Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., No. 17-1762 (8th Cir. 2018)
Annotate this Case
SMRI filed suit alleging that defendants, through their participation in the selling of Rushmore's unlicensed motorcycle rally-related products, had violated several provisions of the Lanham Act and related South Dakota statutes. The Eighth Circuit held that the district court did not err in declining to apply licensee estoppel against defendants; the trial record did not support a finding that SMRI owned the rally or its intellectual property, that SMRI and the Chamber before it have been the substantially exclusive users of the word "Sturgis" in relation to either the rally or rally-related goods and services, or that relevant consumers associate the word "Sturgis" with a single source of goods and services in any context; and thus the court reversed the jury's finding that defendants diluted the "Sturgis" mark and vacated the jury's finding that defendants engaged in cybersquatting.
The court also held that defendants should have been granted judgment as a matter of law on the infringement claims relating to SMRI's unregistered marks, "Sturgis Motorcycle Rally" and "Sturgis Rally & Races," because the jury was not presented with sufficient evidence to find that the marks had acquired secondary meaning. Finally, the evidence at trial supported the jury's finding that SMRI's mark "Sturgis Bike Week" was valid; there was sufficient evidence to show that SMRI's "Monahan Composite Mark" was widely used in connection with the rally and that defendants' infringement of the mark was willful and intentional; the differences between the shot glass's design and the Monahan mark were so obvious that the jury did not have any basis in the record for its finding of a counterfeit; SMRI's claims for deceptive practices, false advertising and unfair competition were not time-barred; the district court did not err in granting judgment as a matter of law to JRE; the court vacated the district court's order granting defendants the defenses of laches and acquiescence; and the court reversed and remanded the permanent injunction.
Court Description: Arnold, Author, with Wollman and Kelly, Circuit Judges] Civil case - Trademarks. In this action for violation of plaintiffs' trademarks on the Sturgis Motorcycle Rally, the court has independently reviewed the record and has found no alternative ground to support a finding that plaintiffs have been the substantially exclusive users of the "Sturgis" word mark in relation to the rally or rally-related products and services; if the jury could not make that finding, it also had no basis to infer that the mark had become so associated in the public mind with the plaintiffs' goods that the mark serves to identify the source of the goods and distinguish them from those of others; the trial record thus does not support a finding that plaintiffs own the rally or its intellectual property or that the Sturgis mark is valid; the jury's finding that defendants diluted the Sturgis mark is overturned; the jury's verdict that defendants cybersquatted must also be overturned as it based on a determination that the mark is valid; the jury was not presented with sufficient proof to conclude plaintiff SMRI's unlicensed marks "Sturgis Motorcycle Rally" and "Sturgis Rally & Races" are valid and protected; the evidence was sufficient to support the jury's finding that plaintiff's mark "Sturgis Bike Week" was valid; the trial evidence supports the finding that plaintiffs' "Monahan Composite Mark" was widely used in connection with the rally and that defendants' infringement of the mark was willful and intentional; however, the differences between the design of a shot glass and the mark are so obvious that the jury did not have any basis in the record for its finding that the defendants had produced a counterfeit of the Monahan mark; plaintiffs' claims for deceptive practices, false advertising and unfair competition were not time-barred; there was sufficient evidence from which the jury could find plaintiffs were injured by the practices and that actual damages existed; defendant JRE, a defunct corporation did not have any undistributed assets, and under South Dakota law, plaintiffs had no enforceable claim against it; the district court order granting defendants the defenses of laches and acquiescence is vacated in light of this court's determinations that certain goods were not infringing; the court's permanent injunction is reversed and remanded for further proceedings consistent with this decision; the court did not abuse its discretion in denying plaintiff SMRI an award of attorney's fees under 15 U.S.C. Sec. 1117(a); on remand the court may wish to revisit the issue of costs and fees.
Some case metadata and case summaries were written with the help of AI, which can produce inaccuracies. You should read the full case before relying on it for legal research purposes.
This site is protected by reCAPTCHA and the Google Privacy Policy and Terms of Service apply.