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IN THE UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF OHIO 

EASTERN DIVISION 

 THE OHIO STATE UNIVERSITY, : 

 : Case No. 2:17-cv-1092 

 Plaintiff, : 

 : JUDGE ALGENON L. MARBLEY 

 v. : 

 : Magistrate Judge Vascura 

REDBUBBLE, INC., : 

 : 

 Defendant. : 

OPINION & ORDER 

This matter is before the Court on the parties’ Cross Motions of Summary Judgment. 

(ECF Nos. 17, 23). Plaintiff, The Ohio State University, alleges trademark infringement, unfair 

competition and passing off, counterfeiting, and violation of right of publicity. (ECF No. 1). 

The parties’ summary judgment motions are fully briefed and ripe for review. For the reasons 

that follow, the Court DENIES Ohio State’s Motion and GRANTS Redbubble’s Cross-Motion. 

I. BACKGROUND 

A. Factual Background 

 The parties do not dispute the facts underlying this case. The Ohio State University 

(“OSU” or “Ohio State”) holds several registered trademarks. These include: (1) 

“BUCKEYES,” (2) “OHIO STATE,” (3) “OHIO STATE UNIVERSITY,” (4) URBAN 

MEYER, and (5) several other images. (ECF No. 1). A complete list of OSU’s claimed 

trademarks can be found in paragraph 7 of the Complaint, attached to this Order. Ohio State also 

claims several common law trademarks. (ECF No. 1 at ¶¶11 – 15). 

 Redbubble, Inc. operates “a global online marketplace platform hosted at redbubble.com . 

. . .” (ECF No. 23 at 2). Redbubble allows “independent artists” to upload and sell products on 
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redbubble.com. Redbubble’s business model relies on the automated use of third-party services: 

artists are automatically connected with a third-party manufacturer to make the goods, a thirdparty service to package and ship the goods, and a third-party to process payment for the goods. 

(ECF No. 23 at 3). When an item from redbubble.com is shipped, “the Redbubble name and 

logo does appear on the packaging that products are shipped in; the name on the return address 

label is ‘An Artist at Redbubble,’ and the return address itself is Redbubble’s.” (ECF No. 23 at 

8). Some items are also “shipped with a ‘hang tag’ containing the Redbubble logo that is 

designed to be removed before the garment is worn.” (Id. at n.5). The hang tags also include the 

artist’s name. Many items available for purchase at redbubble.com contain designs that appear 

to infringe on Ohio State’s trademarks. 

 Ohio State became aware of the allegedly infringing products on redbubble.com at least 

as early as April 12, 2017, when Ohio State’s sent a letter to Redbubble’s General Counsel, 

alleging that several products on redbubble.com infringed Ohio State’s trademarks and Urban 

Meyer’s right of publicity. (ECF No. 1 at ¶32). Ohio State’s letter included a reference to the 

search results for the term “Buckeyes.” Redbubble sent an email response on April 20, 2017, 

three days after the date Ohio State had requested for a response. (ECF No. 23 at 16). 

Redbubble asked Ohio State to “identify the designs it believed were infringing by providing the 

URLs” and that once Ohio State did so, Redbubble would remove the listings. (ECF No. 23 at 

16–17). 

 On April 25, 2017, Ohio State sent another letter to Redbubble. In its April 25 letter, 

OSU stated that it was not going to specifically identify counterfeit or infringing products 

because to do so “would be a full time job” and because it was “not Ohio State’s responsibility to 

police your website to identify and request removal of counterfeits.” (ECF No. 24-7 at 2–3). 
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Redbubble responded on April 26 with a different solution: Redbubble would “remove all of the 

designs on the search results pages, except for those that [OSU] [did not] consider infringing.” 

(ECF No. 24-8 at 2). 

 Ohio State did not respond to Redbubble’s last correspondence. Instead, on December 

14, 2017, Ohio State sued Redbubble. Redbubble alleges that after the suit was filed, it took 

every effort to remove the products that Ohio State would consider infringing and even provided 

Ohio State with a spreadsheet of the possibly-infringing products and their sales numbers. (ECF 

No. 23 at 18). 

B. Procedural Background 

 Ohio State sued Redbubble on December 14, 2017. (ECF No. 1). Ohio State alleged 

violations of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a), for trademark infringement, unfair 

competition, passing off, and counterfeiting. Ohio State also claimed violation of rights of 

publicity for Urban Meyer under Ohio Rev. Code § 2741. (ECF No. 1 at ¶ 1). The parties filed 

Cross-Motions for Summary Judgment. These Motions are fully briefed and ripe for review. 

II. STANDARD OF REVIEW 

 A motion for summary judgment is governed by the requirements of Federal Rule of 

Civil Procedure 56. Summary judgment is appropriate “if the movant shows that there is no 

genuine issue as to any material fact and the movant is entitled to judgment as a matter of law.” 

Fed. R. Civ. P. 56. A fact is material only if it “might affect the outcome of the lawsuit under the 

governing substantive law.” Wiley v. United States, 20 F.3d 222, 224 (6th Cir. 1994) (citing 

Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248 (1986)). In evaluating a motion for summary 

judgment, the evidence must be viewed in the light most favorable to the nonmoving party. 

S.E.C. v. Sierra Brokerage Servs., Inc., 712 F.3d 321, 327 (6th Cir. 2013). 
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The party seeking summary judgment bears the initial burden of presenting law and 

argument in support of its motion as well as identifying the relevant portions of “ ‘the pleadings, 

depositions, answers to interrogatories, and admissions on file, together with the affidavits, if 

any,’ which it believes demonstrate the absence of a genuine issue of material fact.” Celotex 

Corp. v. Catrett, 477 U.S. 317, 323 (1986) (quoting Fed. R. Civ. P. 56). If the moving party 

satisfies this initial burden, then the nonmoving party must present “significant probative 

evidence” to show that “there is [more than] some metaphysical doubt as to the material facts.” 

Moore v. Philip Morris Cos., Inc., 8 F.3d 335, 340 (6th Cir. 1993). The mere possibility of a 

factual dispute is insufficient to defeat a motion for summary judgment. See Mitchell v. Toledo 

Hospital, 964 F.2d 577, 582 (6th Cir. 1992). 

Summary judgment is inappropriate, however, “if the dispute about a material fact is 

‘genuine,’ that is, if the evidence is such that a reasonable jury could return a verdict for the 

nonmoving party.” Anderson, 477 U.S. at 248. The necessary inquiry for this Court is “whether 

‘the evidence presents a sufficient disagreement to require submission to a jury or whether it is 

so one-sided that one party must prevail as a matter of law.’” Patton v. Bearden, 8 F.3d 343, 346 

(6th Cir. 1993) (quoting Anderson, 477 U.S. at 251-52). The mere existence of a scintilla of 

evidence in support of the opposing party’s position is not enough to survive summary judgment; 

there must be evidence on which the jury could reasonably find for the opposing party. See

Anderson, 477 U.S. at 251; Copeland v. Machulis, 57 F.3d 476, 479 (6th Cir. 1995). It is proper 

to enter summary judgment against a party “who fails to make a showing sufficient to establish 

the existence of an element essential to that party’s case, and on which that party will bear the 

burden of proof at trial.” Celotex Corp. v. Catrett, 477 U.S. 317, 322 (1986). Where the 

nonmoving party has “failed to make a sufficient showing on an essential element of her case 
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with respect to which she has the burden of proof,” the moving party is entitled to judgment as a 

matter of law. Celotex, 477 U.S. at 322 (quoting Anderson, 477 U.S. at 250). 

III. LAW & ANALYSIS 

A. Liability Under the Lanham Act 

 Ohio State has brought claims under the Lanham Act for trademark counterfeiting, 

infringement, and passing off and unfair competition. Ohio State has also brought a claim for 

violation of the right of publicity under Ohio Rev. Code §2741. An action for trademark 

infringement under the Lanham Act, 15 U.S.C. § 1114, requires the plaintiff to 

prove that (1) it owns a valid trademark; (2) Defendants used the trademark ‘in 

commerce’ and without Plaintiff's authorization; (3) Defendants used the 

trademark (or an imitation of it) ‘in connection with the sale, offering for sale, 

distribution, or advertising’ of goods or services; and (4) Defendants’ use of the 

trademark is likely to confuse consumers. 

Ohio State University v. Skreened Ltd., 16 F.Supp.3d 905, 910 (S.D. Ohio 2014) (citing 15 

U.S.C. § 1114(a)). 

Redbubble cannot be liable for counterfeiting without first being liable for trademark 

infringement because “[c]ounterfeiting is a subset of trademark infringement.” 2–5 Gilson on 

Trademarks § 5.19 (2008). See also Skreened Ltd., 16 F.Supp.3d at 911 (“[T]o establish liability 

for trademark counterfeiting, Plaintiff must first prevail on its infringement claim and then also 

show that Defendants intentionally used Plaintiff’s mark knowing it was a counterfeit.”). Unfair 

competition and passing off under 25 U.S.C. § 1125(a) also requires “use in commerce.” 

Redbubble does not contest the validity of Ohio State’s trademarks but does argue that 

Redbubble has not “used” Ohio State’s marks in commerce. Therefore, this Court will first 

determine whether Redbubble’s actions qualify as “use in commerce” of Ohio State’s marks. 

 The precise contours of what constitutes “use in commerce” have not been defined, but it 

is well-established that selling an item constitutes “use.” See Lorillard Tobacco Co. v. Amouri’s 
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Grand Foods, Inc., 453 F.3d 377, 382 (6th Cir. 2006) (“[W]e can think of no clearer “use” of 

goods “in commerce” than offering them for sale.”) (internal citations omitted). But generally, 

“a transactional intermediary is not treated as a seller.” GMA Accessories, Inc. v. BOP, LLC, 765 

F.Supp.2d 457, 464 (S.D.N.Y. 2011). Thus in GMA Accessories, Inc., the district court denied 

summary judgment for the trademark holder on direct infringement against a showroom because 

the showroom was “merely a broker, rather than a direct seller.” Id. In support of this finding, 

the district court pointed to “no evidence that [Defendant] took title to the merchandise, 

maintained an inventory of merchandise, bore the risk of loss or other traditional indicia of status 

as seller.” Id. Although the district court in GMA Accessories, Inc. also allowed the trademark 

holder’s claim for contributory infringement to go forward, Ohio State has only claimed direct 

infringement. 

 Few cases have addressed the liability of companies like Redbubble who conduct their 

business dealings online. Redbubble has relied significantly on Tiffany (NJ) Inc. v. eBay, Inc., 

600 F.3d 93 (2d Cir. 2010). But Tiffany (NJ) Inc. v. eBay, Inc., is of limited applicability here. 

While the Second Circuit discussed eBay’s potential liability for direct infringement, the grounds 

on which the Second Circuit found eBay not liable dealt mostly with eBay’s use of the “Tiffany” 

mark to describe its goods. This sort of rationale does not apply to Redbubble because 

Redbubble is not in the resale business. Much of the rationale in Tiffany (NJ) Inc. applies to 

eBay’s liability for contributory infringement, a claim that Ohio State has not asserted. 

The Sixth Circuit has addressed liability for direct trademark infringement for 

“companies that operate as Internet domain-name registrars or that provide an Internet auction 

site for registered domain names . . . if a third party registers and seeks to sell a domain name 

that allegedly violates the rights of a trademark owner.” Bird v. Parsons, 289 F.3d 865, 877 (6th 
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Cir. 2002). In Bird, the Sixth Circuit found that the domain-name registrars or auction sites were 

not liable for direct trademark infringement or unfair competition. As to online auction activity, 

the Sixth Circuit noted that “[t]he possibility that [Defendant’s] customers might buy or sell 

infringing domain names does not alter the fact that [Defendant] does not use those names.” Id.

at 878. Domain names may be slightly different from a physical product because of the 

possibility that “even a domain name that could be used to violate a registered trademark does 

not necessarily do so.” Id. 

A better analogy to Redbubble is Amazon, which deals in physical products. Amazon 

has generally not been found liable for direct trademark or copyright infringement because it 

merely facilitates sales between other parties. See, e.g., Milo & Gabby LLC v. Amazon.com, Inc., 

693 F. App’x 879 (Fed. Cir. 2017) (finding that Amazon is not a “seller” for purposes of direct 

copyright infringement); Hendrickson v. Amazon.com, Inc., 298 F.Supp.2d 914, 915 (C.D. Cal. 

2003) (finding that Amazon was not the “seller” for purposes of direct copyright infringement); 

Tre Milano, LLC v. Amazon.com, Inc., B234753, 2012 WL 3594380, at *11–12 (Cal. Ct. App. 

Aug. 22, 2012) (finding that Amazon was not a seller and had permissibly used a mark as a 

product description). The Federal Circuit in an unpublished opinion in Milo & Gabby LLC v. 

Amazon.com, Inc., found that Amazon was not a “seller” for purposes of copyright infringement. 

Although copyright infringement differs from trademark infringement, the Federal Circuit was 

nevertheless considering when a company can be considered a “seller” and is therefore 

persuasive authority here. The Federal Circuit relied on its holdings regarding the definition of 

“sale” in the patent context and “found the presence or absence of passage of title to be a 

significant indicator of whether a sale ha[d] occurred in the patent law context.” Milo & Gabby 

LLC, 693 F. App’x at 886. The Federal Circuit concluded that Amazon was not a seller. This 
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was so even though the actual seller used Amazon’s fulfillment service and so Amazon held the 

product for a time in its “warehouse for storage and Amazon boxed up and shipped the product 

when a sale was consummated on the website.” Id. The Federal Circuit also noted that “Amazon 

. . . did not control what information or pictures were put on the product-detail page, nor did it 

control the price for which the product was sold.” Id. Ultimately, “while Amazon’s services 

made it easier for third parties to consummate a sale, the third parties remained the sellers.” Id.

at 887. 

In contrast to Amazon’s non-use of marks, companies such as CafePress.com, Inc. have 

been held liable for direct infringement. In Born to Rock Design Inc. v. CafePress.com, Inc., the 

Southern District of New York allowed a claim for direct infringement to survive summary 

judgment. CafePress.com allowed users to upload their designs to CafePress.com. Customers 

could then choose one of these designs, select an item to have the design printed on (such as a 

shirt or mug), and then “CafePress [would print] the design on the selected merchandise and 

ship[] it to the customer. CafePress collect[ed] the payment, a portion of which [was] remitted to 

the CafePress.com user who created and uploaded the design.” Born to Rock Design Inc. v. 

CafePress.com, Inc., No. 10 Civ. 8588(CM), 2012 WL 3954518, at *1 (S.D.N.Y. Sept. 7, 2012). 

Similarly, the Eastern District of Wisconsin held SunFrog, LLC liable for direct infringement. 

H–D U.S.A., LLC v. SunFrog, LLC, 311 F.Supp.3d 1000 (E.D. Wisc. 2018). There, the court 

found SunFrog’s actions to constitute use. 

SunFrog, of course, not only advertises and offers infringing designs for sale and 

prints them onto products, it also ships the finished products and handles payment 

processing. Unlike the showroom [in GMA Accessories], SunFrog exerts control 

over nearly every aspect of the advertising, sale, and manufacture of the 

infringing goods, save designing the mockups. By any measure, then, SunFrog 

uses the H – D Marks. 

H–D U.S.A., LLC, 311 F.Supp.3d at 1030. 
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 Redbubble contends that it does not use Ohio State’s trademarks in commerce because it 

is not the “seller” of the goods. Rather, the independent artists design the items that are listed on 

the website. Once a customer places an order, the third-party manufacturer produces the 

product, and a third-party ships the finished item to the buyer. (Decl. of Anuj Luthra, ECF No. 

26). In this way, Redbubble operates like Amazon, hosting a website where sellers can list 

goods for sale, and arranging for the shipment of goods for the seller. Ohio State, however, 

argues that Redbubble cannot merely subcontract its way out of compliance with the Lanham 

Act. Redbubble makes all of the arrangements for the artist to produce, ship, and sell the 

potentially infringing products. Additionally, “[t]he products are delivered in Redbubble 

packaging, with a Redbubble invoice, with Redbubble stickers and care instructions, and a 

Redbubble tag attached to the product.” (ECF No. 39 at 11). 

 Redbubble is not liable for direct infringement on these facts. The caselaw sets up a 

spectrum against which to measure Redbubble’s conduct. At one end are companies that 

function like auction houses and are not liable for direct infringement. At the other end are 

companies like CafePress and SunFrog that themselves manufacture and ship infringing products 

to the customer. Redbubble does not fit neatly into either of these categories. But Redbubble’s 

actions put it closer to the auction house side of the spectrum than to CafePress. Redbubble 

essentially offers to “independent artists” an online platform through which to sell their goods 

and access to Redbubble’s relationships with manufacturers and shippers. Redbubble is not 

directly producing the goods nor, like SunFrog, is Redbubble maintaining a design database and 

then placing the designs onto goods that customers order. 

 The cases on which Ohio State relies are inapposite. Ohio State argues that Johnson & 

Johnson and Lifescan, Inc. v. South Pointe Wholesale, Inc. stands for the proposition that 
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intermediaries can be liable for direct infringement “where (i) the intermediary . . . was 

communicating with the consumer, (ii) customers of the defendant believed they were doing 

business with the intermediary, and (iii) invoices for the infringing goods were paid to the 

intermediary instead of to the real supplier of the goods.” (ECF No. 39 at 10) (citing Johnson & 

Johnson and Lifescan, Inc. v. South Pointe Wholesale, Inc., 08-CV-1297 (SLT) (SMG), 2014 

WL 12558573 (E.D.N.Y. Mar. 8, 2014). But the “intermediaries” in Johnson & Johnson and 

Lifescan, Inc. were not intermediaries at all. Rather, the defendants there purchased goods from 

suppliers and then sold them directly to the consumer or otherwise “bore the risk of loss.” 

Johnson & Johnson and Lifescan, Inc., 2014 WL 12558573, at *18–19. Additionally, the 

customers in Johnson & Johnson and Lifescan, Inc., purported to have “no knowledge about the 

source of the [products] other than that they were acquired from [Defendant]” and that “did not 

know [Defendant’s] source of supply and did not expect [Defendant] to share this ‘confidential’ 

information.” Id. at *19. Here, Redbubble lists in several places that the product is from an 

“independent artist,” and in some places names the artist directly. (ECF No. 23 at 8 n.5; Deshais 

Decl. ¶ 12). 

 Ohio State cites to Nike, Inc. v. Eastern Ports Custom Brokers, Inc., for the proposition 

that intermediaries that are as involved as Redbubble have been held liable for infringement and 

counterfeiting. Nike, Inc. v. Eastern Ports Custom Brokers, Inc., No.: 2:11-cv-4390-CCC-MF, 

2018 WL 3472628 (D.N.J. July 19, 2018). But the defendants in Nike, Inc. v. Eastern Ports 

Custom Brokers, Inc., were held liable for participating in an arrangement much more elaborate 

than Redbubble’s. The defendants in Nike, Inc. were involved in importing goods into the 

United States. They “[took] responsibility for the goods and ma[de] representations regarding 

the nature of the goods.” Nike, Inc. v. Eastern Ports Custom Brokers, Inc., 2018 WL 3472628, at 
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*8. The defendants signed Bills of Lading and made false representations about the goods being 

imported. Id. at *7–8. 

 Ohio State takes the language from Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc.

out of context. Ohio State relies on Lorillard Tobacco Co. to argue that “Redbubble’s argument 

that it has hired third-party contractors and therefore does not produce, package, ship, or 

distribute the infringing products has already been found unpersuasive by the Sixth Circuit.” 

(ECF No. 39 at 5). Not so. While Lorillard Tobacco Co. does say “[w]e also find . . . no reason 

to restrict liability to those who actually create, manufacture or package the infringing items,” 

Lorillard Tobacco Co., 453 F.3d at 381, that case dealt with a brick-and-mortar store that 

physically stocked and sold counterfeit cigarettes. Ohio State’s reliance on Lorillard Tobacco 

Co. merely begs the question of whether Redbubble is in fact a seller. Redbubble contests that 

very assumption. Thus, whether Redbubble is a “seller” is an essential question that this Court 

must answer prior to making a finding on Redbubble’s liability. 

 Lastly, Ohio State relies on Skreened Ltd. as evidence of this Court’s previous rejection 

of defenses similar to Redbubble’s. (ECF No. 17 at 2). But Judge Frost in Skreened Ltd. 

specifically noted that “[s]ubject to a few exceptions . . . Defendants do not dispute . . . whether 

Defendants used the trademark . . . .” Skreened Ltd., 16 F.Supp.3d at 912. Redbubble has based 

its defense primarily on the argument that it is not “using” Ohio State’s trademarks. While 

Skreened Ltd.’s business model is not entirely clear from the case, it also appears that Skreened 

Ltd. may have printed the infringing goods itself, making Skreened Ltd. factually distinct from 

Redbubble. See Skreened Ltd., 16 F.Supp.3d at 908. 

 Ohio State has made some conclusory references to Redbubble’s advertising of the 

allegedly infringing products. Ohio State has argued in its Response to Redbubble’s Cross-
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Motion for Summary Judgment that Redbubble “advertis[es] the counterfeit goods on its site,” 

(ECF No. 39 at 10), and “advertises the infringing goods for sale,” (ECF No. 39 at 11). These 

allegations are too conclusory to form a basis for direct trademark infringement or counterfeit 

liability. Ohio State also argues that “[t]he fact that OSU’s trademarks are displayed on 

Redbubble’s website with products offered for sale” also constitutes use. (ECF No. 39 at 5). 

Ohio State points to 15 U.S.C. § 1127 which states that “use” can include a mark being “placed 

in any manner on the goods or their containers or the displays associated therewith.” 15 U.S.C. 

§ 1127 (emphasis added). But this argument ignores the fact that Redbubble is not the one 

placing Ohio State’s marks on its website. Rather, the marks are uploaded by the independent 

artists. 

 Therefore, Redbubble is not liable for direct trademark infringement. Because liability 

for counterfeiting first requires a finding of liability for trademark infringement, Redbubble 

cannot be liable for counterfeiting. And since Ohio State has based its unfair competition and 

passing off claim on Redbubble’s alleged use of the Ohio State and Meyer trademarks, 

Redbubble is not liable for unfair competition and passing off. 

B. Right of Publicity Claim under State Law 

 Ohio State has also claimed a violation of their Right of Publicity in the Urban Meyer 

persona under Ohio Revised Code § 2741. To state a claim for a violation of the right of 

publicity under Ohio law, the defendant must have used an “aspect of an individual’s persona for 

a commercial purpose.” ORC § 2741.02. Commercial purpose is defined as follows: 

(B) “Commercial purpose” means the use of or reference to an aspect of an 

individual's persona in any of the following manners: 

(1) On or in connection with a place, product, merchandise, goods, services, or 

other commercial activities not expressly exempted under this chapter; 

(2) For advertising or soliciting the purchase of products, merchandise, goods, 

services, or other commercial activities not expressly exempted under this chapter; 
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(3) For the purpose of promoting travel to a place; 

(4) For the purpose of fundraising. 

Ohio Rev. Code § 2741.01. 

 Ohio State has argued that Redbubble meets the “use” requirement under state law for the 

same reasons Redbubble meets the “use” requirement under federal law. Redbubble argues that 

the statutory right of publicity requires a more intentional “use” than federal law. Redbubble 

argues that “a defendant must take affirmative steps to . . . exploit the persona in question and 

cannot be held liable for a right of publicity claim based on content uploaded by a third party.” 

(ECF No. 45 at 22). This Court need not decide whether Ohio’s statutory right of publicity 

requires such exploitative use, because Redbubble has not “used” Ohio State’s marks under the 

more lenient federal definition. 

IV. CONCLUSION

 For the foregoing reasons, Ohio State’s Motion for Summary Judgment (ECF No. 17) is 

hereby DENIED. Redbubble’s Cross-Motion for Summary Judgment (ECF No. 23) is 

GRANTED. This case is CLOSED.

IT IS SO ORDERED. 

 

 s/Algenon L. Marbley 

 ALGENON L. MARBLEY 

 UNITED STATES DISTRICT JUDGE

DATED: March 29, 2019