Y.Y.G.M. Sa v. Redbubble, Inc.
75 F.4th 995
9th Cir.2023Background
- Brandy Melville owns registered trademarks including the Heart Mark (used on clothing, stickers, home décor) and the Lightning Mark (used on apparel).
- Redbubble operates an online print-on-demand marketplace: third-party artists upload designs, Redbubble processes orders and fulfillment is handled by third parties; Redbubble does not inspect goods before shipping.
- In 2018 Brandy Melville notified Redbubble of infringing listings; Redbubble removed those listings; Brandy Melville sued about a year later.
- A jury found Redbubble liable for willful contributory counterfeiting (Heart and Lightning Marks) and contributory infringement (both registered and some unregistered variations); the district court granted JMOL to Redbubble on the Heart Mark counterfeiting claim and denied a permanent injunction, attorney fees, and prejudgment interest.
- Both parties appealed. The Ninth Circuit addressed (1) the knowledge standard for contributory trademark liability, (2) the Heart Mark counterfeiting JMOL, (3) entitlement to a permanent injunction and attorney fees, and (4) whether prejudgment interest is available on statutory damages.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| 1) Standard for contributory trademark liability ("knows or has reason to know") | Brandy Melville: specific knowledge of particular infringing listings not required; a duty to take reasonable corrective action arises from general awareness | Redbubble: willful blindness must involve knowledge of specific infringers or instances | Held: Willful blindness requires knowledge of specific infringers or instances; vacated and remanded for reconsideration under that standard |
| 2) JMOL on contributory counterfeiting for the Heart Mark (product similarity requirement) | Brandy Melville: need only show use of the mark on goods of the type for which the mark is registered; not stitch-for-stitch copies | Redbubble: counterfeiting requires comparison of whole product; must be substantially indistinguishable replicas | Held: District court erred by imposing a stitch-for-stitch standard and failing to assess whether the mark alone could cause confusion; vacated JMOL and willfulness finding and remanded |
| 3) Permanent injunction and effect of pre‑litigation delay on irreparable harm | Brandy Melville: one-year pre-suit delay does not necessarily rebut the statutory presumption of irreparable harm; jury verdict and testimony support future harm/loss of control | Redbubble: delay undercuts irreparable harm; presumption rebutted | Held: District court abused its discretion in finding the presumption rebutted and discounting future harm; denial of injunction vacated and remanded for reconsideration |
| 4) Prejudgment interest on statutory damages (§1117) | Brandy Melville: §1117(a) is the general remedial provision and permits prejudgment interest even after electing statutory damages under §1117(c) | Redbubble: statutory damages under §1117(c) displace §1117(a) relief; §1117(b) expressly provides prejudgment interest but (c) does not | Held: Affirmed—prejudgment interest is not available on statutory damages under §1117(c); denial affirmed |
Key Cases Cited
- Inwood Lab’ys, Inc. v. Ives Lab’ys, Inc., 456 U.S. 844 (U.S. 1982) (foundational statement of contributory trademark liability)
- Luvdarts, LLC v. AT&T Mobility, LLC, 710 F.3d 1068 (9th Cir. 2013) (willful blindness requires deliberate steps to avoid specific knowledge)
- Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) (general knowledge of counterfeits on a platform is insufficient; need contemporary knowledge of particular listings)
- Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144 (4th Cir. 2012) (contributory liability requires notice of identified infringing individuals/listings)
- 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013) (defendant may be liable when it knows of a specific infringing practice and can stop it without affecting legitimate conduct)
- Arcona, Inc. v. Farmacy Beauty, LLC, 976 F.3d 1074 (9th Cir. 2020) (likelihood-of-confusion requires reviewing the product as a whole; strong marks may confuse even on different products)
- AK Futures LLC v. Boyd Street Distro, LLC, 35 F.4th 682 (9th Cir. 2022) (Lanham Act presumption of irreparable harm and evaluation of infringer’s ability to control future conduct)
- eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (U.S. 2006) (four-factor test for permanent injunctions)
- Bittner v. United States, 143 S. Ct. 713 (U.S. 2023) (expressio unius canon cited regarding statutory text differences)