In the recent Ohio State University v. Redbubbletrademark law proceeding, the Sixth Circuit Court of Appeals considered whether online retailers are liable for trademark infringement arising from products that they sell on their sites. The lower court entered summary judgment in favor of Redbubble, an Australian online retailer, and against Ohio State University (OSU). The court held that 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.” On February 25, 2021, the Sixth Circuit Court of Appeals reversed and remanded the case back to the lower court, ruling that online retailers that are more than “mere facilitators,” such as Redbubble was here, may be subject to secondary trademark infringement. 

Secondary Liability in E-commerce

Pursuant to federal trademark law (“Lanham Act”), there are two types of secondary trademark infringement: Contributory Trademark Infringement and Vicarious Trademark Infringement.

Contributory Trademark Infringement. Online platforms can be held “contributorily liable for trademark infringement if they: (1) intentionally induce another to infringe a trademark, or (2) continue to supply a product knowing or having reason to know that the recipient is using the product to engage in trademark infringement.” Online retailers (manufacturers and distributors) are “contributorily responsible for any harm done as a result of the deceit.” In the Ohio State University v. Redbubble trademark law proceeding, OSU failed to raise the issue of contributory liability and, therefore, the court did not consider whether Redbubble was guilty on this theory of liability.

Vicarious Trademark Infringement. Retailers can be held vicariously liable for trademark infringement where “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.” In assessing whether vicarious liability exists, courts must determine whether a retailer is a “mere facilitator” or “direct seller.” In determining whether an online retailer is a “mere facilitator” or “direct seller,” Sixth Circuit Court of Appeals considered “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.” In other words, courts consider the level of involvement and control such retailers have over the infringing goods that are featured for sale in their respective marketplaces. 

Online marketplaces that merely facilitate sales for independent vendors (e.g., Amazon) have generally avoided vicarious liability for trademark infringement. In contrast, marketplaces that design and manufacture infringing goods are often held liable for vicarious trademark infringement. 

Products ordered through Redbubble “come into being only when ordered through Redbubble, and are delivered in Redbubble packaging with Redbubble tags.” According to the Sixth Circuit, because Redbubble “brings trademark-infringing products into being” and does not simply sell third-party products, it is likely more than a mere facilitator and, as such, the site may be found secondarily liable for trademark law infringement. We will wait to see whether the lower court rules in favor of OSU when the case is remanded back to it for reconsideration.

The Ohio State University has applied to trademark the word “the,” AP News reported last week. The indefinite article would be copyrighted by the school whenever used on their official merchandise, such as shirts and bags. Trademarked words have a fascinating history in the United States.

According to the AP article, The Ohio State University has previously trademarked other terms related to the school, such as the names of its famous football coaches, Woody Hayes and Urban Meyer. OSU is said to have 150 trademarks in 17 different countries, working diligently to earn royalties for its official merchandise. Seeking rights to the word “the” on its merchandise sounds similar to Paris Hilton’s efforts to trademark the phrase “That’s hot,” her then-famous catchphrase. Legal battles over copyrighted words and phrases tend to go the opposite route, with companies fighting to keep specific product names away from becoming generic terms.

Eponymy

“Eponymy is when a proper name is generalized to something more generic, and this long predates the invention of trademarks,” said Dr. Anne Curzan, the Arthur F. Thurnau Professor of English at the University of Michigan. “One of the best-known examples of eponymy is the word ‘sandwich,’ which is believed to be named for John Montagu, the fourth Earl of Sandwich, and the story goes that he was quite a gambler. Apparently he once spent 24 hours at the gaming table, and his only sustenance was meat between two slices of bread, hence a sandwich.”

Dr. Curzan added that other words that have become eponymous include pasteurize, named after inventor Louis Pasteur; guillotine, from its French inventor Joseph Guillotin; and galvanize, from 18th-century physician Luigi Galvani who first discovered that applying electricity caused muscles to contract.

Legal Battles and Genericization

Another term involving trademarked words is genericization. Genericization is similar to eponymy, but instead of appropriating someone’s name, society uses a specific product so often that it becomes a general term for anything similar.

Having a wildly successful product can be a double-edged sword for the company who makes it. On the one hand, it becomes a household name and the go-to idea for the need it fulfills, like when someone refers to any cotton swab as a Q-Tip®. On the other hand, doing so can become such a general term that the product itself is no longer the focus, and the company’s competitors may reap sales on the original product’s good name and reputation.

Companies often fight against genericization, sometimes finding themselves in court for their troubles. “In 2011, Microsoft filed a complaint against Apple’s application for a trademark on the term ‘app store,’” Dr. Curzan said. “Ron Butters—who’s a linguist and an emeritus professor at Duke University—was the expert for Microsoft and he argues that ‘app store’ is a generic compound. Robert Leonard, the expert for Apple, says that while the two words ‘app’ and ‘store’ are generic, when they’re used alone, they’re a proper noun together as ‘App Store’ and should be trademarked.”

Apple has since unsuccessfully sued Amazon for the use of the phrase.

If OSU’s trademark passes, it will join the ranks of phrases like “Let’s get ready to rumble” and “Bam!” as a trademarked word or phrase with certain usage restrictions. The trademark has not yet been approved or denied.

Dr. Anne Curzan contributed to this article. Dr. Curzan is Arthur F. Thurnau Professor of English at the University of Michigan. She earned a B.A. in Linguistics from Yale University and an M.A. and a Ph.D. in English Language and Literature from the University of Michigan.

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