The opinion of the court was delivered by: Hon. Jeffrey T. Miller United States District Judge
ORDER GRANTING JOINT MOTION FOR ENTRY OF AND ENTERING CONSENT JUDGMENT AS TO DEFENDANTS EUROTECH WHEELS, LLC AND EUROTECH RIMS, LLC
The parties filed a joint motion for entry of consent judgment as to Defendants Eurotech Wheels, LLC, and Eurotech Rims, LLC. (Doc. no. 29.) Pursuant to the joint motion and for good cause shown, the court hereby GRANTS the joint motion and issues the following ORDER:
This matter having been opened to the Court upon the Complaint of Plaintiffs BMW of North America, LLC and Bayerische Motoren Werke AG (collectively, "BMW") against Defendants Eurotech Wheels, LLC, Eurotech Rims, LLC (collectively, "Eurotech"), Ryan Moalemi and Joshua Moalemi alleging trademark infringement under the Federal Trademark Act (the "Lanham Act"), 15 U.S.C. § 1114 and the common law of California; unfair competition and false designation of origin under 15 U.S.C. § 1125(a) and under the common law of California; trademark counterfeiting under 15 U.S.C. § 1114(1); unfair competition under Cal. Bus. & Profs. Code § 17200 et seq.; and as to Eurotech, design patent infringement under 35 U.S.C. §271; Eurotech, having allegedly advertised and sold wheels in violation of BMW trademark and design patent rights;
Eurotech, having represented and warranted that its only warehouses for wheels that fit BMWs are three located at 6350 Nancy Ridge Road, Suite #104, San Diego, CA; and that it has no parent, subsidiary, or affiliated businesses of any kind that are involved in wheels for BMWs;
Eurotech, having represented and warranted that its total profits on challenged wheel designs are $20,000 and $10,000, respectively; and that its total profits on wheels bearing BMW's Roundel or M-stripes logo are $20,000 and $10,000, respectively;
Eurotech, without admitting any liability, and expressly denying same, solely to avoid the expense and distraction of protracted litigation, and wishing to settle its dispute with BMW amicably;
The parties having acknowledged the jurisdiction of this Court over them and the subject matter hereof; and
With the consent of BMW and Eurotech, and for good cause, IT IS DECLARED AND HEREBY ADJUDGED that:
This Court has jurisdiction over the subject matter hereof;
BMW has extensively used and advertised its "Roundel" logo, M-Stripes logo and "BMW" word mark in connection with its business of designing, manufacturing, distributing, offering for sale and selling motor vehicles and wheels;
BMW is the exclusive owner of valid and subsisting federal trademark registrations, including incontestable trademark registrations for its BMW "Roundel" logo, M-Stripes logo and "BMW" word mark (see Exhibit A hereto), and that BMW's Roundel logo and "BMW" word mark are famous; and
BMW AG is the owner of various valid and lawfully issued United States Design Patents for designs of vehicle wheels, including but not limited to U.S. Design Patent Nos. 515,491; 514,999; 504,382; 493,404; 470,093; 532,358; 558,114; 560,585; 528,962; and 449,028 (collectively, the "BMW design patents") (see Exhibit B), and BMW NA is the licensee of said patents in the United States.
1. Eurotech, its affiliates, agents, servants, employees, representatives, successors, assigns, attorneys-in-fact, and all those persons in active concert or participation with them who receive actual notice of this Consent Final Judgment by personal service or otherwise, including but not limited to Ryan Moalemi and Joshua Moalemi, and each of them, be and hereby are permanently enjoined and restrained from:
A. Ordering, accepting orders for, accepting shipment or delivery of, warehousing, manufacturing, importing, advertising or displaying (on the Internet or otherwise), marketing, promoting, offering for sale, selling or otherwise distributing, any wheels depicting, bearing, or in connection with BMW's Roundel or M Stripes logo (whether standing ...