PENN ENGINEERING & MANUFACTURING CORP. v. PEMCO HARDWARE, INC. et al

Filing 21

MEMORANDUM AND/OR OPINION. SIGNED BY HONORABLE GERALD J. PAPPERT ON 11/7/17. 11/7/17 ENTERED AND COPIES MAILED, E-MAILED AND FAXED.(kf, )

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF PENNSYLVANIA
PENN ENGINEERING &
MANUFACTURING CORP.,
CIVIL ACTION
NO. 15-06277

Plaintiff,
v.
PEMCO HARDWARE, INC. et al.,

NOVEMBER 7, 2017

Defendants.
MEMORANDUM

The Defendants and those related to and acting in concert with them continue
to infringe Penn Engineering and Manufacturing Corporation’s patents and
trademarks on various fasteners and accessories. By doing so, they are in violation of
the Court’s March 9, 2016 Preliminary Injunction issued against Pemco Hardware,
Inc., Dongguan Fenggang Pemco Hardware Factory, and Shenzhen Pemco Fastening
Systems (collectively “Pemco”).1 (ECF No. 15.)
I
On October 16, 2017, Penn Engingeering filed a motion to modify the
Preliminary Injunction Order to include the entities Pinconn, Pinconn Hardware
Factory, and Dongguan Fenggang Pinconn Hardware Factory (collectively “Pinconn”),
who are alleged to be selling the same and many new infringing products through a
new website, www.pinconn.com. (ECF No. 16.) Penn Engineering filed that motion
after learning that Pinconn was registered as an exhibitor at the 2017 International
Fastener Expo (“IFE”) in Las Vegas, Nevada.
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The facts of this case are set forth in the Court’s March 9, 2016 Memorandum. (ECF No. 15.)
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The Court denied the “motion to modify” because it was not necessary; the
Preliminary Injunction applies to Pemco and all persons, firms and corporations,
including subsidiaries of related companies acting in concert with Pemco. (ECF
No. 17.) The Court’s Injunction prohibits any such person or entity from: (1) using
Plaintiff’s trademarks; (2) using “any mark or tradename that is a colorable
imitation of or confusingly similar” to Plaintiff’s marks; (3) “[p]ublishing,
circulating, distributing, selling merchandising, or using in any manner (including
digital form) any labels, signs, prints,…advertisements, posters, brochures,
handbills, catalogs,…booklets…and any other items in the possession and/or
control of Defendants containing” Plaintiff’s marks “or any other mark or
tradename that is a colorable imitation of” those marks; (4) “making, using,
offering for sale, or selling in the United States, or importing into the United States
the PEMCO Infringing Products,” or “any product that infringes any claim of the
PEM patents;” or (5) “[u]sing any domain name that is a colorable imitation of or
confusingly similar to the PEM Family Marks and the Six Other Trademarks in
connection the Protected Goods and Services, and/or related goods and services.”
(ECF No. 17.)
The Court also explained that the Preliminary Injunction applies to “the
Infringing Domain Names, associated websites, and any other domain names and
websites properly brought to the Court’s attention and verified by sworn affidavit
that such new domain names are being used by Defendants for the purpose of
infringing or counterfeiting the PEM Family of Marks and Six Other Trademarks
at issue in this action and/or unfairly competing with Plaintiff on the World Wide

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Web.” (ECF No. 17.) Based on the relief sought, the Court informed Penn
Engineering that the proper remedy was not to seek modification of the
Preliminary Injunction, but rather to move to hold Pinconn in contempt of it. See
11A Charles Alan Wright & Arthur R. Miller, Federal Practice and Procedure
§ 2956 (3d ed. 2005). Penn Engineering has now filed a motion to have Pinconn
found in contempt of the Preliminary Injunction after discovering that Pinconn is
registered to appear as an exhibiting vendor at the Medical Design &
Manufacturing tradeshow in Minneapolis, Minnesota on November 8 and 9, 2017.
(ECF No. 18.)
The Court held a hearing on Penn Engineering’s motion on November 7, 2017.
Penn Engineering provided evidence that its representatives attended the IFE Expo in
Las Vegas and observed Pinconn’s trade show booth, which included promotional and
advertising material that infringed Penn Engineering’s trademarks and patents.
(ECF No. 18-17; 18-19.) In Las Vegas, counsel for Penn Engineering gave Pinconn
representative Julia Li a copy of the Preliminary Injunction Order and all previouslyfiled pleadings in this case. (ECF No. 18-17.) Counsel photographed samples of
products distributed by Pinconn and evidence that those products infringe Penn
Engineering’s trademarks. (ECF No. 18-18.)
At the hearing, counsel also introduced into evidence proof of a shared identity
between Pemco and Pinconn, a compilation of trademarks being infringed on Pinconn’s
website, www.pinconn.com, Pinconn’s infringing marks and domain names, a sample
of Penn Engineering’s patents and Pinconn’s infringing products, and samples from

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Pinconn’s website showing direct copying of Penn Engineering’s online catalogs. (ECF
No. 18-1, Tables 1–5.)
II
Federal courts have the power to punish contemnors “by fine or imprisonment,
or both, at its discretion….” 18 U.S.C. § 401; see also Michaelson v. United States ex rel.
Chi., St. Paul, Minneapolis & Omaha Ry. Co., 266 U.S. 42, 65 (1924) (“That the power
to punish for contempts is inherent in all courts [ ] has been many times decided and
may be regarded as settled law.”). “Civil contempt sanctions are remedial in nature
and designed to coerce compliance with a court order or to compensate the injured
party.” United States v. Baker Funeral Home, Ltd., 196 F.Supp. 3d 530, 549 (E.D. Pa.
July 13, 2016) (citing Roe v. Operation Rescue, 919 F.2d 857, 868 (3d Cir. 1990)). A
party seeking a civil contempt order must establish: “(1) a valid court order existed, (2)
the [allegedly defiant individual] had knowledge of the order, and (3) [he or she]
disobeyed the order.” Harris v. City of Philadelphia, 47 F.3d 1311, 1326 (3d Cir. 1995).
These three elements must be proved by “clear and convincing” evidence, and
“ambiguities must be resolved in favor of the party charged with contempt.” Baker
Funeral Home, 196 F.Supp. 3d at 549 (citing Robin Woods Inc. v. Woods, 28 F.3d 396,
399 (3d Cir. 1994)).
Pinconn is in contempt of the Court’s March 9, 2016 Preliminary Injunction
Order. That Order was validly issued by this Court, and Pinconn knew of it. Counsel
stated that he previously emailed to Pinconn a copy of the Preliminary Injunction at
[e-mail] and [e-mail], and gave copies of the Order and all
previously-filed pleadings from this case to Ms. Li at the IFE trade show. (ECF No. 184

17.) Based on the evidence provided, it is clear that Pinconn is the same entity as
Pemco under a different name or is acting in concert with Pemco. Pinconn’s conduct
violates the Preliminary Injunction.

BY THE COURT:

/s/ Gerald J. Pappert
________________________
GERALD J. PAPPERT, J.

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