In the recent case of Hells Angels Motorcycle Corporation v Redbubble, Hells Angels has hunted down and successfully sued the online marketplace Redbubble for trade mark infringement.
In keeping with the mantra of Hells Angels member, Sonny Barge, that “The sun never sets on a Hells Angel patch’’, their organisation brought both copyright and trade mark infringement claims against Redbubble - relating to the use of images of a Hells Angels membership card and registered trade marks, both featuring the clubs famous ‘death’s head’. Redbubble operates a printon demand website, where consumers can browse artwork uploaded to the site by artists, and then apply that artwork to merchandise such as t-shirts, caps and mugs. Redbubble arranges all facets of the transaction and uses a third party to fill the order. Hells Angels Motorcycle Corporation (HAMC US), is the registered owner of Australian trade mark numbers 526530, 723219, 723463, 1257992 and 1257993 – which are used in Australia under an exclusive licence by Hells Angels Australia (HAMC AU). In Australia, to establish trade mark infringement under s.120(1) of the Trade Marks Act, the registered owner must establish that the alleged infringer has used as a trade mark a sign that is substantially identical with, or deceptively similar to, the registered mark in relation to goods or services in respect of which the mark is registered.
One integer of infringement which the court considered in detail was whether Redbubble had used the death’s head sign ‘as a trade mark’. Although Hells Angels failed to establish that the use of images featuring the death’s head had infringed copyright, the Court found that Redbubble had infringed the registered trade marks by using the marks in t-shirt designs. Greenwood J found that the artist who uploaded the work containing the Hells Angels registered trade marks was using the sign “in the sense of a badge of origin of her work and inviting consumers to apply the work in physical relation to the goods for which the relevant marks were registered.” Redbubble was also found to have used the mark as a trade mark by virtue of:
“ … a business model designed to enable users, in Australia (and, for that matter users in all jurisdictions in which the website is accessible), to find images through the website comprised of, in this example, Ms Troen’s image made up of the identified trade marks of HAMC US. Redbubble enables images containing the relevant trade marks to be presented to buyers of particular goods (nominated by the artists from the website categories of those goods to which the work can be applied) expressly for the purpose of facilitating the supply of goods (clothing, in this example) to which the marks are applied. It does so by and through the functions and protocols of the website engaged by Mr Hansen (and other potential viewers of the image), in Australia.”
Redbubble was found to be the supplier of the goods bearing the trade marks as it directly engaged in all facets of the transaction with the consumer. It also supplied the goods to customers with its own name and logo on the goods e.g. a swing tag. Thus, there was a ‘use’ and infringement was established. Despite the infringement finding, only nominal damages were awarded as Redbubble had infringement policies in place and acted swiftly to remove the infringing images once notified. This decision highlights Hells Angels practice of regularly scouring the web and other marketplaces for misuse of its trade marks. It demonstrates the value of investment not only in trade mark protection, but in IP monitoring and enforcement. Would-be infringers are now likely to think twice about ripping off Hells Angels trade marks, knowing the club will protect its patch and pursue them in court.