April 6, 2021
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Ohio State University (“OSU”) prevailed in its appeal to the United States Court of Appeals for the Sixth Circuit against Australian online marketplace, Redbubble. The dispute related to the extent of trademark liability for an online marketplace.
Redbubble operates an online global marketplace that has amassed over $100 million in sales. Over 600,000 artists use the website to sell their designs on Redbubble apparel, wall art, and other accessories. Once a customer places an order, Redbubble contacts the artist directly and coordinates manufacturing and shipping efforts with independent third parties. While Redbubble does not design, manufacture, or handle any of the products, Redbubble’s logo appears on the shipping packaging and Redbubble handles customer service duties such as returns. Further, Redbubble markets the products sold on its website as Redbubble products, and product care instructions even use the language, “Redbubble garments.”
At issue is a design that a Redbubble artist uploaded to the site that uses OSU trademarked images. OSU argued that Redbubble is responsible for this trademark infringement. Redbubble contends that its role in the sales process is insulated from trademark infringement, similar to Amazon and eBay. The Court agreed that Amazon and eBay are shielded from any trademark infringement of its sellers as their role is simply to facilitate the sale of sellers’ goods. But the Court found that Redbubble’s business model was markedly different: the “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.” Accordingly, Redbubble cannot be considered a passive seller.
The Sixth Circuit reversed the trial court’s grant of summary judgment in Redbubble’s favour and sent the case back to the trial court for further proceedings.
Authors: Shadi Varkiani and Scott Kerr