Opinion
PRELIMINARY INJUNCTION AGAINST EUDM AUTOSPORTS, INC., A NEW YORK CORPORATION
JAMES OTERO, District Judge.
The Court, pursuant to the Stipulation for Entry of Preliminary Injunction ("Stipulation"), by and between Plaintiffs BMW of North America, LLC ("BMW NA"), and Bayerische Motoren Werke AG ("BMW AG") (collectively "Plaintiffs"), and Defendant EUDM Autosports, Inc. ("Defendant") filed concurrently herewith, hereby ORDERS that a Preliminary Injunction shall be and hereby is entered against Defendant in the above-referenced matter as follows:
FINDINGS
1. Plaintiffs filed a First Amended Complaint ("FAC") naming Defendant, among others, stemming from Defendant's alleged dealings in infringing automobile wheel rims, with counterfeit center caps and emblems, comprised of Plaintiffs' federally registered design patents and bearing Plaintiffs' federally registered trademarks. The FAC alleges that Defendant's dealings in these infringing automotive products and parts constitutes infringement of Plaintiffs' registered trademarks in violation of 15 United States Code ("U.S.C.") §1114 and infringement of Plaintiffs' registered design patents in violation of 35 U.S.C. §271.
2. Plaintiffs and Defendant have stipulated to this Preliminary Injunction without adjudication of any issue of fact or law and without Defendant admitting liability for any of the matters alleged in the FAC.
3. The Court has jurisdiction over the subject matter of this case and the parties hereto.
4. Venue in the Central District of California is proper, and Defendant has been properly served with process.
5. There is good cause to believe that Defendant has engaged in, continues to engage in, and is likely to continue to engage in, acts and practices that violate 15 U.S.C. §1114 and 35 U.S.C. §271, and that Plaintiffs are likely to prevail on the merits of this action.
6. There is also good cause to believe that Plaintiffs have been and will continue to suffer irreparable harm due to Defendant's continued dealings in the accused wheel rims and center caps at issue.
7. There is also good cause to believe that irreparable damage to the Court's ability to grant effective final relief for Plaintiffs in the form of Defendant's profits, Plaintiffs' damages, statutory damages, costs of the action, and/or forfeiture of infringing products will occur due to Defendant's continued dealings in the accused products and the sale, transfer, assignment, or other disposition or concealment by Defendant of its inventory, assets or records unless Defendant is restrained and enjoined by order of this Court.
8. Weighing the equities and considering Plaintiffs' likelihood of success on its causes of action against Defendant, entry of this Preliminary Injunction is in the public interest.
9. No security is required for the issuance of this Preliminary Injunction under Rule 65(c) of the Federal Rules of Civil Procedure or otherwise.
PRELIMINARY INJUNCTION ORDER
I. PROHIBITED COMMERCIAL ACTIVITIES
IT IS ORDERED that Defendant EUDM Autosports, Inc. ("Defendant"), and any person or entity acting in concert with, or at the direction of Defendant, including any and all officers, directors, members, agents, servants, employees, partners, corporation, limited liability company, parent company, subsidiary, affiliates, successors, assignees, and any others over which Defendant may exercise control, are hereby restrained and enjoined, 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, BMW® and M® trademarks and/or design patents D504, 382, D515, 491, D551, 149, and D635, 078 (collectively hereinafter "BMW's Intellectual Properties"), and/or any intellectual property that is confusingly or substantially similar to, or that constitutes a colorable imitation of, any BMW Intellectual Properties, whether such use is as, on, in or in connection with any trademark, service mark, trade name, logo, design, Internet use, website, domain name, metatags, advertising, promotions, solicitations, commercial exploitation, television, web-based or any other program, or any product or service, or otherwise;
(2) advertising or displaying images and/or photographs of non-genuine BMW automobile wheel rims with a BMW® and/or M® center cap or badge;
(3) advertising or selling non-genuine BMW automobile rims, center caps, or badges;
(4) using BMW Intellectual Properties, including but not limited to the BMW® and M® trademarks in advertising to suggest that non-genuine BMW products being advertised are sponsored by, endorsed by, or are otherwise affiliated with BMW and/or advertising non-genuine BMW automobile wheel rims and other non-genuine 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 M®-trademarks, to suggest that non-genuine BMW products being advertised are manufactured, sponsored or endorsed by BMW or advertising non-genuine BMW automobile parts or related products using descriptions that imply the products are genuine BMW products;
(6) performing or allowing others employed by or representing Defendant, or under Defendant's control, to perform any illegal act calculated to injure Plaintiffs, any BMW Intellectual Properties, including but not limited to the BMW® and 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; and/or
(7) owning or controlling any Internet domain name or website that includes any of Plaintiffs' trademarks or design patents, including but not limited to the BMW® and M® marks and/or design patents D504, 382, D515, 491, D551, 149, and D635, 078.
II. MAINTAIN RECORDS
IT IS FURTHER ORDERED that Defendant EUDM Autosports, Inc. ("Defendant"), and any person or entity acting in concert with, or at the direction of Defendant, including any and all officers, directors, members, agents, servants, employees, partners, corporation, limited liability company, parent company, subsidiary, affiliates, successors, assignees, and any others over which Defendant may exercise control, are hereby restrained and enjoined from:
(1) failing to create and maintain books, records, accounts, bank statements, current accountants' reports, general ledgers, general journals, case receipt ledgers, source documents, documents indicating title to real or personal property, and any other data which in reasonable detail fairly, accurately, and completely reflect the incomes, disbursements, transactions and uses of Defendant's assets; and/or
(2) destroying, erasing, mutilating, concealing, altering, transferring, or otherwise disposing of in any manner, directly or indirectly, any advertisements, photographs, images, books, records, disks, contracts, accounting data, purchase orders, invoices, handwritten notes, checks (fronts and backs), correspondence, forms, manuals, electronically stored data, banking records, customer lists, receipt books, shipping receipts, ledgers, payroll records, or other documents of any kind, including information stored in computer-maintained form (including e-mail), in its possession, custody, or control.
III. ASSET PRESERVATION
IT IS FURTHER ORDERED that Defendant EUDM Autosports, Inc. ("Defendant"), and any person or entity acting in concert with, or at the direction of Defendant, including any and all officers, directors, members, agents, servants, employees, partners, corporation, limited liability company, parent company, subsidiary, affiliates, successors, assignees, and any others over which Defendant may exercise control, are hereby restrained and enjoined from directly or indirectly selling, liquidating, assigning, transferring, converting, loaning, encumbering, pledging, concealing, dissipating, spending, withdrawing, or otherwise disposing of an funds, real or personal property, or other assets or any interest therein, wherever located, including any assets outside the territorial United States, which are owned and controlled by Defendant, or held for Defendant's benefit, in whole or in part, or in Defendant's possession, other than those expenditures or transfers for reasonable, actual, and necessary business operations and business and personal expenses that Defendant will reasonably incur. The funds, property and assets affected by this paragraph shall include both existing assets and assets acquired after the effective date of this Preliminary Injunction, including without limitation, those acquired by loan or gift.
Provided, however, that Defendant EUDM Autosports, Inc. shall, upon request by Plaintiffs on a monthly basis produce copies of all documents reflecting such transfers or expenditures for reasonable, actual, and necessary business operations and business and personal expenses, including, but not limited to, books and records of accounts, all financial and accounting records, balance sheets, income statements, and bank records.
IV. POSSESSION OF CURRENT INVENTORY
IT IS FURTHER ORDERED that Defendant EUDM Autosports, Inc. ("Defendant"), and any person or entity acting in concert with, or at the direction of Defendant, including any and all officers, directors, members, agents, servants, employees, partners, corporation, limited liability company, parent company, subsidiary, affiliates, successors, assignees, and any others over which Defendant may exercise control, are hereby restrained and enjoined from directly or indirectly selling, shipping, returning, transferring, distributing, or otherwise disposing of any accused BMW automobile wheel rims, center caps, emblems, badges, labels, signs, prints, packages, wrappers, receptacles and/or advertisements relating thereto, in Defendant's possession and/or under its control. The inventory affected by this paragraph shall include both existing inventory and any inventory acquired after the effective date of this Preliminary Injunction.
V. ENTRY OF THIS PRELIMINARY INJUNCTION
IT IS FURTHER ORDERED that the Court finds there is no just reason for delay in entering this Preliminary Injunction against Defendant, and, the Court directs immediate entry of this Preliminary Injunction against Defendant. This Preliminary Injunction shall be deemed to have been served upon Defendant at the time of its execution by the Court.
VI. NO POSTING OF BOND OR OTHER SECURITY REQUIRED
IT IS FURTHER ORDERED that Plaintiffs do not need to give any security for the issuance of this Preliminary Injunction under Rule 65(c) of the Federal Rules of Civil Procedure or otherwise.
VII. RETENTION OF JURISDICTION
This Court expressly retains jurisdiction over this matter to enforce any violation of the terms of this Preliminary Injunction by Defendant during the pendency of the action.
IT IS SO ORDERED.