[PROPOSED] PERMANENT INJUNCTION AGAINST DEFENDANTS RSTYPE PRODUCT AND CHARLES M. TSAI AND DISMISSAL OF ENTIRE ACTION
OTIS D. WRIGHT, II, District Judge.
The Court, pursuant to the Stipulation for Entry of Permanent Injunction against Defendants and Dismissal ("Stipulation") by and between Plaintiffs BMW OF NORTH AMERICA, LLC, and BAYERISCHE MOTOREN WERKE AG (collectively "BMW"), and Defendants RSTYPE PRODUCT and CHARLES M. TSAI (collectively "Defendants"), filed concurrently herewith, hereby ORDERS, ADJUDICATES and DECREES that a permanent injunction shall be and is hereby entered against Defendants in the above-referenced matter as follows:
1. PERMANENT INJUNCTION. Defendants and any person or entity acting in concert with, or at the direction of Defendants, including any and all agents, servants, employees, partners, assignees, distributors, suppliers, resellers and any others over which Defendants may exercise control, are hereby restrained and enjoined, pursuant to 15 United States Code ("U.S.C.") §1116, 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, purchasing, importing, exporting, 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 trademarks, including but not limited to, the BMW® word and design marks, the M® word and design marks, the MINI® word and design marks, the BMW dual kidney-shaped automobile grille design marks, and/or any intellectual property that is confusingly or substantially similar to, or that constitutes a colorable imitation of, any of BMW's trademarks (collectively "BMW's Trademarks'), 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;
b. using, advertising or displaying BMW's Trademarks, including but not limited to BMW®-, M®-, or MINI®-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. DEFENDANTS 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 _______,' or similar language, 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;
c. performing or allowing others employed by, under control of, or representing Defendants, or under their control, to perform any act or thing which is likely to injure BMW, any of BMW's Trademarks, including but not limited to the BMW®, M®, MINI®, and BMW dual kidney-shaped automobile grille trademarks.
d. engaging in any acts of federal and/or state trademark infringement, false designation of origin, unfair competition, dilution, or other act which would tend damage or injure BMW; and/or
e. using, owning, possessing, and/or controlling any Internet domain name or website that includes any of BMW's Trademarks including but not limited to the BMW® word and design marks, the M® word and design marks, the MINI® word and design marks, and the BMW dual kidney-shaped automobile grille design marks.
2. To the extent not previously forfeited, Defendants are immediately ordered to deliver to counsel for BMW for destruction all unauthorized products, including counterfeit BMW®-, M®-, MINI®-branded products, wheel rims, center caps, badges, emblems, roundels, BMW dual kidney-shaped automobile grills, stickers, labels, signs, prints, packages, wrappers, receptacles and/or advertisements relating thereto in their possession or under their control bearing any of BMW's Trademarks 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 Defendants' possession.
3. This Permanent Injunction shall be deemed to have been served upon Defendants 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, and, pursuant to Rule 54(a) of the Federal Rules of Civil Procedure, the Court directs immediate entry of this Permanent Injunction against Defendants.
5. Defendants will be making an agreed-upon payment to BMW, as more particularly described in a separate 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 by Defendants.
7. NO FEES AND COSTS. BMW and Defendants shall bear their own attorneys' fees and costs incurred in this matter.
8. DISMISSAL OF ENTIRE ACTION. Upon entry of this Permanent Injunction against Defendants, this case shall be dismissed in its entirety.
IT IS SO ORDERED, ADJUDICATEDADJUDICATED and DECREED.
