Cisco Systems, Inc. v. Wuhan Wolon Communication Technology Co., Ltd, 5:21-cv-04272

Background

Ciena, a long‑standing maker of optical transceivers and owner of registered CIENA trademarks, discovered third‑party listings of purported Ciena transceivers being offered by Wuhan Wolon entities ("Wolon") for sale to U.S. customers.
Ciena engaged an investigator who purchased samples and labels from Wolon that were shipped into this District; Ciena’s engineers tested the samples and concluded they were counterfeit and inferior to authentic Ciena transceivers.
Ciena sued under the Lanham Act (trademark infringement, counterfeiting, false designation of origin) and California unfair competition/false advertising, and moved ex parte for a TRO, asset freeze, expedited discovery, domain‑related relief, and alternative service by email.
The court, exercising Rule 65(b) and Ninth Circuit guidance, excused notice, finding risk that advance notice would allow concealment or dissipation of goods/assets.
The court granted the ex parte relief: TRO and preliminary‑injunction show‑cause order, asset freeze (including payment accounts), domain and seller‑ID restraints and redirection, expedited discovery from Wolon and third parties, and court‑directed service by email; no bond required.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Whether notice could be excused for ex parte TRO	Wolon likely to dissipate goods/assets and move online listings if warned; similar online counterfeiters have done so	(Not heard) advance notice not required by law; would be given opportunity if present	Court excused notice under Rule 65(b) given risk of disappearance and analogous precedents and granted ex parte relief
Likelihood of success on trademark/counterfeiting claims	Wolon sold products bearing identical CIENA marks; samples are inauthentic → counterfeiting; counterfeit marks are inherently confusing	Wolon would argue products are authentic or no consumer confusion (inferred)	Court found likelihood of success on Lanham Act and parallel California claims; counterfeiting deemed established as matter of law
Irreparable harm and asset freeze (dissipation risk)	Counterfeits harm goodwill, safety, and public interest; defendant is foreign and can hide/dissipate proceeds; equitable relief and asset freeze necessary to preserve remedies	Asset freeze is overbroad and harms defendant’s legitimate business (inferred)	Court applied presumption of irreparable harm, found balance favors plaintiff, and ordered freezing of Wolon’s assets (including payment accounts) and related third‑party restraints
Domain/seller‑ID relief, expedited discovery, alternative service	Domain/seller IDs and registrars can be used to conceal/transfer counterfeit business; expedited discovery needed to identify accounts and suppliers; email is commercially used by Wolon so service by email will give notice	Such measures are intrusive and may exceed court's authority (inferred)	Court authorized seizure/transfer restrictions on domain names and seller IDs, ordered redirection/disabling, granted targeted expedited discovery, and authorized service by email to addresses Wolon used

Key Cases Cited

Reno Air Racing Ass'n v. McCord, 452 F.3d 1126 (9th Cir. 2006) (ex parte relief may be appropriate where notice would allow disposal of infringing goods)
First Tech. Safety Sys., Inc. v. Depinet, 11 F.3d 641 (6th Cir. 1993) (discussing justification for excusing notice when evidence may be destroyed)
Reebok Int'l Ltd. v. Marnatech Enters., Inc., 970 F.2d 552 (9th Cir. 1992) (district court’s equitable power to issue provisional remedies including asset freezes in Lanham Act cases)
Winter v. Natural Res. Def. Council, Inc., 555 U.S. 7 (2008) (standard for preliminary injunctions)
Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936 (9th Cir. 2011) (definition and treatment of counterfeit marks)
Idaho Potato Comm'n v. G & T Terminal Packaging, Inc., 425 F.3d 708 (9th Cir. 2005) (counterfeit mark definitions and infringement principles)
Rio Props., Inc. v. Rio Int'l Interlink, 284 F.3d 1007 (9th Cir. 2002) (Rule 4(f)(3) court‑directed foreign service, including by email, and due‑process standard)
Rent‑A‑Ctr., Inc. v. Canyon Television & Appliance Rental, Inc., 944 F.2d 597 (9th Cir. 1991) (intangible injuries such as loss of goodwill can constitute irreparable harm)
Playboy Enters., Inc. v. Baccarat Clothing Co., 692 F.2d 1272 (9th Cir. 1982) (public interest favors injunctions that prevent consumer confusion)
Accuride Int'l, Inc. v. Accuride Corp., 871 F.2d 1531 (9th Cir. 1989) (likelihood of confusion standards apply to trade names and false designation claims)