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

Filing 184

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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1 IN THE UNITED STATES DISTRICT COURT 2 FOR THE NORTHERN DISTRICT OF CALIFORNIA 3 4 5 SUNEARTH, INC.; and THE SOLARAY CORPORATION, Plaintiffs, 6 SUN EARTH SOLAR POWER CO., LTD.; NBSOLAR USA, INC.; and DOES 1-10, 9 United States District Court For the Northern District of California 10 AMENDED PERMANENT INJUNCTION v. 7 8 No. C 11-4991 CW Defendants. ________________________________/ The Court hereby vacates its Modified Preliminary Injunction 11 12 issued on March 13, 2012 and issues a permanent injunction, as 13 follows: IT IS HEREBY ORDERED, ADJUDGED AND DECREED that Defendants 14 15 and their officers, agents, servants, affiliates, employees, and 16 attorneys, and all those acting in concert or participation with 17 any of them who receive actual notice of this Order, are HEREBY 18 PERMANENTLY ENJOINED: 19 1. 20 or without a space or capitalization or hyphen or any other 21 punctuation), either alone or in conjunction with any other words 22 or symbols, or any phonetically or visually similar words or 23 symbols in any combination (hereinafter, the term “SUN EARTH” will 24 be used to refer to the words “SUN EARTH” together with these 25 modifiers), as a trademark, service mark or trade name or 26 otherwise as a source of origin or identification of Defendants’ 27 goods or services within the United States, its territories or 28 possessions (the “Territory”), provided that: From using or continuing to use the words “SUN EARTH” (with A. 1 For goods branded as NBSolar rather than Sun Earth, 2 Defendants shall be permitted to identify SESP as the 3 manufacturer, importer or seller of the goods to the minimum 4 extent necessary as required by law or ordinary business customs 5 to operate within the United States under the NBSolar name; and B. 6 For equipment purchased by Defendants from sellers 7 within the United States for export to SESP in China, Defendants 8 shall be permitted to identify SESP as the buyer of the equipment, 9 to the minimum extent necessary as required by law or ordinary United States District Court For the Northern District of California 10 business customs. C. 11 Under subsections A and B above, wherever possible, 12 Defendants shall identify themselves as NBSolar and/or an acronym, 13 such as SESP, that avoids the use of the term “SUN EARTH.” 14 Defendants do use the term “SUN EARTH” under the terms of these 15 subsections, Defendants shall not display the term “SUN EARTH” in 16 a distinctive manner of presentation that makes it stand out in 17 any way from other words on the relevant document and shall not 18 use the “Sun Earth” logo. 19 2. 20 in connection with, any marketing or advertising or any other 21 promotional materials viewable within the Territory. 22 3. 23 keyword or other triggering mechanism to generate any internet 24 advertising viewable within the Territory. 25 4. 26 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 27 28 2 1 5. From importing into the Territory any goods upon which the 2 term “SUN EARTH” appears or is shown on the packaging for such 3 goods. 4 6. 5 term “SUN EARTH” appears or is shown on the product literature for 6 such goods, subject to the exceptions in Section 1(A)-(C) above. 7 7. 8 transfer the domain name sunearth.us to Plaintiffs. 9 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 10 registering a domain name with any country code top level domain 11 [such as .cn (for China) or .de (for Germany)], except for the .us 12 country code top level domain, which contains the term “SUN 13 EARTH,” or from publishing one or more websites at any of those 14 country code top level domains, provided that any such webpage is 15 in full compliance with the terms of this Injunction for any users 16 who view the webpage from within the Territory. 17 9. 18 visitors from within the United States who visit Sun-Earth.com, 19 SunEarthPower.com, SunEarthPower.net or any other website that 20 Defendants maintain with the term “SUN EARTH” in the address are 21 presented with a webpage that: (1) allows them to choose to 22 continue to either the nbsolar.com home webpage or the 23 sunearthinc.com home webpage; and (2) contains language clarifying 24 that the companies associated with those webpages are not 25 affiliated with one another; 26 10. 27 Order, Defendants shall display on the nbsolar.com home webpage 28 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 3 1 USA, Inc., is a distributor within the United States of products 2 carrying the NBSolar brand, manufactured by Sun Earth Solar Power 3 Co., Ltd., of Ningbo, China. 4 Earth Solar Power Co., Ltd. sells products under the brand Sun- 5 Earth. 6 NBSolar brand.” 7 11. 8 explaining within the Territory, including at trade shows and 9 conferences, their affiliation with their Sun-Earth name and mark United States District Court For the Northern District of California 10 11 12 13 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 14 of this Order, by displaying at trade shows and conferences where 15 the NBSolar logo is displayed, one stand-alone sign on their trade 16 show booth, the sign being no larger than 12 inches x 12 inches in 17 black and white font not larger than 20 point typeface, the 18 following explanation, or a similar variation thereof: “NBSolar 19 USA, Inc., is a distributor within the United States of products 20 carrying the NBSolar brand, manufactured by Sun Earth Solar Power 21 Co., Ltd., of Ningbo, China. 22 Earth Solar Power Co., Ltd. sells products under the brand Sun- 23 Earth. 24 NBSolar brand.” 25 in a distinctive or prominent manner of presentation that makes 26 the words stand out in any way from other words or symbols in that 27 sentence or on that sign. 28 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- 4 1 12. 2 within thirty-five (35) days after the effective date of this 3 Permanent Injunction, a report in writing and under oath, setting 4 forth in detail the manner and form in which Defendants have 5 complied. 6 13. 7 authorize anyone else to take actions that would constitute a 8 violation of the terms of this Injunction had Defendants taken 9 those actions themselves. United States District Court For the Northern District of California 10 Defendants shall file with the Court and serve on Plaintiffs, Defendants shall not authorize, direct or purport to IT IS SO ORDERED. 11 12 13 Dated: 11/22/2013 CLAUDIA WILKEN United States District Judge 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 5

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