Opinion
2:21-cv-03061-CBM(JEMx)
03-01-2022
BMW OF NORTH AMERICA, LLC, et al., Plaintiff, v. PHOENIX WHEEL & TIRE, LLC, et al. Defendants.
PERMANENT INJUNCTION
CONSUELO B. MARSHALL UNITED STATES DISTRICT JUDGE
Consistent with the Court's Order re: Plaintiff's Motion for Default Judgment and Permanent Injunction, the Court orders the following.
Defendant is permanently enjoined and restrained pursuant to 15 U.S.C. §1116(a) and 35 U.S.C. §283 from engaging in, directly or indirectly, or authorizing or assisting any third party to engage in, any of the following activities in the United States and throughout the world: 1) copying, manufacturing, importing, exporting, purchasing, marketing, selling, offering for sale, distributing or dealing in any product or service that uses, or otherwise making any use of, any of BMW's intellectual properties, including but not limited to, registered BMW and/or BMW M trademarks and/or U.S. design patent nos. D551, 149, D583, 741, D593, 022, D594, 396, D615, 018 C1, D620, 862, D621, 770, D630, 564, D635, 078, D661, 239, D686, 128, D686, 132, D697, 088, D703, 599, D721, 316, D748, 560, 1 D754, 051, D758, 943, D788, 676, D792, 315, D823, 774, D842, 206, D847, 067, and D856, 252 (collectively hereinafter “BMW's Intellectual Properties”); 2) advertising or displaying images and/or photographs of unauthorized BMW automobile wheel rims with a BMW and/or BMW M center cap or badge; 3) advertising or selling BMW's Intellectual properties; 4) using BMW Intellectual Properties, including but not limited to the BMW and BMW M trademarks in advertising to suggest that unauthorized BMW products being advertised are sponsored by, endorsed by, or are otherwise affiliated with BMW and/or advertising unauthorized BMW automobile wheel rims and other unauthorized BMW automotive parts using descriptions that imply that the products are genuine BMW products; 5) using, advertising or displaying BMW's trademarks, including but not limited to BMW-, or BMW M-trademarks, to suggest that unauthorized BMW products being advertised are manufactured, sponsored or endorsed by BMW or advertising unauthorized BMW automobile parts or related products using descriptions that imply the products are genuine BMW products. Defendant may, however, use “BMW” or other BMW wordmarks to advertise non-BMW products with fair use descriptions such as ‘for BMW automobiles' or ‘fits BMW model,' provided that “BMW” and any other BMW wordmarks that are used are in the identical font, format, size, and color as, and no more prominently displayed than the surrounding text. In no event may any BMW logos, design marks, or other graphical trademarks be used under this exception; 6) performing or allowing others employed by or representing Defendant, or under Defendant's control, to perform any act or thing which is likely to injure Plaintiffs or the BMW and BMW M trademarks and/or Plaintiffs' design patents, and/or Plaintiffs' business reputation or goodwill, including making disparaging, negative, or critical comments regarding Plaintiffs or their products and services; 7) engaging in any acts of trademark infringement relating to the identified Intellectual Properties, false designation of origin, dilution, unfair competition, design patent 2 infringement, or other act which would tend to damage or injure Plaintiffs; and/or 8) using any Internet domain name or website that includes any of Plaintiffs' trademarks or design patents, including but not limited to the BMW and BMW M marks and/or design patents D551, 149, D583, 741, D593, 022, D594, 396, D615, 018 C1, D620, 862, D621, 770, D630, 564, D635, 078, D661, 239, D686, 128, D686, 132, D697, 088, D703, 599, D721, 316, D748, 560, D754, 051, D758, 943, D788, 676, D792, 315, D823, 774, D842, 206, D847, 067, and D856, 252.
IT IS SO ORDERED. 3