The Ohio State Univ. v. Redbubble, Inc.
21a0050p.06 (File Name) (2021)
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Rule of Law:
An online marketplace directly 'uses in commerce' a trademark or persona under the Lanham Act and Ohio's right-of-publicity statute when its business model involves creating novel, custom-ordered goods that are branded and marketed as its own products, rather than merely facilitating the sale of pre-existing goods by third-party vendors.
Facts:
- Redbubble operates a global online marketplace where independent artists upload images, and consumers select those images to be emblazoned on customized items like apparel and wall art.
- Once a consumer places an order on Redbubble's website, Redbubble automatically contacts the artist and arranges the manufacturing and shipping of the custom-designed product with independent third parties.
- Redbubble does not take title to, design, manufacture, or physically handle the products, but the shipped packages bear Redbubble's logo, and Redbubble handles customer service duties and disposes of excess goods.
- Redbubble markets the products sold on its platform as "Redbubble products" or "Redbubble garments" and includes Redbubble tags and care instructions.
- The Ohio State University (OSU) manages an extensive licensing program for its trademarks and carries out strict oversight of its licensed products.
- In 2017, OSU discovered products on Redbubble's marketplace displaying OSU's trademarked images and the likeness of former OSU football coach Urban Meyer (whose publicity rights were assigned to OSU) without authorization.
- OSU sent Redbubble a cease-and-desist letter, to which Redbubble responded by requesting specific identifying information like URLs for each infringing design, citing its user agreement that places the burden of monitoring on trademark holders.
- OSU provided photos of offending items, but Redbubble stated pictures were insufficient to identify them, and subsequently, Redbubble did not remove the infringing products, and communication between the parties ceased.
Procedural Posture:
- The Ohio State University (OSU) sued Redbubble, Inc. in the United States District Court for the Southern District of Ohio at Columbus (the trial court/court of first instance) in December 2017.
- OSU alleged trademark infringement, counterfeiting, and unfair competition under the Lanham Act, as well as a violation of Ohio's right-of-publicity law.
- The parties filed cross-motions for summary judgment.
- The district court entered summary judgment in favor of Redbubble, ruling that Redbubble did not 'use' OSU’s trademarked images under the Lanham Act because it acted as a 'transactional intermediary,' and accordingly, OSU's state-law claims also failed.
- OSU, as the appellant, appealed the district court's grant of summary judgment to the United States Court of Appeals for the Sixth Circuit.
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Issue:
Does an online marketplace directly 'use in commerce' a trademark or a persona under the Lanham Act and Ohio's right-of-publicity statute when it facilitates the creation, branding, and sale of custom-ordered products displaying infringing marks or likenesses, even if independent artists upload the designs and third parties manufacture the goods?
Opinions:
Majority - Nalbandian, Circuit Judge
Yes, an online marketplace directly 'uses in commerce' a trademark or a persona under the Lanham Act and Ohio's right-of-publicity statute when its business model facilitates the creation, branding, and sale of custom-ordered products displaying infringing marks or likenesses. The district court erred by applying an overly narrow interpretation of the Lanham Act, equating Redbubble's business model to that of passive facilitators like Amazon or eBay. Unlike Amazon, which primarily connects buyers with pre-existing goods from third-party sellers, Redbubble's platform brings products into being only when ordered, brands them as "Redbubble products" with Redbubble packaging and tags, and markets them as its own. This degree of involvement in the creation, control, and branding of goods distinguishes Redbubble from passive intermediaries and meets the broad 'use in commerce' requirement of the Lanham Act. Similarly, the broad language of Ohio's right-of-publicity statute, which prohibits using a persona 'in connection with a place, product, merchandise, goods, services, or other commercial activities' or for 'advertising or soliciting the purchase of products,' applies to Redbubble's marketing and sales of custom-ordered goods featuring Urban Meyer's likeness. Although the court reversed the summary judgment, it noted that the record below lacked sufficient development of facts regarding the precise nature of Redbubble's contractual relationships with manufacturers, its involvement in design selection, and details of returns, necessitating a remand for further factfinding. The court also declined to address OSU's vicarious liability claims, finding they were not preserved for appeal.
Analysis:
This case significantly clarifies the boundaries of direct liability for online marketplaces under federal trademark law and state right-of-publicity statutes. It establishes that platforms that move beyond merely hosting third-party content or facilitating sales of pre-existing items, and instead integrate themselves into the creation, branding, and marketing of custom-ordered goods, may be directly liable for infringement. This ruling creates a higher bar for platforms operating on a print-on-demand or custom-creation model, requiring them to implement more robust mechanisms for preventing and addressing infringing content, as they can no longer easily claim passive intermediary status. The emphasis on how a platform represents its products (e.g., "Redbubble products") will be critical in future determinations.
