US Appeals Court Finds Redbubble Online Marketplace Potentially Directly Infringing
In The Ohio State University v Redbubble Inc 19-3388 the Court of Appeal for the Sixth Circuit (CA6C) found that Redbubble’s online marketplace more than merely facilitated infringement of Ohio State University (OSU) trademarks and so reversed and remanded the District Court’s summary judgment of non-infringement.
Redbubble is an Australian based platform that allows independent artists to upload images of their works onto Redbubble’s interface which allows consumers to scroll through and select any that they want printed on items such as apparel, wall art, cushions and duvet covers etc. Once an order is placed Redbubble informs the relevant artist along with independent third parties who manufacture and ship the product to the consumer. Under this model Redbubble never designs, manufactures, handles or takes title to any product shown on its website, but it provides care instructions and helps market the products, handles customer service duties such as returns and its logo appears on shipped packages. Redbubble’s user agreement states that trademark holders, and not Redbubble, bear the burden of monitoring and redressing trademark violations. In order for an offending listing to be removed Redbubble requires URLs or other identifying information, not merely copies of the images used.
The District Court held that OSU’s trademarked images had not been ‘used’ by Redbubble in operating its business model because it only acted as a transactional intermediary between buyers, sellers, manufacturers, and shippers, and so classed Redbubble amongst passive e-commerce facilitators such as eBay and Amazon.
OSU argued that Redbubble acted less like a hands-off intermediary and more like a business that makes knock-offs and directly infringed as the operation of its online marketplace amounts to use in commerce without authorisation from the owner. In its appeal OSU also argued that Redbubble is vicariously liable for trademark infringement on the basis that the vendors that operate on its platform act as Redbubble agents.
The CA6C firstly dismissed the vicarious liability action on the basis that OSU had not raised that ground prior to the appeal, agreeing with Redbubble that OSU had both forfeited and waived that ground.
Moving on to direct infringement the CA6C considered it useful to think in terms of a spectrum of infringement ranging from those who design and place infringing marks on goods or affirmatively used the mark to those such as eBay and Amazon who merely facilitate sales for independent vendors. Given that products ordered on Redbubble’s website only come into being when ordered through Redbubble, and are delivered in Redbubble packaging with Redbubble tags, the CA6C found that the District Court erred in affirmatively placing Redbubble on the passive end of the liability spectrum. The CA6C considered Redbubble’s degree of control and involvement pointed towards it working with third-party sellers to create new Redbubble products, not to sell the artists’ products, and so reversed the District Court’s decision. However, given its finding that the record below lacks sufficient development of the facts to affirmatively decide this issue, the CA6C remanded the case back to the District Court for additional fact-finding regarding how Redbubble operates.
Author: Quinn Miller