In September, U.S. District Court Judge Colleen McMahon issued a decision that potentially exposes one of the most popular print-on-demand websites, CafePress.com, Inc. (“CafePress”), to trademark liability for user uploaded designs. The lawsuit arose after Born To Rock Design, Inc. (“BTRD”) sent a series of letters to CafePress asking it to remove user uploaded designs incorporating the phrase “Born to Rock”. BTRD owns trademark registrations for BORN TO ROCK in Class 15 for electric guitars and Class 25 for t-shirts. As reported in filings with the court, in response to BTRD’s letter, CafePress initially asked BTRD to identify specific allegedly infringing designs. After BTRD did so, CafePress took the position that it would not take down any of the designs relying, in part, on the doctrine of fair use. CafePress eventually removed some of the designs but not others and BTRD filed suit.
CafePress moved for summary judgment on the grounds: (i) that it did not “use” the BORN TO ROCK trademark “in commerce”; and (ii) its conduct constituted permitted fair use. Judge McMahon denied the motion. With respect to CafePress’ argument that it did not “use” the trademarks “in commerce”, Judge McMahon was particularly blunt: “CafePress is being facetious: it is undisputed that it imprints the designs on merchandise to customers. That activity constitutes ‘use in commerce’.”
With respect to fair use, Judge McMahon concluded that CafePress could not meet the first element of the fair use defense, namely, that CafePress made only “non-trademark use” of the “Born to Rock” phrase. She concluded that a “juror might look at another of the T-shirts — for example, the one that depicts a rocking chair and says, ‘Born to Rock’ — and conclude that the phrase is used only ornamentally, and not to identify the T-shirt’s maker. Or there might be some other element of the T-shirt — a tag, for example — that identifies the source….” She noted that in some of the designs “pictured in the record, a source other than [BTRD] is clearly indicated — by the name of a website that appears on the uploaded design. But there are other designs — for example, designs that include guitars and the words ‘Born to Rock’ –which do not contain any obvious indicium of a source other than [BORN TO ROCK], and which (because of their use of guitars) might logically be thought to emanate from [BTRD].” Thus Judge McMahon concluded, “[b]ecause reasonable jurors could disagree on (at least) the first element of CafePress’ fair use defense”, the motion for summary judgment must be denied.
Judge McMahon emphasized that CafePress had not moved for summary judgment on a “design-by-design basis” and, instead, asked “the court to take judicial notice of the fact that every use [“Born to Rock”] is a non-trademark use as a matter of law.” This indicates that, had CafePress chosen a different litigation strategy, it may have prevailed with respect to at least some of the designs.
Print-on-demand services and other websites that permit users to upload designs will surely watch this case closely, as it has the potential to expose them to substantial damages. Likewise, trademarks owners should carefully watch the outcome of this case because trademarks are often used without authorization on print-on-demand websites. Our attorneys have been successful on behalf of trademark owners using cost-conscious but effective strategies to successfully take down infringing designs on print-on-demand and other websites.
The case is Born To Rock Design Incorporated v. CafePress.com, Inc., 10-CV-08588 (S.D.N.Y.). We will continue to monitor this case and update the blog as it progresses.
