United States: Buckeyes Get Black Eye In First Round Against Redbubble

Recently The Ohio State University (yes, that one) suffered a loss before the U.S. District Court for the Southern District of Ohio in a home game against visiting Redbubble, Inc. OSU had sued Redbubble for trademark infringement, unfair competition, and other claims due to Redbubble's alleged use of certain trademark rights owned by OSU, but lost in cross motions for summary judgment.1 The facts of the case provide a good illustration of the kinds of enforcement issues universities have to face as well as the kinds of policing courts may (or may not) expect online platforms to conduct.

OSU is a public university in the Midwest somewhere just south of Michigan. It owns a number of trademarks, including many that are federally registered, such as BUCKEYES, the fearsome mascot of OSU sports teams. It has a few fans (at least one of whom works down the hall from me). In fact, the fans are so supportive of OSU sports that one publication reported that OSU received $17.2M in revenue generated from royalties, licensing, advertisements, and sponsorships during the 2015-2016 athletic academic year. According to the university's website, the school has generated $130M in royalty revenue. This same webpage explains that OSU has launched a "BUY BUCKEYE" awareness campaign seeking to encourage fans to purchase genuine merchandise by educating them about how the revenue generated through licensing is used (eg, scholarships). OSU has a lot to gain from ensuring fans buy genuine OSU-branded products (and a lot to lose by allowing unauthorized uses of its mark to go unaddressed). So it is no small wonder that it took an interest in the unauthorized OSU-branded products sold through Redbubble.

Redbubble is an online marketplace that allows artists to upload and sell their creations. Redbubble does not provide the goods purchased through its marketplace directly. Instead, it provides the means for connecting the artists to the buyers, and the artists to ancillary service providers (eg, manufacturers, shippers, and payment processors). Nevertheless, Redbubble's marks appear on hang tags attached to the finished products, packaging for the finished products, and the return address provided to customers is Redbubble's address. Redbubble also cares about the outcome of this case as, in some ways, it goes to the heart of Redbubble's business model. Moreover, Redbubble has also faced trademark claims in other countries.

OSU sent Redbubble a cease and desist letter alleging trademark infringement because its marks appeared on products sold through Redbubble's site without OSU's authorization. The parties argued over whether it was OSU's obligation to identify infringing products or whether it was Redbubble's obligation to police its site, but were not able to reach agreement. Instead, OSU filed suit against Redbubble.

Although the court's opinion does not delve into the terms of use applicable to Redbubble's website, it is interesting to note that they do make some reference to intellectual property. With respect to trademarks, Redbubble's website terms of use prohibit users from (among other things) using Redbubble's trademarks "...in connection with... products or services which are not ours..." The terms of use also provide users with a mechanism for protecting their own rights by reporting "inappropriate content," which includes infringing content. Users concerned that their intellectual property rights have been infringed may click on a link found next to the product in question and use Redbubble's notice and takedown procedure.2 The procedure is very similar, if not identical, to the one described in the Digital Millennium Copyright Act, (the "DMCA") but appears to apply to all types of intellectual property rather than only copyrights. It is not clear whether OSU first sought relief through this notice and takedown procedure, but when Redbubble insisted that OSU provide cites to the allegedly infringing content (which is something requested as part of the current notice and takedown procedure), OSU filed suit instead.

The DMCA provides a safe harbor for online service providers who implement the statutorily prescribed notice and takedown procedure (and who comply with other requirements) in connection with copyright claims. U.S. law does not provide a similar safe harbor for procedures addressing trademark infringement, but Redbubble is not the only online marketplace provider to have instituted a similar procedure for intellectual property claims other than copyright claims. In most notice and takedown procedures implemented by online market sites, the owner of the intellectual property rights must provide notice of the actual infringement to the online operator. Ebay's VeRO program in particular has garnered some recognition in both commentary and court rulings. It has also arguably been a basis for protecting Ebay against certain types of secondary liability claims in the infringement context. So it is no wonder that other online marketplaces would offer similar types of programs. And perhaps that is also why OSU did not pursue any claims of secondary liability against Redbubble, but instead proceeded only with various direct claims.

These claims did not fare well before the district court (and the court's opinion did not discuss the notice and takedown procedure). The argument about whether Redbubble should be liable for direct infringement, counterfeiting, unfair competition, and passing off centered around the question of whether Redbubble had used OSU's marks in commerce, or, as the court framed it, 'whether Redbubble is a seller.' The court focused much more on questions about whether Redbubble actually took title to certain goods, whether it bore the risk of loss, stored any inventory, etc. and not so much on whether Redbubble affixed its marks to goods in a way that gave consumers the impression it was the source of such goods. Ultimately, the court concluded that Redbubble was not a seller.

In examining this question, the court compared Redbubble to Amazon, which provides fulfillment services to sellers but was not itself a seller (in the relevant context). The court also compared Redbubble to Cafépress.com, in which Cafepress.com itself would print images provided by users on various products at the users' request. The court concluded that Redbubble was more like an 'auction' house akin to Amazon and less like Cafepress.com, which itself manufactured and sold goods. The court gave short shrift to OSU's arguments that Redbubble advertises the goods offered on its site using OSU's marks, describing those arguments as too conclusory.

In the end, the district court granted Redbubble's summary judgment claims and denied OSU's summary judgment claims. But there is to be a 'rematch' of sorts between these teams in the future. OSU has appealed the decision. Its brief is due to the U.S. Sixth Circuit Court of Appeals on June 10, 2019.

Footnote

1 OSU also asserted publicity rights claims, but this post will focus on the trademark infringement claims in light of the focus of this blog.

2 This procedure appears on Redbubble's website as of May 11, 2019. It is not clear when this procedure was posted.

The lawyers at Trademarkology provide trademark registration services backed by the experience and service of one of the nation's oldest law firms. Click here to begin the process of protecting your brand name with a federally registered trademark.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
 
In association with
Related Topics
 
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions