Top Plaintiffs' Verdicts by Impact: Ubiquiti Networks Inc. v. Kozumi USA Corp.

Morrison & Foerster LLP helped client San Jose-based Ubiquiti Networks Inc. shut down an international counterfeiting scheme hatched by a former product distributor for the company.

Florida resident William Hsu had previously offered genuine Ubiquiti wireless networking products through his company, Kozumi USA Corp.

About five years ago, Hsu began using his manufacturing contacts in China and his knowledge of Ubiquiti customers to produce and sell copycat Ubiquiti goods in developing markets, primarily South America. Hsu also began applying for and obtaining trademarks in Argentina for Ubiquiti Networks and its product names.

Ubiquiti sued Hsu and Kozumi in 2012, alleging counterfeiting, trademark and copyright infringement among numerous other causes of action. Ubiquiti Networks Inc. v. Kozumi USA Corp. et al., CV12-2582 (N.D. Cal., filed May 18, 2012).

U.S. District Judge Claudia A. Wilken in Oakland approved the litigants' stipulated judgment and permanent injunction in October. The injunction bars Hsu and Kozumi from using any registered Ubiquiti trademarks and from selling fake Ubiquiti goods.

Jennifer L. Taylor, Ubiquiti's lead counsel and a San Francisco-based MoFo partner, said the case highlights how, unlike patent or copyright law, federal trademark law can offer unique defenses against infringement in foreign jurisdictions.

"Trademarks are the only one of the intellectual property rights that gets protection outside of the United States if there is a material effect on the trademark and the trademark owner in the United States," Taylor said.

- KEVIN LEE

<!-- Top Plaintiffs' Verdicts by Impact: Ubiquiti Networks Inc. v. Kozumi USA Corp. -->