Takeaway: Even if you do not upload the infringing content on your website, you may still be liable if you are profiting from such content. Be sure to have an anti-infringement plan in place before your company grows too quickly.

Harley-Davidson is an extremely popular motorcycle brand and is distinctly known worldwide. This popularity and recognition is not necessarily from their motorcycle products alone, but also due to their intelligent branding methods and intellectual property portfolio.

Harley-Davidson recently won a lawsuit they brought against Sunfrog, a business that prints custom designs on t-shirts. The reason this case was so unique was because of the way Sunfrog’s business was structured. Sunfrog is a website that allows the community to upload their own custom designs for printing on products such as t-shirts and other apparel. Not only are the designs potentially used for products the designer wants to order but also may be uploaded for others to use. If a designer uploads a design and another user orders a product with that design, the designer would earn up to a 50% commission on the product sold. Sunfrog did not create any of the designs themselves, all of the designs were uploaded by the community of designers.

This case arose when designers uploaded designs that happened to be trademarked by Harley-Davidson. The sale of products such as t-shirts with a Harley-Davidson logo were determined by the court to likely confuse customers as to the source of the product, and therefore, Sunfrog was liable for infringement of the designs.

This is not a case of Sunfrog trying to rip Harley-Davidson off by purposefully creating infringing products, but rather, it is a case of such rapid growth that Sunfrog could not keep up. Their company ended up earning $1,000,000 in their first year of business and expanded to earning over $150,000,000 in the fiscal year of 2017. Without a plan to prevent these issues, Sunfrog simply did not know how to pull down all of the infringing content as it was being uploaded faster than they could determine a takedown strategy.