Atari’s Trademark Troubles with RedbubbleAugust 21, 2023

It seems to get more difficult for companies with well-known trademarks to go after online marketplaces like Redbubble for trademark infringement. Atari, the well-known video game maker and one of their products Pong, asked the Ninth Circuit to review a district court decision in their case against Redbubble. Atari, and other companies such as the fashion retailer that owns Brandy Melville, accused Redbubble of knowingly selling products that infringe on their trademarks. The district court ruled in favor of Redbubble denying Atari’s direct trademark infringement claim and that Redbubble was not willfully blind for purposes of Atari’s contributory trademark infringement claim.

The Ninth Circuit stated that they did not have jurisdiction to review the district court’s denial of summary judgment on the direct trademark infringement claim. Generally, summary judgment motions are not subject to appeal unless “the district court made an error of law that, if not made, would have required the district court to grant the motion.” In re Bard IVC Filters Prod. Liab. Litig., 969 F.3d 1067, 1072 (9th Cir. 2020). The Ninth Circuit determined that the exception did not apply because only the facts underlying the direct trademark infringement claim were disputed, and thus did not apply to any error of law. See Williams v. Gaye, 895 F.3d 1106, 1122 (9^th Cir. 2018).

Regarding the contributory trademark infringement claim, the Ninth Circuit reviewed de novo. One way a trademark holder can prevail on a contributory trademark infringement claim is to show that the “infringer” knew, had reason to know, or was “willfully blind” that it was participating in trademark infringement while supplying its services. See Louis Vuitton Malletier, S.A. v. Akanoc Sols., Inc., 658 F.3d 936, 942 (9^th Cir. 2011); see also Y.Y.G.M. SA v. Redbubble, Inc., No.21-56150, slip op. at 6 (9^th Cir. July 24, 2023). Atari needed to show that Redbubble had “specific knowledge of infringers or instances of infringement” and that “[g]eneral knowledge of infringement on the defendant’s platform-even of the plaintiff’s trademarks- is not enough to show willful blindness.” Y.Y.G.M., slip op. at 10. Further, even “[r]emoving infringement listings and taking appropriate action against repeat infringers in response to specific notices may well be sufficient to show that a large online marketplace was not willfully blind.” Id. at 12. The Ninth Circuit determined that all of Atari’s evidence showed that Redbubble’s response was reasonable and did not show that Redbubble “took active steps to avoid acquiring knowledge.” See Luvdarts, LLC v. AT&T Mobility, LLC, 710 F.3d 1068, 1073 (9^th Cir. 2013). Thus, the Court affirmed the district court’s holding that Redbubble was not willfully blind for purposes of Atari’s contributory trademark infringement claim.

Similar conclusions of the “knows or has reason to know” standard on contributory trademark infringement have been reached by the Second, Fourth, and Tenth Circuits, and this case will likely not be the last. As more websites cater to artists selling their works, it may become more challenging to holding them accountable for what is being sold, and whether they had actual knowledge in selling items that may be infringing on other’s trademarks.

Ashley Holland is an intellectual property attorney in the MVS Biotechnology and Chemical Practice Group. To learn more, visit our MVS website, or contact Ashley directly via email.