No Hogging Words, Says a Court, Ruling Harley-Davidson’s Use of SCARECROW is Fair Use.
Last month, a Wisconsin district court granted Harley-Davidson’s motion for summary judgment, finding that Harley had not infringed Plaintiff’s SCARECROW trademark when it used the term to describe a paint set.
Plaintiff, a free-hand artist known as SCARECROW, paints designs on motorcycle bodies, and provides his services at various trade shows, motorcycle clubs and rallies, including the Harley Owners Group (“HOG”) events. The mark SCARECROW is used on his booth, and as his DBA. Plaintiff also generally paints a small scarecrow on each of the bikes he customizes. Plaintiff has painted over 22,000 bikes.
For years, Harley has sold custom paint sets that allow individuals to create customized designs on their motorcycles. Each paint set contains a set of colors, selected by the Harley staff, and the Harley staff paints a corresponding design to show how the colors may be used. The paint sets are given names that describe the proposed design, like “venom” (which has an image of a snake), or “gambler” (for a gold-black dice combination). Included in the sets released in 2006 was “Scarecrow” for a black and blue paint set illustrated with a scarecrow and barbed wire. Subsequent to discovering the use of the term “scarecrow” along with a scarecrow image, Plaintiff sued.
In finding that Harley’s use of the image and the term did not infringe Plaintiff’s SCARECROW trademark, the court noted that the catalog scarecrow image looked nothing like Plaintiff’s trademark image. It also pointed out the Harley scarecrow was surrounded – indeed dwarfed – by Harley’s familiar HARLEY DAVIDSON trademark. The use of the term “scarecrow” in association with the particular paint set was merely descriptive use because it described the painted image. The court also noted that while Plaintiff may have legitimate trademark rights in the mark SCARECROW, he cannot appropriate the term to himself and thereby prevent others from using the term in a descriptive sense.
Practice Note: This might have been more of a close call had Harley not had an existing pattern and practice of using fanciful terms to describe its paint colors, making the “scarecrow” term just one of many descriptive uses.