On September 6, 2017, Rockwell Automation, Inc. of Milwaukee, Wisconsin (“Rockwell”) filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.
The complaint alleges that the following entities (collectively, the “Proposed Respondents”) unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain industrial automation systems and components thereof including control systems, controllers, visualization hardware, motion and motor control systems, networking equipment, safety devices, and power supplies that infringe various Rockwell trademarks and copyrights:
- Can Electric Limited of China
- Capnil (HK) Company Limited of Hong Kong
- Fractioni (Hongkong) Ltd. of China
- Fujian Dahong Trade Co., Ltd. Of China
- GreySolution Limited d/b/a Fibica of Hong Kong
- Huang Wei Feng d/b/a A-O-M Industry of China
- KBS Electronics Suzhou Co., Ltd. Of China
- PLC-VIP Shop d/b/a VIP Tech Limited of Hong Kong
- Radwell International, Inc. d/b/a PLC Center of Willingboro, New Jersey
- Shanghai EuoSource Electronic Co., Ltd. of China
- ShenZhen T-Tide Trading Co., Ltd. of China
- SoBuy Commercial (HK) Co. Limited of Hong Kong
- Suzhou Yi Micro Optical Co., Ltd. of China
- Wenzhou Sparker Group Co. Ltd. of China
- Yaspro Electronics (Shanghai) Co., Ltd. of China
According to the complaint, the asserted trademarks are directed to “A-B” and an associated octagon mark, “ALLEN-BRADLEY,” “ROCKWELL AUTOMATION,” and “CONTROLLOGIX.” The asserted copyrights are directed to Rockwell’s line of firmware that is necessary to operate certain Rockwell products and systems, including CompactLogix and ControlLogix controllers.
The complaint states that the Proposed Respondents import and sell products that infringe the asserted trademarks and copyrights. In particular, the complaint states that the Proposed Respondents are unlawfully importing grey market Rockwell products which are materially different from the products sold by Rockwell and its authorized distributors in the U.S., and which infringe the asserted trademarks and copyrights. The complaint further states that some or all of the Proposed Respondents have engaged in unfair competition through their alleged tortious interference with known contracts between Rockwell and its authorized foreign distributors and through their alleged use of fraud and misrepresentation in the acquisition of Rockwell products that they subsequently resell in the U.S. The complaint also states that some or all of the Proposed Respondents have engaged in unfair competition through their inducement of end-users of grey market Rockwell products to violate the end-users’ license agreements relating to such products.
Regarding domestic industry, Rockwell states that its own authorized products practice the asserted trademarks and copyrights in the U.S. Rockwell further states that it has made significant and substantial investments in the U.S. relating to manufacturing, engineering, development, testing, installation, marketing, distribution, customer service, repair, and warranty fulfilment in connection with its products that practice the asserted trademarks and copyrights. Rockwell also states that the Proposed Respondents’ unfair activities have caused, and threaten to cause, substantial injury to Rockwell’s domestic industry, including financial losses, market share declines, substantial loss of goodwill, and other negative effects.
As to related litigation, Rockwell states that it is currently engaged in litigation against Proposed Respondent Radwell International, Inc. in the U.S. District Court for the District of New Jersey, where Rockwell is alleging infringement of the same trademarks at issue in the instant ITC complaint.
With respect to potential remedy, Rockwell requests that the Commission issue a permanent general exclusion order and permanent cease and desist orders directed at the Proposed Respondents and related entities. Rockwell states that a general exclusion order is warranted both to prevent circumvention of any exclusion order limited to products of named entities, and because there is a pattern of violation of Section 337 and it is difficult to identify the source of infringing products.