After initially authorizing the seizure of certain goods and records in Midwest's possession, the district court held a hearing and determined, inter alia, that Beltronics had failed to demonstrate that Midwest "would destroy, move, hide, or otherwise make the seized goods inaccessible." Beltronics USA, Inc. v. Midwest Inventory Distrib'n LLC, 522 F.Supp.2d 1318, 1323 (D.Kan. 2007). See 15 U.S.C. § 1116(d)(4)(B)(vii). It therefore dissolved the seizure order.
Maui Jim does not cite any case law where a court held that inordinate shipping delays were a material difference. But Maui Jim does direct us to Bel Canto Design, Ltd. v. MSS HiFi, Inc. , 837 F. Supp. 2d 208, 224 (E.D.N.Y. 2011) and Beltronics USA, Inc. v. Midwest Inventory Distrib. LLC , 522 F. Supp. 2d 1318, 1327 (D. Kan. 2007), aff'd 562 F.3d 1067, 1071 (10th Cir. 2009). Beltronics and Bel Canto stand for the proposition that "a physically identical product is nevertheless ‘materially different’ from the genuine article if ‘the bundle of services’ that attach to that genuine article is not available to the consumer."
And, the court also concludes, an independent evaluation of irreparable injury is consistent with the Lanham Act. Beltronics USA, Inc. v. Midwest Inventory Distribution LLC, 522 F. Supp. 2d 1318, 1325 (D. Kan. 2007) ("Under the Lanham Act, the court may grant an injunction 'according to the principles of equity and upon such terms as the court may deem reasonable.'" (quoting 15 U.S.C. § 1116(a))). In sum, the court declines to presume irreparable harm without assessing the underlying facts of this case.
And "a physically identical product is nevertheless 'materially different' from the genuine article if 'the bundle of services' that attach to the genuine article is not available to the consumer." Bel Canto Design, Ltd. v. MSS HiFi, Inc., 837 F. Supp. 2d 208, 224 (E.D. N.Y. 2011) (quoting Beltronics USA, Inc. v. Midwest Inventory Distrib. LLC, 522 F. Supp. 2d 1318, 1327 (D. Kan. 2007) aff'd 562 F.3d 1067, 1071 (10th Cir. 2009)). And "reselling products with inferior warranties constitutes a material difference negating the first sale defense."
When plaintiff Beltronics USA, Inc. initiated this lawsuit it promptly obtained an ex parte seizure order pursuant to 15 U.S.C. § 1116(d) and seized radar detectors allegedly bearing counterfeit Beltronics marks and other materials from defendants Midwest Inventory Distribution, LLC, i-Net Distributors, Audio Video Man, Kevin Burke, and Steve Webb. The court subsequently issued an order that dissolved the seizure order and granted Beltronics a preliminary injunction prohibiting defendants from selling Beltronics goods that do not bear an original Beltronics serial number label. See generally Beltronics USA, Inc. v. Midwest Inventory Distrib'n LLC, 522 F. Supp. 2d 1318 (D. Kan. 2007). Defendants have appealed the court's issuance of the preliminary injunction. This matter comes before the court on Defendants' Motion to Stay All Proceedings Pending Resolution of the Interlocutory Appeal (doc. #57).