In this case, these are two copyrighted photos that users have sent to RageOn's print-on-demand service. RageOn relied, among other things, on the safe haven of DMCA. In the Greg Young v. Zazzle case, it was found that Zazzle qualified for safe haven 512 (c) to display user-provided photos on its website, but not for the manufacture and shipping of the physical items containing the photos . This court says that RageOn has been disqualified from DMCA for some of the safe harbor elements.
The court said RageOn had received financial benefits from the sale of the items. It also had the necessary “right and ability to control the violations” as “RageOn is an online retailer. Common sense dictates that RageOn had the right and ability to control what it sold. “The legal distinction between an online marketplace and a retailer is the source of significant litigation. If you call it "common sense", it clumsily bypasses the nuance.
The court also says that RageOn did not remove violating "goods" as soon as possible. It is not clear whether the court only refers to the online photos or the actual printed goods (which, as the Zazzle court said, were not covered by the DMCA at all). RageOn promised 24-hour response times, but admitted that removing the items took 18-23 days. The court says that the processing time of more than 18 days is not quick.
The case deals with damages and attorney fees. Despite the bad news for defense, there is a tiny chance that the case will lay the foundation for a future defense gain if other courts interpret it as safe DMCA ports in addition to online photos for physical goods.
Case Quote: Fine Gold vs. RageOn, Inc., 2020 WL 4003152 (SDNY July 15, 2020)
BONUS COVERAGE: YYGM SA v Redbubble Inc., 2020 WL 3984528 (C. D. Cal. July 10, 2020). This judgment complements the Ohio State judgment against RedBubble. The court agrees that RedBubble is not directly infringing the brand because it does not "use" the brand. The court said: “The service fee that Redbubble charges for transactions through its website is unrelated to the price of the goods sold. Such a fee-based business model almost shows the role of a service provider instead of a seller as a seller always adjusting its price to the value of the goods in question. "
However, the Ohio state ruling did not refer to a contributing trademark infringement, and this court sends the matter to the jury. Unlike Tiffany v eBay, which was a legitimate resale of Tiffany items, the court said: “Redbubble is not burdened by the need to distinguish valid uses of Brandy Melville's brands from invalid ones, as Brandy Melville Redbubble clearly has made there is no legitimate sale of Brandy Melville products through its website. All uses of Brandy Melville's brands appearing on the Redbubble website are believed to violate these terms. "I doubt that the court is so bare as it disregards parodies, nominative uses, and other legitimate activities. Similarly, the plaintiff complained that RedBubble did not disable the search for internal consumer keywords for its brands has, however, this does not appear to be an exclusive right for the trademark owner in view of MTM against Amazon
The court summarizes:
A company like Redbubble could hypothetically maintain a state of "willful blindness" simply by understaffing its organization for market integrity relative to the amount of content on its website. This would enable such a company to claim at the same time that its employees have done everything in their limited power to prevent the sale of non-compliant products while generating substantial revenue from the numerous sales, that they couldn't achieve. However, whether this is the case here or not is a question of the jury.
The court denies the representative trademark infringement claims because RedBubble has no agency relationship with its providers. However, the court also sends the counterfeiting suit to the jury.
* CreateSpace is not responsible for the publication of allegedly infringing uploaded books – King v. Amazon
* More evidence that print-on-demand providers might fail – Greg Young Publishing vs. Zazzle
* Section 230 does not protect print-on-demand providers – Atari v. Sunfrog
* Online marketplace defeats brand suit because it is not the "seller" – OSU vs. Redbubble
* Zazzle loses jury verdict and that's bad news for print-on-demand publishers – Greg Young Publishing vs. Zazzle
* Action for injunctive relief against print-on-demand website – Harley Davidson against SunFrog
* DMCA Safe Harbor does not protect Zazzle's physical print – Greg Young Publishing against Zazzle
* CafePress may not qualify for 512 Safe Harbor – Gardner v. CafePress
* Cafepress is suffering from potentially significant brand loss for user uploaded designs
* Life may be "rad", but this trademark lawsuit is not – Williams v. CafePress.com
* Print-on-Demand "Publisher" is not liable for book content – Sandler v. Calcagni
* Griper, who sells, does not hurt or dilute anti-Walmart items through CafePress – Smith vs. Wal-Mart
* CaféPress denied 230 rejection application – Curran v Amazon