Bell v. Harley Davidson Motor Co.
539 F. Supp. 2d 1249, 2008 U.S. Dist. LEXIS 16331, 87 U.S.P.Q. 2d (BNA) 1330 (2008)
Rule of Law:
The classic fair use defense bars a trademark infringement claim when a defendant uses a protected phrase not as a trademark to identify source, but fairly and in good faith to describe the characteristics or feelings associated with their own goods.
Facts:
- Harley-Davidson (Harley), a motorcycle manufacturer since 1903, began using the phrase 'Ride Hard' in advertisements in 1988 and on apparel in 1993.
- Whenever Harley used the phrase 'Ride Hard' on merchandise or ads, it also included the Harley-Davidson trademark or logo.
- In 1994, Plaintiff Craig Bell began using the phrase 'ride hard' on apparel and subsequently obtained federal trademark registrations for the phrase.
- Bell's business sales dropped significantly by 1998, and between 2001 and 2005, he sold no products bearing the mark despite filing affidavits of use with the PTO.
- Since 2005, Bell resumed minimal sales, selling only two t-shirts and a keychain.
- Harley continued to place the phrase 'Ride Hard' on various items such as bumper stickers, lighters, and apparel to describe the vigorous nature of motorcycling.
Procedural Posture:
- Bell filed a complaint against Harley-Davidson in the U.S. District Court alleging trademark infringement and related claims.
- The District Court (Judge Lorenz) granted in part and denied in part Plaintiff's motion to dismiss counterclaims.
- Harley-Davidson filed a third amended answer and counterclaims.
- Harley-Davidson filed a motion for summary judgment.
- Bell filed a cross-motion for summary judgment.
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Issue:
Does the fair use defense protect a manufacturer's use of a competitor's registered trademark phrase on merchandise when the phrase is used descriptively to convey a feeling associated with the product rather than as a source identifier?
Opinions:
Majority - Judge Janis L. Sammartino
Yes, the fair use defense protects the manufacturer because the phrase was used only to describe the experience of using the goods, not to identify their source. The court held that Harley-Davidson satisfied all three elements of the classic fair use defense. First, Harley did not use 'Ride Hard' as a trademark; it did not use the phrase to identify the source of the products, relying instead on its own famous logo for that purpose. Second, Harley used the term descriptively. Relying on expert linguistic testimony, the court found the phrase describes the 'vigor and energy' associated with riding, and descriptive use includes describing the feelings or actions a consumer experiences with the product. Third, Harley acted in good faith, evidenced by its use of the phrase prior to Bell's registration and its consistent inclusion of its own logo to prevent consumer confusion. Additionally, the court noted that Bell could not prove infringement regardless of fair use because Harley's prior use of the phrase rebutted the presumption of Bell's trademark validity.
Analysis:
This decision reinforces the breadth of the 'fair use' defense in trademark law, particularly regarding what constitutes 'descriptive' use. The court clarified that a phrase need not describe a physical characteristic of a product to be descriptive; it can describe a feeling, action, or sensation associated with the product's use (in this case, the vigor of riding). This prevents trademark holders from monopolizing common phrases used in their primary, descriptive sense. The ruling also underscores that a defendant's use of a term alongside their own strong house mark (like the Harley logo) strongly supports a finding of good faith and lack of confusion.
