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

CourtDistrict Court, D. Minnesota
DecidedSeptember 26, 2025
Docket0:24-cv-03657
StatusUnknown

This text of Michel Sales Company v. Ningbo GI Power Co. Ltd. (Michel Sales Company v. Ningbo GI Power Co. Ltd.) is published on Counsel Stack Legal Research, covering District Court, D. Minnesota primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Michel Sales Company v. Ningbo GI Power Co. Ltd., (mnd 2025).

Opinion

UNITED STATES DISTRICT COURT DISTRICT OF MINNESOTA

Michel Sales Company, File No. 24-CV-03657 (JMB/ECW)

Plaintiff,

v. ORDER

Ningbo GI Power Import & Export Co. Ltd., Ningbo GI Power Co. Ltd., Deko Group LLC, and Deko Electric LLC,

Defendants.

Ningbo GI Power Import & Export Co. Ltd.,

Counterclaim Plaintiff,

v.

Michel Sales Company,

Counterclaim Defendant.

Kristine M. Boylan, Anton Christopher Brown, Scott M. Rusert, and Tanner J. Sparrow, Taft Stettinius & Hollister LLP, Minneapolis, MN; Alex Matthews (pro hac vice), Mike Etienne (pro hac vice), and Neil Peluchette (pro hac vice), Taft Stettinius & Hollister LLP, Indianapolis, IN; for Plaintiff and Counterclaim Defendant Michel Sales Company. Shawn M. Perry, Perry & Perry, PLLP, Wayzata, MN; Michael DiNardo (pro hac vice), YK Law LLP, Los Angeles, CA; for Defendant and Counterclaim Plaintiff Ningbo GI Power Import & Export Co. Ltd. and Defendant Ningbo GI Power Co. Ltd.

This matter is before the Court on Defendant and Counterclaim Plaintiff Ningbo GI Power Import & Export Co. Ltd.’s and Defendant Ningbo GI Power Co. Ltd.’s (together, “Ningbo”) Motion to Dissolve Preliminary Injunction (Doc. No. 44), as well as Plaintiff and Counterclaim Defendant Michel Sales Company’s (Michel) Motion for Contempt (Doc. No. 51) and Motion for Default Judgment (Doc. No. 31). In this action, Michel

brings claims against Ningbo, as well as Defendants Deko Group LLC and Deko Electric LLC (together, “Deko”), for copyright infringement, trademark infringement, trade dress infringement, deceptive trade practices, and unfair competition. (Doc. No. 12 [hereinafter, “Am. Compl.”].) For the reasons explained below, the Court denies Ningbo’s motion to dissolve the preliminary injunction, grants Michel’s motion for contempt, and denies Michel’s motion for default judgment against Deko.

BACKGROUND A. The Parties Michel is a Minnesota company that opened its doors in 1857, as “Michel Family General Store.” (Am. Compl. ¶¶ 1, 2.) Over the years, Michel has adapted its business, expanding into the plumbing and pump industries. (Id. ¶¶ 2, 3.) In 1989, Michel founded

Decko Products (Decko) by an industry acquisition. (Id. ¶ 2.) A decade later, Michel and Decko formed Superior Pump Company. (Id.) Today, Michel sells and advertises its products on online marketplaces, such as Amazon.com. (Id. ¶ 30.) Michel owns various trademarks, copyrights, and product configuration (trade dress) rights. At issue here are the following: two trademarks (the DECKO® mark1 and the BUILT TO LAST® mark2);

1 Codified in U.S. Trademark Registration No. 5,153,580 (registered on Mar. 7, 2017), U.S. App. No. 98545013, U.S. App. No. 98522359, U.S. App. No. 98522354, and U.S. App. No. 98522356. (Am. Compl. ¶¶ 9, 10, Ex. B at 87; Doc. No. 16-2 ¶ 3.)

2 Codified in U.S. Trademark Registration No. 4,991,244 (registered on July 5, 2016). (Am. Compl. ¶ 9, Ex. B at 95.) three copyrights covering product catalogs and manuals;3 and trade dress rights in the product configuration of the “DECKO®” water pump.

Ningbo formed as a Chinese Limited Company in about 2013. (Doc. No. 46-2 ¶ 6.) Ningbo distributes and sells various products, including hand tools, power tools, and related electric devices, such as pumps. (Id.) Ningbo brands its products with the DEKO and/or DEKOPRO trademarks. (Id. ¶ 8.) In around 2014, Ningbo began marketing, distributing, and selling its products on its website www.dekotools.com. (Id.) Between 2017 and 2021, Ningbo filed for and maintained at least seven U.S. trademark applications

for the DEKO and DEKOPRO trademarks. (Id. ¶ 9.) Those trademarks are also registered in China. (Id. ¶ 7.)4 B. Pre-Lawsuit Infringing Conduct and Michel’s Enforcement Efforts

In 2023, Michel learned that Ningbo was copying its advertising materials and using them in Amazon listings to sell its competing pump product. (Doc. No. 16-3 ¶ 4.) Michel obtained samples of Ningbo’s pump and learned that Ningbo was also copying its product manuals, product descriptions, and product configuration. (Id.; Doc. No. 16-4 ¶ 7.) Michel

3 Codified in U.S. Copyright Registration Numbers TX 9-390-864 (registered on May 7, 2024), TX 9-390-866 (registered on May 7, 2024), and TX 9-426-009 (registered on Sept. 10, 2024). (Am. Compl. ¶ 8, Ex. A at 2–8.)

4 Deko is a Delaware Limited Liability Company that has not appeared in this matter. (Am. Compl. ¶ 5; Doc. No. 29.) Michel alleges that the four named Defendants are closely related corporate entities. (Am. Compl. ¶¶ 4, 5.) Ningbo contends that Defendant Ningo GI Power Co. Ltd. is not a separate entity but a shortened form of its full name “Ningbo GI Power Import & Export Co. Ltd.” (Doc. No. 46-2 ¶¶ 2, 4.) It further contends that it “does not own or control” Deko and that it is not “intricately interlinked” with Deko. (Id. ¶ 13.) It asserts that, at most, Deko “might be” its customer. (Id.) also learned that Ningbo’s pump displays a safety certification symbol when it does not have authority to use that symbol. (Doc. No. 16-4 ¶ 8, Ex. 1.) Michel’s customer service

personnel receive calls multiple times per week from individuals calling about Ningbo’s products. (Doc. No. 16-3 ¶ 13.) In April 2024, Michel began using Amazon’s enforcement channels to remove listings for Ningbo’s competing pump product.5 (Doc. No. 16-3 ¶ 6; Doc. No. 54 ¶ 12; Doc. 46-2 ¶ 10.) Initially, Amazon removed nearly all the listings. (Doc. No. 54 ¶ 12; Doc. No. 46-2 ¶ 11.) However, Ningbo challenged Michel’s enforcement efforts and

Amazon eventually reinstated the listings.6 (Doc. No. 54 ¶¶ 16–17; Doc. No. 46-2 ¶ 11.) Shortly thereafter, in June 2024, Ningbo’s first counsel wrote a cease-and-desist email to Michel, demanding that Michel “[w]ithdraw . . . all of the [Amazon] complaints against [Ningbo].” (Doc. No. 16-2 at 5.) Michel responded to this email, citing its priority in the DECKO mark. (Doc. No. 54-2.) Ningbo never responded to Michel and continued to

maintain its listings on Amazon. (Doc. No. 54 ¶ 5.) C. Initiation of this Action and Unopposed Preliminary Injunction Request

In September 2024, Michel filed suit. (Doc. No. 1.) On September 20, 2024, Michel attempted to serve its Initial Complaint on Ningbo through Ningbo’s first counsel. (Doc.

5 All of the listings Michel sought to remove were from an Amazon seller named “Gulin.” (Doc. No. 54 ¶¶ 18, 30.) Ningbo identifies Gulin as one of its customers. (Doc. No. 46-2 ¶ 16.)

6 Ningbo acknowledges that it filed counter notices and appealed Amazon’s decisions. (Doc. No. 46-2 ¶¶ 10–11.) Given this acknowledgment, Michel’s counsel asserts that Gulin and Ningbo are “one in the same.” (Doc. No. 54 ¶ 20.) No. 54-3.) That counsel declined to accept service on Ningbo’s behalf, however, stating that their firm was “not representing Ningbo . . . in this case yet.” (Doc. No. 54-4.)

In October 2024, Michel filed an eight-count Amended Complaint, in which it alleged that Defendants are infringing two of its trademarks, three of its copyrights, and its trade dress rights. (See Am. Compl.) Michel further alleges that Defendants are misrepresenting that their goods are of a particular standard, quality or grade, in violation of the Minnesota Deceptive Trade Practices Act, and that they are unfairly competing with Michel, in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). (Id.)

On the same day Michel filed its amended complaint, it also filed a motion for a preliminary injunction. (Doc. No.

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