## Facts

- Redbubble, Inc. operated an Australia-based online marketplace that sold customized consumer goods to customers in the United States and elsewhere.
- Independent artists uploaded images to Redbubble’s website. Customers selected an image and chose a product type (such as apparel, stickers, or phone cases) to create a made-to-order item bearing that image.
- Redbubble did not itself design or manufacture the physical goods. Instead, once an order was placed, Redbubble arranged for third-party manufacturers and shippers to produce and send the item.
- Redbubble generally did not take title to the products shown on its website, but it ran the customer-facing transaction: it marketed the items on its site under the Redbubble name, used Redbubble-branded packaging and product tags, and handled customer service and returns.
- The Ohio State University (OSU) found products on Redbubble bearing OSU trademarks and related indicia without authorization.
- OSU attempted to resolve the issue directly with Redbubble but did not obtain a satisfactory resolution.
- OSU sued Redbubble in federal district court asserting Lanham Act claims (including trademark infringement, counterfeiting, and unfair competition) and an Ohio statutory right-of-publicity claim tied to products using the likeness/persona of OSU’s then-football coach, Urban Meyer.
- Both parties moved for summary judgment. The district court granted summary judgment to Redbubble, treating it as a transactional intermediary that did not itself “use” OSU’s marks in commerce and rejecting the right-of-publicity claim on the summary-judgment record.
- OSU appealed.

## Issues

1. Whether Redbubble’s role in listing, marketing, producing, packaging, and facilitating delivery of made-to-order goods bearing OSU marks could constitute direct “use in commerce” under the Lanham Act, making summary judgment for Redbubble improper.
2. Whether the district court properly granted summary judgment to Redbubble on OSU’s Ohio right-of-publicity claim based on products using Urban Meyer’s persona.

## Decision

- The Sixth Circuit reversed the district court’s grant of summary judgment for Redbubble and remanded.
- The court held the district court applied an overly narrow view of direct Lanham Act liability by focusing too heavily on formalities like title and who physically affixed the marks, rather than the commercial reality of Redbubble’s role in the transactions.
- The court concluded that a reasonable factfinder could determine Redbubble directly used OSU’s marks in commerce because Redbubble’s system could be understood as creating and selling “Redbubble” products that would not exist but for Redbubble’s marketplace and fulfillment arrangements.
- The court also reversed summary judgment on the Ohio right-of-publicity claim, finding the district court’s treatment insufficient and indicating that additional fact development and proper application of the state statute were needed.
- The case was returned to the district court for further proceedings under the correct legal standards.

## Legal Principles

- Direct Lanham Act liability can apply when a defendant uses a mark in commerce in connection with goods or services in a way that may cause confusion; the analysis is not limited to who holds title to goods or who physically applies a mark.
- An online marketplace’s level of involvement matters. A platform that meaningfully participates in bringing the product to market—such as by controlling the branded consumer experience, arranging manufacture and shipment, and managing customer service—may be found to “use” a mark in commerce.
- Summary judgment is improper when the record would allow a reasonable jury to find that the defendant’s marketplace conduct went beyond passive facilitation and amounted to direct use of the plaintiff’s marks in connection with sales.
- State right-of-publicity claims must be analyzed under the state statute’s elements; a court should not dispose of such claims based on a cursory analysis or by substituting federal trademark “use” concepts for state-law requirements.

## Conclusion

The Sixth Circuit held that OSU presented enough evidence to require trial-level factfinding on whether Redbubble’s branded, made-to-order marketplace operations amounted to direct “use in commerce” of OSU’s trademarks and whether Redbubble’s conduct involving merchandise featuring Urban Meyer’s persona met Ohio’s statutory right-of-publicity standards, so summary judgment for Redbubble was reversed and the case remanded.


Ohio State University v. Redbubble, 989 F.3d 435 (2021)