Michel Sales Company v. Ningbo GI Power Co. Ltd.

Case

Michel Sales Company v. Ningbo GI Power Import & Export Co. Ltd. et al., File No. 24-CV-03657 (JMB/ECW)

Court

U.S. District Court, District of Minnesota

Judge

Jeffrey M. Bryan

Date

September 26, 2025

Background

Plaintiff Michel Sales Company is a Minnesota business founded in 1857 that, among other activities, sells water pumps on Amazon under the federally registered DECKO® and BUILT TO LAST® trademarks, three registered copyrights covering product catalogs and manuals, and trade dress rights (the distinctive appearance) of its DECKO® pump. In 2023, Michel discovered that Ningbo GI Power Import & Export Co. Ltd. — a Chinese company that brands products under the DEKO and DEKOPRO marks — was copying Michel's advertising materials, product manuals, product descriptions, and product configuration for use in competing Amazon listings. Michel also found that Ningbo's pump falsely displayed a safety certification symbol.

Michel began using Amazon's internal enforcement channels in April 2024. Amazon initially removed the listings (all associated with a seller named "Gulin"), but Ningbo filed counter-notices and Amazon reinstated the listings. Ningbo's first counsel then sent Michel a cease-and-desist email demanding withdrawal of the Amazon complaints. Michel filed suit in September 2024 and filed an eight-count Amended Complaint in October 2024 alleging: trademark infringement (DECKO® and BUILT TO LAST®), copyright infringement (three registered works), trade dress infringement, deceptive trade practices under the Minnesota Deceptive Trade Practices Act, and unfair competition under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)).

Michel simultaneously moved for a preliminary injunction. On November 18, 2024 — one day before the hearing — Ningbo's second counsel contacted Michel's counsel, acknowledged awareness of the action, but stated he was not yet authorized to appear. None of the defendants appeared at the November 19, 2024 hearing. The court granted the unopposed motion and issued a preliminary injunction ordering defendants to: (1) stop using any mark, designation, or intellectual property confusingly similar to Michel's; (2) stop submitting counter-notices or appeals to Michel's Amazon takedown submissions; and (3) take all necessary steps to remove infringing materials from Amazon and from Ningbo's website www.dekotools.com.

Motion to Dissolve the Preliminary Injunction (Denied)

After Michel moved for default judgment and began aggressively enforcing the injunction, Ningbo voluntarily appeared and filed an Answer and Counterclaims. Ningbo then moved to dissolve the preliminary injunction on two grounds.

Service / Notice (Rule 65 Argument): Ningbo argued that it was not properly served and therefore not bound by the injunction. The court analyzed this under Federal Rule of Civil Procedure 65(d), which provides that a court order binds parties and nonparties who (a) receive actual notice of the order and (b) are in active concert or participation with a named party. The court held:

1. Deko is a party. Ningbo challenged service on co-defendant Deko Group LLC and Deko Electric LLC, arguing their certificates of formation had been canceled. The court ruled that Ningbo lacked standing to challenge service on a co-defendant. Independently, it found that under Delaware law (Del. Code tit. 6, §§ 18-1107(k), 18-1108(a)), a Delaware limited liability company canceled solely for failure to pay annual taxes — as Ningbo alleged of Deko — remains a valid company capable of being served through its registered agent, because no certificate of cancellation had been filed.

2. Ningbo had actual notice. Ningbo's first counsel had actual notice of the lawsuit as early as September 2024 (when it declined to accept service), and Ningbo's second counsel communicated actual notice to Michel's counsel the day before the November 19, 2024 hearing. Citing H-D Michigan, LLC v. Hellenic Duty Free Shops S.A., 694 F.3d 827 (7th Cir. 2012), and Whirlpool Corp. v. Shenzhen Sanlida Elec. Tech. Co., Ltd., 80 F.4th 536 (5th Cir. 2023), the court adopted the rule that formal service of process is not required before a court may issue a preliminary injunction where actual notice exists, particularly for foreign defendants where formal service under the Hague Convention can take months.

3. Active concert or participation. The court found sufficient evidence that Ningbo acted in concert with Deko: Ningbo's counsel filed counter-notices for Amazon ASINs listed to seller "Gulin"; Ningbo and Gulin share a Delaware registered agent and nearly identical addresses; import records show both Deko entities imported pumps from Ningbo; Ningbo owns the DEKO/DEKOPRO trademarks used in the infringing conduct; after Gulin was suspended, a new seller called "DEKOPRO" (affiliated with Deko Electric (US) and bearing Ningbo's brand) continued selling the same products; and the address on the appeal challenging removal of content from www.dekotools.com matched Ningbo's registered business address.

The court also noted (without deciding) that Ningbo may have waived its service objection by failing to raise it in its Answer under Federal Rules of Civil Procedure 12(h)(1) and 12(b)(2)–(5).

Rule 60(b) Argument: Ningbo alternatively moved to dissolve the injunction under Federal Rule of Civil Procedure 60(b), which allows relief from a court order for reasons including mistake, misconduct by an opposing party, inequity in prospective application, or other good cause. The court rejected each ground Ningbo actually argued:

- Misconduct/misrepresentation (Rule 60(b)(3)): Ningbo argued Michel misrepresented its connection to Deko. The court disagreed, citing the active-concert-or-participation findings above. - No longer equitable (Rule 60(b)(5)): Ningbo challenged the court's prior analysis of the Dataphase factors (the Eighth Circuit's standard for evaluating preliminary injunctions) but relied on law and evidence that existed before the injunction was issued and that Ningbo chose not to present at the hearing. The court held that Rule 60(b) is not a vehicle for arguments that could have been made before the original order.

Motion for Contempt (Granted)

Civil contempt requires the moving party to prove by clear and convincing evidence: (1) a valid court order; (2) the alleged contemnor's knowledge of the order; and (3) the alleged contemnor's disobedience of the order. Chicago Truck Drivers v. Bhd. Lab. Leasing, 207 F.3d 500, 504 (8th Cir. 2000).

The court found all three elements satisfied:

The burden then shifted to Defendants to show inability to comply, that any inability was not self-induced, and that they made good-faith efforts to comply. United States v. Santee Sioux Tribe of Neb., 254 F.3d 728, 736 (8th Cir. 2001). Defendants offered no such evidence.

Motion for Default Judgment Against Deko (Denied)

Michel initially sought default judgment against both Ningbo and Deko, but after Ningbo voluntarily appeared, Michel narrowed its request to Deko alone, asking the court to enter but withhold execution of the judgment until the case concluded. The court declined to enter the judgment at all at this stage.

Under Federal Rule of Civil Procedure 55, a court may enter default judgment when unchallenged facts support a valid cause of action, but has discretion to withhold it. Belcourt Pub. Sch. Dist. v. Davis, 786 F.3d 653, 661 (8th Cir. 2015). Applying the principle from Frow v. De La Vega, 82 U.S. 552 (1872), and the Eighth Circuit's decision in Angelo Iafrate Contr., LLC v. Potashnick Constr., Inc., 370 F.3d 715, 722 (8th Cir. 2004), the court held that where co-defendants are similarly situated and may be jointly and severally liable, the "better practice" is to withhold default judgment until the non-defaulting defendant's liability is determined — to avoid the risk that a default judgment against Deko would be inconsistent with a later judgment in Ningbo's favor on the merits. Michel may renew its motion for default judgment against Deko after the claims against Ningbo are resolved.