United States District Court, D. South Dakota, Western Division
ORDER AUTHORIZING THE RPG DEFENDANTS TO MARKET
CERTAIN SYMBOLS AND ARTWORK
JEFFREY L. VIKEN CHIEF JUDGE.
13, 2016, during a hearing held on a number of matters, the
defendants Rushmore Photo 85 Gifts, Inc., Carol Niemann, Paul
A. Niemann, and Brian M. Niemann ("RPG Defendants")
orally moved for authorization to market the symbols and
artwork contained in Exhibit A and Exhibit D of Docket 308-1.
The court entered an order requiring plaintiff to file its
brief in response to the oral motion and requiring the RPG
Defendants to file a reply brief. (Docket 344 at p. 3).
Plaintiff opposes the RPG Defendants' motion (Docket
347). For the reasons stated below, the RPG Defendants'
oral motion is granted.
February 11, 2016, the court entered a preliminary
injunction. (Docket 299). Relevant to the present oral
motion, the preliminary injunction contained the following
IT IS FURTHER ORDERED that defendants RUSHMORE PHOTO 85
GIFTS, INC., CAROL NIEMANN, PAUL A. NIEMANN, BRIAN M. NIEMAN
and WAL-MART STORES, INC., ("the enjoined
defendants") are hereby immediately restrained and
enjoined from engaging in the following activities:
1. Using the following trademarks and composite design
A. STURGIS, U.S. Reg. No. 3, 923, 282;
B. STURGIS BIKE WEEK, U.S. Reg. Nos. 2, 070, 955; 3, 825,
398; 3, 838, 171; 3, 911, 270; and 3, 923, 236;
C. BLACK HILLS MOTOR CLASSIC STURGIS RALLY 85 RACES BLACK
HILLS S. D., U.S. Reg. No. 1, 948, 097;
D. STURGIS MOTORCYCLE RALLY, a common law trademark;
E. STURGIS RALLY 85 RACES, a common law trademark;
or any colorable imitations of these marks in any
advertisement, promotion, offer for sale, or sale of any
goods bearing one or more of the marks;
2. Using in commerce any reproduction, counterfeit, copy or
colorable imitation of SMRI's Marks, including but not
limited to the infringing designations "Officially
Licensed Sturgis, " "Authentic Sturgis, "
"Legendary Sturgis, " "Licensed Sturgis,
" "Official Sturgis, " "Sturgis Central,
" "Sturgis Motor Classic, " and "Sturgis
Rally" (collectively referred to as
"Defendants' Sturgis Designations"), without
SMRI's consent in a manner likely to cause confusion,
mistake, or deception as to the source, origin, sponsorship
or approval of the defendant's product;
3. Diluting SMRI's famous STURGIS® mark by blurring
4. Acting, using, or employing any deceptive act or practice,
fraud, false pretense, false promise or misrepresentation or
concealed, suppressed or omitted material facts in connection
with the sale or advertisement of any merchandise;
5. Registering, trafficking in, or using any domain name that
is identical to, confusingly similar to, or likely to dilute
SMRI's Marks, including but not limited to:
AuthenticSturgis.com, Legendary- Sturgis. com,
SturgisCentral .com, SturgisMotorClassic.com, or
Id. at pp. 8-10.
registered and common law trademarks are specifically limited
to the motorcycle rally event held annually in Sturgis, South
Dakota. See United States Patent and Trademark
Office Registrations: No. 3, 923, 284; No. 2, 070, 955; No.
3, 825, 398; No. 3, 838, 171; No. 3, 911, 270; and No. 3,
923, 236. (Trial Exhibit 1 at pp. 2, 7-8 85 10-12). For this
reason, the preliminary injunction contained a provision
specifically excluding certain material from the conduct
IT IS FURTHER ORDERED that use of the name Sturgis or other
phrases which contain the name Sturgis in the distribution,
marketing and sale of non-rally-related Sturgis, South
Dakota, products is not enjoined or prohibited by this
Id. at p. 11.
legal posture of this case places a heavier burden upon the
[RPG Defendants] of avoiding a colorable imitation of or
diluting [SMRI's] trade . . . marks than upon a party not
already preliminarily enjoined from engaging in such
activity." Howard Johnson Co. v. Khimani, 892
F.2d 1512, 1517 (11th Cir. 1990). "The effect of an
injunction barring the use of plaintiff's trademark is
also a bar to the use of any words in close imitation or
resemblance to the mark." World's Finest
Chocolate, Inc. v. World Candies, Inc., 409 F.Supp. 840,
845 (N.D. 111. 1976), aff'd, 559 F.2d 1226 (7th
Cir. 1977. "It is well established that the protection
of a trademark requires that a party once [found liable for]
infringement or unfair competition should keep a safe
distance from the margin line between compliance with the
order and a violation." Id. at 844 (referencing
Independent Nail & Packing Co. v. Stronghold Screw
Products, Inc., 215 F.2d 434, 436 (7th Cir. 1954), and
Broderick & Bascom Rope Co. v. Manoff, 41 F.2d
353, 354 (6th Cir. 1930)). "Like the original
infringement itself, the safe distance rule is 'founded
on a likelihood of confusion standard.' " John
Allan Co. v. Craig Allen Co. L.L.C., 540 F.3d
1133, 1142 (10th Cir. 2008) (citing Taubman Co. v.
Webfeats, 319 F.3d 770, 779 (6th Cir. 2003) (quotation
omitted)). Where the defendants have been held responsible
for "infringing the trade-mark rights of others, they
should thereafter be required to keep a safe distance away
from the dividing line between violation of, and compliance
with, the injunction. They must do more than see how close
they can come with safety to that which they are enjoined
from doing." Eskay Drugs v. Smith, Kline &
French Laboratories, 188 F.2d 430, 432 (5th Cir. 1951).
court "possesses broad discretion to vindicate the
preliminary injunction by prohibiting subsequent
modifications that do not move a 'safe distance' away
from the trademark infringement." Sunbeam Products,
Inc. v. W. Bend Co., 123 F.3d 246, 260 (5th Cir. 1997).
See also Scandia Down Corp. v. Euroquilt, Inc., 772
F.2d 1423, 1432 (7th Cir. 1985) (The court "possesses
substantial discretion to decide how close is too close . . .
."). "The court may require the [defendants] to
choose a distinctively different mark rather than to hew so
close to the line that the parties must interminably return
to court to haggle about every mark." Id.
"Having once determined that the plaintiff was ...