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`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF CALIFORNIA, SAN JOSE DIVISION
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` Case No. 5:21-cv-04272-EJD
`
`CONSENT JUDGMENT AND
`PERMANENT INJUNCTION
`
`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.
`
`
`On consent of Plaintiffs Cisco Systems, Inc. and Cisco Technology, Inc. (together,
`“Cisco”) and Plaintiff Ciena Corporation (“Ciena”) (collectively, “Plaintiffs”), and Defendants
`Wuhan Wolon Communication Technology Co., Ltd. and Wuhan Wolon Cloud Network
`Communication Technology Co., Ltd., (together, “Wolon”):
`WHEREAS, on July 22, 2021, Plaintiffs filed their First Amended Complaint asserting
`federal claims for Trademark Infringement (15 U.SC. § 1114–1117), Dilution of Mark (15 U.S.C.
`§ 1125), and Unfair Competition (15 U.S.C. § 1125), as well as California law claims for False
`Advertising (Cal. Bus. & Prof. Code § 17500) and Unfair Competition (Cal. Bus. & Prof. Code §
`
`2790.000/1662162.2
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`Case No. 5:21-cv-04272-EJD
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`CONSENT JUDGMENT AND PERMANENT INJUNCTION
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`Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 2 of 9
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`7200), and alleging that Wolon, without authorization from Cisco and Ciena, marketed,
`advertised, distributed, sold, offered for sale, and otherwise used in commerce in the United States
`counterfeit Cisco and Ciena pluggable transceiver modules and labels, all of which claims have
`given rise to significant damages;
`WHEREAS, Wolon now stipulates and consents to this Consent Judgment and Permanent
`Injunction, and to its prompt entry by the Court, and in order to avoid the costs and expenses
`related to litigation, Plaintiffs and Wolon wish to mutually release each other from certain liability
`and claims;
`NOW THEREFORE, upon consent of the parties hereto, and in consideration of the
`promises, releases, representations, and warranties set forth herein, the sufficiency of which is
`acknowledged by all parties to this Consent Judgment, it is hereby ORDERED, ADJUDGED,
`AND DECREED:
`1.
`Wolon’s acts set forth in the First Amended Complaint constitute federal
`Trademark Infringement, (15 U.SC. § 1114–1117), Dilution of Mark (15 U.S.C. § 1125), and
`Unfair Competition (15 U.S.C. § 1125), and violate California law for False Advertising (Cal.
`Bus. & Prof. Code § 17500) and Unfair Competition (Cal. Bus. & Prof. Code § 7200);
`2.
`As a direct and proximate result of Wolon’s infringing conduct, Plaintiffs have
`sustained substantial, immediate, and irreparable injury, and are entitled to damages and an
`injunction pursuant to 15 U.S.C. §§ 1116-1117;
`3.
`Wolon, along with its principals, agents, attorneys, members, servants, employees,
`directors, officers, parents, successors, heirs, assigns, executors, representatives, and subsidiaries,
`and all other persons in active concert and participation with them, or who otherwise aid and abet
`Wolon, are permanently enjoined from manufacturing, buying, selling, importing, marketing,
`advertising, distributing, or in any way using in commerce any goods bearing any of the following
`marks, or any reproduction, counterfeit, copy, colorable imitation of, or any logo, trade name, or
`trademark confusingly similar to any of the following marks, or otherwise infringing or diluting
`any of the following marks (the “Cisco Marks”):
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`2790.000/1662162.2
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`Case No. 5:21-cv-04272-EJD
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`CONSENT JUDGMENT AND PERMANENT INJUNCTION
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`Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 3 of 9
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`• ”CISCO” (Reg. Nos. 1,542,339; 2,498,746; 3,709,076; 3,978,294; 3,985,844;
`3,990,147; 4,005,670);
`
`•
`
` (Reg. Nos. 3,759,451).
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`And (the “Ciena Marks”):
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`• “Ciena” (Reg. Nos. 2,070,330 and 3,026,860);
`
`•
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`
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`4.
`Wolon, along with its principals, agents, attorneys, members, servants, employees,
`directors, officers, parents, successors, heirs, assigns, executors, representatives, and subsidiaries,
`and all other persons in active concert and participation with them, or who otherwise aid and abet
`Wolon, are further permanently enjoined from mentioning “Cisco” and/or “Ciena” or using any of
`the Cisco Marks and/or Ciena Marks in its publicity, promotion, or advertising, including, without
`limitation, on any domain name, website, uniform resource locator (URL), internet store, or
`online marketplace platform, including, without limitation, Amazon and Alibaba.
`5.
`Wolon, along with its principals, agents, attorneys, members, servants, employees,
`directors, officers, parents, successors, heirs, assigns, executors, representatives, and subsidiaries,
`and all other persons in active concert and participation with them, or who otherwise aid and abet
`Wolon, are further permanently enjoined from using any logo, trade name, or trademark which
`may be calculated to falsely represent or which has the effect of falsely representing that the
`services or products of Wolon are sponsored by, authorized by, or in any way associated with
`Cisco and/or Ciena, or affixing, applying, annexing, or using in connection with the sale of any
`goods a false description or representation including words or other symbols tending to falsely
`describe or represent such goods as being Cisco and/or Ciena products, or engaging in any act
`which is likely to cause the trade, retailers, or members of the purchasing public to believe that
`Wolon is associated with Cisco and/or Ciena.
`
`2790.000/1662162.2
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`Case No. 5:21-cv-04272-EJD
`3
`CONSENT JUDGMENT AND PERMANENT INJUNCTION
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`Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 4 of 9
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`6.
`Wolon and its principals may not invest in, control, have any direct or indirect
`ownership interest in, work for, lend money to, or participate in any business that violates any
`term of this Consent Judgment.
`7.
`If Wolon is found by the court to have violated the prohibitions of this Consent
`Judgment or has failed to maintain complete records of their violations, Plaintiffs are entitled at
`their election to liquidated damages of $10,000 per item of counterfeit Cisco and/or Ciena product,
`label, listing, or advertisement that Wolon advertised and/or sold (or has advertised or sold on its
`behalf by its principals, agents, attorneys, members, servants, employees, directors, officers,
`parents, successors, heirs, assigns, executors, representatives, and subsidiaries, and all other
`persons in active concert and participation with them, or who otherwise aid and abet Wolon in
`violating this Consent Judgment) that violate this Consent Judgment; or to Cisco’s and/or Ciena’s
`actual, statutory, and punitive damages. Where Wolon has failed to maintain complete records of
`its violations, all sales and/or listings by Wolon within the period of Wolon’s record-keeping
`failure shall be considered counterfeit Cisco and/or Ciena sales and/or listings in violation of this
`Consent Judgment and shall be subject to Cisco’s and/or Ciena’s damages election. In any action,
`regardless of which measure of damages Cisco and/or Ciena selects, they shall be entitled to
`recover their attorneys’ fees and investigator fees for finding and demonstrating that Wolon has
`violated this Consent Judgment and otherwise incurred in connection with obtaining, enforcing,
`and collecting an award of damages. All liability will be joint and several among Wolon and its
`principals.
`8.
`In addition to other remedies, including damages, for contempt of this Consent
`Judgment, in the event of breach or violation by Wolon along with its principals, agents, attorneys,
`members, servants, employees, directors, officers, parents, successors, heirs, assigns, executors,
`representatives, and subsidiaries, and all other persons in active concert and participation with
`them, or who otherwise aid and abet Wolon in violating this Consent Judgment, Cisco and/or
`Ciena are entitled to a preliminary and permanent injunction against the breaching conduct upon a
`showing of a possibility of success of establishing that such a breach occurred.
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`2790.000/1662162.2
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`Case No. 5:21-cv-04272-EJD
`4
`CONSENT JUDGMENT AND PERMANENT INJUNCTION
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`Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 5 of 9
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`9.
`Plaintiffs and Wolon each agree that jurisdiction and venue for an action for
`contempt of this Consent Judgment exists in the United States District Court for the Northern
`District of California. In such an action, Wolon shall waive any and all defenses based upon
`personal jurisdiction, subject matter jurisdiction, and venue.
`10. Wolon agrees to assist Plaintiffs in the prosecution of the Action. Wolon also
`agrees to assist Plaintiffs in the prosecution of any future pleading, discovery, or action related to
`the subject matter of the Action. Wolon further agrees to alert Plaintiffs to any future sales or
`purchases of counterfeit Cisco and/or Ciena products in the United States of which Wolon
`becomes aware and to assist Plaintiffs in pursuing those cases. The assistance contemplated by this
`paragraph shall include Wolon notifying Plaintiffs about and sharing any information Wolon
`possesses or comes to possess in the future concerning the importation, manufacturing, purchase,
`marketing, advertisement, distribution, sale, offer for sale, or use in commerce in the United States
`of Cisco and/or Ciena products, and Wolon’s agreement, upon receipt of reasonable written notice,
`to testify at any deposition, hearing, or trial relating to counterfeit Cisco and/or Ciena products.
`11. Wolon hereby assigns to Plaintiffs any and all of Wolon’s known and unknown,
`suspected and unsuspected claims, demands, causes of action, damages, accounts, reckonings,
`costs, expenses, and actions of any nature whatsoever on account of or arising out of the subject
`matter of the Action, which Wolon now has, owns, or holds, or at any time may hereafter have,
`own, or hold against any other defendant or non-party to the Action, or otherwise relating to
`Wolon’s importation, purchase, marketing, advertisement, distribution, sale, offer for sale, and/or
`use in commerce in the United States of counterfeit Cisco and/or Ciena products. This includes,
`but is in no way limited to, claims for indemnity or contribution.
`12.
`This Consent Judgment is entered pursuant to Rule 58 of the Federal Rules of Civil
`Procedure, and this Action is hereby dismissed, with prejudice, only as to Wolon, without costs or
`attorneys’ fees, save that this District Court shall retain jurisdiction over this action, including,
`without limitation, over implementation of or disputes arising out of this Consent Judgment with
`regard to Wolon or its principals, agents, attorneys, members, servants, employees, directors,
`officers, parents, successors, heirs, assigns, executors, representatives, and subsidiaries. Plaintiffs,
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`2790.000/1662162.2
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`Case No. 5:21-cv-04272-EJD
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`Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 6 of 9
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`in addition to any award of damages or injunctive relief, shall be entitled to an award of attorneys’
`fees and costs and investigators’ fees and costs in connection with a violation of this order by
`Wolon or its principals, agents, attorneys, members, servants, employees, directors, officers,
`parents, successors, heirs, assigns, executors, representatives, and subsidiaries.
`13.
`The Parties hereby state that they have agreed to this Consent Judgment solely to
`avoid further litigation. To the extent allowable by law, this Consent Judgment shall have no
`precedential value or effect and shall not be admissible in any other action or proceeding, except
`in any action or proceeding to enforce this Consent Judgment, any action or proceeding
`contemplated by the terms of this Consent Judgment, or any action or proceeding relating to any
`contemporaneous Agreement among the parties to this Consent Judgment.
`14.
`Signatures to this Consent Judgment transmitted electronically or by facsimile shall
`be deemed original.
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`{Signatures on following page}
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`2790.000/1662162.2
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`Case No. 5:21-cv-04272-EJD
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`CONSENT JUDGMENT AND PERMANENT INJUNCTION
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`Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 7 of 9
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`Dated: __________, 2021
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`Wuhan Wolon Communication Technology
`Co., Ltd. and Wuhan Wolon Cloud Network
`Communication Technology Co., Ltd.
`
`
`By:
`Title:
`
`Jack Liv
`
`
`
`
`
`
`CONSENTED AND AGREED TO BY:
`Dated: __________, 2021
`Cisco Systems, Inc.
`
`
` William W. Friedman
`By:
`Title: Vice President & Deputy General Counsel
`
`
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`Cisco Technology, Inc.
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`
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`
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` Dan Lang
`By:
`Title: Vice President & Assistant Secretary
`
`Dated: October 1, 2021
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`Ciena Corporation
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`
`
`By:
`Title:
`
`
`SO ORDERED.
`
`
`EDWARD J. DAVILA
`UNITED STATES DISTRICT JUDGE
`
`
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`2790.000/1662162.2
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`Case No. 5:21-cv-04272-EJD
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`CONSENT JUDGMENT AND PERMANENT INJUNCTION
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`October 4
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`Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 8 of 9
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`CONSENTED AND AGREED TO BY:
`Dated: __________, 2021
`Cisco Systems, Inc.
`
`
` William W. Friedman
`By:
`Title: Vice President & Deputy General Counsel
`
`
`
`Cisco Technology, Inc.
`
`
`
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` Dan Lang
`By:
`Title: Vice President & Deputy General Counsel
`
`Dated: __________, 2021
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`Ciena Corporation
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`Dated: __________, 2021
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`Wuhan Wolon Communication Technology
`Co., Ltd. and Wuhan Wolon Cloud Network
`Communication Technology Co., Ltd.
`
`
`By:
`Title:
`
`Jack Liv
`
`
`
`
`
`
`
` David M. Rothenstein
`By:
`Title: Senior Vice President & General Counsel
`
`
`SO ORDERED.
`
`
`EDWARD J. DAVILA
`UNITED STATES DISTRICT JUDGE
`
`
`
`2790.000/1662162.2
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`Case No. 5:21-cv-04272-EJD
`CONSENT JUDGMENT AND PERMANENT INJUNCTION
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`* Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 9 of 9
`Case 5:21-cv-04272-EJD Document 60-1 Filed 10/15/21 Page 9 of 9
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`CONSENTED AND AGREED TO BY:
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`Dated:
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`Cisco Systems, Inc.
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`, 2021
`
`Deputy General Counsel
`
`
`By: William W. Friedman
`Title: Vice President &
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`Cisco Technology, Inc.
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`
`
`By: Dan Lang
`Title: Vice President & Deputy General Counsel
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`Dated:
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`, 2021
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`Ciena Corporation
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`
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`By:
`Title:
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`kEWHWwW
`NyDDtr
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`SO ORDERED.
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`EDWARD J. DAVILA
`UNITED STATES DISTRICT JUDGE
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