United States District Court, W.D. North Carolina, Charlotte Division
COGBURN JR. UNITED STATES DISTRICT JUDGE.
MATTER is before the Court on a Motion for
Preliminary Injunction, filed by Defendant Direct
Technologies, International, Inc. See (Doc. No. 52).
For the following reasons, the motion is denied.
The Lawsuit in this Court
December 21, 2017, Plaintiffs Hyundai Motor America, Inc. and
Hyundai Motor Company (collectively “Hyundai” or
“Plaintiff”) filed this action against Defendant
Direct Technologies, International, Inc. (“DTI”),
alleging that DTI is engaging in trademark infringement by
purchasing Hyundai branded parts abroad, importing the
Hyundai branded parts into the United States, and then
reselling the Hyundai branded parts in the United
States-thus, selling so-called “gray market” auto
parts. (Doc. No. 1). After the Court denied DTI's motion
to dismiss, DTI filed its Answer in May 2018 and
counterclaimed for illegal restraint of trade in violation of
the Sherman Act, 15 U.S.C. §§ 1 & 2, exclusive
dealing in violation of the Clayton Act, 15 U.S.C. § 14,
false advertising and unfair competition in violation of the
Lanham Act, 15 U.S.C. § 1125(a), and unfair competition
under N.C. Gen. Stat. § 75-1.1 et seq. (Doc. No. 33).
The Court denied Plaintiff's motion to dismiss the
counterclaims in August 2018, (Doc. No. 44), and Plaintiff
filed an Answer in October 2018. (Doc. No. 47). The parties
are in discovery and trial in this matter is set for June
2020. See (Doc. No. 50).
The Investigative Action Before the International Trade
3, 2019, Hyundai initiated an action in the International
Trade Commission (“ITC”), requesting that the ITC
investigate DTI's and three of its foreign suppliers'
purported unlawful importation and sale after importation of
gray market replacement automotive service and collision
parts and components, in violation of Section
(Doc. No. 55-1: Decl. of Kenneth E. Keller, Ex. A). In
addition to DTI, Hyundai identified three foreign entities
believed to have violated Section 337. (Id. at 4-6).
Hyundai has requested that the ITC issue cease-and-desist
orders and a limited exclusion order directed at those gray
market parts and components that the ITC determines are
infringing. (Id. at 33-34).
9, 2019, notice that Hyundai's Complaint had been
received by the ITC was published in the Federal Register.
(Doc. No. 55-2: Keller Decl., Ex. B). On May 17, DTI
submitted comments to the ITC in which DTI presented its
antitrust and anti-competitive arguments and requested that
the ITC either (1) refuse to institute an investigation or
(2) have the Administrative Law Judge determine that the
alleged anti-competitive acts were in the public interest,
thereby preventing any remedial orders from taking effect.
(Doc. No. 55-3: Keller Decl., Ex. C).
7, 2019, the ITC published a notice in the Federal Register
to inform the public that it had instituted an investigation
on May 31, 2019. (Doc. No. 55-4: Keller Decl., Ex. D). The
ITC instituted the investigation after considering DTI's
comments, including its antitrust and anti-competitive
arguments, and refused DTI's request that the
Administrative Law Judge make a determination regarding
DTI's alleged anti-competitive arguments. (Id.).
The notice defined the parties to the investigation and the
scope of the articles under investigation. In addition to
Hyundai and DTI, the parties to the investigation are three
foreign entities which have supplied parts to DTI (the
“Additional Respondents”). (Id.).
served with the ITC Complaint on June 4, 2019. Two days
later, DTI's counsel appeared in the ITC investigation.
(Doc. No. 55-5: Keller Decl., Ex. E). DTI's response to
the ITC complaint was due on June 25, 2019. Discovery in the
ITC investigation began on June 7, 2019, and DTI served
interrogatories and requests for production on Hyundai on
June 10, 2019. (Doc. No. 55 at ¶ 8: Keller Decl.). DTI
filed the pending motion on June 12, 2019. In the motion, DTI
seeks an order from this Court, pursuant to 28 U.S.C. §
1651 (the “All Writs Act”), staying the ITC
action. More specifically, DTI seeks an order from this Court
enjoining Plaintiff from participating in the pending ITC
action, and from pursuing, enforcing, or seeking to enforce,
an exclusion order, cease and desist order, or other
injunctive relief relating to certain replacement automotive
service and collision parts and components thereof, pending
the resolution of this action. This Court held a hearing in
this matter on June 20, 2019, and this matter is now ripe for
was enacted to investigate violations of the trade statute
enumerated in Section 337 of the Tariff Act of 1930, as
amended. Congress authorized the ITC to investigate
unlawful “importation into the United States, the sale
for importation, or the sale within the United States after
importation by the owner, importer, or consignee, of articles
that infringe a valid and enforceable United States trademark
registered under the Trademark Act of 1946.” 19 U.S.C.
§ 1337(a)(1)(C). If the ITC determines that the trade
statute has been violated, then the ITC may exclude the
infringing articles from importation into the United States
and prohibit domestic activities related to the sale,
marketing, advertising, and distribution of infringing
articles already within the United States. Id.
§ 1337(d) & (f).
authorized and anticipated parallel proceedings in the
district courts and the ITC, as the district court and the
ITC provide different remedies. Apparently recognizing the
complications that may arise from parallel proceedings, in
1994 Congress enacted 28 U.S.C. § 1659(a), which states
that “[i]n a civil action involving parties that are
also parties to a proceeding before [the ITC], at the request
of a party to the civil action that is also a respondent in
the proceeding before the Commission, the district court
shall stay, until the determination of the Commission becomes
final, proceedings in the civil action with respect to any
claim that involves the same issues involved in the
proceeding before the Commission….” 28 U.S.C.
Congress has enacted a statute allowing a district court
action to be stayed pending an ITC action, there is no
corresponding statute for the reverse of that procedure. DTI
argues, however, that this Court may nevertheless stay the
pending ITC action under the All Writs Act, which provides
that the “Supreme Court and all courts established by
Act of Congress may issue all writs necessary or appropriate
in aid of their respective jurisdictions and ...