RedBubble Gets Another Favorable Ruling–YZ Productions v. RedBubble

June 26, 2021 · by · in Copyright, Derivative Liability, E-Commerce, Trademark

Rebecca Zamolo appears to be a YouTuber/influencer who merchandises her brand in multiple ways. She claims that RedBubble users are infringing her IP and counterfeiting her offerings. The complaint includes many images showing the alleged infringements, such as:

The court (another strong opinion by Judge Koh) grants RedBubble’s motion to dismiss many of the claims.

Contributory Copyright Infringement. The legal standard is whether the “Defendant knew or had reason to know of specific acts of infringement,” not just generalized knowledge of infringement (citing, primarily, Luvdarts v AT&T). Thus, the plaintiff’s allegation that it “notified” RedBubble of infringement isn’t good enough to identify specific acts of infringement. The allegation that RedBubble had “specific knowledge” of the goods offered on its site was too conclusory.

Contributory Trademark Infringement. The legal standard is whether the defendant “(1) knew of acts of direct infringement, and (2) exercised the requisite level of control over the means of infringement.” The court says “Plaintiff does not allege that Defendant had contemporary knowledge of which particular postings on Defendant’s website infringed upon Plaintiff’s trademarks.”

Trade Dress. “Plaintiff fails to list the concrete elements that constitute the alleged trade dress.” Photos in the complaint aren’t enough.

Unfair Competition. The court applies the standard 3-part test for Section 230:

  • ICS Provider. The plaintiff alleges RedBubble is an “ecommerce system” and that’s close enough to an ICS provider. Cite to Joseph v. Amazon.
  • Publisher/Speaker. The plaintiff alleges that RedBubble facilitates online transactions, and that’s close enough to La Park La Brea v. Airbnb.
  • Third-Party Content. The plaintiff alleges that third-party users created storefronts to sell the offending items.

The plaintiff alleged that RedBubble should lose Section 230 because it provides various e-commerce support services to its merchants and takes a cut. The court disagrees, citing Free Kick Master and La Park La Brea. The court sidestepped some obviously conflicting precedent, including the Bolger and Loomis cases.

The court will let the plaintiff amend the complaint, and it appears the plaintiff can add some new facts to the complaint. So I look forward to blogging the ruling on the next motion to dismiss. It appears RedBubble did not try to dismiss the direct copyright and direct trademark claims, so we have yet to hear the court’s thoughts about those. Still, this is a good ruling for RedBubble, which appears to be having more success in court than some of its print-on-demand rivals.

Case citation: YZ Productions, Inc. v. RedBubble, Inc., 2021 WL 2633552 (N.D. Cal. June 24, 2021)

Related posts:

* IP Lawsuits Against Print-on-Demand Vendors Continue to Vex the Courts–OSU v. Redbubble & More
* Another Tough Ruling for Print-on-Demand Vendors–Sid Avery v. Pixels
* Print-on-Demand Vendor Doesn’t Qualify for DMCA Safe Harbor–Feingold v. RageOn
* CreateSpace Isn’t Liable for Publishing Allegedly Infringing Uploaded Book–King v. Amazon
* More Evidence That Print-on-Demand Vendors May Be Doomed–Greg Young Publishing v. Zazzle
* Section 230 Doesn’t Protect Print-on-Demand Vendor–Atari v. Sunfrog
* Online Marketplace Defeats Trademark Suit Because It’s Not the “Seller”–OSU v. Redbubble
* Zazzle Loses Copyright Jury Verdict, and That’s Bad News for Print-on-Demand Publishers–Greg Young Publishing v. Zazzle
* Trademark Injunction Issued Against Print-on-Demand Website–Harley Davidson v. SunFrog
* DMCA Safe Harbor Doesn’t Protect Zazzle’s Printing of Physical Items–Greg Young Publishing v. Zazzle
* CafePress May Not Qualify For 512 Safe Harbor – Gardner v. CafePress
* Cafepress Suffers Potentially Significant Trademark Loss for Users’ Uploaded Designs
* Life May Be “Rad,” But This Trademark Lawsuit Isn’t–Williams v. CafePress.com
* Print-on-Demand “Publisher” Isn’t Liable for Book Contents–Sandler v. Calcagni
* Griper Selling Anti-Walmart Items Through CafePress Doesn’t Infringe or Dilute–Smith v. Wal-Mart
* CaféPress Denied 230 Motion to Dismiss–Curran v. Amazon