Free Brief (Combined Opening and Answering) - District Court of Delaware - Delaware

Case 1:04-cv—O0884-SLR Document 40-12 Filed O3/15/2005 Page 1 014
EXHIBIT K

Case 1:04-cv—O0884-SLR Document 40-12 Filed O3/15/2005 Page 2 of 4
2 of 100 DOCUMENTS
YAMAHA INTERNATIONAL CORP., YAMAHA ELECTRONICS CORP.,
U.S.A., Piaintiffs, v. CENTRAL VENTURE, INC., dfbfa EAST 33RD
'FYPEWRITER & ELECTRONXCS, WILLLAM GAN, CHON A M. CHUA-GAN,
and JOHN DOES 1-10, Defendants
N0. 90 Civ. 9495
UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF
NEW YORK
1991 [LS. Dist. LEXIS 334; 13 Int'! Trade Rep. (BNA) 1233
January 10, 1991, Decided
January 14, 1991, Filed
CASE SUNEMARY: Trademark Law > Foreign & International Protections
> Registration
International Trade Law > Taryff Act of I 93 0
PROCEDURAL POSTURE: Piaintiff authorized Trademark Law > Protection of Rights > Registration >
distributor filed a motion for a stay of the couzfs Degree 0fPr0tecti0n
consideration of defendants independent distribut0rs' [HN1} The Tariff Act prohibits the unauthorized
motion for summary judgment. importation of or dealing in forcigwmadc goods bearing
a registered trademark owned by a United States
OVERVIEW: The independent distributors argued that corporation.
an argument similar to that made: by thc authorized
distributor had been made in a prior case 01:1 thc same International Trade Law > Turgffzict 0f1930
issues which was pending appeal. Therefore, collateral {HN2} T0 allow American subsidiaries of foreign {kms
estoppel supported thc grant of summary judgment to protection under 19 U.S.C.S. § 1526 would allow any
them on the ciaims under 19 U.S. CS. § 1526. The com foreign manufacturer to use a whcily owned American
found that judicial efficiency would bc best served by subsidiary as 2 means to secure the help of American
granting thc authorized distributufs motion, thereby tariff iawincnforcing woridwidc price discrimination.
suspending any decision on the summary judgment
mc>ti011unti1a&crthe decision in that prior casa had been Civil Procedure > Enrry of Judgments > Stay of
handed down. This course: of action, the court found, Pmceeding,s& Supersedeas
wcuid avoid thc possibility of the casa having tc bc [HN3} Granting or denying a stay of pending
considered and reconsidered by this court and an proceedings is a. m.z1t£<·:r within thc: courfs discretion.
appellate court depending on thc outcome of the appeal.
COUNSEL: [*1]
°UTC°ME‘ Thc “‘°“°” f°‘ a my was g”“““’d‘ For Plaintiffs: waazwtm, wagner & Hattis, Ltd.,
. . Chicago, Iiiinois, Of Counsel: Robert E. Wa ner, Esq.,
Lcx1SN€mS(R) Hwdmtes Linda A. Kuczma, Esq., James J. Jagcda, Esq.?And<·:rscm
Kill Olick & Oshinsky, P.C., New York, New York, Of
Counsel: John E. Kidd, Esq.

Case 1:04-cv—O0884-SLR Document 40-12 Filed O3/15/2005 Page 3 of 4
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i99l U.S. Bist. LEXIS 334, *; 13 int'l Trade Rep. (BNA) 1233
For Defendants; Ostrager & Chong, New York, New interference with plaintiffs' contractual relations with
York, Of Counsel: Glenn F. Ostrager. their authorized dealers.
After the parties {*3] conducted discovery,
JUDGES: defendants moved for summary Judgment. One of the
John F. Keenan, United States District Judge. mggmcnts defendant`? advamcd m Support ef that
motion for summary Judgment was based on collateral
estoppel. In December of 1988, the United States District
OPINIONBY: Court for the Central District of California issued an
KEENAN opinion in Yamaha International Corporation, et ali v.
ABC International Corporation, 703 F. Supp. l398 (CID.
Cal. 1988) ("ABC"). In that decision, plaintiffs in this
OPINION; action brought Lanham Act and Tariff Act claims against
defendant ABC, a suppiier of Yamaha-marked goods to
MEMORANDUM OPINION AND ORDER defendants in this action. The Court in ABC granted
Ingygductgon defendants summary judgment and made findings
. , . ' th l' ' f th nh
Before the Court is the motion ofpiaintiffs for a stay Egzxggfrgjgg B app lcamm O 6 L3 am Act md thc
of this Courts consideration of defendants' motion for v_
summary judgment. The Court has jurisdiction over this ?}¤i¤li1ff$ in ABC ¤H'¤‘B€d that d€f`€¤d¤¤l impvfiifd
action pursuant to 15 U.S.C. § 1121 and 28 US,C. § goods bcafiflg the Yamaha trademark in violation of
]338_ Fg); {hg yggggng 53{ forth bglgw, p}3j;j;{iffS' gggtjgm the Tdfiff ACL W}llC]'1 p1'€JhlblilS thi! L1HBUili`l01'iZBd
is granted. iI¤p01'¥Hii0¤d0f Ofddcaliigig iu f0rtggr;tnade goods bearing
Dissusrm ioggiiiiii. sg; iii? xoxo. oi iiooigroiiiiii
Plaintiffs, Yamaha Corporation of America Elfgutid €l13€ the protection of American companies
(formerly known as Yamaha international Corporation) P¥0V¥df’d_ by The AC? d¤€$ ¤¤¥ KPPIY to A¥¤€fi€f1H
and Yamaha Elggtygnjgg Cggpgpgtignj USA (ccticctiveiy subsidiaries of foreign manufacturers such as Yamaha
referred to oo "Yamaha"} tiled this action oriogrog i¤t¢m¤¤¤¤¤i- [*4] The _C¤¤rt granted summary
ooaooiook infringement ood unfair competition. Plaintiffs aadsmsnt to defendants. iwidina that EHNZI "tc allow
are California corporations that are the exclusive Y¤m¤h¤·Am€¤¤¤ ¤¤d firma like ii IPFOYGCUGH ¤¤d¤F §
authorized American distributors of Yamaha brand 526} Wmlld ¤11¤w any f¤F€i§¥1 m¤¤¤f¤¤¤¥¤f€f to USB H
electronic products, manufactured in Japan by their WMHY ¤w"¤¤¤F€
parent company Yamaha Corporation of Japan, Yamaha lh? help ot American tariff Eaw in enforcing worldwide
Corporation 5*2] of America is mo owooi by assignment price discrmiinavca-" 703 F Supp- at 1403.
°f if"’§”I ““d§m;k$d“$“d_‘° §*}°’*“;Y Yamha P¥°d““S· pxotoorro in thro action make identical rootr Act
D6 Bn ams Sc an 3 Vcmse asa 3 muS1°_€qu1pmBnt· allegations against Central Venture, an enterprise which
Defendants apparently purchase equipment directly from purchased Yamaha_mm,k€d goods from ABC Complaint
piaulhffs parent °°Ipp£my’ mm Salk zdvemsé and para, 24. Defendants argue that the Ta1"it`fAct decision in
dlsmbum thc equipllkcm “‘·d°P‘“’“d"“*1Y· without ABC requires a decision in their favor on coliaterai
&“th°YiZati°B fr¤r¤p1¤m¤ffS- estoppel grounds. The decision in Yamaha International
Plaintiffs complaint is composed of six counts. C0*'P0mil0¤» €t BL V- ABC ¥¤t€Tf¥¤¥i0¤=i} CGYPUTHYWU is
Count { alleges that defendants use of marks identical to C¤*T€¤dY_0¤ ¤Pl>·‘?¤1_l0 thi? Umtefl S€¤“€<¥$ COM uf Appeals
the marks owned by plaintiff Yamaha Corporation of {UTY-h€N1¤Th C11'€¤¤t·
Amciiw is and will be Cfmfusmg to the public in The ABC decision also addressed Lanham Act
WOIEMH if 15 USC § H14(a)‘ Cmmt H alleges th? questions. in response to plaintifi`s‘ allegations that the
defendants use of the rnarks amounts to unfair unauthorized impcmdcn of Yamahwmarkcd goods
°°mp€m1°H In estates Of the Lamm Ast I 5 USC § constituted a vioiation ofthe Lanham Act, the Court held
I 125(ai). Count ill charges defendants wrth unlawfully that bccausg Yamaha had made 3 judicial admission of
$1¤¤1?¤ss¤mi¤<=¤¤=¤ seeds mana a*=¤¤¤ffS redeem oo gooooooooo of oo marked goooo, oo Lanham Act
m "1°**“*P¤ wht Tgnff A°‘= *19 U·~;C· § *'1fii6· C°';m‘ aio oo: prohibit more importation. soo at at 1404. In
Wdwmamé Stats §3mp°9mm°H` C Egges sv gccpuw support omits conclusion {*5] that the Lanham Act did
tm 6 practices an _ al; °°§p°,1 mu °{“m_H_ _a Wmccs not prohibit the importation of genuine goods without the
almthcr smc ew °1&’m= 021 1ut;_°Hd°f?Ia£I{uh pF°?°“y consent of owner of the mark, the ABC court cited the
"ghm Cmmi VI Charges t c dt cn ams Wu micmmnal decision of the Court of Appeals for the Second Circuit

Case 1:04-cv—O0884-SLR Document 40-12 Filed O3/15/2005 Page 4 of 4
Page 3
1991 U.S. Dist. LEXES 334, *; 13 Int'l'1`rade Rep. (BNA.) 3233
in Obzmpus Corporation v. Unired States, 792 FZ2d 315 Ninth Circuits decision of the appeal in the ABC case.
(2d Cir. 1986), and the decision ofthe Ninth Circuit in Plaintiffs point out that if the district court decision in
NEC Electronics v. Cal Circuitzibco, 810 F.2d 1506 (9th ABC is reversed, the collateral estoppel effect of the
Cir. 198 7). Lanham Act and Tariff Act decisions by that Court will
be destroyed. If this Court decides to apply collateral
Defendants MSO argue that dcouamral ismppcl estoppel and grant defendant summary judgment, that
S¤¤1¤¤#e fhg gram Of Summary Ju gn-mm m t cm OH decision will iikeiy have {*7] to be reopened pursuant
plamhffs Lanham Act Clmmi to Fed. R. Civ. P. 60 if the Ninth Circuit reverses the
"In NEC, as here, the plaintiff argued that the defendanfs ggstglgt ccgingn i;BgI3§g§§§§§fS;gn@0Iau§g?n0j;.1 iulglgm
use of the assigned trademark in connection with saies of dcfmdims argue that the gum Of a Eftay would (:115%
wss ¤*¤==i¤·’¤d fm thc Pm We my to da~aana· marketing rams See Dami.aa·
confusion among consumers that the goods sold by the mcmomudum at 5 '
defendant were authorized by or connected to the 4
plaintiff. The plaintiff iirrther argued, as here, that [HN3] Granting or denying a stay of pending
confusion would arise among consumers as to sewicing proceedings is a matter within the Courfs discretion. See
and warranties which were offered by the plaintiff. Both Landis v. North American C0., 299 US. 248 (1936). The
arguments were rejected by the Ninth Circuit Coun of Court feels that under these circumstances judicial
Appeals." efficiency would be best served by granting plaintii‘fs'
motion, thereby suspending any decision on ciefendants
See I)efendants' memorandum of law at 18. summary judgment motion until after the decision of the
In addition to the ABC case, a recent decision ofthe gg?} ggcué;;§D§;iy*Ai.$h;ag;gg}1?ai];$ll§i)€§€f ggggilggg
United States District Court for the District of Columbia d d d b thi C Em d th gc um 1. A 1
has a bearing on this [*6} Courts decision on this Em mconsl cm .y. S O .311 c O O ppcas
. . . . for the Second Circuit depending on the outcome of the
motion. In Yamaha Corporation of America v. United 3 Sai
States, 745 R Supp 734 (D.D.C. 1990), one of the pp '
plaintiffs in this action brought suit against the Conclusion
Department of the 'ireasury and the U.S. Customs FD th masons SCI 1,0 nh ab 1 . {H., Ot, .
Service. }°laintiff sought a declaratory judgment stating I E . (wei p am 1 S m lm? IS
that the Lanham Act and the Tariff Act bmed the granted. Counsel for the parties are instructed to monitor
impm-aaunofgosa manufactured by the foreignparent *¤—’i¤g¢ggge Of the appgf M *0 uvgfg the Cm
Oran American cmpmaaa an: owned a trademark. The Pg?. ‘°‘t‘ Y °°“;"’?"“g1 . °.f§*°g"°’SS*° .3* °‘*“· in
com amiga piaaiarrs appacaaau, aaidmg sm a .“’°“· °°““s“ . ‘” P ?“““ S me { 8} }“S‘““i‘°d .E"
. . notify the Court immediateiy when the Ninth Circuits
collaterai estoppel applied on the Tarrff Act and Lanham decision in that case is announced
Act issues already litigated 111 the California case. '
Yamaha Corporation of America v. United States, 745 F. SO ORDERED.
Supp. 734, 738 (D.D.C. 1990). This decision is also
under appeal. Dated: New York, New York
Plaintiffs urge the Court to stay consideration of kmuary10’ 19% l
defendants summary judgment motion pending the