Motorcycle company Harley-Davidson has been awarded $19.2 million in statutory damages against SunFrog, the US print-on-demand giant, for counterfeiting in a trademark and copyright infringement case. The partial summary judgement was made on 12 April 2018 by Judge Stadtmueller.
The judgement noted that the motorcycle manufacturer “placed SunFrog on notice of its trademark rights by submitting at least 70 objections, starting in October 2016 and continuing to May 2017, encompassing well over 800 items. SunFrog responded by removing the challenged designs. Yet infringement continued, as new infringing designs would rapidly replace those that had been removed, and all the while SunFrog continued to market, promote, advertise and sell such products on its website”. It adds that SunFrog took “at least two days and as long as seven days” to deactivate product listings when Harley-Davidson sent links to items it said were infringing its trademarks.
SunFrog countered the claims by noting that at its peak, it had roughly 150,000 user-generated designs uploaded to its website every day, and that during “a relatively brief period”, Harley-Davidson “submitted at least 810 takedown requests”, in response to which SunFrog then removed the allegedly infringing designs.
The judgement continues: “SunFrog believes its practices with respect to its notice and takedown tool are in accord with industry norms”. SunFrog requires its users to agree not to use SunFrog’s service to infringe on another party’s intellectual property (IP) rights. The printer’s in-house counsel noted that the company’s rapid growth had led it to face “a number of challenges when scaling its services”, and that a consistent problem was the problem of “bad actors” uploading and selling designs that infringe upon third parties’ IP rights. The company adds that it has worked to develop tools to curb IP infringement and give rights holders the ability to easily notify SunFrog of allegedly infringing mock-ups, as well as training staff to spot infringements and implementing keyword blocking for words that had a high probability of being associated with IP infringement. Steps have also been taken to prevent bots from uploading designs to its website, reducing the number of uploads per day to around 10,000.
Two matters are left for trial: the amount of compensatory damages (if any) for any non-counterfeiting acts of infringement, and liability and damages on Harley-Davidson’s claim of copyright infringement.
SunFrog has been contacted for a comment.