IN THE UNITED STATES DISTRICT COURT

FOR THE DISTRICT OF COLORADO

William J. Martínez

Civil Action No. 11-CV-2327-WJM-MEH

AVAYA, INC., a Delaware corporation,

Plaintiff,

v.

UNITED PACIFIC (USA) CORP., a New York corporation,

Defendant.

ORDER APPROVING VACATING OCTOBER 31, 2011 SHOW CAUSE 

HEARING, ENTERING STIPULATED SUPERSEDING PRELIMINARY 

INJUNCTION, AND UNSEALING CASE

This matter is before the Court on the “Stipulation Regarding Seizure 

Order and Motion to Vacate October 31, 2011 Show Cause Hearing” [ECF No. 

33], the “Stipulated Response to September 22, 2011 Show Cause Order 

Regarding Sealing of Case” [ECF No. 28], and the “Stipulated Preliminary 

Injunction” [Document No. 20] (collectively the “Stipulations”), filed by Plaintiff 

Avaya, Inc. (“Avaya”) and Defendant United Pacific (USA) Corp. (“UP”). The 

Court, having reviewed the Stipulations and the file, and being fully advised in 

these matters, HEREBY APPROVES the Stipulations, and further Finds and 

Orders as follows:

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A. Order Vacating October 31, 2011 Show Cause Hearing

1. On September 9, 2011, the Court entered its “Order Granting 

Plaintiffs’ Ex Parte Application for Seizure of Counterfeit Goods, Temporary 

Restraining Order, Order to Show Cause Re: Preliminary Injunction, and 

Expedited Discovery” (the “Seizure Order”). (ECF No. 16.) As part of the 

Seizure Order, the Court set a Show Cause Hearing, which was ultimately reset 

to October 31, 2011. (ECF No. 25.)

2. Per the Stipulation re Motion to Vacate [ECF No. 33], both Avaya 

and UP have expressly waived their right to a Show Cause Hearing under the 

Lanham Act, as provided under 15 U.S.C. § 1116 (d)(10)(A). As such, the parties 

requested that the October 31, 2011 hearing be vacated to avoid the needless 

expenditure of fees and costs. (ECF No. 33.) Such request is GRANTED and 

the October 31, 2011 Show Cause Hearing is hereby VACATED.

3. The Court notes that, while UP has agreed to the relief requested 

herein, the parties have expressly acknowledged that UP has agreed to this relief 

under a reservation of rights. The parties further agreed that UP has not waived 

its right to later challenge the factual background or legal arguments underlying 

Avaya’s application for the Seizure Order or the findings made therein, and UP 

shall not be deemed to have admitted that any claims asserted against it in this 

action have merit. UP has specifically denied all liability in this matter.

4. The parties further requested that the Seizure Order remain in 

effect (thus allowing Avaya to continue to retain the documents and data it copied 

and the products and equipment it seized and received in connection with the 

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execution of the Seizure Order), but also requested that the Seizure Order be 

modified as follows. Accordingly, and per the terms of the parties’ Stipulation, the 

Court’s September 9, 2011 Seizure Order [ECF No. 16] is HEREBY AMENDED 

as follows:

a. As the seizures originally authorized have been 

completed and the targeted alleged counterfeit products have been 

recovered and are being securely stored by agents of Avaya, no 

further seizures shall be allowed without further order of the Court;

b. Avaya has reached negotiated agreements with UP 

and Masa Trucking regarding reasonable timing and processes for 

Avaya’s searching, translation, and retention or return of the 

documents and data Avaya obtained from the seizures. Both 

parties have acknowledged that, given the volume of documents 

and the fact that a number were in at least one foreign language, 

additional time is needed to review the seized documents. 

Accordingly, the Court hereby allows and recognizes the validity of 

the negotiated agreements that are being finalized amongst the 

parties, even to the extent they differ from the original requirements 

of the Seizure Order.

c. Either party may move to amend the amount of the 

security bond currently in place in connection with the Seizure 

Order.

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d. The Protective Order entered as part of the Seizure 

Order is hereby amended to allow two specific in-house counsel for 

Avaya, Russell Binns and Koldo Loidi, and lawyers and staff from 

an additional law firm assisting Avaya in connection with this matter, 

King & Wood, to have access to the Protected Material as that term 

is defined in the Seizure Order.

e. Because UP will soon be answering the Complaint 

and this case is now moving forward under the standard processes 

established by the Federal Rules of Civil Procedure and the 

forthcoming scheduling order to be established at the November 22, 

2011 scheduling conference, no further expedited discovery may be 

taken in connection with the Seizure Order without further leave of 

Court.

f. Because, as discussed below, the case will be 

unsealed, the Court VACATES Paragraph 17 on page 12 of the 

Seizure Order, which had precluded the parties from publicly 

discussing this case until the now-vacated Show Cause Hearing. 

B. Order Entering Stipulated Superseding Preliminary Injunction1

1. Per the terms of the parties’ stipulation on this matter, it is HEREBY 

ORDERED that, pending final determination in this action, Defendant United 

 

1 On September 27, 2011, the Court entered a Stipulated Injunction which is substantially 

similar to that set forth herein. (ECF No. 27.) However, the parties have represented to 

the Court that portions of the earlier Injunction have been mooted by further 

developments in the case. Therefore, the instant Stipulated Superseding Preliminary 

Injunction replaces the September 27, 2011 Stipulated Preliminary Injunction and shall 

be in effect until further order of the Court.

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Pacific (USA) Corp. and its representatives, servants and agents, employees, 

officers, directors, partners, attorneys, and all other persons under their control or 

who are in active concert or participation with them, ARE HEREBY 

RESTRAINED AND ENJOINED FROM: 

(a) advertising, selling, offering for sale, marketing, distributing, 

selling, exposing, shipping, mailing, listing, taking orders for, promoting, 

buying, ordering, exhibiting, destroying, or in any manner disposing of 

products or aiding in any way the advertising, selling, offering for sale, 

marketing, distributing, selling, exposing, shipping, mailing, listing, taking 

orders for, promoting, buying, ordering, exhibiting, destroying, or in any 

manner disposing of counterfeit Avaya product or Imitation Avaya 

Product,2and from marketing, advertising, or promoting the sale of 

counterfeit Avaya product or Imitation Avaya Product in any way;

(b) producing, manufacturing, reproducing, or aiding in any way the 

producing, manufacturing, assembling, or reproducing of any counterfeit 

Avaya product or Imitation Avaya Product; and

(c) destroying, removing, overwriting, transferring possession of, 

deleting, selling, hiding, secreting, or otherwise disposing of any evidence 

(tangible, documentary, or otherwise), including counterfeit Avaya product 

or Imitation Avaya Product, related to Avaya, its name or the claims and 

facts involved in this action. 

 

2

Imitation Avaya Product includes all physically tangible objects purporting to be but not 

actually manufactured, distributed or used by Avaya, including, but not limited to 

telephones, telephone switches, varistor pads, circuit packs, PCB’s display brackets, 

telephone buttons, and/or other telephone or telecommunications systems or 

components or product bearing the Avaya name and/or mark. 

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2. IT IS FURTHER ORDERED THAT Plaintiff’s initial security bond 

posted in the amount of $150,000.00 shall constitute the security required by 

Fed. R. Civ. P. 65(c) unless otherwise ordered by the Court upon proper motion 

of either party.

C. Order Unsealing Case

1. The parties have stipulated to and do not dispute the unsealing of 

all prior filings in this action, with two narrow exceptions. Avaya’s previously-filed 

Complaint, filed September 2, 2011 [ECF No. 1], and Avaya's Ex Parte 

Application for an Order for Seizure of Counterfeit Goods, Temporary Restraining 

Order and Order to Show Cause Re: Preliminary Injunction, and Order Allowing 

Expedited Discovery (and its exhibits), filed September 2, 2011 [ECF

No. 3], contain certain private, confidential, and proprietary information regarding 

distinctions between genuine Avaya Model 18D telephones and the counterfeit 

Model 18D telephones at issue in this case. Information concerning these 

distinctions would assist would-be counterfeiters in determining certain things 

Avaya looks for to detect counterfeit units and would allow them to design 

counterfeit products in a manner to avoid detection. 

2. The Court agrees that the private and confidential business 

interests involved outweigh the qualified presumption of public access to court 

files and proceedings, such information is worthy of being sealed, and the 

information otherwise meets the requirements of D.C.COLO.LCivR 7.2. The 

Court finds that serious injury would result to Avaya if the information were 

publicly available, and, through the filing of substitute redacted documents, as 

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discussed below, the parties have facilitated the least restrictive available 

alternative under the circumstances. Accordingly, the Court finds that the 

Complaint [ECF No. 1] and Ex Parte Application [ECF No. 3] should remain 

sealed throughout the pendency of this action. All other documents shall be 

unsealed.

3. Exhibits 1 and 2 to the parties’ Stipulated Response to the Show 

Cause Order are redacted versions of the Complaint and Application (and its 

exhibits) that exclude the confidential information identified above. The Clerk 

shall file these Exhibits as the publically available Complaint [ECF No. 28-1] and 

Ex Parte Application for Seizure [ECF No. 28-2]. 

4. Going forward, if any party wishes to seal any future filing or 

document, it must comply with D.C.COLO.LCivR 7.2.

DATED this 28th day of October, 2011.

_____________________________________

William J. Martínez

United States District Judge

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