The ongoing dispute between Brandy Melville and Redbubble over trademark and copyright infringement continues. Despite previous setbacks, Brandy Melville has filed a new lawsuit against Redbubble, alleging the sale of counterfeit products and copyright infringement. Scott Hervey and Jamie Lincenberg from Weintraub Tobin explore the history of the dispute, the claims made in the new complaint, and potential legal strategies moving forward.

Get the full episode on the Weintraub YouTube channel here or listen to this podcast episode here.

Scott We have covered Brandy Melville’s dispute with Redbubble, including the Ninth Circuit’s refusal to hold Redbubble liable for contributory copyright infringement because Redbubble didn’t know or have reason to know of specific incidents of infringement by its users and the Supreme Court’s refusal to take on Brandy Melville’s certiorari petition. Despite these significant setbacks, Brandy Melville seems determined to hold Redbubble accountable and has filed a new lawsuit against Redbubble. I’m Scott Hervey from Weintraub Tobin, and today I’m joined by Weintraub lawyer Jamie Lincenberg to talk about this update in the Brandy Melville Redbubble Dispute on this installment of “The Briefing” by Weintraub Tobin. Jamie, welcome back to the briefing.

Jamie Thanks, Scott. I’m glad to be here and happy we can jump into this Brandy Melville Redbubble case again.

Scott This is our third conversation about Brandy Melville Redbubble, and I have the feeling that it will not be our last. Before we dive into this new complaint, can you take us back through the history of the Brandy Melville Redbubble dispute?

Jamie Sure. The dispute began in 2018 when Brandy Melville, the popular clothing retailer, brought a trademark infringement suit against Redbubble, an online marketplace that allows independent artists to upload their own designs for on-demand printing on various items of merchandise. Brandy Melville had found products on Redbubble’s website that infringed the company’s trademarks. Initially, the District Court had found Redbubble liable for both willful contributory counterfeiting of the marks and contributory infringement of the marks. Then, on appeal, the Ninth Circuit Appellate Panel overturned much of the lower Court’s findings.

Scott And then, as we know, the Supreme Court denied certiorari to Brandy Melville’s petition, thus letting stand the Ninth Circuit’s holding. So here we are again. Brandy Melville filed a new complaint against Redbubble on March 29, 2024, which alleges that Redbubble is advertising, creating, and selling counterfeit Brandy Melville products, which incorporate exact replicas of the Registered Chilled Since trademark and Radio Silence trademark. They’ve added a couple of new causes of action that we’ll talk about, such as a claim that these products infringe and include exact because of the Registered Comic Eyes copyrighted design.

Jamie The trademark claims made in this new complaint are mostly the same as the trademark claims Brandy Melville made in its case against Redbubble the first time around. So, Unless Brandy Melville alleges a failure to redress specific instances of infringement or infringers, it may seem the same result as the first case.

Scott I agree. But it’s worth noting that This new complaint does seem to focus on this heightened standard imposed by the Ninth Circuit. Brandy Melville claims that Redbubble continued to sell counterfeit items bearing one or more of the exact same designs and brands even after Brandy Melville had previously reported them to Redbubble. Brandy Melville also contends that Redbubble has been, and continues to be aware of, and contributing to the infringement of its trademarks and that it creates and distributes the infringing and counterfeit goods to end consumers and facilitates financial transactions. Brandy Melville also includes as an alternative basis for its contributory trademark infringement that Redbubble has remained woefully blind to the infringement and/or counterfeiting of the Brandy Melville trademarks.

Jamie Yeah, and the complaint also alleges direct copyright infringement and contributory copyright infringement claims against Redbubble. These claims weren’t raised in the first lawsuit.

Scott That’s right. In copyright law, direct infringement occurs when a third party reproduces, distributes, displays, or performs a copyrighted work or prepares a derivative work based on a copyrighted work, all without authorization from the copyright owner. In support of its direct copyright infringement claim, Brandy Melville contends that Redbubble infringed Brandy Melville’s copyrighted works by displaying, distributing, and selling products bearing Brandy Melville’s copyright without their permission.

Jamie Contributory infringement happens if a party, with knowledge of the infringing activity, induces, causes, or materially contributes to the infringing conduct of another. Material contribution can be found where the party is providing services to the infringer and has an ongoing relationship with the direct infringer. In support of its contributory copyright infringement claim, Brandy Melville argues Redbubble has been and continues to be aware of and contributing to the infringement of Brandy Melville’s copyright on its site. The infringing products are prominently displayed and promoted on Redbubble’s website. Redbubble’s website is configured so that a search for Brandy Melville or other Brandy Melville trade names will lead directly to those infringing goods. Redbubble creates and distributes the infringing goods to the end consumer and facilitates all financial transactions.

Scott Yeah, that’s right. That’s what Brandy Melville alleges to be the case. Now, contributory copyright infringement would require actively encouraging or inducing infringement through specific acts or by distributing a product, distributees use to infringe copyright. If the product is not capable of substantial or commercially significant non-infringing uses.

Jamie I am certain there is enough evidence that Redbubble’s platform has commercially significant non-infringing uses, so the hook for establishing contributory infringement would hinge on showing that Redbubble actively induces infringement through making its platform available to users.

Scott Yeah, and it sounds like it’s going to be tough to prove.

Jamie Redbubble will certainly argue that it’s immune from copyright infringement based on user material posted to its websites, based on Section 512 of the Copyright Act, which shields online service providers from monetary liability as long as service providers cooperate with copyright owners to remove that infringing content.

Scott Right. Yeah. You’re talking about the safe harbor and notice and takedown provisions of the DMCA. Brandy Melville would have to show that Redbubble in order for Brandy Melville to get around Redbubble’s safe harbor rights under the DMCA, Brandy Melville would have to show that Redbubble failed to remove specific infringing content after notice. It will be interesting to see how both Redbubble and Brandy Melville deal with this. I am certain that Redbubble will file a motion to dismiss, so we’re going to see that in the near future.

Jamie Scott, why do you think Brandy Melville didn’t raise the copyright claim in the It’s an earlier lawsuit?

Scott So this is me just speculating. I would imagine that they considered the copyright claim and thought that it would probably be precluded by the safe hardware provisions of the DMCA. And at that point, they maybe didn’t have enough evidence that Redbubble was failing to take down infringing content once they were receiving notice. It’s interesting the arguments that Redbubble is making in the trademark part of their argument and the copyright part of their argument relating to Redbubble’s failing to address specific instances of infringement. What Brandy Melville seems to be arguing, as opposed to arguing about specific actors, they are arguing about specific material that is being infringed. When you read their complaint, they talk about specific trademarks that are being infringed, probably by a wide variety of different users on the Redbubble platform. It’s a different take on this argument about redressing specific instances of infringement. They’re saying that Redbubble failed to address specific instances of infringement of specific pieces of Brandy Melville IP, not fail to address specific instances of infringement by certain infringers. So, we’ll see how that one plays out. I think Brandy Melville is going to have a tough time with its copyright claim, though, against Redbubble.

Jamie What do you think their strategy will be with the second lawsuit?

Scott There’s a business purpose to lawsuit sometimes, right? And I am certain that there is a strategy behind Brandy Melville filing this second complaint against Redbubble. And as long as they have a good faith basis upon which to file a claim, I suspect that Brandy Melville will continue to file multiple causes of that, multiple claims against Redbubble. And I believe that there’s a strategy to… Because as long as Redbubble is making money off of the transactions, as long as Redbubble is making more money off the transactions, then it costs Redbubble to defend these claims. Redbubble has no business incentive to deal with this, essentially, right? But the minute it costs Redbubble more to defend the claims, they’re going to have to come up with a business solution. Now, one of the other things that Brandy Melville could do is Brandy Melville could go after the printers. The way that Redbubble works is a user uploads an image, somebody buys an item with that image on it, and the order is sent to a local manufacturer shop that prints whatever it is, the shirt, the cup, the whatever. They’re independent from Redbubble. Well, Brandy Melville could go after those printers. There may or there may not, be an indemnity provision in the printer’s contract with Brandy Melville. But if Brandy… Sorry, with Redbubble. With Redbubble, right? If Brandy Melville starts suing enough of those printers, pretty soon it’s going to be hard for Redbubble to find printers that will do work for them. And although it’s not a great PR look, and they’d have to really think hard about the correct defendant in this, the direct defendant But Brandy Melville, could sue the users as well. They could send a message, Find the right defendant so that there’s not a PR backlash against Brandy Melville. But they could find the right plaintiff, write the defendant, sorry, and really go after them because both the defendant and the defendant would be liable for direct trademark infringement and direct copyright infringement. There’s no DMCA safe harbor that they would be able to take advantage of, and going after the printers as well. If you take off the printer infrastructure and you create this fear amongst the users of being sued by Brand new Melville, it might then create a business rationale for Redbubble to deal with this. 

Jamie Yeah, that’s an interesting thought. I had not thought about the printer’s liability in all of this, but you’re right. That’s certainly an avenue that Brandy Melville could explore, although there’s much more to be considered with that in the same way that going after individual people that could cause some PR backlash if they’re going after local printers or things like that.

Scott Yeah, I agree. You have to navigate the PR waters. All of a sudden go from being a victim to being the bully. But if they’re not getting results with the campaign of causing financial harm to Redbubble by constantly suing them, then they need to cut the legs out from under the chair in some other way.

Jamie Right. Well, we’ll see where this second lawsuit gets them.

Scott We certainly will. Absolutely. Thank you for listening to this episode of “The Briefing.” We hope you enjoyed this episode. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics we covered today, please leave us a comment.