EXHIBIT A
Case 1 :04-cv—OO884-SLR Document 39-2 Filed 03/15/2005 Page 2 of 4
2 of 100 DOCUMENTS
YAMAHA INTERNATIONAL CORP., YAMAHA ELECTRONICS CORP.,
U.S.A., Plaintiffs, v. CENTRAL VENTURE, INC., d/bla EAST 33RI)
TYPEWRITER & ELECTRONICS, VVELLIAM GAN, CHONA M. CHUA-CAN,
and JOHN DOES 1-10, Defendants
No. 90 Civ. 9495
UNITED STATES IHSTRICT COURT FOR THE SOUTHERN DISTRICT OF
NEW YORK
1991 LCS. Dist. LEXIS 334; 13 Int'! Trade Rep. (BNA) 1233
January 10, 1991, Decided
January 14, 1991, Filed
CASE SUMMARY: Trademark Law > Foreign & International Protections
> Registration
International Trade Law > T uryf Act ofl'930
PROCEDURAL POSTURE: Plaintiff authorized Trademark Law > Protection of Rights > Registration >
distributor filed a motion for a stay of the courfs Degree 0fPr0tecti0n
consideration of defendants independent distributors [HNIE The Tariff Act prohibits the unauthorized
motion for summary judgment. importation of or dealing in foreign-made goods bearing
a registered trademark owned by a United States
OVERVIEW: The independent distributors argued that corporation.
an argument simiiar to that made by the authorized
distributor had been made in a prior case on the same International Trade Law > Taryf Act 0f1930
issues which was pending appeal. Therefore, collateral [HN2] To allow American subsidiaries of foreign fxnas
estoppel supported the grant of summary judgment to protection under 19 E/ZS.C.S. § 1526 would allow any
them on the claims under I9 US.C.S. § 1526. The court foreign manufacturer to use a wholly owned American
found that judicial efficiency would be best served by subsidiary as a means to secure the help of American
granting the authorized dist1·i`butor‘s motion, thereby tarifflaw in enforcing worldwide price discrimination.
suspending any decision on the summary judgment
motion until after the decision in that prior case had been Civil Procedure > Entry of Judgments > Stay of
handed down. This course of action, the court found, Pr0ceedingS& Supersedeas
would avoid the possibility of the case having to be [HN3] Granting or denying a stay of pending
considered and reconsidered by this court and an proceedings is a matter within the CQHITIS discretion.
appellate court depending on the outcome of the appeal.
COUNSEL: {*1]
°“T°°MF·= The mm for R my We g*¤¤*==<*· For Panafax women, Wim 8. MS, rrd.,
. . Chica o, Illinois, Of Counsel: Robert E. Wagner, Esq.,
L€XlsN€mS(R) Headmts LindagA. Kuezma, Esq., James J. Jagoda, Esq., Anderson
Kill Olick & Oshinsky, P.C., New York, New York, Of
Counsel: John E. Kidd, Esq.
Case 1 :04-cv—OO884-SLR Document 39-2 Filed 03/15/2005 Page 3 of 4
Page 2
i991 U.S. Dist. LEXIS 334, *; 13 Int‘1 Trade Rep. (BNA) 1233
For Defendants: Ostrager & Chong, New York, New interference with pIaintiffs‘ 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
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estoppel. In December of 1988, the United States District
OPINIONBY: Court for the Centra} District of California issued an
opinion in Yamaha International Corporation, ei cz!. v.
KEENAN ABC International Corporation, 703 F. Supp. }398 (C.D.
Cal. }988) ("ABC"). In that decision, plaintiffs in this
{)p]Ni()N; action brought Lanham Act and Tariff Act claims against
dfd ABC l' fY h- ko d
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Knggdugtjgu defendants judgniietrg Ialnpllh made iintiings
Before the Court is the motion of plaintiffs for a stay S app Hamm 0 C 3 am at an t 8
of this Courts consideration of defendants motion for `
summary judgment. The Court has jurisdiction over this Plaintiiis in ABC alleged that defendant imported
action pu1·5u3H{ {O [5 [,¤i$_C_ § Jig] and 28 U,3‘_C_ § goods bearing the Yamaha traclerriark in violation of
1338. For the reasons set forth below, plaintiffs motion [HN1] the Tariff Act, which prohibits the unauthorized
is granted. impoitation of or dealing in foreigromade goods bearing
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Plaintiffs, Yamaha Corporation of America argliaid that tha PT°l€¤ti0¤ at Amafican €0mPa}"»i€$
{rormerty known as Yamaha International Corporation) t¤r¤v}
ssrn;-ssa to as ··Ysnnsan··) tiled this action atrsglng aaaamaacnal {*4] Tha _C<>¤¤ granted summary
trademark infringement and unfair competition. Plaintiffs Judgma-*9* Y0 df?f€¤d3¤t$» holaiiflg that lHN;-il HYO 31lOW
are California corporations that are the exclusive Y&m¤h¤·Am€¤¤a amd {HHS _l¥k° ll EPF0t€€tl0¥1 unda? §
authorized American distributors of Yamaha brand 526] Wclild ¤ll°W an}? falaalgn ¤'a¤¤’~¥fa€mI€T tv USS a
glgcfygnjg pygdgctg, gmgufgcfutgd in jgpgm thgfr OW'I1€d AtH'1€IiCEiI1 SUi)Sldl3l`y RS El IHBBHS to SSCHIS
parent company Yamaha Corporation of Japan, Yamaha, the lift}? Oi !ltI1'1€;'iC&!1 tariff law in enforcing worldwide
Corporation {*2} of America is the owner by assignment P¤€° dF$CTlmmaU0¤·" 703 F- SUPP at NO3-
of several trademarks used to identify Yamaha products. Piaimifi-S in this action make identical Tariff Act
Daaaaaaaaa aaa aaa aaaaaaaa Yaaaaaa aaaaaaaaaaaaaa- allegations against Central Venture, an sntsnsnss which
Defendants apparently purchase equipment dureetly from purchased Yamahwmmkcd goods from ABC Complaint
a1aaaaaâ€a"a’ aaaaaa aaaaaaaa aiaaa aaa- aaaaaaaa aaa nsns. 24. Defendants argue that the rnnn·n~nnn` decision in
aaaaaaaaa aaa aaaaaaaaaa aaaaaaaaaaaa aaaaaaa nar; requires s assistsn in snsn favor on collateral
aaaaaaaaaaa aaaa pi&imiffS‘ estoppel grounds. The decision in Yamaha International
pgagmifgsa complain; is ggmpgggd gf Six mums Corporation, et al. v. ABC international Corporation is
Count I alleges that defendants' use of marks identical to Cul`T€mlY_0¤ a·PP€&i_i0 the United States COW Of APPWES
the marks owned by plaintiff Yamaha Corporation of far thi? Nlmh Caawt
aaaaaaa aa aaa aaa `aa aaaaaaaaa aa aaa aaaaa aa nn nar; decision also addressed Lanham Act
gaaaaaaa Ulf I5 U‘S‘C § 1H4(a)‘ Caaaa H ancges dull questions. In response to plai11tift`s' allegations that the
efendants use of the marks amounts to unfair unauthorized imponamm Of Yamaha_mR{kcd goods
Compctmm m VIOIEUOH aa the Lanham Agia I5 U‘S‘C‘ § constituted a violation ofthe Lanham Act, the Court held
1 "2*?(a)‘_ Caaaa HI aaaaaaa defendant? Wm} unlawfully that because Yamaha had made a judicial admission of
dealing in nnported goods bearmg plaintiffs trademarks the gmumcmss Of the markcd goods, the Lanham Act
m Vlgiatwn aa thc Taaaff Acta 19 USC § "526‘ Caaaa did not prohibit their importation. See id. at 1404. in
{V contains state and common-lavv charges of deceptive Support Omjts conclusion {*5] that tha Lanham Act did
'aaaa practices aaa uilfw °°il1pc?m°H‘ Caaaa V aaaaaaaa not prohibit the importation of genuine goods without the
another state law claim, for d1lut10n of plan1t1ffs' property consent of Owner of the mark me ABC wm.; Cited the
rights. Count VI charges the defendants with mtenuonal decision Of the com Of Appcais for the Second Circuit
Case 1 :04-cv—OO884-SLR Document 39-2 Filed 03/15/2005 Page 4 of 4
Page 3
1991 U.S. Dist. LEXIS 334, *; 13 Inf} Trade Rep. (BNA) 1233
in Obzmpus Corporation v. United States, 792 FZ2d 3I5 Ninth Circoifs decision of the appeai in the ABC case.
2d Cir. 1986 , and the decision of the Ninth Circuit in Piaintiffs oint out that if the district com decision in
J 1¤
NEC Electronics v. Ca! Circuz'tAbco, 81 O F.2d 1506 (9th ABC is reversed, the collateral esto pel effect of the
_ P
Cir. 198 7). Lanham Act and Tariff Act decisions by that Court will
Defendants also argue that coiiateral estoppel be d€St§0y€g' If (gm? fccldcs tg am?] collate?}
ns the grant of summary judgment to ami on ‘““¥pP"’ aa $m "` °“ an S““““MY Ju gmana * at
iiffs, Lanham Act ciaims decision wilt likely hav [*7} to be reopened pursuant
' to Fed. R. Civ. P. 60 if the Ninth Cixcnit reverses the
··n NEC, is hm, at plaintiff argued am at datn.tm·S jgtgj <=;¤g¤;¤g1Bfj— §{g;gg§*jy§g;¤*¤§jf;m0;¤ gaggga
use of the assigned trademark in connection with sales of defendants ar' ug mg? the am of 3 itz would Chg;
goods obtained from the parent was likely to cause d , g . gi . . Y ,
. efendants marketing activities. See Defendants
confusion among consumers that the goods scid by the memorandum at 5
defendant were anthorwed by or connected to the `
plaintiff. The piaiotiff further argued, as here, that [HN3] Granting or denying a stay of pending
confusion wouid aiise among consumers as to servicing proceedings is a matter within the Court‘s discretion. See
and wawaniies which were offered by the plaintiff Both Landis v. North American C0., 299 US. 248 (1936). The
ar ents were reacted by the Ninth Circuit Court of Court feels that under these circumstances judicial
gum J
Appeals." efficiency would be best sewed by granting plai11tiffs'
motion, thereby suspending any decision on defendants
See Defendants‘ memorandum of iaw at 18. summary judgment motion until aiier the decision of the
In addition to the ABC case, a recent decision of the Nmih Cucmt iii ilic ABC Case' This Fcmsc Of acmin wm
. . . i . . avoid the possibility ofthe case having to be considered
United States District Court for the District of Coiumbia and mconsidgmd by this com and the com Of Appeais
has .5 bcmlmg OH {ms { 6} .CmmS dgcismn on img for the Second Circuit depending on the outcome of the
motion. En Yamaha Corporation of America v. United appeal
States, 745 FZ Supp 734 (DD. C. 1990), one of the `
plaintiffs in this action brought suit against the Conciusion
Depéirtmcm .0il the Treasury and th? U`S` Cusmim For the reasons set forth above, plaintiffs motion is
Service. Plaintiff sought a dcclmatory judgment stating gmmed Cmmsal for the panics am instructed to mommy
that the Lanham Act and the Tariff Act barred the '
importation of gms manufactured bythe foreignparent tgzgggggygscgjcyrgjpagg age *0 upgajlj fa C0?
of an American corporation that owned a trademark. The P . . I y g . , P Ogressil O . 3 ww H
. . . . . . addition, counsei for plaintiffs are { 8] insmicted to
Court denied plaintiffs application, holding that tif th C um . dim I h th N. th C. .t,
coiiateral estoppel applied on the 'I`a1·ifi`Act and Lanham 30 it that gmgimoigcgi an E m Ecu} S
Act issues already litigated in the California case. cclmmm 3 ca C '
Yamaha Corporation ofxirrzericcz v. United States, 745 FZ 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 `Rmumy 10’ *99*
dei`endants' summary judgment motion pending the
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