Cisco Systems and Ciena Corporation Resolve Counterfeit Transceiver Suit With Chinese Firms

Last Friday, Cisco Systems and Ciena Corporation requested that the court approve their consent judgment and permanent injunction barring entities Wuhan Wolon Communication Technology Co. Ltd. and Wuhan Wolon Cloud Network Communication Technology Co. Ltd. (together, Wolon) from making, marketing, or selling goods falsely bearing the plaintiffs’ trademarks. Cisco and Ciena sued over the summer, asking for injunctive relief and damages from the alleged counterfeiting of their transceivers, devices used to transmit and receive data.

Cisco and Ciena’s San Jose, California suits explained that inauthentic products harm the plaintiffs’ brands and put purchasers at risk of security breaches, data losses, and other technological malfunctions. The plaintiffs brought claims for trademark infringement under the Lanham Act and for violations of state unfair competition and false advertising laws.

In July, Judge Edward J. Davila entered a preliminary injunction against the entities, similarly prohibiting them from producing or selling counterfeit versions of the plaintiffs’ products. In its order, the court noted that though the defendant received notice of the complaints and the hearing, it failed to appear.

If approved, the October 15 order would permanently bar Wolon from counterfeiting Ciena and Cisco transceivers. The filing sets forth penalties in the event of breach and states that the plaintiffs have the option of electing either liquidated damages of $10,000 per counterfeit item or “actual, statutory, and punitive damages.”

In addition, Wolon agreed to assign any claims arising out of the lawsuit, now and in the future, against any other defendant or non-party, or otherwise relating to Wolon’s importation, marketing, advertisement, distribution, and sale of counterfeit Cisco and Ciena products. “This includes, but is in no way limited to, claims for indemnity or contribution,” the agreement adds.

Ciena and Cisco are represented by Bartko Zankel Bunzel & Miller PC in the litigation.