IN THE UNITED STATES DISTRICT COURT 

FOR THE SOUTHERN DISTRICT OF OHIO 

EASTERN DIVISION 

THE OHIO STATE UNIVERSITY, : 

: 

 Plaintiff, : Case No. 2:17-cv-01092-ALM-CMV 

: 

 v. : Judge Algenon L. Marbley 

: 

REDBUBBLE INC., et al., : 

: 

Magistrate Judge Chelsey M. Vascura 

 Defendant. : 

DEFENDANT REDBUBBLE INC.’S REPLY MEMORANDUM 

IN SUPPORT OF CROSS-MOTION FOR SUMMARY JUDGMENT 
i 

TABLE OF CONTENTS 

I. INTRODUCTION & SUMMARY OF ARGUMENT ...........................................................1 

II. ARGUMENT ..........................................................................................................................3 

 A. Redbubble Is Not Liable for Direct Trademark Infringement as a Matter 

of Law Because It Has Not Used the Marks in Question ........................................3 

Summary of Argument: To prevail on its claims in this action, all of which are 

based solely on a theory of direct liability, OSU must show that Redbubble itself 

“used the [OSU Marks] in commerce.” Hensley Mfg. v. ProPride, Inc., 579 F.3d 

603, 609 (6th Cir. 2009). Since Redbubble has not made any “use” of the Accused 

Marks, summary judgment in favor of Redbubble is warranted on OSU’s direct 

trademark infringement claims. 

 1. The Third-Parties Who Design and Upload Infringing Listings, 

 Not Redbubble, Are the Product Sellers, and Thus the Parties 

 Directly Liable for Any Infringement ............................................................4 

Summary of Argument: The undisputed evidence demonstrates that the 

sales contracts for transactions occurring through the Redbubble 

Marketplace are between the purchaser and the third-party Seller. These 

facts permit only one conclusion: the third-party artists, not Redbubble, 

are the sellers of the products offered on the Redbubble Marketplace. 

 a. Redbubble does not meet the legal definition of a seller ........................5 

Summary of Argument: Courts have universally held that parties who 

act as intermediaries for a transaction, like Amazon and also 

Redbubble, are not direct sellers and are not directly liable for 

infringement under the Lanham Act. The reasoning of these cases 

applies with equal force to Redbubble, and OSU’s efforts to 

distinguish these cases fail. Like Amazon, Redbubble provides a 

platform that enables third-party Sellers to offer products for sale that 

the Sellers themselves create and upload, without Redbubble’s active 

involvement. Like Amazon, Redbubble performs various services to 

facilitate the functioning of the Marketplace, including payment 

processing, and charges a fee for those services. Like Amazon, 

Redbubble does not make the products offered for sale on its 

Marketplace. And like Amazon, Redbubble never takes title to the 

products sold via the Marketplace, and never enters into a contract 

with purchasers of those products; rather, all sales and offers for sales 

are made by third-party Sellers. 

 b. Redbubble cannot be held liable for direct trademark 

 infringement merely because site visitors might mistakenly 

 believe Redbubble sells the products offered through the 

 Redbubble Marketplace ........................................................................10 

Summary of Argument: OSU argues that “[c]onsumers are not 

visiting Redbubble’s site to purchase goods from an individual artist’s 
ii 

shop, they are buying goods from Redbubble.” There is no legal 

authority for this novel proposition, and OSU has not offered any 

evidence that users who purchase products on the Redbubble 

marketplace believe that Redbubble is selling those products, rather 

than the individual third-party Sellers who design, upload and offer 

the products and who are designated as the sellers on the 

Marketplace. In fact, the information that a consumer sees before 

purchasing a product on the Redbubble Marketplace consistently 

identifies the third-party Seller of the products. 

OSU’s argument that post-sale communications between Redbubble 

and purchasers of products sold on the Redbubble Marketplace 

subjects Redbubble to liability for direct infringement also lacks both 

legal and factual support. OSU does not point to any case law that 

might support such a proposition, and OSU’s description of these 

communications is misleading – Redbubble’s post sale 

communications consistently and repeatedly inform every customer 

that they are buying from the third-party seller, not Redbubble. 

 2. As a Matter of Law, Redbubble Cannot Be Liable for Direct

 Infringement for Facilitating the Manufacture or Distribution 

 of Product by Third Parties ..........................................................................15 

Summary of Argument: As a matter of law, facilitating infringement by

others cannot subject Redbubble to liability for direct trademark 

infringement. Liability for “facilitating infringement” is not direct 

liability; if anything, it may comprise contributory infringement. See 

Tiffany (NJ) Inc. v. eBay, Inc., 600 F. 3d 93, 103 (2nd Cir. 2010). OSU has 

not asserted a claim for contributory infringement. OSU also 

disingenuously argues that Redbubble is directly liable for trademark 

infringement because it provides an automated infrastructure that will 

“ineluctably lead to the manufacture of infringing products.” No published 

opinion has ever based liability for direct trademark infringement on 

facilitating the manufacture of infringing products or performing 

“legwork” for infringing transactions. An online marketplace like 

Redbubble that does not itself make or sell infringing products simply 

does not engage in conduct that could potentially subject it to liability for 

direct trademark infringement. 

 B. OSU Has Not Offered Evidence of Intentional Misconduct from which 

a Trier of Fact Could Find in OSU’s Favor on its Third Count for 

Counterfeiting ........................................................................................................18 

Summary of Argument: OSU must prove not only that Redbubble used 

counterfeit OSU trademarks, but also that Redbubble (as opposed to the thirdparty Sellers) “intentionally used the mark knowing it was a counterfeit.” Too, 

Inc. v. TJX Cos., 229 F. Supp. 2d 825, 837 (S.D. Ohio 2002). OSU has made no 

effort to show that Redbubble knowingly and intentionally permitted the sale of 

any specific product bearing an OSU trademark. Rather, OSU insists that 
iii 

Redbubble has acted with the requisite intent because it has in general been 

“willfully blind” to the alleged counterfeiting. To constitute “willful blindness,” 

the defendant must (1) subjectively believe that there is a high probability that a 

fact exists and (2) take deliberate actions to avoid learning of that fact. GlobalTech Appliances, Inc. v. SEB S.A., 563 U.S. 754, 769 (2011). The undisputed 

record establishes that Redbubble has deliberately sought to improve its 

identification and interception of infringement at the earliest opportunity. OSU’s 

interpretation of “willful blindness” would render the intent requirement of the 

counterfeiting statute and the “additional act” required for enhanced damages a 

nullity, in violation of multiple rules of statutory construction. 

 C. Redbubble Is Entitled to Judgment in Its Favor on OSU’s Fourth Count 

for Violation of Right of Publicity Under O.R.C. Chapter 2741 ...........................21 

 1. Redbubble Is Not Liable Because It Did Not Use Mr. Meyer’s 

 Persona .........................................................................................................21 

Summary of Argument: OSU argument that Redbubble “used” Mr. 

Meyer’s persona in the same way it used OSU’s trademark is both 

factually and legally erroneous. Factual, OSU has not established that 

Redbubble used either OSU’s trademarks or Mr. Meyer’s persona. 

Legally, OSU mistakenly assumes that the standards for “use” are the 

same for the Ohio Right of Publicity statute as they are under federal 

trademark law, without any authority to support that assumption. Courts 

have consistently held that in the context of right of publicity, to “use” a 

plaintiff’s persona, a defendant must take affirmative steps to specifically 

exploit the persona in question and cannot be held liable for a right of 

publicity claim based on content uploaded by a third party. 

 2. OSU Does Not Dispute that Redbubble Is Statutorily Exempt 

 from Liability on OSU’s Right of Publicity Claim as an 

 Intermediary .................................................................................................22 

Summary of Argument: Because OSU did not challenge (or even address) 

Redbubble’s Section 2741.02(E) argument and related evidentiary 

showing, Redbubble is entitled to summary judgment on OSU’s right of 

publicity claim based on this statutory exemption. 

 3. Redbubble Is Immune from OSU’s State Law Right of Publicity 

 Claim as an Interactive Computer Service Under Section 230 of 

 the Communications Decency Act ..............................................................22 

Summary of Argument: OSU’s Opposition does not seriously dispute (or 

even directly address) Redbubble’s showing that it satisfies the three 

requirements to qualify for this statutory immunity, as set forth in Jones v. 

Dirty World Entertainment Recordings, LLC, 755 F.3d 398, 409 (6th Cir. 

2014). Instead, OSU argues that a right of publicity claim is a state law 

intellectual property claim, and that such claims fall outside the 

protections of the statute, relying primarily on dicta by Judge Frost in 

Skreened. Admittedly, none of the cases cited by either of the parties are 
iv 

binding on this court. However, (1) as noted in Perfect 10, Inc. v. Ccbill 

LLC, 488 F.3d 1102, 1118 (9th Cir. 2007), “[t]he majority of federal 

circuits have interpreted the CDA to establish broad ‘federal immunity to 

any cause of action that would make service providers liable for 

information originating with a third-party user of the service;’” (2) the 

Sixth Circuit has held that the immunity provisions in Section 230 should 

be construed broadly, and that “close cases must be resolved in favor of 

immunity, lest we cut the heart out of section 230 by forcing websites to 

face death by ten thousand duck-bites, fighting off claims that they 

promised or encouraged – or at least tacitly assented to – the illegality of 

third parties” (see Jones, supra, 755 F.3d at 408); and (3) the only federal 

appellate court to directly rule on whether right of publicity claims are 

protected under the CDA, the 9th Circuit in Perfect 10, supra, 488 F.3d at 

1119, specifically held that the CDA bars a claim for violation of right of 

publicity against a service provider that otherwise qualifies for the 

protections of the CDA. 

CONCLUSION ...........................................................................................................................24 

CERTIFICATE OF SERVICE ...................................................................................................25 
1 

I. INTRODUCTION & SUMMARY OF ARGUMENT 

Redbubble is not a rogue organization that disregards the intellectual property rights of 

others. To the contrary, Redbubble has spent substantial time and resources to combat the 

uploading and sale of infringing content through the Redbubble Marketplace, it has worked 

collaboratively and successfully with hundreds of content owners to protect their intellectual 

property rights, and its proactive screening procedures are preventing over 99% of listings that 

may potentially infringe OSU’s marks from being offered for sale by third-party Sellers through 

the Marketplace. 

Nor is Redbubble a printer/seller who can be held liable for direct infringement based on 

its manufacture, sale or transportation of infringing products. Rather, the evidence reflects that 

for sales occurring through the Redbubble Marketplace, Redbubble is an intermediary - or, in 

OSU’s words, a “facilitator.” But a facilitator cannot be held liable for direct infringement. 

Indeed, OSU has not contested the similarities between Redbubble’s business model and that of 

Amazon, which has repeatedly been held not liable for direct infringement. See, e.g., Milo & 

Gabby, LLC v. Amazon.com, Inc., 2015 WL 4394673 (W.D. Wash. July 16, 2015), aff’d 693 F. 

App’x 879 (Fed. Cir. 2017) (“Milo & Gabby I) (granting summary judgment of no direct 

trademark infringement because Amazon was not the seller of the products); Tre Milano, LLC v. 

Amazon.com, Inc., No. B234753, 2012 WL 3594380 (Cal. App. 2012) (same); see also H-D 

U.S.A., LLC v. SunFrog LLC, 311 F. Supp. 3d 1000, 1037 (E.D. Wisc. 2018)(explicitly 

distinguishing SunFrog’s printer/seller business model from that of a marketplace like Amazon 

or Redbubble). 

Redbubble simply does not engage in activities that could even arguably subject it to 

liability for direct trademark infringement. More specifically, and in light of the evidence 

submitted by Redbubble and OSU’s failure to counter that evidence in its responsive papers, the 
2 

following dispositive facts must be deemed established for purposes of this motion: 

• Redbubble did not create, design or upload the allegedly infringing images; 

• Redbubble did not print or otherwise manufacture the allegedly infringing 

products, nor own or control the facilities or equipment with which those products 

were printed or manufactured; 

• Redbubble never took possession, control, or ownership of or title to the Accused 

Products; and 

• Redbubble did not pack, ship, or even handle those products. 

Each of these facts distinguishes OSU from the opinions in Sunfrog, Skreened, and the other 

cases on which OSU primarily relies, in which liability for direct infringement was found.1

OSU has not cited, and Redbubble is unaware of, any case that has ever imposed liability 

for direct trademark infringement on a party that, like Redbubble, has not itself made, sold, 

transported or taken title to and/or responsibility for the goods that are the subject of the claim. 

Rather, much of OSU’s briefing focuses on how Redbubble may facilitate the allegedly 

infringing conduct of others. To the extent a claim might theoretically be stated against 

Redbubble for any connection with facilitating infringement of others, that claim would be one 

for contributory, not direct, infringement. See Tiffany (NJ) Inc. v. eBay, Inc., 600 F. 3d 93, 103 

(2nd Cir. 2010) (emphasis added) (expressly defining contributory infringement as “culpably 

facilitating the infringing conduct of the counterfeiting vendors”). But OSU has expressly 

represented that “OSU has not brought any claim for contributory infringement. OSU has only 

 

1

 “Sunfrog” refers to H-D U.S.A., LLC v. SunFrog LLC, 311 F. Supp. 3d 1000 (E.D. Wisc. 

2018), while “Skreened” refers to Ohio State Univ. v. Skreened Ltd., 17 F. Supp. 3d 905 (S.D. 

Ohio 2014). 
3 

brought claims against Redbubble for direct infringement.” See OSU Opp. at i.2

As a matter of law, the undisputed facts show that Redbubble has not engaged in conduct 

for which it can be held either directly liable under the Lanham Act or in violation of Ohio’s 

statutory right of publicity. Accordingly, entry of summary judgment in favor of Redbubble on 

OSU’s claims is warranted. 

II. ARGUMENT 

A. Redbubble Is Not Liable for Direct Trademark Infringement as a Matter of 

Law Because It Has Not Used the Marks in Question. 

Redbubble agrees with OSU that there is no dispute with respect to the facts that are 

material to resolving this motion. However, OSU’s Opposition focuses on the wrong facts. 

While OSU has devoted substantial briefing to its ownership of protectable trademarks, 

and whether products that infringe those trademarks were purchased through the Redbubble 

Marketplace, these facts are immaterial to this motion,3

 because OSU has failed to demonstrate 

that Redbubble engaged in conduct that could constitute an actionable “use” of the OSU marks 

in commerce. To prevail on its claims in this action, all of which are based solely on a theory of 

direct liability, OSU must show that Redbubble itself “used the [OSU Marks] in commerce.” 

Hensley Mfg. v. ProPride, Inc., 579 F.3d 603, 609 (6th Cir. 2009). The Lanham Act itself defines 

“use in commerce” as occurring with respect to goods when the mark “is placed in any manner 

 

2

 “OSU Opp.” or “OSU Opposition” refers to OSU’s Reply in Support of Plaintiff’s Motion 

for Summary Judgment and Memorandum in Opposition to Defendant’s Cross-Motion for 

Summary Judgment, Docket No. 17. 

3

 Redbubble has not disputed for purposes of this motion that third parties have designed, 

uploaded and sold through the Redbubble Marketplace a limited number of products that use 

OSU’s trademarks, but Redbubble cannot be a direct infringer for those transactions. Only the 

third-party Sellers who created, uploaded and sold the allegedly infringing designs, who hold 

title to the accused products, and who are in contractual privity with their purchasers could 

potentially be held liable for direct infringement.
4 

on the goods or their containers or the displays associated therewith or on the tags or labels 

affixed thereto” and when “the goods are sold or transported in commerce.” 15 U.S.C. § 1127. 

Without directly addressing these legal definitions or standards for what constitutes an 

infringing “use,” OSU basically asserts two categories of “uses” of its marks that it claims could 

subject Redbubble to liability for direct infringement: 1) Redbubble is itself the “seller” of 

products offered on the Redbubble Marketplace; 4

 and 2) Redbubble has “facilitated 

infringement” by contracting with third parties to have infringing products manufactured and 

sold, or by providing platform software that automatically relays instructions to manufacture the 

infringing products, or by “performing most of the legwork” that resulted in the infringing 

transactions. These arguments are both factually and legally baseless. 

Since Redbubble has not made any “use” of the Accused Marks, summary judgment in 

favor of Redbubble is warranted on OSU’s direct trademark infringement claims. 

1. The Third-Parties Who Design and Upload Infringing Listings, Not 

Redbubble, Are the Product Sellers, and Thus the Parties Directly

Liable for Any Infringement. 

Redbubble agrees with OSU that the issue of who makes a sale is a “legal conclusion” 

that can be resolved on summary judgment.5 (See OSU Opp. at 2). Here, the undisputed evidence 

 

4

 OSU points out at page 5 of its Opposition that the Lanham Act prohibits placing an 

infringing mark on the goods in question “or the displays associated with them,” and concludes 

that “the fact that OSU’s trademarks are displayed on Redbubble’s website with products offered 

for sale constitutes unlawful trademark infringement by itself.” However, the undisputed 

evidence establishes that to the extent that OSU’s trademarks are displayed, they are displayed 

by the third-party Sellers when they upload their designs. As a result, OSU’s argument does not 

support its claim that Redbubble is liable for direct trademark infringement. 

5

See, e.g., Metro Communications Co. v. Ameritech Mobile Communications, Inc., 984 F.2d 

739, 745-46 (6th Cir. 1993) (granting summary judgment that defendant is not a seller under the 

Robinson-Patman Act because the facts showed that “[t]he plaintiffs act as intermediaries 

between Ameritech and its service users; they do not buy the services and then resell them to the 

customers”; Milo & Gabby, LLC v. Amazon.com, 144 F. Supp. 3d 1251, 1252-54 (W.D. Wash. 

2015) (“Milo & Gabby II”) (holding that “whether something constitutes an ‘offer for sale’ is a 
5 

shows that the sales contracts for transactions occurring through the Redbubble Marketplace are 

between the purchaser and the third-party Seller; the agreement between Redbubble and the 

third-party Seller confirms that the third-party who creates and uploads the work is the seller; the 

product pages, order and shipping confirmation emails and invoices identify the third-party artist 

as the seller; and perhaps most importantly, Redbubble never takes ownership of or title to the 

products. These facts permit only one conclusion: The third-party artists, not Redbubble, are the 

sellers of the products offered on the Redbubble Marketplace. 

a. Redbubble does not meet the legal definition of a seller. 

As already noted, courts have universally held that “parties who act as intermediaries for 

a transaction,” like Amazon and Redbubble, “are not direct sellers and are not directly liable for 

infringement under the [Lanham Act].” See, e.g., Tre Milano, supra (quoting GMA Accessories, 

Inc. v. BOP, LLC, 765 F. Supp. 2d 457, 464 (S.D.N.Y. 2011)). Although OSU nonetheless 

asserts that “Redbubble is a seller” and therefore is liable for direct infringement, it offers no 

legal definition of a “seller,” or other authority to adequately support its position. On the other 

hand, the cases cited by Redbubble in its Cross-Motion, and particularly those relating to 

Amazon, provide ample guidance on this issue, and clearly establish that it is the third-party 

Sellers, not Redbubble, who “sell” the products offered on the Redbubble Marketplace and who 

would bear any legal liability for direct infringement in connection with those sales. 

In Milo & Gabby LLC v. Amazon.com, Inc., 693 F. App'x 879, 885 (Fed. Cir. 2017) (Milo 

& Gabby III), the Federal Circuit provided an extensive analysis of the standards for determining 

 

question of law; ”); Allstate N.J. Ins. Co. v. Amazon.com, Inc., Civil Action No. 17-2738 (FLW) 

(LHG), 2018 U.S. Dist. LEXIS 123081, at *37 (D.N.J. July 24, 2018) (granting summary 

judgment that Amazon is not a “seller” under the New Jersey product liabilities laws, and 

discussing the decisions of numerous courts who have come to the same conclusion). 
6 

who may be liable as a product “seller.”6 The Court began by reviewing the “ordinary meaning” 

of the term “sale” in dictionary definitions and under the UCC, noting that “the common[] or 

usual meaning of the term sale includes those situations in which a contract has been made 

between two parties who agree to transfer title and possession of specific property for a price.” 

693 F. App'x at 886. The court then observed that at least in the patent law context, “the presence 

or absence of passage of title [is] a significant indicator of whether a sale has occurred.” Id. 

Applying this “ordinary meaning” definition to Amazon’s “Fulfillment by Amazon” 

service, in which Amazon stores inventory of third parties’ products that are sold through the 

Amazon Marketplace and packages and ships them to consumers, the Court concluded that 

Amazon was not a seller even in that context. In so ruling, the Court reasoned that “Amazon 

never held title to the accused products” and 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. at 886. 

Amazon, therefore, was not responsible for the actual listing of the product for 

sale, consummating the sale, or transferring title. Instead, Amazon merely 

provided an online marketplace that third-party sellers could use to sell their 

products and then, in some instances when the third-party sellers used the 

additional Amazon services, shipped the products to the final destination. Thus, 

while Amazon’s services made it easier for third parties to consummate a sale, the 

third parties remained the sellers. 

Id. at 886-87. See also GMA Accessories, supra, 765 F. Supp. 2d at 464 (holding that defendant 

was not a “seller” under the Lanham Act because “[t]here is no evidence that [defendant] took 

 

6

 While the Federal Circuit’s detailed discussion of seller in Milo & Gabby III was in the 

specific context of a copyright infringement claim, it is equally relevant to and indeed draws 

support from trademark law as well. In fact, the district court in Milo & Gabby I applied 

basically the same rationale in granting summary judgment to Amazon on plaintiff’s direct 

trademark infringement claim, and that judgment was affirmed on appeal in Milo & Gabby III.
7 

title to the merchandise, maintained an inventory of merchandise, bore the risk of loss or other 

traditional indicia of status as seller”). 

Indeed, Amazon has consistently been held immune from liability for direct intellectual 

property infringement claims directed at products listed by third parties on the Amazon 

Marketplace based on a determination that Amazon is not the “seller” of those products. See,

e.g., Milo & Gabby I, supra, 15 WL 4394673 at *6 (granting summary judgment of no direct 

trademark infringement because Amazon is not a seller with respect to products listed thirdparties on the Amazon Marketplace, as the third-parties “retain full title to and ownership of the 

inventory sold”); Tre Milano, supra (finding that Amazon was a “transactional intermediary” 

and therefore was not liable for direct trademark infringement, as “Amazon did not currently 

have any [accused products] in its own inventory; those it sold belonged to third party sellers”).7 

And courts have similarly concluded that Amazon is not a seller in other areas of the law.8

 

7

See also Corbis Corp. v. Amazon.com, Inc., 351 F. Supp. 2d 1090 (W.D. Wash. 2004) 

(granting summary judgment on direct copyright infringement claim, and holding that for 

products sold in Zshops, the predecessor to third-party sellers on the Amazon Marketplace, 

“Amazon operates web sites, provides retail and third party selling services to Internet users, and 

maintains computers to govern access to its web sites”); Hendrickson v. Amazon.com, Inc., 298 

F. Supp. 2d 914 (C.D. Cal. 2003) (granting summary judgment in favor of Amazon on a direct 

copyright infringement claim based on product sold by a third-party seller, noting that “Amazon 

merely provided the forum for an independent third party seller to list and sell his merchandise” 

and was not “actively involved in the sale”).

8

See, e.g., Eberhart v. Amazon.com, Inc., 325 F. Supp. 3d 393 (S.D.N.Y. 2018) (holding as a

matter of law that Amazon is not a seller or distributor of products listed by third-parties on the 

Amazon Marketplace for purposes of a strict product liability claim); Allstate N.J. Ins. Co. v. 

Amazon.com, Inc., 2018 WL 3546197, at *5-12 (D.N.J. July 24, 2018) (same); Fox v. 

Amazon.com, Inc., 2018 WL 2431628, at *8 (M.D. Tenn. May 30, 2018) (same); Erie Ins. Co. v. 

Amazon.com Inc., 2018 WL 3046243, at *1-3 (D. Md. Jan. 22, 2018) (same); Oberdorf v. 

Amazon.com, Inc., 295 F. Supp. 3d 496, 499-501 (M.D. Pa. 2017) (same); Stiner v. Amazon.com 

Inc, 2017 WL 9751163, at *5-7 (Ohio Com. Pl. 2017) (same, applying Ohio law); McDonald v. 

LG Elecs. USA, Inc., 219 F. Supp. 3d 533, 541-42 (D. Md. 2016) (dismissing a Maryland-law 

breach of warranty claim against Amazon because “Amazon's role as the ‘platform’ for the thirdparty sales does not qualify it as a merchant or a seller under Maryland's UCC”). 
8 

Presumably recognizing that this line of cases, and particularly the opinions involving 

Amazon, severely undermines OSU’s legal position, OSU engages in a half-hearted effort to 

distinguish these authorities. For example, OSU erroneously argues at page 8 of its Opposition 

that the Milo & Gabby I opinion is inapplicable because it “was a copyright infringement case 

and did not analyze trademark infringement at all.” To the contrary, the district court in Milo & 

Gabby granted Amazon’s motion for summary judgment on plaintiff’s direct trademark 

infringement claim, reasoning in relevant part as follows: 

[T]he Court rejects Plaintiffs' contention that Amazon is liable for trademark 

infringement based on its sales and shipment of physical items. Here, the 

evidence demonstrates that Amazon is not the seller of the alleged infringing 

products. Likewise, third-party sellers retain full title to and ownership of the 

inventory sold by the third party. Plaintiffs have provided no evidence to the 

contrary with respect to any specific third party involved with the products in this 

case. Accordingly, the Court concludes that Amazon was not the seller of the 

products at issue here. 

 

Milo & Gabby I, supra, 2015 WL 4394673, at *6 (emphasis added) (citations omitted), aff’d

Milo & Gabby III, supra, 693 F. App’x at 881, 886. 

OSU also attempts to distinguish the Tre Milano opinion, suggesting that the court there 

“found that Amazon did not directly infringe Tre Milano’s trademarks because it merely 

facilitated a sale between a third-party buyer and seller and did not facilitate the creation of the 

product or the placement of the Tre Milano trademark on the counterfeit product.” OSU Opp. at 

8. But the Tre Milano ruling contains no discussion whatsoever along these lines. Rather, the 

California Court of Appeal held that Amazon was not a direct trademark infringer because 

“Amazon is a service provider, not the seller. Amazon did not currently have any [accused 

products] in its own inventory; those it sold belonged to third party sellers. That Amazon 

provided the product description and handled the payments did not make it a direct seller of the 

products.” 2012 WL 3594380 at *12. 
9 

Given the striking similarities between the Redbubble Marketplace and the Amazon 

Marketplace, the reasoning of these cases applies with equal force to Redbubble. As summarized 

at pages 3-8 of Redbubble’s Cross-Motion, like Amazon, Redbubble is “a service provider, not 

the seller.” Like the Amazon Marketplace, the Redbubble Marketplace provides a platform that 

enables third-party Sellers to offer products for sale using listings that the Sellers themselves 

create and upload, without Redbubble’s active involvement. Like Amazon, Redbubble performs 

various services to facilitate the functioning of the Marketplace, and charges a fee for those 

services. Like Amazon, Redbubble does not make the products listed by third parties on its 

Marketplace, nor set the price for those products. And like Amazon, Redbubble never takes title 

to the products sold via the Marketplace, and never enters into a contract with purchasers of 

those products; rather, all sales and offers for sales are made by third-party Sellers. 

There are, of course, differences between the Redbubble Marketplace and the Amazon 

Marketplace, but they cut against a finding of direct trademark infringement. For example, 

Amazon has created product descriptions for items sold on the Amazon Marketplace, while 

Redbubble does not. Similarly, Amazon stores inventory of products offered by third-party 

sellers, in facilities controlled by Amazon, and packages and ships those products itself. 

[Supplemental Declaration of Kenneth B. Wilson in Support of Redbubble Inc.’s Cross-Motion 

for Summary Judgment (“Wilson Supp. Decl.”) (filed contemporaneously herewith), Exh. D.]

Redbubble does not provide any such services.9

 

9

 OSU argues that Redbubble differs from Amazon because the goods sold on the Redbubble 

Marketplace are “newly made” or because Redbubble facilitates their manufacture, but as 

discussed in more detail below, OSU offers no reason, and Redbubble cannot think of any 

reason, why this fact makes a difference to the question at hand, namely whether Redbubble is 

liable for direct infringement based on the manufacture or sale of allegedly infringing products. 
10 

In sum, as is the case with other transactional intermediaries or facilitators like Amazon, 

Redbubble did not sell or otherwise “use” the OSU trademarks at issue in this case. Redbubble 

therefore cannot be liable for direct infringement for transactions occurring through the

Redbubble Marketplace as a matter of law. 

b. Redbubble cannot be held liable for direct trademark 

infringement merely because site visitors might mistakenly 

believe Redbubble sells the products offered through the 

Redbubble Marketplace. 

Rather than directly addressing the relevant legal standards, OSU argues that Redbubble 

should be held liable as a seller, not because Redbubble sells products, but because consumers 

purportedly believe they are buying goods from Redbubble. [OSU Opp. at 9] Even if there was 

legal authority for this novel proposition (and OSU has cited no such authority), OSU has not 

offered any evidence that users who purchase products on the Redbubble marketplace believe 

that Redbubble is selling those products, rather than the individual third-party Sellers who 

design, upload and offer the products, hold title to the products, and contract for their sale. 

As its sole support for the proposition that consumer perception can determine whether 

someone is a “seller,” OSU relies on Johnson & Johnson and Lifescan, Inc. v. South Pointe 

Wholesale, Inc., 2014 WL 12558573 (S.D.N.Y. 2014), but that reliance is misplaced. In 

Lifescan, certain defendants unsuccessfully attempted to avoid liability for direct infringement by 

arguing that they were not sellers, but rather “transactional intermediaries.” However, unlike 

Redbubble, those defendants purchased (and therefore took title to) the infringing products from 

various suppliers. Id. at *19. Moreover, and also unlike Redbubble, the defendants not only gave 

purchasers the impression that they were the sellers of the products, but affirmatively concealed 
11 

the identity of the entities that defendants claimed were the sellers. Id. On those facts, the court 

unremarkably found that the defendants were not in fact intermediaries. Id.10

In contrast, the information that a consumer sees before purchasing a product on the 

Redbubble Marketplace consistently identifies the third-party who designs and uploads the 

product listings as the seller of the products. For example, the User Agreement that every 

Redbubble customer enters into as a condition of using the Redbubble Marketplace repeatedly 

makes clear that the purchasers are buying from the third-party Sellers, not Redbubble. [Toy 

Decl. (Doc. #24) Exh. C.] And each product page clearly lists that the product is “by” the thirdparty Seller and contains other information about the Seller’s portfolio and store. [Luthra Decl. 

(Doc. #26) ¶ 10; Wilson Supp. Decl. ¶¶ 2-5, Exhs. A-C.] 

OSU argues that post-sale communications between Redbubble and purchasers of 

products sold on the Redbubble Marketplace somehow subject Redbubble to liability for direct 

infringement by not including the identity of the listing artist, but this argument lacks both legal 

and factual support.11 As an initial matter, OSU does not point to any case law that might support 

such a proposition, which would run contrary to both the statutory language and uniform case 

law requiring that a direct infringer use the infringing mark in commerce. And OSU’s 

description of these communications is misleading at best. For example, OSU argues that 

 

10 OSU’s citation to Nike, Inc. v. Eastern Ports Custom Brokers, Inc., 2018 WL 3472628 (D.N.J. 

July 19, 2018), is equally inapposite. In Eastern Ports, the defendants were held directly liable not 

merely because they “played a role” in transporting infringing goods, but because they expressly 

represented that they had legal and financial responsibility for the goods (including by being 

designated consignee on the bill of lading) and made affirmative representations regarding the nature 

of the goods. Id. at *6-7. Redbubble did nothing of the sort. 

11 OSU refers to this under the rubric of “post-sale confusion,” but again, the issue for this 

motion is not whether customers are confused about Redbubble being the source of the allegedly 

infringing products (although OSU has offered no evidence of such confusion). The issue is 

whether Redbubble can be held liable for direct infringement by engaging in conduct that would 

satisfy the legal definition of “use” of the allegedly infringing mark. 
12 

“Redbubble sends a confirmation email from its Redbubble email address noting the order and 

its progress” (OSU Opp. at 9), but neglects to mention that the invoice contained in the email is 

explicitly “issued on behalf of the” named third-party Seller. [See Shook Decl. (Doc. #39-1) Exh. 

3.] OSU also contends that “Redbubble continues to update the customer via email about the 

progress of the order from manufacturing to shipping” (OSU Opp. at 9), but omits that this 

Shipping Confirmation email lists the name of the third-party Seller next to the product. [See

Shook Decl. Exh. 5.] As another example, OSU notes that the product is shipped in Redbubble 

packaging and that the return label contains Redbubble’s return address (OSU Opp. at 9), but 

fails to inform the Court that the name on the return label is “An Artist on Redbubble.”12 [See

Shook Decl. Exh. 7.] 

It also bears mentioning that Amazon has similar post-sale communications with its 

Marketplace purchasers, but those communications provide far less information about the thirdparty Sellers than Redbubble provides. Like Redbubble, when an Amazon Marketplace order is 

placed, Amazon sends an Order Confirmation email from its Amazon email address, but unlike 

Redbubble, that email makes no mention whatsoever of the third-party seller. [Wilson Supp. 

Decl., Exhs. E-F.] Like Redbubble, Amazon also sends a Shipping Confirmation from an 

Amazon email address advising the customer of the shipping status, but once again, and unlike 

Redbubble, that email omits any mention of the third-party who listed the product. [Wilson 

Supp. Decl., Exh. G.] And like Redbubble, Amazon ships products in Amazon packaging 

containing Amazon trademarks, but unlike Redbubble, Amazon’s return shipping label uses 

 

12 OSU also misleadingly claims that Redbubble’s name and trademark appear on clothing 

itself, but these labels are temporary and meant to be removed before the product is worn, and 

the hang tags themselves state that the items were created “by an independent artist.” [Deshais 

Decl. (Doc. #25) ¶¶ 12-13; Supplemental Declaration of James Toy (“Toy Supp. Decl.) (filed 

contemporaneously herewith) ¶ 9.]
13 

Amazon’s own name. [Wilson Supp. Decl., Exh. H.] Yet Amazon’s post-sale communications 

have not resulted in a finding that Amazon is a direct infringer; nor should Redbubble’s. See 

Hendrickson v. Amazon.com, Inc.. 298 F. Supp. 2d 914 (C.D. Cal. 2003) (“The fact that Amazon 

generated automatic email responses when the [infringing item] was listed and again when it was 

sold, does not mean that Amazon was actively involved in the sale”).

OSU argues that notwithstanding the undisputed evidence demonstrating what Redbubble 

does, Redbubble is in fact the seller of products offered on the Redbubble Marketplace because 

Redbubble says or implies that it is in the FAQ portion of its website. (OSU Opp. at 9, 13). But 

as a matter of law, such statements cannot create a triable issue of fact, particularly since there is

consistent and abundant evidence of Redbubble’s conduct that demonstrates that Redbubble is 

not a seller, and Redbubble has explained at Paragraphs 11-14 of the Supplemental Toy 

Declaration that the choice of words in the FAQs are inaccurate, imprecise, or taken out of 

context. As the court in GMA noted in rejecting a similar argument, “[t]he fact that [defendant’s 

employees in deposition] may have referred to brokering a sale as ‘selling’ or having brokered a 

sale as having ‘sold’ is indicative of little more than use of loose language. It is the substance of 

the transaction and not the short-hand label that controls.” GMA, supra, 765 F. Supp. at 464.

Relying on SunFrog, OSU further asserts that consumers are “likely to be confused that 

Redbubble is affiliated with OSU” because “Redbubble purposefully associates itself with the 

OSU counterfeit goods” sold through the Redbubble Marketplace, pointing to the presence of 

Redbubble’s trademarks on Redbubble’s website (including listings for accused products) and on 

packaging for and documentation accompanying infringing products. (OSU Opp. at 13.).13 But 

 

13 OSU’s citation to Redbubble’s own trademark registrations is a red herring. Those 

trademarks protect Redbubble’s right to put its own brand on products. See, e.g., 

https://www.redbubble.com/people/redbubble/works/13053043-redbubble-logo?rbs=a2e918a3-
14 

as discussed at length both in Redbubble’s opening brief and here, SunFrog is simply inapposite. 

Unlike Redbubble, SunFrog actually “prints and ships the [infringing] products.” 311 F. Supp. 

3d at 1014. Moreover, because SunFrog personnel directly placed SunFrog hangtags on 

infringing products, the court reasonably imputed to SunFrog an “inten[t] to signify source, 

sponsorship or affiliation.” Id. at 1031. But for this Court to impute such intent to Redbubble – 

whose personnel played no such volitional role in the alleged comingling of Redbubble’s and 

OSU’s marks – would be unprecedented. 

The cases on which the SunFrog court relied further support this distinction. In Sands, 

Taylor & Wood Co. v. Quaker Oats Co., 978 F.2d 947, 949 (7th Cir. 1992), the infringer used the 

plaintiff’s mark in conjunction with the infringer’s own mark in an advertising tagline that it 

created to sell its own products – a clear example of active, volitional activity by the accused 

infringer’s employees that finds no parallel in the activities of Redbubble employees. And 

International Kennel Club of Chicago, Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1088 (7th Cir. 

1988), the court dismissed as “a smoke screen” an accused infringer’s argument that using the 

infringer’s own mark in conjunction with plaintiff’s mark “decrease[d] the likelihood of 

confusion among consumers” – an argument that Redbubble emphatically has not made. See 

also, e.g., Americana Trading Inc. v. Russ Berrie & Co., 966 F.2d 1284, 1288 (9th Cir. 1992) 

(“the temporary hang-tags bearing [defendant]'s housemark are of only limited value in diluting 

the confusing effect of [defendant]'s use of [plaintiff]'s trademark”). 

 

c4b1-4d2c-bc08-9294ece0c7f1 . They are simply irrelevant to the issue of whether Redbubble is 

putting or selling other brands on products offered on the Redbubble Marketplace (which the 

undisputed evidence shows it is not doing).
15 

Put simply, while courts have declined to automatically immunize a defendant who uses 

its own mark in conjunction with the plaintiff’s mark, OSU’s attempt to construct a rule that 

would treat such use as per se infringing defies precedent and logic. 

2. As a Matter of Law, Redbubble Cannot Be Liable for Direct 

Infringement for Facilitating the Manufacture or Distribution of

Products by Third Parties 

OSU argues that Redbubble is responsible for direct infringement because Redbubble 

“facilitate[s] the creation of the product[s]” sold through the Redbubble Marketplace (thereby 

implicitly recognizing as it must that Redbubble itself does not create the products offered on the 

Marketplace). However, OSU ignores that, as a matter of law, facilitating infringement by others 

cannot subject Redbubble to liability for direct trademark infringement. 

To be clear, Redbubble does not contend (as OSU suggests) that OSU lacks any remedy 

for potential confusion arising out of use of OSU’s marks on the Redbubble Marketplace. OSU 

may have claims for direct trademark infringement against the third-party Sellers who create and 

upload potentially infringing designs, and who sell products bearing those designs.14

Redbubble also recognizes that under certain circumstances that do not exist here, a 

marketplace provider like Redbubble could be held secondarily liable for facilitating the sales of 

infringing products by third-parties. But as the case law makes clear, liability for “facilitating 

infringement” is not direct liability; if anything, it may constitute contributory infringement. See 

Coach, Inc. v. Goodfellow, 717 F.3d 498, 503 (6th Cir. 2013) (“Although the Lanham Act refers 

only to direct trademark infringers, Inwood [Laboratories, Inc. v. Ives Laboratories, Inc., 456 

 

14 Like OSU, Redbubble does not condone infringement of OSU’s Marks. In fact, as 

described in detail in its moving papers (and not disputed by OSU) Redbubble actively 

discourages and attempts to prevent or remove infringement by these third-parties on its site, and 

promptly provided OSU with seller names and sales information upon learning of the substance 

of OSU’s claims. [See Cross-Motion at pp. 9-18.] 
16 

U.S. 844 (1982)] established that liability [for contributory trademark infringement] may also be 

imposed on those who facilitate the infringement”); Tiffany (NJ) Inc. v. eBay, Inc., 600 F. 3d 93, 

103 (2nd Cir. 2010) (contrasting liability for direct infringement, which requires defendant’s 

personal use of the infringing mark, with liability “for contributory infringement – i.e., for 

culpably facilitating the infringing conduct of the counterfeiting vendors”). And OSU has made 

abundantly clear that it has not asserted a claim for contributory infringement.15

 

The Sixth Circuit’s opinion in Lorillard Tobacco Co. v. Amouri’s Grand Foods, Inc., 453 

F.3d 377 (6th Cir. 2006), which OSU highlights at page 5 of its Opposition, is fully consistent 

with Redbubble’s position. In Lorillard, the defendant was a retail convenience store that sold 

counterfeit cigarettes from its stock of inventory. Nonetheless, the defendant argued that it was 

not liable because “it did not intend to sell counterfeit items and . . . did not create, manufacture 

or package such items.” Unsurprisingly, the court rejected that argument, holding that liability 

for trademark infringement was not limited “to those who actually create, manufacture or 

package the infringing items,” but extended to those who sell or offer to sell infringing products. 

Id. at 381 ("[s]ellers bear strict liability for violations of the Lanham Act"). The Lorillard 

opinion did not hold, as OSU suggests, that a party may be liable for direct infringement if it 

contracts out product manufacturing to third-parties (which was not even an issue in the case). 

 

15 Contrary to OSU’s claim at pages 6-7 that Redbubble’s Cross-Motion “relies almost 

entirely upon a line of contributory trademark infringement cases beginning with Tiffany (NJ) 

Inc. v. eBay, Inc., 600 F. 3d 93 (2nd Cir. 2010),” Redbubble’s Cross-Motion relies exclusively 

on direct infringement cases. As is clear from page 23 of the Cross-Motion, Redbubble cited 

Tiffany solely because the court there affirmed a finding of no direct trademark infringement 

“after noting that eBay never took possession of items sold through its marketplace and did not 

directly sell allegedly infringing products to customers.” It should be noted, however, that 

Tiffany further undermines OSU’s direct infringement claim by holding that eBay’s knowledge 

that counterfeit Tiffany items were being sold on the eBay marketplace “is not a basis for a claim 

of direct trademark infringement against eBay, especially inasmuch as it is undisputed that eBay 

promptly removed all listings that Tiffany challenged as counterfeit and took affirmative steps to 

identify and remove illegitimate Tiffany goods.” Id. at 103. 
17 

Instead, it stands for the rather unremarkable proposition that a retail seller of products from its 

stock of inventory may be held liable for trademark infringement even if the seller does not make 

the infringing products. Lorillard simply does not support OSU’s attempts to extend liability 

beyond those who themselves, make, package, transport or sell infringing items. 

OSU disingenuously argues that Redbubble is directly liable for trademark infringement 

because it provides an automated infrastructure that will “ineluctably lead to the manufacture of 

infringing products,” citing to the SunFrog opinion. But SunFrog was not held directly liable 

because it provided an automated system that caused third-parties to manufacture the infringing 

products. Rather, the SunFrog court held that “because SunFrog advertises and sells infringing 

products, operates printers that print the products, packs them for shipping, ships them, and then 

processes payment, it is directly liable.” 311 F. Supp. 3d at 1036. 

OSU also claims that Redbubble can be held directly liable for infringement occurring on 

the Redbubble Marketplace because Redbubble performed “most of the legwork” for the 

infringing transactions, citing again to SunFrog. However, the Sunfrog court made clear in the 

paragraph prior to the paragraph cited by OSU that the “legwork” it was referring to was 

SunFrog itself “advertis[ing] and sell[ing] infringing products, operat[ing] printers that prints the 

products, pack[ing] them for shipping, ship[ping] them, and then process[ing] payment.” 311 F. 

Supp. 3d at 1036. Tellingly, in the full sentence quoted from Sunfrog by OSU, the district court 

contrasted eBay, who was held not directly liable because it did not make the infringing 

products, with SunFrog, who “occupies the opposite posture, as it does most of the legwork in 

the transaction for an infringing item, including physically placing the [infringing] Marks on 

products.” Id. at 1037 (bolded portion was omitted from the quote in OSU’s papers). 
18 

No published opinion has ever based liability for direct trademark infringement on 

facilitating the manufacture of infringing products, providing an “automated infrastructure” that 

leads to the manufacture of infringing products, or performing “legwork” for infringing 

transactions. Rather, direct liability must be predicated on affirmative and volitional conduct that 

constitutes the “use” of the infringing mark in commerce (e.g., making or selling the allegedly 

infringing products). As the district court in SunFrog acknowledged in contrasting a printer like 

SunFrog with the Amazon Marketplace, an online marketplace like Redbubble that does not 

itself make or sell infringing products simply does not engage in conduct that could potentially 

subject it to liability for direct trademark infringement. 

B. OSU Has Not Offered Evidence of Intentional Misconduct from which a 

Trier of Fact Could Find in OSU’s Favor on its Third Count for 

Counterfeiting. 

To avoid entry of summary judgment in favor of Redbubble on its counterfeiting claim, 

OSU must prove not only that Redbubble used counterfeit OSU trademarks (a showing that OSU 

has not made, as discussed above), but also that Redbubble (as opposed to the third-party Sellers) 

“intentionally used the mark knowing it was a counterfeit.” Too, Inc. v. TJX Cos., 229 F. Supp. 

2d 825, 837 (S.D. Ohio 2002). OSU has not presented evidence from which a trier of fact could 

find in its favor on this issue. 

Indeed, OSU has made no effort to show that Redbubble knowingly and intentionally 

permitted the sale of any specific product bearing an OSU trademark (because no such showing 

is possible). Instead, OSU insists that Redbubble has acted with the requisite intent because it has 

been “willfully blind” to the alleged counterfeiting. [OSU Opp. at 14-16.] But such a result 

would fundamentally disregard both the applicable law and the undisputed facts. 

“[T]he doctrine of willful blindness hold[s] that defendants cannot escape the reach of 

these statutes by deliberately shielding themselves from clear evidence of critical facts that are 
19 

strongly suggested by the circumstances.” Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 

754, 766 (2011). To constitute “willful blindness,” the defendant must (1) subjectively believe 

that there is a high probability that a fact exists and (2) take deliberate actions to avoid learning 

of that fact.” Id. at 769. “By contrast, a reckless defendant is one who merely knows of a 

substantial and unjustified risk of such wrongdoing, and a negligent defendant is one who should 

have known of a similar risk but, in fact, did not.” Id. 

The undisputed record establishes that, far from “tak[ing] deliberate actions to avoid 

confirming a high probability of wrongdoing,” id. at 769, Redbubble has deliberately sought to 

improve its identification and interception of infringement at the earliest opportunity, even where 

Redbubble might otherwise have been completely and reasonably unaware of such infringement 

in the ordinary course of its operations. [Redbubble Memo (Doc. #23) at 11-15.] Those efforts 

have intercepted, disabled, and removed roughly 1,440 seller-created listings for approximately 

27,500 products that Redbubble believed might infringe OSU’s trademark rights. [CantilVoorhees Decl. (Doc. #27) ¶ 8.] Even taking OSU’s evidence in the most favorable light, OSU 

has only identified (through the Dreitler and Shook Declarations) six allegedly infringing listings 

that have appeared on the Redbubble Marketplace since OSU identified specific infringing 

listings in its Complaint and since Redbubble implemented proactive screening based on that 

identification (but without OSU’s cooperation). Redbubble’s successful interception of over 

99% of the potential infringements precludes a reasonable finder of fact from finding that 

Redbubble was “willfully blind.” 

Indeed, taking OSU’s “willful blindness” argument to its logical end would mean that 

once an online marketplace received notice that a seller was offering a counterfeit good on its 

site, any subsequent offers of similar goods on that marketplace – no matter what efforts the 
20 

marketplace took to prevent future infringing offers – would be per se intentional, and therefore 

subject to a finding of counterfeiting and enhanced statutory damages of up to $2 million per 

type of good. If that were the law, no plaintiff would need to prove actual volition – i.e., 

willfulness – for any post-notice activity. Reading the requirement of willfulness entirely out of 

the Lanham Act would render the intent requirement of the counterfeiting statute and the 

“additional act” required for enhanced damages a nullity, in violation of multiple rules of 

statutory construction. 

OSU also argues that any infringement is intentional and/or willful because it is 

purportedly ongoing, citing to two allegedly infringing listings that its counsel located in the four 

months since its summary judgment motion was filed. However, there is no evidence that 

Redbubble knew of these two listings before they were identified by OSU. To the contrary, as set 

forth in the Supplemental Toy Declaration, the third-party Sellers who created and uploaded 

these listings did not use any trademarked terms in the title or tags for the product; indeed, one 

Seller did not use any tags at all (making it virtually impossible to locate by anyone without 

image matching technology), while the other used “split” tags that were not detected by 

Redbubble’s proactive policing tools. [Toy Supp. Decl. ¶¶ 3-6.] Under the circumstances, the 

existence of these two unusual listings, standing alone, can hardly be deemed evidence of 

intentional or willful infringement.16

 

16 OSU asks the Court to infer willful intent by pointing to instances in which allegedly 

counterfeit marks of three other universities are offered for sale through the Redbubble 

Marketplace. Not only is this evidence irrelevant to whether Redbubble has used OSU’s marks, it 

also does not support OSU’s position. Indeed, while over the years each of these universities has 

identified specific intellectual property to Redbubble and has requested that Redbubble remove 

specific listings, which Redbubble has promptly done, none of these universities has asserted that 

Redbubble is directly liable for infringement that occurs via the Marketplace, To the contrary, at 

least one of these universities has expressly recognized that the “account holder” who uploaded 

the content committed any direct infringement that may have occurred. [Toy Supp. Decl. ¶ 10.] 
21 

In sum, there is simply no evidence from which the court could conclude that Redbubble 

used OSU’s trademarks at all, let alone that Redbubble used counterfeit OSU marks intentionally 

and with knowledge that any uses of the marks were counterfeit, or that Redbubble used those 

marks while willfully turning a blind eye. Summary judgment in favor or Redbubble on OSU’s 

counterfeit claim is therefore mandated on this record.

C. Redbubble Is Entitled to Judgment in Its Favor on OSU’s Fourth Count for 

Violation of Right of Publicity Under O.R.C. Chapter 2741. 

In its Cross-Motion, Redbubble demonstrated that it cannot be held liable under OSU’s 

right of publicity claim for at least three reasons: 1) Redbubble did not itself “use” Mr. Meyer’s 

persona for a commercial purpose, as any such use was by third-party Sellers using the 

Redbubble Marketplace; 2) in the event that Redbubble were somehow deemed to have “used” 

Mr. Meyer’s persona, Redbubble would be immune as an intermediary that did not have 

knowledge of the specific unauthorized uses in question; and 3) Redbubble is immunized from 

liability under Section 230 of the Communications Decency Act. OSU’s Opposition superficially 

addresses the first of these arguments, ignores the second altogether, and mischaracterizes 

Redbubble’s position regarding the third. 

1. Redbubble Is Not Liable Because It Did Not Use Mr. Meyer’s 

Persona. 

While OSU summarily argues at page 20 of its Opposition that Redbubble “used” 

Mr. Meyer’s persona in the same way it used OSU’s trademark, that argument is both factually 

and legally erroneous. From a factual standpoint, OSU’s argument is incorrect because, as 

discussed in detail above, OSU has not established that Redbubble used either OSU’s trademarks 

or Mr. Meyer’s persona. From a legal standpoint, OSU’s argument mistakenly assumes that the 

standards for “use” are the same for the Ohio Right of Publicity statute as they are under federal 

trademark law, without any authority to support that assumption. 
22 

As noted at page 31 of Redbubble’s Cross-Motion and the cases cited therein, courts have 

consistently held that in the context of right of publicity, to “use” a plaintiff’s persona, a 

defendant must take affirmative steps to specifically exploit the persona in question and cannot 

be held liable for a right of publicity claim based on content uploaded by a third party. OSU did 

not cite to any case law that would shed doubt on this principle. 

Since there is no dispute that OSU’s right of publicity claim is based on content uploaded 

solely by third parties other than Redbubble, Redbubble is entitled to judgment on this claim as a 

matter of law. 

2. OSU Does Not Dispute that Redbubble Is Statutorily Exempt from 

Liability on OSU’s Right of Publicity Claim as an Intermediary. 

As Redbubble established in its moving papers (Redbubble Memo at 32-33), the 

Redbubble Marketplace is a “global communications network” that also serves as a “medium 

used for advertising” by third-party Sellers who list their products for on the Redbubble 

Marketplace. Because OSU did not challenge (or even address) Redbubble’s Section 2741.02(E) 

argument and related evidentiary showing, Redbubble is entitled to summary judgment on 

OSU’s right of publicity claim based on this statutory exemption. 

3. Redbubble Is Immune from OSU’s State Law Right of Publicity 

Claim as an Interactive Computer Service Under Section 230 of the 

Communications Decency Act. 

Even if Redbubble were not statutorily immune from the right of publicity claim, and 

even if Redbubble – as opposed to its artists – had “used” Mr. Meyer’s persona, Redbubble 

would still be entitled to immunity under Section 230 of the Communications Decency Act 

(“CDA”), 47 U.S.C. § 230, which specifies that “[n]o provider or user of an interactive computer 

service shall be treated as the publisher or speaker of any information provided by another 

information content provider.” 
23 

OSU’s Opposition does not seriously dispute (or even directly address) Redbubble’s 

showing that it satisfies the three requirements to qualify for this statutory immunity. See Jones 

v. Dirty World Entertainment Recordings, LLC, 755 F.3d 398, 409 (6th Cir. 2014). Instead, 

OSU argues that a right of publicity claim is a state law intellectual property claim, and that such 

claims fall outside the protections of the statute, relying primarily on dicta by Judge Frost in 

Skreened. But OSU does not dispute that the discussion of Section of 230 in Skreened is mere 

dicta, nor does it explain why the reasoning in Skreened and the other cases cited at page 21 of 

the Opposition, to the extent any reasoning was provided in those cases, should be followed. 

Rather, OSU claims that this legal issue is “settled law in this District.” [OSU Opp. at 21-22.] 

Redbubble recognizes that none of the cases cited by either of the parties are binding on 

this court; they are merely persuasive. However, the following facts are beyond dispute: (1) as 

noted in Perfect 10, Inc. v. Ccbill LLC, 488 F.3d 1102, 1118 (9th Cir. 2007) (citations omitted), 

“[t]he majority of federal circuits have interpreted the CDA to establish broad ‘federal immunity 

to any cause of action that would make service providers liable for information originating with a 

third-party user of the service;’” (2) the Sixth Circuit has held that the immunity provisions in 

Section 230 should be construed broadly, and that “close cases must be resolved in favor of 

immunity, lest we cut the heart out of section 230 by forcing websites to face death by ten 

thousand duck-bites, fighting off claims that they promised or encouraged – or at least tacitly 

assented to – the illegality of third parties” (see Jones, supra, 755 F.3d at 408); and 3) the only 

federal appellate court to directly rule on whether right of publicity claims are protected under 

the CDA, the 9th Circuit in Perfect 10, supra, 488 F.3d at 1119, specifically held that the CDA 

bars a claim for violation of right of publicity against a service provider that otherwise qualifies 

for the protections of the CDA. 
24 

There are also compelling policy reasons, consistent with Congressional intent, to 

interpret the CDA’s protections to include state intellectual property claims. “[P]ermitting the 

reach of any particular state’s definition of intellectual property to dictate the contours of this 

federal immunity would be contrary to Congresses expressed goal of insulating the development 

of the Internet from the various state law regimes.” Perfect 10, supra, 488 F.3d at 1118-19 

(citations omitted). Indeed, if the CDA is interpreted as OSU proposes, a service provider would 

“be forced to bear the costs of litigation under a wide variety of state statutes that could arguably 

be classified as ‘intellectual property.’ As a practical matter, inclusion of rights protected by state 

law within the ‘intellectual property’ exemption would fatally undermine the broad grant of 

immunity provided by the CDA.” Id. at 1119 n. 5. (quoting Zeran, supra, 129 F.3d at 330)). 

OSU has offered no rebuttal to these policy concerns. 

Redbubble therefore respectfully submits that this Court rule as a matter of law that the 

CDA bars OSU’s right of publicity claim. 

III. CONCLUSION 

For the foregoing reasons, the Court should grant Redbubble’s Cross-Motion for 

Summary Judgment and enter judgment in favor of Redbubble on OSU’s Complaint and of each 

cause of action therein. 

 Respectfully submitted, 

/s/ Gerhardt A. Gosnell II 

James E. Arnold, Trial Attorney (0037712)

Gerhardt A. Gosnell II (0064919) 

JAMES E. ARNOLD & ASSOCIATES, LPA 

115 W. Main St., Fourth Floor 

Columbus, Ohio 43215 

Telephone:(614) 460-1600 

Facsimile: (614) 469-1093 

Email: jarnold@arnlaw.com 

 ggosnell@arnlaw.com 
25 

Kenneth B. Wilson (admitted pro hac vice) 

COASTSIDE LEGAL

455 1st Avenue 

Half Moon Bay, CA 94019 

Telephone: (650) 440-4211 

Email: ken@coastsidelegal.com 

Counsel for Defendant Redbubble Inc. 

CERTIFICATE OF SERVICE 

The undersigned hereby certifies that on January 4, 2019, a copy of the foregoing 

Defendant Redbubble Inc.’s Reply Memorandum in Support of Cross-Motion for Summary 

Judgment was filed with the Court using the Clerk of Court’s electronic filing system, which will 

send notice of this filing to all parties that have entered an appearance in this matter. 

 /s/ Gerhardt A. Gosnell II 

 Gerhardt A. Gosnell II