Michel Sales Company v. Ningbo GI Power Co. Ltd.

Background

Michel Sales Company sued Ningbo GI Power Co. Ltd., Ningbo GI Power Import & Export Co. Ltd., Deko Group LLC, and Deko Electric LLC. Michel alleged copyright infringement, trademark infringement, trade-dress infringement, deceptive trade practices, and unfair competition involving water pumps and related advertising and sales materials.

Michel identified two trademarks—the DECKO mark and the BUILT TO LAST mark—three registered copyrights covering product catalogs and manuals, and trade-dress rights in the configuration of a DECKO water pump. Michel alleged that Ningbo copied its advertising materials for Amazon listings, manuals, product descriptions, and product configuration. Michel also alleged that Ningbo’s pump displayed a safety-certification symbol without authority to use it. Michel stated that its customer-service personnel received calls multiple times per week from people asking about Ningbo’s products.

Michel sought a preliminary injunction, which is a temporary court order intended to preserve the situation until the underlying claims are decided. The requested order would bar the defendants and people acting with them from using Michel’s marks or confusingly similar terms, using Michel’s copyrighted materials, and interfering with Michel’s Amazon takedown submissions. The opinion states that none of the defendants responded to the complaints or the motion, despite service.

Preliminary-Injunction Analysis

The court applied four factors: Michel’s probability of success on the merits, the threat of irreparable harm, the balance between the parties’ harms, and the public interest. The court stated that all four factors favored granting the motion.

On probability of success, the court considered Michel’s five asserted claims. Because Michel’s factual assertions and legal arguments were uncontested, and because no defendant offered contrary arguments or assertions, the court was persuaded that Michel was likely to succeed on those claims. The court emphasized that this preliminary assessment did not decide whether Michel would ultimately win.

On irreparable harm, the court relied on principles that allow a presumption of irreparable harm when trademark confusion is likely and when copyright infringement has occurred. The court also cited Michel’s frequent customer-service complaints and concluded that Michel faced a threat of irreparable harm.

On the balance of harms, the court concluded that the defendants’ harm would be minimal because they could sell or create other non-infringing products. The court also stated that the defendants’ apparent conduct was self-inflicted. The public-interest factor favored relief because preventing customer confusion and infringement, stopping false or misleading advertising, and protecting copyrights served the public interest.

Bond

Federal Rule of Civil Procedure 65(c) generally permits a preliminary injunction only when the moving party provides security for costs and damages that could result from a wrongful injunction. Michel argued that no bond was necessary because of the strength of its claims and because the defendants would not suffer damages from being required to stop offering infringing marks and designs. The court agreed, noting that the defendants had not objected or shown that a wrongful injunction would cause damages. The court waived the bond requirement.

Order

The court granted Michel’s motion for a preliminary injunction. The order prohibits the defendants, their directors, members, officers, agents, employees, subsidiaries, affiliates, and people acting with them from using marks or designations identical or confusingly similar to Michel’s DECKO family of marks, BUILT TO LAST marks, or trade dress.

The order also prohibits use of words, names, symbols, product configurations, packaging, manuals, guides, text, images, derivatives, or other intellectual property that is identical, substantially similar, confusingly similar, a colorable imitation of, or dilutive of Michel’s protected materials. It bars false or misleading statements likely to confuse people about an affiliation or association between the defendants’ pump products and Michel.

The defendants must destroy or dispose of materials in their possession that include unauthorized uses of Michel’s intellectual property. They must remove from public view and access materials using or referring confusingly to Michel’s intellectual property, including materials on Amazon, other e-commerce sites, and the defendants’ website. They must not use the BUILT TO LAST or DECKO marks, or phonetically similar terms such as DEKO and DEKOPRO, in connection with water-pump advertising, titles, labels, or descriptions. They also must not interfere with Michel’s Amazon takedown submissions or submit counter-notices or appeals concerning those submissions. No bond was required.