United States District Court, D. South Dakota, Western Division
ORDER FOLLOWING REMAND
JEFFREY L. VIKEN CHIEF JUDGE
November 2, 2018, the United States Court of Appeals for the
Eighth Circuit issued a decision affirming in part, reversing
in part and remanding for further proceedings consistent with
the court's decision. (Docket 468); see Sturgis
Motorcycle Rally, Inc. v. Rushmore Photo and Gifts, Inc., et
al, 908 F.3d 313 (8th Cir. 2018) ("SMRI v.
RP> On the same day, the Eighth Circuit issued a
judgment consistent with the decision. (Docket 469). The
mandate was issued on December 11, 2018. (Docket 470).
Eighth Circuit noted "SMRI has two federal registrations
for the 'Sturgis' mark, but it appears that the
certificate of registration for only one of them, see .
. . Registration No. 3, 923, 284, was admitted into
evidence." Id. at 322 (emphasis in original).
The Eighth Circuit was referring to Trial Exhibit 16.
See Docket 236 at p. 2. Plaintiffs complaint
referenced only this registration. (Docket 1 at p. 6). Trial
Exhibit 17 for the "Sturgis" Registration No. 4,
440, 406 was also admitted at trial. (Docket 236 at p. 2).
The validity of both registrations was litigated at trial.
See Fed.R.Civ.P. 15(b)(2). When speaking of
"Sturgis" throughout the remainder of this order,
the court will be referring to both registrations.
Eighth Circuit determined the "STURGIS" mark is
invalid. SMRI v. RPG, 908 F.3d at 323 & 333.
"[W]e must assess whether the district court correctly
held that there was sufficient evidence for the jury to find
that SMRI's 'Sturgis' mark is valid. After an
independent review of the trial record, we conclude that it
cannot support that finding." Id. at 323. The
[T]he jury's finding that the "Sturgis" word
mark is valid cannot stand. The trial record does not support
that SMRI owns 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.
Id. at 333. Based on this conclusion, the court also
held "[f]irst, we must reverse the jury's finding
that the defendants diluted the 'Sturgis' mark. . . .
Second, we must vacate the jury's finding that the
defendants engaged in cybersquatting." Id.
(citing 15 U.S.C. §§ 1125(c) & (d)). The court
remanded plaintiffs anti- cybersquatting claim for a new
trial. Id. at 346.
Eighth Circuit also held "the jury was not presented
with sufficient proof to conclude that SMRI's unlicensed
marks, 'Sturgis Motorcycle Rally' and 'Sturgis
Rally 8b Races,' are valid and protected."
Id. at 336. With this finding, the court reversed
the district court's judgment "as to the
infringement claims pertaining to those marks and also the
related trademark-dilution claim." Id. at 346.
the "Sturgis Bike Week" mark, the court held
"the mark is valid." Id. at 337. With this
finding, the Eighth Circuit did not disturb the jury's
finding the defendants infringed on the "Sturgis Bike
Week" mark. Id.
Eighth Circuit held "the trial evidence supports the
jury's finding that the defendants' infringement of
the Monahan composite mark was willful and intentional."
Id. at 339. The court found, however, that the
defendants did not produce a counterfeit of the Monahan
composite mark. Id. at 340. With this finding, the
court reversed the verdict "as to the counterfeiting
claim involving the Monahan [composite] mark."
Id. at 346.
plaintiff's deceptive trade practices, false advertising,
and unfair competition claims, the Eighth Circuit found the
jury's verdicts in favor of SMRI were sufficiently
supported in the record. Id. at 341. On that basis,
the Eighth Circuit "affirm[ed] the district court's
denial of judgment as a matter of law to the defendants on
SMRI's claims of deceptive trade practices, false
advertising, and unfair competition . . . ."
Id. at 346.
Eighth Circuit vacated the district court's application
of the defendants' equitable defenses of acquiescence and
laches. Id. at 345. The court remanded the issue to
the district court. "If the district court determines
after further fact-finding on remand that the equitable
defenses apply, it should provide a 'clear
understanding' of the basis of its decision by setting
forth in its order why each defense applies to each
co-defendant and claim." Id. The Eighth Circuit
"direct[ed] the district court to modify its order
granting permanent injunctive relief to SMRI in light of [the
court's] reversal of several parts of the jury's
verdict." Id. at 346.
court conducted a status conference on January 16, 2019, to
discuss the application of SMRI v. RP&G to the
court's prior orders and the jury verdict. Following the
status conference, the parties submitted a joint statement
regarding modifications to the permanent injunction (Docket
451) necessitated by SMRI v. RP&G, 908 F.3d at
346. (Docket 481). The parties also separately filed legal
memoranda and proposed revisions to the permanent injunction.
(Dockets 480, 480-1, 4828& 482-1).
the Eighth Circuit decision, SMRI "continues to claim
ownership of [STURGIS, STURGIS RALLY 8b RACES, and STURGIS
MOTORCYCLE RALLY], despite the Eighth Circuit's opinion
that Plaintiff insufficiently proved infringement against
Defendants." (Docket 482 at pp. 3-4). SMRI argues
"the Eighth Circuit's determination that Plaintiff
failed to prove with sufficiency at trial the distinctiveness
of its STURGIS, STURGIS RALLY & RACES and STURGIS
MOTORCYCLE RALLY marks to uphold an infringement verdict
against Defendants does not mean that Defendants are free to
use those terms on consumer goods or otherwise."
Id. at p. 3. In addition, SMRI claims those terms,
STURGIS, STURGIS RALLY & RACES, and STURGIS MOTORCYCLE
RALLY, if used by the defendants will "infringe the
STURGIS BIKE WEEK® and/or STURGIS Composite Design®
marks that they already have been held to have infringed by
their use of 'Sturgis Motor Classic,' 'SMC,'
'Licensed Sturgis,' Legendary Sturgis' and
related terms. These issues were tried and resolved in
Plaintiff's favor. These issues also were appealed and
upheld in Plaintiff's favor." Id.
ignores the Eighth Circuit's conclusion that the word
"Sturgis" on the "Sturgis Bike Week" mark
and the Monahan mark "appears to be descriptive,
referring to either 'Sturgis' the rally or
'Sturgis' the city, instead of 'Sturgis' the
brand of rally-related goods." SMRI v.
RP&G, 908 F.3d at 325. "When the word
'Sturgis' is simply being used as part of another
mark that itself seeks to communicate an association with
'Sturgis' the rally and city, the word is clearly not
being used as its own distinct mark. We thus conclude that
the jury had no basis to infer that consumers interpreted the
word 'Sturgis' in SMRI's other marks to be a mark
of its own." Id.
Eighth Circuit noted the Monahan mark disclaimed "the
exclusive right to use 'Motor Classic' or 'Rally
& Races.'" Id. at 334 (referencing
Registration No. 1, 948, 097). The court observed
"SMRI suggests that whenever [RP&G] used the words
'Sturgis,' 'Sturgis Rally,' or 'Sturgis
Motor Classic' on a product, the jury could have found
that it infringed the Monahan mark. But that is certainly not
right. The Monahan mark is a composite mark displaying a
specific, detailed design and almost a dozen words."
Id. at 337. "The fact that the dominant aspect
of the Monahan mark and the 'Sturgis,' 'Sturgis
Rally,' and 'Sturgis Motor Classic' marks might
be the word 'Sturgis' does not mean that they are all
similar. . . . That is especially true where, as here, the
word 'Sturgis' in the Monahan mark is descriptive of
what the mark commemorates-the rally held each August in
Sturgis, South Dakota-and thus represents a Sveak'
element of the mark." Id. "The jury thus
had no basis to conclude in the absence of direct proof that
the defendants' uses of 'Sturgis,' 'Sturgis
Rally,' or 'Sturgis Motor Classic' infringed the
Monahan mark." Id.
same holds true with the STURGIS BIKE WEEK mark. In
Registration No. 3, 825, 398, SMRI disclaimed "the
exclusive right to use 'BIKE', apart from the mark as
shown." Trial Exhibit #1 (remaining capitalization
omitted); see also Docket 52-1 at p. 8 (remaining
capitalization omitted). In Registration No. 3, 818, 703,
SMRI specifically disclaimed "the exclusive right to use
'STURGIS', apart from the mark as shown." Trial
Exhibit #1 (remaining capitalization omitted); seealso Docket 52-1 at p. 9 (remaining capitalization
omitted). SMRI's Registration No. 3, 911, 270 likewise
disclaimed "the exclusive right to use
'STURGIS', apart from the mark as shown." Trial
Exhibit #1 (remaining capitalization omitted); see
also Docket 52-1 at p. 11 (remaining capitalization