Lawsuit filed against Harley-Davidson for Copyright Infringement

(Wednesday, April 25, 2012  – Milwaukee, WI) Artist Wayne Peterson filed a lawsuit today against Harley Davidson for Copyright Infringement.  See 001 Complaint for Copyright Infringement against Harley Davidson.

Peterson, who formerly did business as Peterson Studios Ltd., is a freelance commercial artist. From the mid 1970s to the mid 2000s, Harley-Davidson commissioned Peterson, as an independent contractor, to produce more than 600 pictorial, graphic, sculptural, and other works. Peterson’s work includes many of Harley-Davidson’s most widely recognized branding and marketing images.

In 1985, Harley-Davidson commissioned Peterson to create a work, limited to placement on one run of timing and carburetor covers, that would become iconic for the company, the “Live to Ride” logo. Peterson fulfilled that commission, hand-drawing and hand-lettering a completely new artwork, as seen in Figure 1 below, which is a copy of the artwork submitted to Harley-Davidson.  It will be referred to as the “Live to Ride Logo.”

 

Figure 1. Live to Ride Logo.

In 1991, Harley-Davidson commissioned Peterson to create a logo for a run of folder covers at its Harley-Davidson University, a “school” where it trains dealers and technicians. Peterson fulfilled that commission, again hand-drawing and hand-lettering a completely new artwork surrounding its existing logo, as seen in Fig. 2.  A copy of the artwork submitted to Harley-Davidson is attached hereto as Exhibit B, and it will be referred to as the “Harley-Davidson University Logo,” and collectively with the Live to Ride Logo, the “Peterson Created Logos.”

 

 

Figure 2. Harley-Davidson University Logo.

The Live to Ride Logo is registered with the United States Copyright Office. Peterson is the exclusive owner of U.S. Copyright with Registration Number VA 1-747-899 for the Live to Ride Logo, titled LIVE TO RIDE RIDE TO LIVE. A copy of that Certificate of Registration is attached to the Complaint as Exhibit C. Peterson’s LIVE TO RIDE RIDE TO LIVE copyright is valid and subsisting. The Harley-Davidson University Logo is registered with the United States Copyright Office.  Peterson is the exclusive owner of U.S. Copyright with Registration Number VA 1-738-580 for the Harley-Davidson University Logo, titled HARLEY-DAVIDSON UNIVERSITY.  A copy of that Certificate of Registration is attached to the Complaint as Exhibit D.  Peterson’s HARLEY-DAVIDSON UNIVERSITY copyright is valid and subsisting.  When Peterson submitted the Peterson Created Logos, he also submitted his invoices for the work, copies of which are attached to the Complaint as Exhibits E and F, respectively.  On those invoices, and on every invoice Peterson submitted to Harley-Davidson for his work with them over for 25 years, Peterson clearly licensed Harley-Davidson to use his works subject to the express limitation that plainly appears on the bottom:

“All illustrations are sold on a one time one run basis, and remain the property of Peterson Studios Ltd. to which they are to be returned.”  Complaint, Exhibits E and F (emphasis added).  See also, Figure 1 above and Complaint, Exhibit A.

Harley-Davidson agreed to the terms of the invoices, paid the amount due in full, and used Peterson Created Logos. Peterson never transferred ownership of the copyrights in his works to Harley-Davidson.  As reflected in the express limitations of the invoices.  See Complaint, Exhibits E and F. Peterson never licensed Harley-Davidson to use the Peterson Created Logos in any manner beyond a limited “one time one run” authorization, one run for the timing and carburetor covers for the Live to Ride Logo and one run for the folder covers for the Harley-Davidson University Logos.  Peterson was never an employee of Harley-Davidson.  Harley-Davidson did not have a work for hire agreement with Peterson for  the Peterson Created Logos or any other work Peterson did for Harley-Davidson.  In fact, the only written agreement Harley-Davidson ever offered Peterson was in 1993 when Harley-Davidson sent Peterson a standard boiler plate vendor Non-Disclosure Agreement, which Peterson did not sign.

Despite the clear language of the invoices and Defendants’ knowledge that the Peterson Created Logos were limited to a “one time one run” authorization, Defendants have, without any authorization permitting them to do so, continually displayed, reproduced, and distributed Peterson’s Peterson Created Logos on hundreds, if not thousands, of runs of products, packaging material, and marketing material, including, but not limited to, clothing (such as boxers, jackets, vests, shirts and hats), motorcycle accessories (such as derby covers, gas cap medallions, universal medallions, tear drop air cleaners, console door covers, brake caliper trim disks, handlebar clamp covers, air cleaner trim plates, chain inspection covers, and handlebar grips), and other articles (such as pins, watches and buckles).

One example of the thousands of unauthorized uses is seen in Figure 3, their “Live to Ride” Collection Universal Medallion offered for sale on Harley-Davidson’s website as of March 8, 2012.

Figure 3. “Live To Ride” Collection Universal Medallion

As can be seen in the side by side comparison in Figure 4, Harley-Davidson’s “Live to Ride” Collection Universal Medallion uses an exact copy of Peterson’s Live to Ride Logo, except that Harley-Davidson places a ® next to the text “Harley-Davidson,” its own name, ironically in an attempt to protect their perceived intellectual property from counterfeiters.  Tellingly, Harley-Davidson never even applied for an actual copyright for Live to Ride Logo due to Peterson being the author.

 

 

 

 

 

 

 

 

Figure 4. Side by Side Comparison of the Live to Ride Logo and Harley-Davidson’s “Live to Ride” Collection Universal Medallion

Defendants’ use of the Peterson Created Logos in the manner complained of herein constitutes infringement of Peterson’s valid copyrights in and to the Peterson Created Logos.  The natural, probable, and foreseeable result of Defendants’ wrongful conduct has and continues to be to deprive Peterson of the benefits and revenues from the sale of an appropriate license to use the Peterson Created Logos as Defendants have.  Peterson will continue to lose substantial revenue from Defendants unauthorized, infringing and wrongful uses, copying, creation of derivative works, and distribution of Peterson’s copyrighted Peterson Created Logos.

Peterson is requesting injunctive relief, damages and attorneys’ fee under Title 17 U.S.C. § 505.

Garteiser Honea represents Peterson in this lawsuit.   Any questions concerning it should be directed to information@sftrialattorneys.com.