he popular online marketplace cafepress.com (“CafePress”) is known for allowing users to upload graphic designs to its website, which then allows users to choose that design or others and have CafePress print it on a wide array of merchandise, including t-shirts, mugs, stickers, buttons, iPhone cases and Halloween accessories. The case discussed here looks at what happens when the graphic design chosen happens to be someone else’s intellectual property.
In November 2010, Born to Rock Design Incorporated (“BTR”) sued CafePress in the United States District Court for the Southern District of New York claiming that “Born to Rock” merchandise sold on CafePress’ website infringed its BORN TO ROCK trademark. BTR asserted the trademark BORN TO ROCK with respect to electric guitars since 1994 and t-shirts since 2010; and, since at least 2003, CafePress users have uploaded the phrase “Born to Rock” alone and in conjunction with other words and images onto the website. CafePress has also sold a number of “Born to Rock” t-shirts to its customers, and one in particular utilizes the phrase on the front of an otherwise blank t-shirt. The site also sold a t-shirt utilizing the phrase and depicting a rocking chair.
Prior to the filing of the lawsuit, CafePress had refused to remove all of BTR’s claimed designs from the CafePress.com site. Following discovery, CafePress filed a motion for summary judgment, arguing that: (1) it did not used BTR’s mark “in commerce,” which is necessary to constitute trademark infringement; and (2) that it was, in any event, categorically entitled to the defense of trademark fair use. CafePress assumed for purposes of the motion that BTR had valid trademarks and that it could show likelihood of confusion.
The court denied CafePress’s summary judgment motion on the basis of its first argument, rejecting CafePress’s argument that the display of the phrase on its website was not “use in commerce.” The court stated: “CafePress is being facetious: it is undisputed that it imprints the [“Born to Rock”] designs on merchandise and ships that merchandise to customers. That activity constitutes ‘use in commerce.’” This outcome is not surprising because the Second Circuit has found the existence of “use in commerce” in almost any commercial context.
The court also denied summary judgment on the basis of fair use. A defendant is entitled to the descriptive fair use defense where the defendant used the phrase at issue “(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.” However, the court was unable, on summary judgment, to find that CafePress satisfied the first descriptive fair use element with respect to all of the “Born to Rock” merchandise it sold. The court’s decision focused solely on the first element, namely, the question of whether CafePress was making “non-trademark use” – in other words, whether the use of the phrase was to identify the source of the goods at issue, rather than in a descriptive way. In particular, the fact that some of the merchandise sold by CafePress utilized the phrase “Born to Rock” without other markings (for example, in conjunction with other trademarks that would identify for the consumer the true origin of the goods) could be evidence that CafePress might have been using the phrase as a trademark on some of its merchandise. This precluded summary judgment as to all of the website’s “Born to Rock” merchandise. The court distinguished this case from one involving Oprah Winfrey’s use of the trademarked phrase “Own Your Power” (Kelly-Brown v. Winfrey, 11 Civ. 7875 (PAC) (Mar. 6, 2012)), where Oprah Winfrey’s “O” magazine used the phrase on its cover next to the magazine’s distinctive “O” trademark and the name of the magazine, “The Oprah Magazine,” which the court in that case deemed to be strong evidence of non-trademark use.
One takeaway from this case is the potential pitfall of relying on a defense of descriptive fair use where the only potential source identifier is the plaintiff’s trademark itself. As the court explained, a juror might be able to view the item and see the design as merely ornamental; in addition, a product’s use of a design may be considered “non-trademark use” where a tag or other element on the product clearly identifies its maker. Indeed, the court noted that this might be the case with respect to some of the designs at issue, which leads to another lesson: in a case involving several designs, seeking a broad ruling as to all designs rather than rulings on each design may “upend” the cause. The court criticized CafePress’s request to “essentially ask the Court to take judicial notice of the fact that every use BTR complains of is a non-trademark use as a matter of law,” which the court would not do on the evidence in the record. The case is currently set for trial on December 3, 2012, though, as of at least October 9, 2012, the parties were attempting to reach a settlement.