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

Filing 80

MODIFIED PRELIMINARY INJUNCTION. Signed by Judge Claudia Wilken on 3/13/2012. (ndr, COURT STAFF) (Filed on 3/13/2012)

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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,
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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MODIFIED
PRELIMINARY
INJUNCTION

v.

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No. C 11-4991 CW

Defendants.
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For the reasons set forth in its concurrently-filed Order

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Granting in Part Defendants’ Motion to Amend the Preliminary

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Injunction, the Court vacates its preliminary injunction issued on

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February 2, 2012 and issues a modified preliminary injunction as

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follows:

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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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ENJOINED:

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1.

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or without a space or capitalization or hyphen), either alone or

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in conjunction with any other words or symbols, or any

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phonetically or visually similar words or symbols in any

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combination, as a trademark, service mark or trade name within the

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United States, its territories or possessions (the “Territory”),

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provided that:

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From using or continuing to use the words “SUN EARTH” (with

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A.

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

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B.

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.

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C.

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 words “SUN EARTH” (with

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or without a space or capitalization or hyphen).

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do use the words “SUN EARTH” under the terms of these subsections,

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Defendants shall not display the words “SUN EARTH” in a

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distinctive manner of presentation that makes them 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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or without a space or capitalization or hyphen), either alone or

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in conjunction with any other words or symbols, or any

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phonetically or visually similar words or symbols in any

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combination, in, or in connection with, any marketing or

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advertising or any other promotional materials viewable within the

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Territory;

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3.

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or without a space or capitalization or hyphen), either alone or

Where Defendants

From using or continuing to use the words “SUN EARTH” (with

From using or continuing to use the words “SUN EARTH” (with

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in conjunction with any other words, as an keyword or other

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triggering mechanism to generate any internet advertising viewable

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within the Territory; and

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4.

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words “SUN EARTH” (with or without a space or capitalization or

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hyphen), either alone or in conjunction with any other words or

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symbols, or any phonetically or visually similar words or symbols

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in any combination, appears or are shown on the packaging for such

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goods.

From importing into the Territory any goods upon which the

United States District Court
For the Northern District of California

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5.

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Registry for SunEarth.us (Neustar, Inc.) shall, within thirty (30)

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days of receipt of this Order, place that domain name on Registry

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Hold status, thus removing it from the TLD zone files maintained

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by the Registry which link the domain name to the internet

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protocol address where the associated website is hosted.

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6.

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registering any country code top level domain [such as .cn (for

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China) or .de (for Germany)], except for the .us country code top

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level domain, which contains the words “SUN EARTH” (with or

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without a space or capitalization or hyphen), either alone or in

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conjunction with any other words, or from publishing one or more

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websites at any of those country code top level domains.

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7.

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Order:

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Upon either Plaintiff’s request, the top level domain (TLD)

Nothing in this Order shall preclude Defendants from

Defendants shall, within thirty days of the date of this

A.

Take reasonable measures to ensure that visitors from

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within the United States who visit Sun-Earth.com,

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SunEarthPower.com, and SunEarthPower.net are presented with a

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webpage that: (1) allows them to choose to continue to either the
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nbsolar.com home webpage or the sunearthinc.com home webpage; and

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(2) contains language clarifying that the companies associated

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with those webpages are not affiliated with one another;

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B.

Replace the Sun-Earth logo which currently appears at

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the top of each webpage on the nbsolar.com domain with the nbsolar

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mark and logo;

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C.

Add to the nbsolar.com home webpage the following

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explanation, or a similar variation thereof: “NBSolar USA, Inc.

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has no affiliation with SunEarth Inc. or The Solaray Corporation.

United States District Court
For the Northern District of California

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NBSolar USA, Inc., is a distributor within the United States of

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products carrying the NBSolar brand, manufactured by Sun Earth

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Solar Power Co., Ltd., of Ningbo, China.

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States, Sun Earth Solar Power Co., Ltd. sells products under the

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brand Sun-Earth.

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only the NBSolar brand.”; and

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D.

Outside of the United

All sales in the United States, however, use

Remove all uses of “Sun Earth” from the keyword metatags

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of the nbsolar.com domain.

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8.

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explaining within the United States, including at trade shows and

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conferences, their affiliation with their Sun-Earth name and mark

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as used outside of the United States in the following manners:

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Nothing in this Order shall preclude Defendants from

A.

By explaining orally their affiliation with the Sun

Earth name and mark that they use outside of the United States; or
B.

By displaying at trade shows and conferences where the

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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. has no affiliation with SunEarth Inc. or The Solaray

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Corporation.

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United States of products carrying the NBSolar brand, manufactured

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by Sun Earth Solar Power Co., Ltd., of Ningbo, China.

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the United States, Sun Earth Solar Power Co., Ltd. sells products

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under the brand Sun-Earth.

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however, use only the NBSolar brand.”

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the words “Sun Earth” in a different manner of presentation in any

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way from the other words in that sentence and on that sign.

NBSolar USA, Inc., is a distributor within the

Outside of

All sales in the United States,
Defendants shall not depict

United States District Court
For the Northern District of California

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Defendants shall not display their Sun-Earth logo on that sign.

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9.

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bond in the sum of $5,000.00, see Docket No. 67, this preliminary

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injunction shall take effect immediately upon issuance.

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10.

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within thirty-five (35) days after the effective date of the

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original Preliminary Injunction, a report in writing and under

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oath, setting forth in detail the manner and form in which

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Defendants have complied.

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11.

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final judgment in this case, unless ordered otherwise.

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Because Plaintiffs have filed with the Court evidence of a

Defendants shall file with the Court and serve on Plaintiffs,

This preliminary injunction shall continue in effect until

IT IS SO ORDERED.

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Dated: 3/13/2012

CLAUDIA WILKEN
United States District Judge

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