Monday, June 20, 2016

Using generic art that may evoke plaintiff is fair

Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc, 2016 WL 3282197, No. 11-5052 (D.S.D. Jun. 10, 2016)

This case has occasionally shown up in my Westclip, but this time I’m writing about it because the court set forth specific designs that the defendants were allowed to use as descriptive fair use.  Previously, the defendants were preliminarily enjoined from using plaintiff SMRI’s STURGIS word mark, STURGIS BIKE WEEK, BLACK HILLS MOTOR CLASSIC STURGIS RALLY & RACES BLACK HILLS S.D., STURGIS MOTORCYCLE RALLY, STURGIS RALLY & RACES, or any colorable imitations (also covering dilution).  They were also enjoined from using “Officially Licensed Sturgis,” “Authentic Sturgis,” “Legendary Sturgis,” “Licensed Sturgis,” “Official Sturgis,” “Sturgis Central,” “Sturgis Motor Classic,” and “Sturgis Rally” in any confusing way, and from using various domain names such as,,,,,, or
I believe this is an example of infringing merchandise
SMRI’s registered and common law trademarks were specifically limited to the motorcycle rally event held annually in Sturgis, South Dakota.  Thus, defendants were allowed to use “the name Sturgis or other phrases which contain the name Sturgis in the distribution, marketing and sale of non-rally-related Sturgis, South Dakota, products.”  Since they were preliminarily enjoined against infringement, the defendants had a heavier burden of showing they’d avoided a colorable imitation or dilution than a non-enjoined party.  (How do you show non-dilution? Also, how on earth is this a famous mark among the general consuming public?)  An adjudicated infringer must keep a safe distance from the protected mark.

The court considered several groups of symbols/art.  First, “Legendary South Dakota” (versus the enjoined “Legendary Sturgis”).  The moving defendants argued that their use now referred to the Wild West.  The court found that Sturgis was prehistorically and historically important enough, as indicated by numerous volumes of history “dedicated to Sturgis and its environs having nothing to do with the Sturgis Rally,” to make Sturgis “legendary” without reference to the Rally.  Thus, SMRI had no right to block non-rally-related “Legendary Sturgis” or “Legendary Sturgis, South Dakota.”

Next: “Sturgis, South Dakota.”  SMRI argued that the defendants shouldn’t be able to remove “Sturgis Motor Classic” and use “Sturgis, South Dakota” on the very same, or nearly identical, designs they previously sold as “rally merchandise,” since SMRI’s rights covered STURGIS on motorcycle rally-related goods.  SMRI also objected to the use of “Sturgis” in a font much larger than “South Dakota.”  SMRI wanted any “Sturgis, South Dakota” product to “add some non-rally related indicia,” because the geographical term, standing alone, wasn’t at a safe distance.  Further, SMRI argued that use of “skulls, stylized eagles, [and] American flags” on rally-related goods now made those symbols off-limits.

The court disagreed. Though SMRI won a jury trial, SMRI’s lawyer “specifically told the jury that plaintiff’s trademark claims were not asserted against the defendants or others ‘using Sturgis fairly to denote their geographic location. That’s a fair use.’ The preliminary injunction was issued with that concession, the limitations of SMRI’s trademark registrations with the United States Patent and Trademark Office, and the jury verdict in mind.”  SMRI’s rights didn’t cover American flags, bald eagles, gothic artwork/fonts, the skull and crossbones, flames, pistols, or any combination thereof.  “Whether some members of the motorcycle community, rally attendees or SMRI may envision these symbols and artwork as signs of the rally, that argument was not the basis of plaintiff’s claims at trial and not the foundation for the jury’s verdict in favor of SMRI.” 

The defendants’ proposed uses were consistent with the language and intent of the preliminary injunction.  The symbols/art didn’t imitate or resemble SMRI’s marks and were a “safe distance” from infringement. [Even though they clearly are concepts that motorcycle-related art uses heavily.  Interesting limit on unfair competition—one might see this as almost the inverse of cases like Belmora.  Having stayed away from plaintiff’s precise mark, the defendant is entitled to use generic terms; no more is required, and if generic terms happen to invoke associations with the mark, that’s too bad for plaintiff.]

Here are some of the okayed designs:

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