Super Power Supply, Inc. v. Macase Industrial Corp.

154 F.R.D. 249, 94 Daily Journal DAR 4142, 31 U.S.P.Q. 2d (BNA) 1677, 28 Fed. R. Serv. 3d 961, 1994 U.S. Dist. LEXIS 3204, 1994 WL 94038
CourtDistrict Court, C.D. California
DecidedMarch 11, 1994
DocketNo. CV 93-6781 WJR (Sx)
StatusPublished
Cited by5 cases

This text of 154 F.R.D. 249 (Super Power Supply, Inc. v. Macase Industrial Corp.) is published on Counsel Stack Legal Research, covering District Court, C.D. California primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Super Power Supply, Inc. v. Macase Industrial Corp., 154 F.R.D. 249, 94 Daily Journal DAR 4142, 31 U.S.P.Q. 2d (BNA) 1677, 28 Fed. R. Serv. 3d 961, 1994 U.S. Dist. LEXIS 3204, 1994 WL 94038 (C.D. Cal. 1994).

Opinion

MEMORANDUM AND ORDER

REA, District Judge.

On December 16, 1993, the Court conducted a hearing on plaintiff Super Power Supply, Inc.’s (“Super Power”) application for a preliminary injunction. At that time, the Court denied the application and indicated to the parties that it was gravely concerned with the behavior of Super Power’s counsel, Peter S. Hwu of the Law Offices of Peter S. Hwu, in connection with Super Power’s applications for temporary restraining orders and the preliminary injunction, and invited counsel for defendant Macase Industrial Corp. (“Macase-Taiwan” or “Macase”) to file a motion for sanctions. Thereafter, on December 28, 1993, defendant filed its motion for sanctions.

After having reviewed the papers submitted in regards to both plaintiffs application for a preliminary injunction and defendant’s motion for sanctions, the contents of the file in this case, and the applicable authorities, the Court denies plaintiffs application for a preliminary injunction and finds that plaintiffs counsel should be sanctioned for violating his obligations as an officer of the court.

I. BACKGROUND

Super Power filed the instant action on November 9, 1993, alleging numerous state law claims and counterfeiting in violation of the Lanham Trade-Mark Act, 15 U.S.C. § 1051 et seq., against defendant MacaseTaiwan and several individual defendants. On November 17, 1993, Super Power filed a nearly identical complaint in the District Court for the Northern District of Georgia, Super Power Supply, Inc. v. Macase Industrial Corp., Case No. 93-CV-2686 JOF (N.D.Ga.1993). Plaintiff then moved ex parte, without notice, in both courts for orders (1) restraining defendants from marketing or selling merchandise bearing the MA-CASE mark,1 or from otherwise using the MACASE mark in any fashion; and (2) permitting plaintiff, pursuant to 15 U.S.C. § 1116(d), to seize any allegedly counterfeit merchandise and any business records related thereto.

[251]*251On November 17, 1993, this Court met with plaintiffs counsel in chambers to discuss the propriety of such extraordinary relief as an unnoticed, ex parte seizure order. The Court was concerned because the only fact offered by Super Power in support of its conclusory allegation that it “owns the ‘Ma-case’ mark” was a representation that Super Power had filed an intent-to-use application with the United States Patent and Trademark Office on August 13, 1993. Mr. Hwu repeatedly assured the Court, however, that he was “experienced in trademark matters” and that a broad seizure order was warranted in cases “such as this.” After considering Mr. Hwu’s arguments, the Court refused to grant Super Power the broad relief which it sought, and issued instead a narrow TRO authorizing the plaintiff and the United States Marshals to enter Maease-Taiwan’s California office and make a copy of a customer database that was allegedly stolen from Super Power by employees of MacaseTaiwan (the “California TRO”).2 At plaintiff’s request, however, the Court agreed not to sign the California TRO until November 22 because Mr. Hwu represented to the Court that he was having difficulty arranging for service of the TRO by the Marshal’s Office. The Court then gave plaintiff five days to serve Macase-Taiwan.

On November 19, the district court in Georgia denied a nearly identical ex parte, unnoticed motion pending before that court. In doing so, however, Judge J. Owen Forrester granted plaintiff leave to renew its motion once plaintiff supplied new factual and legal information.3 After Super Power made this reapplication, the Georgia court issued on November 22 a TRO prohibiting defendant from using the trademark, trade name, or logo MACASE in any fashion, and authorizing seizure of all of defendant’s inventory located at the Georgia office of Macase (the “Georgia TRO”).4

[252]*252Meanwhile, plaintiff failed to execute the California TRO within the five days allowed by this Court, and was forced to apply ex parte on November 24 (just before the Thanksgiving holiday weekend) for an extension of time so that it could serve the California TRO along with the broader Georgia TRO. In his ex parte application to this Court for an extension of time, Mr. Hwu represented by affidavit that (i) he had travelled to the Georgia district court on November 18, 1993, (ii) “due to his caseload,” the district judge in Georgia “did not review plaintiffs ex parte application until November 24, 1993,” and (iii) the district judge “granted plaintiffs request” for a TRO. Mr Hwu made these statements to this Court knowing that the Georgia court initially denied plaintiffs ex parte request on November 19, citing concerns regarding the accuracy of Super Power’s factual allegations and the validity of its asserted legal authorities for the unnoticed TRO.

Even without knowledge of Mr. Hwu’s creative interpretation of the Georgia court’s rulings, this Court denied the application on November 30 because it believed that any alleged “service problems” were caused by nothing other than plaintiffs attorney’s lack of diligence. Plaintiff refiled an ex parte, unnoticed application for a limited TRO with the Court on December 3, however, and the Court re-issued the California TRO on December 6 upon the condition that plaintiff serve the re-issued order within three days. Plaintiff then executed both the California TRO and the Georgia TRO simultaneously on December 8, 1993.

The first hearing regarding whether a preliminary injunction should issue was scheduled for Friday, December 10, in the Georgia court. Judge Forrester temporarily postponed this hearing, however, because Super Power’s December 8 service of the Georgia TRO afforded defendant only two days’ notice of the hearing. On December 13, the Georgia court held its preliminary injunction hearing, and, at that time, refused to issue a preliminary injunction, refused to release plaintiffs $100,000 corporate security bond, and ordered plaintiff to release all of the property seized from Macase-Taiwan’s office in Georgia. Plaintiff voluntarily dismissed the Georgia action the next day.

Two days later, on December 16, the parties appeared before this Court for its hearing regarding whether a preliminary injunction should issue. At this hearing, for the first time, all of the pertinent facts relating to this case were placed before the Court. Although many of the details are bitterly debated by the parties, after reviewing the many declarations and exhibits submitted both in support of and in opposition to the various motions before the Court, the Court finds that certain facts are clear.

Macase Industrial Corp., a Taiwanese corporation, registered the MACASE trademark in Taiwan around 1989. On or about October 7, 1989, Maease-Taiwan first shipped computer cases and other equipment to the United States to be sold through a California distributor named Antee, Inc. (“Antee”). It was not until early 1991, however, that Maease-Taiwan began molding the name MACASE onto its computer cases. On or about February 14, 1991, Maease-Taiwan first shipped computer products bearing this mark to Antee. Although Maease-Taiwan continued to distribute its products in the United States through Antee until June 1992, it has had other domestic distributors as well.

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154 F.R.D. 249, 94 Daily Journal DAR 4142, 31 U.S.P.Q. 2d (BNA) 1677, 28 Fed. R. Serv. 3d 961, 1994 U.S. Dist. LEXIS 3204, 1994 WL 94038, Counsel Stack Legal Research, https://law.counselstack.com/opinion/super-power-supply-inc-v-macase-industrial-corp-cacd-1994.