UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF WISCONSIN

MILWAUKEE DIVISION
H-D U.S.A., LLC,
Case No.

Plaintiff,
vs.
ROBERT G. WRIGHT D/B/A
LITTLE BOBBY CREATIONS
Defendant.

COMPLAINT

Plaintiff H-D U.S.A., LLC (Harley-Davidson), by its undersigned attorneys, alleges as

follows, upon actual knowledge with respect to itself and its own acts, and upon information and
belief as to all other matters:
NATURE OF THE ACTION
1.

This is a civil action for trademark infringement, trademark dilution, false

advertising, and unfair competition arising under the Lanham Act, 15 U.S.C. 1051, et seq. and
Wisconsin statutory and common law. Harley-Davidson seeks equitable and monetary relief
from Robert Wright d/b/a Little Bobby Creations (Defendant) willful violations of HarleyDavidsons trademark rights in its famous and federally registered marks HARLEYDAVIDSON, H-D, and the Bar & Shield Logo (the Harley-Davidson Marks).
2.

Despite being placed on express notice of Harley-Davidsons trademark rights

and its objections to Defendants actions that are the subject of this Complaint, Defendant has
continued to promote and sell lampshades bearing the famous Harley-Davidson Marks (the
Infringing Products). Defendants Infringing Products are made from genuine, licensed
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Harley-Davidson bedding and other products that have been reconstructed and materially
altered into completely different products having different functions and purposes, i.e.,
lampshades. The public is likely to believe that the Infringing Products come from or are
authorized, approved, and/or licensed by Harley-Davidson. Defendants unauthorized Infringing
Products also circumvent Harley-Davidsons ability to control the quality of products branded
with the Harley-Davidson Marks.
3.

Defendants unlawful activities are also likely to dilute and tarnish the famous

Harley-Davidson Marks, constitute false advertising and unfair competition, and have caused
and will continue to cause irreparable harm to Harley-Davidson, the Harley-Davidson Marks,
and the consuming public.
THE PARTIES
4.

Plaintiff H-D U.S.A., LLC is a Wisconsin limited liability company having a

principal place of business at 3700 West Juneau Avenue, Milwaukee, Wisconsin 53208, and is
the owner of the trademark rights asserted in this action, i.e., the Harley-Davidson Marks.
5.

Defendant Robert Wright is an individual residing at 610 W. Joliet Street, Crown

Point, Indiana 46307 and doing business as Little Bobby Creations and littlebobbycreations.com.
Defendant advertises, promotes, sells, and distributes numerous lampshades bearing the HarleyDavidson Marks. Defendant is not an authorized Harley-Davidson dealer or a licensee of any of
the Harley-Davidson Marks.
JURISDICTION AND VENUE
6.

This Court has jurisdiction over the subject matter of this action pursuant to 15

U.S.C. 1121, and 28 U.S.C. 1331 and 1338(a) and (b). Because the parties are citizens of
different states and the matter in controversy exceeds the sum or value of seventy-five thousand

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dollars ($75,000.00), exclusive of interest and costs, this Court also has jurisdiction under 28
U.S.C. 1332. Jurisdiction over the state law claims is also appropriate under 28 U.S.C.
1367(a) and principles of pendent jurisdiction because those claims are substantially related to
the federal claims.
7.

This Court has personal jurisdiction over Defendant and venue is proper in the

Eastern District of Wisconsin pursuant to 28 U.S.C. 1391(b) and (c). Harley-Davidson is

located in and being harmed in this District, a substantial portion of the activity about which
Harley-Davidson complains has taken place in this District, and the damages suffered by HarleyDavidson were suffered, at least in part, in this District. Further, Defendant has purposefully
availed himself of the privilege of acting in this District by, among other things, advertising and
promoting its Infringing Products to customers in this District via a website that is accessible to
users in this District, providing a highly interactive website with its Infringing Products through
which customers in this District can purchase Defendants Infringing Products, and which sells
the Infringing Products and other products targeted to consumers in this District. Venue is also
proper because Defendant is subject to personal jurisdiction in this District.
HARLEY-DAVIDSON, ITS PRODUCTS AND SERVICES,
AND ITS FAMOUS TRADEMARKS
8.

Harley-Davidson is a world-famous manufacturer of motorcycles and a wide

variety of other products and services.

9.

Founded in 1903, Harley-Davidson has manufactured, promoted, and sold

motorcycles and related products for over 110 years.

10.

Since at least as early as 1903, Harley-Davidson has used and promoted the

HARLEY-DAVIDSON name and trademark in connection with motorcycles and motorcycle

parts and accessories.

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11.

Since at least as early as 1912, Harley-Davidson has used the H-D trademark and

variations thereof in connection with its motorcycles and motorcycle parts and accessories (the
H-D Mark). Harley-Davidson and its dealers and licensees, motorcycle enthusiasts, the media,
and the general public have for many decades regarded the H-D Mark as being synonymous and
interchangeable with the HARLEY-DAVIDSON mark, and motorcycle enthusiasts, the media,
and the general public have used H-D and HARLEY-DAVIDSON interchangeably to refer to
Harley-Davidson and its products for decades.
12.

Since at least as early as 1910, Harley-Davidson has used its Bar & Shield logo.

Over the years, Harley-Davidson has used its Bar & Shield logo and variations thereof, including
but not limited to, those shown below (collectively, the Bar & Shield Logo), for motorcycles
and motorcycle products and services.

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13.

Over the years, Harley-Davidson has expanded its business to a wide range of

other products and services, including but not limited to apparel, bedding, signs, collectibles,
home furnishings, housewares, and more. The Harley-Davidson Marks have been used on a
wide variety of products for decades.
14.

The Harley-Davidson Marks are famous and premium brands and Harley-

Davidson has a reputation for providing a wide variety of high-quality products and merchandise
under those brands itself and through numerous licensees. Given its substantial commercial
success over the years and its status for many years as a famous, iconic, and cult brand, there has
long been a strong demand from motorcycle enthusiasts as well as the general public for
merchandise bearing the Harley-Davidson Marks, including home furnishings, so they can show
their affinity for Harley-Davidson and its products and brands. To satisfy this demand and to
further build awareness of the Harley-Davidson Marks, Harley-Davidson has for decades
licensed the Harley-Davidson Marks (and other of its trademarks) to numerous licensees for use
on a wide range of products including home furnishings, bedding, and apparel, just to name a few.
15.

To ensure and maintain the premium and high-quality reputation of licensed

merchandise sold under the Harley-Davidson Marks, Harley-Davidson requires its licensees to
comply with its extensive and stringent quality-control standards. These quality standards include,
among other things: (1) the licensee must first submit product concepts and artwork for HarleyDavidsons prior written approval, (2) once the concept and artwork is approved, the licensee must
then submit a pre-production product sample for Harley-Davidsons prior written approval, and (3)
once the pre-production product sample is approved, the licensee must then submit a production
sample of the product (i.e., the product that will be sold in the public) for Harley-Davidsons prior
written approval. A licensee cannot promote or advertise any licensed products without

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completing all of these steps. As part of this quality-control review process, Harley-Davidson
carefully reviews the licensed products in numerous respects, including the materials used in
making the licensed products, the quality of the craftsmanship and construction of the products, the
design, style, and appearance of the product, and the overall quality of the products.
16.

Harley-Davidson has achieved significant commercial success with its licensed

merchandise over the years. The vast majority, if not all, of Harley-Davidsons licensed products
and/or associated labeling and packaging bear one or more of the Harley-Davidson Marks.
Harley-Davidsons royalty revenues from licensing exceeded $400 million during 2005-2013
alone, which translates into billions of dollars of sales at retail.
17.

Harley-Davidson markets and sells its motorcycles, motorcycle parts and

accessories, and licensed merchandise, including home furnishings, under the Harley-Davidson
Marks through a network of more than 695 authorized dealers located throughout the country,
and numerous other retail outlets. These other retail outlets consist of Alternative Retail Outlets
(AROs) and Seasonal Retail Outlets (SROs).
18.

AROs are located primarily in high-traffic locations such as malls, airports, or

popular vacation destinations and focus on selling Harley-Davidsons general merchandise as well
as licensed products. SROs are located in similar high-traffic areas, but operate on a seasonal basis
out of temporary locations such as vendor kiosks. AROs and SROs are not authorized to sell new
motorcycles. This right is reserved for authorized Harley-Davidson dealers.
19.

Harley-Davidsons licensed merchandise, including home furnishings, are also

sold through the HARLEY-DAVIDSON.COM website, authorized dealers websites, and/or the
websites of Harley-Davidsons licensees.

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20.

Harley-Davidson and its dealers and licensees have sold many billions of dollars

of products and services under the Harley-Davidson Marks over the years, and have expended
many millions of dollars advertising and promoting those marks through virtually every media.
For example, Harley-Davidson has promoted its products and marks through dealer promotions,
customer events, direct mailings, national television, print, and radio advertisements, and the
Internet.
21.

Harley-Davidson, its products and services, and its Harley-Davidson Marks have

received significant unsolicited media coverage for many years, including, for example, in
national publications such as Business Week, The Chicago Tribune, The New York Times, The
Wall Street Journal, The Washington Post, and USA Today, as well as in numerous national
television programs and online publications and websites, such as MSNBC, CNN Money,
CNN.COM, and Yahoo Finance.
22.

As a result of Harley-Davidsons significant promotional efforts, commercial

success, and popularity, the HARLEY-DAVIDSON brand 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. In 2014, Interbrand estimated the value of the HARLEYDAVIDSON brand at US $4.77 billion.
23.

Based on Harley-Davidsons longstanding and extensive use of the Harley-

Davidson Marks, and the widespread advertising, publicity, promotion, and substantial sales of
products and services under those marks, the Harley-Davidson Marks have been well known and
famous to both the general public and the motorcycling public for many years.
24.

In H-D Michigan LLC v. Bryan C. Broehm, Opposition No. 91177156, the

Trademark Trial and Appeal Board of the United States Patent and Trademark Office (Board)

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expressly held that the HARLEY-DAVIDSON, HARLEY, and Bar & Shield Logo marks were
famous for motorcycles, apparel, and accessories. 2009 WL 1227921, at *5 (TTAB 2009).
25.

The Boards reviewing court, the Federal Circuit, has also recognized HARLEY-

DAVIDSON as a well-known and famous mark. See Ronda Ag v. Harley-Davidson, Inc., 1997
U.S. App. LEXIS 3597, *3-4 (Fed. Cir. Feb. 27, 1997).
26.

Since as early as 2006, Harley-Davidson has used the Harley-Davidson Marks on

and/or in connection with the advertising and sales of bedding and window covering products.
Over the years, these goods have included sheets, pillow cases, pillow shams, pillows, bed skirts,
comforters, blankets, duvets, throws, pillows, and linens, as well as window coverings such as
drapes, and window valances. Representative examples of these products are shown below.
Harley-Davidson Tattoo
Full Sheet Set

Harley-Davidson Flame Rider

Fireball Drapes

Harley-Davidson Fireball
Decorative Pillow

Harley-Davidson Flame
Rider Fireball Pillow Shams

Harley-Davidson
Tattoo Valance

Harley-Davidson
Tattoo Full Bed skirt

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27.

H-D has sold home furnishings under the Harley-Davidson Marks since as early as

the 1980s and table lamps since as early as 1986. Over the years, Harley-Davidson has used the
Harley-Davidson Marks on and/or in connection with table lamps, desk lamps, billiard lamps,
neon signs, decorative wall plaques and mirrors, posters, glassware, barware, barstools,
jukeboxes, tables, chairs, benches, wall clocks, beverage carts, mini refrigerators, gas grills,
vaults and safes, and other goods. Representative examples of some of these products are shown
below.
Harley-Davidson Art
Glass Long B&S 14"
Tiffany Style Hand
Painted Table Lamp

Harley-Davidson Neon
Wall & Table Orange
Lamp

Harley-Davidson
Chrome Bar & Shield
Black Clip Lamp

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Harley-Davidson
Animated Novelty Lamp

Harley-Davidson
Art Glass Motorcycle
Table Lamp

Harley-Davidson
Rotating Pub Light

Harley-Davidson Art
Glass Table Lamp

Harley-Davidson
Midnight Chrome Billiard Lamp

Harley-Davidson Tiffany-Style Pendant Lamp

Barrel End Wooden Sign

Mirrored Bar & Shield

Wall Clock

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H-D B&S Flames Storage

Bench w/ Vintage Black Finish

H-D Bar & Shield

Cafe Table

H-D Bar & Shield Bar

Stool w/ Back Rest

HARLEY-DAVIDSONS TRADEMARK REGISTRATIONS

FOR THE HARLEY-DAVIDSON MARKS
28.

In addition to its longstanding and strong common-law rights in the HARLEY-

DAVIDSON mark, Harley-Davidson owns, among others, the following federal registrations for
that mark:
Mark

Reg. No.
Reg. Date

Goods and Services

HARLEY-DAVIDSON

0508160
04-05-1949

Electric lamps and spare parts for same, electric signs, among other
goods.

HARLEY-DAVIDSON

3690031
09-29-2009

Non-luminous, non-mechanical tin signs, non-luminous, nonmechanical metal signs, tool boxes of metal, tool chests of metal,
metal keys for locks, key rings of metal, knife handles of metal, metal
pet tags, metal luggage tags and metal personal identification tabs

HARLEY-DAVIDSON

0508160
04-05-1949

Electric lamps and spare parts for same, spark plugs, electric signs

HARLEY-DAVIDSON

1708418
08-18-1992

Pool and billiard cues and cases therefor

HARLEY-DAVIDSON

1610377
08-21-1990

Locks and key fobs

HARLEY-DAVIDSON

1610396
08-21-1990

Sport and folding knives and knife cases

HARLEY-DAVIDSON

1450348
08-04-1987

Mirrors, mugs, drinking glasses, coasters, decanters, cups, plastic

mugs, towels, bed spreads, clocks, among other goods

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Mark

Reg. No.
Reg. Date

HARLEY-DAVIDSON

0539805
03-27-1951

Knives, screw drivers, wrenches

HARLEY-DAVIDSON

0526750
06-27-1950

Motorcycles and structural parts thereof, accessories-namely,

intermediate stands, seats, foot rests and extensions, windshields,
fender tips, exhaust stacks, grips, name plates, saddle covers, luggage
carriers, foot pedal pads, tandem seats, foot rests, rear view mirrors

HARLEY-DAVIDSON

1078871
12-06-1977

Vehicles-namely, motorcycles

HARLEY-DAVIDSON

1311457
12-25-1984

Retail store services in the field of motorcycles, repair and servicing of

motorcycles.

HARLEY-DAVIDSON

3490890
08-26-2008

House mark for a line of motorcycles, structural parts for motorcycles

and related motorcycle accessories, namely, seats, backrests,
decorative fuel tank panels, transmission gears, fuel tanks, wheel
sprockets, gear shifts, clutches, battery covers and straps, front rear,
and intermediate kickstands, hub caps, shift knobs, foot rests and
extensions, windshields, leg shields, fender tips, brake pedals,
handlebar grips, safety guards, namely, bars for attachment to
motorcycles, steering dampers, shock absorbers, spare wheels, spare
wheel carriers, boot guards, namely, mud flaps and fenders, saddle
covers, luggage carriers, license plate frames, handlebar cross bars,
foot pedal pads, tank and fender pads, rearview, fenders and skirts, and
wheel balance weights

29.

Goods and Services

In addition to its longstanding and strong common-law rights in the Bar & Shield

Logo, Harley-Davidson owns, among others, the following federal registrations for that mark:
Mark

Reg. No.
Reg. Date
3640579
06-16-2009

1660539
10-15-1991

Goods and Services

Non-luminous, non-mechanical tin signs, non-luminous, nonmechanical metal signs, tool boxes of metal, tool chests of metal,
metal keys for locks, key rings of metal, knife handles of metal,
metal pet tags, metal luggage tags and metal personal
identification tags
Knives; namely, buck knives, sporting and hunting knives,
folding pocket knives, knife cases therefor, and tool kits
comprising wrenches and pliers; books about motorcycles,
calendars, decals, pens, photo albums, posters, holders for cans in
the nature of a rubber cylinder, duffle bags, garment bags,
suitcases, wall mirrors and wall plaques, drinking glasses, mugs,
and can holders in the nature of an insulated rubber cylinder,
towels, among other goods

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Mark

Reg. No.
Reg. Date
3082869
04-18-2006

Goods and Services

Watches, clocks and ornamental pins

1725918
10-20-1992

Pool and billiard cues and cases therefor, among other goods.

1263936
01-17-1984

Electric Lamps, decorative wall plaques and mirrors, mugs and

insulated drinking steins, towels, among other goods

3058720
02-14-2006

3559365
01-13-2009

Retail store services and distributorships in the fields of

motorcycles, motorcycle parts and accessories, footwear,
clothing, jewelry, and leather goods; rendering technical
assistance in the establishment, operation, and business
promotion of retail stores; retail store services in the fields of
motorcycles, motorcycle parts and accessories, footwear,
clothing, jewelry, and leather goods therefor via a global
computer network; dealerships in the fields of motorcycles,
motorcycle parts and accessories, footwear, clothing, jewelry, and
leather goods
House mark for a line of motorcycles and various motorcycle
parts

2344680
04-25-2000

Rings, watches, jewelry pins, stickers resembling tattoos, cooling

sleeves for beverage cans, bandanas, vests, embroidered patches

1692178
06-09-1992

Jewelry pins

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Mark

Reg. No.
Reg. Date
1224868
11-02-1982

Goods and Services

Decorative Items for Motorcycles-Namely, Medallions; Fitted
Motorcycle Covers; Key Ring Fobs, General Purpose Decals,
Decorative Items for Motorcycles-Namely, Decals, and Metallic
Foil Decals; Drinking Cups and Mugs; Clothing-Namely, Jackets,
T-Shirts, Tank Tops, Sweat Shirts, Bandanas, Hats, Caps, Boots;
Stick, Lapel, and Hat Pins, All of Nonprecious Metals, and
Decorative Cloth Patches; Cigarette Lighters

As shown above, Harley-Davidsons rights in its Bar & Shield Logo extend to the marks design,
regardless of the wording contained within the design.
30.

In addition to its longstanding and strong common-law rights in the H-D Mark,

Harley-Davidson owns, among others, the following federal registrations for the H-D Mark:
Mark

Reg. No.
Reg. Date

Goods and Services

H-D

1317592

Motorcycle Parts, Made of Metal-Namely, Dowel Pins, Cotter

Pins, Clamps, Nuts, Bolts, Screws, Brackets, Studs, Spacers,
Washers, Studs, Lock Washers, Retainers, Springs, Mounting
Plates, and Bushings; Motorcycle Electrical Parts-Namely,
Spark Plugs: Ignition Wires, Breaker Points, and Ignition
Switches, Carburetors; Motorcycle Speedometers,
Thermometers, Thermostats, Motorcycle Electrical PartsNamely, Electrical Wire Terminals, Battery and Grounding
Cables, Lenses, Magnets, Armatures, Circuit Breakers,
Switches, Turn Signals and Indicators, Connectors, Voltage
Regulators, Ignition System Pin Plugs, Socket Terminal Pins,
Single Socket Pins, Ignition System Clamps, and Grounding
Straps, and Motorcycle Parts-Namely, Reflectors and Stoplight
Switches Thereto, Solenoid Switches; Motorcycle PartsNamely, Starter Motor Brushes, and Tappets, Rods, Rocker
Arms, Push Rod Cogers, Coil Covers, Valve Spring Retainers
and Collars, Crank Pin Rollers, Lock Rings, Bearings,
Flywheel Crank Pins, Gear Shaft Lock Plates, Bearing Rollers
and Bearing Retainers, Crank Case Plugs, Oil Plugs, Oil Pump
Plugs, Engine Bearing Shims, Cams, Cam Followers, Brake
Control Levers, Brake Calipers, Starter Pins and Roll Pins,
Crank Pins, Shift Lever Pivot Pin Plugs, Engine Instrument
Plugs, Axle Caps, Oil Filler Caps, Gas Filler Caps,
Transmission Gears, Pumps, Wheel Weights, Shift Levers,
Chain Housings, Pawls for Gear Shifters, Clutch Hubs, Clutch

02-05-1985

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Mark

Reg. No.
Reg. Date

Goods and Services

Drive Plates, Adjusting Nuts, Wheelbearings, Starter Gear
Shift Levers, Transmission Shift Levers, Shifter Levers, Choke
Levers, Chain Links, Brake Discs, Brake Pads, Brake Calipers,
Brake Master Cylinders, Hydraulic Fluid Line Connectors,
Brake Pedals, Axle Caps, Foot Rests, Stands, Handle Bar
Grips, Clutch Cables, Throttle Cables, Mirrors, Oil and Air
Filters, Seat Grab Straps, Mud Flaps, Highway Pegs, Air
Cleaners, Body Trim

H-D

1239313

Motorcycles

05-24-1983
31.

The federal trademark registrations listed in paragraphs 28 to 30 above are prima

facie evidence of Harley-Davidsons ownership and the validity of the Harley-Davidson Marks.
Further, many of these registrations are incontestable, and such registrations constitute
conclusive evidence of Harley-Davidsons exclusive right to use those marks for the products
and services specified in those registrations pursuant to 15 U.S.C. 1065 and 1115(b).
32.

In addition, Harley-Davidson owns the following Wisconsin state trademark

registrations for its HARLEY-DAVIDSON, H-D, and Bar & Shield marks:
Mark

Reg. Date

Goods and Services

HD

11-18-2009

Motorcycles, motorcycle parts, jewelry, clothing, caps

and headwear, leather goods, decals and stickers,
patches, belt buckles and signs

HARLEY-DAVIDSON

11-18-2009

Motorcycles, motorcycle parts, jewelry, clothing,

caps/headwear, leather goods, decals/stickers, patches,
belt buckles, and signs.

11-18-2009

Motorcycles, motorcycle parts, jewelry, clothing,

caps/headwear, leather goods, decals/stickers, patches,
belt buckles, and signs.

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Mark

Reg. Date
11-18-2009

Goods and Services

Motorcycles, motorcycle parts, jewelry, clothing,
caps/headwear, leather goods, decals/stickers, patches,
belt buckles, and signs.

DEFENDANTS WRONGFUL ACTS

33.

Defendant uses and has used the Harley-Davidson Marks in a variety of

unauthorized ways on and in connection with the Infringing Products that falsely suggest and are
likely to create the mistaken impression that Defendants reconstructed and materially altered
products are authorized, approved, and/or licensed by Harley-Davidson when they are not.
34.

Defendant has taken genuine licensed Harley-Davidson products bearing the

Harley-Davidson Marks and materially altered and reconstructed those products to create
completely new and different products having different functions and purposes. Specifically,
Defendant has materially altered and reconstructed genuine Harley-Davidson bedding products and
other genuine Harley-Davidson products and cut and sewed these products to create new products
in the form of lampshades. Representative examples of the Infringing Products sold on
Defendants website www.littlebobbycreations.com are shown below.

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35.

Below is a screenshot from Defendants website with a group display of the

individual Infringing Products shown above.

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HARLEY-DAVIDSONS OBJECTIONS TO
DEFENDANTS WRONGFUL ACTS
36.

When Harley-Davidson initially contacted Defendant and objected to Defendants

advertising, promotion, manufacture, and sale of the Infringing Products, Defendant expressly
refused to cease his unlawful conduct and argued that his activities were not in violation of any
trademark or copyright laws.
37.

Harley-Davidson then turned the matter over to its outside counsel. On July 30,

2012, Harley-Davidsons outside counsel objected to Defendants infringing activities and

provided substantive arguments as to why Defendants activities were unlawful, including that
Defendants reliance on certain court decisions was wrong and/or misplaced. In response,
Defendant suspended the sale of the Infringing Products and posted a notice on his website
stating that he had temporarily suspended the sale of our Harley Fabric Lamp Shades.
Defendant sent an email to Harley-Davidsons outside counsel on August 9, 2012 stating that he
would provide a substantive response to Harley-Davidsons outside counsels communications.
Defendant further stated that he would stop sales of our Harley lamp shades on our website until

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I have fully reviewed your letter, making clear to H-D that Defendant would not resume sales of
the Infringing Products until and unles he had responded substantively to H-D.
38.

More than a year later, Defendant, without having sent a substantive response to

H-Ds outside counsel and without giving notice to H-Ds outside counsel, removed the
suspension notice from his website and resumed offering the Infringing Products for sale. In
response, Harley-Davidsons outside counsel contacted Defendant on January 7, 2014 and
reiterated its demand that Defendant remove the Infringing Products from his website and
provide a substantive response to Harley-Davidsons outside counsels initial letter. In response,
Defendant sent an email on January 17, 2014 stating that he would again suspend sales of the
Infringing Products. Defendant then put the suspension notice back on his website, and removed
several of the Infringing Products from his website, but still failed to provide the promised
substantive response to Harley-Davidsons outside counsels initial letter. On January 23, 2014,
Harley-Davidsons outside counsel again contacted Defendant and objected to the continued
display of the Infringing Products on Defendants website, and Defendant later removed the
Infringing Products from his website altogether and retained the suspension notice on his website.
39.

Harley-Davidsons outside counsel later discovered that Defendant, without

havng sent a substantive response to H-Ds outside counsel and without giving notice to H-Ds
outside counsel, had removed the suspension notice from his website, redisplayed and/or relisted
the Infringing Products he originally had for sale, and displayed or listed new additional
Infringing Products for sale on his website.
40.

From time to time, Defendants website has disclaimed an affiliation with Harley-

Davidson. In any event, However, the disclaimer is ineffective to avoid a likelihood of

confusion because the disclaimer is false and misleading, consumers are unlikely to see, read,

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pay attention to, or understand the disclaimer, and the disclaimer has no effect whatsoever on
post-sale confusion.
41.

On June 23, 2014, Defendant conducted an interview with Hemmings Daily, a

news publication providing information about classic cars. In response to one of the
interviewers questions Defendant stated:
The most difficult challenge has been copyright/trademark owners such as Disney,
Marvel Comics, Dr. Seuss Enterprises, WWE and many others who claim our
lampshades violate their copyright/trademark images and logos. As an attorney, I know
the law, and none of our lampshades violate any copyright/trademark laws. To address
these false claims, I drafted a 20-page legal document which explains in detail why our
lampshades do not violate any copyright/trademark laws. When a copyright/trademark
owner files a complaint, I send them a copy of the 20-page document. Each of them has
withdrawn their complaint.
42.

Defendants above statements in his interview are false. Such statements were

also material to consumers decisions to purchase Defendants Infringing Products. When

Harley-Davidson and its outside counsel objected to Defendants sales of the Infringing
Products, Defendant never responded with a 20-page document. In fact, Defendant has failed
to provide any substantive response to Harley-Davidsons outside counsels first letter despite his
promise to do so before he resumed sales of the Infringing Products. Instead, Defendant
suspended his sales of the Infringing Products multiple times for a substantial period of time,
which is contrary to his above interview.
43.

The Infringing Products are not subject to the same standards, review, and

approval process as Harley-Davidsons authorized genuine products, including licensed

products, bearing Harley-Davidson Marks, including without limitation Harley-Davidsons
quality-control measures.
44.

Defendants statements about the nature, characteristics, and/or qualities of the

Infringing Products and/or Harley-Davidsons products are false, deceptive, and/or misleading.

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INJURY TO HARLEY-DAVIDSON AND THE PUBLIC

45.

Defendants actions described above have damaged and injured and, if permitted

to continue, will further damage and injure Harley-Davidson, the Harley-Davidson Marks,
Harley-Davidsons reputation and goodwill associated with those trademarks, Harley-Davidsons
reputation for high-quality products and services, and the public interest in being free from
confusion.
46.

Defendants actions as described above are likely to cause confusion, mistake,

and deception as to the source or origin of Defendants products, and are likely to falsely suggest
a sponsorship, connection, license, affiliation, or association between Defendant and/or his
products with Harley-Davidson.
47.

Defendants actions described above are also likely to dilute the distinctiveness

and value of the famous Harley-Davidson Marks and are likely to tarnish the famous HarleyDavidson Marks.
48.

Defendants actions described above have irreparably harmed, and if not enjoined,

will continue to irreparably harm the general public, which has an inherent interest in being free
from confusion, mistake, and deception.
49.

Defendants actions described above have irreparably harmed and, if not enjoined,

will continue to irreparably harm Harley-Davidson and the famous Harley-Davidson Marks.
50.

Harley-Davidson has no adequate remedy at law.

FIRST CLAIM FOR RELIEF
Trademark Infringement Under Section 32(1)
of the Lanham Act, 15 U.S.C. 1114(1)

51.

Harley-Davidson hereby repeats and realleges each and every allegation set forth

in paragraphs 1 through 50 of this Complaint.

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52.

Defendant used and continues to use in commerce the Harley-Davidson Marks

and/or reproductions, copies, and colorable imitations thereof in connection with the offering,
sale, distribution, and advertising of goods, which is likely to cause confusion, mistake, or
deception as to the origin, sponsorship, or approval of Defendants products and commercial
activities, and thus constitutes infringement of Harley-Davidsons federally registered marks
referred to in paragraphs 28 to 30 above in violation of Section 32 of the Lanham Act, 15 U.S.C.
1114.
53.

The actions of Defendant described above have at all times relevant to this action

been willful.
54.

As a direct and proximate result of the actions of Defendant alleged above,

Harley-Davidson has been damaged and will continue to be damaged.

SECOND CLAIM FOR RELIEF
Trademark Infringement, False Designation
of Origin, and Unfair Competition
Under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A)
55.

Harley-Davidson repeats and realleges each and every allegation set forth in

paragraphs 1 through 54 of this Complaint.

56.

Defendants actions described above are likely to cause confusion, mistake, or

deception as to the origin, sponsorship, or approval of Defendants products and commercial

activities, and thus constitute trademark infringement, false designation of origin, and unfair
competition with respect to the Harley-Davidson Marks in violation of Section 43(a)(1)(A) of the
Lanham Act, 15 U.S.C. 1125(a)(1)(A).
57.

The actions of Defendant described above have at all times relevant to this action

been willful.

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58.

As a direct and proximate result of the actions of Defendant alleged above,

Harley-Davidson has been damaged and will continue to be damaged.

THIRD CLAIM FOR RELIEF
Federal Unfair Competition Comprising
False and Misleading Statements of Fact
Under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a)(1)(B)
59.

Harley-Davidson repeats and realleges each and every allegation set forth in

paragraphs 1 through 58 of this Complaint.

60.

By engaging in the above-described activities, Defendant has made false and

misleading representations of fact to consumers and potential consumers, in commercial

advertising or promotion, misrepresenting the nature of his or anothers products and services, or
commercial activities in violation of Section 43(a)(1)(B) of the Lanham Act, 15 U.S.C.
1125(a)(1)(B).
61.

The actions of Defendant described above have at all times relevant to this action

been willful.
62.

As a direct and proximate result of the actions of Defendant alleged above,

Harley-Davidson has been damaged and will continue to be damaged.

FOURTH CLAIM FOR RELIEF
Trademark Dilution Under Section
43(c) of the Lanham Act, 15 U.S.C. 1125(c)
63.

Harley-Davidson repeats and realleges each and every allegation set forth in

paragraphs 1 through 62 of this Complaint.

64.

Harley-Davidson has engaged in extensive nationwide advertising, promotion,

and use of the Harley-Davidson Marks for many years. Further, Harley-Davidson has had
massive sales of its goods and services sold under the Harley-Davidson Marks for decades.

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65.

The Harley-Davidson Marks have for many years received extensive unsolicited

media attention nationwide. Such extensive and frequent media attention and commercial
success has had a substantial impact on the public and has long created an association in the
minds of consumers between Harley-Davidson and the Harley-Davidson Marks, and the HarleyDavidson Marks are famous and were famous nationwide before Defendant commenced his
unauthorized use of the Harley-Davidson Marks.
66.

Defendants actions described above, all occurring after the Harley-Davidson

Marks became famous, are likely to cause dilution by blurring and dilution by tarnishment of the
distinctive quality of those trademarks in violation of Section 43(c) of the Lanham Act, 15
U.S.C. 1125(c).
67.

The actions of Defendant described above have at all times relevant to this action

been willful.
68.

As a direct and proximate result of the actions of Defendant alleged above,

Harley-Davidson has been damaged and will continue to be damaged.

FIFTH CLAIM FOR RELIEF
Trademark Infringement
Under Wis. Stat. 132 et. seq.
69.

Harley-Davidson repeats and realleges each and every allegation set forth in

paragraphs 1 through 68 of this Complaint.

70.

Defendants actions making use of the Harley-Davidson Marks with intent to

deceive as to the affiliation, connection, or association of the Defendant with Harley-Davidson in

the conduct of his business without the authorization of Harley-Davidson as set forth above
constitutes statutory trademark infringement of Harley-Davidsons registered marks referred to
in paragraph 32 above in violation of Chapter 132 of the Wisconsin Statutes.

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71.

Upon information and belief, the actions of Defendant described above have at all

times relevant to this action been willful.

72.

As a direct and proximate result of the actions of Defendant alleged above,

Harley-Davidson has been damaged and will continue to be damaged.

SIXTH CLAIM FOR RELIEF
Common Law Trademark Infringement, Unfair
Competition, and Misappropriation
73.

Harley-Davidson repeats and realleges each and every allegation set forth in

paragraphs 1 through 72 of this Complaint.

74.

Defendants actions described above constitute common law trademark

infringement, unfair competition, and misappropriation of Harley-Davidsons goodwill under the

common law of Wisconsin and other states.
75.

The actions of Defendant described above have at all times relevant to this action

been willful.
76.

As a direct and proximate result of the actions of Defendant alleged above,

Harley-Davidson has been damaged and will continue to be damaged.

PRAYER FOR RELIEF
WHEREFORE, Harley-Davidson prays that this Court enter judgment in its favor on
each and every claim for relief set forth above and award it relief including, but not limited to,
the following:
A.

An injunction permanently enjoining Defendant and his employees, agents,

partners, officers, directors, owners, shareholders, principals, subsidiaries, related companies,

affiliates, distributors, dealers, retailers, and all persons in active concert or participation with
any of them:

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1.

From using the HARLEY-DAVIDSON, H-D, and Bar & Shield

Logo trademarks, any other trademarks owned by Harley-Davidson, and any

trademarks and logos that are confusingly similar to or likely to dilute or tarnish
any such marks, in any unauthorized manner, including, but not limited to, use on
or in conjunction with the Infringing Products and on or in connection with any
other unauthorized material alterations and/or reconstructions of genuine products
bearing the Harley-Davidson Marks or variations thereof;
2.

From representing by any means whatsoever, directly or indirectly,

that Defendant, any products or services offered by Defendant, or any activities

undertaken by Defendant, are authorized, licensed, or otherwise affiliated with
Harley-Davidson; and
3.

From assisting, aiding or abetting any other person or business

entity in engaging in or performing any of the activities referred to in

subparagraphs A.1-2 above.
B.

An Order directing Defendant to immediately destroy all Infringing Products and

any other unauthorized material alterations and/or reconstructions of genuine products bearing
the Harley-Davidson Marks or variations thereof.
C.

An Order directing Defendant to file with this Court and serve on Harley-

Davidsons attorneys, thirty (30) days after the date of entry of any injunction, a report in writing
and under oath setting forth in detail the manner and form in which it has complied with the
injunction;
D.

An Order requiring Defendant to account for and pay to Harley-Davidson any and

all profits arising from the foregoing acts of infringement, dilution, false designation of origin,

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false advertising, unfair competition, and an increasing of such profits for payment to HarleyDavidson in accordance with 15 U.S.C. 1117, Wis. Stat. 132 et. seq., and other applicable
statutes and laws;
E.

An Order requiring Defendant to pay Harley-Davidson compensatory damages in

an amount as yet undetermined caused by the foregoing acts of infringement, dilution, false
designation of origin, unfair competition, and trebling such compensatory damages for payment
to Harley-Davidson in accordance with 15 U.S.C. 1117, Wis. Stat. 132 et. seq., and other
applicable statutes and laws;
F.

An Order requiring Defendant to pay Harley-Davidson punitive damages in an

amount as yet undetermined caused by the foregoing acts of Defendant;

G.

An Order requiring Defendant to pay Harley-Davidsons costs and attorneys fees

in this action pursuant to 15 U.S.C. 1117, and other applicable statutes and laws; and
H.

Other relief as the Court may deem appropriate.

JURY DEMAND

Pursuant to Fed. R. Civ. P. 38, Harley-Davidson respectfully demands a trial by jury for
all claims so triable.

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Dated this 8th day of January, 2015.

MICHAEL BEST & FRIEDRICH LLP

By: s/ Katherine W. Schill

Katherine W. Schill, SBN 1025887
100 East Wisconsin Avenue
Suite 3300
Milwaukee, WI 53202-4108
Telephone: 414-271-6560
kwschill@michaelbest.com
OF COUNSEL:
David M. Kelly
Stephanie H. Bald
Anjie Vichayanonda
KELLY IP, LLP
1330 Connecticut Ave., N.W.
Suite 300
Washington, D.C. 20036
Telephone: 202-808-3570
Facsimile: 202-354-5232
Attorneys for Plaintiff
H-D U.S.A., LLC

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