BMW of North America, LLC et al v. A Spec Wheels & Tires, LLC

Filing 34

STIPULATION AND ORDER for Entry of Permanent Injunction against Defendant A Spec Wheels & Tires, LLC and Dismissal of Entire Action. Signed by Judge Edward M. Chen on 10/13/15. (cl, COURT STAFF) (Filed on 10/13/2015)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN FRANCISCO COURTHOUSE

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

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[PROPOSED]
PERMANENT INJUNCTION AGAINST
DEFENDANT A SPEC WHEELS &
TIRES, LLC AND DISMISSAL OF
ENTIRE ACTION

v.

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Case No.: 3:15-cv-01105-EMC

Hon. District Judge Edward M. Chen
A SPEC WHEELS & TIRES, LLC, a California
Limited Liability Company; and DOES 1-10,
inclusive,
Defendants.

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

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Entire Action (“Stipulation”), by and between Plaintiffs BMW of North America, LLC (“BMW

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NA”) and Bayerische Motoren Werke AG (“BMW AG”) (collectively “Plaintiffs”), and

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Defendant A Spec Wheels & Tires, LLC (“Defendant”) filed concurrently herewith, hereby

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ORDERS, ADJUDICATES and DECREES that a permanent injunction shall be and hereby is
entered against Defendant in the above-referenced matter as follows:
///
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PERMANENT INJUNCTION. Defendant, and any person or entity acting in

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concert with, or at the direction of Defendant, including any and all agents, servants, employees,

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partners, assignees, distributors, suppliers, resellers and any others over which Defendant may

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exercise control, is hereby restrained and enjoined, pursuant to 15 United States Code

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(“U.S.C.”) §1116(a) and 35 U.S.C. §283, from engaging in, directly or indirectly, or authorizing

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

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throughout the world:
(i).

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copying, manufacturing, importing, exporting, purchasing, marketing,

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selling, offering for sale, distributing or dealing in any product or service that uses, or otherwise

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making any use of, any of BMW’s intellectual properties, including but not limited to, BMW®,

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M®, and/or MINI® trademarks and/or Plaintiffs’ design patents D493,404; D504,382;

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D515,491; D516,989; D527,334; D551,149; D560,585; D584,210; D597,015; D615,018 C1;

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D617,243; D617,712; D631,813; D635,078; D643,794; and D671,477 (collectively hereinafter

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“BMW’s Intellectual Properties”), and/or any intellectual property that is confusingly or

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substantially similar to, or that constitutes a colorable imitation of, any BMW Intellectual

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Properties, whether such use is as, on, in or in connection with any trademark, service mark,

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trade name, logo, design, Internet use, website, domain name, metatags, advertising,

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promotions, solicitations, commercial exploitation, television, web-based or any other program,

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or any product or service, or otherwise;

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(ii).

BMW automobile wheel rims with a BMW®, M®, and/or MINI® center cap or badge;

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advertising or displaying images and/or photographs of non-genuine

(iii).

advertising or selling non-genuine BMW automobile rims, center caps, or

(iv).

using BMW Intellectual Properties, including but not limited to the

badges;

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

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

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and/or advertising non-genuine BMW automobile wheel rims and other non-genuine BMW

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automotive parts using descriptions that imply that the products are genuine BMW products;
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(v).

using, advertising or displaying BMW’s trademarks, including but not

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limited to BMW®-, M®-, or MINI®-trademarks, to suggest that non-genuine BMW products

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being advertised are manufactured, sponsored or endorsed by BMW or advertising non-genuine

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BMW automobile parts or related products using descriptions that imply the products are

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genuine BMW products. Defendant may, however, use “BMW” or other BMW wordmarks to

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advertise non-BMW products with fair use descriptions such as ‘for BMW automobiles’ or ‘fits

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BMW model _______,’ 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 more

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prominently displayed than the surrounding text. In no event may any BMW logos, design

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marks, or other graphical trademarks be used under this exception;

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(vi).

performing or allowing others employed by or representing Defendant, or

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

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BMW Intellectual Properties, including but not limited to the BMW®, M®, and MINI®

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trademarks and/or Plaintiffs’ design patents, and/or Plaintiffs’ business reputation or goodwill,

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including making disparaging, negative, or critical comments regarding Plaintiffs or their

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products and services;

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(vii).

engaging in any acts of trademark infringement, false designation of

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origin, dilution, unfair competition, design patent infringement, or other act which would tend

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damage or injure Plaintiffs; and/or

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(viii). using any Internet domain name or website that includes any of Plaintiffs’

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trademarks or design patents, including but not limited to the BMW®, M®, and MINI® marks

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and/or design patents D493,404; D504,382; D515,491; D516,989; D527,334; D551,149;

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D560,585; D584,210; D597,015; D615,018 C1; D617,243; D617,712; D631,813; D635,078;

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D643,794; and D671,477.

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Defendant is ordered to deliver immediately for destruction all counterfeit,

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infringing or otherwise unauthorized products, including automobile wheel rims, center caps,

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emblems, badges, labels, signs, prints, packages, wrappers, receptacles and advertisements

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relating thereto, in its possession and/or under its control embodying, comprised, utilizing
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and/or bearing any BMW Intellectual Properties, or any simulation, reproduction, counterfeit,

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

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other means of making the same, to the extent that any of these items are in Defendant’s

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possession.

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3.

This Permanent Injunction shall be deemed to have been served upon Defendant

at the time of its execution by the Court.
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The Court finds there is no just reason for delay in entering this Permanent

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Injunction against Defendant, and, pursuant to Federal Rule of Civil Procedure 54(a), the Court

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directs immediate entry of this Permanent Injunction against Defendant.

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5.

Defendant will be making an agreed-upon payment to Plaintiffs, as more

particularly described in a separate Settlement Agreement.
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NO APPEALS AND CONTINUING JURISDICTION. No appeals shall be

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taken from this Permanent Injunction, and the parties waive all rights to appeal. This Court

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expressly retains jurisdiction over this matter to enforce any violation of the terms of this

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Permanent Injunction by Defendant.

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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 in its entirety.

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13th
IT IS SO ORDERED, ADJUDICATED and DECREED this ______ day of
October
_____________, 2015.
_________________________________
HON. EDWARD M. CHEN
United States District Court Judge
Northern District of California

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