A pair of conflicting 2021 decisions in trademark infringement cases against print-on-demand marketplace Redbubble will likely result in more litigation involving print-on-demand websites in the years ahead.

The Ohio State University (OSU) sued Redbubble in 2017, claiming that it sold goods using OSU's trademarked images without approval. Redbubble argued that it had not infringed on OSU's trademark because it was merely a "transactional intermediary" between the artists who display their designs on Redbubble and consumers who order off the site products – such as t-shirts and posters – with those designs printed on them.

An Ohio district court granted summary judgment in favour of Australia-based Redbubble, but in February 2021, that decision was overturned by the US Court of Appeals for the Sixth Circuit, which reasoned that Redbubble plays more than just a transactional role in sales from its site. Redbubble coordinates with third parties for the manufacture and shipping of items ordered on its site, and the shipped packages bear the Redbubble logo.

However, a California jury decision breathed new life into Redbubble's argument in November 2021, when it rejected Atari's claim that Redbubble violated its trademark rights by selling T-shirts with Atari's logo as well as art from Atari video games such as Pong and Centipede printed on them. In media reports, Redbubble's lawyer heralded the jury's decision as a "complete vindication" of his client.

Courts have typically held that online marketplaces such as Etsy are not liable for trademark-infringing goods sold on their platform by third-party vendors because they don't play a role in manufacturing or shipping the items sold by those vendors – unlike print-on-demand sites such as Redbubble, Zazzle, Society6 and CafePress. While third-party sellers often use print-on-demand sites to sell merchandise featuring well-known trademarks, those sites have typically cooperated with brand owners by removing from their site items for which they receive infringement notices. But in these cases, Redbubble has taken a more aggressive stance.

Through litigation over the next couple of years, it should become clearer how much a print-on-demand site must participate in the marketing, manufacture and shipping of an item to be considered an infringer. While Atari has not said publicly whether it intends to challenge the California decision, the Sixth Circuit decision could help it make its argument on appeal. If courts move in the direction of Redbubble's interpretation of trademark law, it could make it much more difficult for brand owners to protect their trademark rights.

For further information on this topic please contact Andrew Avsec at Crowell & Moring LLP by telephone (+1 202 624 2500) or email ([email protected]). The Crowell & Moring LLP website can be accessed at www.crowell.com.