Redbubble has been ordered to fork out $78,000 to the Hells Angels for using its logo without permission, the second trademark case brought against the online marketplace in the last three years by the motorcycle club.
The site, launched in 2007 and co-founded by Australian entrepreneur Martin Hosking, operates as a DIY for merchandise — users can have images of their choice printed on t-shirts, stickers, and mugs, and in turn, sell the items to other customers.
But the Hells Angels Motorcycle Club have a trademark officer in Australia who successfully purchased a slew of items from Redbubble bearing the unauthorised skull-and-wings logo.
Interestingly, the court heard that the only customers of the items in question were representatives from the club who were trying to determine whether a potential trademark violation was occurring.
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In a statement, a Redbubble spokesperson told SmartCompany the marketplace was taking “strong measures to protect the rights of content creators is critical to maintaining a healthy marketplace that supports originality, entrepreneurship and self-expression, and we have taken and will continue to take such measures to advance our IP-related processes”.
To that end, the spokesperson continued, the site has a straightforward takedown notice process and offers licensing agreements for fan art that promotes brands.
“While we are pleased that the court has acknowledged that Redbubble has implemented practices and procedures to prevent IP infringements from appearing on the marketplace, Redbubble is disappointed with some aspects of the decision and is considering its position in relation to a possible appeal.”
It comes just two years after the club successfully sued Redbubble in 2019 over a similar issue. It was awarded $5000 in damages after the court recognised the logo was used on several t-shirts and a poster.
The marketplace has upgraded its moderation tools since, with a keyword filtering tool to catch potential trademark violations, scanning some 2 million designs since 2017, including 114 improper uses of the Hells Angels logo.
But the investigation uncovered 11 listings the scanning tool had missed.
The marketplace also employs moderators to check the image uploads to its site for potential legal issues, and indeed several instances were flagged for review by a team in Jamaica.
However, the listings returned to the site in error, the court heard. Redbubble is no longer working with the outsourced team.
In his judgement, Justice Andrew Greenwood said he accepted Redbubble’s moderation system had improved in the years since the first case brought by the club, but ultimately it had not improved enough.
“Sometimes they isolate infringing content and that content is moderated. Sometimes those steps do not isolate infringing content,” Greenwood said.
“The evidence shows that moderation has failed in a number of examples but I accept that steps have been taken to try and solve that problem.”
He added that the “proactive moderation” that was outsourced had not “protected” Redbubble.
The marketplace said they were in the development stages of a tool that would scan images upon upload to determine whether to flag or block the design on trademark grounds.
In addition, a spokesperson added, the company is now “using a combination of human and technological review to proactively identify potential infringement, building a free tool that enables rights holders to file takedown notices easily, collaborating with rights holders to monitor for their properties — and even creating licensing agreements for fan art that promotes their brands — and much more”.
Greenwood said he recognised that Redbubble “has derived very little financial benefit at all from the conduct” but awarded the Hells Angels $8250 in damages, with $70,000 given in additional damages.