171762P.pdf   11/02/2018  Sturgis Motorcycle Rally, Inc.  v.  Rushmore Photo & Gifts, Inc.
   U.S. Court of Appeals Case No:  17-1762
                          and No:  17-1869 etc.
   U.S. District Court for the District of South Dakota - Rapid City   
   [PUBLISHED] [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.