Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 1 of 41
`
`PATRICK M. RYAN (SBN 203215)
`pryan@bzbm.com
`STEPHEN C. STEINBERG (SBN 230656)
`ssteinberg@bzbm.com
`GABRIELLA A. WILKINS (SBN 306173)
`gwilkins@bzbm.com
`BARTKO ZANKEL BUNZEL & MILLER
`A Professional Law Corporation
`One Embarcadero Center, Suite 800
`San Francisco, California 94111
`Telephone: (415) 956-1900
`Facsimile: (415) 956-1152
`
`Attorneys for Plaintiffs CISCO SYSTEMS, INC.,
`CISCO TECHNOLOGY, INC., and CIENA CORPORATION
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA
`
`Case No. 5:21-cv-04272-EJD
`
`[PROPOSED] ORDER GRANTING
`PLAINTIFF CIENA CORPORATION’S
`MOTION FOR PRELIMINARY
`INJUNCTION
`(MODIFIED BY THE COURT)
`
`CISCO SYSTEMS, INC.; CISCO
`TECHNOLOGY, INC.; and CIENA
`CORPORATION,
`
`Plaintiffs,
`
`v.
`
`WUHAN WOLON COMMUNICATION
`TECHNOLOGY CO., LTD. and WUHAN
`WOLON CLOUD NETWORK
`COMMUNICATION TECHNOLOGY CO.,
`LTD.,
`
`Defendants.
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`2790.000/1655235.2
`Case No. 5:21-cv-04272-EJD
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA CORP.’S MOTION FOR PRELIMINARY INJUNCTION
`
`

`

`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 2 of 41
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`On July 23, 2021, upon a motion by Plaintiff Ciena Corporation (“Ciena”) (see ECF No.
`
`38), the Court issued a Temporary Restraining Order (“TRO”) and an Order to Show Cause
`
`(“OSC”) why a preliminary injunction should not also be issued enjoining Defendants Wuhan
`
`Wolon Communication Technology Co., Ltd. and Wuhan Wolon Cloud Network Communication
`
`Technology Co., Ltd. (“Defendants”), and their owners, principals, agents, officers, directors,
`
`members, servants, employees, successors, assigns, and all other persons in concert and
`
`participation with them (collectively, the “Restrained Parties”) from actions relating to their
`
`alleged counterfeiting and infringement of Ciena’s trademarks, among other things, and enjoining
`
`financial institutions, eCommerce websites, domain name registrars, Internet search engines, and
`
`common carriers (collectively, “Third Parties”) from providing related services to Defendants,
`
`among other things. See ECF No. 43, attached and incorporated herein as Exhibit A. In
`
`compliance with such Order, on July 30, 2021, Ciena served Defendants by email with, among
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`other things, the Summonses, Amended Complaint, Ciena’s Motion for a TRO and supporting
`
`papers, and the Court’s TRO and OSC as to Ciena, including notice of the requirement that
`
`Defendants respond to the OSC by August 16, 2021 and notice of the hearing set for August 26,
`
`2021 at 10:00 a.m. See ECF No. 44.
`
`Despite receiving notice of the requirement to respond to the OSC, Defendants filed no
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`response.
`
`The Court held a hearing on the OSC on August 26, 2021, at which Ciena was represented
`
`by Gabriella A. Wilkins and Stephen C. Steinberg. Despite receiving notice of the hearing,
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`Defendants failed to appear.
`
`Having considered Ciena’s Motion and Memorandum in support thereof (see ECF No. 38),
`
`the Declarations of the First, Second, and Third Witnesses in Support of Ciena’s Motion and
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`exhibits thereto (see ECF Nos. 38-1, 38-2, 38-3), and the arguments by Ciena’s counsel at the
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`hearing on the OSC on August 26, 2021, the Court hereby affirms its prior findings of fact and
`
`legal conclusions set forth in the Court’s TRO. See ECF No. 43, attached and incorporated herein
`
`as Exhibit A. Thus, for the reasons set forth in the Court’s TRO, the Court hereby issues a
`
`2790.000/1655235.2
`Case No. 5:21-cv-04272-EJD
`1
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA CORP.’S MOTION FOR PRELIMINARY INJUNCTION
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`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 3 of 41
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`preliminary injunction enjoining the Restrained Parties and the Third Parties as set forth below,
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`pending entry of the final judgment in this action.
`
`I.
`
`ORDER
`
`A.
`
`Preliminary Injunction
`
`Defendants and their
`Pending entry of the final judgment in this action, Wolon and its owners, principals,
`
`agents, officers, directors, members, servants, employees, successors, assigns, and all other
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`persons in concert and participation with them (collectively, the “Restrained Parties”) shall be
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`restrained from:
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`1. Purchasing, selling, distributing, marketing, manufacturing, or otherwise using any of
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`the CIENA Marks (as defined below), whether counterfeit or authentic, or any marks
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`confusingly similar thereto in connection with the manufacture, sale, offer for sale,
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`distribution, advertisement, or any other use of counterfeit or authentic Ciena products.
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`The “CIENA Marks” are:
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`“CIENA” (U.S. Trademark Reg. Nos. . 2,070,330 and 3,026,860)
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`;
`
`
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`
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`2. Using any logo, trade name, or trademark confusingly similar to any of the CIENA
`
`Marks which may be calculated to falsely represent or which has the effect of falsely
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`representing that the services or products of any or all of the Restrained Parties or
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`others are sponsored by, authorized by, or in any way associated with Ciena;
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`3.
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`Infringing any of the CIENA Marks;
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`4. Otherwise unfairly competing with Ciena in the manufacture, sale, offering for sale,
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`distribution, advertisement, or any other use of Ciena products;
`Defendants
`5. Falsely representing Wolon as being connected with Ciena or sponsored by or
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`associated with Ciena or engaging in any act which is likely to cause the trade,
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`retailers, and/or members of the purchasing public to believe that any or all of the
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`Restrained Parties are associated with Ciena;
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`2790.000/1655235.2
`Case No. 5:21-cv-04272-EJD
`2
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA’S MOTION FOR PRELIMINARY INJUNCTION
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`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 4 of 41
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`6. Using any reproduction, counterfeit, copy, or colorable imitation of any of the CIENA
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`Marks in connection with the publicity, promotion, sale, or advertising of counterfeit
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`Ciena products, or labels;
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`7. Affixing, applying, annexing, or using in connection with the sale of any goods, a false
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`description or representation including words, other symbols, or labels tending to
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`falsely describe or represent such goods as being Ciena products and from offering
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`such goods in commerce;
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`8. Diluting any of the CIENA Marks;
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`9. Removing from its premises, or discarding, destroying, transferring, or disposing in
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`any manner any information, computer files, electronic files, business records
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`(including but not limited to e-mail communications), or other documents relating to
`Defendants'
`Wolon’s assets and operations or relating in any way to the purchase, sale,
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`manufacture, offer for sale, distribution, negotiation, importation, advertisement,
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`promotion, or receipt of any products purporting to be Ciena; and
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`10. Assisting, aiding, or abetting any other person or business entity in engaging in or
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`performing any of the activities referred to in subparagraphs (1) through (9) above.
`Defendants'
`Freezing Wolon’s Assets
`
`Defendants
`Pending entry of the final judgment in this action, Wolon shall be restrained from secreting
`
`B.
`
`any assets, and from transferring or conveying any assets held by, for, or on account of any of the
`
`Restrained Parties, and a full accounting of the restrained assets shall be provided to counsel for
`
`Ciena within three business days of receipt of this Order.
`
`1. Pending entry of the final judgment in this action, all assets and funds held by, for, or
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`on account of any of the Restrained Parties, or in an account owned or controlled by
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`any of the Restrained Parties, or in an account as to which any of the Restrained Parties
`
`has signature authority, shall be frozen and restrained, and a full accounting of the
`
`restrained assets shall be provided to counsel for Ciena within three business days of
`
`receipt of this Order.
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`2790.000/1655235.2
`Case No. 5:21-cv-04272-EJD
`3
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA’S MOTION FOR PRELIMINARY INJUNCTION
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`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 5 of 41
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`2. Pending entry of the final judgment in this action, any bank, brokerage house, financial
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`institution, credit card association, merchant account provider, escrow service, savings
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`and loan association, payment provider, payment processing service provider, money
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`transmission service, third-party processor, or other financial institution (including, but
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`not limited to, Alipay (a payment platform affiliated with Alibaba), MasterCard, VISA,
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`American Express, Discover, PayPal, Inc., Wish.com, Amazon Pay, WeChat Pay, and
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`any correspondent, issuing, or member bank or account) (collectively, “Payment
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`Services”) holding any assets by, for, or on account of, or any balance, payable, or
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`receivable owed to or held on account of, any of the Restrained Parties, or in an
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`account as to which any of the Restrained Parties has signature authority, including but
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`not limited to China Construction Bank, CITIBANK N.A., and Alipay, shall locate all
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`accounts and funds, whether located inside or outside the United States, connected to
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`any Restrained Parties and be restrained from releasing such funds until further order
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`of this Court, and within three business days of receipt of this Order shall provide to
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`counsel for Ciena a full accounting of the restrained assets.
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`3. Pending entry of the final judgment in this action, any eCommerce Website, retailer,
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`wholesaler, fulfillment center, warehouse, or any business or individual that has any
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`money, property, or inventory owned by, or receivable owed to, any Restrained Party
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`shall hold such money, property, inventory, or receivable until further order of this
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`Court, and shall within three business days of receipt of this Order provide to counsel
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`for Ciena a full accounting of all money, property, inventory, and receivables being
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`held.
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`C.
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`eCommerce Websites
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`Pending entry of the final judgment in this action, any Internet store or online marketplace
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`platform, including, but not limited to, iOffer, eBay, AliExpress, Alibaba, Amazon, Wish.com,
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`Facebook, and Dhgate (collectively, “eCommerce Websites”) shall disable and be restrained from
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`providing any services or payment to any Restrained Party, currently or in the future, in relation to
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`any Ciena-marked product and/or product advertised using the CIENA Marks, including
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`2790.000/1655235.2
`Case No. 5:21-cv-04272-EJD
`4
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA’S MOTION FOR PRELIMINARY INJUNCTION
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`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 6 of 41
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`fulfillment of any pending orders; transfer to Ciena’s control any seller identifications (including,
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`but not limited to, the seller identifications identified in Exhibit A to the Decl. of Third Witness,
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`ECF No. 8, pp. 11-18) associated with any of the Restrained Parties’ advertisement, offer for sale,
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`or sale of Ciena-marked products and/or using the CIENA Marks, pending final hearing and
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`determination of this action; disable and be restrained from displaying any advertisements used by
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`or associated with any Restrained Party in connection with the advertisement, offer for sale, or
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`sale of Ciena-marked products, or labels, or otherwise using the CIENA Marks; disable access to
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`any Restrained Party from any platform (including, but not limited to, direct, group, seller product
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`management, vendor product management, and brand registry platforms) of any listings and
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`associated images of Ciena-marked products or otherwise using the CIENA Marks (including, but
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`not limited to, any listings and associated images identified by the “parent” or “child” Amazon
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`Standard Identification Numbers (“ASIN”), and any other listings and images of products
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`associated with any “parent” or “child” ASIN linked to any Restrained Party or linked to any other
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`alias of a Restrained Party being used or controlled to offer for sale products using the CIENA
`Defendant
`Marks); remove links to any online marketplace accounts on which Wolon advertises, offers for
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`sale, or sells Ciena-marked products and/or products advertised using the CIENA Marks; take all
`Defendants'
`steps necessary to prevent links to Wolon’s online marketplace accounts from displaying any
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`Ciena-marked product and/or product advertised using the CIENA Marks in search results; and
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`within three business days of receipt of this Order provide to counsel for Ciena a statement
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`certifying compliance with the requirements of this paragraph.
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`D.
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`Domain Names
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`Pending entry of the final judgment in this action:
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`1. Any registrar for any domain names owned, operated, or controlled by, or otherwise
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`associated with, any Restrained Party (including, but not limited to, wolonte.com)
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`(collectively, Domain Names”), shall disable and be restrained from providing any
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`services to any Restrained Party, currently or in the future, in relation to any Ciena-
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`marked product and/or product advertised using the CIENA Marks; deposit with a
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`registrar of Ciena’s choosing the domain certificates of any domain names owned,
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`2790.000/1655235.2
`Case No. 5:21-cv-04272-EJD
`5
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA’S MOTION FOR PRELIMINARY INJUNCTION
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`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 7 of 41
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`operated, or controlled by, or otherwise associated with, any Restrained Party pending
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`final hearing and determination of this action; be restrained from transferring use and
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`control of any of the Domain Names to any individual or entity other than a registrar of
`Defendant
`Ciena’s choosing; take all steps necessary to prevent Wolon from displaying any
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`Ciena-marked product and/or product advertised using the CIENA Marks on any
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`domain name in the registrar’s possession, custody, or control; and within three
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`business days of receipt of this Order provide to counsel for Ciena a statement
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`certifying compliance with the requirements of this paragraph.
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`2. The Restrained Parties shall be restrained from modifying control of or transferring use
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`and control of any of the Domain Names.
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`E.
`
`Internet Search Engines
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`Pending entry of the final judgment in this action, any Internet search engine, web host,
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`sponsored search engine, or ad-word provider (including, but not limited to Google, Bing, Baidu,
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`and Yahoo) (collectively, “Internet Search Engines”) shall deindex, delist, or otherwise remove
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`from its index and search results any URL owned, controlled, or otherwise associated with any
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`Restrained Party’s advertisement, offer for sale, or sale of Ciena-marked products and/or products
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`advertised using the CIENA Marks (including, but not limited to, the URLs identified in Exhibit A
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`to the Decl. of Third Witness, ECF No. 8, pp. 11-18); disable and be restrained from providing
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`any services to any Restrained Party, currently or in the future, in relation to the advertisement,
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`offer for sale, or sale of Ciena-marked products and/or products advertised using the CIENA
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`Marks; disable and be restrained from displaying any advertisements used by or associated with
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`any Restrained Party in connection with the advertisement, offer for sale, or sale of Ciena-marked
`Defendants'
`products and/or otherwise using the CIENA Marks; remove links to any of Wolon’s online
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`marketplace accounts owned, operated, or controlled by, or otherwise associated with, any
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`Restrained Party in connection with the advertisement, offer for sale, or sale of Ciena-marked
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`products and/or products advertised using the CIENA Marks (including, but not limited to, the
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`URLs identified in Exhibit A to the Decl. of Third Witness, ECF No. 8, pp. 11-18); take all steps
`Defendants'
`necessary to prevent links to Wolon’s online marketplace accounts from displaying any Ciena-
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`2790.000/1655235.2
`Case No. 5:21-cv-04272-EJD
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`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA’S MOTION FOR PRELIMINARY INJUNCTION
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`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 8 of 41
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`marked product and/or product advertised using the CIENA Marks in search results; and within
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`three business days of receipt of this Order provide to counsel for Ciena a statement certifying
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`compliance with the requirements of this paragraph.
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`F.
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`Common Carriers
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`Pending entry of the final judgment in this action, any person or company that transports or
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`provides transportation services (including, but not limited to, United Parcel Service a/k/a UPS,
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`FedEx, DHL, and any of their subsidiaries in the U.S. or abroad) (collectively, “Common
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`Carriers”) shall be restrained from fulfilling any shipments, accepting any shipments, or otherwise
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`providing any services to any of the Restrained Parties, and within three business days of receipt
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`of this Order shall provide to counsel for Ciena a statement certifying compliance with the
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`requirements of this paragraph.
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`G.
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`Sequestration and Inspection of Ciena-Marked Products and Products
`Advertised Using the CIENA Marks
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`Pending entry of the final judgment in this action:
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`1. The Restrained Parties shall sequester and deliver to counsel for Ciena all Ciena-
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`marked products and/or products advertised using the CIENA Marks in their inventory,
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`possession, custody, or control to be examined and held by Ciena until further order of
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`this Court.
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`2. Any eCommerce Website (as defined above) or Common Carrier shall sequester and
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`deliver to counsel for Ciena all Ciena-marked products and/or products advertised
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`using the CIENA Marks offered for sale by any Restrained Party that are in its
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`possession, custody, or control to be examined and held by Ciena until further order of
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`this Court.
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`Expedited Discovery
`H.
`Defendant
`Wolon, the Restrained Parties, and the Third Parties, including but not limited to Alibaba,
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`subject to the Court’s TRO as to Ciena (ECF No. 43, attached and incorporated herein as Exhibit
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`A, pp. 28-29), the Court’s TRO as to Cisco (ECF No. 24), and the Court’s preliminary injunction
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`as to Cisco (ECF No. 31), remain obligated to produce expedited discovery as set forth therein, to
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`2790.000/1655235.2
`Case No. 5:21-cv-04272-EJD
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`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA’S MOTION FOR PRELIMINARY INJUNCTION
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`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 9 of 41
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`the extent they have not already done so.
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`IT IS SO ORDERED.
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`30
`DATED: August __, 2021
`
`Hon. Edward J Davila
`United States District Judge
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`Case No. 5:21-cv-04272-EJD
`8
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA’S MOTION FOR PRELIMINARY INJUNCTION
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`

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`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 10 of 41
`Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 10 of 41
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`EXHIBIT A
`EXHIBIT A
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`

`

`
`
`Case 5:21-cv-04272-EJD Document 43 Filed 07/23/21 Page 1 of 31Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 11 of 41
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`PATRICK M. RYAN (SBN 203215)
`pryan@bzbm.com
`STEPHEN C. STEINBERG (SBN 230656)
`ssteinberg@bzbm.com
`GABRIELLA A. WILKINS (SBN 306173)
`gwilkins@bzbm.com
`BARTKO ZANKEL BUNZEL & MILLER
`A Professional Law Corporation
`One Embarcadero Center, Suite 800
`San Francisco, California 94111
`Telephone: (415) 956-1900
`Facsimile: (415) 956-1152
`
`Attorneys for Plaintiffs CISCO SYSTEMS, INC.,
`CISCO TECHNOLOGY, INC. and CIENA
`CORPORATION
`
`UNITED STATES DISTRICT COURT
`
`NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
`
`CISCO SYSTEMS, INC.; CISCO
`TECHNOLOGY, INC.; and CIENA
`CORPORATION,
`
`Plaintiffs,
`
`v.
`
`WUHAN WOLON COMMUNICATION
`TECHNOLOGY CO., LTD. and WUHAN
`WOLON CLOUD NETWORK
`COMMUNICATION TECHNOLOGY CO.,
`LTD.,
`
`Defendants.
`
`Case No. 5:21-cv-04272-EJD
`
`[PROPOSED] ORDER GRANTING
`PLAINTIFF CIENA CORPORATION’S
`EMERGENCY EX PARTE MOTION FOR
`TEMPORARY RESTRAINING ORDER,
`ASSET FREEZE ORDER, EXPEDITED
`DISCOVERY, ORDER AUTHORIZING
`ALTERNATIVE SERVICE OF PROCESS,
`AND ORDER TO SHOW CAUSE RE:
`PRELIMINARY INJUNCTION
`
`[RE: ECF __] 38
`
`2790.000/1644566.1
`Case No. 5:21-cv-04272-EJD
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA CORP.’S EX PARTE MOTION FOR TRO
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`Case 5:21-cv-04272-EJD Document 43 Filed 07/23/21 Page 2 of 31Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 12 of 41
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`Pending before the Court is Plaintiff Ciena Corporation’s (“Ciena”) ex parte motion for a
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`temporary restraining order, an order to show cause, an order freezing Defendants Wuhan Wolon
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`Communication Technology Co., Ltd. and Wuhan Wolon Cloud Network Communication
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`Technology Co., Ltd.’s (together, “Wolon”) assets, expedited discovery, and an order authorizing
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`alternative service of process by email. The Court has reviewed Ciena’s motion papers and [held
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`an ex parte hearing on ______________/ exercised its discretion to enter this ruling without a
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`hearing]. Because Ciena moved ex parte, requesting that no notice be provided and said request is
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`granted herein, Wolon was not heard.
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`For the reasons set forth herein, Ciena’s motion is GRANTED as further described in this
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`“Order.”
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`I.
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`BACKGROUND
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`A.
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`Ciena and Its Transceivers
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`Ciena is a national and world leader in developing, designing, manufacturing, and
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`providing telecommunications networking software, services, and equipment, including
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`transceivers—devices that transmit and receive data (“Ciena Transceivers”). 7/20/21 Decl. of First
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`Witness (“Decl. No. 1”)1 ¶ 5, ECF No. __; see 7/9/21 Decl. of Second Witness (“Decl. No. 2”) ¶ 7,
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`ECF No __. A variety of U.S. industries, including federal and state government entities,
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`telecommunications companies, research and education institutions like universities and colleges,
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`utility companies, and major healthcare centers, rely on Ciena Transceivers to perform critical
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`applications, and ensure the integrity of data transfer and communications. See Decl. No. 1 ¶ 12.
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`Transceivers are electronic devices that transmit and receive data. See Decl. No. 2 ¶ 7. A
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`transceiver encodes and decodes data by converting an electrical signal into light pulses and back
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`again, which are sent through a fiber optic cable. Id. Transceivers provide the vital connections in
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`networks. See Decl. No. 1 ¶ 11. The quality and performance of networks in the U.S. and around
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`the world depend on authentic and high-quality Ciena transceivers. Id. ¶¶ 11-12.
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`1 To avoid revealing the identities of the Ciena personnel conducting the investigation and the
`consultants participating in the investigation, the names of the declarants are undisclosed herein,
`and have been replaced with the number of the declaration in order of filing, as the names have
`been sealed pursuant to an Order entered contemporaneous with this opinion.
`2790.000/1644566.1
`Case No. 5:21-cv-04272-EJD
`1
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA CORP.’S EX PARTE MOTION FOR TRO
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`Case 5:21-cv-04272-EJD Document 43 Filed 07/23/21 Page 3 of 31Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 13 of 41
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`Ciena sells a range of transceivers varying in size, functionality, and price. See Decl. No. 2
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`¶ 7. Ciena designs all of its transceivers to meet and exceed industry standards for quality,
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`reliability, safety, and performance, which vary depending on the industry. Id. A variety of U.S.
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`industries, federal and state government entities, telecommunications companies, research and
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`education institutions like universities and colleges, utility companies, and major healthcare
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`centers, rely on Ciena Transceivers to perform critical applications, and ensure the integrity of data
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`transfer and communications. See Decl. No. 1 ¶ 12.
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`Ciena has invested heavily in the CIENA brand, which includes the “CIENA” word mark,
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`which is registered with the U.S. Patent and Trademark Office under U.S. Trademark Registration
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`Nos. 2,070,330 and 3,026,860, and the following CIENA logo (together, the “CIENA Marks”):
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`Id. ¶¶ 6-10, Ex. 1A. Ciena has used, and is currently using, the CIENA Marks continuously and
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`exclusively in commerce, including in connection with its sale of Ciena Transceivers, and plans to
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`continue such use in the future. Id. ¶ 8.
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`Ciena prominently displays the CIENA Marks in its advertising materials, and as a result,
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`the CIENA Marks are widely recognized and well-known to the public, and are synonymous with
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`reliable, high-quality networking hardware products. Id. ¶ 9. Ciena has spent, and continues to
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`spend, millions of dollars marketing and promoting in interstate commerce its products in
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`connection with the CIENA Marks. Id. Due to Ciena’s longtime use of and investment in the
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`CIENA Marks and the quality of Ciena’s products, the Ciena brand has built up a tremendous
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`amount of consumer goodwill. Id. ¶ 10. The CIENA Marks symbolize this goodwill, and are
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`invaluable assets to Ciena. Id.
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`Authentic Ciena Transceivers are manufactured by well-vetted third-party vendors called
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`original equipment manufacturers (“OEMs”). See Decl. No. 2 ¶ 8. Each of these OEMs utilize
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`specialized equipment and heavily tested processes to produce consistent, high-performing
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`products on which users rely. Id. Ciena requires its OEMs to follow strict quality and control
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`2790.000/1644566.1
`Case No. 5:21-cv-04272-EJD
`2
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA CORP.’S EX PARTE MOTION FOR TRO
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`Case 5:21-cv-04272-EJD Document 43 Filed 07/23/21 Page 4 of 31Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 14 of 41
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`standards that govern the entire lifecycle of each transceiver. Id. ¶ 9. Each model undergoes
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`multiple kinds of testing before going into production. Each OEM must maintain ongoing
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`reliability monitoring and is subject to stringent audits and regular business reviews to ensure
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`quality standards continue to be met and to identify areas for improvement. Id. And OEMs must
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`maintain detailed records for each product and its movement through the supply chain to enable
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`Ciena to support customers via serial number traceability. Id.
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`Wolon is a company based in China. As part of Ciena’s anti-counterfeiting efforts, Ciena’s
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`consultant discovered that Wolon was offering purported Ciena Transceivers online to U.S.
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`customers. See 7/1/21 Decl. of Third Witness (“Decl. No. 3”) ¶¶ 3-4, 6-8, ECF __. Ciena’s
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`consultant attests to having purchased purported Ciena transceivers and labels from Wolon, who
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`then shipped the transceivers to this District. Id. ¶¶ 7-19. Ciena attests that it analyzed and tested
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`these purported Ciena transceivers and labels and confirmed that they were inauthentic in that they
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`were not made by or associated with Ciena. See Decl. No. 2 ¶¶ 13-19.
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`Ciena presented evidence that Wolon’s counterfeit transceivers are offered for sale and/or
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`sold with product labels with counterfeit CIENA Marks referenced above, and/or are otherwise
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`designed to create the impression that they are authentic Ciena transceivers. Ciena attests that
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`examination also revealed that the design and construction of the counterfeit Ciena Transceivers
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`sold by Wolon did not match that of genuine Ciena Transceivers.
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`B.
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`Discovery and Examination of Counterfeit Ciena Transceivers
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`Certain details of Ciena’s investigation and examination are sealed; thus, this order does
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`not refer to them with specificity.
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`The success of Ciena’s brand has attracted criminal counterfeiters who illegally profit by
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`selling fake Ciena products. To combat this, Ciena investigates suspicious listings in online
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`marketplaces, and in this case, arranged for a consultant to buy suspect Ciena transceivers from
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`Wolon. See Decl. No. 2 ¶ 13; Decl. No. 3 ¶¶ 3-4, 6.
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`Ciena has engineers who can test and analyze potentially counterfeit products, using
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`specialized tools and product data to compare suspect products with authentic products. See Decl.
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`No. 2 ¶¶ 10-12. Wolon delivered transceivers and labels with the CIENA Marks purchased by
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`2790.000/1644566.1
`Case No. 5:21-cv-04272-EJD
`3
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA CORP.’S EX PARTE MOTION FOR TRO
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`Case 5:21-cv-04272-EJD Document 43 Filed 07/23/21 Page 5 of 31Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 15 of 41
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`Ciena’s consultants to an address in this District, and the consultants then shipped such products
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`and labels to Ciena for examination. Id. ¶ 13-16; Decl. No. 3 ¶¶ 5, 19.
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`A Ciena engineer examined five (5) samples of the transceivers received from Wolon to
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`determine whether they were genuine. See generally Decl. No. 2. As set forth below, Ciena’s
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`engineer personally evaluated each product using Ciena’s standard techniques for evaluating
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`potential counterfeits, and in each case determined that Wolon’s product was, in fact, inauthentic
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`in that it was indisputable that it had not been manufactured by Ciena or by someone associated
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`with Ciena. Id. This analysis was set forth in Ciena’s engineer’s declaration, and it shows that the
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`Ciena transceivers from Wolon are inauthentic. Id. The findings are summarized below.
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`In April 2021, Ciena’s consultant ordered 200 units of purported Ciena XCVR-A10Y31
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`transceivers with Ciena labels from Wolon. See Decl. No. 3 ¶¶ 7-13. Wolon repeatedly sent
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`pictures of such products and labels showing the CIENA Marks before the purchase was finalized
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`and payment was made. Id. In May 2021, Wolon sent the transceivers and labels with the CIENA
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`Marks to Ciena’s consultant in this District. Id. ¶¶ 15-17. Ciena’s consultant then sent the
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`purported Ciena Transceivers to Ciena for examination. See id. ¶ 5, 19; Decl. No. 2 ¶¶ 13-16.
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`On June 23, 2021, Ciena’s engineer examined samples of the suspect Ciena Transceivers
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`and labels received from Wolon. See Decl. No. 2 ¶ 17. Each label had the Ciena name and logo, as
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`well as Ciena Part Number XCVR-A10Y31. Id.; Decl. No. 3 ¶¶ 16-17. Each transceiver also had
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`an internal memory chip that contained data designed to make the product appear to have been
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`made by Ciena. See Decl. No. 2 ¶ 18. But Ciena’s engineer confirmed that the products were
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`clearly inauthentic in that they were not manufactured by Ciena or by someone associated with
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`Ciena in light of the many differences between them and authentic Ciena Transceivers. Id. ¶¶ 17-
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`19.
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`Based on these findings, Ciena has now joined Cisco in filing a First Amended Complaint
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`against Wolon for Trademark Infringement (15 U.SC. § 1114–1117), Dilution of Mark (15 U.S.C.
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`§ 1125), and Unfair Competition (15 U.S.C. § 1125), as well as California law claims for False
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`Advertising (Cal. Bus. & Prof. Code § 17500) and Unfair Competition (Cal. Bus. & Prof. Code
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`§ 17200). Ciena moves ex parte for a temporary restraining order, order to show cause, seizure
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`2790.000/1644566.1
`Case No. 5:21-cv-04272-EJD
`4
`[PROPOSED] ORDER GRANTING PLAINTIFF CIENA CORP.’S EX PARTE MOTION FOR TRO
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`Case 5:21-cv-04272-EJD Document 43 Filed 07/23/21 Page 6 of 31Case 5:21-cv-04272-EJD Document 51 Filed 08/30/21 Page 16 of 41
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`order, expedited discovery, an order freezing Wolon’s assets, and an order authorizing it to serve
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`Wolon by email.
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`For the reasons expressed below, Ciena’s motion is GRANTED.
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`II.
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`LEGAL STANDARD
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`A.
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`Notice
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`This Court may issue a TRO without notice to the adverse party if (1) “specific facts in an
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`affidavit or a verified complaint” show that immediate and irreparable injury will occur before the
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`adverse party can be heard and (2) the movant’s attorney certifies in writing what efforts were
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`made to give notice and the reasons why notice