Life May Be “Rad,” But This Trademark Lawsuit Isn’t–Williams v.

By Eric Goldman

Williams v. Life’s Rad, 2010 U.S.Dist. LEXIS 46763 (N.D. Cal. May 12, 2010)

This lawsuit bummed me out. The trademark at issue–the surfing-inspired “Life’s Rad”–is supposed to lift people up, but it’s hard to maintain a sunny outlook once the lawyers take over. It reminds me of other hippie-dippy icons that have been the basis of IP legal battles, such as the “Keep on Truckin'” logo, color designs for tie-dye shirts (Banzai v. Broder) and the smiley face. IP lawsuits like these really harsh my mellow.

Both Life’s Rad and “Life is Rad” (Williams’ offering of radiology-related apparel–get it?!) sell merchandise via CafePress, which means they both agreed to CafePress’ user agreement. [An aside: does anyone still use the slang “rad” any more? I thought it died out with “bitchin,” “tubular” and “grody.”] Life’s Rad sent a takedown notice to CafePress, which CafePress honored. Life’s Rad seems a little thin-skinned here given its trademark’s significant contextual distance from radiology-themed schwag. Further, perhaps CafePress should not have been quite so trigger-happy, although their position is understandable in light of trademark’s amorphous boundaries. Williams protested the takedown to no avail and then sued both Life’s Rad and CafePress. Williams proceeded pro se. In this ruling, CafePress exits the lawsuit.

Williams tried several of the typical legal arguments that customers trot out when vendors terminate them, such as due process violations (nope–no state action), unfair competition (no–CafePress just exercised its rights under its user agreement) and interference with prospective economic advantage (the court calls that “frivolous”). I haven’t pulled the filings to see if CafePress argued 230(c)(2), but that also should have been a possibility.

Williams also tried some unusual legal twists. He argued that CafePress violated the DMCA put-back provisions (17 USC 512(g)). This is misguided on several fronts. First, 512 only applies to copyright, not trademark. Second, CafePress’ user agreement authorized its takedown. Third, Williams did not send a proper 512(g)(3) putback request. Fourth (a point the court doesn’t note), 512(g) is an option available to a service provider to minimize its liability, not a mandatory requirement to put back content at the user’s request.

Williams also claimed that CafePress’ takedown violated his trademark rights. The court tosses this aside because (1) Williams didn’t claim a trademark in “Life is Rad,” (2) CafePress’ user agreement authorized the takedown, and (3) “Plaintiff has not identified (nor has the Court been able to identify) any provision of the Lanham Act that restricts an internet service provider’s discretion to remove items from its website as a result of any third party party claim of trademark infringement.”

This is a great win for CafePress, especially because the court implicitly upholds CafePress’ user agreement. Further, this ruling is yet another data point showing that vendors have a lot of discretion to take down their users’ offerings without fear of liability to the user. Among other cases in this line: Mehmet v. Add2Net, Estavillo v. Sony and the various Google de-indexing lawsuits (KinderStart, Langdon). See also my 2005 article on virtual world provider discretion to terminate customers.

Some other blog posts on CafePress-related litigation:

* Connecticut Blogger Not Subject to Texas Jurisdiction–Healix Infusion v. Helix Health

* Griper Selling Anti-Walmart Items Through CafePress Doesn’t Infringe or Dilute–Smith v. Wal-Mart

* Caf├ęPress Denied 230 Motion to Dismiss–Curran v. Amazon