On February 25, 2021, the United States Court of Appeals for the Sixth Circuit handed down a ruling that effectively clarified how the Lanham Act can be applied to direct infringement cases in the context of online marketplaces. In its decision, the Sixth Circuit broadened the scope of its test for direct infringement, holding “use in commerce,” a prerequisite for trademark infringement, can occur in its classic form—through actual product sales—and also through alternative forms such as distribution, advertisement, and the offering of a product for sale. See Ohio State Univ. v. Redbubble, Inc., No. 19-3388, 2021 U.S. App. LEXIS 5610, at *22-24 (6th Cir. Feb. 25, 2021).
The Sixth Circuit’s decision arose out of a March 2019 lawsuit where The Ohio State University (“OSU”) sued Redbubble, alleging, inter alia, Redbubble directly infringed on a number of OSU’s trademarks by selling a variety of products containing OSU’s iconic insignias and school mascot. Ohio State Univ. v. Redbubble, Inc., No. 2:17-cv-1092, 2019 U.S. Dist. LEXIS 53695, at *1 (S.D. Ohio Mar. 29, 2019). Redbubble, a so-called “print-on-demand” online marketplace whose products exhibit user-submitted designs, offers products ranging from tapestries to tank tops, from phone cases to couch cushions, and to many other items in between.
While other online global marketplaces, such as Amazon and eBay, have been able to avoid being held liable for direct trademark infringement due to their hands-off business approaches, the Sixth Circuit has left the door open for Redbubble to be liable for direct infringement due to the amount of oversight it exercises.
The case is Ohio State University v. Redbubble, Inc. (Case No. 19-3388) in the United States Court of Appeals for the Sixth Circuit. The decision can be found at the following link: https://www.opn.ca6.uscourts.gov/opinions.pdf/21a0050p-06.pdf