Bmw of North America, LLC; Bayerische Motoren Werke Ag v. Mini Works, LLC; Victor Barreira

This disposition is not appropriate for publication and is not precedent except*
as provided by 9th Cir. R. 36-3.
NOT FOR PUBLICATION
UNITED STATES COURT OF APPEALS
FOR THE NINTH CIRCUIT
BMW OF NORTH AMERICA, LLC;
BAYERISCHE MOTOREN WERKE AG,
Plaintiffs - Appellees,
v.
MINI WORKS, LLC; VICTOR
BARREIRA,
Defendants - Appellants,
and
POLE POSITION PARTNERS GROUP,
LLC; POLE POSITION USA, LLC;
LINDA SHARABY,
Defendants..
No. 10-17457
DC. No. 2:07-cv-01936-SMM
MEMORANDUM*
Appeal from the United States District Court
for the District of Arizona
Stephen M. McNamee, Senior District Judge, Presiding
FILED
DEC 23 2011
MOLLY C. DWYER, CLERK
U .S. C OU R T OF APPE ALS

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The panel unanimously concludes this case is suitable for decision**
without oral argument. See Fed. R. App. P. 34(a)(2).
The Honorable Robert E. Cowen, Senior United States Circuit Judge for***
the Third Circuit, sitting by designation.
2
Submitted December 8, 2011 *
*
San Francisco, California
Before: O’SCANNLAIN, COWEN, and BERZON, Circuit Judges.***
Defendants Mini Works, LLC and Victor Barreira appeal from the
District Court’s judgment, entered after a bench trial, in favor of Plaintiffs BMW
of North America, LLC and Bayerische Motoren Werke AG (collectively “BMW”)
as to BMW’s claims against Appellants for federal and state trademark
infringement and unfair competition as well as its claim against Barreira under the
Anti-Cybersquatting Consumer Protection Act (“ACPA”). We review for clear
error. See, e.g., Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 947
(9th Cir. 2002); Murray v. Cable Nat’l Broad. Co., 86 F.3d 858, 860 (9th Cir.
1996).
The District Court committed no such clear error in its thorough and well-
reasoned ruling setting forth its own findings of fact and conclusions of law based
on the evidence presented at the bench trial. With respect to the infringement and
unfair competition claims, the District Court properly applied the relevant
Sleekcraft factors to determine that a likelihood of confusion exists as to the

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Appellants’ use of the MINI WORKS trademark and trade name and BMW’s
MINI marks. See, e.g., AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-49 (9th
Cir. 1979). Likewise, the District Court appropriately found that the nominative
fair use doctrine did not apply here because Appellants used more of BMW’s mark
than necessary and falsely suggested that they were sponsored or endorsed by
BMW itself. See, e.g., New Kids on the Block v. News Am. Publ’g Inc., 971 F.2d
302, 308 (9th Cir. 1992). Finally, we conclude that the District Court did not
clearly err by finding Barreira liable under the ACPA because he acted in bad faith
and did not meet the statutory safe harbor. See, e.g., 15 U.S.C. § 1125(d); Lahoti
v. VeriCheck, Inc., 586 F.3d 1190, 1203 (9th Cir. 2009).
AFFIRMED.

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