SunEarth Inc. et al v. Sun Earth Solar Power Co., Ltd. et al
Filing
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AMENDED 164 PERMANENT INJUNCTION. Signed by Judge Claudia Wilken on 11/22/2013. (ndr, COURT STAFF) (Filed on 11/22/2013)
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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,
Plaintiffs,
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SUN EARTH SOLAR POWER CO., LTD.;
NBSOLAR USA, INC.; and DOES 1-10,
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United States District Court
For the Northern District of California
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AMENDED PERMANENT
INJUNCTION
v.
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No. C 11-4991 CW
Defendants.
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The Court hereby vacates its Modified Preliminary Injunction
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issued on March 13, 2012 and issues a permanent injunction, as
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follows:
IT IS HEREBY ORDERED, ADJUDGED AND DECREED that Defendants
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and their officers, agents, servants, affiliates, employees, and
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attorneys, and all those acting in concert or participation with
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any of them who receive actual notice of this Order, are HEREBY
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PERMANENTLY ENJOINED:
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1.
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or without a space or capitalization or hyphen or any other
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punctuation), either alone or in conjunction with any other words
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or symbols, or any phonetically or visually similar words or
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symbols in any combination (hereinafter, the term “SUN EARTH” will
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be used to refer to the words “SUN EARTH” together with these
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modifiers), as a trademark, service mark or trade name or
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otherwise as a source of origin or identification of Defendants’
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goods or services within the United States, its territories or
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possessions (the “Territory”), provided that:
From using or continuing to use the words “SUN EARTH” (with
A.
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For goods branded as NBSolar rather than Sun Earth,
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Defendants shall be permitted to identify SESP as the
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manufacturer, importer or seller of the goods to the minimum
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extent necessary as required by law or ordinary business customs
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to operate within the United States under the NBSolar name; and
B.
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For equipment purchased by Defendants from sellers
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within the United States for export to SESP in China, Defendants
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shall be permitted to identify SESP as the buyer of the equipment,
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to the minimum extent necessary as required by law or ordinary
United States District Court
For the Northern District of California
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business customs.
C.
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Under subsections A and B above, wherever possible,
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Defendants shall identify themselves as NBSolar and/or an acronym,
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such as SESP, that avoids the use of the term “SUN EARTH.”
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Defendants do use the term “SUN EARTH” under the terms of these
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subsections, Defendants shall not display the term “SUN EARTH” in
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a distinctive manner of presentation that makes it stand out in
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any way from other words on the relevant document and shall not
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use the “Sun Earth” logo.
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2.
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in connection with, any marketing or advertising or any other
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promotional materials viewable within the Territory.
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3.
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keyword or other triggering mechanism to generate any internet
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advertising viewable within the Territory.
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4.
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nbsolar.com domain.
Where
From using or continuing to use the term “SUN EARTH” in, or
From using or continuing to use the term “SUN EARTH” as an
From using the term “SUN EARTH” as a keyword metatag on the
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5.
From importing into the Territory any goods upon which the
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term “SUN EARTH” appears or is shown on the packaging for such
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goods.
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6.
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term “SUN EARTH” appears or is shown on the product literature for
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such goods, subject to the exceptions in Section 1(A)-(C) above.
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7.
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transfer the domain name sunearth.us to Plaintiffs.
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8.
From importing into the Territory any goods upon which the
Within fourteen (14) days of this order, Defendants shall
Nothing in this Order shall preclude Defendants from
United States District Court
For the Northern District of California
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registering a domain name with any country code top level domain
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[such as .cn (for China) or .de (for Germany)], except for the .us
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country code top level domain, which contains the term “SUN
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EARTH,” or from publishing one or more websites at any of those
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country code top level domains, provided that any such webpage is
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in full compliance with the terms of this Injunction for any users
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who view the webpage from within the Territory.
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9.
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visitors from within the United States who visit Sun-Earth.com,
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SunEarthPower.com, SunEarthPower.net or any other website that
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Defendants maintain with the term “SUN EARTH” in the address are
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presented with a webpage that: (1) allows them to choose to
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continue to either the nbsolar.com home webpage or the
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sunearthinc.com home webpage; and (2) contains language clarifying
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that the companies associated with those webpages are not
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affiliated with one another;
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10.
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Order, Defendants shall display on the nbsolar.com home webpage
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the following explanation or a similar variation thereof: “NBSolar
Defendants shall take reasonable measures to ensure that
For a period of one year from the effective date of this
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USA, Inc., is a distributor within the United States of products
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carrying the NBSolar brand, manufactured by Sun Earth Solar Power
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Co., Ltd., of Ningbo, China.
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Earth Solar Power Co., Ltd. sells products under the brand Sun-
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Earth.
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NBSolar brand.”
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explaining within the Territory, including at trade shows and
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conferences, their affiliation with their Sun-Earth name and mark
United States District Court
For the Northern District of California
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Outside of the United States, Sun
All sales in the United States, however, use only the
Nothing in this Order shall preclude Defendants from
as used outside of the United States in the following manners:
A.
By explaining orally their affiliation with the Sun
Earth name and mark that they use outside of the United States; or
B.
For a period of ninety (90) days from the effective date
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of this Order, by displaying at trade shows and conferences where
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the NBSolar logo is displayed, one stand-alone sign on their trade
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show booth, the sign being no larger than 12 inches x 12 inches in
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black and white font not larger than 20 point typeface, the
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following explanation, or a similar variation thereof: “NBSolar
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USA, Inc., is a distributor within the United States of products
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carrying the NBSolar brand, manufactured by Sun Earth Solar Power
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Co., Ltd., of Ningbo, China.
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Earth Solar Power Co., Ltd. sells products under the brand Sun-
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Earth.
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NBSolar brand.”
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in a distinctive or prominent manner of presentation that makes
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the words stand out in any way from other words or symbols in that
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sentence or on that sign.
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Earth logo on that sign.
Outside of the United States, Sun
All sales in the United States, however, use only the
Defendants shall not depict the words “Sun Earth”
Defendants shall not display their Sun-
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12.
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within thirty-five (35) days after the effective date of this
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Permanent Injunction, a report in writing and under oath, setting
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forth in detail the manner and form in which Defendants have
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complied.
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13.
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authorize anyone else to take actions that would constitute a
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violation of the terms of this Injunction had Defendants taken
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those actions themselves.
United States District Court
For the Northern District of California
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Defendants shall file with the Court and serve on Plaintiffs,
Defendants shall not authorize, direct or purport to
IT IS SO ORDERED.
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Dated: 11/22/2013
CLAUDIA WILKEN
United States District Judge
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