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18 April 2018Copyright

We’re firing a warning shot against infringers: Harley-Davidson counsel

Motorcycle manufacturer Harley-Davidson scored its largest-ever trademark win yesterday, obtaining $19.2 million in statutory damages for wilful counterfeiting from t-shirt designer SunFrog.

As Harley-Davidson is no stranger to enforcing its brand, which is valued at $5 billion, WIPR spoke to Linda Heban, chief trademark counsel at Harley-Davidson, to find out more.

The motorcycle company’s strategy is to take on one or two of the biggest players in an industry 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.”

In its brawl with SunFrog, a platform which designs and sells print-on-demand clothing products to consumers, Harley-Davidson also secured an injunction, prohibiting SunFrog from making any Harley-Davidson branded apparel items and from using any Harley-Davidson trademarks.

This leaves only two matters for trial: the amount of compensatory damages to award for any non-counterfeiting acts of infringement, and liability and damages on Harley-Davidson’s claim of copyright infringement.

“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.

Online retailer GearLaunch has also entered the ring with Harley-Davidson 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,” she notes.

Heban’s 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.

Look out for WIPR’s interview with Heban, where she discusses how her team manages Harley-Davidson’s enthusiast riding clubs and how it protects the brand’s 5,000 trademark registrations and applications in over 120 jurisdictions.

To read the interview take a  free two-week trial to WIPR and opt-in to receive the digital edition of the magazine.

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More on this story

Copyright
17 April 2018   Motorcycle manufacturer Harley-Davidson has secured $19.2 million in statutory damages in a trademark clash with t-shirt designer SunFrog, in what is Harley-Davidson’s largest-ever trademark infringement win.
Trademarks
22 December 2017   Motorcycle manufacturer Harley-Davidson has obtained a permanent injunction against a group of counterfeiters allegedly running internet stores to sell fake goods to US consumers.
Trademarks
6 February 2019   Harley-Davidson took unnamed Chinese counterfeiters to court yesterday, as part of the motorcycle manufacturer’s sustained efforts to crack down on fakes.