The Ohio State Univ. v. Redbubble, Inc.

RECOMMENDED FOR PUBLICATION

Pursuant to Sixth Circuit I.O.P. 32.1(b)

File Name: 21a0050p.06

UNITED STATES COURT OF APPEALS

FOR THE SIXTH CIRCUIT

┐

THE OHIO STATE UNIVERSITY,

│

Plaintiff-Appellant, │

> No. 19-3388

│

v. │

│

REDBUBBLE, INC., │

Defendant-Appellee. │

┘

Appeal from the United States District Court

for the Southern District of Ohio at Columbus.

No. 2:17-cv-01092—Algenon L. Marbley, District Judge.

Argued: March 12, 2020

Decided and Filed: February 25, 2021

Before: GRIFFIN, WHITE, and NALBANDIAN, Circuit Judges.

_________________

COUNSEL

ARGUED: Michael J. Hendershot, OFFICE OF THE OHIO ATTORNEY GENERAL,

Columbus, Ohio, for Appellant. Kenneth B Wilson, COASTSIDE LEGAL, Half Moon Bay,

California, for Appellee. ON BRIEF: Michael J. Hendershot, Benjamin M. Flowers, OFFICE

OF THE OHIO ATTORNEY GENERAL, Columbus, Ohio, for Appellant. Kenneth B Wilson,

COASTSIDE LEGAL, Half Moon Bay, California, Gerhardt A. Gosnell II, JAMES E.

ARNOLD & ASSOCIATES, LPA, Columbus, Ohio, Joshua M. Masur, ZUBER LAWLER &

DEL DUCA LLP, Redwood City, California, for Appellee. David H. Bernstein, DEBEVOISE

& PLIMPTON LLP, New York, New York, Paul D. Clement, KIRKLAND & ELLIS LLP,

Washington, D.C., Joseph C. Gratz, Samuel J. Zeitlin, DURIE TANGRI LLP, San Francisco,

California, Jef Pearlman, UNIVERSITY OF CALIFORNIA GOULD SCHOOL, Los Angeles,

California, for Amici Curiae.

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 2

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OPINION

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NALBANDIAN, Circuit Judge. Online shopping has transformed American life. Gone

is the heyday of shopping malls and in-person retail. Instead, Americans increasingly choose to

make purchases online. Although digital marketplaces may not require the same type of upkeep

and maintenance as brick-and-mortar businesses, someone still manages them. This case

concerns the responsibilities of companies that operate marketplaces facilitating online

transactions between consumers and vendors.

The prime example of the modern digital marketplace is Amazon.com, Inc. Amazon

operates a website where, among other things, third-party vendors sell their goods to consumers.

Because Amazon’s marketplace operates as a neutral intermediary between consumers and

third-party vendors, courts have typically not found it liable for trademark-infringing goods

sold through its platform. See, e.g., Multi Time Mach., Inc. v. Amazon.com, Inc., 804 F.3d 930,

938–39 (9th Cir. 2015); Milo & Gabby, LLC v. Amazon.com, Inc., No. C13-1932RSM, 2015 WL

4394673, at *6 (W.D. Wash. July 16, 2015). This case turns on whether Redbubble, Inc., an

Australia-based online retailer, enjoys similar immunity from trademark-infringement claims

arising from products displayed on and sold through its digital marketplace. The Ohio State

University (OSU) argues that Redbubble’s marketplace model differs from those used by

Amazon, eBay, and other passive e-commerce facilitators. So OSU alleges that Redbubble

violated the Lanham Act and Ohio’s right-of-publicity statute because it acted less like a hands-

off intermediary and more like a company that creates knock-off goods. Because Redbubble’s

marketplace involves creating Redbubble products and garments that would not have existed but

for Redbubble’s enterprise, we find that the district court erred by entering summary judgment

for Redbubble under an overly narrow reading of the Lanham Act. Thus, we REVERSE and

REMAND.

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 3

I.

Redbubble operates an online marketplace with a global reach. This marketplace is

large—around 600,000 artists use the website, and over $100 million in sales has flowed through

Redbubble’s platform. Products for sale on Redbubble’s website include apparel, wall art, and

other accessories emblazoned with an image selected by a consumer. Independent artists, not

employed by Redbubble, upload images onto Redbubble’s interface. Consumers then scroll

through those uploaded images and place an order for a customized item.

Once a consumer places a purchase on its website, Redbubble automatically contacts the

artist and arranges the manufacturing and shipping of the product with independent third parties.

So Redbubble never takes title to any product shown on its website. And Redbubble does not

design, manufacture, or handle these products. But the shipped packages bear its logo, and

Redbubble handles customer service duties such as returns.

Aside from managing the website, Redbubble plays a larger role in overseeing and

executing sales made on its marketplace. For example, Redbubble helps market products listed

on its website. And it markets those goods as Redbubble products to consumers; for instance, it

provides instructions on how to care for “Redbubble garments.” (R. 39-1, Shook Aff., PageID

631.) When customers receive goods from Redbubble’s marketplace, they often arrive in

Redbubble packaging and contain Redbubble tags. And if there are excess goods, Redbubble has

the right to dispose of those items.

In short, independent artists can have goods displaying their artwork and images

advertised, manufactured, and sold by using Redbubble’s platform. OSU argues that Redbubble

is responsible for trademark-infringing products sold on Redbubble’s marketplace. Neither party

disputes that some of Redbubble’s artists uploaded trademark-infringing images, that these

images appeared on Redbubble’s website, or that consumers paid Redbubble to receive products

bearing images trademarked by OSU. Instead, they dispute whether Redbubble is liable for

trademark infringement because of its role in managing the marketplace.

OSU’s licensing program has generated over $100 million in the last seven years. To

protect its trademarks, OSU carries out a “strict oversight of licensed products.” (Appellant Br.

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 4

at 7.) While conducting this oversight in 2017, OSU discovered products on Redbubble’s

marketplace that displayed OSU’s trademarked images without approval. So OSU sent

Redbubble a cease-and-desist letter.

In response, Redbubble asked OSU to “specifically identify each infringing design.”

(R. 24-6, Ex. F, PageID 549.) Redbubble’s user agreement states that trademark holders, and not

Redbubble, bear the burden of monitoring and redressing trademark violations. Redbubble also

told OSU that it needed more information about which designs violated OSU’s trademarks. So

OSU sent Redbubble a letter containing photos of nine offending items. But Redbubble told

OSU that pictures weren’t enough to identify the offending products, asking for URLs or other

identifying information. After this, communication halted between the parties. In the end,

Redbubble did not remove the offending products from its website.

After the communication breakdown, OSU sued Redbubble in December 2017.

It brought claims alleging trademark infringement, counterfeiting, and unfair competition under

the Lanham Act, as well as Ohio’s right-of-publicity law. The parties cross-moved for summary

judgment, and the district court entered summary judgment for Redbubble. According to the

district court, Redbubble did not “use” OSU’s trademarked images in operating its business

model under the Lanham Act because it only acted as a “transactional intermediary” between

buyers, sellers, manufacturers, and shippers. (R. 48, Op. & Order, PageID 922–28.) And

because OSU had argued that Redbubble met “the ‘use’ requirement under state law for the same

reasons Redbubble [met] the ‘use’ requirement under federal law,” the district court declined to

address Redbubble’s argument that Ohio’s right-of-publicity statute creates a stricter use

standard. (Id. at 929.) OSU’s arguments failed even “under the more lenient federal definition.”

(Id.) OSU now appeals, arguing that the lower court incorrectly interpreted the Lanham Act and

Ohio law by entering summary judgment for Redbubble.

II.

We review a district court’s grant of summary judgment de novo. Miles v. S. Cent.

Human Res. Agency, 946 F.3d 883, 887 (6th Cir. 2020). Summary judgment is appropriate “if

the movant shows that there is no genuine dispute as to any material fact and the movant is

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 5

entitled to judgment as a matter of law.” FED. R. CIV. P. 56(a). This standard of review remains

the same for reviewing cross-motions for summary judgment. United States S.E.C. v. Sierra

Brokerage Servs., Inc., 712 F.3d 321, 327 (6th Cir. 2013). When both parties move for summary

judgment below, this Circuit does not assume that “the parties consent to resolution of the case

on the existing record or that the district court is free to treat the case as if it was submitted for

final resolution on a stipulated record.” Taft Broad. Co. v. United States, 929 F.2d 240, 248 (6th

Cir. 1991) (quoting John v. Louisiana (Bd. of Trustees for State Colleges and Univs.), 757 F.2d

698, 705 (5th Cir. 1985)). In short, a case involving cross-motions for summary judgment

requires “evaluat[ing] each party’s motion on its own merits, taking care in each instance to draw

all reasonable inferences against the party whose motion is under consideration.” EMW

Women’s Surgical Ctr., P.S.C. v. Beshear, 920 F.3d 421, 425 (6th Cir. 2019) (quoting McKay v.

Federspiel, 823 F.3d 862, 866 (6th Cir. 2016)).

III.

OSU asserts two claims against Redbubble: (1) a Lanham Act violation for use of OSU’s

trademarks without permission; and (2) a violation of Ohio’s right-of-publicity law for use of the

persona of Urban Meyer, OSU’s former employee.

The Lanham Act creates a cause of action against any person who, without the consent of

the trademark owner, either:

(a) [U]se[s] in commerce any reproduction, counterfeit, copy, or colorable

imitation of a registered mark in connection with the sale, offering for sale,

distribution, or advertising of any goods or services on or in connection with

which such use is likely to cause confusion, or to cause mistake, or to deceive; or

(b) “reproduce[s], counterfeit[s], cop[ies], or colorably imitate[s] a registered

mark and appl[ies] such reproduction, counterfeit, copy, or colorable imitation to

labels, signs, prints, packages, wrappers, receptacles or advertisements intended to

be used in commerce upon or in connection with the sale, offering for sale,

distribution, or advertising of goods or services on or in connection with which

such use is likely to cause confusion, or to cause mistake, or to deceive.

15 U.S.C. § 1114(1). And OSU asserts that Redbubble directly infringed OSU’s trademarks

under the Act because Redbubble’s role in operating its online marketplace meets the statutory

definition of using a trademark in commerce without owner approval.

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 6

Parties may also be vicariously liable under the Lanham Act even if they do not directly

“use” the trademark to sell or advertise a product. “This Circuit allows plaintiffs to hold

defendants vicariously liable for trademark infringement under the Lanham Act when the

defendant and the infringer have an actual or apparent partnership, have authority to bind one

another in transactions, or exercise joint ownership or control over the infringing product.”

Grubbs v. Sheakley Grp., Inc., 807 F.3d 785, 793 (6th Cir. 2015). So OSU also claims that

Redbubble meets the Grubbs test for vicarious liability because the vendors operating on its site

act as Redbubble’s agents.1

Independent of these federal trademark violations, Ohio’s right-of-publicity statute

provides a cause of action for using an “aspect of an individual’s persona for a commercial

purpose.” OHIO REV. CODE § 2741.02(A). The statute defines commercial purpose as:

[T]he use of or reference to an aspect of an individual’s persona in any of the

following manners:

(1) On or in connection with a place, product, merchandise, goods, services, or

other commercial activities not expressly exempted under this chapter;

(2) For advertising or soliciting the purchase of products, merchandise, goods,

services, or other commercial activities not expressly exempted under this

chapter;

(3) For the purpose of promoting travel to a place;

(4) For the purpose of fundraising.

Id. § 2741.01(B). Citing the statute, OSU alleges that Redbubble unlawfully sold products

bearing the image of Urban Meyer, OSU’s former head football coach. And because Urban

Meyer had assigned his publicity right to the school,2 OSU claims that Redbubble infringed on

1OSU fails to mention that there are two types of secondary liability under the Lanham Act: vicarious

trademark infringement and contributory trademark infringement. The Supreme Court described contributory

infringement, stating, “if a manufacturer or distributor intentionally induces another to infringe a trademark, or if it

continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement,

the manufacturer or distributor is contributorially responsible for any harm done as a result of the deceit.” Inwood

Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 854 (1982). This differs from the agency-law-based vicarious Lanham

Act liability test that this Circuit adopted in Grubbs. But both have elements that differ from direct Lanham Act

liability. Because OSU does not raise a contributory infringement argument, we decline to consider the merits of a

potential claim under that framework. (See Appellant Br. at 51–52 (“It is true that Ohio State did not allege

contributory infringement . . . .”).)

2Publicity rights are assignable under Ohio Revised Code section 2741.04.

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 7

OSU’s rights in violation of Ohio’s right-of-publicity statute by permitting the commercial sale

of goods displaying Urban Meyer’s likeness on Redbubble’s platform. In sum, OSU argues that

the district court wrongly entered summary judgment for Redbubble on both claims.

IV.

Before addressing the merits of OSU’s arguments, we first address Redbubble’s

argument that OSU did not preserve its theory that Redbubble could be vicariously liable under

the Lanham Act. Asserting that neither OSU’s motion for summary judgment nor its complaint

mentioned vicarious Lanham Act liability, Redbubble argues that OSU may not rely on that

theory for the first time on appeal. And we agree.

“This court does not ordinarily address new arguments raised for the first time on

appeal.” Mich. Bell Tel. Co. v. Strand, 305 F.3d 580, 590 (6th Cir. 2002). When barred, those

claims are either forfeited or waived—the former is a party’s “failure to make the timely

assertion of a right” while the latter “is the intentional relinquishment or abandonment of a

known right.” United States v. Petlechkov, 922 F.3d 762, 767 (6th Cir. 2019) (quoting United

States v. Olano, 507 U.S. 725, 733 (1993)). Sometimes the difference between waiver and

forfeiture matters. For instance, forfeiture “does not extinguish an ‘error’ under [Federal Rule of

Civil Procedure] 52(b).” Olano, 507 U.S. at 733. Redbubble doesn’t specify whether OSU

waived or forfeited its vicarious-liability argument, and its briefing implicates both doctrines.

First, Redbubble emphasizes the lack of vicarious-liability argumentation below—a

forfeiture argument. Redbubble asserts that OSU failed to allege or even discuss vicarious or

agent liability before the district court, and it argues that OSU’s citations to support vicarious

liability appeared for the first time on appeal. And it insists that OSU is foreclosed from arguing

vicarious trademark liability given OSU’s decision to focus on Redbubble’s actions (as opposed

to the actions of the third-party vendors using Redbubble’s marketplace) and OSU’s failure to

mention agency, partnership, or the Grubbs test before appealing.

And because a “plaintiff’s complaint . . . ‘must contain either direct or inferential

allegations with respect to all material elements necessary to sustain a recovery under some

viable legal theory,’” Bickerstaff v. Lucarelli, 830 F.3d 388, 396 (6th Cir. 2016)

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 8

(quoting Weisbarth v. Geauga Park Dist., 499 F.3d 538, 541 (6th Cir. 2007)), the fact that

neither OSU’s complaint nor its motion for summary judgment discussed vicarious liability

strongly supports Redbubble’s position. OSU simply did not argue that Redbubble should be

vicariously liable under the Lanham Act under the principles of “basic agency law” and the

Grubbs test that govern such claims. (Appellant Br. at 38.) And because direct trademark

infringement and vicarious trademark infringement require proving different elements, OSU

cannot now argue that it preserved its vicarious-liability arguments in sections of its complaint

that discuss direct Lanham Act liability. See Bickerstaff, 830 F.3d at 396.

On top of this negative evidence, Redbubble offers affirmative statements from OSU

showing that OSU purposefully opted not to pursue vicarious trademark-infringement claims

below. This looks more like a waiver argument. And we agree with Redbubble that the record

shows that OSU (1) knew the difference between direct and vicarious trademark infringement

liability and (2) actively chose to pursue only a direct infringement claim. For instance, OSU’s

motion for summary judgment relies on the distinction between “contributory trademark

infringement” and “direct trademark infringement” to distinguish its claim from contributory

trademark claims, which suggests OSU recognized an available legal argument and decided not

to pursue it—a classic example of waiver. (R. 17, Mot. Summ. J., PageID 107.)

Although OSU concedes that it did not use the term vicarious liability below, it contends

that it preserved its vicarious-liability claims because (1) the vicarious-liability argument is “a

new facet of [its] consistent claim,” (2) its summary judgment motion touched on a vicarious-

liability theory without using those “magic words,” (3) its complaint and motion for summary

judgment informed Redbubble about the claim’s factual basis, and (4) failure to make an

argument below is not always fatal to raising it on appeal. (Appellant Reply Br. at 23–24.)

We address OSU’s responses in turn.

To start, OSU paints its vicarious Lanham Act theory as “a new facet of [its] consistent

claim.” (Id. at 23.) And it claims that the fact that its complaint only alleged that Redbubble

alone “was responsible for the advertising, manufacture, and sale of infringing products” was an

excusable mistake because it didn’t know about Redbubble’s relationship with third-party

vendors. (Id. (emphasis omitted).) Yet nothing stopped OSU from asserting vicarious-liability

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 9

claims in the complaint or attempting to amend its complaint once it learned more about

Redbubble’s marketplace. Grubbs and other cases describing vicarious Lanham Act liability

existed before this litigation, and Redbubble’s business plan was easily ascertainable.

Furthermore, OSU admits that vicarious Lanham Act liability has different elements than direct

Lanham Act liability, so OSU’s vicarious liability theory is plainly not an offshoot of the direct

Lanham Act claim it raised below.

Next, OSU argues that it touched on vicarious-liability arguments below enough to avoid

forfeiture. (Appellant Br. at 52 (“But Ohio State did argue for vicarious liability . . . .”).) And it

offers pages 601–03 and 610–11 in its summary judgment reply as evidence. But OSU only

discussed Redbubble’s dealings with third-party vendors—it never articulated a legal claim for

vicarious liability. (See generally R. 39, Pl’s. Memo. Opp. Summ. J, PageID 594–605 (focusing

on Redbubble’s use of OSU’s trademarks and not its partner-agent relationship with vendors

using Redbubble’s online marketplace).) So the record belies OSU’s argument.

OSU next asserts that failure to invoke the magic words of “vicarious liability” neither

waives nor forfeits the argument because Redbubble was “‘informed’ of the ‘factual basis for the

claim’” given the facts in OSU’s complaint and its Lanham Act argument. (Appellant Reply Br.

at 24 (quoting Johnson v. City of Shelby, 574 U.S. 10, 12 (2014)). In Johnson, the Supreme

Court clarified that cases should not be dismissed because of an “imperfect statement of the legal

theory supporting the claim asserted.” 574 U.S. at 11. But Johnson involved pleadings at the

motion to dismiss stage. See Alexander v. Carter for Byrd, 733 F. App’x 256, 265 (6th Cir.

2018). And this Circuit has refused to apply Johnson to summary judgment cases. Id. Even so,

OSU argues that this panel should reach the merits of its vicarious-liability Lanham Act claim

because “parties are not limited to the precise arguments they made below.” Yee v. City of

Escondido, 503 U.S. 519, 534 (1992). And it’s true that this Circuit has discretion to review

claims and arguments made for the first time on appeal. But we exercise our “discretion to

entertain issues not raised before the district court ‘[o]nly in exceptional cases’ or when

application of the rule would produce a ‘plain miscarriage of justice[.]’” Thomas M. Cooley Law

Sch. v. Kurzon Strauss, LLP, 759 F.3d 522, 528 (6th Cir. 2014) (alterations in original) (quoting

Rice v. Jefferson Pilot Fin. Ins. Co., 578 F.3d 450, 454 (6th Cir. 2009)). And issues of “first

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 10

impression” are not necessarily “exceptional case[s]” justifying consideration of an “unpreserved

. . . issue.” Id. at 528–29. Even though OSU might have a strong argument for vicarious

liability, we find no injustice in barring OSU from pursuing a claim it chose not to pursue below.

Thus, we decline to exercise our discretion to excuse a party’s forfeiture or waiver.

All said, Redbubble rightly stresses the absence of vicarious-liability argumentation in

the record below. And OSU’s reasons for excusing that omission fall short. So we decline to

address the merits of OSU’s vicarious Lanham Act liability theory because OSU failed to

preserve that claim.

V.

Aside from its vicarious-liability claim, OSU argues that Redbubble’s actions directly

violated the Lanham Act, so at a minimum the district court should not have entered summary

judgment for Redbubble. To begin, OSU claims that the district court misunderstood the

Lanham Act’s scope. That statute recognizes a civil cause of action for trademark infringement

against parties who “use in commerce any reproduction, counterfeit, copy, or colorable imitation

of a registered mark in connection with the sale, offering for sale, distribution, or advertising of

any goods or services.” 15 U.S.C. §§ 1114(a), 1125(a). And OSU argues that Redbubble—“the

quintessential infringer and counterfeiter”—violated the Act when it “used” OSU’s trademarks

by “marketing and selling trademark-infringing products” on the Redbubble platform.

(Appellant Br. at 24.)

In support of that argument, OSU contends that the Lanham Act applies to a wide array

of parties and commercial activities and the district court erred by improperly narrowing the

Lanham Act’s scope. It points to the statutory phrase “in connection with” as evidence of “a

broad interpretation” for actions covered by the Lanham Act. (Appellant Br. at 27 (quoting Mont

v. United States, 139 S. Ct. 1826, 1832–33 (2019)).) OSU claims that’s why the Supreme Court

found that “[t]he Lanham Act creates a cause of action for . . . misleading advertising or

labeling.” POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102, 107 (2014). But the district

court applied a narrower interpretation of the Act. It found Redbubble’s participation in the

creation, manufacturing, and sale of the offending goods too indirect for Lanham Act liability

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because Redbubble acted more like Amazon or an auction house than a company that designs,

manufactures, and sells its own goods. For instance, it ruled that Redbubble was not liable for

trademark-infringing images on its website despite the Lanham Act prohibiting trademarks being

“placed in any manner on the goods . . . or the displays associated therewith” because

“independent” artists uploaded the images. (R. 48, Op. & Order, PageID 928 (emphasis omitted)

(quoting 15 U.S.C. § 1227).)

Unlike OSU, Redbubble urges us to follow a narrow interpretation of the Lanham Act. It

believes the Act creates liability only for manufacturers, sellers, and those “who apply infringing

marks to sales displays or other related advertising materials.” (Appellee Br. at 25.) In short,

Redbubble contends that direct liability for trademark infringement “requires that the plaintiff

prove that the accused infringer placed the infringing mark on goods” or affirmatively used the

mark, e.g., by selling a trademark-infringing good directly to a consumer. (Id. at 26.) Because

Redbubble facilitates sales, like Amazon, without creating or handling products, Redbubble

concludes it “cannot directly infringe” OSU’s trademarks.

It’s true that online marketplaces, like eBay and Amazon, that facilitate sales for

independent vendors generally escape Lanham Act liability. See, e.g., Tiffany (NJ) Inc. v. eBay

Inc., 600 F.3d 93, 103, 109 (2d. Cir. 2010) (finding eBay could not be liable for direct

infringement for use of a trademark where the use did not imply affiliation or endorsement; also

finding eBay could not be liable for contributory infringement for the sale of counterfeit goods

by vendors on its website). Conversely, parties who design and print trademark-infringing goods

typically violate the Lanham Act. See H-D U.S.A., LLC v. SunFrog, LLC, 311 F. Supp. 3d 1000,

1030 (E.D. Wisc. 2018) (ruling that defendant violated the Lanham Act because it printed

trademark-offending goods). So the parties dispute where courts draw the line for online-vendor

liability.

This Circuit has already found “no reason to restrict [Lanham Act] liability to those who

actually create, manufacture[,] or package the infringing items.” Lorillard Tobacco Co. v.

Amouri’s Grand Foods, Inc., 453 F.3d 377, 381 (6th Cir. 2006). In Lorillard, the court imposed

liability where the defendant acted as a brick-and-mortar store that directly sold

trademark-infringing items to consumers, despite the fact that the defendant didn’t design or

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manufacture the offending product. It simply ran a marketplace where consumers could find and

procure the counterfeit cigarettes. Admittedly, Lorillard emphasizes the defendant’s “role as a

retailer” when imposing liability. Id. But that decision still suggests broad liability for parties

involved in selling trademark-infringing goods.

Although the district court here correctly presented this question as a spectrum, with

eBay and Amazon’s marketplaces on one end and brick-and-mortar vendors on the other, it

ultimately applied Lanham Act liability too narrowly. The question remains as to when, exactly,

a party avoids liability by acting as a passive facilitator.

Neither party disputes that an entity that is either (i) the creator or manufacturer of the

offending goods, or (ii) a direct seller of the offending goods (e.g., a brick-and-mortar store or

company website) is liable under the Lanham Act. They disagree, however, as to when a party

indirectly involved in the creation/manufacture of a good and/or the sale of a good avoids

liability by acting as a passive facilitator. In other words, what level of involvement and control

must a defendant exercise over the creation, manufacture, or sale of offending goods to be

considered akin to a “seller” or “manufacturer” to whom Lanham Act liability applies? Aside

from the eBay/Amazon model, some trademark-infringing activity does not create liability. For

instance, a company that auctions trademark-offending website domain names does not “use”

those trademarks as the Lanham Act prohibits. Bird v. Parsons, 289 F.3d 865, 877–79 (6th Cir.

2002). That’s because domain-name providers only sell “an address” used on the internet for

identification purposes, and not products bearing a trademark. Id. at 878. So on the opposite end

of the spectrum from direct sellers and manufacturers, this Circuit places parties like Amazon

and domain-name providers outside the Lanham Act’s ambit.

Returning to the statutory text, OSU argues that the language sweeps broadly. First, it

compares the Lanham Act’s “use in commerce” language to the “use” of a firearm in Smith v.

United States, 508 U.S. 223 (1993). There, the Supreme Court determined that the definition of

use “sweeps broadly.” Id. at 229. So OSU urges us to follow this natural meaning of “use.”

And it contends that Redbubble necessarily uses OSU’s trademarks when it places them on

Redbubble’s stock images and creates Redbubble products. In other words, if Redbubble didn’t

use the trademark, then how could its website display or satisfy an order for a hat or shirt bearing

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 13

OSU trademarks that doesn’t exist elsewhere? The key distinction between Redbubble and

Amazon’s “use” of trademarks would be that Redbubble directs others to make or display

infringing Redbubble products with Redbubble tags and instructions for caring for Redbubble

garments. Because Amazon’s marketplace doesn’t operate by offering or producing Amazon

products, under OSU’s theory, Amazon doesn’t use the trademark in a creative or generative

process. And that’s where it wants us to draw the line for liability because companies that print

the offending trademark onto a product are generally liable under the Lanham Act. See SunFrog,

311 F. Supp. 3d at 1000.

Redbubble makes its own textual argument. It contends that only “affirmative ‘use’”

creates direct Lanham Act liability—the “in connection with” language only operates to permit

indirect or vicarious liability. Yet Redbubble doesn’t explain why the statutory text cabins itself

to vicarious liability only. And if the statutory text creates those claims, then it is strange that

courts have found vicarious Lanham Act liability based on the statute’s common law tort

backdrop rather than the text itself. See, e.g., Rosetta Stone Ltd. v. Google, Inc., 676 F.3d 144,

165 (4th Cir. 2012) (describing vicarious Lanham Act liability as “essentially the same as in the

tort context” without relying on the statutory text). This undermines Redbubble’s position that

the Lanham Act’s language or context narrows the word “use.”

Looking at this Circuit’s Lanham Act precedent, it seems that one key distinction

between a direct seller who “uses” a trademark under the Act and a mere facilitator of sales who

does not is the degree to which the party represents itself, rather than a third-party vendor, as the

seller, or somehow identifies the goods as its own. A retailer who sells products directly to a

customer at a brick-and-mortar store is indisputably a seller to whom the Lanham Act applies.

See Lorillard 453 F.3d at 381. An online marketplace like eBay that clearly indicates to

consumers that they are purchasing goods from third-party sellers is not. See Multi Time Mach.,

804 F.3d at 938–41 (finding Amazon not liable for the trademark infringement committed by

parties using its platform because “Amazon clearly labels the source of the products it offers for

sale” and is not a seller). Here, although the record is sparse, it appears that products ordered on

Redbubble’s website do not yet exist, come into being only when ordered through Redbubble,

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 14

and are delivered in Redbubble packaging with Redbubble tags. Under those facts, the district

court erred in affirmatively placing Redbubble on the passive end of the liability spectrum.

Although Redbubble utilizes a third-party to manufacture goods sold on its site, the

degree of control and involvement exercised by Redbubble over the manufacturing, quality

control, and delivery of goods to consumers is relevant to an assessment of whether the

offending goods can fairly be tied to Redbubble for the purpose of liability. The record below

lacks sufficient development of the facts to affirmatively decide this issue.

All said, it appears that Redbubble brings trademark-offending products into being by

working with third-party sellers to create new Redbubble products, not to sell the artists’

products. So it’s more than just a passive facilitator. And Redbubble classifies its goods as

“Redbubble products” and makes clothes identifiable as “Redbubble garments.” (R. 31-1, Shook

Aff., PageID 631.) That differs from Amazon’s marketplace and makes more “use” of the

trademark than non-liable facilitators in cases from other circuits. Given that the district court

strayed from this understanding of the Lanham Act, we find that it wrongly entered summary

judgment for Redbubble on the direct Lanham Act liability claim.

VI.

Independent of its federal trademark law claims, OSU asserts that Redbubble violated

Ohio Revised Code section 2741, Ohio’s right-of-publicity statute. “The right of publicity is a

creature of state common law and statute and originated as part of the common-law right of

privacy.” Landham v. Lewis Galoob Toys, Inc., 227 F.3d 619, 622 (6th Cir. 2000). Because

Urban Meyer, a former OSU employee, assigned his right of publicity to OSU, OSU possesses a

property interest in Urban Meyer’s persona. So the only question is whether Redbubble used

“any aspect” of Meyer’s persona for a “commercial purpose.” OHIO REV. CODE § 2741.02(A).

Ohio defines commercial purpose as:

[T]he use of or reference to an aspect of an individual’s persona in any of the

following manners:

(1) On or in connection with a place, product, merchandise, goods, services, or

other commercial activities not expressly exempted under this chapter;

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(2) For advertising or soliciting the purchase of products, merchandise, goods,

services, or other commercial activities not expressly exempted under this

chapter;

(3) For the purpose of promoting travel to a place;

(4) For the purpose of fundraising.

Id. § 2741.01(B). The district court treated this issue in a cursory manner, reasoning that OSU

couldn’t succeed on its state-law claim because it didn’t win “under the more lenient federal

definition” of using a trademark. (R. 48, Op. & Order, PageID 929.)

OSU points out that a federal court already decided that printing images bearing Urban

Meyer’s likeness violates section 2741. That’s true—a district court entered summary judgment

for OSU against an online print-on-demand business “engaged in offering for sale [items]

bearing Meyer’s name, image, and likeness.” Ohio State Univ. v. Skreened Ltd., 16 F. Supp. 3d

905, 916 (S.D. Ohio 2014). But that’s only half the story as it pertains to this case. Neither party

here disputes that someone infringed on OSU’s publicity right to Meyer’s persona. The divide is

whether Redbubble is liable for that violation. Rephrased, OSU claims Redbubble “used the

same methods to sell, make, and ship these Urban Meyer goods as its other Ohio State goods.”

(Appellant Br. at 47.) So it follows that actions violating the federal prohibition on illicitly using

trademarked images could violate Ohio’s right of publicity statute.

Redbubble counters that courts only impose liability for right of publicity violations when

defendants “take affirmative steps to specifically exploit the persona in question.” (Appellee Br.

at 58.) And it claims that it played a passive role in vendors uploading Meyer’s image to its site

and consumers purchasing items bearing Meyer’s likeness through its marketplace. To make

that argument, Redbubble cites cases in which courts decided that technology companies like

Facebook, Google, and Amazon did not violate right-of-publicity statutes for images uploaded to

their websites by third parties.

“[C]ourts typically give attention to the entire available body of case law when deciding

right of publicity cases.” Landham, 227 F.3d at 623. We believe a case involving Amazon is

most illustrative. In Almeida v. Amazon.com, Inc., the Eleventh Circuit declined to hold Amazon

liable for book cover images that users uploaded onto its website. 456 F.3d 1316, 1326 (11th

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Cir. 2006) (“Amazon’s use of book cover images closely simulates a customer’s experience

browsing book covers in a traditional book store. Thus, it is clear that Amazon’s use of book

cover images . . . is merely incidental to . . . internet book sales.”). It did so because “Amazon

[did] not make editorial choices as to the book cover images it displays on its website.” Id.

Instead, a third-party book publisher using Amazon’s marketplace made that decision.

But under the logic in Almeida, Redbubble differs from Amazon in how it creates

products. As mentioned above, Redbubble classifies goods bought on its platform as

“Redbubble products” designed by “independent artists.” (R. 39-1, Shook Aff., PageID 629,

631.) These products are sometimes adorned with Redbubble images and Redbubble marketing

materials. Unlike Amazon’s model described in Almeida, which resembled a conduit between

buyers and booksellers, Redbubble integrates itself in the product. In other words, Redbubble

interweaves its brand with the products it sells. For instance, its user agreement tells vendors

“you may offer your art for sale as part of the sale of a physical product.” (R. 24-3, User

Agreement, PageID 531 (emphasis added).) And, as explained above, Redbubble acts as more

than a passive facilitator in designing and selling the products displayed on its marketplace.

Redbubble’s state-law statutory claim cuts to the main theme of the case: Can the goods

sold on Redbubble’s marketplace be classified as Redbubble products? We agree that, to some

degree, “Redbubble is just like a brick-and-mortar store that sells custom-ordered goods selected

from a catalog of artwork and a catalog of goods, and then uses a third party to fulfill and ship

those orders.” (Univ. Mich., et al. Amicus Brief at 18.) All told, the right-of-publicity claim

turns on how Redbubble’s business model differs from Amazon, eBay, and other passive virtual

marketplace operators. Even though Redbubble didn’t design or upload images of products

bearing Meyer’s likeness, the record shows how Redbubble’s marketplace allows customers to

buy a “Redbubble product” or a “Redbubble garment.” (R. 39-1, Shook Aff., PageID 631

(“[Redbubble] put a lot of thought into how Redbubble products are packaged.” (emphasis

added).) And that differs from other companies that our sister circuits have described as passive

facilitators in online marketplaces. So the cases Redbubble cites to avoid right-of-publicity

liability don’t apply.

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 17

Independent of cases from other circuits, the text of Ohio’s right-of-publicity statute

prohibits using a persona in connection with a product, advertising a product, or soliciting the

purchase of a product. OHIO REV. CODE §§ 2741.01(B), 2741.02(A). That broad language

expands liability beyond directly selling trademark-infringing goods. Redbubble operates its

online marketplace; at a minimum, such operation advertises the products made by vendors and

directs consumers to purchase those products. And Redbubble admits that it markets those

products to consumers. Even granting Redbubble’s position that it passively gives independent

third parties a platform to sell goods and then connects them to manufacturers and shippers, its

website still markets the offending goods, brings those novel trademark-infringing products into

being, and then sells those products. Under Ohio law, a court “‘do[es] not have the authority’ to

dig deeper than the plain meaning of an unambiguous statute ‘under the guise of either statutory

interpretation or liberal construction.’” State ex rel. Clay v. Cuyahoga Cty Med. Exam’rs Off.,

94 N.E.3d 498, 502 (Ohio 2017) (quoting Jackson v. Kaforey, 75 N.E.3d 203, 206 (Ohio 2016)).

And so we reverse the district court’s entry of summary judgment for Redbubble on its Ohio

right-of-publicity claim under the plain text of that statute.

VII.

Even though OSU rightly argues that the district court incorrectly interpreted the Lanham

Act and Ohio’s right-of-publicity law, we still must ask if OSU presented enough undisputed

facts to prevail under the correct interpretations of those statutes. To obtain summary judgment,

OSU would need to show that Redbubble asserted no disputed, material facts showing that its

business model abides by the Lanham Act. See Miles, 946 F.3d at 887. When “the record . . .

provides inadequate evidence” over whether a defendant violated the Lanham Act, remanding to

the district court for further proceedings including additional factfinding is proper. See Allard

Enters., Inc. v. Adv. Programming Res., Inc., 146 F.3d 350, 361 (6th Cir. 1998). We conclude

that’s the case here, given the limited evidence about Redbubble’s relationship with the

trademark-infringing products.

It’s true that Redbubble facilitates the creation of goods bearing OSU’s marks that would

not have existed but for Redbubble. And that’s why we disagree with the district court’s ruling

that Redbubble could not be liable because of its similarity to Amazon, eBay, and other passive

No. 19-3388 The Ohio State Univ. v. Redbubble, Inc. Page 18

online marketplaces. But even though we hold the district court erred by applying an overly

narrow reading of the Lanham Act and giving too cursory of a treatment to OSU’s state-law

claims, we are not certain that OSU, based on the record established below, can establish that no

issue of material fact exists over Redbubble’s liability under a more expansive understanding of

the Lanham Act.

Although the record shows that Redbubble sells “Redbubble products” and “Redbubble

garments” on its marketplace, unlike Amazon and other companies that are not directly liable

under the Lanham Act, it’s unclear what those labels mean. To start, Redbubble’s User

Agreement states that Redbubble never takes title to those products. And third-party vendors

upload the designs for products sold on Redbubble’s marketplace. Given the murkiness about

Redbubble’s relationship to the trademark-infringing products, we conclude the record below

does not permit an informed ruling about whether Redbubble “used” OSU’s marks under the

Lanham Act. The factual gaps on this issue include: “facts regarding the precise nature of

Redbubble’s contractual relationships with third-party manufacturers and shippers”; “the precise

degree to which Redbubble is involved in” selecting and imprinting trademark-infringing designs

upon its products; “details as to Redbubble’s involvement in the process for returning goods”;

“detail[s] on how Redbubble characterizes its own services”; and facts about “defenses to

liability[,] such as possible fair use defenses or defenses that confusion is not likely.” (Int’l

Trademark Ass’n Amicus Br. at 17–23.) So even though the district court applied the Lanham

Act too narrowly, additional factfinding on remand would aid a decision about whether

Redbubble is liable under the standard explained above.

One last point: Redbubble argues that remand is inappropriate because “OSU waived” its

right to develop the record by seeking summary judgment. (Appellee Br. at 53–55.) In other

words, Redbubble asserts that OSU’s decision to move for summary judgment below now

precludes a ruling “that the district court’s ruling was premature.” (Id.) Yet it relies on Bormuth

v. Cnty. of Jackson, 870 F.3d 494 (6th Cir. 2017) (en banc), for that proposition. And that

case only applies to a party challenging the lower court’s decision to limit discovery. Id. at 502.

Unlike Bormuth, neither party is challenging a district court ruling relating to discovery.

And this court has the power to remand for further factfinding. See 28 U.S.C. § 2106

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(“[A]ny . . . court of appellate jurisdiction . . . may remand the cause and direct the entry of such

appropriate judgment, decree, or order, or require such further proceedings to be had as may be

just under the circumstances.”). So we reject Redbubble’s argument that OSU waived its right to

develop the record below.

VIII.

For the reasons above, we REVERSE the lower court’s grant of summary judgment in

favor of Redbubble and REMAND for factfinding and for consideration of OSU’s claims under a

standard consistent with this opinion.