H-D USA LLC et al v. SunFrog LLC et al

Filing 33

ORDER signed by Judge J.P. Stadtmueller on 7/31/2017: GRANTING in part and DENYING in part 5 Plaintiffs' Motion for Preliminary Injunction; and GRANTING 15 and 31 Defendant's Motions to Restrict Documents. Defendant SunFrog ENJOINED and RESTRAINED as specified pending final disposition of this action. See Order for further details. (cc: all counsel) (jm)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF WISCONSIN
H-D U.S.A., LLC and HARLEYDAVIDSON MOTOR COMPANY
GROUP, LLC,

v.

Case No. 17-CV-711-JPS

Plaintiffs,

SUNFROG, LLC d/b/a SUNFROG
SHIRTS and JOHN DOES,
Defendants.

ORDER

This is a trademark infringement case brought by Plaintiffs,
collectively referred to as “Harley-Davidson,” against Defendants,
collectively referred to as “SunFrog.” SunFrog runs a website where thirdparty sellers can upload designs and logos onto clothing, hats, mugs, or
other items and sell them. SunFrog handles printing the goods and selling
them, and it takes the majority of the profits from the sales. HarleyDavidson noticed that SunFrog sold many items bearing its trademarks,
including both word-marks and logos, and it filed this lawsuit as a result.
Before the Court is Harley-Davidson’s motion for preliminary injunction.
For the reasons stated below, it will largely be granted.
To obtain a preliminary injunction, a plaintiff must show that (1) it
will suffer irreparable harm in the period before final resolution of its
claims; (2) traditional legal remedies are inadequate; and (3) the claim has
some likelihood of success on the merits. Jones v. Markiewicz-Qualkinbush,
842 F.3d 1053, 1058 (7th Cir. 2016); Girl Scouts of Manitou Council, Inc. v. Girl
Scouts of U.S. of Am., Inc., 549 F.3d 1079, 1086 (7th Cir. 2008). If the court

determines that the plaintiff has failed to demonstrate any one of these three
threshold requirements, it must deny the injunction. Abbott Labs. v. Mead
Johnson & Co., 971 F.2d 6, 11 (7th Cir. 1992).
If the plaintiff makes these preliminary showings, the court then
assesses the balance of harms and where the public interest lies. Jones, 842
F.3d at 1058; ACLU of Ill. v. Alvarez, 679 F.3d 583, 589 (7th Cir. 2012). In so
doing, the court employs a sliding scale approach: “[t]he more likely the
plaintiff is to win, the less heavily need the balance of harms weigh in his
favor; the less likely he is to win, the more need it weigh in his favor.”
Roland Mach. Co. v. Dresser Indus., Inc., 749 F.2d 380, 387 (7th Cir. 1984);
Abbott Labs., 971 F.2d at 12. Overarching this entire analysis, the court must
be mindful that “[a] preliminary injunction is an extraordinary remedy
never awarded as of right.” Winter v. Nat. Res. Def. Council, Inc., 555 U.S. 7,
24 (2008).
SunFrog does not meaningfully challenge Harley-Davidson’s prima
facie showing of a right to a preliminary injunction. Because SunFrog sells
numerous

products

indistinguishable

bearing

from

marks

identical

Harley-Davidson’s

to

registered

or

materially

(and

largely

incontestable) marks, Harley-Davidson has established a likelihood that
consumers, viewing SunFrog’s products in the marketplace, would be
confused as to their source, affiliation, or sponsorship. See Ty, Inc. v. Jones
Grps., Inc., 237 F.3d 891, 897 (7th Cir. 2001) (likelihood-of-confusion factors);
Coach, Inc. v. Treasure Box, Inc., No. 3:11 CV 468, 2013 WL 2402922, at *4
(N.D. Ind. May 31, 2013) (collecting cases holding that in counterfeit cases,
a likelihood of confusion can be presumed). Harley-Davidson thus enjoys a
greater-than-negligible chance of success on its claims, which is all that is

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required to support the issuance of a preliminary injunction. D.U. v.
Rhoades, 825 F.3d 331, 338 (7th Cir. 2016).
Additionally, it is well-settled that courts presume irreparable harm
to the plaintiff where there are violations of the Lanham Act. Promatek
Indus., Ltd. v. Equitrac Corp., 300 F.3d 808, 813 (7th Cir. 2002). Likewise,
injuries to a company’s goodwill or reputation, such as are caused by
trademark infringement, are not susceptible to precise valuation. Thus, a
showing of infringement is generally sufficient to establish that remedies at
law are inadequate. Meridian Mut. Ins. Co. v. Meridian Ins. Grp., Inc., 128 F.3d
1111, 1120 (7th Cir. 1997); Abbott Labs., 971 F.2d at 16.
Finally, the balance of harms tips in Harley-Davidson’s favor.
Harley-Davidson presents a fairly straightforward case of counterfeiting
against an online marketplace. Stopping this conduct will serve both to
protect Harley-Davidson’s interest in its consumer goodwill and vindicate
the public’s interest in avoiding deception as to the source or sponsorship
of the goods they purchase. Promatek, 300 F.3d at 813–14. Thus, HarleyDavidson has demonstrated that a preliminary injunction is warranted in
this case.1

Two weeks after Harley-Davidson’s motion became ripe for decision,
SunFrog filed a separate motion to dismiss the complaint. (Docket #27). In the
motion to dismiss, SunFrog raises two arguments relevant to the disposition of
instant matter, neither of which has any merit.
1

First, SunFrog claims that, as a mere printer of goods bearing HarleyDavidson’s marks, it has not used Harley-Davidson’s marks in commerce as
required to sustain a claim under federal or Wisconsin law. (Docket #28 at 8–9). It
cites no case so holding. Instead, SunFrog cites a single case in which HarleyDavidson chose not to sue a printer of infringing goods and implies that such a
claim must not be available under the Lanham Act. See id. (citing Harley-Davidson,
Inc. v. Selectra Int’l Designs, Ltd., 855 F. Supp. 275, 278 (E.D. Wis. 1994)).

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SunFrog’s response is that Harley-Davidson’s requested relief is
either moot or unavailable to it. In its motion, Harley-Davidson requests an
order from the Court enjoining SunFrog from:
(1) using or displaying Harley-Davidson’s marks on its
website, advertising materials, or products;
(2) using or displaying any uniform resource locator
(“URL”) that directs to a page for an infringing product, to an
image of an infringing product, or that contain a salestracking element related to infringing products, whether or
not any of these URLs themselves contain one of HarleyDavidson’s marks;

The Court does not agree, and its reasoning ties into SunFrog’s second
argument: that it cannot be liable for monetary damages because it is an “innocent
infringer” as provided in 15 U.S.C. § 1114(2)(A). (Docket #28 at 11–13). That section
states:
Where an infringer or violator is engaged solely in the business of
printing the mark or violating matter for others and establishes that
he or she was an innocent infringer or innocent violator, the owner
of the right infringed or person bringing the action under section
1125(a) of this title shall be entitled as against such infringer or
violator only to an injunction against future printing.
15 U.S.C. § 1114(2)(A). As can be seen, this section expressly contemplates that
injunctive relief is available to prevent future printing of infringing goods,
meaning that Congress intended that an infringement action could lie directly
against a printer. Indeed, because this section is a defense to monetary damages
only, the inescapable conclusion is that even an innocent printer of infringing
goods may be liable for infringement and can be enjoined from future
infringement. Nat’l Bus. Forms & Printing, Inc. v. Ford Motor Co., 671 F.3d 526, 536
n.7 (5th Cir. 2012); Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980, 985
(9th Cir. 1999); Barrios v. Am. Thermal Instruments, Inc., 712 F. Supp. 611, 620 (S.D.
Ohio 1988); Gianni Versace SPA v. Awada, Case No. CV 03-3254 GPS(RNBx), 2008
WL 11338774, at *1 (C.D. Cal. Mar. 25, 2008). Thus, without commenting on the
merits of this contention as a defense against monetary damages, the Court finds
that SunFrog’s arguments in its motion to dismiss do not preclude the issuance of
preliminary injunctive relief.

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(3) fulfilling any orders for infringing products,
including after SunFrog has deactivated the page for such a
product in response to a takedown request;
(4) using its marks in SunFrog’s business names,
domain names, URLs, or other identifiers, from suggesting
that SunFrog’s products or services are associated with
Harley-Davidson;
(5) allowing its sellers that have previously sold
infringing products from selling infringing products in the
future; and
(6) assisting any other person or entity in engaging in
any of the above-described proscribed conduct.
See (Docket #7). Harley-Davidson further requests that the Court order
SunFrog to file a report regarding its compliance with the injunction. Id. at
5.
First, SunFrog argues that it has implemented certain procedures to
(1) detect infringing products, images, and other uses of Harley-Davidson’s
marks and remove them, (2) provide Harley-Davidson access to SunFrog’s
database to perform its own searches for infringing uses, and (3) disgorge
to Harley-Davidson any profits derived from sale of infringing products
once identified. See (Docket #16-4) (declaration of SunFrog general counsel
describing steps taken to abate infringement). According to SunFrog, these
procedures moot Harley-Davidson’s requests for injunctive relief (a) to
prohibit any further use or display of the Harley-Davidson trademarks on
SunFrog’s website; (b) to prohibit any further use or display of any images
containing the Harley-Davidson trademarks on SunFrog’s website; (c) to
prohibit SunFrog from selling any items containing the Harley-Davidson
trademarks after they have been removed from the website; and (d) to
prohibit any users previously identified by Harley-Davidson as selling

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infringing designs from further selling infringing designs through the
website. (Docket #16 at 6).
Harley-Davidson disagrees. In its view, while SunFrog’s new
procedures may have abated some ongoing infringement, its request for
complete relief from infringement remains unsatisfied. Harley-Davidson
has submitted evidence that even after SunFrog filed its brief in opposition
to the motion for preliminary injunction (and even as of the day of the
Court’s Rule 16 scheduling conference a month later), most of the infringing
products Harley-Davidson identified initially were still advertised on
SunFrog’s website and available for sale. See (Docket #21, #25). Further,
according to Harley-Davidson, SunFrog still permits known infringing
users to continue to operate and still allows sellers to draw infringing
designs from SunFrog’s database to create new infringing products.
(Docket #21 at 9–13). Thus, Harley-Davidson complains that SunFrog’s
present efforts have fallen well short of satisfying its claims for relief.
The Court concurs and finds that Harley-Davison’s requested relief
is not mooted by SunFrog’s recently implemented procedures. SunFrog
faces a high hurdle to convince the Court that the claims for injunctive relief
are moot. Already, LLC v. Nike, Inc., 568 U.S. 85, 91 (2013). A defendant
claiming voluntary compliance with the plaintiff’s demands “bears the
formidable burden of showing that it is absolutely clear the allegedly
wrongful behavior could not reasonably be expected to recur.” Friends of the
Earth, Inc. v. Laidlaw Envtl. Servs. (TOC), Inc., 528 U.S. 167, 190 (2000); Knox
v. Serv. Employees Int’l Union, Local 1000, 567 U.S. 298, 307 (2012) (“The
voluntary cessation of challenged conduct does not ordinarily render a case
moot because a dismissal for mootness would permit a resumption of the
challenged conduct as soon as the case is dismissed.”). Harley-Davidson’s
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evidence shows that despite SunFrog’s efforts, there remain ongoing acts of
infringement that SunFrog’s enforcement apparatus has not been able to
control. As a result, the Court cannot find that SunFrog’s conduct has
rendered moot Harley-Davidson’s requests for injunctive relief.2
SunFrog’s other argument is that some elements of the proposed
injunction are overbroad. First, as to Harley-Davidson’s requests
concerning URLs, SunFrog asserts that URLs which lead to infringing
products but which do not contain any of Harley-Davidson’s marks do not
cause confusion as to source or sponsorship. See (Docket #16 at 7–10). On
the present record, the Court agrees. On its face, a URL not containing
Harley-Davidson’s marks does not use any such mark in commerce or draw
upon Harley-Davidson’s reputation or goodwill, regardless of where the
URL leads. See 15 U.S.C. § 1127 (a trademark is deemed to be used in
commerce only “when it is used or displayed in the sale or advertising of
services”). Harley-Davidson’s problem is with the destination, not the URL,
and in the absence of authority to the contrary, it cannot challenge the URL
in this instance.3

On July 28, 2017, just prior to the issuance of this decision, SunFrog filed a
status report regarding its continued and intensifying enforcement efforts. (Docket
#32). The matters detailed in the report do not affect the Court’s decision herein.
Nor would it be proper to permit the parties to endlessly re-brief the issue of
mootness as SunFrog’s enforcement efforts evolve.
2

The Court credits SunFrog’s assertion, which Harley-Davidson does not
dispute, that once an infringing image or product is removed from its website, a
URL linking to that page redirects the user to the general category of goods in
which the page was found, not to any other infringing product or image. See
(Docket #16 at 7–8). Thus, once SunFrog removes the underlying infringing
product or image, the URL linking to it becomes benign with respect to HarleyDavidson’s marks.
3

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The result is different, however, with respect to URLs which
incorporate Harley-Davidson’s marks in their post-domain paths.4 SunFrog
argues that such use is not actionable infringement as a matter of law.
(Docket #16 at 7–10). The only Circuit-level authority in this area comes
from the Sixth Circuit’s decision in Interactive Products Corp. v. a2z Mobile
Office Solutions, Inc., 326 F.3d 687, 696–97 (6th Cir. 2003), which held that
unlike a website domain name, which consumers typically view as a
signifier of source, post-domain paths “merely sho[w] how the website’s
data is organized within the host computer’s files.” As such, post-domain
paths generally do not signify source for consumers and, consequently, do
not cause consumer confusion. Id.; see also Patmont Motor Werks, Inc. v.
Gateway Marine, Inc., No. C96–2703, 1997 WL 811770, at *4 n.6 (N.D. Cal.
Dec. 18, 1997).
The Seventh Circuit has not opined on this topic, and there appear
to be no courts that have disagreed with Interactive Products. Nevertheless,

4

As a judge of the Southern District of Florida has explained:

Every “website has a corresponding domain name, which is an
identifier somewhat analogous to a telephone number or street
address.” Interactive Products Corp., 326 F.3d at 691. “Domain names
consist of a second-level domain-simply a term or series of
terms. . .followed by a top-level domain. . . .” Id. (providing
examples of common top-level domains such as “.com”
(commercial), “.edu” (educational), and “.gov” (government)). For
example, in www.diamondbrite.com “diamondbrite” is the
second-level domain, while “.com” is the top-level domain.
Anything after the top-level domain is known as the post-domain
path, for example in www.diamondbrite.com/federalcourts,
“federalcourts” is the post-domain path. See id.
S. Grouts & Mortars, Inc. v. 3M Co., CASE NO. 07-61388-CIV COOKE/BROWN,
2008 WL 11333151, at *3 n.4 (S.D. Fla. Apr. 29, 2008).

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the Court finds this case to be distinguishable. In Interactive Products and
Patmont, the accused infringers only used the marks to identify or comment
upon genuine, not counterfeit, products, and the use of the marks was not
intended to generate confusion as to source.
Here, Harley-Davidson has proffered evidence that SunFrog
encourages its sellers to share links to counterfeit products on social media
websites. One such link (that has since been removed) was, for instance,
“https://www.sunfrog.com/Automotive/HD-Forever.html.” (Docket #21 at
15); (Docket #11 at 6). The purpose of including Harley-Davidson’s marks
in post-domain paths like this one seems to be to persuade the consumer
that if they follow the link, they will find a genuine Harley-Davidson
product. Of course, the goods SunFrog sells are undoubtedly not genuine,
so unlike the defendant in Patmont, SunFrog cannot complain that it needs
to use Harley-Davidson’s marks merely for descriptive purposes. See
Patmont, 1997 WL 811770, at *4. To the contrary, in the Court’s view,
SunFrog’s use of Harley-Davidson’s marks goes beyond the mere internal
organization of its computer files. Id. at 4 n.6.
Using Harley-Davidson’s marks in this way appears closely related
to the use of marks in metatags, the situation faced by the Seventh Circuit
in Promatek, 300 F.3d at 812–13. Put simply, a metatag is a word describing
a webpage that will cause the page to appear in a search for that word. Id.
at 810 n.1. The defendant had used the plaintiff’s mark as a metatag for its
website, and the Court of Appeals found that this generated actionable
initial-interest confusion. Id. at 812–13. The court reasoned that the
defendant improperly benefitted from the goodwill plaintiff had developed
in its mark by using the mark to steer customers to the defendant’s website.
Id. Even if customers ultimately realized that the website they were on was
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not the sponsored by or affiliated with the mark holder, they would be
inclined to stay on the defendant’s website and buy its products out of
convenience. Id. As the Seventh Circuit explained, “[c]onsumers who are
directed to [defendant’s] webpage are likely to learn more about
[defendant] and its products before beginning a new search for [plaintiff]
and [its mark].” Id. at 813.
The same logic applies here, as it appears that consumers would
likely experience initial-interest confusion upon seeing a SunFrog URL
containing Harley-Davidson’s marks, wherever they may be located within
the URL. Those consumers would then be more likely to browse SunFrog’s
offerings regardless of whether they realized that the products were not
genuine Harley-Davidson goods. Thus, the Court is not convinced that
Interactive Products controls the outcome here, and it will not limit the relief
sought based on the location of a mark within a URL.
Finally, SunFrog asserts that some paragraphs in the proposed
injunction are merely admonitions to comply with the law. While SunFrog
is correct that such admonitions are not permitted, EEOC v. Autozone, Inc.,
707 F.3d 824, 841 (7th Cir. 2013), none of Harley-Davidson’s requests fit that
mold. Instead, Harley-Davidson’s proposed order directs SunFrog to stop
doing specific, identifiable things. Injunctions struck down on this ground
typically include provisions enjoining the defendant from “violating any of
[the plaintiff’s] rights in the trademark” or “engaging in unfair competition
with [the plaintiff] through their use of the trademark.” See, e.g., Sterling
Drug, Inc. v. Bayer AG, 14 F.3d 733, 748 & n.10 (2d Cir. 1994); AutoZone, 707
F.3d at 841 (striking injunction that regurgitated the ADA’s accommodation
requirement while inserting the defendant’s name). Injunctions of this sort
require a good deal of guesswork on the defendant’s part to determine what
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not to do—on pain of contempt—which is inconsistent with due-process
principles. Patriot Homes, Inc. v. Forest River Housing, Inc., 512 F.3d 412, 415
(7th Cir. 2008).
The injunction here contains no such open-ended language. Rather,
its provisions connect specified conduct with the use of Harley-Davidson’s
marks. See Fed. R. Civ. P. 65(d)(1) (an injunction must “state its terms
specifically[ ] and. . .describe in reasonable detail. . .the act or acts restrained
or required”). It is, moreover, only a preliminary injunction, reviewable at
any time throughout the life of this case, which the Court has scheduled to
conclude by May 2018. See (Docket #26); E.E.O.C. v. N. Star Hospitality, No.
12–cv–214–BBC, 2014 WL 282026, at *5 (W.D. Wis. Jan. 27, 2014) (approving
time-limited injunction that was “narrowly framed and tied to the
particular unlawful conduct” at issue). SunFrog offers only a perfunctory,
two-paragraph suggestion that the injunction is vague, and the Court does
not share that view. The proposed provisions are sufficiently specific to
survive SunFrog’s challenge.5
Accordingly,
IT IS ORDERED that Plaintiffs’ motion for preliminary injunction
(Docket #5) be and the same is hereby GRANTED IN PART and DENIED
IN PART as stated herein;
IT IS FURTHER ORDERED that Defendant’s motions to restrict
certain exhibits and the July 28, 2017 status report filed in connection with
its opposition to Plaintiffs’ motion (Docket #15, #31) be and the same are
hereby GRANTED; and

Nevertheless, after review of Harley-Davidson’s proposed order, and in
light of the rulings made above, the Court has revised the proposed injunction to
eliminate duplicative or impermissible portions.
5

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IT IS FURTHER ORDERED that Defendant SunFrog, LLC d/b/a
SunFrog Shirts (“SunFrog”) and its employees, agents, partners, officers,
directors,
companies,

owners,

shareholders,

affiliates,

distributors,

principals,
dealers,

subsidiaries,
retailers,

related

wholesalers,

manufacturers, vendors (including without limitation ISPs, printers, and
order fulfillment and shipping vendors), successors, assigns, sellers of
products on any and all websites and social media pages owned, operated,
or controlled by SunFrog (collectively, “SunFrog’s Websites”), and all other
persons in active concert or participation with any of them (collectively,
“Enjoined Parties”), are hereby enjoined and restrained, pending final
disposition of this action:
1.

From making any unauthorized use or display of Harley-

Davidson’s HARLEY-DAVIDSON, HARLEY, H-D, HD, FAT BOY, and
SPORTSTER word marks and Harley Davidson’s Bar & Shield logo, Willie
G. Skull logo, and Number 1 logo trademarks shown below, and any
confusingly similar marks, names, or logos, alone or in connection with
other wording, designs, and/or content and any other trademarks of
Harley-Davidson or confusingly similar marks (collectively, “the H-D
Marks”) in any form, manner, or medium including, but not limited to: (a)
on any products of any type, including without limitation shirts,
sweatshirts, hoodies, leggings and any other apparel, headwear and
footwear products, mugs and other beverage ware products, posters, and
prints; or (b) on any designs to be applied to products, including without
limitation all artwork, transparencies, negatives, dies, tooling, molds,
screens, disks, and other materials; and (c) on any packaging, containers,
tags, labels, product inserts, order documents, shipping documents, and
invoices associated or used with any of the items in subparts (a) and (b)
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above (the items in subparts (a)-(c) are collectively referred to the
“Infringing Products”);
“Bar & Shield Logo”

“Willie G. Skull Logo”

2.

“Number 1 Logo”

From using or displaying in any form or manner any images

or pictures of the Infringing Products including, but not limited to, use and
display in any advertising, marketing, and promotional materials, on
SunFrog’s Websites, on any other online or offline venue used to display,
advertise, market, or promote the Infringing Products;
3.

From fulfilling any orders for any Infringing Products at any

time, including without limitation after SunFrog has “deactivated” an
Infringing Product in response to a takedown complaint submitted by
Harley-Davidson;
4.

From making any unauthorized use or display of the H-D

Marks and any other trademarks of Harley-Davidson or confusingly
similar marks in any form, manner, or medium in any advertising,
promotional, or marketing of the Infringing Products or other products or
services, including on SunFrog’s Websites, on or in any advertisements,
promotional materials, advertising materials, catalogs, brochures, flyers,
coupons, giveaway items, third-party websites, social media sites, store
names, names of sellers on SunFrog’s Websites, and signage;
5.

From using the H-D Marks as or as part of any trademarks,

business names, corporate names, store names, domain names, e-mail

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addresses, URLs, metatags, metadata, screen names, social media names,
keywords, or any other names or identifiers;
6.

From representing by any means whatsoever, directly or

indirectly, that SunFrog or any products or services offered by SunFrog or
the Enjoined Parties, including without limitation the Infringing Products,
or any activities undertaken by SunFrog or the Enjoined Parties, emanate
from Harley-Davidson, or are authorized, connected, licensed, or otherwise
affiliated with or sponsored or endorsed by Harley-Davidson;
7.

From allowing any sellers on SunFrog’s Websites that have

created, advertised, marketed, promoted, offered to sell, or sold Infringing
Products identified in Harley-Davidson’s takedown complaints submitted
to SunFrog prior to the date of this Order to create, advertise, market,
promote, offer to sell, or sell in the future any Infringing Products on
SunFrog’s Websites; and
8.

From assisting, aiding, or abetting any other person or

business entity in engaging in or performing any of the activities referred
to in paragraphs (1)–(7) above.
Dated at Milwaukee, Wisconsin, this 31st day of July, 2017.
BY THE COURT:

__________________
J. P. Stadtmueller
U.S. District Judge

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