INTA’s Position on OSU v. Redbubble Prevails at the Sixth Circuit

Published: March 3, 2021


Jenifer deWolf Paine Fish & Richardson P.C. New York, New York, USA International Amicus Committee—U.S. Amicus Subcommittee

The U.S. Court of Appeals for the Sixth Circuit accepted the position advocated by INTA in Ohio State University v. Redbubble, Inc. (No. 19-3388, Feb. 25, 2021), which addressed whether Redbubble is responsible for direct trademark infringement when counterfeit goods featuring Ohio State’s trademarks are sold through its website.

The District Court had rejected Ohio State’s complaint because it held that Redbubble was a mere intermediary and therefore not the seller of the goods. INTA had argued—and the Sixth Circuit agreed—that the District Court applied too narrow a construction of what constitutes “use” under the Lanham Act for purposes of assessing direct infringement. Further review was required to determine the degree of control that Redbubble exercised over counterfeit products sold on its site.

Under Redbubble’s business model, artists upload images that customers can order emblazoned on apparel and other merchandise. Although Redbubble’s terms of service state that the artist is technically the seller, Redbubble arranges the manufacturing and shipping for the artist through independent third parties. Redbubble never takes title to the product, but when the product is shipped, the package bears Redbubble’s logo.

At issue was whether Redbubble is a “transactional intermediary” such as Amazon or eBay and is therefore not subject to liability for infringing products sold by third parties through its site, or rather a “user” of the trademarks that third parties upload to its site.

“In other words,” the Court of Appeals asked, “what level of involvement and control must a defendant exercise over the creation, manufacture, or sale of offending goods to be considered akin to a ‘seller’ or ‘manufacturer’ to whom Lanham Act liability applies?” Slip. Op. at 12.

The District Court had granted summary judgment in favor of Redbubble, likening Redbubble’s position to that of Amazon or eBay. INTA submitted an amicus brief arguing that “use in commerce” involves more than the mere act of selling goods to which the seller has title, and that the record was incomplete as to whether Redbubble’s actions rose to a level that implicates the Lanham Act.

The Sixth Circuit agreed with INTA that Redbubble’s business model might very well make it directly liable for counterfeit items sold through its website. Unlike “passive” online sellers, Redbubble “facilitates the creation of goods bearing OSU’s marks that would not have existed but for Redbubble.”

The Court of Appeals expressly quoted from INTA’s brief in holding that reversal was warranted so that the District Court could consider “facts regarding the precise nature of Redbubble’s contractual relationships with third-party manufacturers and shippers … the precise degree to which Redbubble is involved in selecting and imprinting trademark-infringing designs upon its products; details as to Redbubble’s involvement in the process for returning goods; details on how Redbubble characterizes its own services; and facts about defenses to liability, such as possible fair use defenses or defenses that confusion is not likely.” Slip. Op. at 18.

The INTA amicus brief was authored by David H. Bernstein and Kate Saba of Debevoise & Plimpton. INTA’s International Amicus Committee will continue to monitor the progress of this case on remand.

Mr. Bernstein discusses the decision and INTA’s position in an INSIDE INTA video.

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

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