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15 May 2018Trademarks

Harley-Davidson: No easy ride for fakers

From its humble origins in 1903 in Milwaukee, Harley-Davidson has built its brand into a $5 billion asset. That’s not bad for the duo who used a shed with the words “Harley-Davidson Motor Company” scrawled on the door to build and offer their first bike.

Although William Harley and Arthur Davidson began selling motorcycles, the company has expanded into the world of motorcycle accessories, apparel, toys, and home products. It even has a financial services arm that offers financing and insurance.

There are few brands that have such a devoted and unique following as the motorcycle manufacturer—loyalists around the world form riding clubs and organise meetings with like-minded enthusiasts.

“We’re not the only brand that has enthusiasts, but ours are fairly robust and very active,” explains Linda Heban, trademark counsel for Harley-Davidson.

Managing the brand falls to the trademark team, which is composed of seven people, including two lawyers (one of which is Heban) and two paralegals in the company’s Milwaukee headquarters.

Three others, who are focused on brand protection globally, are the “first line of attack” against infringement problems and counterfeiting.

The seven-strong team tackles civil enforcement, online enforcement, raids, and customs seizures. As Heban says, there are currently over 1,500 open enforcement matters across the globe.

Club rules

Some of the riding clubs, which have been in existence for years, want to create T-shirts featuring the Harley-Davidson trademarks. To manage this issue, Harley-Davidson has created guidelines that it uses to help the trademark team approach the clubs.

Although each scenario needs to be considered on its own facts, there are factors that Harley-Davidson looks at when it finds a new enthusiast group. These include how long the club has been in existence and whether anyone at Harley-Davidson has a personal relationship with group member—“we often ask that person to liaise with the group, rather than have lawyers reach out to them,” says Heban.

The geographic scope and number of members in the club, their activities (including the use of any Harley-Davidson trademarks) and whether there’s a dealer in their location who’s being negatively impacted by the group also play a role in the brand’s approach.

In Europe, where there were previously hundreds of fan clubs, the brand came up with an interesting solution. Instead of going on the offensive, Harley-Davidson created the Federation of Harley-Davidson Clubs Europe, a community of independent clubs that claims to have 40,000 members.

The motorcycle manufacturer attends the federation’s annual meeting and provides it with guidance and education on trademark issues, at the same gaining a vehicle to support its best customers.

Heban explains that there’s always a lot of “me too” people who want to create their own merchandise in connection with big events. In the run up to its 115th anniversary, the company has created a special logo and a collection of ten motorcycles.

“We’ve learned over the years that, if we give people written guidelines about what they can and can’t do in advance of these celebrations, it really helps,” she adds.

Guidelines, which include the rule that other companies can refer to Harley-Davidson in congratulatory statements but can’t imply any kind of relationship with the motorcycle brand, are also explained at training events for trade associations and law enforcement alike.

Protecting Harley-Davidson’s 5,000 trademark registrations and applications in over 120 jurisdictions is no easy task.

Harley-Davidson’s brand team regularly attends motorcycle rallies, such as European Bike Week in Austria and Daytona Bike Week in Daytona Beach, Florida, to enforce the motorcycle company’s trademarks.

This, explains Heban, requires special skills beyond just knowing about the trademarks and the persistence you need in other enforcement contexts.

“It can get a little tense when you’re face to face with those producing fakes,” says Heban, adding that her team must know how to act quickly and maintain their professionalism and discretion. At larger rallies, the brand enlists the expertise of local law enforcement, which can prove very helpful.

The core tenets

Securing legal rulings confirming fame and well-known status for the brand is one of the core tenets of the trademark team’s mission.

Although Harley-Davidson began spearheading this initiative only seven or eight years ago, it’s been remarkably successful.

The brand has obtained a number of rulings in around 15 jurisdictions, all of which “help enormously” in the team’s enforcement work, Heban says.

While the motorcycle company’s settlements are confidential, Heban gives a recent example of a triumph for Harley-Davidson.

Online retailer GearLaunch felt the full force of Harley-Davidson’s reach after being sued in September 2016 for counterfeiting, trademark dilution, cybersquatting, copyright infringement, and unfair competition.

GearLaunch was accused of infringing Harley-Davidson’s ‘Bar & Shield Logo’, ‘Willie G. Skull Logo’, and ‘Number 1 Logo’ trademarks. The motorcycle company achieved a settlement agreement.

“We’ve seen that the problem with the GearLaunch entities has, for the most part, dried up,” notes Heban, but she adds that the brand is currently brawling with online T-shirt businesses.

Harley-Davidson’s strategy is to take on one or two of the biggest players and beat them. These wins can then be used as an enforcement tool to try and stop smaller players in the industry from infringing.

Essentially, says Heban, the brand is firing a warning shot against infringers, saying to them: “We’re serious about trademark enforcement and we’ve sued other providers.

“We’re willing to do that with you if we have to, but understand that we’ve been successful and we think we’ll be successful against you too.”

Another big win occurred just recently in Milwaukee against T-shirt designer SunFrog Shirts. Harley-Davidson accused SunFrog of the widespread online sale of counterfeit merchandise, especially T-shirts.

Many of SunFrog’s infringing products were advertised on Facebook and intentionally targeted towards Harley-Davidson fans.

On April 12, the US District Court for the Eastern District of Wisconsin issued a judgment in Harley-Davidson’s favour, permanently prohibiting SunFrog from making any Harley-Davidson branded apparel items and from using any Harley-Davidson trademarks.

SunFrog was also found liable for wilful counterfeiting and was ordered to pay statutory damages totalling $19.2 million.

“This judgment is not only the largest in Harley-Davidson’s trademark history, but it sends a strong message to counterfeiters that we are serious about protecting our brand,” says Heban.

In addition to the injunction and damages, the court found that “it is beyond question” that the Harley-Davidson trademarks are “famous as a matter of law”.

Harley-Davidson expects these legal rulings to serve as important evidence in future trademark enforcement work.

The brand’s corporate archives department also helps in this regard—it’s been storing company materials and advertising for over a century, helping Harley-Davidson “pull together evidence” to show lengthy usage of different marks.

The good, the bad and the weird

“Like all famous brands, we encounter some real challenges with online entities selling counterfeits,” states Heban. The abundance of counterfeits emanating from China has spurred Harley-Davidson to partner with an outside law firm.

Using the firm’s web crawler, the brand identifies hundreds of online marketplaces selling fake products and files a lawsuit against them.

“If we’re successful—and we have been in every case filed so far—we shut down the marketplaces and seize PayPal accounts and domain names,” Heban explains.

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