INTELLECTUAL PROPERTY ALERT
Is Redbubble’s Bubble Bursting? By: Katherine Dennis Nye and Abigail Flores
March 8, 2021
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edbubble, an online marketplace for print-on-demand products based on user-submitted artwork, could be in hot water for trademark infringement. Redbubble allows artists to advertise designs that are placed on apparel and other items chosen by the consumer, unlike other online marketplaces, such as Amazon, which sell pre-made goods. Two recent federal court decisions, however, suggest that retailers using the Redbubble model could be held liable for trademark infringement claims based on their users’ activities. Online marketplaces typically avoid liability for trademark infringement claims because they are identified as “passive facilitators” or “transactional intermediaries” that do not use the infringing mark as defined under the Lanham Act.1 (See our article: “Acting Responsibly: Oberdorf v Amazon.com Inc, and other various cases,” Intellectual Property Magazine, Nov. 2020.) Following this rule, a district court in Ohio granted Redbubble’s motion for summary judgment when the Ohio State University alleged trademark infringement by the retailer as it offered products bearing OSU trademarks. The district court held that Redbubble was a mere “transactional intermediary” between buyers and sellers.2 However, last week, the Sixth Circuit overturned that ruling, holding that the district court used an “overly narrow reading of the Lanham Act.”3 Ohio State’s ultimately successful position was supported in the Sixth Circuit by amicus curae briefs filed by the International Trademark Association and numerous other universities (including, in a twist for Big Ten football fans, the University of Michigan). The Court found that trademark infringement liability exists on a spectrum from passive facilitators such as Amazon who may avoid liability when selling third-party goods, on the one hand, to brick-and-mortar vendors who are the ‘typical’ infringers and may be held liable for infringing products sold in their stores, on the other hand. In the Ohio State case, the Sixth Circuit held that, because “products ordered on Redbubble’s website do not yet exist, come into being only when ordered through Redbubble, and are delivered in Redbubble packaging with Redbubble tags,” the district court erred in placing Redbubble on the passive end of the liability spectrum.4 The Court ultimately remanded the case to the district court for additional fact-finding.5 This follows a California district court decision last month that denied Redbubble’s motion for summary judgment in a trademark infringement case brought by the video game company Atari. That court held that neither party had met the standard for summary judgment regarding whether Redbubble used Atari’s trademark in commerce or merely facilitates its customers’ use of that mark, and permitted Atari’s claims regarding direct, vicarious, and contributory trademark infringement to go forward.6 This apparent willingness of the courts to hold Redbubble liable based on the activities of its users signals another shift in this rapidly evolving area. 1 2 2019). 3 4 5 6
Ohio State Univ. v. Redbubble, Inc., 2021 U.S. App. LEXIS 5610 (6th Cir. 2021). Ohio State Univ. v. Redbubble, Inc., No. 2:17-cv-1092, 2019 U.S. Dist. LEXIS 53695 (S.D. Ohio Mar. 29, Ohio State Univ., 2021 U.S. App. LEXIS at *3. Id. at *23. Id. at *32. Atari Interactive, Inc. v. Redbubble, Inc., 2021 U.S. Dist. LEXIS 35976 (N.D. Cal. 2021).
Neal, Gerber & Eisenberg LLP | Two North LaSalle Street Chicago, IL 60602-3801 | 312.269.8000 | www.nge.com
INTELLECTUAL PROPERTY ALERT
This alert was authored by Katherine Dennis Nye | 312-827-1455 | knye@nge.com Abigail Flores | 312-269-1739 | aflores@nge.com If you have any questions concerning your business’s trademark matters or use of your company’s trademarks on online marketplaces, please contact Kate Dennis Nye, Abigail Flores or your Neal Gerber Eisenberg attorney.
The content above is based on information current at the time of its publication and may not reflect the most recent developments or guidance. Please note that this publication should not be construed as legal advice or a legal opinion on any specific facts or circumstances. The contents of this publication are intended solely for general purposes, and you are urged to consult a lawyer concerning your own situation and any specific legal questions you may have. The alert is not intended and should not be considered as a solicitation to provide legal services. However, the alert or some of its content may be considered advertising under the applicable rules of the supreme courts of Illinois and certain other states. © Copyright 2021 Neal, Gerber & Eisenberg LLP
Neal, Gerber & Eisenberg LLP | Two North LaSalle Street Chicago, IL 60602-3801 | 312.269.8000 | www.nge.com