It seems some people never learn. At least when it comes to trademark infringement. Urban Outfitters, that hipster-friendly retailer is, again, on the receiving end of yet another lawsuit from Harley-Davidson.
According to the paperwork, which was filed in the U.S. District Court for the Eastern District of Wisconsin, Milwaukee Division, in early January, Urban Outfitters is on the hook for trademark counterfeiting, infringement, dilution, and unfair competition in connection with the company’s “’re-worked’ apparel products” – the same central focus as the 2014 lawsuit.
Harley-Davidson alleges that Urban Outfitters is selling garments, including bodysuits “that are described as the “FPV HARLEY BODYSUIT” (collectively, the “Infringing Bodysuits”). The Infringing Bodysuits violate Harley-Davidson’s trademark rights in two ways. First, some of the Infringing Bodysuits are made from genuine Harley-Davidson products that Defendants have altered and reconstructed into new products that bear the Harley-Davidson trademarks."
The company continues, "Second, some of the Infringing Bodysuits appear to not be genuine Harley-Davidson products and do not bear any of the Harley-Davidson trademarks, but Defendants have sold these products with tags, labels, receipts, and/or packaging that bear the HARLEY mark and falsely suggest that the Infringing Bodysuits are genuine Harley-Davidson products.”
[Note: In addition to federal trademark protections for its full name and various logos, Harley-Davidson has several federally registered trademarks that extent to the word, “Harley,” on its own].
In addition to bodysuits, there are the many t-shirts from Urban Outfitters’s URBAN RENEWAL collection, which are “made by altering and reconstructing genuine Harley-Davidson products into new products by cutting through or mutilating Harley-Davidson’s trademarks, cutting off the sleeves, shredding the bottom of the shirts, cutting open the side seams of the shirts, cutting the necklines, and/or removing Harley- Davidson hangtags, neck tags, and/or labels and replacing them with Urban Outfitters’s own URBAN RENEWAL labels.”
The popular motorcycle company goes on to note that Urban Outfitters’ stocking of the garments at issue is in direct violation of the settlement terms associated with their 2014 lawsuit, in which Urban Outfitters “agreed that it would not knowingly make, promote, sell, or distribute Harley-Davidson apparel products that have been ‘altered or reconstructed.”
Harley-Davidson – which according to its complaint “has been ranked annually for the past decade among the top 100 most valuable brands in the world by Interbrand, a leading independent branding firm” – further notes that while it “has numerous licensees in the U.S. that are authorized to sell a wide range of merchandise, including licensees specifically for apparel products,” Urban Outfitters is not one of them.
Finally, Harley alleges that Urban Outfitters “uses and has used the Harley-Davidson trademark in a variety of unauthorized ways that falsely suggest and are likely to create the mistaken impression that Urban Outfitters’s products come from or are authorized, approved, and/or licensed by Harley-Davidson when they are not. Urban Outfitters has manufactured, advertised, promoted, and/or sold a number of products bearing the Harley-Davidson trademarks or counterfeits and/or infringements thereof, despite Harley-Davidson’s repeated objections to Urban Outfitters’s unauthorized use of Harley-Davidson’s trademarks.”
As a result of the aforementioned, Harley-Davidson is seeking an injunction that preliminarily and permanently prevents Urban Outfitters from selling products bearing any of Harley-Davidson’s trademarks. The motorcycle co. also, of course, wants monetary damages, including “an order requiring Defendants to account for and pay to Harley-Davidson any and all profits arising from the foregoing acts of infringement, dilution, false designation of origin, unfair competition, and an increasing of such profits for payment to Harley-Davidson.”
* The case is H-D USA, LLC and Harley-Davidson Motor Company Group, LLc v. URBAN OUTFITTERS, INC. and FREE PEOPLE LLC, 2:17-cv-00030-JPS.