United States District Court, E.D. Wisconsin
H-D U.S.A., LLC and HARLEY-DAVIDSON MOTOR COMPANY GROUP, LLC, Plaintiffs,
SUNFROG, LLC d/b/a SUNFROG SHIRTS and JOHN DOES, Defendants.
Stadtmueller U.S. District Judge.
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
third-party 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. Harley-Davidson
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.
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.
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).
does not meaningfully challenge Harley-Davidson's
prima facie showing of a right to a preliminary
injunction. Because SunFrog sells numerous products bearing
marks identical to or materially indistinguishable from
Harley-Davidson's registered (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 required to support the
issuance of a preliminary injunction. D.U. v.
Rhoades, 825 F.3d 331, 338 (7th Cir. 2016).
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.
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, Harley-Davidson has demonstrated
that a preliminary injunction is warranted in this
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
(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 sales-tracking element related to infringing
products, whether or not any of these URLs themselves contain
one of Harley-Davidson'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
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 (CD. 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
(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
(5) allowing its sellers that have previously sold infringing
products from selling infringing ...