BMW of North America, LLC et al v. Autosports European, Inc. et al

Filing 44

PERMANENT INJUNCTION AND DISMISSAL AS TO DEFENDANT UNLIMITED AUTOMOBILE PRODUCTS, LLC, A CALIFORNIA LIMITED LIABILITY COMPANY by Judge S. James Otero (lc)

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UNITED STATES DISTRICT COURT

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CENTRAL DISTRICT OF CALIFORNIA

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WESTERN DIVISION

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Case No.: 2:14-cv-07961 SJO (PJWx)

BMW OF NORTH AMERICA, LLC, a
Delaware Limited Liability Company;
and BAYERISCHE MOTOREN
WERKE AG, a German Corporation,

PERMANENT
INJUNCTION AND DISMISSAL
AS TO DEFENDANT UNLIMITED
AUTOMOBILE PRODUCTS, LLC,
A CALIFORNIA LIMITED
LIABILITY COMPANY

Plaintiffs,
v.
AUTOSPORTS EUROPEAN, INC., a
California Corporation; EG SAVINGS,
INC., a California Corporation d/b/a
AUDIOCITYWHEELS; SPORTRAK,
INC., a California Corporation d/b/a
WHEEL PLUS; TOMMY TIM, an
Individual d/b/a SD TIRES;
UNLIMITED AUTOMOBILE
PRODUCTS, LLC, a California Limited
Liability Company; NAM NGOC
TRAN, an Individual d/b/a SD TIRES
a/d/b/a NCW TIRES; EUDM
AUTOSPORTS, INC., a New York
Corporation; RUBEN ACEVES, an
Individual d/b/a UNLEASHED
WHEELS; INOVIT, INC., a California
Corporation; and DOES 1-10, inclusive,

Hon. S. James Otero

Defendants.

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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL

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The Court, pursuant to the Stipulation for Entry of Permanent Injunction

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and Dismissal (“Stipulation”), by and between Plaintiffs BMW OF NORTH

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AMERICA, LLC (“BMW NA”), and BAYERISCHE MOTOREN WERKE AG

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(“BMW

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AUTOMOBILE PRODUCTS, LLC (“Defendant”) filed concurrently herewith,

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hereby ORDERS, ADJUDICATES and DECREES that a permanent injunction

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and dismissal shall be and hereby is entered against Defendant in the above-

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referenced matter as follows:

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1.

AG”)

(collectively

“Plaintiffs”),

and

Defendant

UNLIMITED

PERMANENT INJUNCTION. Defendant and any person or entity

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acting in concert with, or at the direction of Defendant, including any and all

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agents, servants, employees, partners, assignees, distributors, suppliers, resellers

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and any others over which Defendant may exercise control, are hereby restrained

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and enjoined, pursuant to 15 United States Code (“U.S.C.”) §1116(a) and 35

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U.S.C. §283, from engaging in, directly or indirectly, or authorizing or assisting

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any third party to engage in, any of the following activities in the United States

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and throughout the world:

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i.

copying, manufacturing, importing, exporting, purchasing,

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marketing, selling, offering for sale, distributing or dealing in any product or

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service that uses, or otherwise making any use of, any of BMW’s intellectual

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properties, including but not limited to, BMW® and M® trademarks and/or

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design patents D493,404, D504,382, D515,491, D527,334, D551,149, D560,585,

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D584,210, D615,018 C1, D635,078, D643,794, D671,473, and D671,477

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(collectively hereinafter “BMW’s Intellectual Properties”), and/or any intellectual

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property that is confusingly or substantially similar to, or that constitutes a

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colorable imitation of, any BMW Intellectual Properties, whether such use is as,

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on, in or in connection with any trademark, service mark, trade name, logo,

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design, Internet use, website, domain name, metatags, advertising, promotions,

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solicitations, commercial exploitation, television, web-based or any other
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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL

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program, or any product or service, or otherwise;
ii.

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advertising or displaying images and/or photographs of non-

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genuine BMW automobile wheel rims with a BMW® and/or M® center cap or

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badge;
iii.

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advertising or selling non-genuine BMW automobile rims,

center caps, or badges;
iv.

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using BMW Intellectual Properties, including but not limited

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to the BMW® and M® trademarks in advertising to suggest that non-genuine

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BMW products being advertised are sponsored by, endorsed by, or are otherwise

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affiliated with BMW and/or advertising non-genuine BMW automobile wheel

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rims and other non-genuine BMW automotive parts using descriptions that imply

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that the products are genuine BMW products;
v.

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using, advertising or displaying BMW’s trademarks, including

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but not limited to BMW®- or M®-trademarks, to suggest that non-genuine BMW

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products being advertised are manufactured, sponsored or endorsed by BMW or

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advertising non-genuine BMW automobile parts or related products using

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descriptions that imply the products are genuine BMW products. Defendant may,

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however, use “BMW” or other BMW wordmarks to advertise non-BMW products

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with fair use descriptions such as ‘for BMW automobiles’ or ‘fits BMW model

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_______,’ or similar language, provided that “BMW” and any other BMW

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wordmarks that are used are in the identical font, format, size, and color as, and no

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more prominently displayed than the surrounding text. In no event may any

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BMW logos, design marks, or other graphical trademarks be used under this

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exception;

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vi.

performing or allowing others employed by or representing

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Defendant, or under Defendant’s control, to perform any act or thing which is

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likely to injure Plaintiffs, any BMW Intellectual Properties, including but not

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limited to the BMW® and M® trademarks and/or Plaintiffs’ design patents,
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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL

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and/or Plaintiffs’ business reputation or goodwill, including making disparaging,

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negative, or critical comments regarding Plaintiffs or their products and services;
vii.

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engaging in any acts of trademark infringement, false

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designation of origin, dilution, unfair competition, design patent infringement, or

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other act which would tend damage or injure Plaintiffs; and/or

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viii. using any Internet domain name or website that includes any of

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Plaintiffs’ trademarks or design patents, including but not limited to the BMW®

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and M® marks and/or design patents D493,404, D504,382, D515,491, D527,334,

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D551,149, D560,585, D584,210, D615,018 C1, D635,078, D643,794, D671,473,

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and D671,477.

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Defendant is ordered to deliver immediately for destruction all

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counterfeit, infringing or otherwise unauthorized products, including automobile

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wheel rims, center caps, emblems, badges, labels, signs, prints, packages,

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wrappers, receptacles and advertisements relating thereto, in its possession and/or

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under its control embodying, comprised, utilizing and/or bearing any BMW

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Intellectual Properties, or any simulation, reproduction, counterfeit, copy or

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colorable imitations thereof, and all plates, molds, heat transfers, screens, matrices

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and other means of making the same, to the extent that any of these items are in

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Defendant’s possession.
3.

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This Permanent Injunction shall be deemed to have been served upon

Defendant at the time of its execution by the Court.
4.

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The Court finds there is no just reason for delay in entering this

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Permanent Injunction against Defendant, and, pursuant to Federal Rule of Civil

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Procedure 54(a), the Court directs immediate entry of this Permanent Injunction

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against Defendant.
5.

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Defendant will be making agreed-upon payments to Plaintiffs, as

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more particularly described in a separate Confidential Settlement Agreement.

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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL

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6.

NO APPEALS AND CONTINUING JURISDICTION.

No

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appeals shall be taken from this Permanent Injunction, and the parties waive all

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rights to appeal. This Court expressly retains jurisdiction over this matter to

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enforce any violation of the terms of this Permanent Injunction.

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NO FEES AND COSTS. Each party shall bear their own attorneys’

fees and costs incurred in this matter.
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DISMISSAL.

Upon entry of this Permanent Injunction against

Defendant, the case shall be dismissed as to Defendant only, without prejudice.

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IT IS SO ORDERED, ADJUDICATED and DECREED this 26th day of
March, 2015.
_________________________________
HON. S. JAMES OTERO
District Court Judge of the United States
Central District of California

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[PROPOSED] PERMANENT INJUNCTION AND DISMISSAL