The Law and Business of Social Media
October 26, 2012 - Trademark, DMCA, Copyright, IP, Litigation

Born to Mock: Trademark Holder’s Fight to Remove Mark on Kitsch Merchandise May Have Broad Legal Implications

Born to Mock: Trademark Holder’s Fight to Remove Mark on Kitsch Merchandise May Have Broad Legal Implications

Popular online marketplace suffered a legal setback recently when a U.S. District Court in the Southern District of New York denied CafePress’s motion for summary judgment against claims of trademark infringement. CafePress operates an online “print on demand” service that allows users to upload designs which CafePress then prints on a variety of items. The users receive a share of the money that CafePress makes when it sells items displaying the users’ designs. These items include everything from coffee mugs and beer steins to iPhone cases and flip-flops. In 2009, guitar neck manufacturer Born to Rock Design Incorporated (BTR), which owns a federal registration for the trademark “Born to Rock,” sent a letter to CafePress asking the site to stop selling merchandise displaying the mark. Since 2003, CafePress had produced a number of different items displaying the “Born to Rock” phrase, all based on designs provided by users. These designs included the following:

After CafePress refused to remove user designs incorporating the phrase, BTR filed a complaint for, among other things, trademark infringement. Following discovery, CafePress filed a motion for summary judgment, arguing that the “Born to Rock” designs were not used in commerce (an element of trademark infringement) and that, even if they were, CafePress’s use was “fair use”—i.e., a descriptive or ornamental use of the phrase “Born to Rock” in a non-trademark sense.  The court struck down the first argument outright, stating that CafePress was being “facetious” in arguing that it did not use the mark in commerce given that CafePress actually imprints the designs on merchandise and ships that merchandise to customers. In considering the fair use argument, the court acknowledged that certain uses of the “Born to Rock” designs may constitute non-trademark fair use (e.g. “Born to Ride / Born to Rock”), but concluded that CafePress could not rely on fair use as a blanket defense for all of the designs.

Legal scholar Eric Goldman has pointed out that CafePress can raise other, stronger arguments in the future, including that the trademark is invalid and that consumers were not likely to be confused by CafePress’s use of the mark. Nonetheless, the district court’s denial of summary judgment does send a message to trademark holders: you can sue online service providers for trademark infringement based on user-generated content and you just might win.  The Digital Millennium Copyright Act (DMCA) creates a safe harbor for online service providers who promptly remove user-generated copyright-infringing content after receiving takedown notices, but there is no equivalent safe harbor for content that infringes trademarks (although, a website devoted to the DMCA, does note that “in the absence of any caselaw on the subject, should a trademark holder bring a claim for contributory infringement, an [online service provider] might be able to mount a valid defense by analogy to [DMCA] section 512(c).”).

Social media sites in particular may be easy targets for trademark claims based on user-generated content. Such sites often host “community pages” that serve as fan pages for brands without any authorization from the companies involved (for example, compare this official Facebook page established by a trademark holder with this community page run by a fan). In the wake of the case against CafePress, social media sites and other websites that host user-generated content should be aware of these trademark-related risks and the fact that the DMCA safe harbors do not apply to trademark claims.