The Ohio State Univ. v. Redbubble, Inc.
989 F.3d 435
| 6th Cir. | 2021Background
- Redbubble operates a print-on-demand online marketplace where ~600,000 independent artists upload images; orders trigger Redbubble to arrange third‑party manufacture and shipping. Packages and tags often bear Redbubble branding, and Redbubble markets products as “Redbubble products/garments.”
- The Ohio State University (OSU) discovered third‑party listings on Redbubble using OSU trademarks and Urban Meyer’s likeness, sent cease‑and‑desist notices, and Redbubble requested more specific identifiers (URLs); the listings remained live.
- OSU sued Redbubble (Dec. 2017) asserting direct trademark infringement and counterfeiting under the Lanham Act and Ohio’s right‑of‑publicity statute (Urban Meyer’s assigned publicity right).
- The district court granted summary judgment for Redbubble, treating it as a passive transactional intermediary (like Amazon/eBay) and concluding OSU failed to show Redbubble ‘‘used’’ the marks under the Lanham Act. The court declined to analyze Ohio’s statute separately.
- On appeal the Sixth Circuit held OSU forfeited/waived any vicarious‑liability theory (so it would not consider it), reversed the district court for applying an overly narrow Lanham Act/Ohio statute analysis as to direct liability, and remanded for factfinding on Redbubble’s role and control over product creation, branding, and fulfillment.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether Redbubble "used" OSU trademarks in commerce under the Lanham Act (direct liability) | Redbubble creates, markets, and sells products bearing OSU marks (products come into being only when ordered; packages/tags bear Redbubble), so it "uses" the marks and is directly liable. | Redbubble is a passive marketplace like Amazon/eBay; it does not design, take title to, or directly place marks on goods, so it cannot be a direct infringer. | Reversed district court: the Lanham Act was applied too narrowly; Redbubble's deeper integration with product creation/branding may constitute "use" — remand for factfinding. |
| Whether OSU preserved a vicarious‑liability Lanham Act theory on appeal | (Argued on appeal) OSU's factual allegations and briefing put Redbubble on notice of agency/vicarious theories. | Redbubble: OSU never pled or argued vicarious (Grubbs) or contributory liability below; the argument is forfeited/waived. | Held forfeited/waived: appellate court declines to consider vicarious liability because OSU failed to preserve it below. |
| Whether Redbubble violated Ohio's right‑of‑publicity statute by using Urban Meyer’s persona for commercial purpose | Redbubble markets and sells products identified as Redbubble products bearing Meyer’s likeness; Ohio law forbids use of a persona in connection with products/advertising. | Redbubble says it is a passive platform and courts require affirmative exploitation or editorial control for publicity liability. | Reversed district court on Ohio law: statute’s plain language covers use in connection with products/advertising; Redbubble’s model may fall within that scope — remand. |
| Whether summary judgment for Redbubble was proper | OSU: district court misapplied the statutes and record shows Redbubble more than a passive facilitator. | Redbubble: existing record supports summary judgment; OSU waived further fact development. | Remanded: factual record is insufficient to resolve direct‑use claims; further factfinding is needed on contracts, control over manufacture/branding, and likelihood of confusion/defenses. |
Key Cases Cited
- Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930 (9th Cir. 2015) (online marketplace not directly liable where it clearly labels third‑party sellers and does not present goods as its own)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (marketplace platform not directly liable where listings identify independent sellers and platform does not imply affiliation)
- Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 F.3d 377 (6th Cir. 2006) (retailer can be liable for selling infringing goods even if it did not manufacture them)
- Grubbs v. Sheakley Grp., Inc., 807 F.3d 785 (6th Cir. 2015) (vicarious Lanham Act liability requires agency/partnership or control to bind the seller)
- Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982) (contributory trademark liability arises where a supplier intentionally induces or continues to supply to a known infringer)
- Almeida v. Amazon.com, Inc., 456 F.3d 1316 (11th Cir. 2006) (no publicity‑right liability where platform’s display of third‑party book covers is incidental and not editorially controlled)
- POM Wonderful LLC v. Coca‑Cola Co., 573 U.S. 102 (2014) (Lanham Act reaches misleading advertising/labeling "in connection with" commerce)
- Bird v. Parsons, 289 F.3d 865 (6th Cir. 2002) (selling domain names does not constitute placing trademarks on goods; distinct limits on "use")
- H‑D U.S.A., LLC v. SunFrog, LLC, 311 F. Supp. 3d 1000 (E.D. Wis. 2018) (print‑on‑demand defendant that printed infringing marks found liable under the Lanham Act)
- Ohio State Univ. v. Skreened Ltd., 16 F. Supp. 3d 905 (S.D. Ohio 2014) (printing and offering for sale items bearing Meyer’s likeness violates Ohio publicity rights)