International Amicus Committee Update: INTA Weighs In on Standards for Trademark Use

On September 5, 2019, INTA filed an amicus brief with the U.S. Court of Appeals for the Sixth Circuit in Ohio State University v. Redbubble, arguing that to determine whether a defendant used a mark in commerce pursuant to Sections 32(1)(a)‒(b) of the Lanham Act, a court’s inquiry should extend beyond consideration of whether the defendant acted as a “seller” of the allegedly infringing goods or services. INTA also argued that summary judgment was premature because the factual record was too incomplete.

Background

A plaintiff asserting claims of direct liability for trademark infringement must establish that the defendant used the trademark at issue in commerce. This requirement stems from Sections 32(1)(a)‒(b) of the Lanham Act, which provide, in relevant part, that a person can be liable for infringement if she or he uses a trademark in commerce “in connection with the sale, offering for sale, distribution, or advertising of any goods or services,” or applies “reproduction[s], counterfeit[s], cop[ies], or colorable imitation[s] [of a registered mark] to labels, signs, prints, packages, wrappers, receptacles, or advertisements.” 15 U.S.C. § 1114 (1)(a)‒(b).

Courts have generally held that an array of actions-not just the sale of goods or services-can constitute use in commerce for the purpose of establishing direct liability. For example, courts have determined that the use of a mark on a webpage, in a metatag, or as a keyword for triggering online advertising can constitute use. Additionally, courts have found that the manufacture or production of goods bearing a mark can constitute use in commerce.

Ohio State University v. Redbubble: Analyzing ‘Use in Commerce’

The appeal at issue arose out of claims Ohio State University (Ohio State) filed against Redbubble in the U.S. District Court for the Southern District of Ohio, in response to the sale of counterfeit Ohio State merchandise through the Redbubble website.

Ohio State argued that Redbubble-which displays designs by independent artists on its website, arranges for the manufacture of products featuring those designs and the shipment of those products to consumers in Redbubble packaging; processes payment for the sale of such products; and handles returns-is directly liable for infringement of Ohio State’s trademarks. These marks include BUCKEYES, OHIO STATE, OHIO STATE UNIVERSITY, and URBAN MEYER (Ohio State trademarks), which had been incorporated on products sold through the Redbubble website.

Before meaningful discovery was taken, both parties moved for summary judgment. Interpreting Section 32(1) of the Lanham Act, the district court granted summary judgement in favor of Redbubble. The court, comparing Redbubble to an auction site that simply facilitates transactions between a seller and buyer, held that Redbubble was not a “seller” and therefore could not, as a matter of law, be directly liable for trademark infringement. Ohio State appealed.

INTA’s Brief: The Case for a More Fulsome Analysis on a Complete Factual Record

In its amicus brief, INTA argued that, by focusing solely on whether Redbubble acted as a “seller,” the district court had adopted an erroneously restrictive view of “use in commerce” under Section 32(1). INTA encouraged the Court of Appeals to provide guidance on what it means to use a mark in commerce, and, through a more fulsome analysis, identify the contours of a claim of direct trademark infringement.

INTA further encouraged the court to consider factors such as whether Redbubble engaged in the distribution and advertisement of goods bearing the Ohio State trademarks and/or applied the Ohio State trademarks to advertisements used in commerce. INTA also urged the court to analyze whether Redbubble’s role in selecting items sold through its website, arranging for manufacture of items, arranging for shipment of items in Redbubble packaging and with Redbubble hangtags, managing payment processes, and managing any returns or complaints, are sufficient to establish that Redbubble used the Ohio State trademarks in commerce.

INTA also argued that, although it supports summary judgment as a means to conserve resources of the parties and judiciary, summary judgment is only appropriate when there are no disputed issues of fact and the record includes the necessary material facts for the court to reach a decision. In this case, the parties had neither engaged in discovery nor stipulated to resolution on the written record.

INTA argued that summary judgment was inappropriate in this case because material information such as the nature of Redbubble’s contractual relationship with third-party manufacturers and shippers, its role in the selection of items to manufacture, involvement in the returns process, and efforts to advertise or encourage advertising of the allegedly infringing products, was unclear based on the record.

INTA thanks brief authors David H. Bernstein and Kathryn C. Saba (Debevoise & Plimpton LLP, USA); Project Team members Thomas Brooke (Holland & Knight LLP, USA), Emily Burns (Google Inc., USA), Jenifer deWolf Paine (Microsoft Corp., USA), Eleanor Lackman (Mitchell Silberberg & Knupp LLP, USA), Jaime Lemons (Nike, Inc., USA), Larry Nodine (Ballard Spahr LLP, USA), Rita Odin (Estée Lauder Companies Inc., USA), and Claudia Ray (Kirkland & Ellis LLP, USA); and the entire U.S. Subcommittee of the International Amicus Committee.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.