a global settlement of the case, litigate it

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after settlement, or litigate it along with the trial on the

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merits if the case is not settled.

The parties shall attempt to settle

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At the hearing on June 7, 2012, the Court referred the

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parties to a Magistrate Judge for a settlement conference to be

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held as soon as possible.

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the case was referred to Magistrate Judge Nathanael M. Cousins for

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settlement.

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Cousins’s courtroom deputy promptly to schedule a date for the

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settlement conference, in accordance with his settlement

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conference standing order.

See Docket No. 104.

On June 18, 2012,

The Court directs the parties to contact Judge

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The hearing on the parties’ cross-motions for summary

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judgment and a further case management conference are set for

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August 30, 2012, at 2:00 p.m.

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IT IS SO ORDERED.

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Dated: 6/20/2012

CLAUDIA WILKEN
United States District Judge

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United States District Court
For the Northern District of California

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