The ongoing litigation between Sturgis Motorcycle Rally, Inc., and Rushmore Photo & Gifts, Inc., has recently provided more twists and turns in its long and winding road. Last November, the United States Court of Appeals for the Eighth Circuit upheld a jury verdict finding infringement of two registered trademarks, and reversed a verdict finding infringement of three trademarks because the owner of the trademarks failed to establish that the trademarks had acquired “secondary meaning.” Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc., Case Nos. 17-1762, -1869, 2712, -2731 (8th Cir. Nov. 2, 2018) (Arnold, J).
With the case back before the United States District Court, District of South Dakota, Western Division, as part of the record, the District Court must conduct a new trial on the plaintiff’s Anti-Cybersquatting Consumer Protection Act claim in which the plaintiff seeks injunctive relief against the defendants. A preliminary injunction has issued, but trial has not yet been set.
Since that time, the parties have continued to file motions with the District Court relating to ongoing discovery matters, the defendants have filed a motion related to cancellation of certain plaintiff’s trademark registrations with the United States Patent and Trademark Office, and the plaintiff has filed a motion for reconsideration of the District Court’s preliminary injunction currently in place. The parties most recently participated in a settlement conference before the U.S. Magistrate Judge. Although no global resolution was reached, another meeting is to be scheduled by the end of the month with the parties’ respective principals to continue discussions. In the meantime, motions are pending and the case continues forward…down the road.
If the parties are unable to reach a resolution, expect this multi-faceted IP litigation to “rev up” full throttle, and run wide open in the coming year in South Dakota.