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 an online marketplace
where third-party sellers can upload designs and logos onto
clothing, hats, mugs, or other items and sell them. SunFrog
prints and ships the purchased items. Some of those items
bore Harley-Davidson logos and word trademarks, and
Plaintiffs filed this lawsuit as a result. Before the Court
is SunFrog's motion to dismiss the complaint for failure
to state a claim upon which relief may be granted. (Docket
#27). For the reasons stated below, it will be denied.
Rule of Civil Procedure 12(b) provides for dismissal of
complaints which fail to state a viable claim for relief.
Fed.R.Civ.P. 12(b)(6). To state a claim, a complaint must
provide “a short and plain statement of the claim
showing that the pleader is entitled to relief.”
Fed.R.Civ.P. 8(a)(2). In other words, the complaint must give
“fair notice of what the. . .claim is and the grounds
upon which it rests.” Bell Atl. Corp. v.
Twombly, 550 U.S. 544, 555 (2007). The allegations must
“plausibly suggest that the plaintiff has a right to
relief, raising that possibility above a speculative
level[.]” Kubiak v. City of Chicago, 810 F.3d
476, 480 (7th Cir. 2016) (citation omitted). In reviewing the
complaint, the Court is required to “accept as true all
of the well-pleaded facts in the complaint and draw all
reasonable inferences in favor of the plaintiff.”
Id. at 480-81.
facts as pleaded can be briefly summarized. Harley-Davidson
is, of course, a world-famous motorcycle manufacturer, and
its word trademarks and logos are well known. Harley-Davidson
prints those logos and marks on merchandise it sells
alongside its automotive products. Those logos and word marks
have appeared on goods sold on SunFrog's website,
including clothing and other items. These are counterfeits,
as none of them is sponsored by or affiliated with
of SunFrog's website create and sell these counterfeit
goods either by uploading their own designs featuring
Harley-Davidson's marks and logos onto blank versions of
the goods in question (supplied by SunFrog), or by selecting
an infringing design created by another user which is stored
in the SunFrog art database. SunFrog users are largely
anonymous, as they are identified on the website only by
self-made account names or numerical codes that do not reveal
the user's identity. Once a buyer actually purchases one
of the user's infringing designs, SunFrog prints the item
using an automated printer and then ships it. SunFrog also
keeps the majority of the profit from the sales.
advertises these products on the Internet and through social
media outlets. Further, it encourages users to track sales
using its sales-tracking tools and to advertise their goods
on social media. SunFrog persists in promoting and selling
these goods despite receiving numerous takedown requests and
other notifications from Harley-Davidson that infringement is
occurring. Indeed, “[f]rom at least as early as October
2016 to the present, H-D has submitted more than 70
complaints to SunFrog that: (a) notified SunFrog of H-D's
rights in the H-D Marks, and (b) reported and objected to
more than 800 Infringing Products that have been advertised,
promoted, offered, and/or sold on SunFrog's Website in
violation of H-D's rights.” (Docket #1 ¶ 68).
Moreover, even when SunFrog would try to control infringement
by users, its attempts were halfhearted: it would take a long
time for infringing designs to be taken down in response to
requests for the same, those same designs would crop up again
soon after because there was no system in place to curb
infringement at the design stage, and repeat infringers would
pop up again and again with few or no repercussions.
claims that “SunFrog is thus not a passive participant
in the business conducted by sellers on and through
SunFrog's Website.” Id. ¶ 64.
According to Harley-Davidson, “[t]his is not a
situation where SunFrog's only role is to provide sellers
with access to an online marketplace to sell their products
and everything is done by the sellers. Rather, SunFrog is an
active partner of the sellers and directly involved in the
sellers' business in many ways, all for SunFrog's
financial gain[.]” Id.
complaint recites claims for: (1) trademark counterfeiting
under 15 U.S.C. § 1114(1); (2) trademark infringement
under 15 U.S.C. § 1114(1); (3) trademark infringement,
false designation of origin, and unfair competition under 15
U.S.C. § 1125(a)(1)(A); (4) trademark dilution under 15
U.S.C. § 1125(c); (5) copyright infringement under 17
U.S.C. § 101 et seq.; (6) trademark
infringement under Wis.Stat. § 132 et seq.; and
(7) common law trademark infringement, unfair competition,
and misappropriation. See (Docket #1 at 38-45).
does not contest that its users' conduct constitutes
infringement of Harley-Davidson's intellectual property
rights. Rather, its motion focuses on why it should not be
responsible for this rampant infringement. First, says
SunFrog, it does not itself create infringing designs.
(Docket #28 at 6). Second, it cannot be expected to review
the millions of designs presently on its website and the
thousands more added each day. Id. Third, it has
made efforts to curb infringement, including requiring users
to check a box stating that they are not violating the
intellectual property rights of others when they submit a
design. Id. SunFrog claims that it will terminate
users who renege on this promise. Id. Further,
SunFrog claims that in light of its explosive growth and the
concerns over potential infringement, it is all the time
developing and refining tools that can be used to search its
database for infringing goods and remove them, including
responding to takedown notices, permitting rights holders
like Harley-Davidson to directly search its design databases
to identify problematic offerings, and diverting profits from
infringing goods to the rights holders. Id. at 6-7.
raises four grounds for dismissal, none of which has merit.
First, it claims that Harley-Davidson has not alleged facts
that plausibly support their seven claims for relief.
Id. at 7-8. The problem with the argument, however,
is that SunFrog does no more than state this conclusion.
See Id. SunFrog cites a host of cases about the
plausibility pleading regime and its application in
intellectual property cases, but omits the critical link
between those legal principles and any of the facts alleged
in the complaint. Why does SunFrog think that
Harley-Davidson's complaint-which is lengthy, detailed,
and specific-is so conclusory as to be worthy of dismissal?
It does not say. To the extent that SunFrog believes that the
burden here shifted to Harley-Davidson once it invoked the
word “plausibility, ” see (Docket #37 at
4), it is mistaken, Yeksigian v. Nappi, 900 F.2d
101, 104 (7th Cir. 1990); Kehr Packages, Inc. v.
Fidelcor, Inc., 926 F.2d 1406, 1409 (3d Cir. 1991). The
Court is not required to develop SunFrog's arguments on
its behalf, and so the point need not be addressed further.
See Hardrick v. City of Bolingbrook, 522 F.3d 758,
762 (7th Cir. 2008); Spath v. Hayes Wheels
Int'l-Ind., Inc., 211 F.3d 392, 397 (7th Cir. 2000)
(“[I]t is not this court's responsibility to
research and construct the parties' arguments.”)
SunFrog contends that, as a mere printer of goods bearing
Harley-Davidson's marks, it has not used the marks in
commerce as required to sustain a claim under federal or
Wisconsin trademark law. Id. at 8-9. As the Court
observed in its ruling on Harley-Davidson's motion for
preliminary injunction, SunFrog cites no case that colorably
supports its position. H-D U.S.A., LLC v. SunFrog,
LLC, Case No. 17-CV-711-JPS, 2017 WL 3261709, at *2 n.1
(E.D. Wis. July 31, 2017). Instead, SunFrog directs the Court
to one 20-year-old case in which Harley-Davidson chose not to
sue a printer of infringing goods and implies that such a