With declining sales, Harley rigorously defends its clothing empire, going after an online print-on-demand company in H-D’s biggest TM infringement battle
Courts side with Harley-Davidson in 2017 trademark infringement lawsuit, the marque’s biggest ever win of its kind
Harley-Davidson has a well-deserved reputation for, shall we say, aggressively protecting its various trademarks. Case in point is the latest trademark situation with SunFrog.com. Back in 2017, word got back to Milwaukee that Michigan-based SunFrog.com—an online print-on-demand outfit that churns out custom made-to-order shirts, mugs, hoodies, mousepads, etc.—was selling wares featuring assorted images that infringed on Harley’s trademarks. H-D’s lawyers took action, and the case led to the company’s biggest ever trademark infringement lawsuit.
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Harley-Davidson has built an empire with its apparel division, annually generating nine-figure revenues, making it more than worth vigilantly protecting. It’s also worth mentioning that the lawsuit against SunFrog stemmed from far more than just a couple customers designing shirts with Harley logos. In fact, H-D’s lawyers allege that in addition to the online platform infringing upon Harley-Davidson’s ‘Bar & Shield Logo’, ‘Willie G. Skull Logo’, and ‘Number 1 Logo’ trademarks, SunFrog also advertised and promoted the aforementioned trademark-violating products across social media sites.
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In May of 2017, Harley asked for a preliminary injunction which SunFrog opposed. Sun Frog argued that the case had been resolved, that the company had stopped selling the trademark-infringing products, and that it was barring repeat infringers from selling any H-D-image-baring products. According to the US District Court for the Eastern District of Wisconsin, however, the trademark infringing hardly even slowed down, with H-D’s motion pointing out more than 100 different infringing designs available during that same month of 2017, and 93 products still available for purchase the following month.
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Because of this, in mid-April of 2017 District Judge J P Stadtmueller of the Eastern District of Wisconsin issued a judgement in Harley-Davidson’s favor permanently barring SunFrog from selling any more goods that infringed upon H-D's trademarked images. According to the court’s findings, SunFrog had been employing Facebook advertisements bearing the MoCo’s trademarks which, unsurprisingly, garner a lot of attention online generating tens of thousands of reactions (likes, comments, shares, etc). Stadtmueller also pointed out that SunFrog appeared to take its sweet time when it came to taking down products that infringed H-D’s trademarks, reportedly taking between two-to-seven days to flag and remove these products.
“Harley-Davidson’s licensed products business has also been wildly successful, with Harley-Davidson’s royalty revenues from licensing exceeding $400 million during 2005–2016 alone, which translates into billions of dollars of sales of licensed products at retail,” said Stadtmueller.
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The motion for partial summary judgement filed by Harley was accepted, resulting in $19.2M being awarded in statutory damages for willful counterfeiting. From there, a permanent injunction was then entered. The amount awarded for compensatory damages and liability still has yet to be figured out, but it's safe to assume other online retailers probably won't be too quick to use any Harley images anytime soon.
Photos courtesy of Harley-Davidson