Harley-Davidson is taking Urban Outfitters back to court, alleging the Philadelphia-based clothing company is violating a 2014 settlement agreement by selling bodysuits made from Harley products.
[caption id="attachment_159450" align="alignright" width="350"] Harley-Davidson alleges these bodysuits violate a 2014 settlement agreement with Urban Outfitters. Source: U.S. District Court filings.[/caption]
Milwaukee-based Harley first sued Urban Outfitters in 2014. The suit accused Urban Outfitters of infringing on Harley’s trademarks by altering and reconstructing Harley-Davidson products and selling them under its Urban Renewal line. The company would cut off sleeves, shred the bottom of shirts, cut open the sides, remove Harley labels and replace them with Urban Outfitters ones, according to the suit.
The two sides settled the lawsuit in May 2014. According to Harley’s latest lawsuit, Urban Outfitters agreed to stop selling the products and to not “knowingly make, promote, sell or distribute Harley-Davidson apparel products that have been ‘altered or reconstructed.’”
Harley says the settlement applies worldwide and to Urban Outfitters and all its affiliates and subsidiaries.
The new lawsuit, filed last week in the U.S. District Court for Eastern Wisconsin, says Harley discovered Urban Outfitters was selling a shirt with a version of Harley’s bar and shield logo on it in August 2014, just three months after the previous case was settled. Harley says it reached out to Urban Outfitters and the company agreed to stop selling the shirt. Harley was also provided with the name of the shirt’s vendor and was able to work out an agreement with that company.
[caption id="attachment_159449" align="alignright" width="316"] Harley discovered Urban Outfitters was selling shirts with a version of its bar and shield logo.[/caption]
A similar pattern repeated itself with another shirt that used the bar and shield logo in November 2014.
The new lawsuit, however, goes beyond those two cases and alleges Urban Outfitters is violating its agreement to not make products from Harley clothing.
"In this new complaint, we are arguing that they breached our agreement to not manufacture, promote, sell or distribute certain products," said Katie Whitmore, Harley spokeswoman. "Our stance is, the Harley-Davidson brand is strong worldwide in part because of the company’s strict defense of its representation. Allowing others to misuse the company’s logo diminishes its strength and violates the tenets of our trademark protections."
Urban Outfitters did not respond to a request for comment.
Harley says it recently discovered Urban Outfitters’ subsidiary Free People is selling a product described as the “Backbite x Free People Vintage Revival Bodysuit.”
The bodysuits are described as “’one of a kind’ products that are ‘re-worked’ and ‘handmade from vintage graphic tees in California,’” according to the lawsuit. The bodysuits were created by cutting off the sleeves, cutting the neckline and cutting and sewing the bottom of the shirt together to create a new product.
Harley claims it discovered at least three different bodysuits that have Harley trademarks on them, but adds there may be more it is not aware of. The company included a receipt in the lawsuit showing the item sold for $120.
This is the third lawsuit Harley has filed in the last year against a company for infringing on its trademarks. It settled with Forever 21 and a case against online retailer GearLaunch is still pending.
The current lawsuit seeks an order blocking Urban Outfitters from using any Harley trademarks or logos, altering Harley clothing or adding its own branding to Harley clothing. Harley is also seeking any profits from infringing products and compensatory and statutory damages, including up to $2 million per trademark per type of product sold.
Harley is also asking the court to order Urban Outfitters to review all of its new products for potential infringements and provide Harley with information on the manufacturer or supplier.