PERMANENT INJUNCTION AND DISMISSAL AS TO DEFENDANT SPORTRAK, INC. d/b/a Wheel Plus
S. JAMES OTERO, District Judge.
The Court, pursuant to the Stipulation for Entry of Permanent Injunction Case 2:14-cv-07961-SJO-PJW Document 30 Filed 01/29/15 Page 2 of 4 Page ID #:142 and Dismissal ("Stipulation"), by and between Plaintiffs BMW OF NORTH AMERICA, LLC ("BMW NA"), and BAYERISCHE MOTOREN WERKE AG ("BMW AG") (collectively "Plaintiffs"), and Defendant SPORTRAK, INC. d/b/a Wheel Plus ("Defendant") filed concurrently herewith, hereby ORDERS, ADJUDICATES and DECREES that a permanent injunction and dismissal shall be and hereby is entered against Defendant in the above-referenced matter as follows:
1. PERMANENT INJUNCTION. Defendant and any person or entity acting in concert with, or at the direction of Defendant, including any and all agents, servants, employees, partners, assignees, distributors, suppliers, resellers and any others over which Defendant may exercise control, are hereby restrained and enjoined, pursuant to 15 United States Code ("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:
a. 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 (as depicted in Plaintiffs' Complaint for Damages and Declaratory Relief at ¶¶19.i. — 19.x. [ECF Dkt. 1]), and design patents D515,491, D635,078, and D643,794 (collectively hereinafter "BMW 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; Case 2:14-cv-07961-SJO-PJW Document 30 Filed 01/29/15 Page 3 of 4 Page ID #:143
b. 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, 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.
c. engaging in any acts of trademark infringement, false designation of origin, dilution, unfair competition, design patent infringement, or other act which would tend damage or injure Plaintiffs; and/or
d. using 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 D515,491, D635,078, and D643,794.
2. Defendant is ordered to deliver immediately for destruction all counterfeit, infringing or otherwise unauthorized products, including automobile wheel rims, center caps, emblems, badges, labels, signs, prints, packages, wrappers, receptacles and advertisements relating thereto, in its possession and/or under its control embodying, comprised, utilizing and/or bearing any BMW Intellectual Properties, or any simulation, reproduction, counterfeit, copy or colorable imitations thereof, and all plates, molds, heat transfers, screens, matrices and other means of making the same, to the extent that any of these items are in Defendant's possession.
3. This Permanent Injunction shall be deemed to have been served upon Defendant at the time of its execution by the Court.
4. The Court finds there is no just reason for delay in entering this Permanent Injunction against Defendant, and, pursuant to Federal Rule of Civil Procedure 54(a), the Court directs immediate entry of this Permanent Injunction against Defendant.
5. Defendant will be making agreed-upon payments to Plaintiffs, as Case 2:14-cv-07961-SJO-PJW Document 30 Filed 01/29/15 Page 4 of 4 Page ID #:144 more particularly described in a separate Confidential Settlement Agreement.
6. NO APPEALS AND CONTINUING JURISDICTION. No appeals shall be taken from this Permanent Injunction, and the parties waive all rights to appeal. This Court expressly retains jurisdiction over this matter to enforce any violation of the terms of this Permanent Injunction.
7. NO FEES AND COSTS. Each party shall bear their own attorneys' fees and costs incurred in this matter.
8. DISMISSAL. Upon entry of this Permanent Injunction against Defendant, the case shall be dismissed as to Defendant only, without prejudice.
IT IS SO ORDERED.
