Su v. World Kuk Sool Association Inc et al

IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF TEXAS
HOUSTON DIVISION
SUNG JIN SU, 	§
§
Plaintiff/Counter-Defendant, 	§
§
V. 	§ 	Civil Action No. H-23-3215
§
WORLD KUK SOOL 	§
ASSOCIATION, INC., WKSA, LLC, 	§
and GAYA WON LLC, 	§
§
Defendants/Counter-Plaintiffs. 	§
§
ORDER
Pending before the Court is Defendants' Motion for Statutory Damages and
Injunctive Relief (Document No. 185). Having considered the motion, submissions,
and applicable law, the Court determines that the motion should be granted in part
with respect to a portion of the injunctive relief requested, and denied in part with
respect to the statutory damages requested.
I. BACKGROUND
This case involves a family business dispute between father and son in the Korean
martial arts field. On· March 3, 2023, Plaintiff Sung Jin Su filed suit in California •
state court against three companies that are run by his family: Defendants World
Kuk Sool Association, Inc., 	WKSA, LLC, 	and Gaya Won LLC (collectively
"WKSA"). After a contentious pretrial period, the Court held a five-day jury trial,
United States District Court
Southern District of Texas
ENTERED
April 30, 2026
Nathan Ochsner, Clerk
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considering Plaintiff's sole remaining claim for misappropriation of his name or
likeness, and WK.SA' s sole remaining counterclaim for trademark infringement. 1 On
June 9, 2025, a federal jury found Plaintiff liable for trademark infringement for the
usage ofWKSA's trademarks, and WK.SA riot liable for misappropriating Plaintiff's
likeness. 2 WK.SA now moves for statutory damages and a permanent injunction. 3
IL LAW & ANALYSIS
WK.SA contends that they are entitled to an award of statutory damages and
permanent injunctive relief. The Court will consider each of WK.SA' s requests in
tum.
A. 	Statutory Damages
WK.SA contends that under the Lanham Act, it should be awarded statutory
damages for their claim of counterfeiting in the amount of $1,400,000.00 pursuant
1 The Court notes Magistrate Judge Peter Bray's forty-five-page Memorandum and
Recommendation adopted by this Court, in which he considered eight highly contentious
pre-trial motions. See Magistrate Judge Peter Bray's Memorandum and Recommendation,
Document No. 139 at 1-45. Therein, Judge Bray summarized the nature of this dispute as
follows: 	"Neither side has been willing to concede a single point, even when it is clear to
the court that there is no evidence or law in support of their position ... [t]he Court also
notes that, while the parties have submitted voluminous briefing, that briefing does not cite
much actual evidence ... [t]inally, the court observes that, despite the length of the briefs,
the parties have in many cases provided the court with little, if any, legal analysis." Id. at
5-6.
2 See Jury Verdict, Document No. 184 at 1-27.
3 See 	WKSA 's Post-Trial Brief on Statutory Damages and Injunctive Relief,
Document No. 185 at 1-18.
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to 15 tJ.S.C. § 1117(c). In response, Plaintiff contends that WK.SA failed to plead or
try a counterfeiting claim required to obtain statutory damages under 15 U.S.C.
§ 1117 (c), or provide Plaintiff with fair notice of WK.SA' s intent to pursue statutory
damages. 4 The Court has reviewed both WKSA's Third-Party Complaint, and the
Amended Joint Pre-Trial Order in this matter which supplanted the pleadings
pursuant to Federal Rule of Civil Procedure 16(e). 5 A thorough review ofWKSA's
Third-Party Complaint reveals that WK.SA fails to utilize the term "counterfeit"
anywhere therein, only alleging that Plaintiffs use of WK.SA' s marks was "likely to
cause confusion." 6 The Court notes that WK.SA fails to allege that Plaintiff used a.
counterfeit mark, nor does WK.SA reference the statutory provision they now seek
statutory damages under. A thorough review of the Amended Joint Pre-Trial Order
in this case reveals a similar story, in which WK.SA' s states its sole remaining
4 See PlaintiffSung Jin Su 's Response in Opposition to WKSA 's Post-Trial Brief on
Statutory Damages and Request for Permanent Injunctive Relief, Document No. 186 at 1-
21.
5 	See 	WKSA 's 	Second Amended 	Counterclaim 	and 	Third-Party 	Complaint,
Document No. 87 at 1-48; see also Amended Joint Pretrial Order, Document No. 156 at
1-38.
6 WKSA 's Second Amended Counterclaim and Third-Party Complaint, Document
No. 87 at 19.
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counterclaim as "trademark infringement," with no reference to counterfeiting as a
separate claim for trial. 7
To overcome these deficiencies, WKSA arguesthat by asserting a claim under
15 U.S.C. § 1114 in their Second Amended Complaint and explicitly seeking
statutory damages, WKSA inherently asserted counterfeiting. WKSA further argues
that they were not required to say "the magic words" of counterfeiting to adequately
plead a claim for counterfeiting. 8 In response, Plaintiff contends that counterfeiting
is a distinct statutory wrong that carries heightened remedies, thus requiring WKSA
to provide adequate notice of their intent to pursue a claim that could result in a
higher level of culpability. Plaintiff further notes for the Court WKSA's unilateral
statutory damages stipulation filed on June 2, 2025, the morning that trial began,
depriving Plaintiff of fair notice. 9 Plaintiff contends that WKSA litigated this case
throughout discovery, dispositive motions, and pre-trial filings on an actual-damages
theory, failing to offer Plaintiff fair notice to defend against statutory damages.
7 Amended Joint Pretrial Order, Document No. 156 at 3.
8 WKSA 's Reply on Statutory Damages and Injunctive Relief, Document No. 198 at
3-4.
9 See Defendants' Unilateral Damages Stipulation, Document No. 174. The Court
further notes 	that WK.SA 	also unilaterally 	filed 	a ninety-six-page second amended
proposed jury charge on the morning of the first day of trial. See Defendants' Unilateral
Proposed Jury Charge, Document No. 173 at 1-96.
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Having considered the foregoing, submissions, and applicable law, the Court
finds that WKSA effectively blindsided Plaintiff by failing to adequately provide
notice of its intent to bring a claim for counterfeiting and pursue statutory damages,
thereby significantly prejudicing Plaintiffs abilities to adequately defend himself.
Accordingly, the Court finds that WKSA's request for statutory damages should be
denied. 10 The Court will now consider WKSA' s request for a permanent injunction.
B. 	Permanent Injunction
The Lanham Acts 	expressly vests the Court with the 	"power to grant
injunctions, according to the principles of equity and upon such terms as the court
may deem reasonable, to prevent the violation of any right" of a trademark holder.
15 U.S.C. § l l 16(a). A plaintiff seeking a permanent injunction must satisfy a four-
factor test before a court may grant such relief. "A plaintiff must demonstrate: (1)
that it has suffered an irreparable injury; (2) that remedies available at law, such as
monetary 	damages, 	are 	inadequate 	to 	compensate 	for 	that 	injury; 	(3) 	that,
considering the balance of hardships between the plaintiff and defendant, a remedy
in equity is warranted; and (4) that the public interest would not be disserved by a
10 Considering the Court's findings that WKSA failed to properly plead their claim
of counterfeiting and failed to provide adequate notice of its intent to proceed with statutory
damages, the Court declines to consider Plaintiffs arguments related to willfulness.
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permanent injunction." eBay Inc. 	v. 	MercExchange, L.L.C., 	547 U.S. 388, 391
(2006).
Here, WK.SA contends that the jury's finding for trademark infringement
coupled with Plaintiffs demonstrated history of trademark infringement should
result in a permanent injunction issued by this Court. WK.SA specifically requests
the Court enjoin Plaintiff from using any of WKSA's trademarks. WKSA also
requests three additional and significant injunctive measures: (1) a prohibition of
Plaintiffs ability to contest or oppose any 	of WKSA's trademark before any
governmental 	or administrative body, 	including the United States Patent and
Trademark Office and the World Intellectual Property Organization; (2) an advisory
declaration that the final judgment reflects WKSA's ownership of valid, legally
protected trademarks; 	and (3) 	an order from this Court requiring Plaintiff to
permanently destroy any materials in his custody that includes any of the WK.SA
trademarks.
In response, Plaintiff contends that WKSA's proposed injunctive relief is
overbroad, 	punitive, 	and 	contrary 	to 	established 	limits 	on 	trademark 	relief.
Specifically, Plaintiff contends that any forthcoming injunction should not limit
Plaintiffs ability to engage in future trademark challenges before government
agencies 	because 	such prohibition would 	constitute 	an 	unconstitutional 	prior
restraint on petitioning activity disserving the public interest. Plaintiff further
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contends that WKSA's demand for destruction of Plaintiffs personal items such as
personal uniforms and certificates is antithetical to the language of the Lanham Act,
which authorizes destruction of specific commercial items including labels, signs,
prints, packages, and advertisements in the possession of the defendant. See 15
U.S.C. § 1118. Finally, Plaintiff contends that the Court should decline WKSA's
request for an advisory declaration that its trademarks are valid because the issue of
validity was never tried. II
The Court has thoroughly reviewed the jury verdict in this case, which
contains a federal jury's explicit finding that Plaintiffs "use of any of WKSA's
trademarks create[ d] a likelihood of consumer confusion ... resulting in trademark
infringement."I2 Thus, the Court determines that injunctive relief is appropriate for
the purposes 	of incorporating the jury's trademark infringement finding, 	and
precluding Plaintiff from the usage ofWKSA's trademarks in a commercial context.
With regards to WKSA's additional requests of injunctive relief, the Court declines
to limit Plaintiffs right to contest future trademarks with relevant government
agencies. The Court also declines to require Plaintiff to destroy any personal items
11 The Court further notes the Court's instructions to the jury which explicitly stated
that "Plaintiff Sung Jin Su stipulates that in this case only, the WK.SA parties collectively
own seven valid trademarks, and further agrees that he does not contest their validity or
ownership." Jury Instructions and Verdict, Document No. 184 at 13.
12 Jury Instructions and Verdict, Document No. 184 at 24.
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within his possession. The Court also declines to grant WK.SA's request for the
Court to independently declare WK.SA's trademarks are valid, as this issue was not
litigated before this Court or presented to the jury for trial.
IV. CONCLUSION
Based on the foregoing, the Court hereby
ORDERS that Defendants' Motion for Statutory Damages and Injunctive
Relief (Document No. 185) is GRANTED IN PART AND DENIED IN PART.
The Court further
ORDERS that Defendants' request for statutory damages is DENIED. The
Court further
ORDERS that Defendants' request for a permanent injunction is GRANTED
IN PART. Plaintiff Sung Jin Su is hereby permanently enjoined from:
• 	Using any of the WK.SA Marks in connection with any martial arts-related
goods or services including any print, digital, or audiovisual materials in any
manner and using any variation, misspelling, or derivative of the WK.SA
Marks that is confusingly similar such as United Mirae Kuk Sool or Mirae
Kuk Sool.
• 	Expressly or impliedly stating, suggesting, representing, or implying to a
reasonable person that they are affiliated with, endorsed by, authorized by, or
otherwise connected to WK.SA, its officers, schools, or programs.
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• 	Directly or indirectly circumventing or attempting to circumvent any term of
the injunction, including acting through or in concert with a third party,
creating successor entities, or altering spelling or visual styling of the WK.SA
Marks.
SIGNED at Houston, Texas, on this -3.Q day of April, 2026.
United States District Judge
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